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Friday, May 05, 2006

Dilemmas of the Public Interest IP Lawyer

At the CFP Conference Lunch, I've just been discussing fair use litigation with a representative of the Brennan Center for Law and Justice.   She brought up a fascinating issue--whether a lawyer volunteering to represent someone who has a potential fair use defense to a copyright infringement suit should recommend they a) "get a license," or b) don't, and risk a legal fight.  It's a dilemma because part of the determination as to whether a use is fair or not is whether a market for the use is "reasonable, traditional, or expected to be developed."  So if you show a copyrighted quilt in a frame of your movie, and decide to license the quilt image (a "derivative work," in copyright parlance), you're not only avoiding litigation yourself...you're also making it more likely that future courts will find a brief image of a quilt in the background of a movie infringing!  They may well say "why didn't you license it like the last guy?"

There's a larger issue here--the various ways in which law creates the very social conditions it purports to be responding to.  A new collection of articles has some fascinating scholarship on such Paradoxes and Inconsistencies in Law.  For example, Eric Talley's article focuses on the concept of "reasonable investment-backed expectations" in takings law.  The expectations are endogenous to the law--if you think courts will force a local government to compensate you for some very restrictive zoning ordinance, that expectation is going to get built into the price.  If you don't, it won't. 

Or think about the "reasonable expectation of privacy" standard in Fourth Amendment law.  It practically invites law enforcement officers to aggressively go after new sources of information like Google search records in order to erode "expectations" of privacy. 

Or think about consumer confusion as a standard in trademark.  If I see a "Bolex" watch on Canal Street, I'm likely to think that it's not really authorized by Rolex because that is a bit of a "trademark-free" zone.  But can't the reverse happen?  Might people be led to confuse substantially similar infringing items with authorized ones, because they say to themselves "that must be authorized--because if it weren't, the producer and seller would be sued!"

I think this points to a larger issue--that legal standards should try to avoid relying on social conditions that themselves are dependent on the law.  Perhaps that's too general, and such conditions are more common than I think.  But I find it bizarre that legal determinations can so often hinge on perceptions that are themselves the product of law.

Posted by Frank3 on May 5, 2006 at 01:53 PM in Intellectual Property | Permalink


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Marty, thanks for a nice clarification of the case law behind the fair use issue. And Orin, thank you for reminding me that I'd best stay out of con law commentary!

Posted by: Frank | May 6, 2006 1:36:03 AM

This is a very minor point, but I don't think your Fourth Amendment example is right. In most cases, a reasonable expectation of privacy is not the same as what a reasonable person would expect to remain private. See, e.g., United States v. Jacobsen. As a result, whether people expect the government to conduct a particular type of surveillance does not impact the scope of Fourth Amendment protections.

Posted by: Orin Kerr | May 5, 2006 9:39:34 PM

In a 1999 OLC Opinion on fair use (http://www.usdoj.gov/olc/pincusfinal430.htm), we wrote this:

Our conclusion that government photocopying is not invariably noninfringing does not, of course, answer the question whether government agencies should enter into licensing agreements for photocopying, and if so, what the terms and conditions of such agreements should be. In answering that question, there is an inescapable tension. On the one hand, because of the highly fact-bound nature of the fair use inquiry, it is difficult to ascertain in advance which governmental practices will, or will not, be fair uses: there is an "endless variety of situations and combinations of circumstances that can rise in particular cases." House Report at 66, reprinted in 1976 U.S.C.C.A.N. at 5680. Such uncertainty, when viewed in isolation, might weigh in favor of entering into relatively broad licensing agreements, so as to ensure that an agency's photocopying will never be infringing. On the other hand, and in addition to the desire to avoid unnecessary costs, there is an important legal consideration that counsels against entering into unnecessary licensing agreements, and in favor of limiting such agreements to encompass only those photocopying practices that are infringing -- namely, the concern that general custom and usage may be integral to the fair use analysis. [Footnote: See, e.g., Williams & Wilkins, 487 F.2d at 1355-56; see also Harper & Row, 471 U.S. at 550 (the fair use doctrine traditionally "was predicated on the author's implied consent to 'reasonable and customary' use when he released his work for public consumption").] Indeed, at least one court has opined, in particular, that whether it is "fair," under the copyright law, to engage in a photocopying practice without compensation may depend, in part, on whether similarly situated entities customarily agree to pay a fee to the copyright holders. [Footnote: Princeton Univ. Press, 99 F.3d at 1387-88 (consideration of the potential licensing revenues for photocopying in a fair use analysis is "especially" appropriate where the copyright holder not only has an interest in exploiting the licensing market, but also "has actually succeeded in doing so"). But cf. Campbell, 510 U.S. at 585 n.18 (defendants' request for permission to use copyrighted song in a parody does "not necessarily suggest that they believed their version was not fair use; the offer may simply have been made in a good-faith effort to avoid this litigation").] We have no occasion here to consider whether that court was correct in this regard; but it is possible that other courts may follow suit. Accordingly, if government agencies routinely agree to pay licensing fees to engage in photocopying practices that were fair uses at the time, there is a chance some courts may conclude that a growing or longstanding custom of paying such fees weighs against a finding that such photocopying practices are fair uses when unlicensed. Thus, an agency that decides to negotiate a photocopying license should seek to limit the scope of the licensing agreement so as not to cover those photocopying practices that the agency, in good faith, concludes are not infringing.

Posted by: Marty Lederman | May 5, 2006 3:50:55 PM

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