American Geophysical Union v. Texaco Inc.
From Library Copyright
American Geophysical Union v. Texaco Inc. (802 F. Supp. 1 (S.D.N.Y. 1992))
Contents |
Parties
The plaintiffs in this case are publishers of scientific and technical journals that publish copyrighted material by assignment from the authors. The defendant is Texaco Inc., a large U.S. corporation that engages in all aspects of the petroleum business from exploration through transportation and refining to retail marketing.
Facts
Donald Chickering, II, a Ph..D. in chemical engineering that specializes in the study of catalysts and catalysis had been employed at the Texaco research center at Beacon, New York since 1981. At the time of the trial, Chickering was the group leader of the “Automation Design and Construction Group,” which provided engineering and automation research to support catalysis research, new technology research and advanced research. Upon employment at Texaco, Chickering put his name on the routing lists for the scientific journals that he believed would be of professional interest. This was consistent with what Texaco contends is standard practice for scientists employed by for-profit companies. Chickering often photocopied or had the library photocopy for him, copyrighted articles in scientific and technical journals that were relevant to his employment at Texaco.
Among the material found in Chickering’s files were eight copies of material from Academic Press, publisher of the Journal of Catalysis. These included four “articles,” two “notes” and two “letters to the editor,” which were each copied in their entirety. The articles in Chickering’s possession were not the only ones copied by Texaco. Chickering is one of 400-500 scientists employed by Texaco and therefore he serves as a representative example but not the entirety of the infringement.
The plaintiffs’ contend that each of the pieces were published with a copyright notice showing Academic Press as the owner of the copyright and reserving all reproduction rights. Employees of Academic Press do not write the articles published in Catalysis. The Journal does not pay the authors of the pieces they publish. Rather, authors interested in publishing their articles must submit their work to the editors of the journals and are then subject to peer review. The authors are informed that if their manuscript is selected for publication, the copyright in the article, including the right to reproduce the article in all forms shall be assigned to Academic Press. Further, each issue of the Journal contains a masthead statement that reads, “no part of this publication may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopy, recording, or any information storage and retrieval system, without the permission in writing from the copyright owner.”
It is important to note, that Academic press does offer authorization to photocopy pieces from Catalysis through the mechanism known as the Copyright Clearance Center (“CCC”). The CCC is a non-profit, central clearing-house established by publishers to grant blanket advance permission to photocopy material registered with the CCC for a fee collected to copyright owners, net of service charge. The CCC was established in response to a Congressional recommendation that an efficient mechanism be established to license photocopying. Although Academic Press did register its publications with the CCC, this permission to copy only extends to narrow circumstances where the copier pays the stated, per copy fee through the CCC. The copying being done by Texaco is not in compliance with this procedure and is without permission of Academic Press. Accordingly, the complaint set forth by the plaintiffs’ alleges that the copying by Texaco infringes on the plaintiffs’ copyrights.
In response to the plaintiffs’ complaint of copyright infringement, the defendant asserts the defense of “fair use” claiming that photocopying by scientists is a reasonable and customary practice, necessary to the conduct of scientific research. Some of the reasons set forth as to why the use of journals is fundamental to scientific research include: awareness of new learning, suggestion of new ideas and approaches, avoidance of duplication of experimentation that has already been done and adoption of productive research findings. For these reasons it is commonplace for scientists employed at Texaco and in industry in general to request from the company library photocopies of articles that are expected to be of professional interest. The doctrine of “fair use” is a limitation on the scope of the rights granted exclusively to authors.’ The reasoning behind “fair use” is that it is in the public’s best interest for scholars and authors to freely use or quote the writings of one another.
The “fair use” doctrine was expressly incorporated into statute in the Copyright Act of 1976. Section 107 of the 1976 act states, “fair use of a copyrighted work… for purposes such as criticism, comment, news reporting, teaching, scholarship or research is not an infringement of copyright.” Although the Act did not conclusively define “fair use” it relies largely on the four factors articulated by Justice Story in Folsom v. Marsh, 9 F. Cas. at 342. Accordingly, in determining whether the use made of a work falls within the scope of the fair use exemption, courts typically consider the following: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. Although from time to time one factor has taken precedence over the others, it is generally thought that depending on the particular facts of the case, each of the factors can have significant importance.
Question Presented
Whether the unauthorized copying of copyrighted material found in scientific and technical journals constitutes “fair use” under section 107 of the U.S. Copyright Act of 1976, where the copying is being done by employees of a for-profit company using the information for scientific research?
Discussion
In reaching a conclusion to the question presented, the court goes through an analysis of each of the four factors. With regard to the first factor, the court examines the purpose and character of the material in question. Generally, the courts look more favorably upon fair use claims where the original material is being used in a new way. This factor is often referred to as “productivity” and is measured by whether the secondary work produces a new purpose or result, distinct from the original. Ideally the secondary work should transform the original and not supercede its initial purpose. In Sony, Universal Studios v. Sony Corp. of America the Ninth Circuit excluded the possibility of finding for “fair use” without productivity. 659 F.2d 963, 970 (9th Cir. 1981). At the Supreme Court, Justice Stevens placed the emphasis instead on whether the use is of a “commercial or non profit” nature. He asserted that with regard to productivity the Court should look more favorably upon noncommercial, non-profit activity with no commercial motivation than those activities designed for profit making.
Since Sony, secondary users have achieved the first factor of the “fair use” test by either, (1) transformative (productive), non-superceding use of the original, or (2) noncommercial use, generally for a socially beneficial or widely accepted purpose. Under the first track, courts do not give weight to whether there is a profit-making motive. For example, textbooks, newspapers, criticism, medical and scientific materials are all published in part for commercial gain. However, to bar the use of secondary information in teaching, journalism, scholarship and research solely because of the commercial value involved, would make it impossible to quote or share information unless it was done philanthropically. The courts have generally held that this is impractical since writers and critics often earn a living from such writings and disqualifying them from entitlement would be unfair. Accordingly, courts have repeatedly found in favor of fair use notwithstanding the presence of profit motivation.
With regard to the second track, the court looks not to whether the work is of a transformative purpose but rather whether it is for some societal or non-profit use. Williams & Wilkins v. National Institute of Health, 487 F.2d at 1345 (1973). In Williams, the Court held that where scientists at the National Institute of Health (“NIH”) and the National Medical Library (“NML”) were involved in making photocopies, there was no copyright infringement. The Court stated, “NIH and NML are non-profit institutions devoted solely to the advancement and dissemination of medical knowledge… and are not attempting to profit or gain financially by the photocopying… scientific progress, untainted by any commercial gain from the reproduction is the hallmark of the whole enterprise of duplication.” 487 F.2d at 1345
In applying the first factor to the case at hand, the court held that Texaco’s use was neither transformative nor noncommercial. Texaco argues that it should be considered productive because its purpose is to advance scientific discovery. However, the Court rejects this argument claiming that the kind of copying being done by Texaco does not add anything new or different to the original copyrighted work. The secondary use is not being compiled into a larger collection or shortened for an educational purpose. Rather, all Texaco is doing is creating multiple copies of the original and in effect superceding the original. Although the court considers Texaco’s argument that copies are preferable to the original because they can be written on and are easier to transport, the court ultimately rejects this argument on the basis that the ratio of 3 subscriptions to Catalyst for hundreds of scientists is disproportionate. The court also rejects the notion that the purpose is to state reported facts accurately since the scientists are not solely copying graphs and raw data but rather the entirety of the article.
Finally, with regard to the second track of the first factor, the court rejects Texaco’s claim that the copying is for no commercial gain. Unlike in Williams, where the copying was being performed by governmental nonprofit institutions that were devoted exclusively to the advancement of science; the copying by Texaco is being done to create new products and processes to improve their competitiveness and profitability.
The second factor is concerned with the “nature of the copyrighted work.” Here the court finds for Texaco. Courts have generally observed that “the scope of fair use is greater with respect to factual than nonfactual works.” New Era Publications Int’l ApS v. Carol Publishing Group, 904 F.2d 152 at 157 (2nd Cir.). The reasoning being that facts by definition are not copyrightable (Feist Publications, 111 S.Ct. at 1287) and secondly, when reporting is done accurately it has an extremely high level of recognition for the author. In the case at hand, the court concludes that the material being used by Texaco is essentially factual in nature. Accordingly, this factor cuts in favor of the defendant’s use.
The third factor evaluates the “amount and substantiality of the portion used in relation to the copyrighted work as a whole.” Here, the court finds for the plaintiff because the scientists are copying the entire articles. Texaco argues that the individual articles are not copyrighted, rather the entire issue is. Therefore they should only be found to have copied part of the entire work. The court rejects this argument finding, that copyrighting each article would be too much of a financial and practical burden to place on the publishing company and instead says that they would only escape this factor if they were not photocopying the articles in their entirety.
The fourth factor examines the “effect on the market for copyrighted work.” Here the court finds for the plaintiff as well. The court reasons that if it were not for the free copying being done by the scientists at Texaco, Texaco would have to provide its scientists with additional copies of Catalysis by some alternative means. This could include purchasing additional subscriptions, ordering photocopies through document services that make copies under license agreements with the plaintiff-publishers, purchasing back issues, or it could comply with the CCC arrangement. In any of these cases the plaintiffs’ revenues would be substantially supplemented. Under this factor, the court also makes clear that in order to prevail under this factor the plaintiff does not need to show that they are been reduced to poverty because of the infringement. Rather, the plaintiff must only show that if the “challenged use were to become widespread, it would adversely affect the potential market for the copyrighted work.” Sony, 464 U.S. at 451. Therefore, the fact that a copyright holder is realizing rich profits has no tendency to prove that the secondary user’s copying is not diminishing their profits.
Since the fair use doctrine has been characterized as an “equitable rule of reason” the court goes through an analysis of Texaco’s equitable arguments. Among these is the argument by Texaco that despite the four factors, its copying should come within the principles of Sony and Williams. Although these are all rejected by the court they could have potential implications for non-profit organizations, libraries or archives/museums amd are therefore worth discussing.
In Sony “fair use” was justified by the fact that the copying activity (1) was private, (2) was noncommercial (3) was done to permit the user to one time viewing at a convenient hour of copyrighted material that was offered to him free of charge and (4) caused no appreciable loss of revenue to the copyright owner. None of these factors are present in this case, this copying is not private or noncommercial. Further although it is done for the “personal use” of the scientists it is ultimately for the success of Texaco. Additionally the free photocopying is costing Academic Press substantial revenues.
In Williams, the court justified the photocopying by NIH and NML according to a myriad of factors. Among these are, (1) that the plaintiff-publishers were not economically harmed by the defendant’s use, (2) that medicine and medical research would be “seriously hurt” by holding the practices of NIH and NML to be an infringement, (3) there was no other appropriate remedy available to the court so as to enable access to the information if it were to deny the defendants the right to copy, (4) the defendants were non-profit institutions and were not attempting to financially gain from the practices and (5) the researchers needed the information and had no plan to resell or distribute the articles. The only factor present here is that the copies made by Texaco are not going to be resold. The absence of the other factors however, explains the difference in the courts rulings.
Holding
The court concludes that the unauthorized copying being performed by scientists at Texaco, does not fall within the definition of the fair use exemption.
Modified. Original Source: Juliet Spiesman - Creative Commons Deed - In Carrie Russell's Complete Copyright: An Everyday Guide for Librarians
