Note: This is an unedited rush transcript. Please check any quotations against the audio recording.
Nico Perrino: Okay, welcome back to So To Speak, the free speech podcast where every other week, we take an uncensored look at the world of free expression through personal stories and candid conversations. I am you host, as always, Nico Perrino, and I’m here in FIRE’s Washington, DC headquarters with my colleague Adam Goldstein. Adam, welcome onto the show.
Adam Goldstein: Happy to be here, thanks for having me.
Nico: So, I had the idea, I think it was only a couple of days ago, to do a podcast about fair use and copyright. I work in the communications department at FIRE, we’re often creating podcasts like this, video images, memes, things of that nature that pull together different media from different places. And sometimes that media isn’t always media that we created. We’re repurposing media created elsewhere, and one of the constant struggles that those of us who work in creative enterprises have is figuring out what we can use that someone else created. Often times we pay for that media, but sometimes it falls under, what those of us in the creative enterprise call, fair use.
And what the government calls faire use. When you came to work here at FIRE a couple years back, we got to talking, and it sounds like you have a background in fair use, and in copyright issues. And not just a background in it, an interest in it as well. So, let’s get your story first. Where did you go to law school? What got you interested in first amendment issues? And then, what in particular got you interested in figuring out what people like me can use when we’re creating different media?
Adam: Sure. Well, I went to law school at Fordham in New York. I went to undergrad at Fordham in New York, too. So, it was seven years at 60th and 10th in Manhattan. But my fascination with intellectual property is actually older then my fascination with the first amendment. I was more interested in intellectual property pretty much up until undergrad, when I started thinking I might like to be a journalist with my life. And then, of course, that gives you a real need to love the first amendment, too. But I remember even being a small child and seeing a poster for He-Man and the Masters of the Universe toys.
I looked next to the names, and some of the names had a TM next to them, and some of the names had an R in a circle next to them. And I thought, that’s weird. I don’t know what the difference is, but I’m curious as to what the difference is. I had an inkling, because I noticed that all the really big characters had the R. And of course, later on in life, I would learn that those are the names that Mattel thought they should register, because somebody might go out and make a bootleg Skeletor, or make a bootleg He-Man.
Nico: So, the TM is trade mark, the R is – ?
Adam: Is registered trade mark. They’re asserting that they have the trade mark in all of these things, but they’ve only filed the paperwork with the government for the ones that have the R in the circle.
Adam: Because they feel like that’s what we’re gonna have to sue someone over.
Nico: So, the R means that you have a greater legal claim over the product or property, or intellectual property than you would.
Adam: Right. You’re entitled to some statutory rights, because you actually went to the government in advance and said hey, I’m putting everybody on notice. I’ve done all the research, I’ve looked, no one else is using this name right now, and I’m using it for this, and the government has said yup, we agree, and they’ve put it on the register. So, it’s kind-of a presumption that someone infringing is doing it out of malice, because had they looked, they could’ve seen your copyright in He-Man, whereas for some of the later characters, I don’t think Moss Man got registered.
I think by that time, Mattel had just said you know, I don’t think bootleg Moss Man is gonna be a big problem for us financially. So, we’re just gonna – if we have to sue, we’ll sue, but we’re not gonna spend the money to get it registered in advance.
Nico: But you obviously took your interest in this one step further then just figuring out what that TM and that R meant.
Adam: I did. Well, then it moved on to video games, and the evolution of intellectual property through the ‘80s and ‘90s was also my growing up in the ‘80s and ‘90s. And so, this idea of people owning ephemeral things like video games, what I perceived as ephemeral. Moving images on a screen, I thought, was really cool and really inventive. And as I was learning about it, it turns out courts were figuring it out as they went along, too. When I was six or seven, and you read the court decisions from 1984, 1985, the presumption was that people didn’t know what a video game was. Because the law moves more slowly than pop culture. Obviously, in pop culture, everybody had Pac Man fever at that point. But in the law, when most of the judges were in their 70s, they felt the need to describe in great detail what a video game was. So, there’s a semi-infamous decision from the US trade court where they spend two pages describing Pac Man, including the joy stick, two words, joy stick, because who would know what that is? And I’ll always remember this, because there’s a footnote where, in describing the game, they describe the cut scenes.
And they describe the second cut scene to the third cut scene, where Pac Man is chased my a ghost, and they go across the screen. They come back, and the ghost gets its costume trapped on a crack in the floor, there’s a little line in the screen, and it tears. And you see what looks like a leg under, as if they were just throwing a sheet over their head. And the judge described it as revealing an ignominious physiognomy. A phrase I have never heard since. I thought, wow. This must be really important for somebody to take Pac Man this seriously. Because I’d played it a bunch of times, and I never thought to find the fanciest words to describe the ghost’s anatomy.
He was doing this because the defense in the case was this shouldn’t be subject to copyright at all, because it’s not really fixed in a tangible medium of expression. And somebody had to actually decide this is subject to a tangible medium of expression. They said yes, it’s true that Pac Man moves to the left and to the right, but he doesn’t change beyond the, like, eight frames of animation that make a Pac Man. So, he moves, but he’s still fixed.
Nico: When I think about things that – and we should actually, probably start by defining our terms. Because I realize, probably even just setting up this conversation, I used terms that I shouldn’t have used in describing what I was describing. So, there’s trade mark, there’s a registered copyright, there’s this, I’m assuming, broader umbrella of intellectual property, under which trade mark and copyright fall, and then there’s something when we’re talking about things more tangible maybe? Or, maybe even not. This idea of a patent?
Adam: Sure. Patents are for things that are useful in theory. Like, machines, we recognize drug patents, and we recognize trade dress patents sometimes.
Nico: What about technology patents? You come up with a new way of utilizing a technology?
Adam: Well, for a patent it has to be truly an original creation where no one’s created it before, or at least the thing you added to it has never been created before. And then, as long as you register it, you get exclusive use. Which would mean even if somebody invents it independently without you, you can stop them from using it for the length of your patent. The flip side is that patents aren’t particularly long. You get 20 years-ish, depending on your ability to be creative.
Nico: The idea being that people can hopefully, after those – you recoup the costs in coming up with the idea, and other people can innovate on top of that idea.
Adam: Right. We’re saying we’re gonna give you the exclusive use and the idea that it’s gonna incentivize you to create, and then we’re gonna limit it in the idea it’s gonna incentivize people to then work on the basis of what you’ve done, and build on it.
Nico: Yeah, and this is when you get generic drugs, for example. Someone comes up with a groundbreaking drug, they get their 20 years or whatever it is under law, and then you get the generic drugs that come after it, usually cheaper, but the hope is that those drug companies that invested all that research and development money in creating that original drug have recouped the cost within that 20 years, and then made a, hopefully, healthy profit.
Adam: Even made a decent profit to incentivize them to stay on in this business, and not say forget it, and go into something else.
Nico: So, how is a patent different than a trade mark?
Adam: Well, with a trade mark, you get exclusive use for as long as you continue to use it. But your protection is limited to the use of that identifying factor, I was gonna say name. We generally think of trade marks as names, but anything that could be a potential identifying factor. When I say identifying, it means –
Nico: So, like the brand? Like, the brand of a company, or the brand of a product, or product line?
Adam: A brand is, but it’s any element of that, that would identify to the consumer the origin of that good or service. So, a color could be a trade mark if you promote it enough to make it a trade mark, which is why we end up with what can brown do for you, when we talk about UPS. And we all understand when we get the little sugar packets that one fake sweetener is gonna be pink, depending on what the chemicals are, one fake sweetener is gonna be blue, and the sugar’s gonna be in the white packet. And that’s just a convention that has evolved among the producers for the convenience of the consumer. Fragrances, if they are distinctive enough, can be – as long as they’re non-functional. This is where you get tricky, because you can’t copyright a perfume, because the fragrance is considered a functional element.
So, you can’t trade mark a perfume, but you can – if I were to make envelopes, and for whatever reason my envelopes, I decided I was gonna have them lavender scented, and that was going to be my signature, as long as the consumer on the street recognized oh, that’s a Goldstein envelope, I can protect that as long as I wanna keep making them.
Adam: So, it doesn’t give you a great deal, but the purpose of trade mark is a little bit different, as compared to copyright or patent in that its primary purpose is to protect the consumer. The primary purpose of a trade mark is, you want people who are shopping for a good to understand what they can look at to determine this is truly the thing I’m looking for. It’s from the actual place. It’s to avoid fakes, and counterfeits, and passing off.
Nico: Okay. So, what’s a for example in this case? Like, Home Depot has that trade mark orange that you see. I even use it colloquially, trade mark orange. It has a brand look, like it has, I believe, its logo is built within a house. So, someone else who wanted to maybe crib off of Home Depot’s brand reputation, they could use orange, they could use the house, they could set up their logo just the same except slightly different in order to hopefully, in their eyes, maybe trick people into thinking that they’re Home Depot and go there for their home goods.
Adam: Exactly. And that’s something that Home Depot would be able to enforce against. And one of the famous cases in this area dealt with the attempt to open a fast, overnight stay hotel, let’s call it.
Nico: And watch your hands there, Adam, because the microphone’s so sensitive.
Adam: Oh, sorry, my bad. This overnight stay hotel, and it was part of the Quality Inn’s umbrella that they called McSleep. McDonald’s didn’t like this. They were of the opinion that Mc anything was McDonald’s. And ultimately, McDonald’s won. They were able to show that there were enough people who were actually confused when they saw McSleep that the court said people generally think that if it says Mc something, this is owned by the burger people. Part of that was, both sides – and this is how all trade mark law suits end up working this way, where both sides do surveys, they try to show that – the side who wants to use the stuff tries to show that people aren’t really confused.
And the side that wants to prevent it, tries to show that people really are confused. So, they took an artist’s conception, both sides had the same artist’s conception. They asked slightly different questions. And they got slightly different results. But the court said yeah. I mean, it was roughly 50/50, 60/40. But the bottom line is in the artist’s conception, on the sign, where it says McSleep, it says right under the name, a Quality Inns brand. So, even though the picture has the answer of who do you think runs this hotel, half the people still got it wrong, and said McDonald’s. That’s a problem.
Nico: Especially when trade mark, as you say, is in place primarily for the consumer.
Nico: So, that’s why they’re doing these surveys is, they’re trying to figure out what the consumer actually thinks, and then presumably if the consumer is fooled, for lack of a better word, into thinking this Quality Inn hotel is actually a McDonald’s hotel, then, well, McDonald’s has a case.
Adam: Exactly, or for that matter, the consumer can have a case. You can have a situation where both parties agree this is totally cool. But if for whatever reason, it confuses the consumer, the federal trade commission could step in and say you just can’t do this anymore.
Nico: So, you can file a complaint as a company that owns a mark, or as a consumer who thinks they’re purchasing a mark.
Adam: Right. You go to the federal trade commission and say, I thought I was staying at the burger place, and it was some hotel chain instead and now I feel defrauded.
Nico: Interesting. So, in the past 10 years, we’ve seen a lot of companies or products put that lower case “i” in front of it, like iPod, I don’t know. You see them all the time. Things trying to crib on Apple’s iPod, iMac brand. But it doesn’t seem as though Apple’s done a good job of getting rid of that, it’s just become of a part of the culture at this point, that new technology will sometimes appear with the “i” in front of it.
Adam: Yeah. This is what is sort-of incorrectly called genericide, in trade mark law, in that the idea that once something reaches a certain level of popularity in the consciousness, it suddenly stops referring to the object or product you want it to refer to, and refers to everything of that class, or everything that shares something like that. And that’s –
Nico: Like a Q-tip? Or Kleenex?
Adam: Like Q-tip, Kleenex, Xerox was the original one, and Xerox has spent a lot of money trying to reclaim it.
Nico: You’re a victim of your own success.
Adam: You are a victim of your own success, and that’s why people who really want to skate at that level of popular culture have to invest a huge amount of money in it, and Coca-Cola is the big winning example there, where for, you know, there was a time, for 30 years in the south where anything that was a cola was a Coke. And in some places that still might be true, at a certain generation, but Coke spent a lot of money on advertising, and spent a lot of money policing restaurants where they would send people in under cover to ask for a Cola, and – or ask for a Coke, and if they got a Pepsi, the only people who could actually tell the difference blind-folded, the Coke’s employees, they would actually –
Nico: And even then I’m not so sure.
Adam: – they would actually send a letter saying, you’ve gotta stop. When people ask for a Coke, you gotta tell them you don’t have it. Or you gotta buy it from us. You can’t just give them a Pepsi.
Nico: And they’ve been pretty successful with that?
Adam: They’ve been very successful with that. Now, in just about any chain restaurant you go to, and a lot of the independent ones, if they don’t have Coke, they will let you know. If you say, I’d like a Coke, they say, is Pepsi fine, because that’s what we got. Is RC Cola fine? So, but they’ve spent – I mean, Coke has spent a huge amount of money on that.
Nico: So, again, to go back for our listeners, and viewers, because this is gonna go up on YouTube as well, for Xerox machine, the machine itself is what you would patent, I’m assuming. The Xerox brand is what you trade mark?
Adam: That’s what you would trade mark.
Nico: What’s copyright, then?
Adam: Copyright is the right of authors and creators to exploit the benefit of their work for a limited time. It covers anything that’s original –
Nico: So, trade mark is in perpetuity?
Adam: Trade mark doesn’t end. As long as you continue to use it, you continue to get the trade mark.
Nico: Patent doesn’t, but it’s different than copyright?
Adam: Right. Patent is much shorter. Copyright – there’s different terms, depending on when works are created, and whether they’re institutionally created. Now it’s like, if you’re an individual, you get a copyright for your entire natural life, and then 70 years thereafter, your heirs get to benefit – the benefit of it. Institutional created works, I think, are 120 years after first publication, now.
Nico: Unless you’re Disney, in which you can just change a law.
Adam: Unless you’re Disney, and you just ask – you call up Sonny Bono, or you call up whoever is in office, and you get another 20 years every time you make a phone call. It’s good to be the king, you know?
Nico: Yeah. So, what is something that you would copyright? We’ve discussed an example of what you’d patent, the Xerox machine, what you would trade mark, the brand Xerox and any of its slogans, perhaps, or tag lines. What’s something that you would copyright?
Adam: Pretty much anything you would think of as a medium for art would be subject to copyright protection. So –
Nico: A song? A book?
Adam: Songs, anything written, artwork, like paintings, sculptures. For dances, you can copyright the choreography notes as written works, and you get some protection there. Although, as Alfonso Ribeiro found out, the dance has to be sufficiently original, and the Carlton dance was not at that level, but – as opposed to say, Swan Lake, where there’s enough – it’s elaborate enough, and it’s distinctive enough that this might actually be something that’s subject to protection.
Nico: Did I hear that Happy Birthday, the song, is copyrighted?
Adam: It was, although I think now, people recognize that claim was probably not accurate. But for many years, I believe it was ASCAP, either ASCAP or BMI was, you know, they’d send you a nasty gram if you sang that over the air and you didn’t have their permission. I think, I wanna say 10 years ago, maybe 15, there was a news piece debunking the claims of authorship, and after that I think everybody calmed down and said okay fine, maybe Happy Birthday is fine. We’re not gonna enforce that one anymore.
Nico: Okay. So, I think we’ve covered the three big pieces of intellectual property, right?
Adam: Yeah, there’s trade secret, is the other one. But trade secret is really simple, in that if it’s a secret, and you don’t tell anybody, you can keep it a secret as long as you keep it a secret. It’s this weird self-executing kind of area of the law, where what it really means is, if as a business, you take reasonable steps to protect the secrecy of your secret, then –
Nico: It’s like the secret sauce on a special hamburger?
Adam: Right. Or, infamously, the formula for Coke. And then more bafflingly, the formula for New Coke. For some reason, they protected that. They sold it for 78 days in ’85, and they put it in the vault anyway. But I mean, I guess you have the vault, you might as well put it in the vault. But still, it’s not like people are rushing out to make New Coke. But okay, sure. As long as you keep it a secret, and you don’t – you act like it’s a secret, you have the ability to protect it from certain types of disclosures.
Nico: So, trade secrets, trademarks, patents, all things you need to register, correct?
Adam: You don’t have to register a trade secret. And you actually don’t have to register a trademark. Patents you have to register because they have to go through a whole process of making sure this really is something new, that it’s not actually something we’ve invented before.
Nico: Copyrights you don’t have to register, though, right?
Adam: You don’t have to.
Nico: It helps to.
Adam: You get some benefits, and if you wanna sue, you have to.
Adam: But no, copyright protection starts from the moment something is fixed in a tangible medium.
Nico: So, why would it matter that something’s copyrighted, or copywritten, I don’t know what the past tense, whatever the past tense is there, why would it matter if you can’t sue and enforce the copyright?
Adam: Well, you can. You just have to register it before you can enforce it. And then the scope of damages changes, depending on whether it was registered at the time of the lawsuit, or at the time of the infringement, I should say.
Nico: So, I can write a book that I don’t register, and then I see someone’s stealing my chapter or whatever from the book, or maybe even the book wholesale, and I decide I wanna sue them, I can then go and register it. And then once it’s registered, sue them. So, I can do the post hoc registration in preparation for the suit, but then the court would look at whether it was registered before the stealing happened.
Adam: Right. And federal – I’m talking about federal courts, too. There’s some stated where they’ll let you, in equity, file a law suit to stop someone from distributing something in that state, where I don’t think the state – I don’t know of any states that require that federal registration. That’s the whole point of being a state, is the federal government does its thing, you do your thing. But the benefits of statutory damages are limited to infringements that happened either after registration, or within a certain period of registration, if the infringement happened within six months of the publication.
Adam: So, there’s times where, basically, if you’ve published it, you’ve got six months to go out there and start that registration process.
Nico: Okay. So, we took 20 minutes here laying the groundwork, and now let’s circle back to my original purpose of having you on this podcast, is even if you’ve – if something is copywritten, or is trademarked, perhaps, people can use those creations in new ways, so long as they follow certain rules that are often hard to figure out, that you learn from various court cases in which people try to figure these things out, right? This is called fair use. So, for example, I am creating a video, or I am creating a podcast, and we’ve had this on previous podcasts, where we take audio from some other source, maybe it’s a news station, maybe it’s a movie, and cut in a few seconds of it to help hammer a point home harder, or something.
Or we reference something that Barak Obama said in a speech, and we cut that in from NBC which broadcasted it. So, how do those of us who are creators of new things navigate what we can and can’t use in what we’re creating? And you see this with meme culture, I’m assuming, all the time. People create new memes –
Adam: Oh yeah.
Nico: – on the internet, and often the images are not images that they took with their own camera.
Adam: That’s half the fun, right? The exaggeration that you add to it when you make it a meme. The most important thing to understand about fair use as a creator, and really anybody who wants to interact with it, is that it’s meant to be uncertain. This is also what makes it –
Nico: What do you mean by that?
Adam: It is not meant to give a fixed answer to a simple question. I know that’s a very strange thing to say, but the concept of fair use is designed to be flexible enough to protect people who are doing things we think are valuable, and to not quite reach the people who are doing things we think are economically harmful to creators, and not of other independent value.
Nico: Okay, so flesh that out a little bit for me. So, what are the things that a creator might use someone else’s creation for that we, as a society, think is valuable and wanna protect?
Adam: Well, we actually ended up enumerating some of them in the 1976 copyright act, and we added statutory fair use. Although fair use existed for 240 years before we wrote down a statute about it. There was common law fair use that’s older than the United States, that we inherited with English common law. So, I think one of the problems with the fair use statute as it’s written – because it is written really obliquely, and with a lot of uncertainty to it, is that it was sort-of written in light of two centuries and change of common law that is not transparent to the end user.
As someone who, you say, I wonder if I have a fair use, and you open up the statute and you read it, without 240 years of history, it’s even more baffling. But examples of uses that would be protected, comment and criticism is the most classic. I wanna say something about this thing I saw that upset me. I didn’t like Captain Marvel, I wanna tell you why I didn’t like Captain – or I did like Captain Marvel, and I thought the cat was great, and I wanna tell you all about that. I’m allowed to take some amount of that work to show you what it was I liked, or didn’t like. Parody and satire are two similar but different things.
Satire is using a work to make a point about some other thing in the world, parody is using a work to make fun of the work itself. And you get some protection for doing those things. And those are the types of uses, but the types of uses aren’t the only lens that we use, according to the statute. We also look at who’s doing the use. What is the purpose of the use –
Nico: Commercial, non-commercial, perhaps?
Adam: Exactly. Commercial, non-commercial, and this is where – when you’re in that grey area of uncertainty, that fair use is a big, wide grey area of uncertainty, and you’re trying to figure out, does this move the needle closer towards infringement, or closer towards a fair use, you say, well look. This is a non-profit organization that is trying to comment on an news story, that sounds a lot more like a fair use than this is a factory that’s pumping out reproductions of official merchandise. That doesn’t look fair to me. It might still be, there’s other factors, but it doesn’t look fair to me. And also, one of the most important things about that fair use statute to remember is it says, “A court shall consider, “ which means it’s a non-exclusive list. And there have been numerous cases over American history where the court said, yeah, I looked at all four factors, I didn’t think they were important. I’m introducing brand new factor No. 5, and I think one side wins, because I think this is the most important factor that I just made up.
Nico: So, we just talked about two factors. The kinds of use, it’s satire or criticism, I’m sure there’s plenty others. What else would fall under the kind of use?
Adam: Well, artistic use.
Nico: Yeah, artistic use.
Adam: Educational use, if you wanna use it in a classroom, is another big one.
Nico: Okay. And then, the user, is it someone just sitting behind their computer screen, creating something for fun in their parents’ basement, or is it a non-commercial enterprise, a non-profit enterprise, or is it a company that’s trying to crib off of Mattel’s product in order to sell something for a profit?
Adam: Knock off Moss Men, right?
Nico: Yeah. So, those are two factors.
Adam: Those are two. The third is the amount and substantiality of the portion used, is how they write it. That is both the quantitative test, and a qualitative test in that, the amount used is a percentage, right? Often you’ll see, a common fair use would be a single movie frame in a newspaper review of a movie. Because that single frame quantitatively represents a fraction of a fraction of a fraction of the movie. I think very few people see a single frame from a movie, and say well, good enough. I don’t have to see the movie now because I saw that one frame. You know, I saw Captain Marvel flying in the frame, it’s gotta be the same thing.
It’s just more of that for 40 minutes, right? So, no. People say, well, this is just a very small portion of the movie, I wanna see the whole movie.
Nico: So, let’s say you’re a news organization, and I don’t know if the viewers can see it in the back of the frame here, but I’ve got Charlie Hebdo, was a publication in France that was a subject of a terrorist attack, and let’s say you were reporting on that terrorist attack, and you wanna show the cover of one of the publications that prompted the terrorists to want to attack them. Would that be fair use if you’re printing that in the New York Times?
Adam: That would absolutely be faire use, yeah. It’s an essential element to a news story, and news reporting is one of those protected things we care about.
Nico: Gotcha. Often times, we watch movies or documentaries, and we see products in the background. Say I’m out on the street, I’m interviewing someone, and there’s a Rite Aid in the background. Can you have that in the background? Because sometimes you see it blurred out. Other times, you do not. And I guess I should probably preface this by saying, any of our listeners or viewers who are hearing Adam go through this, don’t take his word for it. If you’re creating a movie, you should probably go and seek outside legal advice.
Adam: Most definitely. I mean, it is – as I said, it’s very grey. So, little things will shift it one way or the other, and it’s – and you’re far better off getting somebody to look at your particular situation, because this could be entirely different based on something we haven’t even thought to bring up in this discussion. Ordinarily, if it’s incidental to the thing that’s happening, and it’s a factual representation of what’s happening, there’s no particular obligation to remove it. Sometimes, news channels that have other things on them will blur things out anyway, because –
Nico: To be extra safe.
Adam: To be extra safe, I mean, if you’re the –
Nico: But there would be a problem with doing that, too, because then that one time you don’t blur it out, that company can come to you and say, well, you blurred out everyone else’s but our logo, for example.
Adam: Right. And a lot of times, there’s no obligation to blur it, but they were trying to appease the big advertiser. So, if you’re Joe sandwich shop, and if you show up in the background of To Catch a Predator, NBC might not be super motivated to blur you out. Whereas if you’re McDonald’s and you show up in the background of To Catch a Predator, suddenly they might be actually really interested in blurring your logo, because I bet you buy more add space.
Nico: But that wouldn’t change the fair use calculus at a court ruling?
Adam: No, not at all. That’s just, I’m trying to be nice to people. But certainly if, for whatever reason, the predator shows up at McDonald’s, which did happen, that’s why I’m using this example, on To Catch a Predator, you absolutely can include the McDonald’s regalia, to call it, for lack of a better – it’s probably a better word for Burger King, but the McDonald’s licensing, if it happens to organically show up in the show.
Nico: Okay. So, we’ve go the user, we’ve got the type of use, we’ve got the duration of the use –
Adam: And we’re only halfway through three, because we said amount and substantiality. Substantiality is how significant is this portion you took to the meaning of the overall whole?
Nico: So, this is a two-parter.
Adam: It’s a two-parter, right. And the famous case about this is the Ford’s memoirs case. Where President Ford writes a 600 page memoir, evidently, and he had – well, his publisher had an exclusive deal to publish excerpts with Time magazine, I think it was. But as happens with any embargoed book, a book seller put it out in the window early. We saw this with every Harry Potter book, too. A journalist was walking by, saw the book, and bought it. Turned out the journalist worked for The Nation, and The Nation published 2 pages of the 600 page book. Well, that third factor is the amount of substantiality.
And up until this point, The Nation is doing pretty well on the test. They are a news publication. This work is important to the public, I mean, it is the memoirs of a president. It’s not like that doesn’t have some significance from a newsworthiness perspective.
Nico: The amount is low, it’s just two pages in a 600 page memoir, but –
Adam: But the supreme court said it was a very substantial two pages, because it was the two pages where Ford discussed pardoning Nixon. And the Supreme Court said if you were gonna pay the cover price for this book, which I think at the time was $25, $24.99, or something like that. Essentially, the import of the ruling is, we don’t think anyone would pay $24.99 for anything Ford wrote except for the two pages where he discussed why he would pardon Nixon. I thought, man, what a weird way to kick a guy when he’s down. But that was the decision. And this sort of translation to other things, too, where I talked about you take that one still from the movie. But if you take the still from the horror movie where the killer takes off the mask, you’ve taken the whole value of the movie. Now you’ve ruined the ending of the movie for me. So, that takes the whole value of it, even though what you took was quantitatively small, it was qualitatively the “heart of the work”, is the phrase that the Supreme Court used.
Nico: Yeah. Okay. Now, what is that fourth factor?
Adam: The fourth factor is the effect on the market value of the underlying work by the new use. Sometimes you hear it called the market replacement test, which is this idea of, if I wanted to buy the original work, can I buy this work instead, and get the full value of the original work? Does this satisfy my need to have that?
Nico: Is there an important case on this score that might elucidate?
Adam: There’s a few, although they’re all kind-of tricky in some ways. Because, you can measure – part of it depends on what do you consider the market? I mean, the case that ended up being settled, so we never got a ruling but is the best illustration of difficulty in defining this test, is the Shepard Fairey Obama Hope poster, where that was an alteration of an Associated Press photograph. Did the Hope poster replace the market for the Associated Press photograph? I don’t know, what’s the market? Well, the Associated Press sells photos to newspapers, to online publications, and also to anybody who wants to go to their photo library and pay them a certain amount of money, they’ll license the photo.
But, what does the Hope poster – what is the market for the Hope poster? Well, it was for voters, right? Fans of Obama. Is there overlap between somebody who might want to buy a Hope poster and might want to buy a photo of the president? Maybe. But it’s not the same. If I’m a news publication, I don’t want the Hope poster, I want my photo.
Nico: It doesn’t – I mean, when I think if the Hope poster, I’m sure it must have come from an original photograph, but it doesn’t look – it’s a very stylized image of Obama. It almost looks like a mosaic. I’ll try and link to it in the show notes, here, but it’s got all these different stylized colors, pieces, it says Hope on it, of course, which probably wasn’t in the original photo.
Adam: Not in the original photo.
Nico: So, this is the idea, this is like a creator, someone sitting behind a computer screen taking an image that served a news purpose before, they like Obama, and creating a new, I don’t even know what you would call it. A poster out of it.
Adam: Yeah, I mean, certainly one of the issues that came up later was the transformative use test, which I guess we’ll get into next, but the idea that –
Nico: Oh, there’s a fifth factor, huh?
Adam: Well, it’s sort-of a replacement factor. It’s like, because this test if very difficult to use, I don’t generally recommend creators sit down and try to use these four factors. I think they’re tricky, they can be misleading, if you don’t sit around and read all the case law, it’s hard to know what any of these things actually mean. I mean, I’m not just substantiality alone, as like a test, is a weird phrase. But the second factor is actually written as, the purpose and character – no, the first factor is the purpose and character of the use. The second factor is the nature of the copyrighted work.
Meaning what? In theory, what that means is, is it a factual work, or is it an expressive work? We all know that you can’t copyright a fact. If something is just true, it’s true. Which is why when people got sued for copying phone numbers out of phone books, ultimately the Supreme Court said you can’t stop people from copying phone numbers out of phone books. It used to be common with map makers. If you made a map, you would include fake cities on it, or fake features on the map.
Nico: To see who was trying to trying to steal your map?
Adam: To see who copied your map. Because if you actually went out there, and you verified what all the cities were in Arizona, and a guy just takes your map of Arizona, and they included, you know, Goldsteinville, which I know isn’t a real place, well actually I don’t but I assume isn’t a real place – apologies to the citizens of Goldsteinville if you’re out there anywhere. I did not know. But they stopped doing that, because the Supreme Court said, we don’t care. If you represent it as a fact, people are allowed to copy facts. So, your cleverness to figure out who’s been copying you is understood, but it doesn’t give you the right to stop them from copying you. Because you can copy a fact.
Nico: Okay, so have we covered everything you need to know when analyzing whether your creative use of something that someone else created falls under fair use?
Adam: We haven ‘t covered the most important one, which is what is the – what people actually do. And it’s the test that the higher this test ranks, the better you come out on this test, the less we care about anything else.
Nico: This is that transformative use?
Adam: This is the transformative use test, which is, did you add a new and different meaning to the work than the meaning intended by the original author? And this is what courts have said. The more transformative a work is, the less significant we think any of the other factors are. How much you take becomes less significant. How substantial a portion you took was – if you take the heart of the work, it’s less significant. It might still matter, in some cases, but we’re gonna devalue that factor. All of the effect on the market, we’re gonna devalue that factor somewhat. Because what we really care about is, are you doing something different?
Did you add new value to this? Or are you just trying to pass off on the value its original creator had?
Nico: Does crediting the original creator matter at all when determining faire use?
Adam: Almost never.
Nico: Okay. Because sometimes you’ll see in movies, or documentaries in particular, like in the bottom right hand corner, and in news stories, credit to this YouTube user, for example. Because they got the clip from YouTube. And it could be that the credit is there because they reached out to the creator and asked permission to use, and the creator said yes, as long as you credit me. Might also be there just because they put it there because they think they might –
Adam: It’s better than doing nothing, I’ll say that about it. Like, if I had to choose between taking someone’s clip and taking someone’s clip with crediting them, I would credit them. But nothing in fair use changes by virtue of including the credit. Some places, it’s sort-of a convention, to a degree. Because an alternative to copyright schemes is the creative commons licensing, where you see sometimes there’ll be a little badge, licensed under CC Attribution 3.0 license. And you click on it, it takes you to a web page that says you can use it, as long as you attribute it. So, sometimes it helps in that. And sometimes, all the creator wants is credit, and it’s simpler to post it in there than it is at the end.
Nico: Because there’s a – are you familiar with Barstool Sports?
Nico: They have an Instagram account where they’re – it pretty much is just all content created by other people. And they credit this Instagram user, or that Instagram user, this Twitter or Facebook user, this Twitter or Facebook user, in sharing their videos. And they are a for profit company that is getting likes, follows, tweets, because of this stuff. And there’s actually been a couple of controversies where they’ve taken someone else’s content and those people have gotten pissed at them as a result. I mean, it’s not like they’re even using a portion of the content, either. They’re using the entirety of the content but the always credit the user.
And in my mind, unsophisticated mind, I’m like, oh, well they’re crediting the user, so that must be how they get away with it. But you’re saying no.
Adam: No. I mean, if – it’s one of those things where, 999 of 1000 people might be cool with that, but one day you hit the one guy who isn’t cool with it, and now you’ve got a real legal question there, where it’s gonna depend on how well you argue it, and what judge you get on what day. Which goes back to this idea of why is it a grey area? Why, if it’s a grey area, well, we feel like if you’re the guy who’s the non-profit, and you’re the guy who’s the news reporter, we want you to feel like you’re gonna get the benefit of the doubt when these questions come up. When you’re the for profit corporation, I would be more nervous. Because I feel like I’m not going into the courtroom with the presumption that fair use is for me.
Nico: So, what about professional sports? I watch the NFL a lot. Before and after the game, they say no part of this broadcast can be used without the express written permission of the NFL. Can it, though?
Adam: Yeah, absolutely. I mean –
Nico: So, despite their saying, you can’t use any portion of this, no matter how it’s used, no matter what length is used, you can’t use it, because it’s copyrighted by the NFL, and you can only use it if you get permission from us, you’re saying that statement is essentially meaningless?
Adam: They can’t actually enforce that. I mean, it might be nice to want to do that – and this is one area where, we never officially got full resolution of this, but I think it’s pretty clear there is some portion of statutory fair use that is mandated by the first amendment.
Nico: And that gets us to the first amendment free speech connection, which is of course is the purpose of this podcast.
Adam: And first amendment law is actually very similar in that it does have a lot of grey areas, and they’re grey because we recognize we can’t envision everything that’s ever gonna happen. We know that there’s gonna be situations confronting us we haven’t seen before. So, we want to create a body of law that has principles that allow us to stretch them in a way that feels predictable and fair, but also acknowledges the future is unknown, and we don’t know what things are gonna look like in the future. I mean, I said earlier, there’s times where courts will be like, I don’t think any of these four factors matter. I’m gonna decide this on this new factor I just made up.
That is most common in cases where courts are confronted with new technology. One of the cases earliest in my career I remember is when courts decided that cashing browser history was a fair use. There’s now a statutory exemption for that because the copyright office is very good about going back and adding in things that need to be added in over time, and getting congress to say okay, this is okay, and this is okay, as we need to do it. But at the time, there was no exemption. And the way web browsers work, they download a local copy of what’s on the remote server, and then display it to you, and then save that copy.
So, if you go back, it loads faster. And they can load other pages faster. It’s how the internet works. Well, technologically, that’s great, but there was no permission to make that copy. Because you could also have made the decision to just stream the content remotely, display it without making a local copy saved. And so, since copying is one of the exclusive rights of copyright, technically speaking, this was an infringement. And what was the user’s purpose? I don’t know. People working at commercial entities were infringing it. My competitors were downloading my webpage and infringing it. And I could prove it, because I’ve got their IP addresses. And the court said yeah, yeah, I get it, I get it, but no, at the end of the day. And they said this was a creation of technological innovation.
The internet requires it to work properly, especially since it’s the late ‘90s at the time. So, it’s not like our internet speeds are that fast. You’re telling me you wanna slow down everybody’s internet speed by a factor of five, and I’m saying no, I don’t think you have that right.
Nico: So, you were drawing the parallels with the first amendment insofar as the way the law is applied is similar, in intellectual property. But the purpose of faire use has a free speech implication, insofar as fair use is often claimed for the creation of expressive media. So, documentaries, it’s art, satire.
Adam: I’d go even further than that, in that the purpose of copyright law is for the creation of expressive media. And if you go to the Constitution, it says, to promote the progress of science and the useful arts, we grant creators the exclusive use of their creations. So, the progress of science, and useful arts by the founders –
Nico: The idea being that people will create because they can use that – they can get a benefit from that creation monetarily, or – I don’t know.
Adam: But that’s also why Constitutionally, our copyrights have to be time limited. We cannot grant a perpetual copyright in the United States, because that doesn’t promote the progress of science or the useful arts. Whereas, in the UK there’s a couple perpetual copyrights, including the copyright in Peter Pan, because they decided, they being the House of Lords before the European community stripped most of their power, decided that it would be bad for the copyright to expire because it had been given to a children’s hospital. They use the money to help sick children.
Nico: So, they did it on an ad hoc basis?
Adam: They just said, by act of parliament, this is now perpetual copyright. The moment they did that, it became public domain in the United States because we can’t respect a perpetual copyright, because the Constitution says – well first of all, the Constitution says it has to be time limited. Second of all, it says it’s to promote the progress of science and the useful arts.
Nico: So, granting that copyright for a certain time limited period gives the creator the benefit, then after a certain time, the benefit, in their eyes, needs to go out to the masses. I remember when I was in college, I forget what year it was, what year was Charles Darwin’s Origin of Species written? In any case, I was standing in front of Sample Gates at Indiana University, and people were handing out copies of The Origin of Species. And it was actually members of this one religion. It was like a creationist interpretation of the Origin of the Species. It has a prolog that was written my someone kind-of picking at Charles Darwin’s Origin of Species.
They were handing it out because, I guess, it had just gone into the public domain. And that was kind-of my first interaction with intellectual property law, because I was like oh, Charles Darwin’s been dead for a very long time, but I guess his estate had exclusive rights to publish Origin of Species up until this week, more or less. So, things enter into the public domain, but it’s different in every county, and the United States –
Adam: In the United States it’s been stalled for 20-ish years, because Disney was worried about Mickey Mouse, and they got an extension, is what it boils down to.
Nico: Yeah, because Mickey Mouse had a copyright, and –
Adam: He was gonna be heading towards the public domain, and couldn’t have that. So, they got a 20 year extension. I think they just got another extension, if I’m – at leas they’re advocating for one, if they haven’t gotten it yet.
Nico: So, they don’t get it themselves, but everyone does it.
Adam: No, they change the law for everybody. They extent it further. Which is, at some point, you wonder if they’re gonna keep doing that, only because, well, No. 1, as I said, trademark is good as long as you use it. Mickey Mouse is still a trademark.
Nico: So, you can lose a mark just by not using it?
Adam: Oh yeah. Absolutely. A failure to continue – to have the mark in continuous use will eventually –
Nico: Is there any big case on that? Is there a company that – ?
Adam: Actually, one that I would probably bring up was Captain Marvel, because for many, many years, the character that they now call Shazam was Captain Marvel. And DC had bought Faucet Publications that had published it as Captain Marvel. It was just a weird accident that another publishing company chose the name Marvel. So, then for a long time, Marvel Comics was frustrated that they couldn’t have a Captain Marvel because there was a use of Captain Marvel in DC. And ultimately, they just – DC was not doing financially well. They didn’t publish it for a bunch of years, and as soon as they felt comfortable, then Marvel jumped up and got a Captain Marvel, which is why there’s been five characters that use the Captain Marvel name over the years.
Because the only thing really Marvel cares about is keeping it out of the hands of DC. I mean, they wanna sell comic books and movies and things, too. But from their perspective, they can never not be publishing something with Captain Marvel in it, because as soon as they do that, that clock starts ticking where how long do you think DC has to wait before they decide it’s now safe to use again? I don’t know. It depends. If I could actually show that there was a 24 hour period where nothing was marketed with Captain Marvel’s name on it from Marvel, and I was DC, I’d take a shot, shoot.
Nico: So, things that wouldn’t be fair use are pretty much, Napster’s whole business model.
Adam: Right, right. Things that are primarily for profit. One of the –
Nico: Was Napster for profit?
Adam: It was not for profit at all, actually. But it failed that market replacement test. Where it was –
Nico: Let’s describe for our listeners who might be younger and might not remember Napster in the early 2000, and Metallica’s battles with them.
Adam: This is what made me stop listening to Metallica, which is really pouty on my part because they weren’t wrong, I just didn’t like it. Sorry about that. Napster was a semi-centralized –
Nico: Music pirating company.
Adam: It was a music pirating service, was what it was for. It was based on this – it’s an example of how rationalization can only get you so far as a business model. Because you could say well look, if I’m hanging out with my friends, and each of us has a CD, because back then, that was a thing, people had those, right?
Nico: Now our computers don’t even have them.
Adam: Right. We don’t even have – if somebody gave me a CD, I wouldn’t know what to do with it. It’s actually, a literal coaster. I got nothing, here. It’s shiny, so I’ll look at it. But you get in a room with your friends and you can trade CDs, and you can listen to them. And said well, okay, why do I have to be in the room with my friends? Why can‘t I just trade my music with people from far away? Isn’t that the same thing? It is not, because to do that requires making a lot of copies, and those copies –
Nico: Digital copies.
Adam: – digital copies, and that is going to infringe a bunch of rights. So, Napster ended up – and Napster isn’t even the saddest story of that era for me. MP3.com is the saddest story for that era for me. MP3.com had a thing they called the music locker. CDs have this inner ring where, you know, how you hold it up in the light and there’s all the data, and then on the inside you would see numbers and things, in that inner ring. MP3.com had a thing where you could put your CD into your drive, rather than ripping it and having to deal with all the files, MP3.com had already done that.
And they had a giant library of ripped files and high quality that they would stream to you if you put in a CD to prove you had a copy of it. But you only had to put it in once, and then you could –
Nico: And they knew you had a copy of it because they could read that inner ring.
Adam: They read that inner ring. The recording industry, the RIAA didn’t like it because they had to rip copies of the albums to make the library that made the thing work. The judge said, okay, that’s statutory damages, and being relatively kind, I think, assessed was gonna do it on a per album basis. There’s various ways you can calculate damages, but at the end of the day when he did the math, it was 500 million dollars they were liable for. Which is real money now, let alone back then. I mean, that was a whole lot of money back then. Like, that’s – I would even go so far to say that’s more than Jeff Bezos has in his couch right now. 500 million. You can’t just search and buy it. That’s actual, you gotta write a check or something.
Nico: He lowered the amount, then? The damages?
Adam: Did he, after that? I don’t even remember.
Nico: Oh, I don’t know, I’m just asking. It’s actually a very savvy business model. You would think that one of the recording industries, this is, I’m assuming, before streaming became very popular, would’ve bought up that technology so that their customers could have more ways to use the product that they purchased.
Adam: Right. I mean, had this evolved slightly differently, MP3.com could’ve partnered with the recording industry and would be a major destination everybody knows today. And everybody who owns stock in it would still be rich. I’m not sure they lowered the damages, I think it was just clear that they didn’t have that much money. So it ended up with the site just turning over their assets.
Nico: Okay. Napster, not fair use.
Adam: No, not fair use at all.
Nico: Torrenting, not fair use.
Adam: And we’re talking about the market replacement test there. Since everything they were doing was frustrating the sale of an actual CD at the time, I don’t think – this is pre iTunes. There was no legal way to buy MP3s for most of Napster’s life. I think, maybe towards the end of it, that changed.
Nico: Yeah. Okay, final question for you, I guess I maybe have two questions. This is all very fascinating for me, I have no idea if it’s fascinating to our listeners or to our viewers, but it might be useful to some of them.
Adam: It’ll count for something.
Nico: Night of the Living Dead, are you familiar with that story? Because my understanding is Night of the Living Dead was originally called Night of the Flesh Eaters. And they decided to change the name to the Night of the Living Dead. This is, of course, the zombie movie. And in changing the name out, someone forgot to put the copyright notice at the front of it. And as a result, it immediately went into the public domain. And this is just what I’m learning from Wikipedia and from stories I’ve heard. And as a result of it immediately going into the public domain, the zombie genre was more or less created, because the public took things that this movie had, and created their own zombie movies from it.
But that’s only because they didn’t have the copyright notice in the beginning. Are you familiar with that story?
Adam: I hadn’t heard that story, but that was a big issue until 1989. The copyright law has been amended a few times over the years, and it’s changed in it’s formalities. Like, in terms of calculating the duration of a copyright, or some things in the public domain, you really have to use an online calculator because it is elaborate, all the little nuances. But one of the bigger ones was that up until 1989, I think it was March 1st, ’89, I wanna say. It’s some time in ’89, you had to have a copyright notice published with the work to get he benefit of copyright. And that’s one of the things that changes sometimes, depending on when you published. Registration was what it required.
You didn’t get a copyright until you registered. Now, of course, you get the copyright the moment you write it down whether you have the registration notice or not. But for a long period, ’76 to ’89 – ’78 to ’89, you had to have notice, was what it required. So, you had to have that little C in a circle, the name of the author and the year. And if you didn’t do that, if that wasn’t somewhere on the work, it entered the public domain when it was published. So, one art mistake would easily have had that effect.
Nico: Yeah, by not putting the copyright notice in the title slide. Interesting. What’s the digital, what is it, digital millennium copyright act? This is – sometimes you see people trying to take copyrighted material off the internet and they file one of these DM something takedown notice.
Adam: DMCA takedown notices. Digital millennium copyright act, it was rooted in this idea that there’s a difference between fair use and fair access. And when it was being debated in Congress, they used Blockbuster as an example, because that existed, and they said, you might have the ability to make a fair use of a movie in Blockbuster. If you want to do a review, you have the right to make a fair use of it. You don’t have the right to break into Blockbuster to get it. So, they try to analogize that and say, you can be liable for a copyright violation, even if what you did was protected, if you had to defeat an access control prevention measure to acquire the thing you’re trying to make a fair use of.
Access control prevention measure was then helpfully defined as anything that stops you from getting to something.
Nico: So, for example, if I’m creating a documentary, as I am right now, and I go to ABC news and ask them for their archival footage for some event, and that archival footage is available nowhere else, and I have to go to ABC and I have to pay them to get access to it. If I pay them to get access to it, and then I get access to it, and use it without crediting them or paying them for its publication, that would be –
Adam: That could get you into some DMCA trouble.
Nico: Yeah. It’s not something we’re gonna do, don’t worry ABC, but –
Adam: Other things that the DMCA did was they specified a procedure for complaining about copyright online. Because one thing that the government was concerned about was, is this internet thing really gonna take off or not? Because in ’99, it had been around a while, but it could’ve been killed.
Nico: The stock market sure thought it would take off. Then they crashed and burned.
Adam: Right. They thought it was gonna be bigger than anything. They thought internet was gonna be Amazon. What they wanted to do was create a method for avoiding getting the internet companies in the middle of copyright disputes. Because ordinarily, in copyright law, there’s liability for anybody involved in the infringement. If I infringed a copyright in a book that I wrote, which happens at times, and I then take that book, and I go to the book store, and they sell them on the shelves in the book store, the book store is liable too. Because anybody involved in the chain of distributing this infringing work could be liable for copyright infringement. So, they created this exception that says, if you’re an internet company, and you didn’t create the content, you’re not liable for infringing content posted my other users or providers as long as you do two things. One of them is you have to designate an agent with the copyright office. An agent to receive service. And the other thing is, you have to follow this checklist when you get notified of an infringement. And the checklist, for anybody who’s had a YouTube video taken down, they know this checklist pretty well. Because it’s exactly what YouTube does, where they say, we got notified that you have infringing content.
So we took your video down. You can respond to us here. If you write back anything other than, ooops. If you write back I disagree, they put your video back up, and then they trade your information and the other person’s information so that you can sue each other. And that’s their obligation. So, as long as they do that, they aren’t gonna be liable for copyright infringement other people post on their websites.
Nico: And this is from the digital millennium copyright act?
Nico: Okay. Well Adam, I think we’re running out of time, here. We’ve been talking about this for an hour. Is there anything here at the end that you think’s worth knowing about? That we haven’t discussed, of course.
Adam: Well, I guess if you really want to try to get an organic understanding of copyright law, and fair use law in particular, there is something to be said for, there are some good law review articles out there that trace its evolution from English common law, where you can actually see that, from the moment somebody conceived of fair use as a concept, it was to promote the public good. It was to promote discourse and to promote the exchange if ideas. And that had held true in every iteration to today. So, whenever you’re faced with these questions, certainly ask yourself, am I making a new and different use? Ask yourself the transformative use question, but then also ask yourself, what would be the consequences of me not getting to do this as a faire use? Would we lose something?
Nico: Yeah. Would society lose something? What would other people lose? What would other people not be able to do as a result of me not being able to do this?
Adam: Exactly. If the answer is yes, we would lose something, that’s probably what fair use is there to protect. If the answer is no, there’s 18 other people making these knock off Moss Men dolls, nobody’s gonna care, then I would hesitate a little bit further and say, should I be getting a license? If there’re 17 other people who got the license for this, should I be getting a license? But if what I’m doing doesn’t have any analog because I’m creating something new, I’m adding a new meaning, maybe I’m okay. Maybe I’m the beneficiary. I’m who this was intended to protect all along.
Nico: Well, we are certainly the beneficiary of all of your knowledge on this subject, Adam. I appreciate you sitting down with me today. That was Adam Goldstein. He’s a program officer here at FIRE’s individual rights defense program. Has an interest in intellectual property. Spent some time, also, right Adam, at the Student Press Law Center?
Adam: Yes, yeah. 13 years.
Nico: An organization we work with quite frequently. This podcast is hosted, produced, and recorded by me, Nico Perrino, and edited by my colleague Aaron Reese. If you have feedback on this podcast or have a question for me or Adam, you can reach us at SoToSpeak@thefire.org, and we can also be found on Facebook, at Facebook.com/SoToSpeakpodcast, and on Twitter, at Twitter.com/Freespeechtalk. As you know, we like reviews. Reviews help attract new listeners to the show, so please leave us a review on Apple podcast, Google play, or wherever else you get your podcasts, we would really appreciate it. And until next time, thank you again for listening.