Amicus Curiae Brief — Frederick L. Allen, et al., Petitioners v. Roy A. Cooper, III, Governor of North Carolina, et al.

Supreme Court briefSep 27, 2019

Ask Donna

What actually matters in this document.

Text

No. 18-877

================================================================================================================

In The

Supreme Court of the United States

-----------------------------------------------------------------FREDERICK L. ALLEN, et al.,

Petitioners,

ROY A. COOPER, III,

as Governor of North Carolina, et al.,

Respondents.

-----------------------------------------------------------------On Writ Of Certiorari To The

United States Court Of Appeals

For The Fourth Circuit

-----------------------------------------------------------------BRIEF OF PROFESSOR SIMONE ROSE AS

AMICUS CURIAE IN SUPPORT OF RESPONDENTS

-----------------------------------------------------------------ANDREW H. ERTESCHIK

Counsel of Record

ERIC P. STEVENS

SAAD GUL

JOHN MICHAEL DURNOVICH

NATHANIEL C. ZINKOW

POYNER SPRUILL LLP

Post Office Box 1801

Raleigh, NC 27602

(919) 783-2895

aerteschik@poynerspruill.com

Counsel for Amicus Curiae

================================================================================================================

COCKLE LEGAL BRIEFS (800) 225-6964

WWW.COCKLELEGALBRIEFS.COM

TABLE OF CONTENTS

TABLE OF CONTENTS .............................................. i

TABLE OF AUTHORITIES ........................................ ii

INTEREST OF AMICUS CURIAE ..............................1

INTRODUCTION .........................................................2

SUMMARY OF ARGUMENT ......................................3

ARGUMENT .................................................................5

Under the de minimis use doctrine, North

Carolina did not violate copyright law ..............5

A. The de minimis use doctrine excuses

trivial copying of copyrighted works...........5

B. North Carolina’s limited display of a

fragment of Allen’s works was a de

minimis use .................................................8

II. Under the fair-use doctrine, North Carolina

did not violate copyright law ...........................15

A. Certain fair uses of copyrighted works

are permissible under copyright law ........15

B. North Carolina’s use of Allen’s works

falls within the fair-use doctrine ..............18

1. North Carolina’s use did not reduce

the market value of Allen’s works .......18

2. North Carolina’s use educated the

public about the state’s history ............20

3. North Carolina relied in good faith

on its contract with Allen .....................23

CONCLUSION ...........................................................26

TABLE OF AUTHORITIES

Cases

Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................10

Bill Graham Archives v. Dorling Kindersley Ltd.,

448 F.3d 605 (2d Cir. 2006) ............................... 20, 22

Bouchat v. Baltimore Ravens Ltd. P’ship, 619

F.3d 301 (4th Cir. 2010) ...........................................21

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569

(1994) ..................................................... 15, 20, 21, 23

Corbello v. Vito, 2017 WL 2587924 (D. Nev. June

14, 2017) ..................................................................19

Elsmere Music, Inc. v. National Broad. Co., 482

F. Supp. 741 (S.D.N.Y.) ......................................... 6, 14

Elvis Presley Enters., Inc. v. Passport Video, 349

F.3d 622 (9th Cir. 2003) ...........................................20

G.R. Leonard & Co. v. Stack, 386 F.2d 38 (7th Cir.

1967) ..........................................................................5

Goldstein v. California, 412 U.S. 546 (1973) ..............22

Gordon v. Nextel Commc’ns, 345 F.3d 922 (6th

Cir. 2003) ...................................................................6

Harper & Row, Publishers, Inc. v. Nation Enters.,

471 U.S. 539 (1985) ..................................... 16, 18, 23

Mazur v. Stein, 347 U.S. 201 (1954) ...........................22

MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d

1548 (11th Cir. 1996) .................................................7

Newton v. Diamond, 388 F.3d 1189 (9th Cir.

2004) ..........................................................................6

iii

Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d

1146 (9th Cir. 2007) .................................................23

Perris v. Hexamer, 99 U.S. 674 (1878) ..........................5

Peter F. Gaito Architecture, LLC v. Simone Dev.

Corp., 602 F.3d 57 (2d Cir. 2010)...............................8

Peter Letterese & Assocs., Inc. v. World Inst. of

Scientology Enters., 533 F.3d 1287 (11th Cir.

2008) ........................................................................23

Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362

(E.D. Va. 1995) ...........................................................7

Ringgold v. Black Entm’t Television, Inc., 126

F.3d 70 (2d Cir. 1997) ................................................5

Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) .............23

Sandoval v. New Line Cinema Corp., 147 F.3d

215 (2d Cir. 1998) .................................... 6, 12, 13, 14

Sony Corp. of Am. v. Universal City Studios, Inc.,

464 U.S. 417 (1984) ........................................... 18, 19

Suntrust Bank v. Houghton Mifflin Co., 268 F.3d

1257 (11th Cir. 2001) ...............................................16

Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg

L.P., 756 F.3d 73 (2d Cir. 2014) ...............................21

Toulmin v. Rike-Kumler Co., 316 F.2d 232 (6th

Cir. 1963) ...................................................................6

Twentieth Century Music v. Aiken, 422 U.S. 151

(1975) .......................................................................22

Vault Corp. v. Quaid Software Ltd., 847 F.2d 255

(5th Cir. 1988)............................................................6

Warner Bros., Inc. v. American Broad. Cos., 720

F.2d 231 (2d Cir. 1983) ..............................................5

West Publ’g Co. v. Edward Thompson Co., 169 F.

833 (E.D.N.Y. 1909) ...................................................5

Wright v. Warner Books, Inc., 953 F.2d 731 (2d

Cir. 1991) ...................................................................7

Constitutional Provisions

U.S. Const. art. I, § 8, cl. 8...........................................15

Statutes

17 U.S.C. § 107 ............................................................16

Rules and Regulations

Fed. R. Civ. P. 12(b)(6) ...................................................8

Other Authorities

H.R. Rep. No. 94-1476 (1976) .....................................17

Internet Movie Database, Seven (Se7en) ...................13

Pierre N. Leval, Nimmer Lecture: Fair Use

Rescued, 44 UCLA L. Rev. 1449 (1997) ....................5

Pierre N. Leval, Toward A Fair Use Standard,

103 Harv. L. Rev. 1105 (1990) .................................15

Adam Liptak, Blackbeard’s Ship Heads to

Supreme Court in a Battle Over Another Sort

of Piracy, N.Y. Times (Sept. 4, 2019) .......................19

Melville B. Nimmer & David Nimmer, Nimmer on

William F. Patry, Patry on Copyright (2007) ...... passim

INTEREST OF AMICUS CURIAE1

Simone Rose is a Professor of Law and the

Associate Dean for Intellectual Property Innovation

at the Wake Forest University School of Law.2

Professor Rose teaches courses in copyright law

and writes about legal issues affecting the scope of

the Copyright Act. She has an interest in the sound

development of this area of the law.

As a neutral scholar of copyright law, Professor

Rose seeks to bring clarity and an unbiased

perspective to this case—a perspective that asks

the Court to reject the assumptions that Allen and

his amici make about the State of North Carolina’s

conduct here.

In accordance with Supreme Court Rule 37.6, Professor

Rose states that no counsel for a party authored this brief in

whole or in part, and that no person or entity, other than she and

her counsel, made a monetary contribution intended to fund the

preparation and submission of this brief. All parties have filed

letters granting blanket consent to the filing of amicus briefs.

Professor Rose’s institutional affiliation is provided for

identification purposes only.

INTRODUCTION

Petitioner Frederick Allen suggests that the

response to a “clearly widespread” and “clearly

increasing” phenomenon of states infringing copyrights

—a “menace,” in Allen’s words. Pet’r’s Br. 19, 47.

The “menace” that Allen portrays, however, is not

one that copyright law acknowledges.

Allen and his amici assume that North Carolina’s

conduct here amounts to a copyright violation. But

under two distinct copyright law doctrines—the de

minimis use doctrine and the fair-use doctrine—

Allen’s claims do not amount to a copyright violation

at all. Thus, North Carolina’s conduct here is not

indicative of a “clearly widespread” and “clearly

increasing” phenomenon of states infringing copyrights,

much less one that could justify abrogating the Eleventh

Amendment.

For the reasons that follow, the Court should reject

Allen and his amici’s mistaken assumption that North

Carolina violated copyright law.

SUMMARY OF ARGUMENT

Allen and his amici’s assumption that North

Carolina violated the Copyright Act is mistaken,

because two doctrines of copyright law permitted

North Carolina’s actions here.

First, North Carolina’s actions were permissible

under copyright law’s de minimis use doctrine. Under

the de minimis use doctrine, certain technical

violations of the Copyright Act are so trivial that the

law will not impose legal consequences.

Here, North Carolina’s conduct falls within the

de minimis use doctrine. Allen’s works consist of

thousands of photographs and hundreds of hours of

video footage from over thirteen years, but the State

is alleged to have used only a thumbnail of a single

photograph and a few seconds of video. Under the de

minimis use doctrine, North Carolina’s use of a mere

fragment of Allen’s work did not amount to a copyright

violation.

Second, North Carolina’s actions here were

permissible under copyright law’s fair-use doctrine.

The fair-use doctrine strikes a balance between the

need to protect copyrighted material while allowing

others to build upon it. Certain uses that reflect that

balance—so-called “fair” uses—do not amount to a

Of the factors that tend to establish fair use, the

most important is whether the use reduces the market

value of the original work. Courts also look to whether

the original work is used to catalog an important

historical event, and whether the user relies in good

faith on a contract with the copyright holder.

As described below, all three of those factors are

present here. First, North Carolina did not reduce the

market value of Allen’s work; if anything, it may have

increased the value. Second, the North Carolina

Department of Natural and Cultural Resources, the

agency charged with documenting and preserving

the state’s history, transformed Allen’s work to educate

the public about a historical event. Finally, North

Carolina relied in good faith on a contract that it

had with Allen—a contract that either authorized

North Carolina’s use (a complete defense under the

a good-faith belief that its use was authorized. Thus,

under the fair-use doctrine, North Carolina’s actions

here were permissible.

For these reasons, Allen and his amici’s

assumption that North Carolina violated the

their invitation to shape constitutional law based on

that mistaken assumption.

ARGUMENT

Under the de minimis use doctrine, North

Carolina did not violate copyright law.

A. The de minimis use doctrine excuses

trivial copying of copyrighted works.

The de minimis use doctrine is premised on

the concept that “the law will not impose legal

consequences” for certain “insignificant violations” of

the Copyright Act. Ringgold v. Black Entm’t Television,

Inc., 126 F.3d 70, 74 (2d Cir. 1997); see also Perris v.

Hexamer, 99 U.S. 674, 676 (1878) (noting that copying

is only actionable when a “substantial” or “material

part” of the original work is copied).

As Judge Learned Hand observed, “[e]ven where

there is some copying, that fact is not conclusive of

infringement.” West Publ’g Co. v. Edward Thompson

Co., 169 F. 833, 861 (E.D.N.Y. 1909). Instead, courts

must ask whether copying reaches an “unfair extent.”

Ibid.; see also Warner Bros., Inc. v. American Broad.

Cos., 720 F.2d 231, 242 (2d Cir. 1983) (citing G.R.

Leonard & Co. v. Stack, 386 F.2d 38 (7th Cir. 1967))

(explaining that the doctrine allows for “the literal

copying of a small and usually insignificant portion of

[a] plaintiff ’s work”); Pierre N. Leval, Nimmer Lecture:

Fair Use Rescued, 44 UCLA L. Rev. 1449, 1457–58

(1997) (noting that the doctrine is premised on the

concept that “the law does not concern itself with

trifles”).

A use can be de minimis under a quantitative

analysis, a qualitative analysis, or both.3 See Newton v.

Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004); see also,

e.g., Sandoval v. New Line Cinema Corp., 147 F.3d 215,

217 (2d Cir. 1998).

When courts apply a quantitative analysis, they

look to the “amount of the copyrighted work . . . in the

allegedly infringing work.” Gordon v. Nextel Commc’ns,

345 F.3d 922, 924 (6th Cir. 2003); Sandoval, 147 F.3d

at 218 (using copyrighted photographs in background

of movie scene held de minimis); Vault Corp. v. Quaid

Software Ltd., 847 F.2d 255, 267 (5th Cir. 1988)

(copying of 30 characters out of 50 pages of source code

held de minimis); Toulmin v. Rike-Kumler Co., 316 F.2d

232, 232 (6th Cir. 1963) (copying of a sentence and a

half from a book of 142 pages held de minimis);

4 Melville B. Nimmer & David Nimmer, Nimmer on

[hereinafter Nimmer].

When courts apply a qualitative analysis, they

look to whether a material aspect of a work has been

appropriated—in essence, whether the “heart” of the

work has been copied. Elsmere Music, Inc. v. National

Broad. Co., 482 F. Supp. 741, 744 (S.D.N.Y.), aff ’d, sub

nom. Elsmere Music, Inc. v. Nat’l Broad. Co., 623 F.2d

252 (2d Cir. 1980); see also Newton, 388 F.3d at 1196

(holding that sampling of a portion of a song that was

Some courts have held that both analyses are required.

See, e.g., Newton, 388 F.3d at 1195. Other courts have relied

exclusively on one analysis. See Sandoval, 147 F.3d at 217.

“no more significant than any other section” rendered

the use de minimis); MiTek Holdings, Inc. v. Arce Eng’g

Co., 89 F.3d 1548, 1560 (11th Cir. 1996) (holding that

copying of elements of a computer program that were

“not significant” in the context of the whole program

were de minimis); Wright v. Warner Books, Inc.,

953 F.2d 731, 740 (2d Cir. 1991) (holding that use of

“short and insignificant” excerpts from an unpublished

journal were de minimis); Religious Tech. Ctr. v. Lerma,

908 F. Supp. 1362, 1367 (E.D. Va. 1995) (holding that

internet posting of copyrighted church documents

that did not “capture the total essence” of the religion

were de minimis); see generally 2 Nimmer, supra,

§ 8.01; 4 Nimmer, supra, § 13.03; 3 William F. Patry,

Patry on Copyright § 9:60 (2007) [hereinafter Patry].

Here, as described below, an application of the de

minimis use doctrine confirms that North Carolina’s

use of a fragment of Allen’s works did not amount to a

B. North Carolina’s limited display of a

fragment of Allen’s works was a de

minimis use.

The relevant facts of this case are undisputed,

and lend themselves to a straightforward application

of the de minimis use doctrine.4

For over a decade, Allen observed as the State of

North Carolina worked to recover artifacts from the

Queen Anne’s Revenge. Pet. App. 9a. During this time,

Allen took photographs and video of the sunken ship.

Pet. App. 5a. Allen ultimately registered thirteen

copyrights with the U.S. Copyright Office—one for each

year of photographs and video. Pet. App. 9a. In total,

Allen’s thirteen copyrights encompass thousands of

photographs and hundreds of minutes of video. See

Complaint at ¶ 43, Allen v. Cooper, 244 F. Supp. 3d 525

(E.D.N.C. 2017) (No. 5:15-CV-627-BO).

North Carolina displayed limited portions of

Allen’s works in 2013. Pet. App. 12a. The Department

included “a few seconds” of Allen’s works across five

educational videos that the Department placed on

YouTube. See Appellants’ Brief at 63, Allen v. Cooper,

895 F.3d 337 (4th Cir. 2018) (Nos. 17-1522(L), 17-1602).

The Department also circulated a newsletter about

North Carolina’s maritime museums that contained a

thumbnail of one of Allen’s photographs. See supra at

When the facts are undisputed, the issue of whether a use

is de minimis is appropriate for determination on a Rule 12(b)(6)

motion. E.g., Peter F. Gaito Architecture, LLC v. Simone Dev.

Corp., 602 F.3d 57, 64 (2d Cir. 2010).

11. When Allen sent the Department a takedown letter,

the State complied. Pet. App. 12a.

On these facts, North Carolina’s use was de

minimis. Of the thousands of photographs amassed

in Allen’s copyrights, the Department used a single

image, and not even one that Allen claims was

particularly special. That image was reduced down to

a thumbnail. And that thumbnail appeared in a

museum newsletter that has, at most, limited

circulation.

Similarly, of the hundreds of hours of video, the

Department only used “a few seconds” of it. Allen does

not claim that these few seconds of video were

particularly special, either. Moreover, the Department

did not simply post Allen’s raw footage. Instead, the

Department wove “a few seconds” of Allen’s footage

into five educational videos.

Some visual examples of the alleged infringement

that the complaint describes are available from the

briefs and record below, and they further illustrate

that any copying of Allen’s works was trivial. First,

Allen’s Fourth Circuit brief provides a screen capture

of footage5 that appeared in one of the Department’s

YouTube videos:

Allen stated in his Fourth Circuit reply brief that this

screen capture depicts a portion of the infringement “described

in ¶¶ 44 and 46 of the Complaint.” Reply Brief for Appellees at 2

n.2, Allen v. Cooper, 895 F.3d 337 (4th Cir. 2018) (No. 17-1522(L),

No. 17-1602). It appears that this screen capture is what Allen

contends appeared at the “3:05” timestamp of one of the

Department’s five YouTube videos. It is unclear, however, whether

the complaint alleges that the Department wove Allen’s video

footage into YouTube videos or, instead, displayed Allen’s

photographs in the background of the Department’s own video.

This ambiguity highlights other deficiencies with Allen’s claims—

namely, whether Allen’s complaint provides sufficient notice of

the alleged infringement to meet minimal pleading requirements.

See, e.g., Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); see also

Appellants’ Reply Brief at 49, Allen v. Cooper, 895 F.3d 337 (4th

Cir. 2018) (No. 17-1522(L), No. 17-1602).

Second, the Fourth Circuit’s electronic record6

contains a redacted version of the newsletter about

North Carolina’s maritime museums:

See Electronic Record at 166, Allen v. Cooper, 895 F.3d

337 (4th Cir. 2018) (No. 17-1522(L), No. 17-1602) [hereinafter

Electronic Record].

As these visual examples show, North Carolina’s

use of Allen’s work was trivial.

The Second Circuit’s decision in Sandoval v. New

Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998), further

illustrates this point. There, the plaintiff brought an

infringement claim against a movie producer who

included copyrighted photographs in certain scenes.

Id. at 216. After reviewing the scenes at issue, the

court held that the alleged copying fell below “the

quantitative threshold” for actionable copying. Id. at

218.

In support of this holding, the court noted that

the photographs only appeared in the background.

Ibid. This, in turn, reduced their size and rendered

them “barely discernable.” Id. at 216. Likewise, the

Second Circuit referenced the short “length of time

the copyrighted work appear[ed] in the allegedly

infringing work.” Id. at 217. The movie at issue was

over two hours long, yet the copyrighted pictures only

appeared in scenes that spanned a collective minute

and a half. Id. at 216.

For these reasons, the court held that the alleged

infringement was “de minimis as a matter of law.” Id.

at 217.

Here, like the multiple images in Sandoval, the

single newsletter image was displayed in a medium

that reduced its size and made it hard to view. Indeed,

a thumbnail of one of Allen’s pictures in a newsletter

is no different than a background image in the scene

of a movie. In both instances, the resolution of the

originals are reduced to the point that they “fall[ ]

below the quantitative threshold” for actionable copying.

Sandoval, 147 F.3d at 218.

The reasoning in Sandoval also supports treating

the brief use of Allen’s video on YouTube as de minimis.

The Second Circuit appropriately noted the “length of

time the copyrighted work appear[ed] in the allegedly

infringing work.” Id. at 217. That time totaled a minute

and a half of a two hour and seventeen-minute movie—

roughly one percent.7

Here, the State displayed “a few seconds” of Allen’s

works in videos that spanned a total of approximately

25 minutes—also less than one percent. See Complaint

at ¶ 44, Allen v. Cooper, 244 F. Supp. 3d 525 (E.D.N.C.

2017) (No. 5:15-CV-627-BO). Furthermore, in at least

one of the YouTube videos, none of Allen’s footage

is used. Instead, Allen’s work merely appears in

the background in a scene with a young child observing

a museum exhibit. See supra at 10. Like the

quantitatively insignificant background images in

Sandoval, the single image that appears in this

YouTube video is “barely discernable.” Sandoval, 147

F.3d at 216.

A qualitative analysis also confirms that North

Carolina’s use was de minimis. As noted above, a

qualitative analysis asks whether the putative

infringer has used a material aspect of the copyrighted

work—in essence, whether the putative infringer has

See Internet Movie Database, Seven (Se7en), https://www.

imdb.com/title/tt0114369/ (last visited Sept. 19, 2019).

used the “heart” of the work. Elsmere Music, 482

F. Supp. at 744; see also supra at 6–7.

Here, Allen’s works comprise thousands of varied

images and hundreds of hours of video footage taken

over thirteen years—an undifferentiated mass that

does not have a single “heart,” the way a song’s key riff

does, for example. Cf. Elsmere Music, 482 F. Supp. at

744. Again, Allen does not contend that the images or

footage at issue was particularly special, compared to

the unused images and footage. Whatever the “heart”

of Allen’s work may be, North Carolina could not have

exceeded any qualitative threshold by using an

exceptionally small portion of this undifferentiated

mass of work.

In sum, North Carolina’s limited display of a

fragment of Allen’s works was “de minimis as a

matter of law.” Sandoval, 147 F.3d at 217. This de

minimis use of Allen’s work did not amount to a

II.

Under the fair-use doctrine, North Carolina

did not violate copyright law.

A. Certain fair uses of copyrighted works

are permissible under copyright law.

The fair-use doctrine is as old as the first

the Queen Anne’s Revenge. Pet. App. 6a. Soon after

the creation of the first statutory copyright protection

in 1709, English courts recognized that certain “fair

abridgements” did not infringe on an author’s rights.

Pierre N. Leval, Toward A Fair Use Standard, 103

Harv. L. Rev. 1105, 1112 (1990). The doctrine is now a

staple of American copyright law, borne out of “the

need simultaneously to protect copyrighted material

and to allow others to build upon it.” Campbell v. AcuffRose Music, Inc., 510 U.S. 569, 575 (1994).

Under the fair-use doctrine, certain limited uses of

copyrighted material are permissible if they “promote

the Progress of Science and useful Arts.” Campbell,

510 U.S. at 575 (quoting U.S. Const. art. I, § 8, cl. 8).

The doctrine calls for a weighing of multiple factors.

See 4 Nimmer, supra, § 13.05 (discussing section 107 of

the Copyright Act). If an analysis of those factors

establishes that the use is fair, then permission from

the copyright holder is not required. Ibid.

Several fair-use factors are codified in section 107

of the Copyright Act. See 17 U.S.C. § 107.8 Codifying

these factors was Congress’s attempt to help copyright

“users in determining when the principles of the

doctrine apply.” Harper & Row, Publishers, Inc. v.

Nation Enters., 471 U.S. 539, 549 (1985).

The Copyright Act lists six classic examples of fair

use: criticism, comment, news reporting, teaching,

scholarship, and research. See 17 U.S.C. § 107. The

Act also lists four non-exclusive factors that courts

should consider—along with traditional principles—

when making a fair use determination. Those four

factors are: (1) the purpose and character of the use,

including whether such use is of a commercial nature

or is for nonprofit educational purposes;9 (2) the nature

of the copyrighted 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. See ibid.

This brief does not belabor a factor-by-factor analysis of fair

use, because the trial court has not yet conducted its own fair-use

analysis. See Pet. App. 75a–76a. Rather, to illustrate the relative

weakness of Allen’s claims, this brief highlights for the Court

those aspects of the fair-use doctrine that counsel most heavily in

favor of fair use.

Courts applying the “character” portion of the first factor

often consider whether a use is transformative. See, e.g., Suntrust

Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1269 (11th Cir.

2001); cf. infra at 20–22 (discussing the transformative nature of

historical works).

In addition to these statutory factors, there are

a number of non-statutory factors that courts use to

analyze whether a use is a fair use. See 4 Patry, supra,

§ 10:156 (noting that courts “routinely consider other

factors” beyond section 107); see also 4 Nimmer, supra,

§ 13.05 (discussing “alternatives to the four factors” in

section 107).

These common-law factors continue to exist—and

continue to evolve—alongside the statutory factors in

section 107. See H.R. Rep. No. 94-1476, at 66 (1976).

This is because Congress expressly disavowed any

attempt “to freeze the doctrine in the statute.” Ibid.

Instead, Congress noted that “the doctrine is an

equitable rule of reason,” so “no generally applicable

definition is possible, and each case raising the

question [of fair use] must be decided on its own facts.”

Id. at 65; see also 4 Patry, supra, § 10:156.

Of the statutory and non-statutory factors that

courts use to analyze fair use, the most relevant here

are:

•

the “[e]ffect of the use upon the potential

market for or value of the copyrighted work,”

a statutory factor under section 107, see infra

at 18–19

•

whether the use is a historical account, a

non-statutory factor, see infra at 20–22

•

whether the use relied in good faith on a

contract with the copyright holder, another

non-statutory factor, see infra at 23–24

Here, as described below, an assessment of these

three factors confirms that North Carolina’s use of

Allen’s works was a fair use.

B. North Carolina’s use of Allen’s works

falls within the fair-use doctrine.

1. North Carolina’s use did not reduce

the market value of Allen’s works.

The Court has observed that a use’s effect on

market value is “undoubtedly the single most important

element of fair use.” Harper, 471 U.S. at 566. The Court

has also noted that “[a] challenge to a noncommercial

use of a copyrighted work requires proof either that the

particular use is harmful, or that if it should become

widespread, it would adversely affect the potential

market for the copyrighted work.” Sony Corp. of Am. v.

Universal City Studios, Inc., 464 U.S. 417, 451 (1984).

The rationale for this rule is that, when a use has

“no demonstrable effect upon the potential market,”

the original author’s “incentive to create.”10 Id. at 450.

This “incentive to create” that the Court recognized in Sony

accurately states the purpose of the copyright law. 464 U.S. at

450. It also stands in contrast to the notion that Allen and his

amici advance: that copyright law is about protecting a “property

right.” Pet’r’s Br. 18. Allen and his amici’s “property right”

concept misapprehends the fundamental nature of American

right, much less a natural right. Instead, it is a statutory tort,

created by positive law for utilitarian purposes: to promote the

progress of science.” 1 Patry, supra, § 1:1.

Were it otherwise, copyright law “would merely inhibit

access to ideas without any countervailing benefit.” Id.

at 450–51.

For the same reasons, a use that actually increases

the market value of the original work “strongly favors

a finding of fair use.” 4 Patry, supra, § 10:155 (quoting

Corbello v. Vito, 2017 WL 2587924, at *8 (D. Nev. June

14, 2017)). This is especially true when a use causes a

plaintiff ’s work to “suddenly become successful.” Ibid.

Here, North Carolina’s de minimis use of Allen’s

work could not possibly have reduced its market value.

See supra at 8–14. In reality, North Carolina’s use

likely had the opposite effect: If anything, it gave

Allen’s works the imprimatur of “official” government

approval—instant credibility for a private filmmaker.

Indeed, North Carolina’s use (and the lawsuit that

followed) has afforded Allen nationwide publicity—a

result that may help a future documentary film

“become successful.” 4 Patry, supra, § 10:155.11 In fact,

it appears that Allen has always had this benefit in

mind. The parties’ agreement provides North Carolina

with rights to “[a]ll non-commercial digital media,” so

long as a link to Allen’s website is “clearly and visibly

displayed.” Pet. App. 10a.

In sum, North Carolina’s use of Allen’s works did

not reduce their market value. If anything, the

See, e.g., Adam Liptak, Blackbeard’s Ship Heads to Supreme

Court in a Battle Over Another Sort of Piracy, N.Y. Times (Sept.

4, 2019), https://www.nytimes.com/2019/09/02/us/politics/supremecourt-blackbeard-piracy.html.

opposite may be true. As the most important factor

in a fair-use analysis, this factor counsels strongly in

favor of a conclusion that the use of Allen’s works was

fair.

2. North Carolina’s use educated the

public about the state’s history.

The leading copyright treatises acknowledge that

“virtually every case” involving historical use leads to

a finding of fair use. 4 Patry, supra, § 10:69.50. Such

historical uses include “historical accounts, whether in

print or in video.” Ibid. (describing these historical

accounts as “a traditional fair use”).

Historical accounts constitute fair use because

“the goal of copyright . . . is generally furthered by the

creation of transformative works.” 4 Nimmer, supra,

§ 13.05 (quoting Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569, 579 (1994)). A “transformative” use is one

that “alter[s] the first with new expression, meaning,

or message.” Campbell, 510 U.S. at 579.

Historical

accounts,

definition,

are

“transformative,” because they use the works for a

different purpose than the one for which they were

created. See, e.g., Bill Graham Archives v. Dorling

Kindersley Ltd., 448 F.3d 605, 609 (2d Cir. 2006)

(holding that use of Grateful Dead posters in

biographical account was transformative because

the use of the posters was “different from the original

purpose for which they were created”); Elvis Presley

Enters., Inc. v. Passport Video, 349 F.3d 622, 629 (9th

Cir. 2003) (holding that use of television clips in a film

about the life of Elvis Presley was transformative

because they were “cited as historical reference points

in the life of a remarkable entertainer”).

Here, like “virtually every case” involving historical

accounts, 4 Patry, supra, § 10:69.50, North Carolina’s

use of Allen’s work constitutes fair use. The

Department of Natural and Cultural Resources is the

agency charged with documenting and preserving

North Carolina’s history. In furtherance of that mission,

the Department used Allen’s works to educate the

public about an important event in North Carolina’s

history. See Resp’t’s Br. 6.12

Although it is true that Allen seeks to create and

market a documentary that will likely have some

historical aspects, see Electronic Record at 86–87,

the State’s educational, “museum-like” use of Allen’s

works “adds something new.” Bouchat v. Baltimore

Ravens Ltd. P’ship, 619 F.3d 301, 314 (4th Cir. 2010)

(quoting Campbell, 510 U.S. at 579). This educational,

“museum-like” use is transformative, because North

Carolina’s use is “different from the original purpose

The educational character of North Carolina’s use also

weighs in favor of fair use under section 107’s first factor. The

“central purpose” of that factor is to determine “whether and to

what extent the new work is transformative.” Campbell, 510 U.S.

at 579. North Carolina had a duty “to convey information to the

public accurately.” Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg

L.P., 756 F.3d 73, 84 (2d Cir. 2014). And fulfilling that educational

duty altered the “meaning” and “message” of North Carolina’s

use, making it transformative. Campbell, 510 U.S. at 579.

for which [the works] were created”—a profit-generating

movie. Bill Graham Archives, 448 F.3d at 607.

Moreover, the fact that much of the Queen Anne’s

Revenge still rests at the bottom of the Atlantic Ocean

demands this outcome. If Allen is granted a monopoly

on otherwise inaccessible history, it would be “injurious

to the public interest.” See 3 Patry, supra, § 9:60.13

Conversely, North Carolina’s use here—educating the

public about an important historical event—would

“advance [the] public welfare,” one of copyright law’s

central objectives. Mazur v. Stein, 347 U.S. 201, 219

(1954); see also Twentieth Century Music v. Aiken,

422 U.S. 151, 156 (1975) (“Creative work is to be

encouraged and rewarded, but private motivation

must ultimately serve the cause of promoting broad

public availability.”).

In short, North Carolina’s use of Allen’s works to

educate the public about the state’s history is an

important fair-use factor. That factor, in combination

Allen comes close to suggesting that if copyright law

prevents him from enjoying this monopoly, it might violate the

Constitution. Pet’r’s Br. 23 (“[B]y referring to the property rights

that exist in creative works as ‘exclusive Right[s],’ the Intellectual

Property Clause denotes that those rights are to belong solely to

the copyright holder.”); id. at 29 (Congress has the affirmative

“responsibility to protect . . . exclusive intellectual property rights”).

This Court has never held that the Intellectual Property

Clause requires Congress to make copyrights exclusive. In fact,

the Court has held the opposite. See Goldstein v. California, 412

U.S. 546, 559 (1973) (holding that the Intellectual Property

Clause “allow[s] Congress to eschew all protection” for writings

when “the national interest” requires their “free and unrestricted

distribution”).

with the others below, shows why North Carolina’s use

falls within the fair-use doctrine.

3. North Carolina relied in good faith

on its contract with Allen.

If a contract grants a license to use a particular

work, then “the existence of actual consent negates the

necessity of conducting a fair use analysis in the first

place.” Peter Letterese & Assocs., Inc. v. World Inst. of

Scientology Enters., 533 F.3d 1287, 1308 (11th Cir.

2008). Such a license, of course, is an “independent

affirmative defense to a claim of copyright infringement.”

Ibid.

Contracts can be ambiguous, however, and

disputes often arise as to whether a use falls within

a contract. In those instances, the fair-use doctrine

provides an important backstop: When a user of a

copyrighted work relies in good faith on a contract

with the copyright holder, courts have “routinely

considered” that factor as evidence of fair use. Patry,

supra, § 10:156 (collecting cases).

The rationale for considering that factor is that

“[f ]air use presupposes ‘good faith’ and ‘fair dealing[,]’ ”

Harper, 471 U.S. at 562, which are features inherent in

a contractual relationship, see Campbell, 510 U.S. at

585 n.18; see also Perfect 10, Inc. v. Amazon.com, Inc.,

508 F.3d 1146, 1164 n.8 (9th Cir. 2007) (“[A] party

claiming fair use must act in a manner generally

compatible with principles of good faith and fair

dealing.”); Rogers v. Koons, 960 F.2d 301, 310 (2d Cir.

1992) (same); see generally Patry, supra, § 10:156 n.5

(collecting authority).

Here, it is undisputed that there was a contract

between the parties: an October 2013 settlement

agreement. Pet’r’s Br. 12. In that agreement, Allen

expressly allowed the State to retain “still photographs[ ]

and other media.” Pet. App. 10a. That agreement

allowed the Department to display “[a]ll non-commercial

digital media.” Ibid. And, critically, that agreement

provided that the State could “mak[e] records available

to the public.” Pet. App. 11a.

North Carolina was entitled to rely on these

contractual provisions. Notably, when the Fourth Circuit

rejected Allen’s attempt to pierce qualified immunity

(a holding that Allen does not challenge here), it

concluded that “reasonable officials in the position of

the North Carolina officials would not have understood

beyond debate that their publication of the material

violated Allen’s rights under the Copyright Act.” Pet.

App. 39a. For the same reason, North Carolina’s

reliance on the contract was, at a minimum, in good

faith.

In sum, North Carolina’s good-faith reliance on a

contract, in combination with the two factors described

above, shows why North Carolina’s use falls within the

fair-use doctrine. Thus, North Carolina’s use of Allen’s

works did not amount to a copyright violation.

doctrines are important safeguards against

infringement claims that undermine, rather than

promote, copyright law’s objectives. These doctrines

enable courts to take a holistic view about whether a

use is so trivial that copyright law ought not recognize

it, and whether a use is fair. Through their commonsense approach, these doctrines help filter out nonmeritorious claims, like the ones Allen brought here.

In deciding this case, the Court should consider

these copyright law doctrines against Allen’s suggestion

of a “clearly widespread” and “clearly increasing”

phenomenon of states infringing copyrights—the

“menace” that Allen seeks to portray. Pet’r’s Br. 19,

47. After all, if copyright law permits the very conduct

that Allen complains of here, it shows that Allen’s

theory of a “menace” does not hold water.

------------------------------------------------------------------

CONCLUSION

The decision below should be affirmed.

Respectfully submitted,

ANDREW H. ERTESCHIK