Amicus Curiae Brief — Harper & Row, Publishers, Inc. v. Nation Enterprises

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»ieme Court, U.S.

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L JUL 19 1984

No. 83-1632 ALEXANDER L. STEVaS,

IN THE

Supreme Court of the United States

OCTOBER TERM, 1984

Harper & ROW, PUBLISHERS, INC. and

THE READER’S DIGEST ASSOCIATION, INC.,

Petitioners,

Vv.

NATION ENTERPRISES and

THE NATION ASSOCIATES, INC..,

Respondents.

BRIEF AMICUS CURIAE OF THE

ASSOCIATION OF AMERICAN PUBLISHERS, INC.

IN SUPPORT OF PETITIONERS

JON A. BAUMGARTEN

(Counsel of Record)

CHARLES H. LIEB

WILLIAM F. PaTry

PASKUS, GORDON & HYMAN

2005 Massachusetts Avenue, N.W.

Washington, D.C. 20036

(202) 638-1930

Attorneys for Amicus Curiae

July 20, 1984

PANDICK WASHINGTON, D.C.— 1801 N. OAK STREET, ARLINGTON, VA 22209— (703) 522-6000

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TABLE OF CONTENTS

I CU PIE CUED tricscsctsicscencecrennesvesseseccsoveevenees

INTERESTS OF AMICUS CURIAE ....00......cccccccceceeeeees

PRELIMINARY STATEMENT: PUBLISHERS, THE

FIRST AMENDMENT, AND COPYRIGHT.............

SUMMARY OF ARGUMENT ....00 cc eeeeeeeeeeeeeeeees

ESE StS oe De eee OC

I. The Court of Appeals Erred in Failing to Con-

sider the Unpublished Nature of Petitioners’

Work. Respondents’ Copying Was Not a “Fair

Use” Of Petitioners’ Unpublished Work..............

II. The Court of Appeals Erred in Permitting Ex-

tensive Paraphrasing of Expression......................

eI neecachcntiiteentnevaedwiiinntcnceapsine: eenseiageonenseinwens

TABLE OF AUTHORITIES

Page

CASES .

Atlas Mfg. Co. v. Street & Smith, 204 F. 398 (8th Cir. ),

appeal dismissed, 231 U.S. 348 (1913) ....ccccccccccccceeeeeeeees 15

Bantam Books, Inc. v. Sullivan, 372 U.S. 58 (1963) ......... 2,3

Caliga v. Inter Ocean Newspaper Co., 215 US. 182

( FRG) ..cccosscccesnensentesesnsntnesisnunanepideseenadionseainaaaaana 14

Diamond v. Am-Law Pub. Corp., Copr. L. Rep. (CCH)

peek, tk A | Ee en 9,12

Encyclopaedia Britannica Educational Corp. v. Crooks,

542 F. Supp. 1156 (W.D.N.Y. 1982); 558 F. Supp.

CDGT (WAR e: < DOU D ccccessesvnscninsviniecshimsteianaaananel .)

Estate of Hemingway v. Random House, Inc., 53 Misc. 2d

462 (N.Y. Sup. Ct.), aff'd, 285 N.Y.S. 2d 568 (App.

Div. 1967), aff'd, 23 N.Y. 2d 341 (N.Y. 1968) ............. 15,16

Fendler v. Morosco, 253 N.Y. 281, 171 N.E. 56, reh’g

den., 254 N.Y. 563, 173 N.E. 867 (N.Y. 1930) «00.00.02... 15,16

Flick-Reedy Corp. v. Hydro-Line Mfg. Co., 351 F. 2d 546

Lt | I Se 20

Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841)

(PEG. GRIPE } acccccoccaseserscnsccscsessebisenmimmsmmamiemieaaaananaaannnne 5,13,16,

Golding v. R.K.O. Radio Pictures, Inc., 143 P.2d 153

(Cal. Dist. Ct. 1948), aff'd, 221 P.2d 95 (Cal. 1950)... 14,16

Iowa State University Research Foundation, Inc. v. Amer-

ican Broadcasting Co., Inc., 261 F.2d 57 (2d Cir.

STII ) .ncascssscocscssennesinesnesonnssnmiepiagiaiasanidaiaaiaan 19,20,21

Italian Book Corp. v. American Broadcasting Cos., Inc.,

4356 F. Seape. GS CBEDIG. TY... COs D ssscctocsccnninniepstiiictecsiniaiin 9

Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495 (1952) ......... 2

Lovell v. Griffen, 303 U.S. 444 (1938) .o..ccccceccccecccececeseeeeeees 2,4

Malkin vy. Dubinsky, 203 N.Y.S. 2d 501 (N.Y. Sup Ct.

SFG ) core. ccsccansiiesnintticcesnnenadesistennsesiineliadaisadiiiinmdammaaiaan aman 16

Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983).............. 9

Marvin Worth Productions v. Superior Films Corp., 319

we OB OT ER Rm nA 19

Masar v. Feats, 47 UB. BOE ( UGGS cccccccessccscessecsssocsensianntn 3

Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir.

1930), cert. denied, 282 U.S. 902 (1931) .......cececeeeeeeeeeee 20

New Boston Television, Inc. v. Entertainment Sports

Programming Network, Inc., 215 U.S.P.Q. 755 (D.

SN TIT I ditisinetin iadeieiniideinitniidtateenenennimasensenasetnascanccenesseceees

Press Pub. Co. v. Monroe, 76 F. 196 (2d Cir. 1896) ..........

Rosemont Enterprises, Inc. v. Random House, Inc., 366

F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009

(| IT Tee

Roy Export Co. v. Columbia Broadcasting System, Inc.,

503 F. Supp. 1137 (S.D.N.Y. 1980), aff'd, 672 F.2d

1095 (2d Cir 1982), cert. denied, 103 S. Ct. 80 (1983)

Schnapper v. Foley, 667 F.2d 102 (D.C. Cir. 1981), cert.

Schuchart & Associates Professional Engineers, Inc. v.

Solo Serve Corp., 220 U.S.P.Q. 170 (W.D. Tex. 1983).

Smith v. California, 361 U.S. 147 (1959) .....cccccccccceeeceeeeees

Sony Corporation of America v. Universal City Studios,

Inc., 104 S. Ct. 774, reh’g denied, 104 S. Ct. 1619

Stanley v. Columbia Broadcasting System, Inc., 35 Cal.

errs cnsensenesennnccssect

Time, Inc. v. Bernard Geis Associates, 298 F. Supp. 130

Wainwright Securities, Inc. v. Wall Street Transcript

Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434

A CE

Weitzenkorn v. Lesser, 40 Cal. 2d 778, 256 P.2d 947

i cnisircrrncernscnenmnnnnsnssnnee

FOREIGN CASES

Beloff v. Pressdram Ltd., {1973} 1 AN E.R. 241 ......00........

British Oxygen Co., Ltd. v. Liquid Air, Lid., [1925] Ch.

Sin Tt clctdiaeliadniicnineieencenneeanensccncnceenencecceqneseetceseee

The Distillers Co. (Biochemicals) Lid. v. Times News-

papers Lid., [1974] 1 Al E.R. 4b ooo. ccccceeeeeeeees

Hindley v. Higgins, (Ct. App., Civ. Div., Aug. 24, 1983)...

Hubbard v. Vosper, [1971] 1 AIL E.R. 1023.00.00...

Lion Laboratories v. Evans, [1984] 2 All. E.R. 417...........

Macklin v. Richardson, [1770] Amb. 694 (Case 341) ......

Prince Albert v. Strange, | 1849] 2 Deg. & Sm. 652...........

Page

12,19,21

14,16

3,7,8,13,

17, 18,19

14,16

9.21

iv Vv

Keyes, A. & Brunet, C., Copyright in Canada— Pro-

CONGRESSIONAL REPORTS posals for a Revision of the Law (Consumer &

H.R. Rep. No. 83, 90th Cong., Ist Sess. (1967) ...........--- 7,8,10 Corporate Affairs Canada 1977) .0........ccccecccceeeeseseees 12

S. Rep. No. 94-473, 94th Cong., Ist Sess. ( 1975) .............. —_— Latman, Fair Use of C. ighted Works, C ight

Law Revision Study No. 14, 86th Cong., 2d Sess.

H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. ( 1976)........ 7,8, _ (H.R. ecg a sieetitliahdieapions 14

Madison, J., The Federalist No. 43 (Mod. Lib. Ed.

CONSTITUTIONAL PROVISIONS REESE EER Oe ns Dee Te ee 3

ee I I i OR cen csncnnesenepmensienccenennornmpenteenntne 2 Marks, Subsidiary Righis and Permissions, in Grannis

St SN So passim (Ed.) What Happens in Book Publishing (1967) .... 18

ei Nimmer, et Nimmer on vaatiag ( ae i ciainisiniadenes 15,16,18

Ire aiesenieisa biel icraasteeilaicalicntetelannhiiedbeiaiainaniiaiis 5 =f 9 pitch eee

103(b 12 Strauss, Protection of Unpublished Works, Copyright

( ) eeccccccccccccccoceccoecceccccccecccsococcccosececcocececooeccoceocoses Law Revision Study No. 29, 86th Cong., 2d Sess.

Ra iE a sa ee Ne ee ae 17 Is tee 14

TET TT A A A ET TET ES AST 7 Torno, B., Fair Dealing: The Need for Conceptual

ip Ut eitiatinitbiaaesannaupenenapennaninnaenantnieniaininnatdanaianiinnieneanitaiien passim Clarity on the Road to Copyright Revision (Con-

na cibcisinatinsenihicnbepeinanaiesingutmicecninnininndiinsbassiiiisitiiabiiaitadinlesaaitidiniidines 17 sumer & Corporate Affairs Canada 1981) ............... 12

DU aiiicitliidiacnsinntinesiesiamuaitaitanisiinniasaiasidubiihtieiiiaiiiadliaes 17 Weil, A., American Copyright Law (1917) .............-0-+- 14

iy IIIT snietensiapensneaencicheieeseneinaiasentapniiiieeiiinipaiabisdailibiciaiabaiabineanen 17 Wittenberg, P., Protection of Literary Property

SUT eetset cide enneseeinlbatcreshaethnttialitaaae eine naaaitticina need 17 € SEB P ecsesnsconconsensanssssnsemussessnssenssuscnsnssneneosnssesnecsensessese: 14

ITT silat eiaaaresini iat tatansiaiacinniecaannitaindiidiialataie 17 Report of the Register of Copyrights on the General

NEN RE a A Oe eee ae 17 Revision of the U.S. Copyright Law, 87th Cong., Ist

edess. (H.R. Comm. Print 1961 ).............ceceeeeseeeeeeees 14

MISCELLANEOUS :' - ; ,

’ Copyright Law Revision Part 2: Discussion and Com-

Ball, H.., Law of Copyright ( 1944) enaueasenseteemesesnsneneuseeses 14 ments on Report of the Register of Copyrights on

Cohen, Fair Use in the Law of Copyright, 6 Copyright General Revision of the U.S. Copyright Law, 88th

Law Symp. ( ASCAP) 43 (1955) .........cccccccccceceeeeees 10,14 Cong., Ist Sess. (H.R. Comm. Print 1963) .............. 9.10

Copinger, W. & Skone James, E.P., [| U.K.] Copyright From Gutenberg to Telidon—A White Paper on Copy-

ET AT 11 right: Proposals for Revision of the Canadian

Dessauer, J., Book Publishing (1974) ......cccccccccccceeeeoees 3 Copyright Act (Consumer & Corporate Affairs

Flint, M., A User’s Guide to | U.K.] Copyright (Lon- SE We ercanicinenpnssntmecenesenmenmeensemmpmsiamasesnece 12

GD SEED cencteetinsistitnccrriintitaninainitonettintsigcastatiimnnnn 11 Copyright and Designs Law—Report of the Com-

Fox. H.. The Canadian La C ioht (T. ; mittee to Consider the Law on Copyright and De-

oT -anaienthdnencaenmellle wus (Whatord Report (LondoerRieen 977,

Goldstein, Copyright and the First Amendment, 70

Rg RR eee 15,18

IN THE

Supreme Court of the United States

OcToBER TERM, 1984

No. 83-1632

Harper & Row, PusBLisHers, INC. and

THE READER’S DiGEST ASSOCIATION, INC.,

Petitioners,

Vv.

NATION ENTERPRISES and

THE NATION ASSOCIATES, INC..,

Respondents.

BRIEF AMICUS CURIAE OF THE

ASSOCIATION OF AMERICAN PUBLISHERS, INC.

IN SUPPORT OF PETITIONERS

THE INTEREST OF AMICUS CURIAE

The Association of American Publishers, Inc. (AAP)

submits this brief Amicus Curiae (with the consent of the

Parties) in support of Petitioners, Harper & Row, Publishers,

Inc. and The Reader’s Digest Association, Inc. For the reasons

discussed below, AAP urges that the decision of the Court of

Appeals be reversed and that this Court reinstate the conclusion

of the District Court that Respondents infringed the Petitioners’

the Petitioners’ about to be published manuscript.

AAP is a trade association of book publishers in the United

States. Its more than 300 member companies and subsidiaries

publish between 70% and 75% of the dollar volume of all books

published in the United States. These publications include

biographies of and autobiographies by public figures, histories,

and other works of non-fiction, as well as of fiction. Virtually

all of such publications are protected by copyright.

As publishers, AAP members have a direct and compelling

interest in both Constitutional provisions put at issue by the

court below: the Copyright Clause ( Art. I, § 8, cl. 8) and laws

enacted thereunder; and the First Amendment. AAP members

invest substantial resources in the acquisition, development,

editing, and marketing of their works, and are at the heart of

the publishing process through which literary works are made

available to the public.

The decision of the court below poses a false dichotomy

between copyright and First Amendment considerations, ig-

nores authors’ and publishers’ fundamental right of first publi-

cation, sanctions serious interference with the publishing proc-

ess, and substantially limits the protection of non-fiction works

against non-literal copying. To the extent that these conclusions

may be sustained, the interests of AAP members—indeed, of

all who write and read biographies, histories, autobiographies

and other non-fiction works, and of the public—would be

seriously prejudiced.

PRELIMINARY STATEMENT: PUBLISHERS,

THE FIRST AMENDMENT, AND COPYRIGHT

This case must not be viewed as pitting a “pro First

Amendment press” against an “anti First Amendment publish-

ing industry.” Book publishing is an endeavor that thrives on

First Amendment freedoms no less than the efforts of the

working press. It is clear that AAP members’ books are entitled

to the same First Amendment protections as are newspapers

and magazines. E.g., Lovell v. Griffen, 303 U.S. 444, 452

(1938); Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501-02

(1952); Smith v. California, 361 U.S. 147, 150 (1959); Bantam

Books, Inc. v. Sullivan, 372 U.S. 58, 65 n.6 (1963). Book

publishers have not been insensitive to the preservation of these

values. Publishers and their authors:

“... have fought—often courageously and at great

personal sacrifice—against efforts at suppression and

censorship inspired by political, philosophical, reli-

gious, and moral persuasions. Had it not been for the

battles and unceasing vigilance of many authors and

publishers some great works of philosophy, religion,

political theory, and literature would not now be

available in libraries and bookstores.”

J. Dessauer, Book Publishing 15 (1974).

But if the First Amendment is the moral force of publish-

ing, copyright is its commercial foundation. For the most part,

and in this case, these twin underpinnings of book publish-

ing—copyright and the First Amendment—do not conflict.

This is not surprising, for copyright and the First Amendment

are essentially complementary. '

Freedom of expression is meaningless unless works are

created and distributed. In Bantam Books, Inc. v. Sullivan, 372

U.S. 58, 65 n.6 (1963) this Court recognized the “economic

stake” of book publishers in recouping their publishing in-

vestment and concluded that protection of this interest would

serve the First Amendment. Our copyright law is based on the

principle that:

“. encouragement of individual effort by personal

gain is the best way to advance public welfare

through the talents of authors and inventors in ‘Sci-

ence and the Useful Arts.’ ”

Mazer v. Stein, 347 U.S. 201, 219 (1954). See also, e.g., Sony

Corporation of America v. Universal City Studios, Inc.,

U.S. ___, 104 S. Ct. 744, 782 ( majority opinion per Stevens,

J.) & 806-07 (dissenting opinion per Blackmun, J.), reh’g

denied, 1048S. Ct. 1619 (1984). Thus, the copyright law assures

that there is opportunity for recoupment of the intellectual and

' The Constitutional authority for copyright laws is, in fact, premised on

the principle that “The public good fully coincides with the claims of

individuals .... “J. Madison, The Federalist No. 43 at 279 (Mod. Lib. ed.

1941) (emphasis added ).

financial investment of authors and publishers, that their crea-

tive efforts are maintained, and that their works are made

available to the public.2 It is essential to the purpose of the

First Amendment.

These principles are no less applicable to the written

reflections of former public officials:

“Indeed, if the doctrine were otherwise, that no

person, or his representatives, could have a copyright

in his own private or familiar letters, written to

friends, upon interesting political and other occa-

sions, or containing details of facts and occurrences,

passing before the writer, it would operate as a great

discouragement upon the collection and preservation

thereof; and the materials of history would become

far more scanty than they otherwise would be. What

descendant, or representative of the deceased author,

would undertake to publish, at his own risk and

expense, any such papers; and what editor would be

willing to employ his own learning, and judgment,

and researches, in illustrating such works, if, the

moment they were successful, and possessed the

substantial patronage of the public, a rival bookseller

might republish them, either in the same, or in a

cheaper form, and thus either share with him, or take

from him the whole profits? It is the supposed

exclusive copyright in such writings, which now en-

courages their publication thereof, from time to time,

after the author has passed to the grave. To this we

owe, not merely, the publication of the writings of

Washington, but of Franklin, and Jay, and Jefferson

and Madison, and other distinguished statesmen of

our own country.”

2 This case no more involves a contest between “publishers” aad the

“press” than it does between First Amendment/copyright interests or First

Amendment sympathies. Book publishers play as key a role in bringing

newsworthy materials before the public as do newspapers, magazines, and

television and radio newscasts. “The press in its historic connotation

comprehends every sort of publication which affords a vehicle of information

and opinion.” Lovell v. Griffen, 303 U.S. 444, 452 (1938).

Folsom v. Marsh, 9 F. Case 342, 346-47 (C.C.D. Mass. 1841)

(No. 4,901) (Story, J.).

The majority of the Court of Appeals ignored this coinci-

dence of copyright and First Amendment interests. Its First

Amendment concerns (723 F.2d at 197, 203, 204, 209) may be

legitimate in the abstract, but they should not have been

applied to the facts of this case or to eliminate consideration of

the unpublished nature of Respondents’ work (Point I) or

restrict protection of non-fiction works against non-literal

copying ( Point II).

This case is based on the unauthorized reproduction of

substantial expression from an unpublished, but about to be

published manuscript. Respondents unjustifiably intruded into

the publishing provess and destroyed the value of Petitioners’

first serial rights and the imminent authorized publication of the

work in a mass circulation weekly. Vindication of Petitioners’

position here will not, as the Court of Appeals majority feared,

“impede the harvest of knowledge ....” (723 F.2d at 197).

To the contrary, it will preserve the integrity of the publishing

process, maintain the copyright principle of economic incentive,

and assure the First Amendment interest in public availability

of creative works. It will, in short, keep both copyright and the

First Amendment in vital balance.

SUMMARY OF ARGUMENT

Congress intended that the fair use doctrine be “narrowly

limited” in its application to unpublished works, and that

“under ordinary circumstances” it should not be applied to

privilege the unauthorized reproduction of such works. The

Court of Appeals erred in failing to consider this principle.

There are no extraordinary circumstances that would jus-

tify the application of fair use to Respondents’ unauthorized use

of Petitioners’ unpublished manuscript in this case. The

manuscript had not been disseminated and was about to be

published by Petitioners and their licensee in any event.

The limited applicability of fair use to unpublished works,

and its inapplicability in this case, is based on fundamental

principles of fairness, privacy, and protection from commercial

injury.

The Court of Appeals also erred in limiting the copyright

protection of a non-fiction work against unlawful paraphrasing

to instances where “virtually the entire work” is taken.

ARGUMENT

I. The Court of Appeals Erred in Failing to Consider the

Unpublished Nature of Petitioners’ Work. Respondents’

Copying Was Not a “Fair Use” of Petitioners’ Unpub-

lished Work.

At the time of its receipt by Mr. Navasky and of the

appearance of the Nation article, Petitioners’ manuscript was as

yet unpublished. Publication in both abridged, i.e., first serial,

and full book-length form was, however, imminent. Respond-

ents, having ascertained the manuscript’s book and first serial

publication schedule, were well aware of this.? The District

Court properly concluded that:

“The copyrighted work is an _ unpublished,

autobiographical manuscript, entitled to copyright

protection. The fair use defense is narrowed when

the work is unpublished.”

District Court Conclusion of Law 6(b); see also, the District

Court’s opinion, 557 F. Supp. at 1072 (“. . . the infringed work

was soon to be published.”) In reversing the decision of the

District Court, the Court of Appeals totally ignored this factor.

The Court of Appeals’ failure to consider the unpublished

nature of the copyrighted work was error. For the reasons

given below, under the circumstances of this case Respondents’

copying from such material cannot be justified as a fair use.

3557 F. Supp. at 1069. Excerpts from the manuscript were to be first

published in the April 23, 1979 issue of Time magazine, which would reach

the newsstands on April 16. Shipment of hard cover books was to follow on

April 24 or 25 for availability in bookstores on May |. District Court

Findings of Fact 26, 27. Respondents, conceding their purpose to “scoop”

authorized publication, had determined Petitioners’ publication schedule and

caused the Nation article to be placed on sale by April 3. District Court

Findings of Fact 34, 67.

Among the exclusive rights of a copyright owner is that of

“first public distribution”. 17 U.S.C. 106(3); H.R. Rep. No.

94-1476, 94th Cong., 2d Sess. 62 (1976); S. Rep. No. 94-473,

94th Cong., Ist Sess. 58 (1975). This right of first publication is

a fundamental attribute of copyright ownership. In its reports

accompanying the 1976 Copyright Act, Congress clearly ex-

pressed its intent that: ‘

“The applicability of the fair use doctrine to unpub-

lished works is narrowly limited since, although the

work is unavailable, this is the result of a deliberate

choice on the part of the copyright owner. Under

ordinary circumstances the copyright owner's ‘right of

first publication’ would outweigh any needs of repro-

duction for classroom purposes.” (Emphasis added )

S. Rep. No. 94-473, supra at 64; H.R. Rep. No. 83, 90th Cong.,

Ist Sess. 34 (1967). This language is not expressly repeated in

the 1976 House Report (H.R. Rep. No. 94-1476, supra) but its

omission has no significance since the 1976 House Report

reviewed, approved, and incorporated the fair use analyses of

the 1967 House and 1975 Senate reports by reference. See H.R.

Rep. No. 94-1476, supra at 67.

Similarly, the references in the reports to “classroom” use

arise only from the fortuitous appearance of this point during

the discussion of educational copying. They do not indicate

that a different standard applies to other uses. The pertinent

reports expressly state:

“The concentrated attention given the fair use provi-

sion in the context of classroom teaching activities

should not obscure its application in other areas. /t

must be emphasized again that the same general

4Cf., for example, the discussion in the classroom context of the

pertinence of “nonprofit” use and the use of “excerpts and quotations,” in S.

Rep. No. 94-473, supra at 63-65. It can hardly be argued that these

considerations are irrelevant in other contexts. See, e.g. Sony Corporation of

America v. Universal City Studios, Inc., US. 104 S. Ct. 774, 795

n.40, reh’g denied, 104 S. Ct. 1619 (1984).

standards of fair use are applicable to all kinds of uses

of copyrighted material, although the relative weight to

be given them will differ from case to case.”

H.R. Rep. No. 94-1476, supra at 72 & S. Rep. No. 94-473,

supra at 65 (emphasis added ); and

“it should not be inferred that uses of copyrighted

material for instructional purposes are subject to

different criteria from uses for other purposes.”

H.R. Rep. No. 83, supra at 32.

In their Brief in Opposition to the petition for certiorari (at

p. 13), Respondents appear to argue that the legislative reports’

comment on fair use of unpublished works is merely a rebuttal

of an alleged “presumption” of fair use for out-of-print works.

This construction is wholly strained. Nothing in the reports

remotely suggests any pertinent congressional intent other than

to “narrowly limit” fair use of unpublished works. If anything,

the reports’ distinction between previously published but out-

of-print works and unpublished works demonstrates that Con-

gress intended to fully reserve the copyright owner’s right of

first publication except in extraordinary circumstances.

In sum, it is clear that Congress intended a “narrowly

limited” application of the fair use doctrine to unpublished

works, and that—other than in extraordinary circum-

stances—fair use should not justify an unauthorized first publi-

cation.

In its recent decision in Sony Corporation of America v.

Universal City Studios, Inc., US. , 1048S. Ct. 774 (at

791 n.29, 792 n.32 and 795 n.40), reh’g denied, 1048S. Ct. 1619

5 Application of the various factors of fair use will, of course, vary from

“case to case” in determining the final balance. Our point is that the Court of

Appeals erred in not applying the factor of “unpublished work,” that

Congress has clearly given a particular weight to this factor absent extraor-

dinary circumstances, and that under all the circumstances of this case, the

Respondents’ use of the unpublished Ford memoirs was not fair.

(1984) this Court relied upon the 1976 Act’s legislative reports

as meaningful guidelines to application of the fair use doct-

rine.6 The Court of Appeals’ failure to consider Congress’

intent to limit fair use of unpublished works to exceptional cases

was erroneous. Moreover, there are no pertinent circumstances

that would permit the application of fair use in this case.

AAP does not contend that there can never be a fair use of

an unpublished work. The qualification in the legislative

6 For a recent decision in which the court—as did the District Court in

this case—properly noted the unpublished nature of plaintiffs’ work and

Congress’ intent to narrowly restrict fair use of such works, see Schuchart &

Associates Professional Engineers, Inc. v. Solo Serve Corporation, 220

U.S.P.Q. 170, 182 (‘W.D. Tex. 1983). Other cases in which the courts have

relied on the congressional reports in deciding questions of fair use under the

1976 Act include Marcus v. Rowley, 695 F.2d 1171, 1175, 1177-78 (9th Cir.

1983); Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d

91, 97 n.4 (2d Cir. 1977), cert. denied, 434 U.S. 1014 (1978); Encyclopaedia

Brittannica Educational Corp. v. Crooks, 542 F. Supp. 1156, 1175, 1177, 1179

n.19 (W.D.N.Y. 1982) and 558 F. Supp. 1247, 1250-51 (W.D.N.Y. 1983):

and Italian Book Corp. v. American Broadcasting Cos., Inc., 458 F. Supp. 65,

70-71 (S.D.N.Y. 1978).

In Diamond v. Am-Law Publishing Corp., Copr. L. Rep. (CCH) 4 25,627

(S.D.N.Y. 1984) the court did apply fair use to a newspaper’s publication of

excerpts from a letter written to it. Although the letter had been intended for

publication by the newspaper, plaintiff objected to the printing of less than its

entirety. Even if we assume the letter was “unpublished” (this is not clear

from the opinion and it is not beyond reasonable possibility that plaintiff

showed or circulated copies to others), the decision does not undermine

amicus’ position here. First, because the court did not pass upon the issue and

thus, at most, simply erred in failing to consider it. Second, and more

important for present purposes, plaintiff had communicated the letter to

defendant for publication and the court concluded that “[i]n writing his

version of the facts to the American Lawyer, plaintiff had no mght to

commandeer the space of the publication for a// that he wished to say.”

(emphasis added.) Jd. at 18,825. This case can well be considered to

involve extraordinary circumstances. Indeed, it appears to fall within an

exception amicus concedes for disclosed but unpublished works. See text and

n.7-8 below; cf. Copyright Law Revision—Part 2: Discussion and Comments

on Report of the Register of Copyrights on General Revision of the U.S.

1963) (disclosure of manuscript permitting fair use by recipient).

reports that the right of first publication will prevail “under

ordinary cireumstances” leaves the way open for a different

result in other circumstances.

Such circumstances could arise in connection with the

limited circulation of a literary work that has not yet been

published. If, for example, a publisher prior to publication

should distribute a few copies of the work to critics for review,

or make a copy available to a journalist for publicity, it might

under appropriate circumstances be precluded from claiming

infringement by publication of a review or article including

quotations from the work. Similarly, if a work should be

“performed” on stage or television, one could hardly claim that

a critical account or news report of the work including reason-

able excerpts is barred from fair use. [The “performance”

(including telecasts) of a work is not a “publication.” See 17

U.S.C. § 101 (definition of “publication” ). ]

It is most likely that variations upon this theme of “dis-

seminated but unpublished” works were a principal consid-

eration behind the reports’ cautionary use of “ordinary circum-

stances.”” However, no such situation is presented here. Re-

spondents gave the Nation no prepublication copy,® and there

7 During the early discussions of proposals for copyright revision, it was

specifically noted that fair use should apply to disseminated or disclosed, but

technically unpublished, works. Illustrations of critical reviews of televised

plays and reports by columnists who were shown prepublication manuscripts

were expressly given. See Copyright Law Revision—Part 2: Discussion and

Comments on Report of the Register of Copyrights on The General Revision of

the U.S. Copyright Law at 27 (H.R. Comm. Print, 88th Cong., Ist Sess. Feb.

1963) (Colloquy among Register of Copyrights Kaminstein, Harry Olsson.

Esq. and John Schulman, Esq.). The meetings at which these discussions took

place were noted in the House and Senate reports accompanying the 1976

supra at 47. A like point was made in one of the leading fair use articles

published prior to the reports, Cohen, Fair Use In The Law of Copyright, 6

Copynght Law Symp. ( ASCAP) 43. 51 (1955).

The likelihood that the cautionary language in the legislative reports was

motivated by realistic considerations pertaining to “disseminated but unpub-

lished” works is also suggested by a corresponding development in Brtsh-

law countnes under the analogous concept of “fair dealing.” Thus, in the

United Kingdom such early cases as Prince Albert v. Strange. 2 DEG. & SM

(footnote 7 and 8 continues)

was no prepublication performance, circulation, or other per-

tinent disclosure of the manuscript. See District Court Finding

of Fact 30.

(footnote 7 and 8 continued)

652 (1849) and Macklin v. Richardson, Amb. 694, Case 341 (1770) were

often considered to preclude the defense of fair dealing in the case of

unpublished works. See, e.g. A. Weil, American Copyright Law 115 (1917);

(“... there should be full freedom to criticise and comment upon all

published works ...”) (emphasis added). However, it was soon understood

that fair dealing could apply to dramatic and musical works that were

publicly performed. E.g., British Oxygen Company, Lid. v. Liquid Air, Lid.

[1925] Ch. 383, 393; M. Flint, A User's Guide to | U.K.| Copyr ght § 10.06 at

50 (London, 1979); W. Copinger & E.P. Skone James, [ U.K.] Copyright

§ 463 at 178 (London, 10th Ed., 1965}. Doubt remained that fair dealing

could apply to unpublished literary works. British Oxygen Company, Lid. v.

Liquid Air, Lid., supra. However, in Hubbard v. Vosper, | 1971) | All E.R.

1023, 1027-28 (involving the use in a book of letters circulated to members of

a religious group) the court concluded that: “Although a literary work may

not be published to the world at large, it may, however. be circulated to such

a wide circle that it is ‘fair dealing’ to criticise it in a newspaper, or elsewhere.

This happens sometimes when a company sends a circular to [its] share-

holders. It may be of such general interest that it is quite legitimate for a

newspaper tw make quotations from it and to criticise them—or review

them—without thereby being guilty of infringing copyright.” This was

followed in Beloff v. Pressdram Lid., | 1973) | All E.R. 241, 263 in which the

court defined the factors relevant to the issue of “fair dealing™ with a literary

work as “whether the work is unpublished; and the extent to which the work

has been circulated, although not publishea to the public within the meaning

of the Copynght Act.” (The court refused to sustain the defense of fair

dealing, noting inter alia, that the work was unpublished and had not been

made available, and that the memorandum in question was “obtained and

used without the author's consent in the correct conviction that, if consent had

been sought, it would have been refused.”). Similarly, in The Distillers Co.

( Biochemicals) Lid. v. Times Newspapers Lid., {1974} | All E.R. 41, 52 the

court entered an interlocutory injunction since it “doubt{ed] whether the

plainuff's documents could be said to have been circulated so widely that.

though not published generally, it is fair dealing to criticise them.” See also.

Hindley v. Higgins, Ct. App., Civ. Div.. Aug. 24, 1983 (unpublished: on

Lexis) (only possibility of pnor publication might justify fair dealing). (In

an excepnional case, Lion Laboratories v. Evans, | 1984] 2 All E.R. 417. the

court lifted an interlocutory injuncuon, leaving substantive issues for tal.

where the copynght claim would have suppressed awareness of documents

(footnote 7 and 8 continues)

a a - — ~

ee ee

Another extraordinary circumstance could arise if a plain-

tiff were seeking to use the copyright law to suppress disclosure

of information of overriding public importance. Cf. Rosemont

Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir.

1966), cert. denied, 385 U.S. 1009 (1967). But this situation

does not arise here. The basic facts and events related in the

work—as distinguished from their literary expression resulting

from the collaborative efforts of President Ford, Mr. Armbris-

ter. and Petitioners—had already been made public ( District

Court Findings of Fact 23, 44, 45) and even the use of facts and

events from the manuscript would not be precluded by Petition-

ers’ copyright claim.® Most importantly, the Time article and

the book itself were shortly to be published in any event. Upon

(footnote 7 and 8 continued)

casting doubt on the validity of plainuff’s device, which was used as the basis

of current criminal prosecutions. Unlike the present case, the documents in

Lion were considered of vital current importance to the administration of

criminal justice, and were not going to be published by their holder. See p.

12, infra.)

Similarly, Canadian law has been said to bar fair dealing in unpublished

works. E.g.. H. Fox, The Canadian Law of Copyright 425 ( Toronto, 2d Ed.

1967); A. Keyes & C. Brunet, Copyright in Canada— Proposals For A Revision

of the Law 148 (Consumer & Corporate Affairs Canada 1977). However, a

both generally published and performed works. B. Torno, Fair Dealing: The

Need for Conceptual Clarity on the Road to Copyright Revision 38 (Consumer

& Corporate Affairs Canada 1981). Most recently, the Canadian Govern-

ment proposed that a new Canadian fair use doctrine “apply to all copy-

nghted subject matter that has generally been made available to the public,

regardless of whether such material has been published in the traditional

sense.” J. Erola & F. Fox, From Gutenberg to Telidon—A White Paper on

sumer & Corporate Affairs Canada 1984) ( Emphasis added ).

® The instant case is therefore clearly distinguishable from Diamond v.

Am-Law Publishing Corp., supra n. 6. Additionally in this respect, we must

note the clandestine source of the manuscript and Mr. Navasky's knowledge

that his receipt was unauthorized. See Distnct Court Finding of Fact 33.

917 USC. § 103(b). See e.g.. New Boston Television, Inc. v. Entertain-

ment Sports Programming Network, Inc., 215 US.P.Q. 755, 757 (D. Mass.

1981) ( Rejecting fair use defense based on news reporung because. inter alia.

“while protection of the public nght of access to [newsworthy | information 's

a primary justification for the fair use defense, this might is sufficiently

(feotnete continues }

a ll i EL ALLA A OA

publication in serial and book form, the work and its contents

would have been readily available to the public without

temporal or other restraints; and copyright would not preclude

the Nation from prepublication reporting of the facts, ideas,

and events in the manuscript or post-publication quotation of

reasonable excerpts of expression. (Additionally, the Nation

acted for commercial self interest. See District Court Findings

of Fact 54, 57.) This case thus does not raise the danger of

“merely inhibiting access to ideas” that concerned this Court

with respect to the prohibition of certain noncommercial uses in

Sony Corporation of America v. Universal City Studios, Inc.,

supra 104 S. Ct. at 793. Cf, e.g., Schnapper v. Foley, 667 F.2d

102, 114 (D.C. Cir. 1981), cert. denied, 455 U.S. 948 (1982).

(“We conclude that in this case where there is no judicially

cognizable allegation that the interested public has been denied

access to these works, the balance of the First Amendment

interests is, if anything, tilted in the direction of the holders of

copyrights.” )

Nor are there other extraordinary circumstances that

would support the application of fair use to Petitioners’ unpub-

lished work in this case. That Petitioners’ work represented the

memoirs of a former President does not detract from the

protection of its expression under the Copyright Act and its

underlying principles. See, e.g., Folsom v. Marsh, 9 F. Cas. 342,

346-47 (C.C.D. Mass. 1841) (No. 4,901); p. 4 supra. Indeed,

if factors extrinsic to the unpublished /undisseminated /soon-to-

be published calculus are pertinent here, then one must consid-

er such elements as the spurious provenance of the unauthor-

ized manuscript, and the Nation’s knowing receipt and deliber-

ate use of substantial literary expression from an unauthorized

source to interfere with Petitioners’ customary first serial nights

for its self-serving commercial purposes. See, e.g., Dist. Ct.

Findings of Fact 33, 54, 57, 66, 67. These provide further

support for the inapplicability of fair use. See, e.g., Time, Inc.

v. Bernard Geis Associates, 298 F. Supp. 130, 146 (S.D.N_Y.

1968) (“Fair use presupposes good faith and fair dealing.” )

(footnote continued )

protected merely by enabling defendants to report the underlying facts that

the plaintiffs’ videotapes record. It does not permit defendants to appropriate

the plaintiffs’ expression of that information... .~) (emphasis in original ):

see also. cases cited at 6 21 of this bref

The principle that fair use must be narrowly restricted to

extraordinary circumstances in the case of unpublished works Is

not new to the 1976 Copyright Act. It derives from a similar

principle under the regime of common law copyright prior to its

preemption by the 1976 law.'© Although Respondents’ argu-

ments in the Court of Appeals and in opposition to this Court's

grant of certiorari repeatedly denied this general rule, it is more

than amply supported. See, e.g., Press Pub. Co. v. Monroe, 73

F. 196 (2d Cir. 1896) (by implication ); Golding v. RKO Radio

Pictures, Inc., 193 P.2d 153, 163 (Cal. Dist. Ct. App. 1948),

aff'd, 221 P.2d 95 (Cal. 1950); Stanley v. Columbia Broad-

casting System, Inc., 35 Cal. 2d 652, 661, 221 P.2d 73, 77-78

(Cal. 1950) (en banc); Report of The Register of Copyrights on

the General Revision of the U.S. Copyright Law, supra n.\0 at

40: Latman, Fair Use of Copyrighted Works, Copyright Law

Revision Study No. 14 at 7 (H.R. Comm. Print, 86th Cong..,

Sess. 1960); Strauss, Protection of Unpublished Works,

Print, 86th Cong., 2d Sess. 1960); A. Weil, American Copyright

Law 115 (1917); H. Ball, Law of Copyright 260 n.5 (1944): R.

Shaw, Literary Property in the United States 67 (1950). See

also, P. Wittenberg, Protection of Literary Property 125 (1968)

(“Before publication there can be no fair use of works pro-

tected under common law copyright;” but implying that this

remains true only “as long as an author keeps his work

confidential and uncommunicated ...”); Cohen, Fair Use in

the Law of Copyright, 6 Copyright Law Symp. (ASCAP) 43, 5!

(1955) (Suggesting that the general principle precluding fair

use of common law works would not apply to publicly per-

formed but unpublished works); Caliga v. Inter Ocean News-

paper Co., 215 US. 182, 188 (1909) (“At common law the

exclusive right to copy existed in the author unul he permitted a

__ U.S. Copyright Law 40 (H.P.. Comm. Print, 87th Cong.. Ist Sess., July 1961 )

AAP does not contend that common law copyright absolutely precluded fair

use in all circumstances. In appropriate cases, such as those involving

disseminated but unpublished works. a privilege of fair use may have been

accorded at common law had the occasion arose. See generally, authorities

cited in fn. 7, supra.

general publication.”); Atlas Mfg. Co. v. Street & Smith, 204

F.2d 398, 402 (8th Cir.), appeal dismissed, 231 U.S. 348

(1913) (At common law, author had “exclusive right to the

first publication” of his work. ); Fendler v. Morosco, infra.

The authorities relied on by Respondents to refute this

proposition are unavailing. In Fendler v. Morosco, 253 N.Y.

281, 171 N.E. 56, reh’g denied 254 N.Y. 563, 173 N.E. 867

(N.Y. 1930) the court, finding no copying, expressly declined

to pass on the fair use question, but did observe: “Since plaintiff

had not published or produced her play, perhaps any use that

others made of it might be unfair.” 253 N.Y. at 291. In Estate

of Hemingway v. Random House, Inc., 53 Misc. 2d 462 (N.Y.

Sup. Ct.), aff'd, 285 N.Y.S.2d 568 (App. Div. 1967), aff’d on

other grounds, 23 N.Y.2d 341 (N.Y. 1968), the trial court did

refer to fair use in a common law action. However, this was a

misuse of the term (or at least a use not pertinent to the

doctrine at issue here) since the court was apparently referring

to “minor” and “trivial” —i.e., de minimis—uses (53 Misc. 2d

at 466) which preclude infringement even absent fair use

considerations. See generally, 3 M.B. Nimmer, Nimmer on

Moreover, the trial court also appeared to be referring to the

use of published materials (53 Misc. 2d at 465-66) or materials

intended for general release (i.e., a press release ) (53 Misc. 2d

at 466). Although the trial court also dealt with alleged

infringement oi letters and oral conversations, its reference to

fair use did not extend to these materials |see 53 Misc. 2d at

467 (letters; no copying) and 468-471 (oral conversations; no

right to preclude publication by participant)]. Additionally,

the New York Court of Appeals, noting that it was agreeing

with the disposition of the case only “on a ground more

narrow” than the trial court (23 N.Y.2d at 345), decided the

case solely on the ground that defendant’s author had implied-

in-fact consent from Hemingway for its publication; the appel-

late court did, however, emphasize the importance of common

law rights in protecting against unauthorized disclosure (23

N.Y.2d at 347-48). Finally, it has been suggested that the

action was designed to suppress information. Goldstein, Co-

pyright and The First Amendment, 70 Colum. L. Rev. 983, 1004

(1970); see p. 12-13, supra. The decision, in sum, lends no

meaningful support to Respondents’ position.'' Indeed, in view

of the express language in the legislative reports, Respondents’

denials and purported authorities can have no significance.

In its arguments below, Respondents also relied upon

Congress’ elimination of the “prepublication/publication dis-

tinction” between common law and statutory copyright. Brief

of Defendants—Appellants—Cross-Appellees before the U.S.

1’ Respondeat also relied on Professor Nimmer’s statements that (a)

“there are no cases squarely .. . holding [that the defense of fair use was not

available at common law]”; and (b) “some [cases] expressly or by

implication have denied [the] proposiion”™ that fair use was not applicable at

light of the opinions in Press Publishing Co. v. Monroe, Golding v. RKO, and

Stanley v. CBS, supra, and the fact that in each case defendant was held

liable, Professor Nimmer’s first point is difficult to accept. The only case cited

by Professor Nimmer in direct support of his second point is Hemingway

which, as indicated above, does not effectively refute the general principle.

He also cites ( as “see” citations ) Malkin v. Dubinsky, 203 N.Y.S.2d 501 (Sup.

Ct. 1960), Weitzenkorn v. Lesser, 40 Cal.2d 788, 256 P.2d 947 (Cal. 1953)

and Fendler v. Morosco, supra. However, Fendler, as noted earlier, expressly

stated that use of an unpublished unproduced play might be “unfair,” and

that decision turned on no copying. Malkin turned wholly on the presence of

only trivial and insignificant similarities and no copying, and Weitzenkorn

turned on the lack of copying of protected elements. Neither dealt with fair

use as that doctrine is here at issue. Cf. 3 M.B. Nimmer, Nimmer on Copyright

§ 13.05 at 13-55—13-56 (1983); see also, id. at §13.03{A] at 13-32

(references to fair use to cover insubstantial similarity are “unfortunate” ).

(Perhaps Professor Nimmer’s reliance on Fendier is attributable to the fact

that the opinion includes passing reference to isolated quotations from Folsom

v. Marsh, supra (253 N.Y. at 291] and an early lecture [253 N.Y. at 292)

that are suggestive, at most, of the fair use doctrine as it has since developed.

This may also underlie his reference to Ma/kin [see 203 N.Y.S.2d at 507,

quoting Fendler|. If this is the case, it is a thin reed on which to base

refutation of the commonly acknowledged principle that fair use generally did

not apply to common law actions. and can be given no significance in light of

the statement by the New York Court of Appeals in Fendler that any use of an

unpublished, unproduced play might be unfair.) In any event, given the clear

statements in the legislative reports that fair use of unpublished works must

be “narrowly” restricted to extraordinary circumstances, debate over the

precise rule at common law has no real meaning here.

Court of Appeals for the Second Circuit at 33. However, the

elimination of publication “as a dividing line between common

law and statutory protection” (H.R. Rep. No. 94-1476, supra at

129, quoted in Brief, supra at 33) does not mean that the

question of whether a work is or is not published is irrelevant

for all purposes. See, e.g., 17 U.S.C. §§ 104, 203, 302, 303, 401,

403, 405-409, 412. In eliminating common law copyright,

Congress brought the traditional “right of first publication”

under the Federal ambit of protection. See H.R. Rep. No. 94-

1476, supra at 62; S. Rep. No. 94-473, supra at 58. And in

codifying the doctrine of fair use, Congress did not intend to

“change, narrow, or enlarge it in any way. H.R. Rep. No. 94-

1476, supra at 66; S. Rep. No. 94-473, supra at 62; Sony

Corporation of America v. Universal City Studios, Inc., supra at

791-92 n.29 (emphasis added). Respondents’ earlier, unwar-

ranted, extrapolation of Congress’ intent with respect to the

significance of publication ignores these points; but most impor-

tantly, their assertion that “there is no basis for concluding that

Congress ...intended” the prepublication/publication dis-

tinction to be pertinent to fair use (Brief, supra at 33) is

expressly contradicted by the legislative reports referred to

above.

The principle that application of the fair use doctrine to

unpublished works must be narrowly circumscribed is grounded

in several basic and related policy considerations. Perhaps

most fundamentally, it simply cannot be “fair” to intrude into

the process of authorship or publishing and, without author-

ization, first present the creators’ literary expression to the

public. This offends not only common notions of equity, but

those of privacy as well. The fact that a work is soon to be

published does not detract from these considerations. For

reasons both personal and economic, the creators of a work

must generally have the right to present it in such form, and

with such revisions and refinements, as they determine. The

right of first publication is an important safeguard of “com-

mercial interest” because it “covers the critical period for

management of any artistic work, extending from the work’s

initiation through its preparation for . . . dissemination.” Gold-

stein, Copyright and the First Amendment, 70 Colum. L. Rev.

983, 1004 (1970) (emphasis added). No public interest is

served in the ordinary case by depriving authors and publishers

of these prerogatives and conferring them on an interloper.

Most importantly, and as occurred here, preemptive publi-

cation of a literary work will havé a direct adverse impact on

the established market for first serial rights in books. See

District Court Findings of Fact 38, 66; see also, 557 F. Supp. at

1072-73. Proper fair use analysis requires consideration of the

cumulative effect of many persons engaging in the defendant’s

activity. Sony Corporation of America v. Universal City Studios,

Inc., US. , 1048. Ct. 774, 793, reh’g denied, 104 S. Ct.

1619 (1984) (proof that if a particular use “should become

widespread it would adversely affect the market” negates fair

use); see generally, 3 M.B. Nimmer, Nimmer on Copyright

$§ 13.05[A][4] at 13-65, 13.05[E][4] at 13-84 (1983). It is

difficult, at best, to see how first serial rights in non-fiction

works can survive in the atmosphere condoned by the Court of

Appeals. Yet subsidiary rights, including first serial rights, are

of great importance to authors and publishers. Indeed, “in

recent years ... the successful exploitation of ... subsidiary

rights has become a very real necessity, often separating the

difference between an unsuccessful and a successful” publishing:

venture. Marks, Subsidiary Rights and Permissions in C.

Grannis (Ed.), What Happens in Book Publishing 230 (1967).

And single-issue first serial rights of the kind involved here are

particularly important to works of non-fiction. See id. at 232.

As indicated above, the potential adverse market effect of

unauthorized first publication goes beyond first serial rights to

the value of copyright in the book itself, and of post-publication

subsidiary rights, since it deprives the publisher of the opportu-

nity to control the groundwork and planning it considers best

suited to the circumstances. Injury to first serial ‘rights is

particularly troubling because their careful handling is itself

part of the “groundwork” for successful exploitation of a book

and post-publication subsidiary rights. See Marks, Subsidiary

Rights and Permissions, supra at 232; see also, District Court

Finding of Fact 41, 67 & 557 F. Supp. at 1072 n.11; cf. Roy

Export Co. v. Columbia Broadcasting System, Inc., 503 F. Supp.

1137 (S.D.N.Y. 1980), aff'd, 672 F.2d 1095 (2d Cir. 1982),

cert. denied, 103 S. Ct. 60 (1983) (harm to original work

flowing from inability to protect derivative work). The District

Court properly refused to allow Respondents to dictate Peti-

tioners’ publishing judgment. See District Court Finding of

Fact 41 & 557 F. Supp. at 1072 n.11; cf New Boston Television,

Inc. v. Entertainment Sports Programming Network, Inc., 215

U.S.P.Q. 755, 757 (D. Mass 1981) (“It is for plaintiffs, not

defendant, to determine when and in what manner they choose

to exploit their copyright.” )

A copyright owner clearly has the right to protection

against unauthorized use of its work and actual or potential

injury in any significant market, primary or subsidiary. Jowa

State University Research Foundation, Inc. v. American Broad-

casting Co., Inc., 621 F.2d 57, 62 (2d Cir. 1980); New Boston

Television, Inc. v. Entertainment Sports Programming Network,

Inc., 215 U.S.P.Q. 755, 757 (D. Mass. 1981); Marvin Worth

Productions v. Superior Films Corp., 319 F. Supp. 1269

(S.D.N.Y. 1970). Thus, usurpation of the right of first

publication commonly cannot qualify as fair use, and Respond-

ents’ actions cannot do so here.

The Court of Appeals majority accorded the shield of

lawful privilege, and the colloquial respectability of “fairness,”

to the knowing appropriation of substantial portions of literary

expression from a clandestinely delivered manuscript that was

about to be published, and to the deliberate use of such

material to destroy Petitioners’ right of first publication. The

failure of the Court of Appeals to consider the unpublished

nature of Petitioners’ work, and its holding of fair use under the

circumstances of this case, are a substantial threat to the order

and integrity of the publishing process itself, as well as to the

economic interests of authors and publishers and, derivatively.

the interests of the public. In Sony Corporation of America v.

Universal City Studios, Inc., US. , 1048S. Ct. 744, 792,

795, reh’g denied, 104 S. Ct. 1619 (1984), this Court recently

confirmed that, at bottom, the doctrine of fair use is ai

“equitable rule of reason.” Both equity and reason compel

reversal here.

Il. The Court of Appeals Erred in Permitting Extensive

Paraphrasing of Expression

It is an established and essential principle of copyright law

that the mere avoidance of verbatim duplication of expression

will not immunize a defendant from infringement. Nichols v.

Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (L.

Hand, J.), cert. denied, 282 U.S. 902 (1931) (“It is of course

essential to any protection of literary property, whether at

common-law or under the statute, that the right cannot be

limited literally to the text else a plagiarist would escape by

immaterial variations.”). The Court of Appeals, while paying

lip service to this general rule, nevertheless effectively negated

its practical application by limiting it to situations where “an

alleged infringer borrow[s| virtually an entire work and

attempt[s] to avoid liability by doing little more than changing

the verbatim language or slight details ...,” and where “all of

{ a] book or all of a chapter | are taken and the infringer] merely

change[s] the language here and there... .” 723 F.2d at 203

(emphasis added ).

This limitation on protection from paraphrasing of ex-

pression is contrary to prior case law. See, e.g., Folsom v.

Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4, 901) (Story,

J.); Flick-Reedy Corp. v. Hydro-Line Mfg. Co., 351 F.2d 546

(7th Cir. 1965). It is inherently inconsistent with basic

principles of copyright. '2

12A conclusion of copyright infringement requires only a finding of

substantial appropriation. Moreover, even quantitatively small takings may

amount to infringement if the matter taken is qualitatively substanual. E£.g..

lowa State University Research Foundation, Inc. v. American Broadcasting

Co., Inc., 621 F.2d 57 (2d Cir. 1980).

Although the Court of Appeals sought to justify its con-

clusion by reliance on the factual nature of Petitioners’ work

and First Amendment considerations, the interests of free

speech do not require such a restriction in this case. Para-

phrasing, as a form of copyright infringement, is merely a more

adroit form of copying expression than literal repetition. The

First Amendment does not require the free use of an author's

expression, whether it be taken from the whole or any substan-

tial part of a work.’ See lowa State University Research

Foundation, Inc. v. American Broadcasting Co., Inc. 621 F.2d

$7, 61 (2d Cir. 1980); Wainwright Securities, Inc. v. Wall

Street Transcript Corp., 558 F.2d 91, 96 (2d Cir. 1977), cert.

denied, 434 U.S. 1014 (1978); New Boston Television, Inc. v.

Entertainment Sports Programming Network Inc., 215 U.S.P.Q.

755, 757 (D. Mass. 1981).

The publication of autobiographies, biographies, histories,

and like fact works is an invaluable contribution to the

democratic “harvest of knowledge.” A great deal of informa-

tion would not be part of the public consciousness but for

publishers’ acceptance of the investments and risks of publica-

tion. Copyright provides the security and promise that justifies

such undertakings. Publishers regularly license under copyright

the use of substantially less than entire works. This Court

should not confirm a standard of infringement that will encour-

age non-literal appropriation of expression and eviscerate

meaningful copyright protection of commercially significant,

but limited, portions of expression taken in near-literal form

from larger works.

13 An exceptional case might arise in which the information sought to be

conveyed and the manner of its expression are so intertwined that the one

cannot be communicated without the other. See Roy Export Co. v. Columbia

Broadcasting System, Inc., 672 F.2d 1095, 1099-1100 (2d Cir. 1982), cert.

denied, 103 S. Ct. 80 (1983). In such a circumstance, it may well be that the

interests of copyright would have to be subordinated to overriding First

Amendment concerns. But no such situation is presented here, since it cannot

seriously be argued that whatever newsworthy information was sought to be

conveyed by the Nation article—e.g., relating to the Nixon pardon—had to

have taken the form of literal or near-literal copying of President Ford's own

words.

CONCLUSION

The Court of Appeals erred in defining the scope of

protection of Petitioners’ work and by applying fair use to its

unpublished manuscript. Its decision should be reversed.

Respectfully submitted,

Jon A. BAUMGARTEN

(Counsel of Record)

CHARLES H. LIEB

WILLIAM F. PATRY

PaskuS, GORDON & HYMAN

2005 Massachusetts Avenue, N.W.

Washington, D.C. 20036

(202) 638-1930

Attorneys for Amicus Curiae

Association of American

Publishers, Inc.

Dated: July 20, 1984

Washington, D.C.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.