Petition for Writ of Certiorari — Duncan v. Pacific & Southern Co.

Supreme Court brief1985

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No FEB 2 1955

‘

ALEXANDER 1. Steyay |

In The

Supreme Court of the United States

October Term, 1984

CAROL DUNCAN, d/b/a TV NEWS CLIPS,

Petitioner,

vs.

SOUTHERN AND PACIFIC COMPANY, INC., d/b/a

WXIA-TV,

Respondent.

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

co)

Lyman Ray PartEerson

317 Gambrell Hall

1291 Clifton Road, N.E.

Atlanta, Georgia 30322

(404) 329-6821

Attorney for Petitioner,

Carol Duncan, d/b/a TV News Clips

COCKLE LAW BRIEF PRINTING CO., (800) 835-7427 Ext. 333

QUESTIONS PRESENTED

1. Does the First Amendment’s free speech clause pre-

vent a television station from using the copyright law to

deny reasonable public access to its previously aired tele-

vision newscasts?

2. Does the fair use doctrine protect the publie’s right of

reasonable access to copyrighted news reports broadcast

over the public airwaves?

3. Does the Court of Appeals’ decision violate the Copy-

right Statute in providing perpetual copyright protection

for future works which are to be destroyed shortly after

they are created?

TABLE OF CONTENTS

Pages

Questions P esented . i

Petition. ...... iinet eisai alae atdeagaaa ae 1

Opinions Below ............... | RP bie Aa mi 1

Jurisdiction ]

Constitutional and Statutory Provisions Involved .......... 1

Statement of the Case 2

A. The Broadcast Monitoring Industry 0000... 3

B. WXIA’s Retention and Marketing Policy .......... 6

C. History of this Lawsuit —20

Reasons for Granting the Writ:

|. This Court Should Determine Whether the

first Amendment’s Free Speech Clause Prevents a

Television Station from Using the Copyright Law te

Deny Reasonable Publie Access to Its Previously

Aired Television Newscasts.

A. The Importance of the Question 00.0

B. The Free Speech Issue

C. The Copyright Issue

D. The Interrelationship of Free Speech and

Ii. This Court Should Determine Whether the

Fair Use Doctrine Protects the Public’s Right of Rea-

sonable Access to Copyrighted News Reports Broad-

cast Over the Public Airwaves. oo ccccccccssssssescsssuseeeeen:

lil

TABLE OF CONTENTS—Continued

Pages

A. The Fair Use Doctrine Analyzed .

B. The Origin of the Fair Use Doctrine —... 18

C. The Cause of the Confusion 20

I nsntevinerotinsnnicnionitgeetonemeenmtanenimnenennen 22

III. This Court Should Determine Whether the

Court of Appeals’ Decision Violates the Copyright Act

by Providing Perpetual Copyright Protection for Fu-

ture Works Which are te be Destroyed Shortly After

They Are Created. . Sila neaidhsaibisiieneitcumesateandieimesniinieinihe 23

Conclusion . 25

Appendix:

Appendix A—Court of Appeals’ Opinion ......... Al

Appendix B—District Court’s Opinion |. A19

Appendix C—Order Denying Petition for Re-

Ge . A438

Appendix D—Constitutional and Statutory Pro-

a A45

Appendix E—Cease and Desist Letter A47

TABLE OF AUTHORITITES

CASES

Board of Education v. Pico, 457 U.S. 853 (1982) 10

Columbia Broadcasting System, Inc. v. Demo-

cratic National Committee, 412 U.S. 94 (1973) —.. 12

TABLE OF AUTHORITIES—Continued

Pages

Folsom v. Marsh, 9 F. Cas. 342 (C.C.D.Mass 1841) ..... 18

l‘ortnightly Corp. v. United Artists Television,

Inc., 392 U.S. 390 (1968) 17

Gannett Co., Inc. v. DePasquale, 443 U.S. 368 (1979) ..... 1]

Harper & Row Publisliers, Ine. v. Nation Enter-

prises, 723 F.2d 195 (2d Cir. 1983), cert. grant-

ed, 104 S. Ct. 2655 (1984) .... Salmiaaen 10

List Publishing Co. v. Keller, 30 F. 772 (C.C.D.S

N.Y. 1887) ae

Mazer v. Stein, 347 U.S. 201 (1954) = aN 18

Miami Herald Publishing Co. v. Tornillo, 418 U.S.

241 (1974) ....... | 11

Office of Communication of the United Church of

Christ v. Federal Communications Commission,

425 F.2d 548 (D.C. Cir. 1969) pean ae

Sony Corporation of America v. Universal City

Studios, Inc, — U.S. —, 104 S. Ct. 774

1984) 15, 16, 18, 22

Stanley v. Georgia, 394 U.S. 557 (1969) 0000

Stover v. Lathrop, 33 F. 348 (C.C.D.Colo. 1888) 21

Triangle Publications, Ine. v. Knight-Ridder

Newspapers, Inc., 626 F.2d 1171 (Sth Cir. 1980) 16

Twentieth Century Musie Corp. v. Aiken, 422 U.S.

151 (1975) 12,17

TABLE OF AUTHORITIES—Continued

Pages

United States v. Paramount Pictures, Ine., 334

U.S. 131 (1948) 18

Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834) ........ 12, 22

Wihtol v. Crow, 309 F.2d 777 (8th Cir. 1962) 21

Williams & Wilkins v. United States, 487 F.2d

1345 (Ct. Cl. 1973), aff'd by an equally divided

court, 420 U.S. 376 (1975) ; 21

CoNSTITUTIONAL AND STATUTORY PROVISIONS

United States Constitution

eh RE vice een esnin passim

Art. 1, see. 8, cl. 8 ........ 1, 12, 13, 24

See. 101 6, 7, 8, 14, 25

See. 102 6, 7, 23, 25

Sec. 106 17

See. 107 2, 8, 9, 17, 18, 19, 22

See. 107-118 17

Ef ea EMA ROR AEE

> Rete em spanitedl 24, 25

See. 411(a) 7

See. 411(b) 7

TOMES CD ©) EES 3

See. 506 aoe ae

TABLE OF AUTHORITIES—Continued

Pages

8 Risa strate ETS eek A ne ee eC as 20, 21

Ee a ee 23

28 U.S. C.

See. 1338(a) 2

See. 1254(1) 1

LeeisLativE MATERIALS

H. R. Rep. 222, 60th Cong., 2d Sess. (1999) ..... Cee ew 21

H. R. Rep. No. 94-1476, 94th Cong., 2d Sess.

Salt nladiscepicakscetacdohenseaeiits este oaedinaneeaeaicen aan 17, 24

MISCELLANEOUS

Boorstyn, N., ed. The Copyright Law Journal,

Special Focus Issue, ‘*The Doctrine of Fair

Use” (1984) liane 14

Clapp, V., Copyright—aA Librarian’s View (1968) ....... 20, 21

1783-1962 (Copyright Office 1962) .

Drone, K., A Treatise on the Law of Property in

Intellectual Productions (1879) . 19

Nimamer, M., Copreyrtght (1984) ..cccccccccccsccsscssneesnessneensseneene 13, 20

vii

TABLE OF AUTHORITIES—Continued

Pages

Patterson, Book Review, 34 Vand. L. Rev. 833

(1981) . 20

The Supreme Court, 1983 Term, 98 Harv. L. Rev.

87 (1984) ; 16

PO re ea ae a

Petitioner Carol Duncan, d/b/a TV News Clips, (‘‘Mrs.

Duncan”) respectfully prays that a Writ of Certiorari is-

sue to review the judgment and opinion of the United

States Court of Appeals for the Eleventh Cireuit (‘Court

of Appeals’’) entered in the above-entitled case on Octo-

ber 26, 1984.

ray

—QO-——

OPINIONS BELOW

The Opinion of the Court of Appeals rendered Oc-

tober 26, 1984, is reported at 744 F.2d 1490 (11th Cir.

1984)—Appendix A hereto (cited herein as ‘‘App. Al et

seq.”). The Opinion of the United States District Court

for the Northern District of Georgia entered October 13,

1983, is reported at 572 F. Supp. 1186 (N.D. Ga. 1983)—

Appendix B hereto (cited herein as ‘‘App. A19 et seq.’’).

—o-

JURISDICTION

The Judgment of the Court of Appeals was entered on

October 26, 1984. A Petition for Rehearing and a Sugges-

tion for Rehearing in Bane was timely filed on November

14, 1984. The Petition for Rehearing was denied by order

dated December 7, 1984—Appendix C hereto (App. A48).

This Petition for Writ of Certiorari has been timely filed

within ninety days thereafter. The jurisdiction of this

Supreme Court is invoked pursuant to 28 U.S.C. §

1254(1).

“

CONSTITUTIONAL AND STATUTORY PROVISIONS

INVOLVED

This ease involves the First Amendment and Article

I, § 8, el. 8 (Copyright Clause) of the United States Con-

stitution and section 107 of the Copyright Act of 1976, 17

U.S.C. § 107, each of which is printed in full in Appendix

D hereto (App. A45 et seq.).

STATEMENT OF THE CASE

This is an action for alleged infringement of statutory

under 28 U.S.C. § 1338(a).

Petitioner, Mrs. Carol Duncan, d/b/a TV News Clips

(Mrs. Duncan) is a broadcast monitor in the Atlanta area.

She tapes newscasts off-the-air and provides hard copies,

known as videoclips, of news stories appearing on the

newscasts. These videoclips are usually provided to the

subjects of the news stories.’ Mrs. Duncan monitors news

broadeast by Respondent, Pacific and Southern Company,

Ine., d/b/a WXIA-TV (WXIA), an affiliate of the Na-

tional Broadcasting Company, and other Atlanta television

stations. She limits her service to newscasts and does not

monitor entertainment or sports programming. She does

: Mrs. Duncan’s clients include lawyers, public officials

(Governor Harris of Georgia; Secretary of Transportation

Elizabeth Dole); trade associations (National Association

of Educators; Georgia Association of Educators); govern-

mental agencies (Environ‘nental Protection Agency; In-

ternal Revenue Service; General Services Administration);

newspapers (Atlanta Journal and Atlanta Constitution);

television networks (Cable News Network); political groups

(Georgia Republican Party; National Republican Commit-

tee); colleges and universities (Emory University; More-

house College of Medicine); hospitals (Northside Hospi-

tal; DeKalb General Hospital; Piedmont Hospital; Grady

Hospital); public utilities (Georgia Power); and numerous

businesses of various kinds.

not sell videotapes of the newscasts, only videoclips of

stories appearing as a part of the newscasts.

A. The Broadcast Monitoring Industry.

A broadcast monitoring service is to the electronic

media what a newspaper clipping service is to the print

media. Both provide clips, or clippings, of news stories

reported by the media to viewers or readers. The services

of broadcast monitors and newspaper clipping concerns

are such that a particular television station or newspaper

could not perform them even if so inclined. A television

station or newspaper can provide a record only of the

news it carries. Neither can monitor or review the news

reported by its competitors.

This case is unique in that a television station objects

to a monitoring service for television viewers of the same

type that has been provided for d cades to newspaper

readers. There is not a single reporced case brought by a

newspaper publisher against a newspaper clipping service

for copyright infringement based upon a claim that the

A new and growing industry, broadcast monitoring

developed because of the nature of television newscasts.

Every commercial television station in this country, each

of which is licensed by the Federal Communications Com-

mission, broadcasts news several times a day. The public

pays them for their efforts by the purchase of goods ad-

vertised on the newscasts.

Television newscasts are fast paced, short-lived pres-

entations. They contain many news stories during a thir-

ty, sixty, or ninety minute period. Often competing sta-

tions present newscasts in the same city at the same time.

The stories on the newscasts are brief and presented be-

tween frequent commercial breaks. Given these facts, a

viewer interested in a particular story carried by three

stations in a city will see the story he is interested in on

all three channels only by chance. Yet, the contents of

the story about the same subject may vary substantially

from channel to channel.

Local television newscasters do not limit their news

to local stories. Television stations often report news

stories, for example, about national companies such as

General Motors, IBM, Exxon or Proctor and Gamble.

These companies have a business purpose in knowing what

is reported about them nationwide in different locales.

For them, as well as for many subjects of the news stories,

a broadcast monitor is a significant source of information

which is frequently unavailable elsewhere, even from the

broadcaster of the report.

The success of broadcast monitoring services is proof

that they provide a service to the public by fulfilling a

need. Businesses have a legilimate concern for their

image as presented by the media. Public officials need to

know what is being reported over the airwaves about a

particular event. Attorneys sometimes require records of

television coverage of an accused client in support, for

example, of a motion for change of venue. Indeed, the

ephemeral nature of television newscasts means that the

services of a broadcast monitor are useful whenever a rec-

ord of publicly aired information is needed. But the full

potential of the industry has not been realized because it

is new and still developing.

AOE re .

The decision below will seriously erode, if not destroy,

the industry.’ Less than two months after the Court of

Appeals rendered its decision, WXIA’s attorney sent a

cease and desist letter to a broadcast monitor in New York

City which was monitoring WXIA newscasts and enclosed

a copy of the decision. In view of the Copyright Act’s

sanctions for “willful infringement,” 17 U.S.C. 4 504 (c)

(2), and criminal sanctions, zd., § 506, svch a letter with

a copy of the opinion will serve to shut down one monitor,

then another, and finally to stamp out a new industry.

The importance of broadcast monitoring derives in

part from the fact that the function of a newscaster is in-

herently different from that of the creative artist. The

newscaster’s only role is to convey to the public informa-

tion about community, state and national affairs. News-

casters also convey to the public what would otherwise be

private information about individuals and various entities,

regardless of the desires or wishes of the subjects of the

stories. The right of the newscaster to do so is clear un-

der the First Amendment. The right of those individuals

and entities to have reasonable access to those reports

about them after they have been broadcast should be made

equally clear. A broadcast monitor complements, but does

2 Litigation against a broadcast monitor similar to this case

is presently pending in Texas. Community Television

Foundation of South Florida, Inc. d/b/a WPBT-TV Channel

2 v. Jack Cato and Shirley Cato, d/b/a Broadcast News

Reports, Civil No. H-83-5742, U.S.D.C., $.D. Tex., Houston

Div.

3 The letter is reprinted as Appendix E, A47. The public

significance of this case is shown by the fact that CBS,

Inc. filed an extensive amicus memorandum in the Dis-

trict Court and an amicus brief in the Court of Appeals.

not compete with, the television newscaster in providing a

public service.

B. WXIA’s Retention and Marketing Policy.

WXIA, like most local newseasters, retains videotapes

of its newscasts for only one week. (App. A37) In accord-

ance with the apparent custom of the industry, it reuses

the videotape on which a newscast is recorded every sev-

enth day. The videotape used to record a Monday’s news-

casts, for example, is reused to record the next Monday’s

newseasts. The newscasts of the previous Monday are

erased as the more recent newscasts are recorded over

them. WXIA does retain ‘‘partial visual elements the

program” (App. A37) for its library, as well as the scripts

and an eudiotape of the newscast. (App. A2)

WXIA does not actively market videoclips from its

newscasts, (App. A2) ‘‘and admits that it has no real con-

cern that it ever sell any tapes.’’ (App. A41) It does sell

videoclips to persons who request them ‘‘as a public

service” (App. A21-22) but only at its discretion. For

example, as the Court of Appeals noted, WXIA refuses to

sell tapes to candidates for public office ‘‘because the sale

could appear to be an endorsement or other show of sup-

port for the candidate. Out of a similar concern over

favortism, the station asks for a subpoena before selling a

tape that will be used in litigation.” (App. A2 n.1)

Relying ou the 1976 Copyright Act provision permit-

ting copyright protection for live broadcasts if simultane-

ously recorded, 17 U.S.C. § 101 (definition of ‘‘fixed”) and

102, WXIA claims copyright protection for its newscasts.

But it does not undergo the effort and expense of register-

semper

ing its claim of copyright on those newscasts with the

C. History of This Lawsuit.

On March 11, 1981, WXIA broadeast a short news

story about Floyd Junior College. The total story, the

subject of which was a physical fitness trail the college

had installed, lasted less then two minutes (App. A21) on

a ninety minute newscast. Mrs. Duncan sold a videoclip

of that story to the public relations director of the college

who purchased it at the request of WXIA. (Tr. Trans. 62)

The fee was $55.00. (App. A42)

In May, 1981, in preparation for this litigation, WXIA,

for the first time ever, sought to register the copyright of

one of its newscasts, the newscast of March 11, 1981.5 The

videotape of the newscast, however, was no longer in exis-

tence. Presumably in accordance with its custom, WXIA

had erased the videotape. (App. A37) Ironically, WXIA

used the alleged infringing videoclip made by Mrs. Duncan

which it had obtained from Floyd Junior College (App.

All n.9) and an audiotape of the newscast for registra-

4 The copyright of a work must be registered in order for

the owner to bring an action for its infringement. 17

U.S.C. § 411(a). But a live television newscast cannot

be registered as such since only works fixed in a tangible

medium of expression are copyrightable. 17 U.S.C. §

102. It is the videotape of the newscast that is copy-

righted, 17 U.S.C. § 101 (definition of ‘‘fixed’’), and special

rovision is made for the registration of videotapes of

ive television broadcasts. 17 U.S.C. § 411(b).

5 At the time of trial, a year and over 1,000 newscasts after

the March 11, 1981 newscast, WXIA had not registered a

claim of copyright on any other of its newscasts.

tion.” The Copyright Office, of course, could not register

the non-existent videotape of the newscast, but did register

the videoclip and the audiotape. The Copyright Office had

no way of knowing that the videoclip deposited with it was

made by Mrs. Duncan and not fixed ‘‘by or under the au-

thority of the author,’’ 17 U.S.C. $101 (definition of

‘“‘fixed’’).

In June, 1981, WXIA filed this lawsuit for copyright

infringement seeking $50,000 in statutory damages and a

permanent injunction to prevent Mrs. Duncan from moni-

toring its newseasts. WXITA admitted that Mrs. Dunean’s

use of its newscasts does not harm it financially in any

way, (Tr. Trans. 84) that Mrs. Duncan was not in compe-

tition with it, (Tr. Trans. 86) and that yesterday’s news-

east has no economic value for it. (Tr. Trans. 87)

The District Court denied Mrs. Dunean’s fair use de-

fense without applying the four statutory factors of sec-

tion 107 because ‘417 U.S.C. §107 does not automatically

require any use which is sought to be labelled ‘fair’ to be

analyzed under the guidelines set forth in subparagraph

(1) through (4). Rather, it is only where the use is clear-

ly for ‘purposes such as criticism, comment, news report-

ing, teaching (including multiple copies for classroom use),

scholarship, or research,’ ... that the Court’s interest in

subfactors (1) through (4) is triggered.” (App. A32-33)

The court held Mrs. Duncan’s use of WXIA’s newscasts to

be an infringement, denied WXIA a permanent injunction

because of ‘‘First Amendment considerations,” found the

6 WKXIA retained a copy of the “Fitness Trail” story, but that

copy did not contain the introduction to the story by the

anchor persons on the newscast as did the clip made by

Mrs. Duncan.

nS ee tan BE ne

actual damages to be ‘‘trivial’? and awarded WXIA

$35.00.

The Court of Appeals rejected the District Court’s

interpretation of 17 U.S.C. § 107. It applied the four stat-

utory factors relating to fair use and relied most heavily

on the fact that Mrs. Duncan’s use was a commercial use.

The Court of Appeals affirmed the District Court’s denial

of Mrs. Duncan’s defense of fair use and finding of in-

fringement, reversed as to the denial of a permanent in-

junction, and remanded the case for the entry of the in-

junction. WXIA did not contest the award of damages on

appeal.

ra’

REASONS FOR GRANTING THE WRIT

I. This Court Should Determine Whether the First

Amendment’s Free Speech Clause Prevents a Tele-

vision Station from Using the Copyright Law to Deny

Reasonable Public Access to Its Previously Aired

Television Newscasts.

A. The Importance of the Question.

The core question in this case involves the interre-

lationship of free speech and copyright as applied to tele-

vision newscasts: Can copyright law be used to override

the First Amendment right of reasonable public access

to news reports broadcast over the public airwaves?

This issue is in itself an ‘‘important question of fed-

eral law which has not been, but should be, sett!ed by this

eourt.” Moreover, the Court of Appeals’ opinion raises

two related issues of major importance in the adminis-

tration of the copyright law. The first is whether the fair

use doctrine protects the publie’s right of reasonable ac-

cess to copyrighted news reports after they have been

broadcast over the public airwaves. The second is wheth-

er the Court of Appeals violated the copyright statute in

providing perpetual copyright protection for future works

to be destroyed shortly after they are created. These

are “questions whose resolution will have immediate im-

portance far beyond the particular facts and the parties

997

involved. ...

B. The Free Speech Issue.

For the first time in the history of copyright, a fed-

eral court has used the copyright statute to order a per-

manent injunction that denies reasonable public access

to news reports. This is a manifest denial of the “right

to receive information and ideas,” under the First Amend-

ment. Board of Education v. Pico, 457 U.S. 853, 867

(1982). Cf. Stanley v. Georgia, 394 U.S. 557, 564 (1969)

7 This case also presents an issue in regard to the electronic

media similar to that which Harper & Row Publishers,

Inc. v. Nation Enterprises, 723 F.2d 195 (2d Cir. 1983),

cert. granted, 104 S. Ct. 2655 (1984), presents in regard

to the print media. Both cases involve the application of

the fair use doctrine to news reported by the media.

Harper & Row involves the print media, while this case

involves the electronic media. But Harper & Row, finding

the use to be a fair use, is contrary to the Court of Appeals’

decision in this case. If this Court should affirm Harper

& Row, the Eleventh Circuit’s opinion would stand con-

trary to a decision of this Court; if this Court should re-

verse Harper & Row, there would be confusion as to the

applicability of the fair use doctrine to news reported by

the electronic media. The copyright owner in Harper &

Row intended to provide more than reasonable access to

the material; in this case, the copyright owner seeks to

inhibit public access to the copyrighted material.

(“It is now well established that the Constitution protects

the right to receive information and ideas.”)

The First Amendment protects the media’s right to

report what it wishes, when it wishes, where it wishes

without regard to taste, decorum er respect for privacy.

The First Amendment even pretects the press from being

compelled to correct a wrong report. JMJiami Herald Pub-

lishing Co. v. Tornillo, 418 U.S. 241 (1974). The First

Amendment, one can assume, also protects the right of

the electronic media to destroy a record of what it has

reported.

The First Amendment should also protect the pub-

lie’s right of access to that which the media reports. For

the First Amendment protection for the media ‘‘derives,

not from any specia! status of members of the press as

such, but rather ‘[i]n seeking out the news the press. .

acts as an agent of the public at large,’ .. .” Gannett Co.,

Inc. v. DePasquale, 443 U.S. 368, 397-98 (1979) (Powell,

J. coneurring).

There are any number of reasons why a citizen or a

group of citizens may wish to have newscasts monitored,

for example, prejudicial reporting as to minorities, see,

e.g. Office of Communication of the United Church of

Christ v. Federal Communications Commission, 425 F.2d

543 (D.C. Cir. 1969), or for purposes of researching media

treatment of a particular issue. But given the fact that

news is ‘‘the history of the day”, the First Amendment

protects the right of a citizen to use the services of a

broadcast monitor regardless of the reason.

C. The Copyright Issue.

When, as in this case, copyright law is applied to a

new medium of communication, the issue of the proper

administration of that law arises anew. For as the elec-

tronic media involves an ‘‘unusual order for first amend-

ment values,” Columbia Broadcasting System v. Demo-

cratic National Committee, 412 U.S. 94, 101 (1973), it also

involves an unusual order of copyright values.

WXIA has not yet answered the basic question in

this case: What copyright values is it seeking to protect

in denying publie aceess to its previously aired newscasts,

the videotapes of which it erases. The question is of

particular importance because it involves the issue of

temporarily available to the public.

Certain fundamental principles control the applica-

tion of copyright law. The constitutional purpose of copy-

right is to promote learning, U. S. Const., Art. I, $8,

el. 8; copyright is the grant of a limited statutory monop-

oly, Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834); and

only secondarily for the benefit of the copyright owner.

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

156 (1975).

8 At trial, WXIA testified that its concern was “to protect

its image,” and that Mrs. Duncan’s tapes are of inferior

quality. (Tr. Trans. 84-86) Mrs. Duncan argued below that

since WXIA regularly erases the videotapes of its news-

casts, it is destroying evidence of defamation that it may

perchance commit and preventing others from obtaining

evidence of any such defamation. The Court of Appeals

said, ‘“‘An effort to discourage defamation suits might be

an abuse of the copyright laws and a violation of the

First Amendment, but that possibility is entirely imaginary

in this case.” (App. A-13-14) But of course the applica-

tion of the rule of this case will not be limited to this

case. Even if WXIA’s purpose is not to discourage defama-

tion actions, that is clearly the significant effect of its use

of copyright in this case as no financial considerations

are involved.

LEE ERT ge pert mA AE Re ncn NE ES Sr om

- .

The Court of Appeals’ decision is contrary to each

of these fundamental propositions, for it holds that the

fact that television newscasters regularly destroy the video

tapes of their newscasts does not affect their right to

plenary copyright protection.

The opinion thus treats copyright as an absolute, not

a limited, monopoly. The injunction the court ordered

provides perpetual copyright protection like the common

law copyright Congress abolished. 17 U.S.C. § 301. Since

Congress can grant copyright only for ‘‘limited times”,

U.S. Const., Art. I, § 8, el. 8, “A federal copyright statute

which purported to grant copyright protection in per-

petuity would clearly be unconstitutional.” Nimmer,

D. The Interrelationship of Free Speech and Copyright.

The fact that the subject matter of the copyright here

involved is news brings into issue the interrelationship

of the free speech clause of the First Amendment and the

commentators have for years recognized a possible ten-

sion between copyright and first amendment freedom of

speech.” (App. A27) While perhaps true in some cases,

9 As Professor Nimmer’s comment implies, the vice is in

the fact that the copyies protection is perpetual. Thus,

an injunction based on the — statute that gives

protection for a series of works as long as they exist, al-

though each of the works has only a seven-day existence,

can properly be characterized as perpetual. The purpose

of denying perpetual copyright is to ensure that copy-

righted works will eventually go into the public domain,

a purpose that can never be realized as to WXIA’s news-

casts since WXIA erases the videotapes of its newscasts.

there is no such tension in this case; here the two consti-

tutional provisions can be, and should be, complementary.

The copyright clause and the free speech clause both

deal with the same subject, communication of ideas; both

reflect the same values, protection of the expression of

ideas; and both promote the same policy, the free flow of

information. The copyright clause thus incorporates First

Amendment values.

The means by which First Amendment values are in-

corporated into the copyright clause is the fair use doe-

trine. As one copyright scholar has stated:

‘The purpose of the fair use doctrine is to strike

a balance between the First Amendment and the

publie’s right to the free flow of ideas and informa-

tion; the Copyright Act protects the copyright own-

er’s right to the exclusive use and control of the work.

Tie fair use doctrine strikes that balance by pre-

venting a rigid application of the Copyright Act that

would unreasonably interfere with or prevent the pub-

lic dissemination of ideas and information.’’ N. Boor-

styn, ed., The Copyright Law Journal, Special Focus

Issue, ‘‘The Doctrine of Fair Use,” 2 (1984).

The application of the fair use doctrine to printed

material and to television newscasts, however, involves dif-

ferent considerations. Unlike printed material, which is

pubiished and disseminated in permanent form, television

broadcasts, including newscasts, are not published, they

are performed. 17 U.S.C. § 101 (definition of ‘‘perform”

and ‘‘publication”). The profit for the television news-

caster comes not from the sale of copies of the work, but

from advertisers. Thus, if the same copyright protection

logically applied to printed materials such as books is in-

Co eae

ere ge

discriminately applied to television newscasts, the news-

caster can use copyright law to inhibit rather than promote

the flow of information.

That is precisely what WXIA is seeking to do in this

ease. The free speech clause should prevent a television

station from using copyright to deny reasonable public ac-

cess to its previously aired newscasts. The fair use doc-

trine correctly applied as required by First Amendment

principles should protect the public’s right of access to

previously aired copyright newscasts.

These issues present substantial questions of law.

The importance of the questions is such that they merit

this Court’s consideration.

II. This Court Should Determine Whether the Fair Use

Doctrine Protects the Public’s Right of Reasonable

Access to Copyrighted News Reports Broadcast Over

the Public Airwaves.

The Court of Appeals’ opinion relied most heavily on

the fact that Mrs. Duncan’s use of the newscasts is a com-

mercial use. This reliance is inconsistent with this Court’s

statement that a use “that has no demonstrable effect upon

the potential market for, or value of, a copyrighted work

need not be prohibited in order to protect the author’s

incentive to create.” Sony Corporation of America v.

Universal City Studios, Inc., — U.S. —-, 104 S. Ct. 774, 793

(1984). The Court of Appeals virtually ignored the fact

that Mrs. Duncan’s use of the newscasts does not affect

the value of, or WXIA’s market for, its newscast—the

viewing audience.

As in Sony, Mrs. Duncan’s use of the television news-

casts does not create “a disincentive to produce that more

than offsets the benefit inherent in allowing more viewers

to see the programs.” The Supreme Court, 1983 Term,

98 Harv. L. Rev. 87, 293 (1984). Yet, the Court of Appeals,

by emphasizing Mrs. Duncan’s commercial use and sub-

stantially ignoring the lack of any financial harm to

WXIA, contradicted Sony, and “established what amounts

to a virtually per se rule that commercial motive destroys

the defense of fair use.” Triangle Publications, Inc. v.

Knight-Ridder Newspapers, Inc., 626 F.2d 1171, 1175 (5th

Cir. 1980).

A ruling that commercial motive destroys the fair

use defense turns the doctrine on its head. As discussed

below, the fair use doctrine originated as, and remains,

a fair “commercial” use doctrine: it presupposes a limi-

tation on the copyright monopoly by reason of a com-

mercial use by a competitor. When properly applied, the

focus is necessarily on the limitation of the monopoly, not

on the use itself.

The fair use doctrine is the most important limitation

on the copyright monopoly. As previously discussed, its

importance derives from the fact that its purpose is “to

strike a balance between the First Amendment and the

frequent reversals, close decisions, and sharp dissents. As

noted by Justice Blackmun in Sony, it ‘‘has been called

with some justification, ‘the most troublesome in the whole

law of copyright.’” Sony Corporation of America v. Uni-

versal City Studios, Inc., supra, 104 8. Ct. at 806 (Black-

mun, J. dissenting). This troublesomeness derives from

a failure of analysis, a point which merits discussion.

A. The Fair Use Doctrine Analyzed.

The use of a copyrighted work will necessarily be one

of three kinds: an unfair use (an infringement), a fair use

(not an infringement) or what can be characterized as a

normal use, for example, the reading of a book (neither an

infringement nor a non-infringement). Twentieth Century

Music Corp. v. Atken, 422 U.S. 151, 155 (1975) (**[I]f an

unlicensed use of a copyrighted work does not conflict with

an ‘exclusive’ right conferred by the statute, it is no in-

fringement of the holder’s rights.”’)

To determine whether a use is either unfair or fair,

one must begin with the fact that copyright consists of

a series of rights to which a given work is subject. Fort-

nightly Corp. v. United Artists Television, Inc., 392 U.S.

390, 393 (1968). (“The Copyright Act does not give a

work.”) These are the “exclusive” rights of the copy-

right holder.

These exclusive rights are: to reproduce the work in

copies, to prepare derivative works, to distribute copies,

to perform and to display the copyrigiited work. 17 U.S.C.

§ 106. Although designated as exclusive, these uses are

subject to the limitations set forth in twelve sections of

the Copyright Act, 17 U.S.C. §§ 107-118, the most notable

of which is the fair use doctrine. id., §107.!° Thus, to

be characterized as an infringing or as a fair use, a use

has to be of the kind reserved “exclusively” to the copy-

10 In the 1976 Copyright Act, Congress treated fair use as an

“equitable rule of reason,” H. R. Rep. No. 94-1476, 94th

Cong., 2d Sess. 65 (1976), and listed four non-exclusive

factors for courts to use in determining whether a use is

fair: (1) the nature of work, (2) the nature of the use, (3)

the amount used and (4) the effect on the value of or

market for the work. 17 U.S.C. § 107.

right owner. Otherwise, it cannot be an infringement and

there is no need to characterize it as a fair use. Such a

use is simply a normal use.

The fair use of a work “is not an infringement of

a limitation on the copyright monopoly. That monopoly,

primarily economic in nature, is intended to serve the

publie interest. Mazer v. Stein, 347 U.S. 201, 219 (1954).

If the public interest is to be properly served, the fair

use doctrine is best viewed as a public right to limit a pri-

vate economic monopoly. “The copyright law, ... makes

reward to the owner a secondary consideration.” United

States v. Paramount Pictures, Inc., 334 U.S. 131, 158

(1948).

If one does not invade the economic monopoly of the

Corporation of America v. Umiversal City Studios, supra.

In this case, however, we have the unusual situation of

a use that does not invade the “economic” monopoly of

the copyright owner, but which does provide economic

benefits to the user. The question is whether the Court

of Appeals improperly refused to characterize this use

as a fair use.

B. The Origin of the Fair Use Doctrine.

The fair use doctrine originated in an 1841 case, Fol-

some v. Marsh, 9 F. Cas. 342 (C.C. D. Mass. 1841), a con-

troversy between two publishers of biographies of George

Washington. Justice Story held the defendant liable for

infringement, but in doing so, he said:

“The question, then, is whether this is a justifi-

able use of the original materials, such as the law

recognizes as no infringement of the copyright of the

plaintiffs. .. . In short, we must often, in deciding

questions of this sort, look to the nature and object of

the selections made, the quantity and value of the ma-

terials used, and the degree in which the use may

prejudice the sale, or diminish the profits, or super-

sede the objects, of the original work.” 9 F. Cas. 341,

348.

This language created the fair use doctrine and, ex-

cept for the nature of the work, encompasses the factors

Congress used in providing guidelines for courts to use in

determining whether a use is fair. 17 U.S.C. ¢ 107. To

grasp the full import of the language, it is necessary to

view it in the context of the exclusive rights of the copy-

right owner in 1841. Those rights were “the sole right

of printing, reprinting, publishing and vending” the copy-

righted work. Copyright Revision Act of 1831, 4 Stat. 436.

These rights were wholly commercial in nature and only

a competitor would seek to exercise them. As originally

established, the fair use doctrine was necessarily intended

to enable a competitor to make a reasonable commercial

use of a copyrighted work.

Eaton Drone in his 19th century classie on copyright

law makes the point clear in his discussion of the fair use

doctrine: “It is a recognized principle that every author,

compiler or publisher may make certain uses of a copy-

righted work, in the preparation of a rival or other publi-

cation.” E. Drone, A Treatise on the Law of Property in

Intellectual Productions, 386 (1879).

If a competitor’s commercial use of a copyrighted

work which presumably harms the value of or market for

the work can be a fair use, a fortiori a non-competitor’s

commercial use of such a work that does not harm the

value of, or market for, the work should be a fair use.

C. The Cause of the Confusion.

The confusion about the fair use doctrine centers on

the right to copy. Prior to the 1909 Act, the right to copy

a copyrighted work was limited to works other than books,

as statuary and works of fine art. See V. Clapp, Copy-

right—A Librarian’s View (1968); Patterson, Book Re-

view, 34 Van. L. Rev. 833, 836-38 (1981).

In the 1909 Copyright Act Congress gave to the copy-

right owner the exclusive right “to copy” all copyrighted

works. 17 U.S.C. § 1 (1909 Act). There is, of course, a

significant distinction between the exclusive right to copy

a work of art—a painting or statue—and the exclusive

right to copy a book. The normal use of a painting or

statue does not involve copying the work, while the normal

use of a book may well entail copying. For the first time,

the 1909 Act gave the copyright owner an exclusive right

(to copy a book) that an individual might wish to exercise

in making a non-commercial, non-competitive use of the

work.

Since the right to copy was now made an exclusive

right of the copyright owner for all works, a strict con-

struction of the language could mean that the individual’s

copying for personal uses only would be an infringement

of copyright. Thus a leading copyright scholar writes,

2 . subject to the privilege of fair use, .. . copyright

infringement occurs whenever an unauthorized copy...

is made, even if it is used solely for the private purposes

of the reproduced. ...” Nimmer, Copyright, § 8.02[C],

pp. 8-26 (1984). See Wihtol v. Crow, 309 F.2d 777 (8th

Cir. 1962). This proposition, directly contrary to the

constitutional purpose of ecopyright—the promotion of

learning—was clearly not the law prior to the 1909 Act.

Stover v. Lathrop, 33 F. 348, 349 (C.C.D. Colo. 1888) ; Last

Publishing Co. v. Keller, 30 F. 772, 773 (C.C.S.D.N.Y.

1887). And even today, the better view is that a per-

sonal use is a fair use. Waoltams & Wilkins v. United

States, 487 F.2d 1345 (Ct. Cl. 19738) aff'd by an equally

divided court, 420 U.S. 376 (1975).

The exclusive right of the copyright owner to copy all

copyrighted works created confusion because the fair use

doctrine could now be perceived as an invasion of the

—a limitation on the statutory monopoly of copyright."

The change in perception meant a change from a strict

construction of the monopoly of copyright to a strict con-

struction of the doctrine of fair use. Thus, in this ease,

11 Congress clearly did not intend to change the nature of

—the right ‘‘to print, reprint, publish, copy and vend’”—

the House Report stated: ‘Subsection (a) of §1

adopts without change the phraseciogy of § 4952

of the Revised Statutes, and this, with the insertion of

the word ‘copy,’ practically adopts the phraseology of

the first copyright act Congress ever passed—that of

1790.” H.R. Rep. No. 2222, 60th Cong., 2d Sess. 4 (1909).

Of this comment, it has been written: “Ironically,

so far from ‘retain[ing] without change’ the old phrase-

ology, the committees (the House of Representatives and

the Senate shared the same report) were introducing a

word that was new in the context. . . . Through it the

quite by accident, acquired at least the semblance of an

activity that was to have increasing importance in the

new century.” V. Clapp, Copyright—A Librarian’s View

27 (1968).

the Court of Appeals construed the fair use doctrine, not

the copyright monopoly, strictly.

But the view that the fair use doctrine is an invasion

of the copyright owner’s property to be strictly construed

requires the rejection of the teachings of this Court from

Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834) to Sony

Corporation of America v. Universal City Studios, supra,

as to the nature of copyright—that it is a limited statutory

monopoly. And because “the fair use of a copyrighted

work ...is not an infringement of copyright,” 17 U.S.C.

§ 107, this view is also contrary to the copyright statute.

D. The Policy Issue.

This case presents a fundamental policy issue of copy-

right Jaw: Can copyright be used to prohibit reasonable

pub'ie aecess to short-lived copyrighted works publicly dis-

seminated for a brief period of time?

The issue is important because of the application of

an answer in Sony, but a slightly different factual situa-

tion led the Court of Appeals to a different result con-

trary to that case. The lower federal courts continue to

need direction from this Court in the area of copyright

law and the meaning of fair use. Given the fact that “the

natural tendency of legal rights to express themselves in

absolute terms to the exclusion of all else is particularly

pronounced in the history of the constitutionally sanc-

tioned monopolies of copyright and patent,” Sony Cor-

poration of America v. Universal City Studios, supra, at

104 S. Ct. 784 n.3, the danger is that lower courts will do

what the Court of Appeals did in this case: create an

anti-copyright, one that is used to inhibit rather than to

promote learning, as the Constitution commands.

The policy issue here is a complex and difficult one

which merits a full hearing by this Court. How it is re-

solved will determine whether the fair use doctrine can

continue to maintain the copyright monopoly within rea-

sonable bounds as it is extended to subject matter beyond

the paradigm for which it was created.”

The implications of the Court of Appeals’ decision

are critical for the future development of copyright law.

When the fair use doctrine is properly analyzed and ap-

plied, it is clear that it protects Mrs. Dunean’s use of

WXIA’s television newscasts. To say otherwise is to

create further confusion about the fair use doctrine and

to distort the purpose of copyright. This case is one that

requires this Court’s consideration now in the interest of

sound administration of the law of copyright.

III. This Court Should Determine Whether the Court of

Appeals’ Decision Violates the Copyright Act by

Providing Perpetual Copyright Protection for Future

Works Which are to be Destroyed Shortly After They

Are Created.

The Court of Appeals’ decision holds that the regis-

tration of an alleged infringing copy of a portion of a work

12 It is significant that Congress in the 1976 Copyright Act

made a major change in the law of copyright. Until that

Act, every copyright statute in this country, see Copyright

Laws of the United States of America, 1783-1962 (Copy-

right Office 1962), with one minor exception, 17 U.S.C.

§ 12 (1909 Act), required publication of the work as a

condition for obtaining a statutory copyright. Section 12

provided copyright for certain kinds of unpublished works

not reproduced for sale, i.e., lectures, dramatic or musical

compositions and photographs, works of art, plastic works

or drawings. The 1976 Act provides copyright protection

from the moment of fixation, 17 U.S.C. § 102, and thus

no longer ensures public access to the copyrighted work

by requiring publication. )

which the copyright owner has intentionally destroyed en-

titles that owner to a permanent injunction providing

created and which it will systematically destroy on a seven

day cycle after they are created. As discussed above, the

decision creates a federal common law copyright which,

like the state common law copyright Congress abolished,

17 U.S.C. § 301, provides copyright protection in perpetu-

itv. See n.9, supra.

The Court of Appeals, treating copyright as an ab-

solute monopoly, ignored both constitutional and statutory

principles. First, the opinion ignores the fact that the

Constitution empowers only Congress to provide for copy-

right and only for limited times. U.S.Const., Art. 1, $8,

el. 8. The limitation, of course, is in furtherance of the

promotion of learning, for it means that at the expiration

of the copyright term, the work shall go into the public

domain. Yet, in this case, the copyrighted works are de-

stoyed within seven days of creation. There is no copy of

the videotape of the newscast in issue, that of March 11,

1981, in existence, not even a registration copy.

Second, the statute requires registration of a claim of

‘‘Under the bill, as under the law now in effect, a copy-

right owner who has not registered his claim can have a

valid cause of action against someone who has infringed

his copyright, but he cannot enforce his right in the courts

until he has made registration.” H.R. Rep. No. 94-

1476, 94th Cong., 2d Sess. 157. The videotaped portion of

the newscast that was registered was not even fixed ‘‘by

or under the authority of the author” as the statute re-

quires. 17 U.S.C. $101 (definition of ‘‘fixed”)

A permanent injunction to restrain the copying of

future live television newscasts would relieve WXIA of the

duty of complying with any of the requirements of the stat-

ute. It would not have to register its claim of copyright

for judicial relief as required by statute, 17 U.S.C. § 411,

and, not having to register its claim of copyright, it would

not even have to fix the work in a tangible medium of ex-

pression, as required by the statute. 17 U.S.C. § 102. The

effect of a permanent injunction in this case would be to

provide copyright protection for works that may not even

be copyrightable.

WXIA has obviously determined that copyright regis-

tration is not worth the expense. Yet, because the Court

of Appeals ignored the registration requirements of the

statute, it unwittingly granted WXIA copyright protec-

tion in perpetuity for unregistered ephemeral works. The

case rewards a class of copyright claimants with an abso-

lute monopoly without exacting any benetit for society.

The consequences of a decision which does so warrant

this Court’s immediate consideration.

fay

CONCLUSION

For each and all of the foregoing reasons, a writ of

certiorari should issue to review the judgment and opinion

of the Eleventh Cireuit.

Respectfully submitted,

Lyman Ray Patrerson

Attorney for Petitioner

Carol Duncan, d/b/a

TV News Clips

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APPENDIX A

PACIFIC AND SOUTHERN COMPANY, INC., d/b/a

WXIA-TYV, Plaintiff-Appellee, Cross-Appellant,

Carol DUNCAN, d/b/a TV News Clips, Defendant-Appel-

lant, Cross-Appellee.

No. 83-8782.

United States Court of Appeals,

Eleventh Cireuit.

Oct. 26, 1984.

Appeals from the United States District Court for the

Northern District of Georgia.

Before FAY and JOHNSON, Circuit Judges and

Young", District Judge.

JOHNSON, Circuit Judge:

Pacific and Southern Company, the owner of a televi-

sion station, charges that Carol Duncan, d/b/a TV News

Clips, has infringed its copyright by videotaping its news

broadeasts and selling the tapes to the subjects of the

news reports. We hold that the appellant has violated the

‘fair use” of the material. We also conclude that the

television station is entitied to a permanent injunction pre-

venting the appellant from continuing to infringe its copy-

right. Accordingly, we affirm in part and reverse in part.

* Honorable George C. Young, U.S. District Judge for the

Middle District of Florida, sitting by designation.

l. Facts

Pacific and Southern Company does business as

WXIA-TYV, a television station in Atlanta, Georgia. It

broadcasts four local news programs each day and places

a notice of copyright at the end of each newscast. A pro-

gram consists of self-contained news stories originating

outside the studio and linked together by live commentary

from the anchor persons, along with weather reports and

shorter news reports originating from the studio itself.

WXIA records the entire program on videotape and audio-

tape. It retains a written transcript of the program for a

year and the audiotape for an indefinite period of time; it

also maintains videotape copies of all the news stories

taped before broadcast and stories originating live from a

location outside the studio. The station erases the video-

tape of the entire program after seven days, a practice

that destroys any record of the visual element of segments

of the show broadcast live from within the studio.

WXILA does not currently market videotape copies of

its news stories. Nevertheless, some people ask the sta-

tion for a chance to view a tape at the station or to pur-

chase a copy for personal use. WXIA has always honored

requests to view tapes and usually allows persons to buy

the tapes they want.' The revenue from tape sales is a

small portion of WXIA’s total profits.

1. The tapes cost one hundred dollars. WXIA will not sell

tapes to political candidates because the sale could appear

to be an endorsement or other show of support for the

candidate. Out of a similar concern over favoritism, the

station asks for a subpoena before selling a tape that will

be used in litigation.

Carol Duncan operates a business known as TV News

Clips, a conuercial enterprise belonging to a nationwide

association of news clipping organizations. TV News

Clips videotapes television news programs, identifies the

persons and organizations covered by the news reports,

and tries to sell them copies of the relevant portion of the

newscast.’ It does not seek the permission of WXIA or

any other broadcaster before selling the tapes, nor does it

place a notice of copyright on the tapes. <A label on each

tape does say, however, that it is ‘‘for personal use only

not for rebroadcast.” TV News Clips erases all tapes

after one month.

This case began when TV News Clips sold a copy of a

news feature to Floyd Junior College, the subject of a

story aired by WXIA on Mareh 11, 1981. WATA obtained

the tape purchased by Floyd Junior College, registered its

the infringement of its copyright and an injunction pre-

venting unauthorized copying and sales of its news pro-

gram. ‘The district court, 572 F.Supp. 1186, found that the

news feature was protected by the copyright laws and that

TV News Clips had not made ‘‘fair use” of the material.

It rejected the fair use defense without reaching the four

factors listed in 17 U.S.C.A. § 107 (1977) because TV News

Clips had not met its threshold burden of showing that its

activity served a purpose such as ‘‘criticism, comment,

2. TV News Clips belongs to the International Association of

Broadcast Monitors, an organization of 20 to 30 members.

Ms, Duncan is a past president of the association.

3. The customers pay $65 for an initial purchase and $25 for

subsequent purchases.

4. WXIA does not normally register the copyright for its

news programs.

news reporting, teaching . .. seholarship, or research,”

categories listed in the preamble to Section 107. Yet de-

spite finding that TV News Clips had clearly violated

WXIA’s copyright, the district court denied the request

for an injunction for three reasons. First the sales did not

seriously threaten WXIA’s creativity, so an injunction

would not significantly further the main objective of the

feared that an injunction would threaten First Amendment

values served by the increased public availability of the

news made possible by TV News Clips. Finally, the court

found that WXIA had abandoned its copyright on several

portions-of the newscasts; it declined to formulate a de-

cree that would distinguish between the abandoned and un-

abandoned portions.

II. ‘‘Fair Use” Defense to Statutory Liability

The news feature broadcast by WXIA undoubtedly

falls within the protection of the copyright laws. The edi-

torial judgment used to present effectively the events cov-

ered by the broadcast made it an ‘‘original’’ work of au-

thorship, Wainwright Securities, Inc. v. Wall Street Tran-

script Corp., 558 F.2d 91, 95 (2d Cir. 1977), cert. denied, 434

U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978), and the fea-

ture became ‘‘fixed”’ in a tangible medium when it was re-

corded at the time of transmission.’ Thus, it met the re-

quirements of 17 U.S.C.A. $102 (1977). The fact that the

infringing tape is the only exact copy of the transmission

5. The feature in this case was prerecorded, but the final

yong broadcast by WXIA included a live introduction

y the anchor person and graphics (stating the reporter's

name and location) superimposed over the pretaped ver-

sion.

still in existence does not nullify the copyright. The stat-

ute requires only that the original work be ‘‘fixed” for a

period of ‘‘more than transitory duration,” not for the

entire term of the copyright. 17 U.S.C.A. §§101, 102

(1977).

A copyright grants to the owner several exclusive

rights, including the right to reproduce the copyrighted

work and to distribute copies to the public. The courts

have, however, developed over the years the concept of

‘‘fair use” to describe some limited and useful forms of

copying and distribution that are tolerated as exceptions

to copyright protection.° The 1976 Copyright Act codified

this judicial doctrine at 17 U.S.C.A. § 107 (1977) without

significantly altering it. The statute divides into a ‘‘ pre-

amble” and a list of factors to consider during the search

for fair use:

[T]he fair use of a copyrighted work, including such

use by reproduction in copies... for purposes such as

criticism, comment, news reporting, teaching (includ-

ing multiple copies for classroom use), scholarship, or

research, is not an infringement of copyright. In de-

termining whether the use made of a work in any par-

ticular case is a fair use the factors to be considered

shall ineclude—

6. TV News Clips analogizes itself to a newspaper clipping

service or an archive, both of which qualify for an exemp-

tion apart from the fair use doctrine. The statute defines

an archive with some precision, and TV News Clips does

not match the description. 17 U.S.C.A. § 108 (1977). Like-

wise, it cannot be considered a newspaper clipping serv-

ive because it does not purchase the copy that it sells to

its clients. 17 U.S.C.A. § 109 (1977).

(1) the purpose and character of the use, including

whether such use is of a commercial nature or is for

nonprofit educational purposes;

(2) the nature of the 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.

17 U.S.C.A. § 107 (1977).

TV News Clips argued in the district court that its use

of the news broadcast was a fair use of the material be-

cause it served an important societal interest in full access

to the news. The court rejected the fair use defense with-

out considering the four statutory factors because TV

News Clips did not copy and distribute the material for

purposes such as the ones listed in the preamble. The dis-

trict court reasoned that since TV News Clips’ use was not

‘inherently productive or creative,” like each of the pre-

amble uses, analysis of the four factors was unnecessary.

We agree with TV News Clips that the district court

should have considered the four factors set out in the stat-

ute. The statute uses mandatory language to the effect

that in a fair use determination, the ‘‘factors to be con-

sidered shall include” (emphasis added) the four listed.’

7. Asa result, the House Committee on the Judiciary may

have overstated its intention to leave the doctrine of fair

use unchanged, because the statute clearly offers new

guidance for courts considering fair use defenses. It es-

tablishes a minimum number of inquiries that a court must

carry out, even if it leaves to the courts how to assign rela-

tive weights to each factor and how to supplement the

first four factors. See House Report No. 94-1476. U.S.

Code Cong. & Ad. News 1976, p. 5659.

=_- el

AZ7

The preamble merely illustrates the sorts of uses likely to

qualify as fair uses under the four listed factors.

The approach taken by the district court impedes the

ability of the fair use doctrine to function as a ‘‘rule of

reason.” Fair use allows a court to resolve tensions be-

tween the ends of copyright law, public enjoyment of ere-

ative works, and the means chosen under copyright law,

the conferral of economic benefits upon creators or origin-

al works. Where strict enforcement of the rights of a

conflict with the purpose of copyright law or with some

other important societal value, courts should be free to

fashion an appropriate fair use exemption. The district

court fashioned a per se rule that a use must be inherently

productive or creative before it can be a fair use, but a

doctrine meant to resolve unforeseen conflicts of values

should not turn on such a narrow inquiry. The Supreme

Court, in its recent fair use decision in Sony Corp. v. Uni-

versal City Studios, — U.S. —, 104 S.Ct. 774, 78 L.Ed.2d

574 (1984), did not conduct any preliminary tests before

analyzing the four statutory factors. It expressly refused

to look to productivity alone in determining whet consti-

tuted a fair use. Jd. at n. 40. Hence, the Supreme Court’s

recent application of the doctrine, as well as the tradi-

tional purpose of fair use, points out the error of the dis-

trict court’s reasoning.

Despite the district court’s erroneous interpretation

of the law, we need not remand this case for further fact-

finding. The district court resolved all the issues of fact

necessary for us to conclude as a matter of law that TV

News Clips’ activities do not qualify as a fair use of the

copyrighted work. See Triangle Publications, Inc. v.

Knight-Ridder Newspapers, Inc., 626 F.2d 1171, 1175 (5th

Cir.1980) (analyzing usage under the four statutory fac-

tors where district court had made findings under an er-

roneous view of controlling legal principies).*

The purpose and character of TV News Clips’ use of

WXIA’s work heavily influences our decision in this case.

TV News Clips copies and distributes the broadcast for un-

abashedly commercial reasons despite the fact that its cus-

tomers buy the tapes for personal use. The district court

characterized TV News Clips, as a ‘‘full-fledged commer-

cial operation.” 572 F.Supp. at 1189 n. i. TV News Clips

denies that its activities have a commercial purpose; in-

stead, it says that its purpose is ‘‘private news reporting,’’

ineant to provide the public with a record of news reports.

Of course, every coinmercial exchange of goods and serv-

ices involves both the giving of the good or service and the

taking of the purchase price. The fact that TV News

Clips focuses on the giving rather than the taking cannot

hide the fact that profit is its primary motive for making

the exchange.

This commercial nature of the use militates quite

strongly against a finding of fair use, for the Supreme

Court emphasized in Sony, supra, that a commercial pur-

pose makes copying onto a videotape cassette “‘presump-

tively unfair.” 104 S.Ct. at 792. Even before the Su-

8. Fair use is probably best characterized as a mixed question

of law and fact that can be decided by an appeliate court

if the trial court has found facts sufficient to evaluate each

of the four statutory factors. Cf. Meeropol v. Nizer, 560

F.2d 1061, 1070 (2d Cir. 1977) (trial court erroneously deter-

mined fair use as a matter of law before allowing case to

go to jury because there were no factual findings regard-

ing first or fourth statutory factors).

preme Court’s decision, many federal courts had found the

commercial nature of a use especially significant, if not

determinative. See MCA, Inc. v. Wilson, 677 F.2d 180 (2d

Cir.1981); Triangle Publications, Inc. v. Knight-Ridder

Newspapers, Inc., supra, at 1175-76; Association of Ameri-

can Medical Colleges v. Mikaelian, 571 F.Supp. 144, 153

(E.D.Pa.1983) (Commercial purpose is not determinative,

but ‘‘a court should not strain to apply the fair use de-

fense when it is being invoked by a profit-making defend-

ant’).

We also note that TV News Clips’ use is neither pro-

ductive nor creative in any way. It does not analyze the

broadcast or improve it at all. Indeed, WXIA expressed

concern over the technical inferiority of the tapes. TV

News Clips only copies and sells. As the uses listed in the

preamble to Section 107 indicate, fair uses are those that

contribute in some way to the public welfare. Until re-

cently a few courts had automatically considered unpro-

ductive or uncreative uses to be unfair. Universal City

Studios, Inc. v. Sony Corp. of America, 659 F.2d 963 (9th

Cir.1981), rev’d, — U.S. —, 104 S.Ct. 774, 78 L.Ed.2d 574

(1984); Rubin v. Boston Magazine Co., 645 F.2d 80 (1st

Cir.1981) ; Dow Jones & Co., Inc. v. Board of Trade, 546

F.Supp. 113 (S.D.N.Y.1982). Although the Supreme

Court has rejected ‘‘productive use” as an absolute pre-

requisite to a defense of fair use, it has recognized that

the distinction between productive and unproductive uses

could be ‘‘helpful in calibrating the balance.” Sony, 104

S.Ct. 795, n. 40. The unproductive nature of TV News

Clips’ use affects the balance in this case.

The fourth fair use factor, the effect on the potential

market for the work, is closely related to the first. By ex-

A10

amining the effect of a use, a reviewing court can measure

the success of the original purpose and single out those

purposes that most directly threaten the incentive for cre-

ativity which the copyright tries to protect. Some com-

mercial purposes, for example, might not threaten the in-

centives because the user profits from an activity that the

owner could not possibly take advantage of. See Triangle

Publications, Inc. v. Knight-Ridder Newspapers, Inc.,

supra. But in this case, TV News Clips uses the broad-

casts for a purpose that WXIA might use for its own bene-

fit. The fact that WXIA does not actively market copies of

the news prograins does not matter, for Section LOT looks

to the ‘‘potential market’’ in analyzing the effects of an

alleged infringement. Copyrights protect owners who in-

mediately market a work no more stringently than owners

who delay before entering the market. TV News Clips

sells a significant number of copies that WXIA could itself

sell if it so desired; therefore, TV News Clips competes

with WXIA in a potential market and thereby injures the

television station. This evidence is reinforced by a pre-

sumption established in Sony that a commercial use nat-

urally produces harmful effects. 104 S.Ct. at 793. The

actual harmful effect, along with the presumption, under-

iuines any fair use defense.

The third factor directs our attention to the amount

and substantiality of the portion used in relation to the

copyrighted work as a whole. The Floyd Junior College

story stands alone as a coherent narrative, and WXIA

saves it as a distinct unit for future reference apart froi

the rest of the March 11 broadcast. The Register of Copy-

rights issued a certificate of copyright for the Floyd Jun-

ior College seguient and for the entire broadcast. More-

All

over, the district court found that WXIA had properly

registered the story and the whole broadeast.? We agree

with the district court that the feature stands alone as a

copyrighted work in this case.'° Hence, TV News Clips

copied an entire work. And even if the story could not

stand independent of the entire newscast, we could not

ignore that tact that TV News Clips tapes virtually all of

the broadcast on a daily basis. By bringing a suit for in-

junctive relief as well as damages, WXIA is challenging

the entire practice of copying and selling news stories, not

just the sale of the Floyd Junior College story.'!! Because

TV News Clips uses virtually all of a copyrighted work,

the fair use defense drifts even further out of its reach.

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

Finally, the second factor calls on us to analyze the

nature of the copyrighted work. This is the only factor

9. TV News Clips contends that the district court erred in its

finding that WXIA had properly registered the Fioyd Junior

College story because WXIA had deposited, pursuant to

17 U.S.C.A. § 408(b) (1977), the copy made by News Clips.

This invalidated the registration, it argues, because the

copy was not fixed “under authority of the author.” It is

true that a work must be fixed under authority of the author

in order for the protections of copyright to take effect. 17

U.S.C.A. § 101 (1977). But the tape that ‘‘fixes’”’ a broad-

cast need not be the same tape that is deposited for reg-

istration.

10. This case differs from Triangle Publications, Inc. v. Knight-

Ridder Newspapers, inc., supra, where the court held that

the cover of a magazine was not a copyrighted work apart

from the whole magazine. There was no evidence in that

case that the cover had been registered apart from the

magazine or that they were stored or used separately.

11. In addition, we mention that a small portion of a work

may be especially significant. The single story involving

a particular subject is by far the most significant portion

of the newscast for that potential customer.

Al2

that arguably works in favor of TV News Clips. The im-

portance to society of the news could affect the definition

of a fair use for a number of reasons.'? But the courts

should also take care not to discourage authors from ad-

dressing important topics for fear of losing their copy-

right protections. The necessarily limited impact of this

second factor, along with the commercial and unproductive

purpose of the use, the injury to the potential market, and

the substantial amount of copying, leads us to conclude

that TV News Clips has not made fair use of the protected

work.

TV News Clips urges us to consider a fifth factor in

evaluating its claim of fair use. It points to WXIA’s

status as a governmental licensee, with a duty ‘‘to provide

publie access to newscasts,” and argues that the fair use

doctrine should be employed here to prevent WXIA from

using the copyright laws to restrict public access in viola-

tion of its duties as a government licensee. WXIA is cor-

12. The Supreme Court has mentioned that use of a news

program may give rise to a fair use defense more easily

than use of a full-length motion picture. Sony, supra, 104

S.Ct. at 795, n.40. The Court does not fully explain this

distinction, but the context suggests that the large second-

ary market for motion picture copies makes fair use less

appropriate in that context. As discussion of the fourth

factor revealed, significant commercial harm is _pres-

ent in this case. Another court found that the great public

interest in the contents of a book (the memoirs of Gerald

Ford) called for application of the fair use doctrine. Harper

& Row, Publishers, Inc. v. National Enterprises, 723 F.2d

195 (2d Cir.1983). But the Harper & Row court also relied

on other factors, particularly the fact that the alleged in-

fringer used material from the book that was for the most

part not copyrightable at all. Furthermore, the public in-

terest in the average news story is far less than the interest

in presidential memoirs.

cS Tt i he + cea MT

A13

rect in contending that its duties as a public trustee do not

go as far as TV News Clips claims. The cases cited by

the appellant, Richmond Newspapers, Inc. v. Virginia, 448

U.S. 555, 100 S.Ct. 2814, 65 L.Ed.2d 973 (1980); Columbia

Broadcasting System v. Democratic National Committee,

412 U.S. 94, 93 S.Ct. 2080, 36 L.Ed.2d 772 (1973); Red Lion

Broadcasting Co. v. FCC, 395 U.S. 367, 89 S.Ct. 1794, 23

L.Ed.2d 371 (1969); and Muir v. Alabama Educational

Television Commission, 656 F.2d 1012, 1017 (5th Cir.1981),

on rehearing, 688 F.2d 1033, cert. denied, 460 U.S. 1023, 103

S.Ct. 1274, 75 L.Ed.2d 495 (1983), indicate, if only by im-

plication, that broadcast licensees and the press generally

have a duty to provide public service. That duty finds at

least partial expression in the fair use doctrine. But it is

a long way from this proposition to TV News Clips’ posi-

tion that a licensee violates the public trust by enforcing its

press. WXIA has chosen to produce a news program and

allows anyone interested to view the program after its

broadeast. Certainly it has fulfilled its public obligations

by doing this much. Therefore, WXIA’s status as a public

trustee does not change our evaluation of the fair use

claim.

III. Constitutional Limits on Statutory Liability

The appellant claims that even if its fair use defense

fails, the First Amendment protects its activity. WXIA,

when it enforces the copyright, allegedly violates the First

Amendment in two different ways. First, it destroys and

suppresses evidence of possible use in a defamation action

against itself, and second, it denies the public its right of

access to broadcast material. An effort to discourge defa-

mation suits might be an abuse of the copyright laws and a

Al4

violation of the First Amendment, but that possibility is

entirely imaginary in this case. As for the right of public

access, we acknowledge that the public has a limited inter-

est in ‘‘making television broadcasting more available.”

Sony, supra, 104 8.Ct. at 795. This public interest might

be threatened if WXIA absolutely refused to allow the

public to view recordings or scripts of its broadcasts. But

as the Supreme Court made clear in Sony, the public inter-

est in broadcast availability does not protect every activity

that exposes more viewers to a broadeast. Furthermore,

TV News Clips only increases access in a limited way by

selling to a small group of customers, some of whom would

buy a tape from WXIA anyway. Because the public al-

ready has access to this material and TV News Clips does

not offer any access that WXIA could not provide, TV

News Clips’ activities fall well beyond whatever protec-

tions might be available to further this public access inter-

est. The First Amendment does not conflict with WXTA’s

efiort to enforee its copyright in this case.

Finally, TV News Clips argues that every copyright

ust further the ends of the Copyright Clause of the Con-

stitution. WXIA’s copyright, TV News Clips says, does

not further those ends and should not be enforced, because

WXIA systematically destroys its broadcast videotapes

and deprives the public of the benefits of its creative ef-

forts.. We agree that the Constitution allows Congress to

13. This alleged conflict between the ends of copyright law

and its application in a particular case should be analyzed

under the fair use rubric. We will, however, defer to TV

News Clips’ desire to treat this as a separate defense just

as we did with regard to its First Amendment arguments,

for our conclusion would be the same under either ap-

proach.

Al5

create copyright laws only if they benefit society as a

whole rather than authors alone. That is what the Con-

gress has done. But this does not mean that every copy-

right holder must offer benefits to society, for the copy-

right is an incentive rather than a command. And, a for-

tiort, a copyright holder need not provide the most com-

plete public access possible. WXIA provides complete ac-

cess for seven days and permanent access to everything

except the visual images broadcast live from within the

studio. The public benefits from this creative work: there-

fore, enforcing the copyright statute in this case does not

violate the Copyright Clause.

IV. Remedy

WXIA has proven that TV News Clips infringed its

had regularly copied the newscast and sold the tapes, and

would continue to do so.'S Unless it can obtain an injunc-

tion, WXIA can only enforce its copyrights against TV

News Clips by finding out which stories have been copied

and sold, registering those stories, and bringing many dif-

14. It has created a structure that encourages creativity and

public enjoyment of that creativity by giving authors the

exclusive rights to profit from their works in certain ways.

Since authors most often profit by —— their works

to the public, society usually benefits. Dallas Cowboys

Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d

1184 (5th Cir.1979). Where the First Amendment removes

obstacles to the free flow of ideas, copyright law adds

positive incentives to encourage the flow.

15. Indeed, the court considered future sales by TV News

Clips to be a virtual certainty and a “modest social bene-

fit.” 572 F.Supp. at 1196.

Al6

ferent infringement actions against TV News Clips. Each

infringement action would yield a rather small damage re-

eovery.'® This is a classic case, then, of a past infringe-

ment and a substantial likelihood of future infringements

which would normally entitle the copyright holder to a per-

manent injunction against the infringer pursuant to 17

U.S.C.A. § 502(a) (1977). See Milene Music Inc. v. Gotau-

co, 001 F.Supp. 1288 (D.R.1.1982) ; 3 Nimmer on Copyright

§ 13.05[B] (1983). The question is whether the district

court abused its discretion in refusing to issue the injanc-

tion.'!’ Because none of the three grounds relied upon by

the court for denying injunctive relief are legally suffi-

16. The award in this case was $35.

17. TV News Clips insists that WXIA is not legally entitled to

an injunction, because it seeks an injunction against the

infringement of works that have not been created (future

newscasts) rather than an injunction applicable only to

the March 11 program. The statute itself does not impose

such a requirement, for it empowers district courts to issue

injunctions “on such terms as it may deem reasonable to

prevent or restrain infringement of a copyright.” 17 U.S.

C.A. § 502(a) (1977). The appellant bases its argument on

the requirement that an author register a work before in-

stituting an infringement action. 17 U.S.C.A. § 411 (1977).

An injunction against the use of unregistered works would

bypass this requirement.

The district court in this case had the power to issue

such an injunction because the statute provides for in-

junctions to prevent infringement of “a copyright’ (em-

phasis added), not necessarily the registered copyright

that gave rise to the infringement action. The opposite

result would be especially unjust in a case such as this

one in which the registered work and the future works

are so Closely related, part of a series of original works

created with predictabie regularity and similar format and

function. To refuse injunctive relief under these conditions

would render meaningless the fact that registration is “not

a condition of copyright protection.” 17 U.S.C.A. § 408(a)

(1977).

a A I i tA stl Enda He tebhactcaaaen. Aedatlarlepiiiaias cea DS

—" am

Al7

cient to support the decision, we hold that the court did

abuse its discretion.

The court began its discussion by notirg that an in-

junction would not greatly further the ends of the copy-

right laws, because the post-broadcast market is relatively

unimportant to WXIA as a creative incentive. We agree

but find that fact standing alone to be irrelevant. The dis-

incentive to creativity caused by the infringement would he

just as small if WXIA were to wait and bring infringe-

ment actions in the future. The weakness of WXTA’s in-

terest in stopping this infringement has no bearing on

the choice between present injunctive relief and future

damage relief unless some independent consideration

weighs against the use of an injunction in this case.

The ‘‘modest”’ furtherance of First Amendment rights

accomplished by TV News Clips, the second ground relied

upon by the court, does not provide any such independent

reason to disfavor an injunction. It is undoubtedly true

that TV News Clips (like any copyright infringer) in-

creases public access to the copyrighted work. But thie

First Amendment issue of public access was duly consid-

ered when resolving the liability issue. If the First Amend-

ment would not prevent WXIA from recovering for indi-

vidual infringements in the future, it should not bar an in-

junction in the present. The scope of liability affects First

Amendment interests, but the choice of the form of relief

in this case does not.

Finally, the district court found injunctive relief inap

propriate because WXIA regularly abandons the copyright

on a portion of its program when it erases the videotape

of the entire broadcast. Certainly the erasure shows that

Al18

WXIA did not desire to distribute post-broadcast copies of

parts of the program. Failure to distribute a work does

not mean, however, that an owner intends to allow others

to use the work, and it is questionable whether WXIA had

such an intent. Destroying the only known copy of a work

would seem to be the best way to assure that it will not be

used by another. Still, we do not say that destruction of

the only copy of a work can never establish intent to aban-

don. We defer to the trial court’s factual finding that

WAJA intended to abandon portions of its program.

Nevertheless, WXI1A erased only a small portion of its

broadeast. The entire audiotape still survives, along with

many portions of the videotape. The district court, while

recognizing this fact, declined to issue an injunction

against the use of segments of the news programs not

erased by WXIA. It said that ‘‘the precise wording of an

appropriately limited decree is unapparent.” The fact that

a court must make some difficult judgments should not pre-

vent it from efiectuating established legal rights. More-

over, the clear-cut test used by the district court to find an

intent to abandon the copyright (destruction of the only

copy) should make the formulation of the decree more

manageable.

Thus, the tria! court relied on irrelevant and insuffi-

cient grounds in its refusal to grant injunctive relief. It

correctly found that TV News Clips had infringed tbe

to grant injunctive relief. Accordingly, the judgment is

AFFIRMED IN PART, REVERSED IN PART, and RE-

MANDED for further proceedings consistent with this

opinion.

ae a ad

A19

APPENDIX B

PACIFIC AND SOUTHERN COMPANY,

INC., d/b/a WXIA-TV

Vv.

Carol DUNCAN, d/b/a TV News Clips.

Civ. No. C81-1106.

United States District Court,

N.D. Georgia,

Atlanta Division.

Oct. 13, 1983.

ORDER

ORINDA D. EVANS, Chief Judge.

This copyright infringement action is before the Court

for findings of fact and conclusions of law following a

bench trial.

This case presents the question whether off the air

video taping of live television news broadcasts by a TV

news monitoring service, followed by the marketing and

sale of news tapes to interested members of the public, in-

fringes the broadcaster’s copyright under federal law. 17

U.S.C. $101 et seq. The Defendant, a television news

“clipping service,” argues that its activities constitute a

permissible fair use under the copyright statute, 17 U.S.C.

§ 107, or alternatively, that the First Amendment to the

United States Constitution prohibits interference with its

activities notwithstanding an otherwise valid copyright.

After due consideration of the evidence and argu-

ments of counsel, the Court hereby finds and concludes

as follows:

A20

I. FINDINGS OF FACT

Plaintiff WXIA-T'V is a television station in Atlanta,

Georgia. It is duly licensed by the Federal Communica-

tions Commission to operate as Channel 11. It broadcasts

a 90-minute news program every evening at 5:30 p.m. A

notice of ecpyrigt appears at the end of each newscast.

TV News Clips (“News Clips”) is the name under

which Ms. Carol Dunean conducts a for-profit television

news monitoring and clipping service.' News Clips video-

tapes Channel 11’s news programs and the news programs

of other stations. It contacts each person or company who

is the subject of a newscast segment to see if they would

like to purchase a copy. Customers pay $65 for an initial

news clip purchase and $25 for subsequent purchases. The

videotaping and sales of copies occur without WXIA’s per-

mission. Copies contain no notice of copyright, but the

tape cassettes are labelled “For personal use only not for

rebroadeast.” News Clips informs purchasers that it is

not affiliated with WXIA.

News Clips erases its tapes one month after the per-

tinent broadcast.

1. The business was originally a one-person operation run

out of Ms. Duncan’s home; however, it has flourished and

is now a full-fledged commercial operation.

News Clips is a member of the International Associa-

tion of Broadcast Monitors, an organization with from 20

to 30 members who provide news “clipping” and related

services. News Clips’ owner, Carolyn Duncan, is a past

president of the association. Duncan provided evidence

that another monitoring service, Videomonitoring Services

of America, Inc., includes among its clients the Brooklyn

Union Gas Co., Fairfield University, the Institute for Be-

havorial Research, Legal Services Corp., National Associa-

tion of Manufacturers, the New York Stock Exchange and

the United States Chamber of Commerce.

A21

The instant litigation began with WXIA’s discovery

that News Clips had sold a tape of a feature from its

March 11, 1981 evening newscast to Floyd Junior College

in Rome, Georgia. The feature was a one minute, 45 sec-

ong segment concerning a newly installed ‘‘fitness trail”

at the junior college. The segment showed individuals

jogging on the trail (at least one of whom was a WXIA

employee) and depicted various athletic equipment along

the way. An on-the-scene reporter made salutary com-

ments about the trail and the health benefits to be de-

rived from using it.

After effecting the copyright registration which is a

prerequisite to bringing a copyright infringement action,

WXIA instituted the within suit. WXIA seeks damages

for the infringement of its copyright on the fitness trail

feature. In addition, it seeks an injunction against News

Clips to stop future unauthorized copying or sales of

copies of its news programs, plus recovery of the costs

of this action, including attorneys’ fees.

As one would expect, WXIA’s news programs are

made up of a variety of elements. Some are pretaped;

some are live. These elements includ: inter alia, on-the-

spot coverage of primary news events, e.g., a speech hy a

publie official; ‘‘on-the-scene’’ comments by news report-

ers; news desk reports on the events of the day; feature

stories such as the fitness trail sequence; weather reports;

editorials; and miscellaneous commentary by the anchor

persons at the news desk.

WXIA has made no effort to develop a market for

sales of copies of its news casts or portions thereof. It

receives infrequent requests for copies; however, when

such requests are received they are accommodated as a

A22

public service. The charge is $100 a copy. However, from

time to time requests are made under circumstances which

cause the station to impose additional requirements and/

or refuse the requests. The evidence showed at least one

occasion in which the station required a subpoena to be

obtained where the news segment was going to be used in

litigation. Also, the station will not provide newscast cop-

ies to political candidates. This is because of a concern

that the copy might be used inappropriately to suggest

involvement of the station in a campaign.

No one from Floyd Junior College appeared at trial

to testify as to its motive in purchasing the fitness trail

sequence. However, testimony concerning the perceived

reason for purchases of the film clips generally was given

at trial by Ms. Duncan, News Clips’ owner. She believes

the majority of her customers purchase clips to study and

thereby improve the image they are projecting to the pub-

lic. She pointed out that she has a number of repeat cus-

tomers who regularly appear in the news. These include

a large public utility, high-level state and federal officials,

a teachers’ lobbying group, and a corporation which reg-

ularly contracts with the Department of Defense. Similar

testimony was given by a professional associate of Ms.

Dunean’s who conducts a news taping business in Canada.

The Canadian company has contracts with the Canadian

government, including specifically, a contract with Can-

ada’s Nuclear Energy Commission.

News Clips also sells clips to lawyers involved in liti-

gation to which a news story may be relevant. Ms. Duncan

conceded that a certain percentage of her customiers—she

thought between five and ten percent—are individuals

who simply wish to purchase a story as a souvenir.

A23

WXIA, on the other hand, asserts that the evidence

does not establish with sufficient certainty why News

Clips’ clients purchase the clips or what they are doing

with them. The Court thinks it reasonable to infer—and

does infer—that some of News Clips’ clients—for example,

the repeat customers specifically mentioned—do purchase

the clips in order to analyze and improve self image. How-

ever, the Court rejects as speculative the estimates of

what percentage of Ms. Duncan’s clients purchase news

clips for the purpose of self study.

Il. DISCUSSION

A. Preliminary Issues

Before turning to the substantive issues presented,

there are unresolved preliminary issues concerning: (1)

whether Plaintiff’s March 11, 1981 newseast was “fixed”

so as to be subject to copyright and (2) whether Plaintiff

properly registered its claim of copyright so as to satisfy

the statutory prerequisite for bringing suit. In order to

rule on these issues, the Court must make certain further

findines of fact. They are:

The fitness trail feature was pretaped.? During the

March 11 broadcast, there was a live introduetion of the

feature by the anchor person; also, superimposed graphics

were added stating the on-the-scene reporter’s name and

the location. While the program was being aired, a video-

tape of the finished product was made from a television

set in the studio. As is its custom, WXIA kept that video-

tape for a period of one week, after which it was destroyed.

2. This tape has both visual and audio aspects.

A24

However, also in accordance with its customary practice,

WXIA will retain the pre-taped fitness trail feature for

five to seven years. WXIA retains written scripts of its

live broadeasts for a period of one year, and audio tapes

of each broadcast for an indefinite period. Thus, WXIA

still has a script of the anchor introduction to the fitness

trail sequence, the pretaped fitness trail feature, and the

audiotape of the entire March 11, 1981 program.

On May 13, 1981, WXIA deposited with the Register

of Copyrights an audio tape and transcript of the entire

March 11, 1981 broadcast, as well as the pretaped fitness

trail feature. On July 24, 1981, WXIA’s counsel further

deposited a description of the entire March 11 news pro-

gram. WXIA received a certificate of copyright for the

fitness trail segment on May 18, 1981, and a certificate

for the entire broadcast on November 3, 1981.

It is a fundamental requirement for copyright protec-

tion that a work be “fixed in any tangible medium of ex-

pression.” 17 U.S.C. § 102.

A work is “fixed” in a tangible medium of expression

when its embodiment in a copy or phonorecord, by or

under the authority of the author, is sufficiently per-

manent or stable to permit it to be perceived, repro-

duced, or otherwise communicated for a period of

more than transistory duration. A work consisting

of sounds, images, or both, that are being transmitted,

is “fixed” for purposes of this title if a fixation of the

work is being made simultaneously with its trans-

mission.

17 U.S.C. § 101.

A25

The fitness trail sequence was fixed when it was pre-

taped. The March 11 program as a whole was fixed at

the time it was aired and the studio videotape was made.

Except in certain cases not relevant here, no copy-

right infringement action may be brought until the claim

of copyright is registered with the Register of Copyrights

in Washington, D.C. 17 U.S.C. § 411(a). Proper registra-

tion is a necessary condition precedent to filing suits A

livering to the Copyright Office an application, the speci-

fied fee, and an appropriate deposit of the work. 17 U.S.C.

§ 408(a). The deposit requirements are set forth generally

in 17 U.S.C. § 408(b) and vary according to the nature of

the work. As is discussed more fully below, the fitness

trail feature is an “unpublished work”; hence, 17 U.S.C.

§ 408(b)(1) required that the deposit consist of “one com-

plete copy or phonorecord.” Additionally, special regula-

tions applicable to a “transmission program,” e.g., a tele-

vision program, also permitted registration of the March

11 broadcast as a whole by depositing an audiotape of the

entire broadcast and a description of the program. 17

U.S.C. § 408(¢); 37 C.F.R. § 202.21(g). The Court finds

that WXIA’s deposit of the pretaped version of the fit-

ness trail feature on May 13, 1981 constituted a proper

deposit under the provisions of 17 U.S.C. § 408(b)(1) and

established copyright registration for the fitness trail fea-

ture. Additionally, WXIA’s deposit of the audiotape and

3. A certificate of registration does not determine the validity

of the claim, but merely constitutes prima facie evidence.

Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908

(2d Cir.1980); Moore v. Lighthouse Publishing Co., Inc.,

429 F.Supp. 1304, 1308 (S.D.Ga.1977).

A26

description of the entire March 11, 1981 broadcast sufficed

to satisfy the alternative requirement for a deposit of a

transmission program. Thus, WXLA’s claim of copyright

in the news cast as a whole was properly registered.

B. Copyright and Television News: The Scope of

Statutory Protection

It is axiomatic that copyright protection does not ex-

tend to news “events” or the facts or ideas which are the

subject of news reports. Miller v. Universal City Studios,

Inc., 650 F.2d 1365, 1368 (5th Cir.1981); Wainwright Se-

curities, Inc. v. Wall Street Transcript Corp., 558 F.2d

91, 95 (2d Cir.1977), cert. denied, 484 U.S. 1014, 98 S.Ct.

730, 54 L.Ed.2d 759 (1978). But it is equally well-settled

that copyright protection does extend to the reports them-

selves, as distinguished from the substance of the infor-

mation contained in the reports. Watnwright, 558 F.2d

at 95; International News Service v. Associated Press,

248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918); see Chi-

cago Record-Herald Co. v. Tribune Assn., 275 F. 797 (7th

right protects the manner of expression of news reports,

“the particular form of collocation of words in which the

writer has communicated it.” International News Service,

248 U.S. at 234, 39 S.Ct. at 70. Such protection extends

to electronic news reports as well as written reports. See

17 U.S.C. § 102(a)(5), (6), and (7): see also Iowa State

University Research Foundations, Inc. v. American Broad-

casting Cos., 621 F.2d 57, 61 (2d Cir.1980).

In the instant case, Ms. Duncan’s copying of the fit-

ness trail feature was not a mere attempt to relate the

substance of the information contained in the feature.

A27

Rather, it was a total reproduction embodying both the

facts which were the subject of the feature, and the par-

ticular way in which those facts were presented. There-

fore, WXIA is entitled to a judgment in its favor unless

one of Ms. Duncan’s defenses is meritorious. The Court

now turns to an examination of each of these defenses.

C. First Amendment

Defendant argues that an unlimited copyright in tele-

vision news violates the First Amendment.* She points

to the public’s interest in the fullest possible dissemina-

tion of news, and the unique ephemeral nature of tele-

vision news broadcasts. She further asserts that a tele-

vision station might elect either not to preserve its broad-

cast material in permanent form, or not to make broad-

cast copies readily available to members of the public.

In such a ease, she argues, prohibiting copying might be

tantamount to sanctioning monopolization of information.

Courts and commentators have for years recognized

a possible tension between copyright and first amendment

freedom of speech. See Triangle Publications, Inc. v.

Knight-Ridder Newspapers, 626 F.2d 1711 & n. 1 (5th Cir.

1980) (and cases cited therein); Nimmer, Does Copyright

Abridge the First Amendment Guarantees of Free Speech

and Press? 17 U.C.L.A.Rev. 1180 (1970); Patterson, Pri-

vate Copyright and Public Communication: Free Speech

Endangered, 28 Vand.L.Rev. 1161 (1975). Generally, how-

ever, “[elonflicts between interests protected by the first

amendment and the copyright laws thus far have been

4. She suggests the copyright should be enforceable only

against infringement by a competing broadcaster.

A28

resolved by application of the fair use doctrine.” Wain-

wright Securities, 558 F.2d at 95. Other courts have found

that the copyright dichotomy between ideas and facts,

which are not protected, and the form of expression, which

is, is sufficient in nearly all cases to accommodate the rele-

vant constitutional values. See, e.g., Roy Export Co. Es-

tabltishment of Vaduz, Ltechtenstein v. Columbia Broad-

casting System, Inc., 672 F.2d 1095, 1099-1100 (2d Cir.),

cert. dented, — U.S. —, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982).

In the words of Professor Nimmer:

On the whole .. . it appears that the idea-expression

line represents an acceptable definitional balance as

between copyright and free speech interests. In some

degree it encroaches upon freedom of speech in that

it abridges the right to reproduce the “expression”

of others, but this is justified by the greater public

good in the copyright encouragement of creative

works. In some degree it encroaches upon the au-

thor’s right to control his works in that it renders his

“ideas” per se unprotectible, but this is justified by

the greater public need for free access to ideas as a

part of the democratic dialogue.

1 Nimmer on Copyright §1.10[B] (1983), at 1-76-1-77

(footnotes omitted).

No circuit has recognized a First Amendment excep-

tion to copyright apart from the doctrine of fair use. See

Roy Export, 672 F.2d at 1099-1100; Iowa State University

Research Foundation, 621 F.2d at 61 n. 6; Triangle Pub-

lications, 626 F.2d at 1172; Dallas Cowboys Cheerleaders,

Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184, 1188 (5th

Cir.1979); Walt Disney Productions v. Atr Pirates, 581

A29

F.2d 751, 758-59 (9th Cir.1978), cert. denied, 439 U.S. 1132,

99 S.Ct. 1054, 59 L.Ed.2d 94 (1979); Wainwright Secur-

ities, 558 F.2d at 95. Some courts in dicta have, however,

noted Professor Nimmer’s view that for some works the

“idea” and the expression of that idea may be so insep-

arable, and the work may be so infused with public inter-

est, that both should be in the public domain and exempt

from copyright. Roy Export, 672 F.2d at 1099-1100; Iowa

State University Research Foundation, 621 F.2d at 61 n. 6;

Wainwright Securities, 558 F.2d at 95. Professor Nimmer

gives as examples Vietnam War photographs of the My

Lai massacre or the Zapruder “home movie” of the Ken

nedy assassination.» 1 Nimmer on Copyright § 1.10[C]

(1983), at 1-82-1-83. He suggests that the First Amend-

ment protects a category of works that contribute to the

“democratic dialogue,” a category which he labels “news

photographs.” Jd. at 1-84.

Photographs would refer to all products of the photo-

graphic and analogous processes, including motion pic-

ture film and videotape, but would exclude other

graphic works, such as paintings, sculpture, ete... .

There is a definitional problem as to when a photo-

graph is a news photograph. . . . Perhas a pragmatic

definition would prove useful: e.g., a photograph is

a news photograph only if the event depicted in the

photograph, as distinguish from the fact that the

5. In Time, Inc. v. Bernard Geis Associates, 293 F.Supp. 130

(S.D.N.Y.1968), the court found the unauthorized use of

the Zapruder film to be fair use. Professor Nimmer be-

lieves the case more soundly rests on a First Amendment

1-86 - 1-87. This Court agrees.

A30

photograph was made, is the subject of news stories

appearing in newspapers throughout the country.

Id.

While the Court finds Defendant’s argument theoret-

ically provocative, it has little applicability to the ques-

tion of whether copying the fitness trail feature infringed

Piaintiff’s copyrights. The fitness trail feature is a “soft

news” piece which, though informational, hardly fits in a

eategory with film of the My Lai massacre. Moreover,

Plaintiff has preserved the original film; a copy is avail-

able to anyone who wants one. Indeed, the fitness trail it-

self is available for viewing. Thus, the First Amendment

offers no defense to Ms. Duncan.

D. Fair Use

Defendant argues that her copying of the fitness trail

feature constituted a permissible “fair use” under 17

U.S.C. § 107. For the reasons hereinafter set forth, the

Court rejects her argument.

Fair use has been defined in a much-quoted passage

as “a privilege in others than the owner of a copyright to

use the copyrighted material in a reasonable manner with-

out his consent, notwithstanding the monopoly granted to

the owner [by the copyright].” Rosemont Enterprises,

Inc. v. Random House, Inc., 366 F.2d 303, 306 (2d Cir.

1966), cert. denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d

546 (1967), quoting Ball, The Law of Copyright and Lit-

erary Property 260 (1944). The doctrine has heen de-

scribed as ‘‘the most troublesome in the whole law of copy-

right.” Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662

(2d Cir.1939). It was codified for the first time in the

A3l

gress did not seek to preclude further judicial develop-

ment depending on the facts of each case. H.R.Rep. No.

94-1476, 94th Cong., 2d Sess. 66, reprinted in 1976 USS.

Code Cong. & Ad.News 5659, 5680.

Section 107 provides:

Notwithstanding the provisions of section 106, the

fair use of a copyrighted work, including such use

by reproduction in copies or phonorecords or by any

other means specified by that section, for purposes

such as criticism, comment, news reporting, teaching

(ineluding multiple copies for classroom use), scholar-

ship, or research, is not an infringement of copyright.

In determining whether the use made of a work in

any particular case is a fair use the factors to be

considered shall include—

(1) the purpose and character of the use, ineclud-

ing whether such use is of a commercial nature or is

for nonprofit educational purposes;

(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 mar-

ket for or value of the copyrighted work.

Defendant argues that her copying and sale of the

fitness trail feature is a fair use taking into account the

four factors listed under § 107 in subsections (1)-(4). She

concedes that her activity is commercial, but she asserts

that factors (1) and (2) under § 107 favor fair use because

A32

the nature of the copyrighted work is news; also, the pub-

lie interest favors the wider dissemination of news which

she argues is facilitated by her distribution of news seg-

ments. Under factor (3), she argues that because the

fitness trail feature is only a small portion of the March

11 broadcast, a finding of fair use is indicated. Finally,

under factor (4) she contends that her sale of news clips

in no way diminishes WXIA’s news viewership; indeed,

she points out correctly that the market for news clip

segments has been created almost solely through her

efforts.

In arguing that these four factors favor fair use,

Defendant cites a binding decision of the Court of Appeals

for the Fifth Circuit, Triangle Publications, Inc. v. Knight-

Ridder Newspapers, Inc., 626 F.2d 1171 (Sth Cir.1980).°

That case holds that commercial use does not preclude a

finding of fair use; also, it holds that the fourth fair use

factor, effect of the use upon the potential market for

the copyrighted work, is by far the most important factor.

Ms. Dunean’s fair use defense fails because she over-

looks important limiting language in § 107; also, she mis-

identifies the use which is relevant to ‘‘fair use” analysis

in this case.

17 U.S.C. §107 does not automatically require any

use which is sought to be labeled “fair” to be analyzed

under the guidelines set forth in subparagraph (1) through

(4). Rather, it is only where the use is clearly for “pur-

6. Cases decided by the Fifth Circuit Court of Appeals prior

to October 1, 1981 are the law of the Eleventh Circuit.

Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir.

1981).

A33

poses such as criticism, comment, news reporting, teaching

‘ineluding multiple copies for classroom use), scho!arship,

or research,” 17 U.S.C. § 107 (initial unnumbered para-

graph), that the Court’s interest in subfactors (1) through

(4) is triggered. To interpret the statute otherwise would

invite facile obliteration of copyright protection through

the back door route of the fair use defense.

In determining whether or not Ms. Duncan’s use of

the news clips falls within a category similar to those set

forth in § 107, the Court must first determine exactly what

“use” is relevant here. Insofar as Ms. Duncan is con-

cerned, the relevant “use” is simply her copying of the

newscasts, and her subsequent sale of them. Whatever

use her clients may make of these film clips is irrelevant.’

Ms. Duncan is not being sued as a contributory infringer,

cf. Universal City Studios, Inc. v. Sony Corp. of America,

659 F.2d 963 (9th Cir. 1981), cert. granted, 457 U.S. 1116,

102 S.Ct. 2926, 73 L.Ed.2d 1328 (1982), but rather as the

primary infringer. Furthermore, Ms. Duncan is a stranger

to any use which might be made of the news clips by her

clients. In that respect, she is different from a classroom

teacher who might distribute copies of copyrighted ma-

terial for classroom use. See 17 U.S.C. § 107.

Having made this initial determination, it becomes

readily apparent that Ms. Duncan’s use is not for a pur-

pose such as “criticism, comment, news reporting, teach-

7. The fair use defense would be considered from a different

vantage point were the defendant here a person who

copied WXIA’s newscasts for a personal use. As a matter

of fact, however, this possibility is moot due to WXIA’s

stated indifference to such copying for private personal

use.

A34

ing, scholarship, or research.” That being the case, analy-

sis of the four factors listed under § 107 is unnecessary.

Triangle Publications is factually quite different from

the instant case. For that reason, its holding does not

assist Ms. Duncan. In Triangle, Plaintiff’s magazine was

pictured in a newspaper advertisement prepared by De-

fendant, a competitor, which published a similar maga-

zine. The ad made a direct comparison between the two

magazines, picturing their covers side-by-side. The text

of the ad gave reasons why Plaintiff’s publication was

second best. Plaintiff contended that the display of its

magazine cover infringed its copyright; Defendant claimed

fair use. The Court of Appeals for the Fifth Circuit dis-

cussed each of the four fair use factors under § 107, and

ruled for Defendant. As mentioned above, in so doing

it rejected Plaintiff’s claim that the commercial character

of the use was conclusive against a finding of fair use;

also, the Court held that the fourth fair use factor was

the most important, noting that use of the copyrighted

material in the advertisement did not diminish the value

of plaintiff’s copyright. Triangle Publica: ons, 626 F.2d

at 1177-78.

What is important for purposes of the instant case,

however, is the fact that Defendant’s “use” in Triangle

fell within the language of § 107 limiting its applicability

to “criticism, comment, news reporting, teaching (includ-

ing multiple copies for classroom use), scholarship, or re-

search.” 17 U.S.C. § 107. Specifically, the advertisement

was a classic form of “comment’’ on the copyrighted work

In this respect, Defendant’s comparative advertisement

was conceptually similar to satire or parody, see Metro-

Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Pro-

VP ttn Wo oe pe.

;

A35

ductions, Inc., 479 F.Supp. 351 (N.D.Ga.1979), which are

recognized forms of fair use. The justification for these

uses lies not in society’s interest in wider distribution of

the copyrighted material, but rather in its interest in the

infringer’s creative use of the copyrighted material. See

L. Seltzer, Exemptions, and Fair Use in Copyright 23-27

(1977). Comparative advertisement, like satire, in a pro-

ductive and creative use of the copyrighted material. Ms.

Duncan’s copying and distribution, on the other hand, was

not an inherently productive or creative use of the type

referred to in § 107.

Therefore, her fair use defense fails.®

8. Ms. Duncan clearly does not qualify for, and thus has not

sought the protection of the television news archives ex-

emption set forth in the 1976 Copyright Act. See 17 U.S.C.

§ 108(f). Section 108(f) provides an exemption from copy-

right infringement for the “reproduction and distribution

by lending of a limited number of copies and excerpts

by a library or archives of an audiovisual news program.

... This exemption applies where:

(1) the reproduction or distribution is made without

any purpose of direct or indirect commercial advan-

tage;

(2) the collections of the library or archives are (i)

open to the public, or (ii) available not only to re-

searchers affiliated with the library or archives or with

the institution of which it is a part, but also to other

persons doing research in a specialized field; and

(3) the reproduction or distribution of the work in-

cludes a notice of copyright.

17 U.S.C. § 108(a).

The statute does not define “audiovisual news pro-

gram,” but the legislative history states that it is intended

to apply to the daily newscasts of local, regional and nat-

(Continued on next page)

A36

EK. Remedy

As previously stated, Plaintiff seeks injunctive relief,

statutory damages, and an award of costs including attor-

neys’ fees.

As a general rule, a plaintiff is entitled to a perma-

nent injunction when copyright liability has been estab-

lished and there is a threat of continuing infringement.

Universal City Studios v. Sony, 659 F.2d at 976; 3 Nimmer

the Court may omit injunctive relief where it would dis-

serve the public interest. See Id. § 13.05[E][4][e], at 13-

91-13-92.

With respect to any future sales of the fitness trail

feature, injunctive relief is neither necessary nor appro-

priate. Defendant no longer has a copy of the feature;

the circumstances do not suggest that she presently has

access to Plaintiff’s original. The real question is whether

or not the Court should grant broad injunctive relief pro-

hibiting Defendant from future copying of any of WXIA’s

newscasts. After consideration of the evidence presented,

the Court declines to enter such an injunction.

(Continued from previous page)

ional television networks, interviews about current events,

and on-the-spot coverage of news events. H.Conf.Rep. No.

1733, 94th Cong., 2d Sess. 73, reprinted in 1976 U.S. Code

Cong. & Ad.News 5810, 5814. It does not apply to docu-

mentary or magazine-format public affairs programs. H.R.

Rep. No. 1476, 94th Cong., 2d Sess. 77, reprinted in, 1976

U.S. Code Cong. & Ad.News 5659, 5690.

Section 108 itself states that nothing in the television

news exemption “in any way affects the right of fair use

as provided by section 107.” 17 U.S.C. § 108(f)(4).

A37

The aim of copyright is to foster creativity. To this

end, the statute gives the copyright holder the exclusive

right to reproduce or distribute the work. See 17 U.S.C.

§ 106. In the instant case, however, Plaintiff destroys its

broadeast videotapes a week after the broadeast. There-

after, it retains only partial visual elements of the pro-

gram. Since WXIA ean only reproduce its news programs

for a period of one week, but has never done so, it must

be concluded that the post-broadeast market is relatively

unimportant to it as a creative incentive. Hence, copy-

right objectives would be insubstantially served by broadly

enjoining Defendant’s sales of copies of Plaintiff’s broad-

casts.

At the same time, the Court must consider whether

broad injunctive relief would infringe upon First Amend-

men rights. While the various elements of Plaintiff’s

broadcasts vary in informational importance, see p. 3,

supra, all material WXIA carries on its broadcasts is pre-

sumptively newsworthy and therefore infused with a high

degree of public interest. Further, the Supreme Court

has recognized that the broadcast media present “an un-

usual order of First Amendment values” due to the in-

herent difficulty in allocating a scarce number of broad-

east frequencies among applicants. Columbia Broadcast-

ing System v. Democratic National Committee, 412 U.S. -

94, 101, 93, S.Ct. 2080, 2086, 36 L.Ed.2d 772 (1973). Under

the Communications Act of 1934, 47 U.S.C. § 151 et seq.,

broadeasters are licensed by the federal government as

public trustees and as such are required to serve the public

interest. Under these circumstances, caution in fashioning

a remedy is indicated and broad injunctive relief will not

A38

be granted unless Plaintiff’s entitlement to and need for

such relief is clear and convincing.

The Court concludes that Ms. Duncan’s sale of news-

east copies does not substantially further public dissemi-

nation or perpetuation of news accounts. Since she de-

troys her tapes within a month of the broadcast, the only

archival purpose served by her activity is that attendant

to getting news clips into private hands (actually, mostly

into corporate file folders). However, the fact remains

that under Plaintiff’s present procedure, film of news

events of possibly great import could be destroyed a week

after the broadcast, with no useful copy being available

thereafter. In such a case, Defendant’s systematic copy-.

ing and sales could represent a modest social benefit.

The Court concludes, moreover, that broad injunctive

relief would improperly prohibit distribution of parts of

newscasts where Plaintiff no longer has any copyright

protection. Where a copyright holder evidences an inten-

tion to abandon his copyright by an overt act of abandon-

ment, protection ceases. 3 Nimmer on Copyright § 13.06

(1983). WXIA’s destruction of its broadcast videotapes

is certainly such an overt act. And while it may be that

large parts of the broadcast can still be pieced together

from taped, audio and script components, and some pre-

taped portions may be entitled to independent copyright

protection, the precise wording of an appropriately limited

decree is unapparent.

In summary, given the referenced First Amendment

considerations, plus Plaintiff’s lack of a clearly demon-

strated entitlement to or need for broad injunctive relief,

the request for such relief will be denied.

Dein Om. st SRN Rn

A39

Plaintiff seeks statutory damages in lieu of actual

damages. Section 504 of the Copyright Act provides that

a plaintiff may elect between “actual damages and any

additional profits of the infringer,” 17 U.S.C. § 504(a)(1),

or statutory damages “in a sum-of not less than $250 or

more than $10,000,” 17 U.S.C. § 504(c)(1), but as much as

$50,000 for “willful infringement.” 17 U.S.C. 4 504(¢) (2).

Plaintiff seeks the fuli $50,000 award, as well as attor-

neys’ fees and costs as provided by 17 U.S.C. § 505.

The remedies of statutory damages and attorneys’ fees

are unavailable to Plaintiff in this action. 17 U.S.C. § 412

provides in pertinent part that

In any action under this title, other than an action

instituted under section 411(b), no award of statutory

damages or of attorney’s fees, as provided by sections

504 and 505, shall me made for—

(1) any infringement of copyright in an unpublished

work commenced before the effective date of its reg-

istration. . . . (emphasis supplied).

Section 411(b) provides

(b) In the case of a work consisting of sounds, images,

or both, the first fixation of which is made simultane-

ously with its transmission, the copyright owner may,

either before or after such fixation takes place, insti-

tute an action for infringement under section 501, fully

subject to the remedies provided by sections 502

through 506 and section 509 and 510, if, in accordance

with requirements that the Register of Copyrights

shall prescribe by regulation, the copyright owner—

A40

(1) serves notice upon the infringer, not less

than ten or more than thirty days before such

fixation, identifying the work and the specific

time and source of its first transmission, and de-

claring an intention to secure copyright in the

work; and

(2) makes registration for the work within

three months after its first transmission.

17 U.S.C. § 411(b).

The fitness trail feature is an unpublished work. “Pub-

lication” under the statute is defined as

The distribution of copies or phonorecords of a work |

to the public by sale or other transfer of ownership, "

or by rental, lease, or lending. The offering to dis-

tribute copies or phonorecords to a group of persons

for purposes of further distribution, public perform-

ance, or public display, constitutes publication. A pub-

lic performance or display of a work does not of itself

constitute publication.

17 U.S.C. § 101.

To perform or display a work publicly means |

(1) to perform or display it at a place open to the |

public or at any place where a substantial number of |

persons outside of a normal circle of a family and its

social acquaintances is gathered; or

(2) to transmit or otherwise communicate a perform-

ance or dispiay of the work to a place specified by

clause (1) or to the public, by means of any device

or process, whether the members of the public capable

A41

of receiving the performance or display receive it in

the same place or in separate places and at the same

time or at different times.

Id.

A transmission, then, is not a publication. Congress

has defined “transmission program” as “a body of material

that, as an aggregate, has been produced for the sole pur-

pose of transmission to the public in sequence and as a

unit.” Jd. The legislative history shows that this defini-

tion encompasses non-syndicated radio and television pro-

grams. H.R.Rep. No. 1476, 94th Cong., 2d Sess. 152, re-

printed wm 1976 U.S. Code Cong. & Ad.News 5659, 5768.

Live television news broadcasts clearly fall into the cate-

gory of unpublished transmission programs.

Plaintiff’s only possibility for an award of statutory

damages is thus to fit within Section 411(b). Plaintiff

cannot fit within that section for two reasons. First, the

fixation of the pretaped fitness trail feature did not first

occur at the time of the transmission. The feature was

fixed earlier, when it was pretaped. Secondly, even if one

were to assume that the fixation only occurred as the broad-

east was being aired, Plaintiff did not give the notice re-

ferred in Section 411(b). Therefore, statutory damages

and attorneys’ fees are not awardable to Plaintiff.

By its own admission, Plaintiff has suffered virtually

no actual damage from the sale of the fitness trail seg-

ment. Although WXIA makes tapes available, it does not

actively attempt to market them and admits that it has no

real concern that it ever sell any tapes. Its actual dam-

ages in this case therefore are trivial. Defendant sold the

A42

fitness trail segment for $55.2 The Court did not hear

evidence on News Clips’ profit per tape, but estimates it

at $35, also a trivial amount. Under these circumstances,

Plaintiff’s actual damages, including Defendant’s profits,

are de minimis. See Shapiro, Bernstein & Co. v. Bleeker,

243 F.Supp. 999 (S.D.Cal. 1965), aff’d 367 F.2d 236 (9th

Cir.1966). The Court will award damages in the amount

of $35.00.

Finally, as the prevailing party, Plaintiff seeks to re-

cover its costs. Under former section 116 of the copyright

statute, the award of costs to the prevailing party was

mandatory. Boz Scaggs Music v. KND Corp., 491 F.Supp.

908, 915 (D.Conn. 1980). Current section 505, 17 U.S.C.

§ 505, commits the award of costs to the court’s discretion.

H.R.Rep. No. 1476 at 163 reprinted in 1976 U.S.Code Cong.

& Ad.News at 5779. Costs may even be awarded to the

losing rather than the prevailing party if the court should

so determine. Kepner-Tregoe, Inc. v. Carabio, 203 U.S.P.Q.

124, 136 (E.D.Mich. 1979). The Court orders that no costs

be awarded in this action.

CONCLUSION

Judgment is to be entered for Plaintiff in the amount

of $35.00. Each side shall bear its own costs.

9. News Clips has since raised its price per tape to $65.

A43

APPENDIX C

IN THE UNTED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

No. 83-8782

PACIFIC AND SOUTHERN COMPANY, INC.,

d/b/a WXIA-TY,

Plaintiff-Appellee,

Cross-Appellant,

versus

CAROL DUNCAN, d/b/a TV NEWS CLIPS,

Defendant-Appellant,

Cross-A ppellee.

Appeal from the United States District Court for the

Northern District of Georgia

ON PETITION FOR REHEARING AND SUGGESTION

FOR REHEARING EN BANC

(Opinion October 26, 1984, 11 Cir., 1984, — F.2d —).

(December 7, 1984)

Before FAY and JOHNSON, Cireuit J udges, and

YOUNG", District Judge.

PER CURIAM:

( X ) The Petition for Rehearing is DENIED and no

member of this panel nor other Judge in regular active

service on the Court having requested that the Court be

“Honorable George C. Young, U.S. District Judge for the

Middle District of Florida, sitting by designation.

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polled on rehearing en bane (Rule 35, Federal Rules of

Appellate Procedure; Eleventh Circuit Rule 26), the Sug-

gestion for Rehearing En Bane is DENIED.

( ) The Petition for Rehearing is DENIED and the

Court having been polled at the request of one of the mem-

bers of the Court and a majority of the Cireuit Judges

who are in regular active service not having voted in favor

of it (Rule 35, Federal Rules of Appellate Procedure;

Eleventh Circuit Rule 26), the Suggestion for Rehearing

En Banc is also DENIED.

( ) A member of the Court in active service having

requested a poll on the reconsideration of this cause en

bane, and a majority of the judges in active service not

having voted in favor of it, rehearing en bane is DENIED

ENTERED FOR THE COURT:

/s/ Frank M. Johnson, Jr.

United States Cireuit Court

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APPENDIX D

Constitutional and Statutory Provisions

United States Constitution

Article TI, (8, el. 8:

The Congress shall have Power * * * To Promote the

Progress of Science and useful Arts, by securing for

limited Times to Authors and Inventors the exclusive

Right to their respective Writings and Discoveries.

Amendment I:

Congress shall make no law respecting an establish-

ment of religion, or prohibiting the free exercise

thereof; or abridging the freedom of speech, or of the

press; or the right of the people peaceably to assem-

ble, and to petition the Government for a redress of

grievances.

United States Code, Title 17:

Section 107. Limitations on Exclusive Rights: Fair Use

Notwithstanding the provisions of section 106, the

fair use of a copyrighted work, including such use by

reproduction in copies or phonorecords or by any

other means specified by that section, for purposes

such as criticism, comment, news reporting, teaching

(including multiple copies for classroom use), scholar-

ship, or research, is not an infringement of copyright.

In determining whether the use made of a work in

any particular case is a fair use the factors to be con-

sidered shall include—

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(1) the purpose and character of the use, in-

cluding whether such use is of a commercial nature

or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the por-

tion used in relation to the copyrighted work as a

whole: and

(4) the effect of the use upon the potential mar-

ket for or value of the copyrighted work.

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APPENDIX E

POWELL, GOLDSTEIN, FRAZER & MURPHY

Attorneys at Law

Eleventh Floor

The Citizens & Southern National Bank Building

35 Broad Street, N.W.

Atlanta, Georgia 30335

404 572-6600

Telex 542-864

PGFM ATL

Telecopier 404 572-6999

Cable PGFM

December 7, 1984

CERTIFIED MAIL

RETURN RECEIPT REQUESTED

Video Monitoring Services of Ainerica, Ine.

330 West 42nd Street

New York, New York 10036

Dear Sir or Madam:

I am writing on behalf of my client, Pacific and Southern

Company, Inc. doing business as WXIA-TYV, in Atlanta.

My client is an affiliate of The Gannett Broadcast Group.

I and my client were most surprised to see your recent

brochure, a copy of which I enclose, which announces that

you make videotape copies for commercia! purposes of all

news broadcasts which are produced and copyrighted by

my client as well as other television broadcasters and net-

works.

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This practice clearly infringes the copyright of my client

in its originally produced copyrighted news broadcasts.

We demand that you cease and desist, immediately and

permanently, from all copying of WXIA-TY’s locai news-

casts.

If you are in any doubt whatsoever about the legal status

of such unlicensed copying for commercial purposes of

copyrighted news broadcasts, you should review the de-

cision by the United States Court of Appeals for the Elev-

enth Circuit in the lawsuit which my client brought against

-an Atlanta copyright infringer, TV News Clips, which en-

gaged in the same preatices. The enclosed opinion was

rendered on October 26, 1984.

I look forward to prompt receipt of your assurance that

no additional copying of WXIA-TV’s copyrighted news

broadeasts will take place.

We will deem any copying by Video Monitoring Services

of my client’s copyrighted news broadcasts on or after

the date of your receipt of this letter to be willful infringe-

ment of copyright which will give rise to civil claims for

injunctive relief and for statutory, actual and ‘punitive

damages, and which will be in violation of the criminal

law as well.

My client intends to take full advantage of all available

avenues of legal recourse.

Very truly yours,

/s/ James C. Rawls

JCR/ec

Enclosure

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.