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SONY CORPORATION OF AMERICA, et al., Petitioners, v.

UNIVERSAL CITY
STUDIOS, INC., and WALT DISNEY PRODUCTIONS, Respondents.
No. 81-1687

OCTOBER TERM, 1982

October 29, 1982

BRIEF AMICI CURIAE OF ASSOCIATION OF AMERICAN PUBLISHERS, INC. AND


ASSOCIATION OF AMERICAN UNIVERSITY PRESSES, INC.

CHARLES H. LIEB, (Counsel of Record), JON A. BAUMGARTEN, DAVID S. KLAFTER,


PASKUS, GORDON & HYMAN, 45 Rockefeller Plaza, New York, New York 10111,
Attorneys for Amici Curiae, Association of American Publishers, Inc. and Association
of American University Presses, Inc.

TABLE OF AUTHORITIES

CASES

Encyclopaedia Britannica Educ. Corp. v. Crooks, 447 F. Supp. 243 (W.D.N.Y. 1978)

Filmvideo Releasing Corp. v. Hastings, 426 F. Supp 690 (S.D.N.Y. 1976), aff'd, 668
F.2d 91 (2nd Cir. 1981)

Fortnightly Corp. v. United Artists Television Inc., 392 U.S. 390 (1968)

Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982)

Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937)

MCA, Inc. v. Wilson, 677 F.2d 180 (2nd Cir. 1981)

Meeropol v. Nizer, 560 F.2d 1061 (2nd Cir. 1977), cert. denied, 434 U.S. 1013
(1978)

New York Times Co. v. Roxbury Data Interface, Inc., 434 F. Supp. 217 (D.N.J.
1977)

Rose v. Lundy, U.S. , 102 S.Ct. 1198 (1982)

Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2nd Cir. 1966),
cert. denied, 385 U.S. 1009 (1967)

Russell v. Price, 612 F.2d 1123 (9th Cir. 1979), cert. denied, 446 U.S. 952 (1980)

Teleprompter Corp. v. CBS, 415 U.S. 394 (1974)

Universal City Studios, Inc. v. Sony Corp. of America, 480 F. Supp. 429 (C.D. Cal.
1979), aff'd in part and in rev'd in part, 659 F.2d 963 (9th Cir. 1981)
Walt Disney Prods. v. Alaska Television Networks, Inc., 310 F. Supp. 1073 (W.D.
Wash. 1969)

Wihtol v. Crow, 309 F. 277 (8th Cir. 1962)

Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973), aff'd by an
equally divided court, 420 U.S. 376 (1975) (per curiam)

STATUTES

Copyright Revision Act of 1976, Pub. L. No. 94-533, 90 Stat. 2541 (codified in 17
U.S.C.)

Section 106

Section 107

Sections 107-118

Section 108

Section 108(a)

Section 108(d)

Section 108(e)

Section 108(g) (2)

Section 111(e)

Section 111(f)

Section 302(a)

Section 408(a)

Section 411a

Sound Recordings Act of 1971, Pub. L. No. 92-140, 85

Stat. 391

MISCELLANEOUS

Report of the Register of Copyrights on the General Revision of the U.S. Copyright
Law (July 1961)

H.R. Rep. No. 83, 90th Cong., 1st Sess. (1967)

S. Rep. No. 94-473, 94th Cong., 1st Sess. (1975)

H.R. Rep. No. 94-1476, 94th Cong., 2nd Sess. (1976)


Remarks of David Ladd, Register of Copyrights, to the Patent, Trademark and
Copyright Section of the American Bar Association (Aug. 10, 1982)

Remarks of David Ladd, Register of Copyrights, to the Internationale Gesellschaft


Fur Urheberrecht, in Toronto, Canada (Sept. 23, 1981)

Nimmer, M.B., Nimmer on Copyright (1982)

Seltzer, L.E., "Exemptions and Fair Use in Copyright" 24 Bull. Copyright Soc'y, 215
(1977)

The Interest of the Amici

AAP's and AAUP's interest is direct and compelling. Fair use has traditionally
served as an "escape value" to provide relief in an individual case from the finding of
infringement that otherwise would be required by a literal reading of the copyright
statute. The doctrine is not and never was intended to excuse widespread copying of
the same copyrighted work by a multitude of users at the same time nor is it nor was
it ever intended to threaten existing or emerging markets from which substantial
investments must be recouped. n1 To the extent that that doctrine might be so
applied in this case as requested by the petitioners, AAP and AAUP members would
be seriously prejudiced.

n1 Remarks of David Ladd, Register of Copyrights, to the Patent, Trademark and


Copyright Section of the American Bar Association (Aug. 10, 1982).

Additionally, AAP members own copyright in the works underlying motion pictures
shown on television and retain an interest in such audiovisual rights in their works.
The detrimental effect of uncompensated home video-recording on these subsidiary
rights should not be ignored.

INTRODUCTION: Preliminary Statement

The Association of American Publishers, Inc. (AAP) and the Association of American
University Presses, Inc. (AAUP) submit this brief Amici Curiae in support of the
position of the respondents Universal City Studios, Inc. and Walt Disney Productions,
Inc., as sustained by the Court below, that the home video recording of respondents'
copyrighted motion pictures by the defendant William Griffiths and by others not
joined as defendants infringed the respondents' copyrights in those works. AAP and
AAUP will not address the issues of vicarious or contributory liability in this brief.

AAP is a trade association of book publishers in the United States. Its more than
300 member companies and subsidiaries publish between 70% and 75% of the dollar
volume of all books published in the United States. Some of its members also
produce and distribute audiovisual works. Virtually all of such publications and
audiovisual works are protected by copyright.

The AAUP is an educational not-for-profit association serving university presses.


Its 80 members and 5 affiliates include the presses of virtually all of the most
distinguished American universities, as well as several Canadian an international
scholarly publishers.

Summary of Argument

Section 106 of the Copyright Law n2 grants to the owner of copyright in an


audiovisual work the exclusive right to record (reproduce) the copyrighted work,
subject only to the limited exemptions created by sections 107-118 of that law.
Conceding that no other exemption is available, petitioners rely solely on fair use, as
provided for in section 107, to defend the widespread home recording of copyrighted
audiovisual works. Petitioners' Brief at 20-31.

n2 Unless otherwise indicated, all references to the "Copyright Law" are to the
Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2451 (codified in Title 17
U.S.C.).

Unauthorized recording of all or a substantial part of a motion picture or other


audiovisual work, however, is not a fair use under section 107, whether the
recording is made at home or elsewhere. Fair use can never excuse copying which,
as here, threatens to reduce existing, emerging or potential markets for the work
copied. Nor is the fair use doctrine applicable to the copying of all or substantial
parts of copyrighted audiovisual works, a practice which is widespread now and
which can be expected to become more prevalent as the market for home recording
equipment increases.

Home recording cannot be excused or exempted, as petitioners claim, as simply a


mechanical step enhancing the viewer's capacity to receive the broadcaster's signal.
Home recording is home copying and is to be judged by the same standards by
which other copying is judged.

If unauthorized home recording of copyrighted material is deemed to be in the


public interest, a statutory revision would be needed to exclude home recording from
the bundle of rights granted to the copyright owner. Such a radical change,
however, should not be permitted by a distortion of the fair use doctrine.

The decision in Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl.
1973), aff'd by an equally divided court, 420 U.S. 376 (1975) (per curiam), was
mistakenly relied on by the trial court and is mistakenly cited to this Court as being
in conflict with the decision of the court of appeals below.

First, the cases are clearly distinguishable. For example, Williams & Wilkins was a
library case, not a "user" case, and a "public benefit" case, n3 not a personal
"convenience" case, as here. Second, the decision of the Court of Claims in Williams
& Wilkins was handed down as a "holding operation" to permit Congress to enact its
preferred solution, and Congress has now enacted its preferred solution, overruling
Williams & Wilkins.

n3 The case involved copying for the purpose of medical research.

The activity before the court in Williams & Wilkins is now subject to a statutory
exemption, available only to libraries and archives qualifying under section 108(a),
and then only in the carefully limited instances described in sections 108(d), 108(e),
and in the interlibrary arrangements proviso of section 108(g) (2).

ARGUMENT

I.

Home video tape recording of copyrighted audio-visual works is not fair use.

Griffiths' recording of respondents' copyrighted motion picture infringed the


respondents' copyrights and was not excusable as a fair use under section 107 of the
Copyright Law.

The design of the 1976 Copyright Law is clear. Section 106 grants the copyright
owner a bundle of exclusive rights in his work, subject only to the narrow
exemptions in sections 107 through 118, which permit others to make occasional use
of copyrighted works in limited circumstances. The respondents are owners or
copyrights in their motion pictures and as such have the sole right, subject only to
the provisions of sections 107-118, to make copies of those works.

There is no statutory exemption for home copying. Unless permitted as a fair use
under section 107, no one has the right to reproduce the respondents' motion
pictures, whether at home or elsewhere, whether for personal enjoyment or for the
enjoyment of others, or whether for profit or for non-profit purposes, unless
authorized by the copyright owner. But as demonstrated below, fair use is
inapplicable to this case.

The petitioners contend that Griffiths was not an infringer because the recordings
he made were excusable as a section 107 fair use. The petitioners rely solely on fair
use; they do not argue that a home video recording of a copyrighted motion picture
is permissible on the basis of any other exemption. Thus, they concede that if such
recordings are not fair use the reproductions by Griffiths and others will constitute an
infringement of the exclusive rights granted by section 106.

The 1961 Report of the Register of Copyrights provided illustrative examples of the
kinds of uses that may be permitted under the doctrine of fair use: quotations of
excerpts in reviews or criticisms for purposes of illustration or comment; quotation of
short passages in a scholarly or technical work; use in a parody; summary of an
address or article with brief quotations in a news report; reproduction by a library of
a portion of a work to replace part of a damaged copy; reproduction by a teacher or
student of a small part of a work to illustrate a lesson; reproduction of a work in
legistative or judicial proceedings or reports; and incidental and fortuitous
reproduction in a newsreel or broadcast of a work located at the scene of an event
being reported. Report of the Register of Copyrights on the General Revision of the
U.S. Copyright Law 24 (July 1961).

These examples, indicating the "general scope of fair use," id., have been cited
with consistent approval in the subsequent legislative history of section 107 of the
1976 Copyright Law. H.R. Rep. No. 83, 90th Cong., 1st Sess. (1967), at 29; S. Rep.
No. 94-473, 94th Cong., 1st Sess. (1975), at 61-62; H.R. Rep. No. 94-1476, 94th
Cong., 2d Sess. (1976), at 65.
Although the examples are "by no means exhaustive," H.R. Rep. No. 94-1476,
supra, at 65, they aptly convey the fair use doctrine's traditional limitations which
are incorporated in the statutory language of section 107. Section 107 provides that
noninfringing fair use of a copyrighted work can be made "for purposes such as
criticism, comment, news reporting, teaching (including multiple copies for classroom
use), scholarship, or research." This statutory framework for fair use, as well as the
listing in the second sentence of the section of the four factors to be included in
determining whether in any particular case there has been fair use, taken together
with the legislative history, establish that widespread, general use of video tape
recorders (VTRs) cannot fall within the bounds of the fair use doctrine.

The legislative history recognizes that fair use as provided in section 107 is
"essentially supplementary by nature," S. Rep. No. 94-473, supra, at 65. Implicit in
the language of the section itself is that it be applied in a particular case on a case-
by-case basis, as distinguished from applying it generally to a broad class, such as
all who engage in home recording on VTR equipment. n4 Further, in applying the
doctrine, the section explicitly requires that weight be given to the "substantiality of
the portion used" (as contrasted with the whole of the work), and "[t]he effect" that
the use will have "upon the potential market for or value of" the copied work. The
"potential market," of course, is "as broad as the exclusive rights in § 106 allow."
Remarks of David Ladd, Register of Copyrights, to the Patent, Trademark and
Copyright Section of the American Bar Association, supra.

n4 S. Rep. No. 94-473, supra, at 62; Report of the Register of Copyrights on the
General Revision of the U.S. Copyright Law, supra, at 24.

Griffiths' use was not "supplementary." It was not for scholarship or research or for
any of the other purposes referred to in the first sentence of section 107. It was an
intrinsic use, intended solely for enjoyment, the purpose for which the work was
created. n5 It was a use of the whole of plaintiffs' works, not of a "portion,"
substantial or otherwise. n6 And it was a use, the effect of which, together with
similar use by others, could only be to limit the existing and potential markets for
plaintiffs' works. n7

n5 The nature of the copyrighted material here is to entertain through performance


of the works. Reproductions of audiovisual performances, therefore, are less worthy
of fair use protection than borrowings from informational works. MCA, Inc. v. Wilson,
677 F.2d 180 (2d Cir. 1981); sec H.R. Rep. No. 83, supra, at 34. Cf. Rosemont
Enterprises, Inc. v. Random House, Inc., 366 F. 2d 303 (2d Cir. 1966), cert. denied,
385 U.S. 1009 (1967) (biographies); New York Times Co. v. Roxbury Data Interface,
Inc., 434 F. Supp. 217 (D.N.J. 1977) (indexes).

n6 Although extensive copying may not conclusively prevent a finding of fair use, it
weighs heavily against such a finding, especially where the entire work has been
reproduced for its intrinsic purpose. Encyclopaedia Britannica Educ. Corp. v. Crooks,
447 F. Supp. 243, 251 (W.D.N.Y. 1978). Cf. Jartech, Inc. v. Clancy, 666 F.2d 403,
407 (9th Cir. 1982) ("abbreviated copies of... films, not for subsequent use and
enjoyment, but for evidence to be used in [legal] proceedings" held fair use
(emphasis supplied)).
n7 As Professor Nimmer has written: "This factor... poses the issue of whether
unrestricted and widespread conduct of the sort engaged in by the defendant
(whether in fact engaged in by defendant or by others) would result in a
substantially adverse impact on the potential market for or value of the plaintiff's
work," M.B. Nimmer, Nimmer or Copyright § 13.05[A][4], at 13-65 (1982) (footnote
omitted) (emphasis supplied); Meeropol v. Nizer, 560 F.2d 1061, 1070 (2d Cir.
1977), cert. denied, 434 U.S. 1013 (1978) (court must consider "future market");
Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484, 487 (9th Cir. 1937) ("After all copyright
is property, and an action will lie even if no damage be shown"). Moreover, "the
plaintiff in a copyright case is presumed to suffer irreparable injury." Encyclopaedia
Britannica Educ. Corp. v. Crooks, supra, 447 F. Supp. at 251.

In his home, Griffiths was doing what thousands of other VTR owners were and are
doing, namely, making unauthorized copies of copyrighted motion pictures and other
audiovisual works. n8 While Griffiths may have considered his home recordings to
have been innocent and isolated, innocence is no defense, n9 and "[i]solated
instances of minor infringements, when multiplied many times, become in the
aggregate a major inroad on copyright that must be prevented." n10

n8 The brief of the Virginia Citizens' Consumer Council states that there are "VCR's
[video cassette recorders] already purchased and in use in three million homes" and
the market for future purchases is "potentially 30 million others." Brief of Amici
Curiae, Virginia Citizens' Consumer Council, Inc., et al., at 12.

n9 In Wihtol v. Crow, 309 F. 277 (8th Cir. 1962), the defendant school teacher had
rearranged plaintiff's copyrighted song and reproduced 48 copies of the
rearrangement for his students' use. The court of appeals reversed the district
court's finding of fair use and found infringement, notwithstanding that copies of
plaintiff's song were not made on other occasions and notwithstanding that the
defendant had no intent to infringe.

n10 H.R. Rep. No. 83, supra, at 35. To similar effect, Professor Nimmer states
that a conclusion of fair use is justified only when the conduct of "all potential
defendants, and without limitation as to the number of reproductions... and volume
of users, would still not adversely affect the plaintiff's potential market". Nimmer on
Copyrights, supra, § 13.05[E], at 13-84 (1982) (footnote omitted).

But they were not isolated and, taken together with similar actions by the
multitudes of other VTR owners, the effect on the existing and potential markets for
and value of respondents' works must necessarily be adverse. n11

n11 "Babies are born one at a time, but can result in overpopulation." From an
early report on photocopying, quoted in Remarks of David Ladd, Register of
Copyrights, to the Internationale Gesellschaft fur Urheberrecht, in Toronto, Canada
(Sept. 23, 1981).

The petitioners argue that the growing availability of video recording technology,
coupled with some extemporaneous remarks made in connection with the Sound
Recordings Act of 1971, Pub. L. No. 92-140, 85 Stat. 391 (which provided, limited
copyright protection for sound recordings), establish that off-the-air reproductions of
audiovisual works are permissible for private use. Petitioners' Brief at 32-39. To the
contrary, the issue was never raised for congressional consideration and cannot be
deemed resolved, especially in so sensitive an area of legislation. A broad limitation
of copyright owners' rights cannot arise from such off-hand comments. More
properly, it should be held that Congress has never addressed off-the-air
reproduction of audiovisual works (a task it is now undertaking) and that this case
must be judged by the existing law of fair use. See Rose v. Lundy, U.S. , 102
S. Ct. 1198, 1202-03 (1982).

Petitioners suggest that Griffiths should not be held to be an infringer because it


would be impracticable to enforce a ban on home recording; hence, if only for this
reason, home recording should be defensible as fair use. The petitioners' argument,
however, can be made with equal force with respect to many instances of "theft of
services" -- yet it has never before been considered a ground for exculpation.

The element of privacy, which petitioners discuss, affects only the issue of an
appropriate remedy, not liability. Because the lower courts in this case have not yet
fashioned a remedy, it is premature to discuss how the element of privacy should be
taken into account. Privacy, however, cannot the considered a defense to copyright
infringement. Indeed, with the advances of technology, the regulation of private
uses promises to be a central issue in the future of copyright law; the delicate
problems involved cannot be swept aside with a general privacy defense.

The current Register of Copyrights had this in mind in a recent address in which he
discussed home recording of copyrighted works. Remarks of David Ladd, Register of
Copyrights, to the Internationale Gesellschaft fur Urheberrecht, supra. Until relatively
recently, he commented, nearly all infringements of copyrighted works were public
and so visible at their source that enforcement of copyright presented no special
problem. In view of new technologies, however, uses of copyrighted works often are
not readily detectible and therefore not readily policeable. But, he concluded, we
should not therefore "accept all home copying as lawless but uncontrollable, or lawful
because it is uncontrollable." This is basically what the petitioners are suggesting,
and it is obviously unacceptable.

Petitioners also suggest, Petitioners' Brief at 10, that "only" respondents Universal
and Disney object to the unauthorized home recording of their works and should
therefore be treated as aberrant. This is plainly wrong. The rights of AAP members
and others in underlying copyrighted works are also infringed when VTR owners
record motion pictures and television broadcasts. See, e.g., Film-video Releasing
Corp. v. Hastings, 426 F. Supp. 690 (S.D.N.Y. 1976), aff'd, 668 F.2d 91 (2d Cir.
1982) (unauthorized exhibition of public domain motion picture infringes copyright in
underlying novel); Russell v. Price, 612 F.2d 1123 (9th Cir. 1979), cert. denied, 446
U.S. 952 (1980).

So, too, petitioner's assertion that "programming which could be registered for
copyright but which is not" is "free for unchallenged home... recording," Petitioners'
Brief at 4, n12 gravely misstates the law. Registration is generally a condition to
suit, 17 U.S.C. § 411(a), but is not a condition to copyright, see 17 U.S.C. §§
302(a); 408(a); registration may be made after infringement and suit brought for
infringement committed earlier. See generally, 2 M.B. Nimmer, Nimmer on
Copyright, supra, § 7.16[A][1], [B] [1].
n12 See also, Brief of Toshiba Corporation & Toshiba America, Inc. in Support of
Petitioners at 17 & n.13 (erroneously equating unregistered material with
"copyrightable" but not "copyrighted" material).

Petitioners argue that it would serve the nation's communications policy to permit
home video recording of televised programs. But instant reproduction by millions of
owners of VTR equipment of copyrighted audiovisual works in the same mode and for
the same purpose as that for which the works were produced in the first place cannot
be permitted as a fair use without utterly destroying the rationale of the fair use
doctrine. L.E. Seltzer, "Exemptions and Fair Use in Copyright," 24 Bull. Copyright
Soc'y 215, 251 (1977). If such permission is to be granted, it must be granted by
Congress as a statutory exemption.

In Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968), and
Teleprompter Corp. v. CBS, 415 U.S. 394 (1974), mistakenly relied upon by the
petitioners, see infra, this Court expressly stated that the reconciliation of copyright
and communications laws is a job for Congress, not for the courts. When urged to
"accommodate various competing considerations of copyright, communications, and
anti-trust policy," this Court in Fortnightly wrote: "We docline the invitation. That
job is for Congress." 392 U.S. at 401 (footnotes omitted). And in Teleprompter, this
Court stated: "[d]etailed regulation of these relationships [within the
communications industry], and any ultimate resolution of the many sensitive and
important problems in this field, must be left to Congress." 415 U.S. at 414 (footnote
omitted).

II.

Home recording is not to be excused as mere "enhancement" of the broadcaster's


signal. Home recording is home copying.

Petitioners build their fair use claim, at least in part, on the argument that because
video tape recording is but a mechanical step in video reception, no more than
enhancing the viewer's capacity to receive the broadcast program, the recording
should be deemed a fair use, citing, by analogy, this Court's opinions in Fortnightly
Corp. v. United Artists Television, Inc., supra, and Teleprompter Corp. v. CBS, supra.

Those cases are inapposite because they turn solely on the statutory interpretation
of the term, "perform." The Court provided no discussion whatsoever of the
meaning, history, scope, or pertinent factors of the fair use doctrine. If the
defendants in Fortnightly or Teleprompter had recorded the works involved, they
would have been liable for infringement. Walt Disney Prods. v. Alaska Television
Network, Inc., 310 F. Supp. 1073 (W.D. Wash. 1969) ( recording of television
programs by a cable system constituted infringement, even without distribution).
So, too, under the 1976 Copyright Law, reproduction of broadcasts by a cable
system will vitiate their compulsory license and subject them to liability for
infringement. 17 U.S.C. § 111(f) (definition of simultaneous transmissions). A
limited exception exists for some off-shore cable systems -- but even here the
exception is available only under stringent conditions. Id. § 111(e). Thus,
reproduction is crucial to the issue of infringement and clearly distinguishes this case
from Fortnightly and Teleprompter. Contrary to the petitioners' statement of
questions presented, Petitioners' Brief at i, the issue in this case is not reception of
broadcasts, but reproduction of copyrighted works which have been broadcast. n13

n13 Moreover, the Fortnightly and Teleprompter decisions are not applicable under
the new law. Cable systems are now subject to a compulsory license arrangement
which requires them to pay reasonable compensation to copyright owners.

The question in Fortnightly and Teleprompter was whether there had been an
infringement of the plaintiff's exclusive right to perform their copyrighted works in
public, and the Court held that the CATV operator, unlike a broadcaster, does not
broadcast or "perform," but on the contrary merely provides a well-located antenna
with an efficient connection to the viewer's television set. n14 In elaborating on this
distinction, the Court commented that broadcasters select the programs to be
viewed while CATV systems do not, and that, unlike broadcasts, CATV systems
simply carry the broadcast program without editing.

n14 Although the Teleprompter decision turned in part on the fact that CATV
operators merely enlarged the receiving audience, that aspect of the case is
distinguishable from this, in that the method used in Teleprompter was to relay
signals, whereas the increased audience here results from impermissible
reproductions of copyrighted works.

But unlike TV viewers and CATV systems which do not record broadcasts, Griffiths
and his fellow VTR users do record and reproduce the copyrighted programs, thereby
appropriating a right reserved to the copyright owner by section 106. Griffiths'
reproductions are not used to enhance the broadcast, but as copies of particularly
selected programs for later (and possibly repeated) viewing which may include
editing of the programs, either by eliminating commercials or otherwise.

The simple fact is that VTRs are not just a means of reception; they are used for
reproducing copyrighted materials. Home recording is home copying, no more or
less so than the unauthorized reproduction, at home, of a copyrighted song, or
novel, or poem. n15

n15 Reproduction, even without distribution, can be infringement, M.B. Nimmer,


Nimmer on Copyrights, supra, § 8.02[c], at 8-25; H.R. Rep. No. 94-1476, supra, at
61 (infringement occurs "where, for example, a printer reproduces copies without
selling them").

III.

Williams & Wilkins was mistakenly relied on by the Trial Court and is mistakenly
cited to this Court as being in conflict with the decision of the Court of Appeals
below. The Court of Claims' decision in Williams & Wilkins, so heavily relied on by
the Petitioners, affords no support to the fair use defense which they assert.

At the least, Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973),
is clearly distinguishable on its facts. n16 The Williams & Wilkins case was a library
case, not a user case, where it was suggested that the library was nothing more than
the individual requestor's ministerial agent. The Williams & Wilkins case was
deemed by the Court to be a "public interest" case where health and science were
supposed to be at risk; it was not a "convenience" or entertainment case as here.
n17

n16 Sixteen Judges and Justices in all participated in the Williams & Wilkins case,
splitting evenly 8-8. In the Court of Claims, the trial judge and three of the panel of
seven Judges hearing the appeal found infringement, and the Supreme Court
affirmed the Court of Claims decision, per curiam, by a vote of 4-4.

n17 The Williams & Wilkins court listed eight factors in all affecting their decision,
including (1) that libraries provided single copies of articles in response to specific
requests from medical researchers, ordinarily for their own use; (2) that requests
were generally limited to single articles under 50 pages long; (3) that library copying
was a long established practice; (4) that medical science would be harmed by
discontinuing the practice; (5) that the paintiffs failed to prove damages; (6) that
the term, "copy", in the 1909 statute was unclear; (7) that the then proposed 1976
Copyright Law suggested that photocopying would be fair use in some
circumstances; and (8) that foreign laws permit photocopying in some similar
instances. The court's decision rested on the relation of all of these factors as
applied to the facts at hand. The opinion was expressly limited to those facts. 487
F.2d at 1362-63.

But more basically, the decision of the Court of Claims in Williams & Wilkins was a
provisional decision, specifically stated to be an interim "holding operation" to permit
the Congress to enact its preferred solution; this because the Court believed that the
choice between copying without permission or licensed copying should be made by
the legislature. 487 F.2d at 1360. Congress, in the 1976 Copyright Law, did enact
its preferred solution and in so doing it overruled the Court of Claims' 4-3 split
decision in at least two respects.

A.

The majority of the Court of Claims in Williams & Wilkins held that the massive
systematic copying which the National Institutes of Health (NIH) and the National
Library of Medicine (NLM) engaged in was excusable as a fair use. Congress, in
enacting the 1976 Copyright Law, rejected that solution. Instead, it characterized
the kind of copying that was done by NIH and NLM as "systematic," 17 U.S.C. §
108(g) (2) (emphasis supplied), and it declared such copying "prohibited," n18
except only in limited instances. See III. B., below.

n18 S. Rep. No. 94-473, supra, at 70:

While it is not possible to formulate specific definitions of "systematic copying", the


following examples serve to illustrate some of the copying prohibited by subsection
(g). [emphasis supplied]

(1) A library with a collection of journals in biology informs other libraries with
similar collections that it will maintain and build its own collection and will make
copies of articles from these journals available to them and their patrons on request.
Accordingly, the other libraries discontinue or refrain from purchasing subscriptions
to these journals and fulfill their patrons' requests for articles by otaining
photocopies from the source library. [cf. NLM copying in the Williams & Wilkins case]

(2) A research center employing a number of scientists and technicians subscribes


to one or two copies of needed periodicals. By reproducing photocopies of articles
the center is able to make the material in these periodicals available to its staff in the
same manner which otherwise would have required multiple subscriptions [cf. NIH
copying in the Williams & Wilkins case]

(3) Several branches of a libarary system agree that one branch will subscribe to
particular journals in lieu of each branch purchasing its own subscriptions, and the
one subscribing branch will reproduce copies of articles from the publication for users
of the other branches.

Thus, in effect, Congress rejected the fair use solution advocated by the Court of
Claims majority.

B.

The House Committee on the Judiciary adopted and the Conference Committee
accepted an amendment to section 108(g) (2) which prohibits "systematic" copying
of section 108(d) material. n19 The amendment, the so-called "interlibrary
arrangements proviso," provides in substance that nothing in section 108(g) (2)
"prevents a library or archives from participating in interlibrary arrangements that do
not have, as their purpose or effect, that the library or archives receiving such
copies... does so in such aggregate quantities as to substitute for a subscription to or
purchase of such work."

n19 Section 108(d) extends protection to a copy of "no more than one article or
other contribution to a copyrighted collection or periodical issue, or to a copy or
phonorecord of a small part of any other copyrighted work."

Thus, to the extent that NIH and NLM copying of Williams & Wilkins' journal
articles for the purpose of interlibrary arrangements could have met the limitation of
the "aggregate quantities" standard, it would have been permissible, but only as a
section 108 library exemption, and not as a section 107 fair use. But copying by NIH
and NLM and other libraries that does not meet the non-profit and other limitations
of sections 108(a) through 108(e) is prohibited.

Williams & Wilkins therefore is not an authority to be cited as establishing any


proposition affecting post-1977 copyright activities. Indeed, it is not even sound
authority to be cited with respect to pre-1978 activities. The Senate Committee in
its 1975 Report said that Williams & Wilkins "failed to signficantly illuminate the
application of the fair use doctrine to library photocopying practices," S. Rep. No. 94-
473, supra, at 71. Nimmer characterizes it as "seriously in error," Nimmer on
Copyright, supra, § 13.05, at 13-83, and Seltzer asserts that it has been overruled,
L.E. Seltzer, supra, 24 Bull. Copyright Soc'y at 238. The Court below was eminently
correct in describing the decision as "singularly unpersuasive," 659 F.2d at 970, as
placing "a strain upon the fair use doctrine," id. at 971, and in stating that it points
in the direction of "a fundamental restructuring of the copyright system not justified
by the statutory scheme or traditional notions of fair use," id.

Williams & Wilkins should therefore be interred, with respect, as a case of historical
interest only, but with no relevance to the traditional doctrine of fair use.

Conclusion

The Court of Appeals correctly decided that the fair use doctrine does not sanction
home video recording and correctly rejected Williams & Wilkins as pertinent
authority.

Respectfully submitted,

CHARLES H. LIEB, (Counsel of Record), JON A. BAUMGARTEN, DAVID S. KLAFTER,


PASKUS, GORDON & HYMAN, 45 Rockefeller Plaza, New York, New York 10111,
Attorneys for Amici Curiae, Association of American Publishers, Inc. and Association
of American University Presses, Inc.

Dated: October 25, 1982, New York, New York