What Would Judge Gorsuch Mean for Fair Use?

Cross-posted from the CPIP blog

On February 1st, President Trump nominated Neil Gorsuch to fill the Supreme Court seat left vacant by the passing of Justice Antonin Scalia. The announcement opened the floodgates of prognostication as to how the appellate court judge from Colorado might sway the Court in the coming terms, with forecasters pouring over his past decisions in an attempt to get into the head of the potentially game-changing jurist. And while Gorsuch’s views on intellectual property remain largely unknown, a closer look at his track record provides some insight into his understanding of copyright law that should leave creators and copyright owners optimistic.

In the forty years since the Copyright Act was enacted, courts have expanded the “transformative” fair use doctrine to encompass a variety of uses whose original expressive contribution is difficult, if not impossible, to separate from the underlying work. In particular, courts have applied fair use to cases where the purported fair user merely transforms the purpose of an underlying work, without transforming the underlying work itself and without contributing any original artistic expression. This is a discouraging trend that disregards copyright’s promotion of creativity by encouraging the addition of new expression to old. Fortunately, this trend could be offset by lawmakers and judges with an understanding of the originality requirements of copyright law.

As a federal judge for the U.S. Court of Appeals for the Tenth Circuit, Gorsuch oversaw 14 cases concerning various forms of IP, four of which involved copyright claims. Despite finding for the accused infringer in all four copyright cases, one of those decisions stands out and reveals an appreciation for the originality and new expression required of copyright–a requirement often ignored by proponents of ever-expanding notions of fair and transformative use.

In the 2008 case Meshwerks v. Toyota, the plaintiff brought a copyright infringement claim against Toyota for the unauthorized use of digital automotive models in a television commercial. The works in question were computerized two-dimensional models created by Meshwerks and based on existing Toyota vehicle designs. Though the parties had originally contracted for the designs to be used on Toyota’s website, Toyota began running TV ads featuring the designs, and Meshwerks brought an infringement claim based on the unauthorized use.

The District Court in Utah granted summary judgment in favor of Toyota, finding that Meshwerks’ designs were not sufficiently original to qualify for copyright protection. Meshwerks then appealed to the U.S. Court of Appeals for the Tenth Circuit in Colorado, where Gorsuch had served since his confirmation in 2006.

Approaching the question of originality central to the case, Gorsuch agreed with the district court that the Meshwerks models contributed no new expression to Toyota’s preexisting designs and therefore were not eligible for copyright protection. In the opinion, Gorsuch refers to the “sine qua non of copyright” that requires at least a degree of originality in protectable works of authorship so that copyright will “reward[ ] (and thus encourag[e]) those who contribute something new to society.” The decision goes on to address Meshwerks’ depiction of Toyota’s three-dimensional physical objects in a two-dimensional digital medium, asserting that the “putative creator who merely shifts the medium in which another’s creation is expressed has not necessarily added anything beyond the expression contained in the original.”

Though Meshwerks didn’t involve fair use claims, Gorsuch’s focus on the lack of original expression in simply shifting mediums reflects the Supreme Court’s articulation of transformative fair use in Campbell v. Acuff Rose, a case that he experienced first hand as a law clerk for Justice Anthony Kennedy. Campbell involved the unauthorized parody of a popular Roy Orbison song, and in its fair use deliberation the Court focused intently on “whether the new work merely supersedes the objects of the original creation … or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’” (emphasis added). The Court found that if the new work sufficiently transforms the original through the additional of new expression, it may qualify as fair use.

But the idea of what qualifies as “transformative” has come to include works of transformative purpose, which often are little more than extensive, for-profit acts of wholesale copying of entire works that merely offer the underlying works in a new context. The transformative purpose theory has been applied to the mass scanning and digitization of copyrighted materials for projects such as Google Books, where the creation of a searchable database is considered transformative, despite the fact that the underlying works were not transformed in any original or expressive way. This change in context is effectively the same as the shifts in medium denounced in Meshwerks, and Gorsuch’s ideas about the need for new and original expression not only echo the Supreme Court’s interpretation in Campbell, but also reflect an understanding of the core principle of originality in copyright law.

As the digital age enables copying at the click of a mouse, it’s important to recognize the limits of fair use and realize that while an argument could be made that some of these recent acts of copying are transformative, others are dangerously close to the mere shifts in medium Gorsuch warned against in Meshwerks. Some instances of format-shifting that have been found to be fair use—such as converting full-size images to thumbnails in a search engine—provide an example of unauthorized uses that could benefit from a Gorsuch-style analysis of originality. While few would argue that the owner of a legitimate copy of an album or movie shouldn’t be able to transfer the work to different devices, allowing for a broad fair use application to format-shifting creates a slippery slope for shifts in medium that add no original expression.

Fortunately, despite pressure from groups who would like to see an expansion of fair use that would effectively annihilate copyright law, the Copyright Office recently refused to adopt an exemption that would have allowed broad, noncommercial format-shifting of motion pictures distributed on DVDs, Blu-ray discs, and downloaded files. The Office’s final rule found that proponents of the exemption “failed to establish a legal or factual record sufficient to establish that the space- or formatshifting of audiovisual works, e-books, and other copyrighted works constitutes a noninfringing use,” and that “fair use, as it stands today, does not sanction broad-based space-shifting or formatshifting.” Notwithstanding its refusal to grant the exemption, the Copyright Office recommended that format-shifting policy judgments be left to Congress, further highlighting the need for leaders who understand the goals of copyright law.

As different–and often misguided–theories of what constitutes fair use flood the internet during Fair Use Week, it’s important to acknowledge the doctrine’s purpose as a tool to promote the combination of original expressive works and honor the goals of copyright law. As Gorsuch says in Meshwerks, copyright law intends to encourage those who contribute something new to society, “while also allowing (and thus stimulating) others to build upon, add to, and develop those creations.” Gorsuch’s words invoke the same principles endorsed in Campbell, which says, “[f]rom the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts… .”

As copyright experts have pointed out (see here, here, and here), many of those celebrating fair use this week misunderstand the doctrine and want the public to believe that copyright law and fair use are at odds. It’s a false dichotomy that betrays the purpose of copyright law and risks devaluing the original works whose expressions truly enrich society. It’s a risk that could threaten both the quality of future works and the creative ecosystem they facilitate, but it’s a risk that can be offset by leaders, advocates, and judges with an appreciation for the true intent of copyright law and the fair use doctrine.


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