ELOISE TOBY MARCUS v. SHIRLEY ROWLEY and SAN DIEGO UNIFIED
SCHOOL DISTRICT
UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
695 F.2d 1171
1983
PRIOR HISTORY:
Appeal from the United States District Court for the Southern
District of California. Honorable Gordon Thompson, Jr., District
Judge Presiding.
DISPOSITION: REVERSED and REMANDED.
COUNSEL: Rex Perschbacher, Esq., USD Legal Clinics, San Diego,
California, for Appellant.
Ernestine Douglas Littlejohn, San Diego, California, for Appellee.
JUDGES: Poole and Boochever, Circuit Judges, and Pfaelzer,
* District Judge.
* Honorable Mariana R. Pfaelzer, United States District Judge
for the Central District of California, sitting by designation.
OPINIONBY: PFAELZER
OPINION: PFAELZER, District Judge:
This is an appeal from a dismissal on the merits of a suit
for copyright infringement brought by a public school teacher
who is the owner of a registered copyright to a booklet on
cake decorating. The defendant, also a public school teacher,
incorporated a substantial portion of the copyrighted work
into a booklet which she prepared for use in her classes.
Both parties moved the district court for summary judgment.
The district court denied both motions and dismissed the action
on the merits on the ground that defendant's copying of plaintiff's
material constituted fair use. We reverse.
I. FACTUAL BACKGROUND
From September 1972 to June 1974, plaintiff, Eloise Toby Marcus
was employed by the defendant, San Diego Unified School District
("District") as a teacher of home economics. Plaintiff resigned
from the District's employ in 1974 and taught adult education
classes intermittently from 1975 to 1980. Shortly after leaving
her teaching position with the District, she wrote a booklet
entitled "Cake Decorating Made Easy". Plaintiff's booklet
consisted of thirty-five pages of which twenty-nine were her
original creation. The remaining six pages consisted of material
incorporated with the permission of the authors of the materials
for which the authors were given appropriate credit.
Plaintiff properly registered the copyright for "Cake Decorating
Made Easy" with the Register of Copyrights, and one hundred
and twenty-five copies of the booklet were published in the
spring of 1975. All of the copies of plaintiff's booklet contained
a designation of copyright as evidenced by an encircled "c"
followed by "1975 Eloise Marcus." This designation appeared
on the table of contents page, the first page, and the page
following the cover-title sheet.
Plaintiff sold all but six of the copies of her booklet for
$2.00 each to the students in the adult education cake decorating
classes which she taught. Plaintiff's profit was $1.00 on
the sale of each booklet. Copies of plaintiff's booklet were
never distributed to or sold by a bookstore or other outlet.
Plaintiff never authorized anyone to copy or reproduce her
booklet or any part of it.
Defendant, Shirley Rowley ("Rowley"), teaches food service
career classes in the District. In the spring of 1975, she
enrolled in one of plaintiff's cake decorating classes and
purchased a copy of plaintiff's book. During the following
summer, Rowley prepared a booklet entitled "Cake Decorating
Learning Activity Package" ("LAP") for use in her food service
career classes. The LAP consisted of twenty-four pages and
was designed to be used by students who wished to study an
optional section of her course devoted to cake decorating.
Defendant had fifteen copies of the LAP made and put them
in a file so that they would be available to her students.
She used the LAP during the 1975, 1976 and 1977 school years.
The trial court found that sixty of Rowley's two hundred twenty-five
students elected to study cake decorating. The trial court
further found that neither Rowley nor the District derived
any profit from the LAP.
Rowley admits copying eleven of the twenty-four pages in her
LAP from plaintiff's booklet. The eleven pages copied consisted
of the supply list, icing recipes, three sheets dealing with
color flow and mixing colors, four pages showing how to make
and use a decorating bag, and two pages explaining how to
make flowers and sugar molds. Four additional pages in defendant's
LAP also appear in plaintiff's booklet, but these pages primarily
contain information collected by and used with the permission
of the Consumer Service Department of the American Institute
of Baking. n1 Twenty pages of plaintiff's booklet were not
included in Rowley's LAP. n2 Rowley did not give plaintiff
credit for the eleven pages she copied, nor did she acknowledge
plaintiff as the owner of a copyright with respect to those
pages.
Plaintiff learned of Rowley's LAP in the summer of 1977 when
a student in plaintiff's adult education class refused to
purchase plaintiff's book. The student's son had obtained
a copy of the LAP from Rowley's class. After examining Rowley's
booklet, the student accused plaintiff of plagiarizing Rowley's
work. Following these events, plaintiff made a claim of infringement
against Rowley and the District. Both denied infringement
and the plaintiff filed suit.
The parties filed cross-motions for summary judgment. The
trial court denied both motions for summary judgment and dismissed
the case on the merits. n3 The ground for dismissal was that
the defendant's copying of the plaintiff's material for nonprofit
educational purposes constituted fair use.
II. THE APPLICABLE COPYRIGHT ACT
Congress revised the statutory law of copyright on October
19, 1976 in Public Law 94-553, 17 U.S.C. @ 101 et seq., (1976).
The revised Copyright Act provides that causes of action which
arose prior to January 1, 1978 are governed by the Copyright
Act in existence when the claim arose. 17 U.S.C. @ 501, note,
referring to Section 112 of Pub. L. 94-553. Walt Disney Productions
v. Air Pirates, 581 F.2d 751, 754 (9th Cir. 1978), cert. denied,
439 U.S. 1132, 59 L. Ed. 2d 94, 99 S. Ct. 1054 (1979).
Defendant compiled her LAP during the sumer of 1975 and first
made it available to her students during the 1975-1976 school
year. Plaintiff was apprised of the possibility that her book
had been copied in the summer of 1977. Although it is therefore
clear that the revised Copyright Act does not govern this
action, which version of the Act applies would not affect
the outcome of this case since its resolution turns entirely
on the application of the doctrine of fair use.
The doctrine of fair use was a judicially articulated concept
until Congress recognized its importance and incorporated
it into section 107 of the revised Copyright Act. The legislative
history states that "section 107 is a restatement of this
judicially developed doctrine -- it neither enlarges nor changes
it in any way." 122 Cong. Rec. 3144 (1976) (statement of Sen.
Tunney). See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 66,
reprinted in 1976 U.S. Code Cong. & Ad. News 5659, 5680 [Hereinafter
cited as H.R.Rep. (1976)]. Thus, the cases dealing with the
doctrine of fair use under the common law and those under
section 107 both give consideration to the same factors in
analyzing whether the doctrine should apply. Section 107 codifies
the factors developed under the prior case law. n4
III. THE DOCTRINE OF FAIR USE
Fair use is most often defined as the "privilege in others
than the owner of a copyright to use the copyrighted material
in a reasonable manner without his consent, notwithstanding
the monopoly granted to the owner. . . ." Rosemont Enterprises,
Inc. v. Random House, Inc., 366 F.2d 303, 306 (2d Cir. 1966),
cert. denied, 385 U.S. 1009, 17 L. Ed. 2d 546, 87 S. Ct. 714
(1967). [citations omitted]. This doctrine was judicially
created to "avoid rigid application" of the copyright laws
when that application would defeat the law's original purpose
which was the fostering of creativity. Iowa State University
Research Foundation Inc. v. American Broadcasting Cos., 621
F.2d 57, 60 (2d Cir. 1980). Because the doctrine was developed
with a view to the introduction of flexibility and equity
into the copyright laws, it has evolved in such a manner as
to elude precise definition. Universal City Studios, Inc.
v. Sony Corp., 659 F.2d 963, 969 (9th Cir. 1981), cert. granted,
457 U.S. 1116, 102 S. Ct. 2926, 73 L. Ed. 2d 1328, 50 U.S.L.W.
3982 (1982). It is, as Professor Nimmer has stated, a "most
obscure doctrine." 3 Nimmer on Copyright, @ 13.05 at 13-54.1
(1982). It is clear, however, that "assuming the applicable
criteria are met, fair use can extend to the reproduction
of copyrighted material for purposes of classroom teaching."
H.R. Rep. No. 83, 90th Cong., 1st Sess. 33 (1967) [Hereinafter
cited as H.R. Rep. (1967)]. Thus, a later House Report listed,
among examples of fair use, the "reproduction by a teacher
or student of a small part of a work to illustrate a lesson.
. . ." H.R. Rep. (1976) at 65.
A. The Purpose and Character of the Use
The first factor to be considered in determining the applicability
of the doctrine of fair use is the purpose and character of
the use, and specifically whether the use is of a commercial
nature or is for a nonprofit educational purpose. It is uncontroverted
that Rowley's use of the LAP was for a nonprofit educational
purpose and that the LAP was distributed to students at no
charge. These facts necessarily weigh in Rowley's favor. Nevertheless,
a finding of a nonprofit educational purpose does not automatically
compel a finding of fair use. n5
This court has often articulated the principle that a finding
that the alleged infringers copied the material to use it
for the same intrinsic purpose for which the copyright owner
intended it to be used is strong indicia of no fair use. Jartech,
Inc. v. Clancy, 666 F.2d 403 (1982); Universal City Studios,
Inc. v. Sony Corp., 659 F.2d 963 at 969. See also Iowa State
University v. American Broadcasting Cos., 621 F.2d 57 (the
scope of fair use is constricted when the original and the
copy serve the same function).
This same function test is addressed in the House of Representatives'
1967 Report, specifically in relation to classroom materials.
The Report states that, with respect to the fair use doctrine,
"textbooks and other material prepared primarily for the school
market would be less susceptible to reproduction for classroom
use than material prepared for general public distribution."
H.R. Rep. (1967) at 34.
In this case, both plaintiff's and defendant's booklets were
prepared for the purpose of teaching cake decorating, a fact
which weighs against a finding of fair use. n6
Because fair use presupposes that the defendant has acted
fairly and in good faith, the propriety of the defendant's
conduct should also be weighed in analyzing the purpose and
character of the use. n7 See 3 Nimmer, supra, @ 13.05[A] [1]
at 13-61.
Here, there was no attempt by defendant to secure plaintiff's
permission to copy the contents of her booklet or to credit
plaintiff for the use of her material even though Rowley's
copying was for the most part verbatim. n8 Rowley's conduct
in this respect weighs against a finding of fair use.
B. The Nature of the Copyrighted Work
The second factor to be weighed is the nature of the copyrighted
work. In Universal City Studios, Inc. v. Sony Corp., 659 F.2d
963, this court stated that analysis of this factor requires
consideration of whether the work is "informational" or "creative."
The court stated that "the scope of fair use is greater when
informational type works, as opposed to more creative products,
are involved." Id. at 972. Here, plaintiff's booklet involved
both informational and creative aspects. Some pages in her
booklet undoubtedly contained information available in other
cake decorating books or in recipe books. Other parts of her
booklet contained creative hints she derived from her own
experiences or ideas; certainly the manner in which plaintiff
assembled her book represented a creative expression. Thus,
on balance, it does not appear that analysis of this factor
is of any real assistance in reaching a conclusion as to applicability
of fair use.
C. The Amount and Substantiality of the Portion Used
The third factor to be considered is the amount and substantiality
of the portion used in relation to the copyrighted work as
a whole. Any conclusion with respect to this factor requires
analysis of both the quantity and quality of the alleged infringement.
See 3 Nimmer, supra, @ 13.05[A] [3] at 13-64.
With respect to this factor, this court has long maintained
the view that wholesale copying of copyrighted material precludes
application of the fair use doctrine. Benny v. Loew's, Inc.,
239 F.2d 532 (9th Cir. 1956), aff'd by an equally divided
Court sub nom. Columbia Broadcasting System v. Loew's, Inc.,
356 U.S. 43, 2 L. Ed. 2d 583, 78 S. Ct. 667 (1958). See also
Walt Disney Productions v. Air Pirates, 581 F.2d 751 at 758,
and Universal City Studios, Inc. v. Sony Corp., 659 F.2d 963
at 973. Other courts are in accord with this principle, and
two courts have specifically addressed the issue in relation
to copying for educational purposes.
Wihtol v. Crow, 309 F.2d 777 (8th Cir. 1962), involved alleged
infringement by the defendant, a school teacher and church
choir director, of a hymn entitled "My God and I". The defendant
Crow incorporated plaintiff's original piano and solo voice
composition into an arrangement for his choirs. He made forty-eight
copies of his arrangement and had the piece performed on two
occasions: once by the high school choir at the school chapel,
and once in church on Sunday. The music was identified as
"arranged Nelson E. Crow", but no reference was made to plaintiff
as the original composer. The Eighth Circuit affirmed the
trial court's finding that Crow had infringed plaintiff's
copyright and in addressing the issue of whether Crow's copying
constituted fair use, the court stated that "whatever may
be the breadth of the doctrine of 'fair use', it is not conceivable
to us that the copying of all, or substantially all, of a
copyrighted song can be held to be a 'fair use' merely because
the infringer had no intent to infringe." Id. at 780.
The court in Encyclopaedia Britannica Educational Corp. v.
Crooks, 447 F. Supp. 243 (W.D.N.Y. 1978), also considered
the issue of fair use in the educational context. In that
case, three corporations which produced educational motion
picture films sued the Board of Cooperative Educational Services
of Erie County ("BOCES") for videotaping several of plaintiffs'
copyrighted films without permission. BOCES distributed the
copied films to schools for delayed student viewing. Defendants'
fair use defense was rejected on the ground that although
defendants were involved in non-commercial copying to promote
science and education, the taping of entire copyrighted films
was too excessive for the fair use defense to apply. Id. at
251. See also Quinto v. Legal Times of Washington, Inc., 506
F. Supp. 554, 560 (D.D.C. 1981). n9
In this case, almost 50% of defendant's LAP was a verbatim
copy of plaintiff's booklet and that 50% contained virtually
all of the substance of defendant's book. Defendant copied
the explanations of how to make the decorating bag, how to
mix colors, and how to make various decorations as well as
the icing recipes. In fact, the only substantive pages of
plaintiff's booklet which defendant did not put into her booklet
were hints on how to ice a cake and an explanation of how
to make leaves. Defendant argues that it was fair to copy
plaintiff's booklet because the booklet contained only facts
which were in the public domain. Even if it were true that
plaintiff's book contained only facts, this argument fails
because defendant engaged in virtually verbatim copying. Defendant's
LAP could have been a photocopy of plaintiff's booklet but
for the fact that defendant retyped plaintiff's material.
This case presents a clear example of both substantial quantitative
and qualitative copying.
D. The Effect of the Use Upon the Potential Market for or
Value of the Copyrighted Work
The final factor to be considered with respect to the fair
use defense is the effect which the allegedly infringing use
had on the potential market for or value of the copyrighted
work. The 1967 House Report points out that this factor is
often seen as the most important criterion of fair use, but
also warned that it "must almost always be judged in conjunction
with the other three criteria." H.R. Rep. (1967) at 35. The
Report explains that "a use which supplants any part of the
normal market for a copyrighted work would ordinarily be considered
an infringement." Id. Here, despite the fact that at least
one of plaintiff's students refused to purchase her booklet
as a result of defendant's copying, the trial court found
that it was unable to conclude that the defendant's copying
had any effect on the market for the plaintiff's booklet.
Even assuming that the trial court's finding was not erroneous,
and that that finding must be accepted and weighed in Rowley's
favor, Sid & Marty Krofft Television Productions, Inc. v.
McDonald's Corp., 562 F.2d 1157, 1166 (9th Cir. 1977), it
does not alter our conclusion. The mere absence of measurable
pecuniary damage does not require a finding of fair use. Universal
City Studios, Inc. v. Sony Corp., 659 F.2d 963 at 974. Fair
use is to be determined by a consideration of all of the evidence
in the case. Mathews Conveyer Co. v. Palmer-Bee Co., 135 F.2d
73, 85 (6th Cir. 1943). Thus, despite the trial court's finding,
we conclude that the factors analyzed weigh decisively in
favor of the conclusion of no fair use. This conclusion is
in harmony with the Congressional guidelines which, as a final
point, also merit consideration with respect to the issue
of fair use in an educational context.
IV. THE CONGRESSIONAL GUIDELINES
The question of how much copying for classroom use is permissible
was of such major concern to Congress that, although it did
not include a section on the subject in the revised Act, it
approved a set of guidelines with respect to it. The guidelines
represent the Congressional Committees' view of what constitutes
fair use under the traditional judicial doctrine developed
in the case law. Conf. Rep. No. 1733, 94th Cong., 2d Sess.
70, reprinted in 1976 U.S. Cong. & Ad. News 5810, 5811. The
guidelines were designed to give teachers direction as to
the extent of permissible copying and to eliminate some of
the doubt which had previously existed in this area of the
copyright laws. The guidelines were intended to represent
minimum standards of fair use. 3 Nimmer, supra, @ 13.05[E]
[3] at 13-75. Thus, while they are not controlling on the
court, they are instructive on the issue of fair use in the
context of this case.
The guidelines relating to multiple copies for classroom use
indicate that such copying is permissible if three tests are
met. First, the copying must meet the test of "brevity" and
"spontaneity." "Brevity" is defined, for prose, as "either
a complete article, story or essay of less than 2,500 words,
or an excerpt from any prose work of not more than 1,000 words
or . . . 10% of the work, whichever is less. . . ." H.R. Rep.
(1976) at 68. Rowley's copying would not be permissible under
either of these tests.
The guidelines also provide a separate definition of "brevity"
for "special works." "Special works" are works "which often
combine language with illustrations and which are intended
sometimes for children and at other times for a more general
audience." Id. at 69. Plaintiff's booklet arguably would fall
into this category. The guidelines provide that, notwithstanding
the guidelines for prose, "'special works' may not be reproduced
in their entirety; however, an excerpt comprising not more
than two of the published pages of such special work and containing
not more than 10% of the words found in the text thereof,
may be reproduced." Id. Rowley's copying would not be permissible
under this test.
Under the guidelines, "spontaneity" requires that "the copying
is at the instance and inspiration of the individual teacher,
and . . . the inspiration and decision to use the work and
the moment of its use for maximum teaching effectiveness are
so close in time that it would be unreasonable to expect a
timely reply to a request for permission." Id. Defendant compiled
her LAP during the summer of 1975 and first used it in her
classes during the 1975-76 school year. She also used the
LAP for the following two school years. Rowley's copying would
not meet this requirement either.
The second test under the guidelines is that of "cumulative
effect". Id. This test requires that the copied material be
for only one course in the school. This aspect of the test
would probably be met on these facts. The test also limits
the number of pieces which may be copied from the same author
and the number of times a teacher may make multiple copies
for one course during one term. These latter two tests also
appear to be met. The facts indicate that defendant copied
only one piece of plaintiff's work. Defendant's conduct, therefore,
would satisfy the second test under the guidelines.
The third test requires that each copy include a notice of
copyright. As stated, defendant's LAP did not acknowledge
plaintiff's authorship or copyright and therefore would not
meet this test.
In conclusion, it appears that Rowley's copying would not
qualify as fair use under the guidelines.
We conclude that the fair use doctrine does not apply to these
facts as that doctrine has been articulated in the common
law, in section 107 of the revised Copyright Act, or in the
special guidelines approved by Congress for nonprofit educational
institutions. Rowley's LAP work, which was used for the same
purpose as plaintiff's booklet, was quantitatively and qualitatively
a substantial copy of plaintiff's booklet with no credit given
to plaintiff. Under these circumstances, neither the fact
that the defendant used the plaintiff's booklet for nonprofit
educational purposes nor the fact that plaintiff suffered
no pecuniary damage as a result of Rowley's copying supports
a finding of fair use.
The order of the district court is reversed, summary judgment
is entered for the plaintiff, and the case is remanded for
a determination of damages pursuant to the provisions of the
Copyright Act.
REVERSED and REMANDED.
n1 The other nine pages of defendant's booklet consisted of
the cover, the introduction, and seven pages of lesson plans.
n2 These twenty pages consisted of the cover page, the table
of contents, two pages on the technique of icing a cake, an
explanation of how to make leaves, six pages of lettering
designs, eight pages of seasonal designs, and one blank page
for notes.
n3 The procedural propriety of the trial judge's decision
to dismiss the suit rather than to grant one party's motion
for summary judgment is not considered here, since, in any
event, the case was disposed of on the merits.
n4 Section 107 states in pertinent part:
The fair use of a copyrighted work . . . 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, including whether
such use is of a commercial nature or is for non-profit 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.
n5 In MacMillan v. King, 223 F. 862 (D. Mass. 1914), the district
court was presented with the question of fair use in an educational
setting. In that case, plaintiff, a teacher of economics at
Harvard University, had written a textbook entitled "Principles
of Economics" for use in university economics courses.
The defendant acted as a private tutor of a variety of subjects,
including economics. Some of the defendant's students were
using the plaintiff's textbook in their economics class and
sought tutoring from the defendant in that course. In preparation
for the tutoring sessions, defendant prepared a typewritten
outline of the week's lessons. The outline was written to
mirror the organization of plaintiff's textbook and often
contained quotations from the textbook. None of the outlines
were ever sold and the defendant claimed that the fee charged
for the tutoring sessions was the same whether or not an outline
was prepared for the session. The court found that plaintiff's
copyright had been infringed due to "an appropriation [by
the defendant] of the author's ideas and language more extensive
than the copyright law permits." Id. at 866. With respect
to the argument that the copying was permissible because it
was done in furtherance of educational pursuits, the court
stated:
If the above conclusions are right, I am unable to believe
that the defendant's use of the outlines is any the less infringement
of the copyright because he is a teacher, because he uses
them in teaching the contents of the book, because he might
lecture upon the contents of the book without infringing,
or because his pupils might have taken their own notes of
his lectures without infringing. Id. at 867.
n6 Of course, this finding is not decisive on the issue of
fair use. The fact that both works were used for the same
intrinsic purpose carries less weight in a case such as this,
because plainly the doctrine of fair use permits some copying
of educational materials for classroom use. The critical issues
here are the nature and the extent of defendant's copying.
n7 In Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir.
1977), the compilers of the allegedly infringing garden catalogue
had copied names and addresses of florists and gardeners from
plaintiff's similar compilation. Although the copied information
was easily accessible from the telephone book, defendants
did not check or verify plaintiff's list. The court found
that defendants' short-cut saved them a lot of time and enabled
them to meet a deadline. Although the court was not addressing
the fair use issue at this point, it stated that the "appropriation
of the fruits of another's labor and skill in order to publish
a rival work without the expenditure of the time and effort
required for independently arrived at results is copyright
infringement." Id. at 6. Later, the court explicitly rejected
the fair use defense. See also Baker v. Selden, 101 U.S. 99,
25 L. Ed. 841 (1880) (the use of the same words or illustrations
in a book teaching an art is undoubtedly infringement) and
Runge v. Lee, 441 F.2d 579 (9th Cir. 1971), cert. denied,
404 U.S. 887, 30 L. Ed. 2d 169, 92 S. Ct. 197 (1971).
n8 Attribution is, of course, but one factor. Moreover, acknowledgment
of a source does not excuse infringement when the other factors
listed in section 107 are present. See, e.g., Toksvig v. Bruce
Publishing Co., 181 F.2d 664 (7th Cir. 1950).
n9 Contra, Williams & Wilkins Co. v. United States, 203 Ct.
Cl. 74, 487 F.2d 1345, 1352-1354 (Ct. Cl. 1973), aff'd, 420
U.S. 376, 43 L. Ed. 2d 264, 95 S. Ct. 1344 (1975) (the existence
of verbatim copying was not dispositive when the conduct encouraged
scientific progress and did not cause plaintiff substantial
monetary harm).
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