Prof. Doug Lichtman, UCLA School of Law
December 20, 2013

The fair use doctrine is one of the most important statutory constraints on copyright protection.  As readers here surely know, the doctrine empowers courts to excuse, on policy grounds, certain acts that would otherwise constitute copyright infringement.  The doctrine ensures the viability of a whole host of worthwhile works and outcomes, defending (for example) the copying of expression in instances where that copying is done in the service of some sort of legitimate public commentary, criticism, parody, teaching, or research effort.  When I teach the fair use doctrine, however, I am always struck by the tendency of courts and commentaries to adopt what I refer to as “fair use fictions”: minor to major disingenuous statements that transform what should be a hard case on policy grounds into what seems like an easy one.

The example I always start with is the Ninth Circuit’s decision in Sega v. Accolade.  At issue in the case was the information that a video game developer needed in order to produce a game that would be compatible with Sega’s Genesis video game console.  The video game developer (Accolade) had copied an officially licensed game in order to reverse engineer that game and deduce the information it needed.  Sega in response sued, pointing (among other things) to that very act of copying.  Accolade defended by wrapping itself in the public policy arguments of fair use.  One of the relevant policy issues was the question of whether this act of copying ultimately caused economic harm to Sega.  If not, the video game developer’s fair use argument would be considered particularly strong.  If so, that economic consideration would weigh against fair use, although obviously other considerations might still have led the court to rule that the copying was fair.

So what did the Ninth Circuit say about this issue?  Common sense tells us that, clearly, having an unauthorized game developer making games for the console was bad for Sega.  Sega surely wanted to control who made games, and how good those games were, and when those games were released, and at what prices, and on what topics; Sega wanted to control those and related levers because that was how Sega could best maximize the value of its entire video game ecosystem.  Sega likely also in some instances wanted to limit competition; if Sega had a licensed football game, Sega did not want some unlicensed firm to enter the market with a comparable product and take away business from the licensed game.

All that would have made the fair use analysis hard; but the Ninth Circuit made the case look easy by asserting that there was actually no problem here at all:

There is no basis for assuming that Accolade’s “Ishido” has significantly affected the market for Sega’s “Altered Beast,” since a consumer might easily purchase both; nor does it seem unlikely that a consumer particularly interested in sports might purchase both Accolade’s “Mike Ditka Power Football” and Sega’s “Joe Montana Football,” particularly if the games are, as Accolade contends, not substantially similar.

Another case that typically catches my eye is the Ninth Circuit’s decision in Perfect 10 v. Amazon.  The plaintiff in that case ran a website that featured pictures of (how shall I say?) attractive women.  The core of the lawsuit was an objection to how the Google search engine was using those pictures, in thumbnail form, as part of its search results.  Google raised a fair use defense; in analyzing the fair use issue, the Ninth Circuit had to explain why Google’s behavior mattered to Perfect 10’s business.  The Court’s take?   The only economic harm the Court could think of was that “the availability of Google’s thumbnail images [might] harm Perfect 10’s market for cell phone downloads.”  The Court then rejected this strawman harm as hypothetical, and declared the case an easy one.

But hold on.  On the cell phone?  Really?  How many people plausibly are out there yearning to pay for access to pictures of attractive women that they then want to view in small scale on their cell phones?  The real market here is a market for images that will be viewed in dorm rooms and bedrooms; quietly at desktop computers and not-so-quietly on giant big-screen plasmas.  Whether Google’s thumbnails displaced the market for cell-phone images was utterly irrelevant.  Perfect 10 did not sue because its non-existent market for cell phone images was somehow threatened.  That was a fiction, and one that made the case seem unduly easy.

So why did Perfect 10 sue?  Before Google started offering its thumbnail search images, Perfect 10 was the victim of copyright infringement by others.  College students, for instance, would pay for access to the site, pilfer an image or two, and then put those images up on their personal websites and social media sites.  You can easily image, for instance, a young man jokingly putting a favorite image on his blog and labeling it “my girlfriend,” much to his own and his friends’ delight.  This sort of infringement likely did not matter much to Perfect 10.  It was in part advertising for the service; besides, a single image or even a few images on an inferior website was no substitute for full access to the real Perfect 10 site, filled as it was with an enormous quantity of (presumably high quality) images and options.

Introduce the Google search engine, however, and that dispersed, small-scale, harmless infringement became a serious competitive threat.  Google, after all, made it easy for a user to run a search and find a large number of those one-off infringing images, all in one place; the Google search-results page was in essence a directory of infringing blogs and sites, and that search-results page therefore became a dangerous substitute for the very portfolio of images that Perfect 10 itself was trying to sell.  The problem was not the thumbnails, then; the problem was that Google, by amalgamating what had previously been dispersed, created a portal that had comparable scope and quality to the original Perfect 10 website from which all of those images had been unlawfully taken.

Does that mean that Google’s fair use defense should have been rejected?  No.  But the Ninth Circuit’s fiction – its focus on the economics of thumbnails combined with its complete failure to discuss the true economic harm at issue here – made the case unfairly easy.  There was real economic harm at issue in the case; it had nothing to do with cell phones.

There are many other examples of “fair use fictions” that I invoke when teaching the basic copyright course.  And my point in each is not to say that the given fair use outcome in any of these cases was necessarily wrong.  My point, instead, is to emphasize the fiction: the move where the relevant court or commentator makes a hard case look easy, and deprives the system of the chance to really grapple with the challenge at hand.