The Right Place of the Fair Use Doctrine 2

Infringement and Fair Use

Copyright is a set of statutory rights granted “to the proprietor of an intellectual production to its exclusive use and enjoyment to the extent specified in the statute.”1 According to this definition, copyright is an exclusive set of rights subject to limitations set by the statute granting such right. This definition is reflected in the Intellectual Property Code (IP Code) which enumerates the following set of exclusive economic rights subject to the provisions on the Chapter on Limitations on Copyright:

  1. Reproduction of the work or substantial portion of the work;
  2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
  3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
  4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;
  5. Public display of the original or a copy of the work;
  6. Public performance of the work; and
  7. Other communication to the public of the work.2
Protected Rights

If any of these rights are exercised without the consent of the copyright holder in an injurious manner such that the original work is substantially diminished, then there is infringement.3 One of the limitations set by the IP Code on the exclusivity of these rights, which is arguably the most important and expansive limitation (as it applies to all rights of copyright and all copyrightable works4) is fair use.5 Section 185 of the IP Code simply defines fair use in the negative: “fair use of a copyrighted work…is not an infringement of copyright.”6

These two concepts of infringement and fair use are, therefore, two opposite ends of the spectrum of possible uses of copyrighted works. As such, use of a copyrighted work may either be fair or an infringement based on whether such use is injurious or in contravention to the purpose of copyright. 7

Infringement

As discussed, not all copying is infringement. In other words, copying per se does not equate to a finding of an infringement. Thus, even if a person willfully copies a few pages of a book, or even the whole thereof, it does not automatically mean that he is guilty of infringement. According to Microsoft Corporation v. Manansala, there is an actionable copyright infringement when any of the acts exclusively granted to the copyright owner is committed without his consent.8 In Microsoft, the Court reiterated its earlier pronouncement that:

[i]nfringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright.9

It further stated that the “gravamen of infringement” is the unauthorized performance of any of the acts exclusively granted by the statute, not merely the unauthorized manufacturing of intellectual works.10

Infringement

To demonstrate a prima facie case of infringement, the plaintiff only needs to prove two elements: “(1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original.”11 The ownership of a valid copyright is comprised of the following:

  1. originality in the author;
  2. copyrightability of the subject matter;
  3. a national point of attachment of the work, such as to permit a claim of copyright;
  4. compliance with the applicable statutory formalities; and
  5. (if the plaintiff is not the author) a transfer of rights or other relationship between the author and the plaintiff so as to constitute the plaintiff as the valid copyright claimant.12

Most of the time, there is no dispute regarding the element of ownership as it is easily demonstrated by a certificate of registration13 or an affidavit evidence that are deemed prima facie proof of ownership.14

A little bit more contentious, but still an easy burden, is the second element—copying which amounts to an actionable copying.15 There are two components of actionable copying: (1) actual copying and (2) “the copying amounts to an improper or unlawful appropriation.”16

In fair use cases, the first component is almost always undisputed.17 After all, fair use necessitates a use or a copying of the original work.

Proving the second component requires a demonstration that the alleged infringing work has “’substantial similarity’ to protected expression in the infringed work.”18 There is substantial similarity when what was copied in the earlier work was protected expression and the amount copied was more than de minimis.19

In this connection, expression is protected when it is original, which simply means that the work was independently created by the author and that it possesses a modicum of creativity.20 Meanwhile, determining whether the amount copied was more than de minimis is simply an analysis of how much and how vital the copied parts are.21

Once all these are established, there is already a prima facie case of infringement.22 Curiously, there is no inquiry as to the proof of harm to the plaintiff23 even though infringement is supposedly injurious copying or appropriation.24 In this regard, an analysis of fair use in determining infringement closes this seeming gap between actionable copying and injurious copying.25

Fair Use

Fair use is one of the most important concepts in copyright.26 It has been described as a privilege;27 other times, an exception or an excuse;28 sometimes, a right.29 Indeed, fair use escapes a definitive meaning. But the language of the law makes one thing clear: fair use is not an infringement,30 not even an excused one.31

Instances of fair use may be seen in the academe such as photocopying of copyrighted materials which have become widespread as it made learning materials more accessible to students and teachers alike;32 in the field of research where researchers resorted to photocopying in order to enable easier dissemination of resources;33 for reporting purposes;34 or for criticizing another’s work.35

When a use of a copyrighted work is deemed fair, then there can be no infringement.36 There are four non-exclusive factors37 in determining whether a particular act qualifies as fair use of a copyrighted work:

  1. The purpose and character of the use, including whether such use is of a commercial nature or is of 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.38
Fair Use

Determining whether an act constitutes fair use requires a case-by-case analysis of the relevant factors without bright-line rules.39 When the factors are considered, they are weighed together, not in isolation from each other, thereby creating a balancing act in light of the purposes of copyright.40 The natural consequence of this flexibility is vagueness in the application of the doctrine such that fair use cases are often shrouded in uncertainty and unpredictability.41 This, however, is by design as “the doctrine is intended to contemplate all circumstances that could possibly justify protecting a use from copyright’s suppression.”42 Such was the intention so that the fair use doctrine can guarantee breathing space within the confines of copyright.43

In cases where there is much uncertainty, presumption plays an essential role – indeed, “presumption becomes dispositive.”44 When there is doubt as to where the evidence tilts regarding the issue, he who has the burden of proof loses.45 At present, fair use is considered an affirmative defense in which the defendant has the burden of proving fair use.46 Thus, as there is often doubt as to the determination of fair use,47 the defendant is likely to lose because of the presumption.

Ironically, the intended uncertainty of the fair use doctrine which was designed to protect fair users now works against them.48 This has not always been the case. For a long period of time, fair use has been the norm and copyright the exception.49 Thus, the burden of proving unfair use to prevail in an infringement case originally rested with the copyright holders.50

To understand the foundation of the shift in the treatment of fair use, it is thus imperative to examine the historical development of fair use and copyright law which shall be the topic of the next part of this series.

This series The Right Place of the Fair Use Doctrine argues that fair use is a right, and as such, it is the copyright holder's burden to prove that an alleged infringer violated fair use in cases of copyright infringement.

  1. Habana v. Robles, 310 SCRA 511 (C. J. Davide, Jr., dissenting opinion) (citing 18 C.J.S. Copyright and Literary Property, § 1).↩
  2. Intellectual Property Code, § 177. (“Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize, or prevent the following acts…”).↩
  3. Habana, 310 SCRA 511; See Microsoft Corporation v. Manansala, 773 SCRA 345 (2015).↩
  4. L. Ray Patterson & Stanley F. Birch, Jr., A Unified Theory of Copyright (Craig Joyce ed., 2009), printed in 46 Hous. L. Rev. 215, 268 (2009).↩
  5. See Intellectual Property Code, § 185.↩
  6. Id.↩
  7. See Ned Snow, The Forgotten Right of Fair Use, 62 Case W. Res. L. Rev. 135, 151 (2011). But see Lyman Ray Patterson, Free Speech, Copyright, and Fair Use, 40 Vand. L. Rev. 1, 44 (1987) (“Therefore, although three types of uses may be made of a copyrighted work--an unfair use, a fair use, and an ordinary use—the failure to distinguish between the use of the work and the use of the copyright results in the conclusion that there are only two types of use—unfair and fair.”).↩
  8. Microsoft Corporation, 776 SCRA 345.↩
  9. Id. (citing Columbia Pictures, Inc. v. Court of Appeals, 261 SCRA 144, 183-84 (1996)).↩
  10. Microsoft Corporation, 776 SCRA 345 (citing NBI-Microsoft Corporation v. Hwang, 460 SCRA 428 (2005)).↩
  11. Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 361 (1991). ↩
  12. Sloan, Jason E., An Overview of the Elements of a Copyright Infringement Cause of Action - Part I: Introduction and Copying, American Bar Association (last accessed 22 June 2017) (citing 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01[A] (2011)). ↩
  13. Lydia Pallas Loren, Fair Use: An Affirmative Defense?, 90 Wash. L. Rev. 685, 688 (2015).↩
  14. Intellectual Property Code, § 218. ↩
  15. Lydia Pallas Loren, Fair Use: An Affirmative Defenese?, 90 Wash. L. Rev. 685, 688 (2015).↩
  16. Id.; See Habana, 310 SCRA 511.↩
  17. Loren, at 688.↩
  18. Id. at 689.↩
  19. Id.↩
  20. Feist, 499 U.S. at 345.↩
  21. Loren, supra note 73, at 689.↩
  22. Id.↩
  23. Id.↩
  24. See Habana, 310 SCRA 511; Sony Corp. v. Universal City Studios Inc., 464 U.S. 417, 433 (1984).↩
  25. See Loren, at 689.↩
  26. See Matthew Sag, God in the Machine: A New Structural Analysis of Copyright’s Fair Use Doctrine, 11 Mich. Telecomm. Tech. L. Rev. 381, 435 (2005) (“Fair use is the god in the copyright machine.”).↩
  27. See, e.g., ABS-CBN Corporation v. Gozon, 753 SCRA 1 (2015); Harper & Row Publishers, Inc. v. Nation Enters, 471 U.S. 539, 546 (1985); Lawrence v. Dana, 15 F. Cas 26 (C.C.D. Mas. 1869) (No. 8,136). ↩
  28. See, e.g., Gozon, 753 SCRA 1; Ticketmaster v. Tickets.com, 2001 U.S. App. LEXIS 1454 (9th Cir. 2001); Suntrust Bank, 268 F.3d 1257.↩
  29. See, e.g, Sony, 464 U.S. at 433; Lenz, 815 F.3d at 1151. ↩
  30. Intellectual Property Code, § 185.↩
  31. But see Harper & Row, 471 U.S. at 569 & Campbell, 510 U.S. at 590.↩
  32. But see Isagani Cruz. Criminals in the Classroom, Phil. Star (20 September 2012) (last accessed 21 June 2017).↩
  33. But see American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1995) (U.S.).↩
  34. But see Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985).↩
  35. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); Suntrust v. Houghton Mifflin Co., 252 F.3d 1165 (11th Cir. 2001) (U.S.).↩
  36. See Intellectual Property Code § 185.↩
  37. Field v. Google, 412 F.Supp.2d 1106, 1117 (D. Nev. 2006) (U.S.) (“court is to consider factors including four specifically listed”).↩
  38. Intellectual Property Code, § 185.↩
  39. Campbell, 510 U.S. at 577-78. ↩
  40. Id.↩
  41. See David Nimmer, “Fairest of them All” and Other Fairy Tales of Fair Use, 66 Law & Contemp. Probs. 263 (2003). ↩
  42. Snow, at 140 (citing Campbell, 510 U.S. at 577).↩
  43. Campbell, 510 U.S. at 579.↩
  44. Snow, at 140.↩
  45. See Dee Jay’s Inn & Café and/or Melinda Ferraris v. Ma. Lorina Rañeses, G.R. No. 191823, 05 October 2016; Maria Tin v. People, 362 SCRA 594 (2001) (“Under [the equipoise rule], where the evidence on an issue of fact is in equipoise or there is doubt on which side the evidence preponderates, the party having the burden of proof loses.”) ↩
  46. See Campbell, 510 U.S. at 590; Cf. Gozon, 753 SCRA 1.↩
  47. Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Cases, 1978-2014 (14 April 2015) (last accessed 22 June 2017) (One of the conclusions is that fair use cases show unexceptional reversal and appeal rates thereby highlighting the unpredictability of such cases.). ↩
  48. Snow, 30, at 141.↩
  49. Id.↩
  50. Id.↩