Fair Use Week 2023 (10th Anniversary): Day Four With Guest Expert Juliya Ziskina

The second post of Day Four of the 10th Anniversary of Fair Use Week with a write up from Juliya Ziskina, Policy Fellow at Library Futures. Juliya examines two pending fair use cases and asks an important existential question.  -Kyle K. Courtney

Is Fair Use Really the Answer to Life, the Universe, and Everything?  

By Juliya Ziskina

Here on Harvard Library’s Fair Use Week blog, it is not a shocking statement to say that we love fair use. Fair use is both crucial and nebulous—indeed, its nebulousness is part of its design, given that it serves as a type of safe haven, decided on a case-by-case basis. Where statutes in the modern day are formulaic and often distilled into a multi-part judicial test, fair use is relatively open-ended, allowing judges a good amount of latitude—not just in terms of how to apply the doctrine, but also when. As such, fair use’s role in copyright law has grown as litigants and judges often use fair use as a backstop for other means of deciding copyright claims.

Fair use is undoubtedly important, but overreliance on it is not necessarily beneficial for the outcome of copyright cases, or even for the doctrine itself. As Authors Alliance Executive Director Dave Hansen wrote during Fair Use Week in 2020, there is a “pressure to look to fair use as a way to avoid other hard questions about other areas of copyright law. If we look to fair use to solve all our copyright questions, that pressure could start to water down and ultimately threaten the coherence of the doctrine.” Similarly, Public Knowledge Legal Director John Bergmayer wrote nearly 10 years ago: “If you love fair use, give it a day off once in a while.”

Exclusively relying on fair use can result in unintended consequences. Employing a fair use analysis when one is not necessarily needed can undermine the stability of the doctrine, and can preclude other means of analysis that are not only better suited to the facts of a case, but could create better precedent.

Two recent cases currently before the courts are meaningful examples of Bergmayer’s and Hansen’s prescient observations: Andy Warhol Foundation v. Goldsmith, and American Society for Testing and Materials, et al. v. Public.Resource.Org. I’ll examine each of these in turn, and discuss why fair use was applied too broadly in Warhol and is also not the suitable framework for ASTM v. Public.Resource.Org.

Andy Warhol Foundation v. Goldsmith

In 1984, photographer Lynn Goldsmith licensed to Vanity Fair the right to use one of her photographs of Prince for the purpose of creating an illustration that Vanity Fair was commissioning for an article. Unbeknownst to Goldsmith, Warhol created the illustration for Vanity Fair. Further—also unbeknownst to Goldsmith—Warhol used Goldsmith’s photograph to create 15 additional works using the silkscreen process, known as his Prince Series

Goldsmith claims that she first discovered the existence of the Prince Series after Prince’s death in 2016, when Vanity Fair used one of the Prince Series images in a tribute issue. The Andy Warhol Foundation (AWF) sought a declaratory judgment that the Prince Series was fair use. Goldsmith counterclaimed for copyright infringement.

The lower court ruled in favor of AWF, finding that Warhol’s work was transformative and therefore that it was a fair use. The Second Circuit reversed on appeal. The Second Circuit focused on visual similarity of the works and the fact that both were “created as works of visual art” and are “portraits of the same person.” The Second Circuit refused to “seek to ascertain the intent behind or meaning of the works” contrary to the Supreme Court in Campbell v. Acuff-Rose Music, which instructed that courts must view a work as transformative if it adds a new “meaning or message.” (Importantly, the Campbell Court also made clear that a finding of transformative use, while important, is not necessary for a finding of fair use.)

And, as such, the district court and the Second Circuit positioned Warhol and its fair use analysis as revolving around a single, critical concept: “transformativeness.” The issue with this is that the vast majority of modern courts already use the transformative use concept throughout the fair use inquiry as the dominant means of resolving various fair use questions. Once courts determine that a use is transformative, that determination often seems to dictate the rest of the fair use analysis and, ultimately, the case’s outcome. As one study asked: “is transformative use eating the fair use world?”

Warhol is a useful example. Rather than centering on the lawfulness of the Prince Series, the lower courts should have focused more narrowly on the lawfulness of the Andy Warhol Foundation’s licensing of the Prince Series for reproduction and distribution in Vanity Fair. Judge Dennis Jacobs argued in his concurring opinion that, properly understood, this case does not necessarily address whether the creation of appropriation art is a fair use, but whether the licensing of a derivative image for widespread distribution in a magazine is a fair use. According to Judge Jacobs, fair use is about uses, not works. Perhaps, he offered, some uses of the Prince Series may be within the scope of fair use, even if others are not. Specifically, while licensing the Prince Series as images of Prince competes directly with Goldsmith’s exploitation of her photograph, the creation of the original artworks did not, nor do other sorts of licenses (such as museum displays).

Why does it matter that the courts viewed the Warhol case through a broad fair use lens? As detailed in the Library Futures, et. al. amicus brief, this decision could impact libraries and archives because research, teaching, scholarship, and preservation rely on the stability of fair use. 

Upending our understanding of fair use could upend many of a library’s functions and make it harder for libraries and researchers to leverage fair use to create new research tools or improve accessibility of collections, such as in Authors Guild v. Google and Authors Guild v. HathiTrust. Incidentally, in an attempt to make fair use more predictable to supposedly ensure consistent application, the Court risks undermining the stable understanding of fair use that has already existed since Campbell. This potential result could have been avoided by taking a narrower fair use view.

American Society for Testing and Materials, et al. v. Public Resource Org

ASTM v. Public.Resource Org, currently pending in the D.C. Circuit Court of Appeals, is also a case that unsuitably applies a fair use analysis. In ASTM v. Public.Resource Org, several major industry associations, including ASTM, are suing to prevent Public.Resource.Org, a small, but mighty nonprofit organization, from posting reference standards (such as building codes) online. Many agency regulations incorporate reference standards developed by private organizations, such as ASTM. Although these standards have the force and effect of law once they are incorporated in agency regulations, they are not printed in the Federal Register or the Code of Federal Regulations and they can often be difficult for the public to access. ASTM sells hard copies and digital versions, and makes their standards available for free online in “read-only” mode. Public.Resource.org—an organization devoted to making laws and other government documents available to the public—purchased physical copies of the plaintiffs’ standards and scanned and digitized copies to make them freely available online to the public. All of these standards have been incorporated by reference into federal law. ASTM and other standard development organizations sued Public.Resource Org for copyright infringement.

The district court concluded that such standards as incorporated into the law are protectable by copyright. On appeal, the D.C. Circuit Court of Appeals reversed and remanded, sidestepped addressing whether the standards retain copyright after incorporation by reference into law, and instead instructed the lower court to analyze the Public.Resource Org’s use of the standards (e.g. posting them online) primarily through the lens of fair use. The court recognized that there is a spectrum of incorporated standards that ranges from those that “impose legally binding requirements” to those that “serve as mere references but have no direct legal effect.” This wide variation created difficulties in determining which standards are actually “the law.” This conclusion led to the court’s sole focus on Public.Resource Org’s fair use defense. In March 2022, the lower court issued an opinion that would allow Public.Resource Org to reproduce 184 standards under fair use, partially reproduce one standard, and deny reproduction of 32 standards that were found to differ in substantive ways from those incorporated by law. ASTM appealed the case to the D.C. Circuit, where it is currently pending.

Performing this analysis through a fair use lens precludes a more important discussion about copyrightability and public access to the law. As argued in the Library Futures, et. al. amicus brief in support of Public.Resource.org, when a law-making entity incorporates a standard by reference into a rule or regulation, the contents of the whole of that publication must be freely and fully accessible by the public. No one can own the law, and because fair use is only relevant for copyrighted works and not those in the public domain, it should not be the primary analysis here.

By framing the case through a fair use analysis, the court also avoids grappling with a broader question: what constitutes reasonable access to the law? Arguably, ASTM’s “online reading rooms” are not a sufficient substitute for unrestricted access to the law, because they are not actually “free.” In order to obtain access, ASTM requires users to register with their personal information, and agree to a voluminous, multi-part privacy policy and a nearly 1000-word contract that restricts users from transmitting the documents or performing simple cut and paste tasks. This scenario brings to mind an exchange about access in The Hitchhiker’s Guide to the Galaxy:

“But the plans were on display…”

“On display? I eventually had to go down to the cellar to find them.”

“That’s the display department.”

“With a flashlight.”

“Ah, well, the lights had probably gone.”

“So had the stairs.”

“But look, you found the notice, didn’t you?”

“Yes,” said Arthur, “yes I did. It was on display on the bottom of a locked filing cabinet stuck in a disused lavatory with a sign on the door saying ‘Beware of the Leopard.’”

 –Douglas Adams, The Hitchhiker’s Guide to the Galaxy

Judge Katsas, in his concurrence in ASTM v. Public.Resource.Org,  echoed a similar idea, noting that “access to the law cannot be conditioned on the consent of a private party, just as it cannot be conditioned on the ability to read fine print posted on high walls.”

Ironically, the fair use analyses in AWF v. Goldsmith and ASTM v. Public.Resource.Org should be swapped: rather than centering on the works themselves, the Warhol Court should be centering on the use of the works at issue; and, rather than centering on Public.Resource.Org’s use of the standards, the court should be centering on the copyrightability of the standards themselves.  

These cases illustrate the important point that, despite how much we love fair use, before we jump to its analysis we should ask: “Is it copyrightable in the first place?” and “Is there a better lens through which to look at this case?”

Juliya Ziskina is a Policy Fellow at Library Futures and an attorney in New York City. While she was a law student, Juliya co-founded and led a successful initiative for an institutional open access policy at the University of Washington.

Fair Use Week 2023 (10th Anniversary): Day Four With Guest Expert Dave Hansen

I am delighted to host our first post of Day Four of the 10th Anniversary of Fair Use Week with a write up from Dave Hansen, copyright expert and Executive Director Authors Alliance. Dave winds us through the complex relationship between licensing language and fair use in “How to Evade Fair Use in Two Easy Steps.”  -Kyle K. Courtney

How to Evade Fair Use in Two Easy Steps

by David R. Hansen

Fair use is an essential part of the Copyright Act’s careful balance—on the one hand protecting rightsholders’ interests, while on the other “[permitting and requiring] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” The Supreme Court has explained that fair use is a core part of what makes the Copyright Act compatible with the First Amendment guarantees of free expression. “First Amendment protections are ‘embodied . . . ’ in the ‘latitude for scholarship and comment’ safeguarded by the fair use defense.”

Fair use is what has allowed biographers to quote critically from originals when writing their own works, even when the copyrights are owned by the rich and powerful, as in cases involving L. Ron Hubbard and Howard Hughes. It’s what allows researchers to write and quote from unpublished manuscripts for literary criticism, as in this case about scholarly use of an unpublished work by Marjorie Kinnan Rawlings Baskin. It’s also what has allowed libraries to provide copies of books to blind readers, conduct research across texts, and make preservation copies. It allows reuse of images in support of news and political commentary, supports researchers who use tools like Google Image Search, and allows artists to use source materials to create transformative new works, such as parody.

Two easy steps to evade fair use

Given its importance, it may surprise you to learn that fair use is remarkably easy to evade. Savvy copyright owners do it all the time.  It takes just two easy steps.

First, you need to write a contract, specifically a “license” for the use of your work. In it, you dictate the terms on which you provide access to your work. You can impose almost any restrictions you like. Sometimes, contracts will restrict certain classes of uses: “you cannot reproduce this content for commercial use” or “you may download one copy of this work for personal consultation; you cannot reproduce or share any part of this work in whole or in part in any form, or share in any form with the public.”

Other contractual terms guard against specific threats. For example, Disney once brought (and won) an infringement suit over its movie trailers, which Disney would license to websites only if they agreed that the website “may not be derogatory to or critical of the entertainment industry or of [Disney] (and its officers, directors, agents, employees, affiliates, divisions and subsidiaries) or of any motion picture produced or distributed by [Disney].”

The key here is that you can essentially rewrite the rules, and forbid those aspects of fair use that you disapprove of. Want to make sure critics can’t use your words against you? Just say they can’t. Want to make sure libraries don’t make preservation copies without paying you first? Want to make sure that instructors of college classes can only use excerpts of your book—even very small excerpts—if they pay every single time? It’s your prerogative.

Second, you need to make sure that everyone who gains access to your work is bound by your license. This sounds hard, but with online distribution, it’s actually pretty easy.

In the world of print copies, this was difficult because copies had a way of traveling beyond the control of the original purchaser. The “first sale” doctrine meant that buyers of copies could freely transfer those copies to third-party buyers (e.g., someone who buys a book at a used book store, or who borrows a book from a library) or give them away. So, even if you got the original buyer to agree to your terms, those downstream users didn’t have to. But there is no widespread acceptance of a buyer’s “digital first sale.” So, buyers can’t just transfer the copies they purchase to downstream users. Everyone who wants access to the digital copy must agree to the license. All you have to do is make sure that your materials are distributed exclusively on digital platforms that are subject to your terms, and you’re all set.

That’s it. Two easy steps and you’ve practically eliminated fair use. For any use you haven’t already authorized, you can just say no, require them to pay whatever you want, or just refuse to grant access. And if they don’t comply, at a minimum you’ve got at a slam-dunk breach of contract claim.

Is it seriously that easy?

Unfortunately, this two-step approach–sometimes known as “contractual override”–reflects the prevailing wisdom and practice of many copyright owners. It is widely used online, by parties ranging from massive corporations such as Amazon or Netflix to small publishers and news outlets. And though it hasn’t been completely tested in the courts, when it has come up, the licensors have mostly prevailed. Because U.S. law so venerates “freedom of contract,” it has been difficult for policymakers or the courts to address the problem of rightsholders forbidding lawful fair uses under the terms of their licenses.

How did we get to this point? This is not a new or unexpected problem. You can look back to 1993, when law professor Jane Ginsburg  foresaw this state of affairs just as the possibilities of the internet were coming into view:

“In the digital environment posited here, contract protection may not be the fragile creature presumed in prior intellectual property preemption decisions. If access to works could be obtained only through the information provider (directly or through an authorized online distributor), and if copying could be electronically tracked or prevented, no ‘third parties’ to the contract would exist. When ‘we’re all connected,’ no functional difference may exist between a contract and a property right. At that point, it becomes necessary to consider whether limitations incorporated in the copyright law should be imported to its contractual substitute.”

Numerous others in the legal community soon made similar observations, such as Julie Cohen, Niva Elkin-Koren, and Andrew Shapiro, among others, who also wrote about aspects of this then-new challenge.

How to Protect Fair Use from Contractual Override

A handful of efforts to address this problem have been mounted in Congress. In 2003 and 2005, representative Zoe Lofgren introduced a bill appropriate called the BALANCE Act (“Benefit Authors without Limiting Advancement or Net Consumer Expectations”), which addressed both the unavailability of “first sale” in the digital environment and contractual override of fair use. The proposed legislation provided that “[w]hen a digital work is distributed to the public subject to nonnegotiable license terms, such terms shall not be enforceable under the common laws or statutes of any State to the extent that they restrict or limit any of the limitations on exclusive rights under this title.” The BALANCE Act was never passed however, and hasn’t been revisited in Congress since 2005.

Recent actions in other jurisdictions to address similar issues may provide renewed legislative interest and guidance on possible models to adopt. For example, in 2014, the UK passed legislation that limits contractual override of user rights—providing specifically that “to the extent that a term of a contract purports to prevent or restrict the doing of any act which, by virtue of this section, would not infringe copyright, that term is unenforceable.” This language has been applied in the UK to exceptions that allow for making copies for persons with print and other disabilities, research and teaching, and text and data-mining. Similarly, the EU’s recent Copyright in the Digital Single Market Directive contains similar protections for copyright exceptions, as does Singapore’s recent Copyright Bill. So far, though, there has been no indication of real interest from Congress in the United States.

It’s also possible that states could craft legislation. There has recently been a surge of interest in bills in a number of states that are aimed at protecting libraries’ ability to license books on reasonable terms (bills that Authors Alliance generally supports). These bills also go beyond what fair use protects—seeking to, for example, ensure that libraries have broad access to ebooks on “reasonable terms,” and addressing problems of major publishers simply refusing to license books to libraries. Maryland was the first state to actually pass such a law, but it was struck down as preempted by federal copyright law in AAP v. Frosh. The court concluded that because federal copyright law dictates the scope of rights governing public distribution of works, it was impermissible for the state of Maryland to interject its own rules about the scope of the publishers’ distribution rights.

It’s possible that state legislation that is more narrowly tailored—e.g., a state law that focused solely on protecting fair use—would not suffer the same fate as the Maryland law. In fact, the reasoning of the Maryland e-lending case would seem to support such a state law, since a state law protecting fair use would be maintaining, rather than altering, the balance of rights as defined by federal law.

Legal Strategies in Court

It’s also possible that the courts could intervene, though to date they have mostly declined to do so. It seems to me there are two or three viable ways for judicial intervention to be effective:

First, Courts could conclude that contracts (created under and governed by state law) are preempted by federal copyright law, which is what defines the scope of copyright’s exclusive rights.  The Constitution provides that federal law supersedes conflicting state law, and Congress has provided specific instructions on how such preemption should apply, stating that “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 . . .  are governed exclusively” by federal copyright law. Those exclusive rights of copyright owners are explicitly defined as being “subject to” the limitations including fair use, so it would make some sense for courts to view state law expansions of those rights as being in conflict with and therefore preempted by federal copyright law.

However, there are several negative precedents indicating that this approach may not work. Take Bowers v. Baystate, for example, a Federal Circuit case involving two competing computer aided design (CAD) software companies. Bowers contended that Baystate violated the terms of use on its software by reverse-engineer its product in violation of a clause explicitly prohibiting such use. Baystate contended that such reverse engineering was protected by fair use and that contract terms to the contrary should be preempted as inconsistent with federal law. The Federal Circuit, observing that as a general matter “most courts to examine this issue have found that the Copyright Act does not preempt contractual constraints on copyrighted articles,” concluded that “private parties are free to contractually forego the limited ability to reverse engineer a software product under the exemptions of the Copyright Act. . . . [A] state can permit parties to contract away a fair use defense or to agree not to engage in uses of copyrighted material that are permitted by the copyright law, if the contract is freely negotiated.”

Other courts addressing state contract law and other state law limitations on fair use (e.g,. this California right of publicity case) have largely followed the same approach. One notable exception to is Vault Corp. v. Quaid Software, Ltd., in which the Fifth Circuit invalidated a Louisiana law that permitted contracts to prohibit reverse engineering, even though federal law provides a specific exception (Section 117) that allows for such reverse engineering. Although not directly addressing fair use, the court’s holding could apply equally to state law contractual restrictions on fair use. The issue has not directly reached the Supreme Court, though there is a case, Genius v. Google, currently pending on a Petition for Certiorari that asks the Court to weigh in on the broader question of when federal law preempts contracts under state law.

Second, courts could conclude that the state common law (the body of law made up of legal principles established by courts over the years) on contracts does not permit contractual restrictions on fair use. This could come in a few different forms. One option might be for courts to consider more seriously the question of whether a valid contract is actually created in the first place, particularly in situations where users have no meaningful opportunity to negotiate terms and little ability to even understand what restrictions they are agreeing to. For years, following the lead of the Seventh Circuit Court of Appeals in ProCD v. Zeidenberg, courts have been willing to accept that a valid agreement is formed even in situations with “shrinkwrap” or “browsewrap” licenses. But, despite ongoing criticism of this approach by many, the approach has prevailed. Courts might also take more seriously the public policy implications of fair use evasion more directly, by invoking traditional rules for contract interpretation that hold terms unenforceable when they violate public policy—e.g., agreements to commit a crime, or a tort, or restraint of trade. To date, however, I’m unaware of any such cases directly applying these principles to contracts that restrict fair use, though there is a large body of case law and this may merit more research.

Third, the courts could apply existing or new equitable doctrines, such as “copyright misuse” or a yet-to-be-defined right of “fair breach” protect users of copyrighted works from overenforcement of contracts that limit fair use. A term first coined by Professor Jane Ginsburg, is for the courts to develop their own remedy—a “fair breach.” She observes that, as with the current licensing environment online, at some point “it becomes necessary to consider whether limitations incorporated in the copyright law should be imported to its contractual substitute. With respect to libraries and their users, one should inquire whether some kind of fair use exception is appropriate. This might take the form of a judge-made right of ‘fair breach,’ or legislatively imposed mandatory library-user rights.”

This idea of “fair breach” has drawn little attention since Ginsburg first identified its need and coined the term, but it merits further attention. “Fair breach” may have some similarity to the existing doctrine of copyright misuse, which could have some application to contracts that restrict fair use. A judge-made doctrine borrowed from the patent law doctrine of patent misuse, copyright misuse has been mostly applied to situations where copyright owners have attempted to exercise their rights to unfairly stifle competition. The primary question with copyright misuse is “whether the copyright is being used in a manner violative of the public policy embodied in the grant of a copyright.” If copyright misuse is found, the copyright isn’t invalidated, but courts have held that the owners’ copyright cannot be enforced to exclude the harmed party’s use. The Supreme Court has yet to acknowledge the existence of this doctrine, but numerous appellate courts have recognized it over the last thirty years.

A handful of cases suggest that extension of copyright misuse to fair-use limiting contracts could be effective. For example, in Assessment Technologies of Wi, LLC v. Wiredata, the Seventh Circuit Court of Appeals held that Assessment Technologies’ attempt to restrict access to data that was not copyrighted fell within the copyright misuse doctrine’s core focus: “preventing copyright holders from leveraging their limited monopoly to allow them control of areas outside the monopoly.”  Video Pipeline, Inc. v Buena Vista Home Entertainment, Inc., also gives some encouragement. Video Pipeline brought a declaratory judgment action seeking a judgment that its use of video trailers from Disney and others was not copyright infringement. Among the defenses it cited was copyright misuse on the part of Disney. To support its copyright misuse argument, Video Pipeline pointed to the license term I mentioned at the beginning of this blog post, which prohibited disparaging Disney or the entertainment industry. The court ultimately declined to find that those terms constituted copyright misuse, because the contract had a narrow focus and limited application: “we nonetheless cannot conclude on this record that the agreements are likely to interfere with creative expression to such a degree that they affect in any significant way the policy interest in increasing the public store of creative activity. The licensing agreements do not, for instance, interfere with the licensee’s opportunity to express such criticism on other web sites or elsewhere.” However, the court suggested that the outcome could have been different if the restrictions were more far-reaching


Contractual override of fair use poses a real threat to free expression, especially given the increasing limits on distribution of copyrighted works online. Almost all online platforms that distribute copyrighted works impose restrictions that inhibit fair use to some degree. It takes just two easy steps. Thankfully, there are some plausible routes forward for improving the law to protect authors and others who rely on fair use to create new works and share knowledge with the world. There is also some reason for optimism due to renewed interest in the issue among scholars and organizations such as the Association of Research Libraries, which issued a report on contractual override for libraries, and is co-hosting a symposium with Washington College of Law at American University on the subject with perspectives from around the world.

Dave Hansen is the Executive Director of Authors Alliance, a non-profit organization that works to advance the interests of authors who want to serve the public good by sharing their creations broadly.  Before leading Author’s Alliance, he was the Associate University Librarian for Research, Collections & Scholarly Communications at Duke University Libraries.