Tuesday, July 14, 2009

Gertner asks labels and Tenenbaum: Can a jury ever decide fair use?

Judge Nancy Gertner today issued a very interesting order in the Joel Tenenbaum case directing the parties to brief the following question:
whether fair use was historically treated as an equitable defense and, if so, whether it is properly decided by the judge or a jury.
Fair Use Briefing Order in Sony v. Joel Tenenbaum

The order recognizes that equitable defenses like "laches, acquiescence, or in pari delicto ... historically ... lay outside the province of the jury and belonged to the judge," and cites numerous cases describing fair use as an equitable defense. But it also states that "the authorities on this question appear to be conflicting or perhaps imprecise, with some dispute over the origins and equitable nature of the [fair use] defense," and cites a handful of cases where fair use did indeed go to a jury. From the footnote on page 4, Judge Gertner does appear to be leaning toward the conclusion that "fair use is an equitable question more appropriately decided by a judge than a jury," but her issuance of this order indicates that she is less than certain.

It is important to remember, as Judge Gertner acknowledges in the first sentence of her order, that the question whether fair use is an equitable defense inappropriate for a jury is distinct, at least in theory, from the issue whether summary judgment is merited. There is no question that fair use is routinely decided on summary judgment (including by Judge Gertner herself), and the order cites Professor Barton Beebe's exhaustive empirical study of fair use opinions, which identifies hundreds decided on summary judgment, motions for preliminary injunction, and after bench trials, but not a single one decided by a jury.

The plaintiffs' brief is due 9:00 a.m. July 20; the order directs Tenenbaum's arguments to be incorporated into its opposition to the labels' summary judgment motion on fair use, which will now be due July 20 as well (extended from the previous due date of July 17).

UPDATE: The Plaintiffs have filed a motion for clarification, asking that Tenenbaum's summary judgment opposition brief be due July 17 (which was the date mutually agreed to by the parties and ordered by the court). The plaintiffs argue that if Tenenbaum is permitted to file and serve his brief at 9:00 a.m. Monday, they will not have sufficient time to prepare for oral argument at 9:30.

On July 15, Judge Gertner issued the following order regarding the schedule for briefing on summary judgment and the fair use judge/jury issue:
Judge Nancy Gertner: Electronic ORDER entered granting [881] Motion for Clarification. "In light of its earlier scheduling concerns and the approaching pre-trial conference, the Court will adhere to its previous deadline for opposition papers, with supplemental briefing due separately. Defendant's brief in opposition to summary judgment is due Friday, July 17, 2009; the pre-trial conference will occur at 9:30 a.m. on Monday, July 20, 2009; and both sides shall file supplemental briefing on the jury question later that same day by 6:00 p.m." (Gaudet, Jennifer)
This reverts to the previous schedule, which leaves Tenenbaum an extremely short time in which to respond to the plaintiffs' summary judgment motion.


  1. I have to say I'm amazed. Amazed that out of this shit-storm of a case -- that is bad for the defendant, worse for the recording industry, and absolutely brutal for the other content industries -- there is some good law being made.

    I'm actually looking forward to the Court's decision on this issue.

  2. I'm anticipating these briefs because, while academic at this point given the strength of plaintiffs' MSJ, it's a genuinely interesting issue.

    The House, in it's 1976 report, clearly stated that fair use is an "equitable rule of reason," a point important enough for the Supreme Court to reiterate in Sony Corp. of America v. Univ. City Studios, Inc.

    However, for purposes of 7th Amendment jury trials, the courts generally refer to the English common law as it stood in 1791 to analogize whether a cause of action would fall under law or equity. The problem, however, is that, during my limited research, the concept of fair use (although not by that exact term) didn't arise in England until 1804 (thus after the cutoff date), and it occurred in a case with a jury.

    In contrast, the first American case to elucidate the concept of fair use occurred in 1841 in Folson v. Marsh. There Justice Story wrote the following:

    "a judge is entitled in this case, as in others, only to know and to act upon his duty."


    "The report of the master must stand confirmed..."

    Nowhere in his opinion does he mention a jury, which leads me to assume, tentatively as I may, that it was within the purview of the judge to decide the issue of fairness.


  3. @Anonymous 1:13:

    Here's the first part of what the new Patry copyright treatise says on the subject (PATRYCOPY database, § 10:3 for those with Westlaw access):

    "It is common to refer to fair use as an 'equitable rule of reason.'[FN1] One court went further and claimed that 'the doctrine is entirely equitable and is so flexible as virtually to defy definition.'[FN2] This characterization is inaccurate. Fair use is not an equitable doctrine or an equitable defense.[FN3] As history reveals, it is a legal defense which may, and frequently is, decided by a jury,[FN4] although like most issues, in appropriate cases it may be decided on summary judgment.[FN5]...."

    Patry certainly knows a lot more about the origins of fair use than I do, but I'm a bit skeptical of the use of the word "frequently" here. At least in the past 20 years or so, it seems that jury trials on fair use are extremely *infrequent*. As is described in the Beebe study I linked to above, fair use is almost always resolved on pre-trial motions.

  4. While the issue is a good one to discuss generally, I really do wish Judge Gertner thought of this earlier. If I were the plaintiffs, I wouldn't be thrilled with this timing--I'd be thinking why does she want us to submit briefs on this issue when if she were going to grant summary judgment, it would be moot anyway. I'd be worried that she was thinking of not granting summary judgment and needed to know how the issue will eventually be decided.
    Doesn't it seem odd to ask for the briefs after the Monday hearing/conference? I would have hoped that she'd rule from the bench Monday morning if I were plaintiffs. I suppose, after reading defendant's brief on Friday, she could say at the hearing that the supp. briefs aren't necessary as they'd be moot, but still...this whole issue ought to make both sides uneasy.

  5. Thanks in general for a very informative blog.

  6. So here's a question for all the litigators: Let's assume that fair use is a question that is suitable for a jury. What do the jury instructions look like?

    The Supreme Court, quoting the House and Senate Reports, stated in Campbell that 17 U.S.C. 107 is "meant to 'restate the present judicial doctrine of fair use, not to change narrow or enalrge it in any way' and intended that Courts continue the common law tradition of fair use adjudication."

    How does this shape the jury instructions? Will the jury instructions include the concept of transformative use from Campbell since it came after 17 U.S.C. 107 was enacted? Should a jury be allowed to consider factors outside of those set forth in the statute?

  7. @Anonymous 7:57:

    I can't seem to locate any model jury instructions on copyright issues for the 1st Circuit. The 9th Cir. does have a fair use instruction -- it basically mirrors the language of Section 107:

    (17 U.S.C. § 107)

    One who is not the owner of the copyright may use the copyrighted work in a reasonable way under the circumstances without the consent of the copyright owner if it would advance the public interest. Such use of a copyrighted work is called a fair use. The owner of a copyright cannot prevent others from making a fair use of the owner’s copyrighted work.

    Defendant contends that defendant made fair use of the copyrighted work for the purpose of [criticism] [comment] [news reporting] [teaching] [scholarship] [research] [other purpose alleged]. The defendant has the burden of proving this defense by a preponderance of the evidence.

    In determining whether the use made of the work was fair, you should consider the following factors:

    1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit 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;

    4. the effect of the use upon the potential market for or value of the copyrighted work; and

    [5.] [insert any other factor that bears on the issue of fair use].

    If you find that the defendant proved by a preponderance of the evidence that the defendant made a fair use of the plaintiff’s work, your verdict should be for the defendant.

  8. Thanks for the find Ben.

    The jury instructions are fascinating. Here's my problem: if a judge is deciding what additional factors a jury should (and should not) look at -- be it good faith, transformative use, or an extra warning to note that the jury shouldn't consider whether a particular work is profane -- is fair use really still a question being decided by a jury? Isn't this a catch-22?

    By deciding what factors a jury may consider the judge appears to me to a certain extent also decide the factual question.

    Is this unusual? Can anyone find a similar circumstance in other areas of law?


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