Professor David Nimmer Discusses Juries and Fair Use

Scholarly Communication & Publishing
Scholarly Communication & Publishing
Professor David Nimmer Discusses Juries and Fair Use

Copyright Chat welcomes Professor David Nimmer to the show.  Professor Nimmer is of counsel to Irell & Manella LLP in Los Angeles, California. He also serves as Professor from Practice at UCLA School of Law and Distinguished Scholar at the Berkeley Center for Law and Technology. Nimmer has authored and updated Nimmer on Copyright since 1985.



Benson: You are tuned in to Copyright Chat.

Copyright Chat is a podcast dedicated to discussing important copyright matters. Host Sara Benson, the copyright librarian from the University of Illinois, converses with experts from across the globe to engage the public with rights issues relevant to their daily lives.

Today, Copyright Chat is pleased to host Professor David Nimmer. David Nimmer is of counsel at Irell and Manella LLP in Los Angeles, California. He also serves as a Professor from Practice at UCLA School of Law and Distinguished Scholar at the Berkeley Center for Law and Technology. Since 1985, Professor Nimmer has authored and updated Nimmer on Copyright, the standard reference treatise in the field.

Today, I have Professor David Nimmer with me on Copyright Chat. He is here remotely. Thank you for joining me today.

Nimmer: It’s a pleasure to be here.

Benson: So Professor Nimmer, as I understand it, you’re working on an article about fair use as a jury issue. Can you talk a little bit about that?

Nimmer: Yes. Classically, fair use is one of the defining features of copyright law and in order to give a definition, we need to have judges tell us what the parameters are of fair use and ultimately, we need the U.S. Supreme Court to tell us, and fair use is the issue that has been most litigated at the Supreme Court level.

In fact, there have been four decisions that have talked about fair use. So those decisions are typically a pronouncement by district judges, and then they get reviewed by circuit court judges who typically reverse what the district court said, at least in the context of cases that have gone up to the U.S. Supreme Court. And then at the U.S. Supreme Court level, they are in turn reversed, so we’ve seen that at least three times, that district court says one way, court of appeals reverses, then the Supreme Court reverses that. So those are a bunch of judges giving us their determination of fair use, and once we have enough definitive pronouncements from precedential courts, we can say what fair use is.

But the irony in it though is that fair use unfolds in a copyright infringement trial, and classically, both sides are entitled to trial by jury, so one would think that this is really an issue that should be decided in the first issue, by the first impression, by jurors rather than by judges so I’m talking about that anomaly in the law.

Benson: That’s an interesting proposition, and are most fair use cases decided by judges because a bench trial is requested or because they are decided on summary judgment?

Nimmer: Well, they can be decided by a judge for one of several reasons. First of all, it could be that it’s a motion for a preliminary injunction. That gives rise to a lot of these decisions, and so that’s an early stage in the proceeding at which there’s only a judge, there’s no jury. Second, even if the case proceeds, it could be a motion for summary judgment, in that both sides agree that the facts are not contested. Plaintiff says, I’m right. Defendant responds, no, based on those uncontested facts, I’m right, and then it’s up to the judge to decide it.

But, sometimes, the issues percolate along, and then they are presented to a jury for resolution. That’s exactly what happened in one of the major copyright cases that is now pending: the case of Oracle America versus Google. In that case, the allegation is that Google copied APIs, applications program interfaces, that are needed for compatibility with Java, and Oracle said, we’re the owner of Java, you copied thirty seven of our APIs, you’ve committed copyright infringement. First, the district judge said the APIs are not subject to copyright protection. That was reversed by the federal circuit, which said there has to be a trial. But then, when they set a trial, they said there were contested issues of fact, meaning that there has to be a jury that’s going to resolve the issue. So this is a very very celebrated case that led to a jury determination regarding fair use.

Benson: And what do you say to folks who think that fair use is hard to understand even for judges, let alone juries?

Nimmer: Well, fair use is very hard to understand for judges. In fact, there was a lovely opinion by Judge Newman some decades ago in which he said, I find the copyright and trademark cases very difficult to understand, so I can only imagine how difficult it is for jurors to understand it. And the reflections are very apropos. When a jury is being asked to decide one of the core issues of copyright law, such as, is the defendant’s work substantially similar to the plaintiff’s work, or did the defendant make a fair use of the plaintiff’s work, the jury has two challenges. One is to understand what the facts are, and two, to understand what the law is. And the jury is not even trained in the law, so they simply have to go based on these things called jury instructions, which is a long, confusing recitation that the judge makes to them to try to explain to them what the law is. So, it’s terribly daunting.

Benson: And so what is your conclusion about fair use as a jury issue? Are you more studying it in terms of how many times it’s been a jury issue, or what the issues are that juries face? I mean, I’m just trying to guess at your conclusion here, I suppose.

Nimmer: I’m trying to look at, why is it that, in this case, Oracle v. Google, there’s been a jury determination of fair use, and how rare is it? So, my research indicates that it is not altogether unusual, I would say, it is something that does not happen all the time. But this is far from a one off to have the jury decide this case.

In my own experience, I once defended Compaq Corporation on appeal before the Fifth Circuit Court of Appeals. And that was a case in which there was a jury trial, and the jury came back with a multiple verdict, on behalf of the defendant, my client Compaq Corporation.  It said that what was done was fair use, and therefore the defendant wins, but it also said that various other defenses applied, such as that there was estoppel, that the plaintiff could not complain because the plaintiff had lulled the defendant with inactivity. And also that there was a license that the plaintiff had essentially agreed. So in that particular case, there were many many disputed facts at issue that required a jury, and for that reason, it was a dilemma. On the one hand, the judge wants to define what the law is and to make a determination of fair use, but on the other hand, that would just be hefting off one disputed issue for resolution without the benefit of all the others, so the judge reasonably said, I’m going to let the jury look at all of these issues, and the jury then came back on behalf of the defendant on all those bases. So it sometimes happens that there needs to be a trial on fair use because there are multiple issues.

The further question, though, arises: what if there’s only the defense of fair use? What if that’s the only matter that essentially is going to require resolution? Are there disputed facts there that require a jury to decide it? Well, any time that there’s a question of history, disputed historical fact, did A shoot B? Did C agree to deliver widgets to D? When one party says yes, and the other party says no, those are disputed issues of historical fact. And when those are an issue, then it’s up to the fact finder to make the determination, and in our system, that means it’s up to the jury. So sometimes that does happen.

Now, that could happen rarely in a fair use case. I’ll give you an example. Let’s say that the allegation is the plaintiff says, I own a literary work, and the defendant performed it without authorization, that the defendant dramatized some portion of my literary work. It would only happen on one occasion. There could be a disagreement as to how much it was. The defendant could say, oh I only spoke ten lines that the plaintiff wrote, and the plaintiff could say no, I was in the audience, and I heard him say at least fifty lines. So that would be a dispute of historical fact. And the third factor of fair use is, what was the amount and substantiality of the use? And so the fact finder would have to make a factual determination in order to resolve that fair use case. So I’ve just given you an example of a possible instance in which there could be a live dispute of historical fact that requires a jury, but I had to be somewhat belabored to come up with that. Most cases are not for a one-off performance, and so most cases do not have a reasonable dispute as to how much of the plaintiff’s work the defendant actually copied.

So the further question comes, where is there a dispute of historical fact such that the fact finder needs to resolve it? Well, in Oracle v. Google, there is a lot of back and forth a lot of dispute as to who authorized what, but that does not really go to fair use, that goes to a separate defense of license. So I don’t think we needed to have a jury because of that.

Okay, so now the further question becomes, why on earth did we need a jury? Well, there are many many aspects of fair use, and let me just talk about two now. One is how transformative is the use? In order for there to be extreme transformation, the defendant has to do something that the plaintiff did not intend, did not the write to work for. For instance, if the plaintiff writes a letter, and then that becomes transformed into the basis of a song or the basis of a commentary about anomie in the early twenty first century. It’s possible that the use is transformative. It’s not what the plaintiff intended. Conversely, if the plaintiff who wrote a song, and the defendant decides to put a song in the middle of her musical and that song is the plaintiff’s song, maybe it’s being used for the same purpose. So there could be disputed issues of fact as to transformation. And that goes to the first fair use factor: what’s the purpose of the new use? How transformative is it? A jury could be called upon to decide that.

And the second thing I’ll talk about is the fourth factor of fair use, which looks to the potential market so in that case, the jury has to decide, the fact finder has to decide, what is the potential market? If the plaintiff wrote a song, what is the potential market for that song? Is it only for musicals, or is it any time musical entertainment is desired, including at restaurants? Or does it go even further? Let’s say the song is copied by Shazam, which just identifies music. Is that within the potential market of the plaintiff work, or is it outside of it? Well, the fact finder could be called upon to resolve that. So for all these reasons, in some cases, it could be requisite to have a jury to make a determination of fair use. The Federal Circuit decided in this case, that a jury was needed on remand to decide the question of fair use by Google of the API’s. And the jury did come back, and it made a determination that it was fair use, and that case is currently on appeal for a second time to the Federal Circuit Court of Appeals.

Benson: I wonder, given this discussion of the jury in fact finding, what your feeling is about the jury instructions themselves? Because I’ve noticed that in some court cases, the judge has been assigning a particular percentage to each factor of fair use, for instance. Is that something that you think is appropriate in a jury instruction, or should the jury just be told to weigh the four factors? Or they just have to figure out the facts, and then the judge weighs the factors? How does that work out?

Nimmer: Well, if the jury is being asked to make the determination, then the jury is going to have to do the weighing, not the judge. And it strikes me as a bad idea to say give x percentage to factor one and give y percentage to factor two. Instead, the interplay of the four factors is an essential ingredient in their application, and so the same fact finder who’s going to make the determination under the factors also has to make the determination as to how much weight to give to each one.

Benson: Oh, I agree with that. Do you think in non-transformative uses the fourth factor should weigh more heavily, in general? If it’s just pure copying?

Nimmer: You know, I hesitate to make a blanket pronouncement, but obviously the more transformative the use, the stronger it is under the first factor and the stronger is on the fourth factor because it’s transformative, so therefore the plaintiff presumably did not have his or her eyes set on that particular potential market. But no, every fair use case has to be evaluated under it’s own merits so I would not want to make a blanket pronouncement about the fourth factor in non-transformative cases.

Benson: I find all of this really fascinating. I think it will be interesting to see if we have more jury cases on fair use, what different jury instructions are available, and how the juries are weighing the facts, and I really look forward to reading this article so thank you for joining me today, and do you have a placement for your article where we can look for it?

Nimmer: Yes, it’s going to be in the Harvard Journal of Law and Technology. My friend and colleague Professor Peter Menell of Berkeley has written a very long and wonderful treatment of the Oracle v.  Google case, and a number of us are writing reaction pieces. My reaction piece has to do with the jury decision as to fair use so the entire issue should be of interest to your readers.

Benson: Perfect, well, I will look forward to that issue, and again, I really thank you for joining me today.

Nimmer: My pleasure.


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