Adoption of U.

S fair-use exceptions into Australian Copyright Law

Author: Paul Christensen

Introduction

As it stands, Copyright Law in Australia finds itself at odds with its own
purpose – that being to strike a balance between incentives for creators and
accessibility for users. This has resulted from a significant increase in users’
ability to infringe copyrighted works and what might be regarded as an ‘over-
steer’ reaction to combat this new state of affairs. Ultimately, the law is falling
out of touch with new trends in technology and culture. While there have been
a few amendments over the last decade, it seems more is needed. In
response to this conundrum, a question has been posed as to wether
Australia should adopt a ‘fair-use’ doctrine as found in U.S Copyright law. 1

I seek to make a recommendation on this matter based on my analysis of the

relevant arguments and the sources on which they are based. This
recommendation will be held to the light of U.S case law, application in
Australia, International obligations and potential criticisms.

Recommendation

It is my view that an open-ended ‘Fair Use’ type provision should be

implemented into the Australian Copyright Act2 but it should include express
provisions which reflect the development of U.S case law. In particular, a
greater focus on the work said to be infringing and its relationship with the
original work.

My reasoning below is divided into two sections. Firstly a detailed outline of

what I propose followed by a section concerned with Justification.

1
Copyright Law of the United States 1976 (U.S) s 107.
2
Copyright Act 1968 (Cth).
 Outline of Recommendation

How is the U.S doctrine distinguished from our own Fair-Dealing provisions?

Before any comprehensive arguments can be established, it is first necessary

to make this distinction. In 1998, the CLRC expressed it as follows:

‘The main difference between the US doctrine of ‘fair use’ and the Australian
doctrine of ‘fair dealing’ is that the US exception is open ended and is not
confined to a specified range of purposes.’3

This forms the crux of the matter. It means that essentially, the question at
hand is:

Should Australia have an open-ended exception in its Copyright legislation?

There are many ways in which this implementation could work but most in line
with my recommendation is a focus on what form such an open-ended
provision would take when sitting alongside the specific exceptions. To
answer this question it is first necessary to analyse the U.S fair-use provisions
in more detail.

Particulars of the Fair-Use Doctrine

The U.S doctrine provides us with a list of exceptions very similar to our own,
but the key difference is that the word ‘includes’ makes it a non-exhaustive
list.4 There are four factors which function as a criteria for both the fairness of
the specific exceptions and the establishment of any non-listed exception.

They are as follows:

3
Australia, Copyright Law Reform Committee, Simplification of the Copyright Act: Part 1 -
Exceptions to the exclusive rights of users, Canberra, September 1998 at 47.
4
Copyright Law of the United States 1976 (U.S) s 107.
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;5

(2) the nature of the copyrighted work;6

(3) the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and7

(4) the effect of the use upon the potential market for or value of the
copyrighted work.8

It is the first factor which I believe is pivotal to a better way forward.

Purpose and Character of the Use factor

It is my view that this factor and its interpretation by the U.S courts holds the
key to successful legislative reform. In determining wether copyright has been
infringed in Australia, we are told by code9 and by case law10 to focus on the
original work. We are told that copyright is infringed when a substantial part of
the original work has been used unlawfully.11 My chief recommendation
concerning implementation of the fair-use doctrine is that this notion of
‘substantial part-of’ should be applied to both the original work and the new
work.

This notion finds ground in U.S case law by way of a ‘transformation’ factor.
When analysing the ‘purpose and character of use’, U.S judges look to the
new work and determine how much it has ‘transformed’ from the original work.
5
Copyright Law of the United States 1976 (U.S) s 107 (1).
6
Copyright Law of the United States 1976 (U.S) s 107 (2).
7
Copyright Law of the United States 1976 (U.S) s 107 (3).
8
Copyright Law of the United States 1976 (U.S) s 107 (4).
9
Copyright Act 1968 (Cth) s 14.
10
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29;
Network Ten Pty Ltd v TCN Channel Nine Pty Limited [2004] HCA 14.
11
Copyright Act 1968 (Cth) s 14.
This assessment has its routes in assessing the purpose of the new work and
also strikes the heart of Intellectual property philosophy. This is evidenced by
an ACLRC observation based on the 1966 case Rosemont Enterprises Inc v
Random House:12

‘An untransformed copy or ‘reproductive use’ is likely to be used for the

same purpose as the original, whereas a ‘productive’ use makes some
contribution of new intellectual value and thus promotes the
advancement of the arts and sciences.’13

Two of many recent cases which endorse this ‘transformation’ factor include
Campbell, AKA Skyywalker, ET AL. v Acuff-Rose Music, INC14 and Warner
Bros. Entertainment INC. and J.K Rowling, Plaintiffs. V RDR Books and Does
1-10, Defendants.15

Campbelll v Acuff-Rose

In this case, the court looked at an instance where a rap-group took the Roy
Orbison song ‘Pretty Woman’, copied a substantial amount of the musical
work, added a rap-style rhythm and replaced the lyrics with ones more vulgar
and derogatory. The end result was something very different from the original
yet it did, without doubt, copy a substantial portion of the original work. A key
question in this case was framed as follows:

"whether the new work merely supersedes the objects of the original creation,
or instead adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message." 16

12
366 F 2nd 303 (1966); Australia, Copyright Law Reform Committee, Simplification of the Copyright
Act: Part 1 - Exceptions to the exclusive rights of users, Canberra, September 1998 at 42.
13
Ibid.
14
510 U.S 569 (1994).
15
575 F. Supp. 2d 513 - Dist. Court, SD New York 2008.
16
AKA Skyywalker, ET AL. v Acuff-Rose Music, INC, 510 U.S 569 (1994) at 579.
On listening to both the original work and the new work, it is quite obvious that
they are significantly different in terms of nature and expression. The court
concluded that there was a fair-use exception and the ‘transformative’ factor
was crucial to this decision.17

Warner Bros. Entertainment INC. and J.K Rowling v RDR Books

This was a case which examined the publishing of what was already an online
reference database for the popular Harry Potter novels by a 3rd party. J.K
Rowling’s team sought an injunction based on the grounds that the
information was copied from her books and that they were planning on
releasing their own reference books hence potential commercial detriment.

Crucial to this decision was an analysis of this ‘transformative’ factor. The

court analysed the expression and detail contained in the ‘Lexicon’ as it was
called and contrasted that to the original information as found in the books.
This contrast tended to dance on the borderline of what the courts would
consider ‘transformative’ and thus yielded some helpful remarks on the
matter. Detailed inquiry into the nature and expression of the Lexicon found
that more often than not, the Lexicon had quoted directly from the books with
little creative transformation.18 The court noted also that the ‘purpose’ as a
reference book was different to that of the books but then concluded that it still
ultimately sought to provide entertainment. In the end it seemed as though
they did not consider it sufficiently transformative and crucial to this finding
was the notion that:
‘The transformative character of the Lexicon is diminished, however,
because the Lexicon's use of the original Harry Potter works is not
consistently transformative. The Lexicon's use lacks transformative character
where the Lexicon entries fail to "minimize the expressive value" of the
original expression.’19
17
Ibid.
18
Warner Bros. Entertainment INC. and J.K Rowling, Plaintiffs. V RDR Books and Does 1-10, Defendants, 575 F.
Supp. 2d 513 - Dist. Court, SD New York 2008.
19
Warner Bros. Entertainment INC. and J.K Rowling, Plaintiffs. V RDR Books and Does 1-10,
Defendants, 575 F. Supp. 2d 513 - Dist. Court, SD New York 2008.
This notion of ‘expressive value’ is helpful as it goes to the core of what
copyright owners ought to be protected against. This being the value and
nature of their expression. As I will get to later, I recommend that this notion
should be expressly contained within the proposed provision. Sufficiently
transformed pieces should share minimal expressive value.

The ‘transformative’ notion in context of my recommendation

As we can see, the U.S courts place much emphasis on particulars of the new
work when assessing the fair-use exception. They go beyond the broad,
express notions of character and purpose and analyse the finer details of the
new work and how it contrasts with the original work. It is my view that a fair-
use type exception in Australia should contain express provisions which
incorporate this common-law development in the U.S. This would entail
asking such questions as:

1. How much of the new work when looked at as a whole is comprised of

the original work?

2. Is the new work sufficiently transformative in nature and expressive

value?

Ultimately, the underlying philosophy with both of these questions should be

concerned with the following quote:

‘if the secondary use adds something new with a further purpose or different
character, the value generated goes beyond the value of the original and the
promotion of the arts and sciences is furthered.’20

20
American Geophysical Union v Texaco Inc (1994) 29 IPR 381 at 396.
Logistics for Legislative implementation

My recommendation would be for these two questions to operate as express

sub-factors for the purpose and character of use provision as it exists in the
U.S model. It is necessary at this point to note that my recommendation would
include the 2nd, 3rd and 4th U.S factors21 unchanged. Qualification of the first
question mentioned above could be treated in a similar fashion to how Section
1422 deals with substantiality of the original work. Both questions would not be
determinative but rather balanced with and against the 2nd to 4th factors
mentioned above.

Justification

I will now endeavour to justify my recommendations with regards to Australian

case law, social and technological trends, international obligations and
potential criticisms.

Australian case law implications

The recent case of Larrikin v EMI23 is an excellent example of what is wrong

with Australia’s copyright legislation as it stands right now. Here we had
approximately 4 seconds (2 bars) of an old Australian jingle ‘Kookaburra sits
in the Old Gum Tree’ which was musically reproduced by Men at Work in their
famous single ‘Down under’. The reproduction formed half of a short, catchy
21
Copyright Law of the United States 1976 (U.S) ss 107 (2-4).
22
Copyright Act 1968 (Cth) s 14.
23
[2010] FCA 29.
flute line contained in the song. Significantly, these two bars comprised a
substantial part of the original jingle yet a decidedly unsubstantial part of the
new work. As Peter Night points out in the Australian Intellectual Property Law
bulletin:24

‘There can be no doubt regarding the technical correctness of this decision,

based on the current law. However, public reaction to the decision has been
generally incredulous or even critical.25

To the non-legal mind, this decision lacked common sense. Legally, I contend
that what was lacking was precisely what I have recommended above. If this
case were decided in the U.S or indeed with legislation along the lines of what
I am recommending in this paper, it is highly likely that the claim would fail
due to a finding of fair-use based on the notion of transformation. The new
work is so transformed from the original that it took the Australian public
(including the copyright owner) 20 years to even realise its infringement.
Under my proposed amendments, the courts would look at - amongst other
factors - the unsubstantial ratio of old work to new work and how transformed
the new piece is from the original when looked at as a whole.

Social and technological trends

These recommendations are well in line with new social and technological
trends. Lawrence Lessig in a speech he made in San Diego highlights the fact
that in our new digital age, legislation which focuses on each and every time a
copy gets made is ‘insane’.26 He contends that it should instead focus on the

24
Peter Knight, Australian Intellectual Property Law Bulletin, ‘Fair use of fowl? Reconsidering fair-use defences in
Larrikin Music Publishing v EMI’, Butterworth’s, 2010, Vol 22 no. 9.
25
Ibid at 173.
26
Lawrence Lessig, ‘Getting the network the world needs’, San Diego, March 2009,
http://www.blip.tv/file/1937322 at 3 September 2010.
interaction people have with culture and how people use the work they are
alleged to be copying. This notion is particularly poignant in an age of
remixes, youtube and sampling. Original works get ‘copied’ left, right and
centre in this digital age and quite simply this cannot be controlled and should
not automatically be deemed illegal. These social and technological
inclinations of our age more often than not result in a transformed product and
then they further the arts somewhat.

Of course in instances where there is not a sufficient transformation and

nothing new is offered, copyright ought to be held to be infringed. This would
be copying as opposed to creating. It is important also to note at this point that
my recommendations include considering the Fair-Use factor of commercial
detriment. If such copying does compete with or cause commercial detriment
to the original work then that is a very good reason as to why it should be held
to be infringing. Generally speaking, if a work is sufficiently transformative, it is
likely not to be competing with the original work in this regard.

The ALRC also tend to agree with the technological benefits as depicted in
the following expression of their findings:

‘It is not limited to an exclusive set of purposes and therefore offers greater
flexibility in allowing courts to determine new circumstances to which fair
dealing can apply in response to changing technology’27

International obligations

Any change in copyright legislation must be consistent with international

obligations and treaties. The ALRC after recommending the implementation of
an open-ended fair-use provision concluded that such a proposal was

27
ALRC – 61.2 153
consistent with the Berne convention and the TRIPS agreement.28 This is
based on a positive interpretation of Article 9.2 which states:

‘It shall be a matter for the legislation in the countries of the Union to permit
the reproduction of such works in certain special cases, provided that such
reproduction does not conflict with a normal exploitation of a work and does
not unreasonably prejudice the legitimate interests of the author.’29

These treaties succeed in catering for a landscape which can and does often
change.

Potential Criticisms

Two criticisms that may be raised against my recommendations are as

follows:

Firstly, it has been said that due to the open-ended nature of such a provision,
users might not be clear on their user rights until and unless the courts set the
relevant precedents.30 This is certainly true but from the perspective of the
user, this temporary uncertainty ought to outweigh absolute illegality. Also the
provision I am recommending gives more express guidance with notions like
‘transformation’ and ‘expressive value’.

It has also been said that copyright owners may ‘vigorously oppose fair use
claims to ensure that the doctrine does not expand by increments.’31 Certainly
it is possible that some copyright owners may try this but over the past
decade they have benefited from over-zealous ‘over steering’ from the
legislature in the form of TPM’s and other reactions to an increase in users
28
Australia, Copyright Law Reform Committee, Simplification of the Copyright Act: Part 1 -
Exceptions to the exclusive rights of users, Canberra, September 1998 at 153.
29
The Berne Convention for the Protection of Literary and Artistic Works, 1886, Art 9.2.
30
Australia, Attorney General’s Dept, ‘Fair Use and other Copyright Exceptions: An examination of fair use, fair
dealing and other exceptions in the digital age, Issues Paper,’ Canberra, May 2005 at 21.
31
Australia, Attorney General’s Dept, ‘Fair Use and other Copyright Exceptions: An examination of fair use, fair
dealing and other exceptions in the digital age, Issues Paper,’ Canberra, May 2005 at 21.
ability to copy. This proposal would work to balance the scales somewhat
which is proving increasingly necessary.

Conclusion

It cannot be doubted that our copyright legislation is falling out of touch with
our modern digital age. Legislative reform is in need and I firmly believe that it
should take the form detailed above. A wise man once said ‘If I have seen
farther than others it is because I have stood on the shoulders of giants.’ This
man was Sir Isaac Newton and this notion is central to the evolution of
creation and innovation. In an age now where access to information is greater
than ever, we must not stifle our own ability to stand on the shoulders of
giants but rather embrace it and make ‘fair-use’ of it.

Bibliography

Cases

American Geophysical Union v Texaco Inc (1994) 29 IPR 381.

Campbell, AKA Skyywalker, ET AL. v Acuff-Rose Music, INC 510 U.S 569 (1994).
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29; Network
Ten Pty Ltd v TCN Channel Nine Pty Limited [2004] HCA 14.

Rosemont Enterprises Inc v Random House 366 F 2nd 303 (1966).

Warner Bros. Entertainment INC. and J.K Rowling, Plaintiffs. V RDR Books and Does 1-10,
Defendants 575 F. Supp. 2d 513 - Dist. Court, SD New York 2008.

Secondary Sources

Australia, Attorney General’s Dept, ‘Fair Use and other Copyright Exceptions: An examination
of fair use, fair dealing and other exceptions in the digital age, Issues Paper,’ Canberra, May
2005.

Knight, Peter, Australian Intellectual Property Law Bulletin, ‘Fair use of fowl? Reconsidering
fair-use defences in Larrikin Music Publishing v EMI’, Butterworth’s, 2010, Vol 22 no. 9.

Lessig, Lawrence, ‘Getting the network the world needs’, San Diego, March 2009,
http://www.blip.tv/file/1937322 at 3 September 2010.

Australia, Copyright Law Reform Committee, Simplification of the Copyright Act: Part 1 -
Exceptions to the exclusive rights of users, Canberra, September 1998.

Legislation

Copyright Act 1968 (Cth).

Copyright Law of the United States 1976 (U.S).

Treaties

The Berne Convention for the Protection of Literary and Artistic Works, 1886.