1. Fair Use &
Open Source Software
ROPES & GRAY LLP

2. Introduction
• Vasanth Sarathy Associate
Sarathy,
– BS, SM, JD
– Management and strategic
development of intellectual property
• Nate Kurtis, Associate
– BS AB, MBA, JD
BS, AB MBA
– Use, licensing and other transactional
applications of intellectual property
ROPES & GRAY

3. Disclaimer
This presentation is provided for informational
purposes only. It does not constitute legal
advice and should not be relied upon as legal
advice. For specific legal advice, please
d i F ifi l l d i l
consult with an attorney.
While
Whil every effort has been made to provide
ff h b d id
accurate and up to date information in this
presentation,
presentation laws and rules vary by state and
country, and change over time. You should
verify the current local rules and laws that
govern your legal issues.
ROPES & GRAY

4. Agenda
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• Copyright Background
• Fair Use
• Open Source Software
ROPES & GRAY

5. What is Copyright?
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• System of Rights to Exclude
• Rights Granted in the Public Interest
– Constitutional Basis: Article I, Section 8, Clause 8
– Private Incentives v. Public Benefit
• Traditionally Common Law, Increasingly
Statutory
y
– Title 17 of the United States Code
ROPES & GRAY

6. Title 17 of the United States Code
Sec. 101 Definitions
Reproduce
Sec. 102
Protectability Distribute
Sec.
Sec 105 Perform
P f
Sec. 106 Exclusive Display
Rights Create Derivative Works
Sec. 107 Digital Retransmission
Exceptions Do or Authorize The Doing
Sec. 120
Sec. 200+ Transfer & Assignment
Sec. 400 +
S Registration
i i
Sec. 500+ Litigation
ROPES & GRAY

7. Title 17 of the United States Code
• Protectable:
– “…original works of authorship fixed in any tangible
medium of expression, now known or later developed…”
– Literary, Musical, Dramatic, Pantomimes and
Choreography, Pictorial, Graphic, Sculptural, Audiovisual,
Sound Recordings, and Architectural Works
• Not Protectable:
– any idea, procedure, process, system, method of
operation, concept, principle, or di
ti t i i l discovery
ROPES & GRAY

8. Exceptions to Copyright
p py g
• Fair Use (107)
• Reproduction by Libraries and Archives
(108)
• Course Use (110, Circular 21)
• The TEACH Act
• Oth
Others
ROPES & GRAY

9. Libraries and Archives
• A library or archive may create and
distribute one copy if:
– No direct or indirect commercial advantage
– Open to the public or researchers in a set field
– Includes a copyright notice
• Three copies for archival purposes
• Only applies to isolated and unrelated
reproductions and distributions, not
p
systematic or concerted
ROPES & GRAY

10. Course Use
• Section 110 (1)
– Classroom or instructional performance or display
of a lawful copy of a work by an instructor or pupil
in the course of face to face teaching activities of
face-to-face
a nonprofit educational institution is not
infringement
• Circular 21
• One copy for instructor for research and p p work
py prep
• One copy per pupil for classroom use:
– Requirements: Brevity, Spontaneity, Non-cumulative
– Not a substitution or replacement of the work
ROPES & GRAY

11. The TEACH Act, Section 110 (2)
, ( )
• Provides a statutory exemption to enable
distance learning.
– Intended to merely allow the application of the
same principles applicable to in-face teaching
found in Section 110 to distance and
asynchronous education.
h d ti
• However, the language is limiting.
ROPES & GRAY

12. The TEACH Act, Section 110 (2)
, ( )
• Limitations:
– “[R]easonable and limited portions” of copyrighted
works, other than non-dramatic literary and
musical works, and works created for mediated
instructional use.
– Only available to g
y government bodies and
“accredited” non-profit educational institutions.
– Only allows transmissions to students officially
enrolled i th course or t government
ll d in the to t
employees as part of their official duties.
– Requires technological protection measures be
taken to prevent retention of the work and further
downstream dissemination. ROPES & GRAY

13. Agenda
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• Copyright Background
• Fair Use
• Open Source Software
ROPES & GRAY

14. Copyright Fair Use
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• It is a statutory (affirmative) defense not a
defense,
permission or a limitation on scope!
– Argued post infringement
infringement.
– Defendant’s burden to raise and prove.
• C t apply a f t
Courts l fact-specific, f t d
ifi factored
analysis.
– SCOTUS: “…the fair use determination calls for
case-by-case analysis, and is not to be simplified
with bright-line rules ”
bright line rules.
ROPES & GRAY

15. Copyright Fair Use
py g
• Fair Use Factors:
1: The purpose and character of the use
– such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use)
use),
scholarship, or research
2: The nature of the copyrighted work
3: The amount of the work used
4: The effect on the market or value of the work
Key: Is the use “Transformative”?
– Does the use supersede the original or does it add
something new, with a f further purpose or different
ff
character, altering the original with new expression,
meaning or message? ROPES & GRAY

16. Copyright Fair Use
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• Don’t jump to fair use!
Don t
• Be very careful anytime your business
plan hinges on fair use:
– It won’t prevent litigation.
– Fact-specific, factored analysis does not provide
predictability of outcome.
– Th defense can fail.
The d f f il
• There is no cutting edge technology
exception to copyright law!
ROPES & GRAY

17. UMG Recordings, Inc. v. MP3.com
g ,
• Fair Use?
– Purpose:
• Commercial
– Nature:
• Close to Copyright Core
– Amount:
• Entire Works
– Eff t
Effect:
• Usurps Further Market
• Not Fair Use.
Use
ROPES & GRAY

18. Leibovitz v. Paramount Pictures
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19. Leibovitz v. Paramount Pictures
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20. Leibovitz v. Paramount Pictures
• Fair Use?
– Purpose:
• Humorous commentary, but $
– Nature:
• Moderate protection
– Amount:
• More than required to “conjure”
– Eff t
Effect:
• Limited adverse effect
– Highly Transformative
• Fair Use.
ROPES & GRAY

21. Castle Rock Entertainment, Inc. v.
C l P bli hi G
Carol Publishing Group, I
Inc.
The SAT:
– 643 Trivia Questions
– Back Cover:
• “Hundreds of
spectacular q
p questions of
minute details from TV’s
greatest show about
absolutely nothing ”
nothing.
ROPES & GRAY

22. Castle Rock Entertainment, Inc. v.
C l P bli hi G
Carol Publishing Group, I
Inc.
• Fair Use?
– Purpose:
• Commercial, sold the book
– Nature:
• Expressive, protected
– Amount:
• More than needed to comment
– Eff t
Effect:
• Replacing
– Repackaging not Transformation
Repackaging,
• Not Fair Use.
ROPES & GRAY

23. Brownmark Films LLC v.
Comedy P t
C d Partners
• Brownmark Films LLC Video Clip
– http://www.youtube.com/watch?v=fbGkxcY7YFU
• C
Comedy P t
d Partners Vid Cli
Video Clip
– http://www.southparkstudios.com/full-
episodes/s12e04-canada-on-strike
i d / 12 04 d t ik
– Parody begins at 7:52
ROPES & GRAY

24. Brownmark Films LLC v.
Comedy P t
C d Partners
• Fair Use?
– Purpose:
• A “classic parody”
– Nature:
• Expressive
–A
Amount:
t
• Minimum amount needed to
comment
– Effect:
• Limited or none.
– Highly Transformative
• Fair Use ROPES & GRAY

25. Kelly v. Arriba Soft Corporation
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• Fair Use?
– Purpose:
• Commercial, but not highly
exploitative
p
– Nature:
• Creative, published, protected
– Amount:
• Necessary to copy entire image
– Effect:
• No harm
– Transformative –Different
Different
function
• Fair Use. ROPES & GRAY

26. Kelly v. Arriba Soft Corporation
y p
ROPES & GRAY

27. Academic Use ≠ Fair Use
• Simply using materials in an academic
context does not, by itself, mean it is a fair
use.
– Which is why people write and publish textbooks
and royalties are paid on bookpacks.
y p p
• Princeton University Press v. Michigan Book
Services
ROPES & GRAY

28. Academic Use ≠ Fair Use
• Neither does use in a research context:
– It is not surprising that authors favor liberal
p
photocopying; g
py g; generally such authors have a far
y
greater interest in the wide dissemination of their
work than in royalties -- all the more so when they
have assigned their royalties to the publisher But
publisher.
the authors have not risked their capital to
achieve dissemination. The publishers have.
Once an author has assigned her copyright, her
approval or disapproval of photocopying is of no
further relevance
• American Geophysical v. Texaco (J. Leval)
ROPES & GRAY

29. Princeton University Press v.
Michigan D
Mi hi Document S i
t Services, I
Inc.
• Fair Use?
– Purpose:
• Commercial
– Nature:
• Creative, expressive
–A
Amount:
t
• Major ideas copied, not insubstantial, smallest excerpt > 8,000
words
– Effect:
• If widespread, would adversely affect the potential market.
– Not Transformative, used in same manner as original.
• Not Fair Use. ROPES & GRAY

30. Blackwell Publishing, Inc. v.
Excel R
E l Research G
h Group, LLC
• Fair Use?
– Purpose:
• Commercial
– Nature:
• Creative, expressive
–A
Amount:
t
• Major ideas copied, not insubstantial amount
– Effect:
• Able to undersell fee-paying competition
– Not Transformative, used in same manner as original.
g
• Not Fair Use.
ROPES & GRAY

31. Cambridge University Press. v.
GSU
• Fair Use?
– Purpose:
– Nature:
– Amount:
– Eff t
Effect:
– Transformative?
• Stay Tuned!!
ROPES & GRAY

32. Agenda
g
• Copyright Background
• Fair Use
• Open Source Software
ROPES & GRAY

33. Goals
1.
1 What it is and what it’s not
it s
2. How it works
3. Appreciate its impact
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34. What is Open Source?
p
Open Source is a software development model
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35. The Typical Open Source Model
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Project lead
volunteer
volunteer
l t
volunteer
volunteer
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36. What else is Open Source?
p
Open Source is also a software licensing
distribution model
– In many ways, like commercial software
– Pay attention to restrictions and obligations
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ROPES & GRAY

37. How does it work? Two-step
p
1.
1 Copyright Law Rights to the
Owner
– Copyright attaches to a software
module when created and stored
– Owner initially has the exclusive right
to copy, modify or create derivative
or collective works of protected
expression
ROPES & GRAY

38. How does it work? Two-step
p
2.
2 Contract Law
– Software module is then made
g
available under an agreement
(open source license)
• Conditions use on accepting the
agreement’s terms
’
• Can include important
restrictions and effects
ROPES & GRAY

39. Common Open Source Models
p
• GNU General Public License (GPL)
• GNU Lesser General Public License
(LGPL)
• BSD, MIT, Apache
• Mozilla, IBM, Apple, Sun
ROPES & GRAY

40. GNU General Public License (GPL)
( )
• “Virally” requires that source code be made
Virally
available to future licensees
• Generally precludes the use of proprietary license
• Disclaims warranties
• Commonl seen in Lin applications
Commonly Linux
• Lesser GPL (LGPL)
– Somewhat easier for licensees to combine the
LGPL code with a separate program and distribute
the combination under separate licenses
p
ROPES & GRAY

41. BSD/MIT/Apache Style Licenses
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• More permissive than GPL or LGPL
– Allows free distribution, modifying, and license
g
change
– No “viral” open source requirement
– May require attribution
– Enables proprietary software distribution
• Di l i
Disclaims warranties
ti
ROPES & GRAY

42. Mozilla/IBM/Apple Style Licenses
pp y
• Combines facets of GPL and BSD Styles
– Distribution of original code (and certain
modifications) has to include access to source
)
code.
– Not viral in reach
• Explicitly contemplate patent licenses
ROPES & GRAY

43. Effect of Models
• Different models handle modifications
differently
BSD GPL/Mozilla
GPL/M ill
If you change a The changed module The changed module
software module: may be licensed under may not be licensed
any combination of under a proprietary
proprietary and open license
source licenses
• No license provides recipients explicit
patent indemnification
ROPES & GRAY

44. What Open Source is not!
p
• Open Source is not free
– Strings attached to use – “No free beer”
• Open Source is not in the public domain
• Open Source is not immune from patent
rights
ROPES & GRAY

45. General Drawbacks of Using Open
Source
• IP Infringement
• No Patent Indemnification
• Warranty and Liability Issues are Unclear
ROPES & GRAY

46. Commercialization/IP
• The use of Open Source software does
not prohibit the commercialization of
research efforts or exploitation of IP
– But may significantly impact the value
• Data generated through the use of Open
Source software is not subject to the Open
Source license and may be sold or
licensed
ROPES & GRAY

47. Q
Questions?
//
// Dear maintainer:
//
// Once you are d
done trying to '
i 'optimize'
i i '
// this routine, and have realized what a
// terrible mistake that was, please
// increment the following counter as a
// warning to the next guy:
//
// total hours wasted here = 16
total_hours_wasted_here
//
ROPES & GRAY

48. Fair Use &
Open Source Software
ROPES & GRAY LLP