Encyclopaedia Britannica Ed. Corp. v. Crooks

• Decision Date: 21 June 1982
• Docket Number: No. Civ-77-560.,Civ-77-560.
• Citation: 542 F. Supp. 1156
• Parties: ENCYCLOPAEDIA BRITANNICA EDUCATIONAL CORPORATION, Learning Corporation of America, and Time-Life Films, Inc., Plaintiffs, v. C. N. CROOKS, Joseph S. Plesur, William Moorman, George Mueller, Richard E. Forrestel, Richard M. Pfeiffer, Frederic Sievenpiper, John Stovall, Theodore H. Ertel, Alvin J. Kraebel, and Board of Cooperative Educational Services, First Supervisory District, Erie County, Defendants.
• Court: U.S. District Court — Western District of New York

542 F. Supp. 1156

ENCYCLOPAEDIA BRITANNICA EDUCATIONAL CORPORATION, Learning Corporation of America, and Time-Life Films, Inc., Plaintiffs, v. C. N. CROOKS, Joseph S. Plesur, William Moorman, George Mueller, Richard E. Forrestel, Richard M. Pfeiffer, Frederic Sievenpiper, John Stovall, Theodore H. Ertel, Alvin J. Kraebel, and Board of Cooperative Educational Services, First Supervisory District, Erie County, Defendants.

No. Civ-77-560.

United States District Court, W. D. New York.

June 21, 1982.

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Raichle, Banning, Weiss & Halpern, Buffalo, N.Y. (R. William Stephens, Buffalo, N.Y., of counsel), and Sargoy, Stein & Hanft, New York City (Burton H. Hanft, and Jeffrey A. Rosen, New York City, of counsel), for plaintiffs.

Ellis, Kustell & Mullenhoff, Buffalo, N.Y. (Carl B. Kustell, Buffalo, N.Y., of counsel), for defendants.

CURTIN, Chief Judge.

This is a copyright infringement action which poses the question of whether an educational cooperative's large-scale videotape reproduction of copyrighted works originally broadcast and taken from the television airways constitutes fair use under the copyright laws.

Plaintiffs are three profit motivated corporations engaged in the business of producing, acquiring, and licensing educational audiovisual materials. In this case, they are all primarily involved in the production and distribution of educational works which are marketed to educational institutions, related organizations, and television networks. These works are sold or licensed in several different formats, but in general terms, they may be marketed as 16 millimeter motion pictures (print films) or on various sizes of videotape.

The plaintiffs' primary allegations are that defendants videotaped their copyrighted works from the television airways, principally from the local educational and instructional television station, WNED-Channel 17, maintained a library of these videotaped works, and made copies of these tapes for classroom use. They have selected 19 films which were broadcast over the television airways and videotaped by the defendants as the basis for this action. Each of the plaintiffs owns copyrights to some of these 19 works, and they seek permanent injunctive relief, statutory damages, costs, and attorneys' fees for the defendants' alleged unauthorized use of these works.

Defendants are the Board of Educational Services, First Supervisory District, Erie County, New York BOCES, and its individual officers and directors. BOCES was created under section 1950 of the New York Education Law for the purpose of providing educational services and specialized instruction on a cooperative basis to the 19 school districts within its geographic region.¹ It is a non-profit organization funded by the 19 school districts, and there are over 100 affiliated schools served by BOCES programs. The purpose of the BOCES cooperative is to provide a variety of educational services in a more economical and efficient form than could be accomplished by an individual school or school district. At the same time, a school district's membership in BOCES does not necessarily mean subscription to or participation in all BOCES educational services.

Two services provided by BOCES are a videotape library and duplication program and a film print library which circulates motion pictures on request to the member schools. When this suit was commenced, 15 of the 21 school districts subscribed to the BOCES Videotape Service, and 20 of the 21 school districts participated in the BOCES Film Service. It should be noted that none of the individual schools or school districts is a party to this action.

The complaint was filed in October of 1977. At that time, plaintiffs were granted a temporary restraining order to prevent destruction of existing videotapes and relevant written records pending a final decision in this case. They were also given leave to conduct accelerated discovery. Subsequently, plaintiffs moved for a preliminary injunction. A hearing was held on December 27, 1977, and a decision was issued granting a preliminary injunction on February 27, 1978. Encyclopaedia Britannica v. Crooks, 447 F.Supp. 243 (W.D.N.Y. 1978). The primary basis for that injunction was that BOCES operated a highly organized and systematic program for reproducing videotapes on a massive scale, apparently in blatant violation of the then-existing Copyrights Act. The court subsequently issued an order enjoining BOCES from videotaping plaintiffs' programs off the public airwaves. For the existing videotape library, however, the court declined to enjoin further distribution of these tapes. Rather, it was concluded that plaintiffs would be adequately protected if BOCES monitored the use of the tapes and required their return and erasure within a specified time.²

A two-week non-jury trial on the merits was held in the fall of 1980, at which some 17 witnesses testified and 87 exhibits were entered into evidence.³ Although the trial concerned only the use of 19 works copyrighted by the plaintiffs, limited evidence concerning 126 other copyrighted works owned by the plaintiffs and videotaped by the defendants was permitted to show the defendants' general plan or scheme. Additionally, evidence concerning alternative methods of licensing videotape reproductions was permitted for the limited purpose of demonstrating some harm to the plaintiffs' potential market for or value of the 19 copyrighted works.

Corporate representatives of the plaintiffs, Rolf Rasmussen, Encyclopaedia Britannica Educational Cooperation's EBEC marketing manager for television sales; Ralph Wagner, president of EBEC; David Davidsen, former executive vice president of the Learning Corporation of America LCA; William Deneen, president of LCA; and William Ambrose, vice president of Time-Life, Inc., for marketing in the areas of business and education, testified about the production, distribution, and marketing of their educational films and the effect of unauthorized videotape reproduction on the sales of their companies.

BOCES employees and defendants Dr. Clifford Crooks, the district supervisor of BOCES; Joseph Plesur, formerly the BOCES coordinator of planning and instructional services from 1966 to 1978; Theodore Ertel, BOCES senior educational television equipment specialist; and Alvin Kraebel, supervisor of instructional television operations, testified about the BOCES videotape operations and the duplication and distribution of videotape copies to the schools for classroom use.⁴ John Johnston and Charles Teague, two teachers at schools subscribing to the Videotape Service, explained the attributes and mechanics of educational videotape use in classroom instruction.

Raymond Graf, Chief of the New York State Bureau of Educational Communications, testified concerning the history, growth, and development of videotape as a teaching tool, the support of this technological development given by the State, and the value of educational videotapes in classroom instruction. Anthony Buttino, director of educational services at WNED-Channel 17, explained the relationship between BOCES and the station's broadcast of instructional television programs. Additionally, he testified about the various videotape duplication rights granted by copyright holders of educational films.

Norman Johnson, a BOCES employee who is the supervisor of the BOCES print-film library and Service and who now holds Mr. Plesur's position, explained the operation of this program and the division and distinctions between Print Film Service and Videotape Service. Kenneth Wasmund, chairperson of the Appalachian BOCES consortium, testified about the operation of their videotape reproduction and film distribution services. Finally, Dr. Jacky Knopp, a professor of marketing and the defendants' expert witness, testified on the issue of harm and potential harm to the plaintiffs' copyrighted works caused by the defendants' videotape reproduction efforts.

This action was initiated before January 1, 1978, and therefore, the Copyrights Act of 1909 the Old Act, 17 U.S.C. § 1 et seq., is applicable to all the defendants' activities prior to this date. Concerning any activities of the defendants which occurred after January 1, 1978, or any future activities of the defendants, this case is governed by the Copyrights Act of 1976 the New Act, 17 U.S.C. § 101 et seq.

FACTS

The facts are not substantially in dispute. In accordance with Rule 52 of the Federal Rules of Civil Procedure, they are set forth below. At the outset, however, it is helpful to define some of the terms and functions involved in television broadcasting, film production, videotape reproduction, and audiovisual technology.

Formats

Traditionally, the most common format for an educational audiovisual work has been the 16 millimeter print film format. The primary advantage of using the print film format is general familiarity with the technology and the availability in the schools of projection equipment.

Videotape is a more recent development, and there are three types of videotape: one-half-inch Sony Betamax, one-half-inch VHS, and three-quarter-inch videotape. These three types of videotape are not interchangeable, and the price of equipment utilizing a specific type of tape varies as well. For example, the court was given to understand that a one-half-inch videotape recorder-player costs approximately $600, while a recorder-player for three-quarter-inch tape costs approximately $1,500.

Off-the-air recording or videotaping, sometimes called off-air recording, has now almost become a term of art. It refers to the use of videotape in a recorder to record television signals using the videotape in a playback machine or a recorder equipped with the requisite playback equipment. In this manner, television programs originally broadcast over the airways may be transcribed on videotape and then used and replayed much like the more customary...