Encyclopaedia Britannica Educational Corp. v. Crooks

• Decision Date: 10 March 1983
• Docket Number: No. Civ-77-560C.,Civ-77-560C.
• Parties: ENCYCLOPAEDIA BRITANNICA EDUCATIONAL CORPORATION, et al., Plaintiffs, v. C.N. CROOKS, et al., Defendants.
• Court: U.S. District Court — Western District of New York

558 F. Supp. 1247

ENCYCLOPAEDIA BRITANNICA EDUCATIONAL CORPORATION, et al., Plaintiffs, v. C.N. CROOKS, et al., Defendants.

No. Civ-77-560C.

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

March 10, 1983.

COPYRIGHT MATERIAL OMITTED

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.

On June 21, 1982, this court determined that defendants' highly organized and systematic practice of making off-the-air videotapes and derivative copies of plaintiffs' televised copyrighted works did not constitute fair use under the copyright laws. Encyclopaedia Britannica Educational Corp. v. Crooks, 542 F.Supp. 1156 (W.D.N.Y.1982). The remaining issues to be determined in this case concern defendants' motion to allow temporary videotape copying and use of plaintiffs' works, plaintiffs' motion to reconsider their request for an award of costs and attorneys' fees, and various issues involving damages and the number and types of infringements committed by BOCES.

Temporary Use

In the court's order of June 21, 1982, plaintiffs' request for a permanent injunction prohibiting defendants from copying any future copyrighted works of plaintiffs was granted. Encyclopaedia Britannica Educational Corp. v. Crooks, supra at 1188. At that time, the court noted that some limited or temporary use of plaintiffs' televised works might be considered fair use under the Copyrights Act of 1976 the New Act, 17 U.S.C. § 107, and defendants now seek an order amending the injunction to allow for such temporary use.

The House Report on the 1976 Copyrights Act stated that off-the-air videotaping for classroom use was a difficult issue to resolve and that the Judiciary Committee believed

that the fair use doctrine has some limited application in this area, but it appears that the development of detailed guidelines will require a more thorough exploration than has so far been possible of the needs and problems of a number of different interests affected, and of the various legal problems presented. Nothing in section 107 or elsewhere in the bill is intended to change or prejudice the law on the point.

H.R.Rep. No. 94-1476, 94th Cong., 2nd Sess. 71-72 (Sept. 3, 1976), reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5685. Subsequently, the House Subcommittee on Courts, Civil Liberties and the Administration of Justice, issued guidelines concerning off-the-air videotaping for educational use, which suggest that off-the-air videotaping be permitted for a limited period of time. Under these guidelines, videotape copies may be kept for 45 calendar days, after which time the tapes are to be erased. Off-the-air videotapes may only be made at the request of a teacher and can only be used for "relevant teaching activities" during the first 10 school days of this time period. After this time, the tapes may only be used for evaluation purposes. Additionally, a videotape copy may be used once in the classroom by individual teachers "and repeated only once when instructional reinforcement is necessary." Guidelines for Off-the-Air Recording of Broadcast Programming for Educational Purposes, Cong.Rec. § E4751, October 14, 1981.

BOCES maintains that a temporary use time period encompassing one school year would be more appropriate but also suggests that the 45-day period under the Subcommittee guidelines or a one-month temporary-use period would be acceptable alternatives. Plaintiffs object to any modification of the injunction. In this respect, plaintiff Time-Life never permitted temporary off-the-air videotape use of their works, and plaintiff Learning Corporation of America no longer permits such use. Plaintiff Encyclopaedia Britannica also states that it will no longer permit BOCES to videotape its works off-the-air for temporary use.

When a claim of fair use is asserted, the court weighs and considers the merits of the claim by applying the suggested criteria found in section 107 of the New Copyrights Act. MCA, Inc. v. Wilson, 677 F.2d 180, 182 (2d Cir.1981). These factors are set forth in the statute as follows:

1) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit 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; and

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

In examining defendants' claims, it is helpful to begin by examining the last factor, "the effect of the temporary use upon the potential market for or value of the copyrighted work," or, more succinctly, "harm." It is significant that all of the plaintiffs' works are available for rental or lease for short or long-term periods in both film and videotape form. In fact, these works may be rented for as short a time as one to three days. See Encyclopaedia Britannica Educational Corp. v. Crooks, supra at 1171. Additionally, the court notes that there are many types of licensing agreements permitting educational institutions to duplicate plaintiffs' works, and these licensing agreements have previously been described in detail, Encyclopaedia Britannica Educational Corp. v. Crooks, supra at 1164-1166. For these reasons, any temporary use by BOCES of plaintiffs' copyrighted works would interfere with the marketability of these works, and the cumulative effect of this temporary videotaping would tend to diminish or prejudice the potential short-term lease or rental market for these works. See Encyclopaedia Britannica Educational Corp. v. Crooks, supra at 1171.

Similarly, in looking to the nature of the copyrighted work, the availability of plaintiffs' work in film or videotape form for short periods of time is an important consideration. This factor generally refers to the type of material used and whether distribution would serve the public interest. As explained in the court's decision of June 21, 1982, distribution may be in the public interest when the information is difficult to obtain. If a work is unavailable through "normal channels," there may be "`more justification for its reproduction than in the ordinary case' ...." S.Rep. No. 94-473, 94th Cong., 1st Sess., 64 (Nov. 20, 1975), supra at 1177. In this case, it is evident that copies of plaintiffs' works may be obtained for short periods through normal channels, and this factor does not shift any weight towards defendants' fair use contentions.

Concerning the "substantiality" factor, defendants are only interested in obtaining a complete copy of plaintiffs' works, which again could be supplied by the plaintiffs. In examining the last factor, the "purpose and character of the use," BOCES' general purpose for using plaintiffs' works is to achieve laudable educational objectives. Yet, defendants' specific purpose in seeking temporary use of plaintiffs' works is to engage in "time shifting" — the ability of teachers and students to view television programs irrespective of when the program was broadcast by a television station. While time shifting may be more convenient for defendants, fair use is a concept based upon reasonableness. Meeropol v. Nizer, 560 F.2d 1061, 1070 (2d Cir.1977), cert. denied, 434 U.S. 1013, 98 S.Ct. 727, 54 L.Ed.2d 756 (1978). Reasonableness in this context does not inherently include convenience, and the Senate Report on the 1976 Copyrights Act stated: "The Committee does not intend to suggest, however, that off-the-air recording for convenience would under any circumstances be considered `fair use.'" S.Rep. No. 94-473, 94th Cong., 1st Sess., 66 (Nov. 20, 1975).

Under these circumstances, it is not reasonable to permit defendants to engage in copying and using plaintiffs' works for a limited period of time when these same copyrighted works are readily available from the plaintiffs for a limited period of time.

It should be stressed that this determination affects only the defendants' practice of copying plaintiffs' copyrighted and televised works. Although the court finds that limited temporary use does not apply to plaintiffs' televised works in this instance, the court is aware that there are many different off-the-air rerecord rights attached to the many different kinds of programs broadcast by television stations. The court's finding that defendants' request for temporary use is not fair use of plaintiffs' works is intended only to affect the parties in this case and is based solely on the law and the facts as presented in the instant action.

Costs and Attorneys Fees

In the order of June 21, 1982, the court requested further briefs from the parties concerning the plaintiffs' request for costs, and plaintiffs have also moved the court to reconsider the court's refusal to award them attorneys' fees in this case. Under the New Copyrights Act, the award of costs is discretionary, 17 U.S.C. § 505; however, this action is brought under the Copyrights Act of 1909 the Old Act. Under section 116 of the Old Act, the award of costs to the prevailing party is mandatory. Marks v. Leo Feist, Inc., 8 F.2d 460, 461 (2d Cir.1925); H.M. Kolbe Co. v. Armgus Textile Co., 315 F.2d 70 (2d Cir.1963). The fact that this action was initiated under the Old Copyrights Act and the case decided after the New Copyrights Act came into effect on January 1, 1978, does not provide the court with any discretion in this matter. See, e.g., Boz Scaggs Music v. KND Corp., 491 F.Supp. 908, 912 n. 4 (D.Conn.1980). Accordingly, plaintiffs are entitled to costs in this action pursuant to 17 U.S.C. § 116.

Plaintiffs' motion for reconsideration of their request for attorneys' fees is primarily based upon the belief that defendants never made a...