626 F.2d 1171 (5th Cir. 1980), 78-1639, Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc.

Docket Nº:78-1639.
Citation:626 F.2d 1171
Party Name:TRIANGLE PUBLICATIONS, INC., a Pennsylvania Corporation, Plaintiff-Appellant, v. KNIGHT-RIDDER NEWSPAPERS, INC., a Florida Corporation, Defendant-Appellee.
Case Date:July 24, 1980
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

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626 F.2d 1171 (5th Cir. 1980)

TRIANGLE PUBLICATIONS, INC., a Pennsylvania Corporation,



KNIGHT-RIDDER NEWSPAPERS, INC., a Florida Corporation,


No. 78-1639.

United States Court of Appeals, Fifth Circuit

July 24, 1980

Reginald L. Williams, Miami, Fla., Melville B. Nimmer, Beverly Hills, Cal., for plaintiff-appellant.

Steel, Hector & Davis, Talbot D'Alemberte, Patricia A. Seitz, James D. Spaniolo, Miami, Fla., for defendant-appellee.

Appeal from the United States District Court for the Southern District of Florida.

Before TUTTLE, BROWN and TATE, Circuit Judges.

JOHN R. BROWN, Circuit Judge:

This case raises significant issues under the laws of copyright and free speech. For years, Courts and commentators have recognized a potential conflict between copyright and the First Amendment. 1 However,

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until the District Court's opinion in the case now before us, 445 F.Supp. 875 (S.D.Fla.1978), no Court had ever held that a copyright suit could be defeated by a First Amendment defense. We affirm the result reached by the District Court, but disagree with the Court's rationale. Contrary to the District Court, we hold that fair use constitutes a valid defense to the copyright infringement suit involved in this case. The majority does not reach the issue of the First Amendment defense upon which the District Court based its judgment for the Appellee.

I. How It Came About And What Happened

The plaintiff-appellant, Triangle Publications (Triangle), is the publisher of "TV Guide," a periodical containing television schedules and articles relating to television entertainment. The defendant-appellee, Knight-Ridder Newspapers (Knight-Ridder), publishes the Miami Herald Newspaper (the Herald). During the fall of 1977, Knight-Ridder began a campaign to promote a newly developed television booklet which was to be included as a supplement to the Sunday edition of the Herald. Like TV Guide, the booklet contains television schedules and articles related to that media. The supplement was introduced to the public on November 13, 1977, through a colored newspaper advertisement in the Miami Herald. See Appendix. The following week newspaper vending machine posters (known in the trade as rack cards) advertising the booklet were displayed throughout the southern part of Florida. Subsequently, four additional newspaper ads were introduced promoting the booklet, each displaying an actual-sized reproduction of a TV Guide cover next to an actual-sized reproduction of the cover of the Herald's new TV supplement. 2

In addition, the booklet was advertised in two thirty second television commercials. The first is based on the theme "Goldilocks and the Three Bears." It compares the size of the Herald's former television guide with the Herald's new supplement and with TV Guide, concluding that the former supplement is too large, that TV Guide is too small, but that the new supplement is just the right size for human beings. 3 While TV Guide is not mentioned by name, one of the actors in the commercial is shown briefly with a back-dated copy of TV Guide in hand. The cover of the TV Guide issue is clearly visible. The commercial was used for several weeks and was then discontinued. The second commercial is a monologue. After identifying TV Guide as the competing product, the announcer suggests that the Herald's supplement is a better value for the money because the purchaser gets the entire newspaper, not merely a TV booklet. 4 During the course of his statement,

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the announcer holds up a back-dated issue of TV Guide with the cover clearly visible. The announcer then puts down the TV Guide and holds up first a copy of the Herald's supplement and then a copy of the Sunday edition of the Herald. This commercial was being used at the time of the District Court's hearing and Knight-Ridder contemplated using it in the future.

The only conduct by the Herald being challenged here is the reproducing of TV Guide covers. The verbal reference to TV Guide made in the second commercial 5 is not being attacked. Since each issue of TV Guide is individually copyrighted, and since magazine covers have in the past been afforded copyright protection, see, e.g., Conde Nast Publications, Inc. v. Vogue School of Fashion Modeling, Inc., 105 F.Supp. 325 (S.D.N.Y.1952), Triangle claims that the Herald's showing of TV Guide covers violates § 106 of the new Copyright Act, 17 U.S.C.A. § 106 (1976). 6 Triangle moved in the District Court for preliminary and permanent injunctions (and also sought damages).

The District Court found that the challenges to the five newspaper ads, the rack cards and the first television commercial were moot for purposes of a preliminary injunction, reasoning that none of these ads were then being used. Since all that was left was the second television commercial, the Court denied the motion for a preliminary injunction, pointing out that nearly all of the alleged harm had already occurred and that the likelihood of irreparable injury had therefore not been shown.

The Court also denied the motion for a permanent injunction. In so doing, the Court considered four issues. First, the Court considered whether the cover of a magazine is protected by the magazine's copyright, holding that it is. Second, the Court found that the use of the cover was a "display" as defined by § 106(5) of the Act. Third, the Court held that the display was not protected by the defense of fair use. Fourth, the Court held, based on recent Supreme Court cases giving First Amendment protection to commercial speech, 7 that the First Amendment place limits on the law of copyright and that the Herald's display of TV Guide was constitutionally protected activity.

II. Fair Use

It is undisputed on this appeal that unless protected by fair use or the First Amendment, Knight-Ridder's use of TV Guide covers constitutes as infringement under the copyright law. 8 Accordingly, we proceed

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directly to the question of whether the defense of fair use justifies Knight-Ridder's actions.

The question of fair use has been appropriately described as "the most troublesome in the whole law of copyright." Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 (2d Cir. 1939). Although no definition of fair use that is workable in every case has ever evolved, a frequently quoted definition of fair use is "a privilege in others than the owner of a copyright to use the copyrighted material in a reasonable manner without his consent, notwithstanding the monopoly granted to the owner (by the copyright)." Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 306 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967), quoting Ball, The Law of Copyright and Literary Property, 260 (1944).

Fair use is "a 'rule of reason' fashioned by Judges to balance the author's right to compensation for his work, on the one hand, against the public's interest in the widest possible dissemination of ideas and information, on the other." Sobel, supra note 1, at 51, quoting Latman, Fair Use of Copyrighted Works 5 (Sen. Comm. on Judiciary Study No. 141960). The fair use doctrine frequently serves to eliminate potential conflicts between copyright and free speech. See Denicola, Copyright and Free Speech: Constitutional Limitations on the Protection of Expression, 67 Calif.L.Rev. 283, 299, 303-04 (1979) (hereafter cited as Denicola). The doctrine first appeared back in 1841 in Folsom v. Marsh, 9 F.Cas. 342 (C.C.D.Mass.1841), although the precise term "fair use" did not make its appearance until 28 years later in Lawrence v. Dana, 15 F.Cas. 26, 60 (C.C.D.Mass.1869). See generally Case Note, Copyright and the First Amendment Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 445 F.Supp. 875 (S.D.Fla.1978), 1979 Wisc.L.Rev. 242, 246 & n.25 (hereafter referred to as Wisconsin Note). Since its beginnings, the doctrine of fair use has been refined, honed, and clarified in many Court decisions. However, the doctrine was not codified until the enactment of the 1976 Copyright Act.

In codifying the concept of fair use, Congress made clear that it in no way intended to depart from Court-created principles or to short-circuit further judicial development:

The bill endorses the purpose and general scope of the judicial doctrine of fair use, but there is no disposition to freeze the doctrine in the statute, especially during a period of rapid technological change. Beyond a very broad statutory explanation of what fair use is and some of the criteria applicable to it, the courts must be free to adapt the doctrine to particular situations on a case-by-case basis. Section 107 is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.

H.R.No.94-1476, 94th Cong., 2d Sess. 66 (1976) (House Report), reprinted in (1976) U.S.Code Cong. & Admin.News, pp. 5659, 5680 (referred to as USCCA). See also Sen.Rep.No.473, 94th Cong., 1st Sess. 62 (1975) (Senate Report).

The 1976 Copyright Act instructs Courts to consider four factors all gleaned from the case law 9 in determining whether the defense of fair use applies:

. . . In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

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(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.

17 U.S.C.A. §...

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