American Geophysical Union v. Texaco Inc.

• Decision Date: 26 October 1992
• Docket Number: No. 85 Civ. 3446(PNL).,85 Civ. 3446(PNL).
• Citation: 802 F. Supp. 1
• Parties: AMERICAN GEOPHYSICAL UNION, Elsevier Science Publishing Co. Inc., Pergamon Press, Ltd., Springer-Verlag, GmbH & Co., K.G., John Wiley & Sons, Inc. and Wiley Heyden, Ltd., on behalf of themselves and others similarly situated, Plaintiffs and Counterclaim Defendants, v. TEXACO INC., Defendant and Counterclaim Plaintiff.
• Court: U.S. District Court — Southern District of New York

802 F. Supp. 1

AMERICAN GEOPHYSICAL UNION, Elsevier Science Publishing Co. Inc., Pergamon Press, Ltd., Springer-Verlag, GmbH & Co., K.G., John Wiley & Sons, Inc. and Wiley Heyden, Ltd., on behalf of themselves and others similarly situated, Plaintiffs and Counterclaim Defendants, v. TEXACO INC., Defendant and Counterclaim Plaintiff.

No. 85 Civ. 3446(PNL).

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

July 23, 1992.

Modified July 24, 1992 and July 28, 1992.

Opinion and Order on Allowance of Request for Immediate Appeal October 26, 1992.

COPYRIGHT MATERIAL OMITTED

Proskauer Rose Goetz & Mendelsohn (Stephen Rackow Kaye, Jon A. Baumgarten, James F. Parver, Christopher A. Meyer, Karen E. Clarke, Christopher Collins, Mazelle Hedaya, of counsel), New York City, for plaintiffs and counterclaim defendants.

Kaye, Scholer, Fierman, Hays & Handler (Milton J. Schubin, Thomas A. Smart, Richard

A. De Sevo, of counsel), New York City, Joseph P. Foley, Texaco Inc., White Plains, N.Y., for defendant and counterclaim plaintiff.

OPINION AND ORDER

Findings of Fact and Conclusions of Law

LEVAL, District Judge.

I.

This class action tests the question whether it is lawful under the U.S. Copyright Act, 17 U.S.C. ? 101, et seq., for a profit-seeking company to make unauthorized copies of copyrighted articles published in scientific and technical journals for use by the company's scientists employed in scientific research. The plaintiffs are publishers of scientific and technical journals that publish copyrighted material under assignment from the authors. The defendant is Texaco Inc., one of the largest corporations in the United States, which engages in all aspects of the petroleum business from exploration through transportation and refining to retail marketing. This opinion decides the limited issue whether the making of single copies from plaintiffs' journals by a Texaco scientist is fair use under Section 107 of the Copyright Act of 1976. 17 U.S.C. ? 107. Many of the facts are not seriously disputed.

Texaco's Scientific Research. Texaco engages in substantial scientific research directed toward improving Texaco's products and developing new products and processes. Texaco employs between 400 and 500 scientists and engineers at six research centers in the United States, including one in Beacon, New York. It spends in excess of $80 million annually in carrying on scientific and technical research, including an average of approximately $37 million a year from 1985 to 1987 at the Beacon facility.

To support its research activities, Texaco subscribes to numerous scientific and technical journals, some published by various of the plaintiffs, and maintains large libraries of such materials. Texaco scientists, on learning of an article that may be helpful or important to their research, regularly make (or cause to be made by Texaco's research libraries) a photocopy to be read, kept in their personal files and used in the laboratory in the course of their research work.

Use of Journals in Research: Photocopying. Learned journals play an important part in scientific research. They serve to disseminate broadly and with reasonable rapidity the results of scientific research being conducted in many places. It is of great importance for scientists doing research to keep abreast of the publication of such articles for many reasons. The reasons include awareness of new learning, suggestion of new ideas and approaches, avoidance of duplication of experimentation that has already been done, avoidance of avenues of experimentation that have been demonstrated to be fruitless, adoption for productive research of findings that have resulted from the research of others, and other valuable uses too numerous and varied to mention.

Because it is the important for scientists to remain abreast of such publications, industrial corporations that engage in research use a variety of methods to keep their scientists aware. Among the methods used are purchasing subscriptions to such journals and routing of the newly published issues among the scientists, circulating summaries or indices of recently published studies, circulating photocopies of tables of contents of recently published issues of journals, and simple word of mouth by which scientific co-workers mention to one another recent publications of interest.

It is commonplace for scientists employed at Texaco, and in industry generally, to make for themselves (or to request from the company library) photocopies of particular articles that are expected to be useful in their work. There are numerous reasons for the use of such photocopies. Most importantly, it frees the original journal to circulate among colleagues or to return to the library and permits numerous scientists to keep copies of the same material, or of material bound in the same volume. Photocopying also permits scientists to make and maintain easily referenced personal files of pertinent articles, instead of surrounding themselves with bulky original volumes that include much material that is not relevant for the particular researcher. It avoids the need for repeated trips to the library. It eliminates the risk of error that enters into transcription; it permits a scientist initially to simply file the copy in an appropriate subject file for later review instead of immediately studying the article in detail and taking notes; copies of the article can be taken into the laboratory for use in conducting or evaluating experiments without the risks of errors in transcription and in the misapplication of equations or data; when used in the laboratory, copies eliminate the risk that chemicals or equipment might destroy the original; copies are more conveniently taken home to be read; the reader can make marginal notes directly on copies without defacing the original.

Plaintiffs contend that by this photocopying Texaco infringes the plaintiffs' copyrights. In answer to the complaint, Texaco raises the defense, among others, of "fair use." It contends that such photocopying by scientists in industry is a reasonable and customary practice, necessary to the conduct of scientific research, and that it does not infringe the publishers' copyrights. The parties have stipulated that, prior to the trial of any other issues, trial would be submitted to the Court on a written record limited to the question of fair use under ? 107. See Procedural and Scheduling Stipulation and Order Governing the Fair Use Trial, entered July 26, 1990.

Donald Chickering, II, Ph.D. For convenience and to avoid untoward discovery expenses with respect to largely duplicative matters, the stipulation provides that the trial of the issue of fair use be conducted with respect to eight photocopies found in the files of an arbitrarily selected one of Texaco's several hundred scientific researchers.¹ The lot fell on one Donald H. Chickering, II, Ph.D., employed at the Texaco research center at Beacon, New York. Chickering's files were found to contain a number of photocopies of numerous items from various scientific and technical journals. As the subject of this limited issue trial, plaintiffs selected eight copies of complete pieces that appeared in the Journal of Catalysis, a monthly publication of Academic Press, Inc., which is one of the plaintiffs in this action.

Chickering is a Ph.D. in chemical engineering who specializes in the study of catalysts and catalysis. Catalysis is "the change in the rate of a chemical reaction brought about by often small amounts of a substance that is unchanged chemically at the end of the reaction." Webster's Third New International Dictionary 350 (1976). Chickering has been employed at the Beacon research facility since January 1981 as a "technical man at the bench," that is, a professionally degreed scientist who designs and performs experiments and other work in the laboratory. Chickering's laboratory experiments have involved basic research on catalysis, including investigating various ways of analyzing catalysts, designing, building and operating chemical reactors, using catalysts to make usable products out of previously wasted hydrogen and carbon monoxide, and upgrading the quality of fuels through catalysis. At the time of his testimony, Chickering was the group leader of the "Automation Design and Construction Group," which provided engineering and automation research to support catalysis research, new technology research, and advanced research.

Shortly after Chickering joined Texaco, he had the library at Beacon put his name on the routing lists for the scientific and technical journals that he believed would be of professional interest. Consistent with what Texaco contends is reasonable and customary for scientists employed by for-profit companies, Chickering often photocopied, or had the library photocopy for him, copyrighted articles in scientific and technical journals.

As noted, plaintiffs selected from Chickering's files eight copies of material from Academic Press' Catalysis. These included four "articles," two "notes" and two "letters to the editor."² Each of them was published with a copyright notice showing Academic Press as the owner of the copyright and reserving all reproduction rights. It is assumed for purposes of the trial of the fair use issue that each was indeed copyrighted matter and that the copyright had been validly assigned by the authors to Academic Press.

In each case Chickering photocopied the entirety of the particular article, note or letter. He selected those pieces because the discussion was pertinent to research that he was conducting or expected to conduct in the future and because he expected that the discussion and the information conveyed would be helpful to him in conducting research for Texaco. Although Texaco's papers and the affidavits of its personnel repeatedly refer to Chickering's use of these materials as his "personal" use, it is clear that this refers to research pursuant to...