Arnold J rules on the Beatles, a documentary on their first US concert ever ... and US fair use

Here Comes the Sun
also for the defendants in this case?

Can the unauthorised use of copyright-protected works amounting to nearly 42' in a 95' film be considered fair use under §107 of the US Copyright Act?

This, together with other issues, is what Arnold J had been asked to determine in Sony/ATV Music PublishingLLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch) (1 July 2015), an intriguing case decided earlier this week, having to do with the Beatles and a documentary concerning their first US concert ever. This was held at the Washington DC Coliseum in 1964, and is considered the beginning of the Beatlemania in the US. On that occasion the group performed 12 songs, including the lovely All my loving. The 35' concert was videotaped for subsequent exhibition at cinemas and theatres across the US.

The documentary is "a skilfully-edited synthesis of three main types of material: the [c]oncert [v]ideo; other archive films and still photographs; and newly-filmed interviews with a number of interviewees." Its narrative is summarised at paras 17 and 18 of the judgment. As highlighted by Arnold J, "[i]t is important to appreciate that the [d]ocumentary incorporates almost the whole of the [c]oncert [v]ideo" [para 19].

Background

In 2009 one of the defendants (Iambic) acquired a copy of the master tape of the concert video with the intention of making a documentary of the concert entitled The Beatles: The Lost Concert. Subsequently the rights to the tape were transferred to the first defendant (WPMC).

Between late 2009 and October 2010 Iambic negotiated with the claimants (collectively SATV, holders of the rights to the relevant Beatles songs) for a licence to reproduce and otherwise exploit the works as part of the soundtrack to the documentary. No synchronisation licence was executed as a result of these negotiations.

In 2012 SATV discovered that the documentary was being promoted by a means of a website and a trailer. 

Among other things, SATV brought proceedings in both the UK (where the documentary had been made, and pursuant to the Supreme Court decision in Lucasfilm) and the US (this being the defendants' principal target market).

The defendants did not dispute that, lacking a licence, they had committed acts that infringe UK copyright (with no defences being available).

What Arnold J had to determine was:

(1) Whether (under English law) a collateral contract to grant a synchronisation licence was concluded during the negotiations; 

(2) Whether (under English law), if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronisation licence; 

(3) Whether the exploitation of the documentary in the US would be an infringement of the US copyrights in the works, or whether instead the fair use defence would apply [the point under US law is currently being considered also in parallel proceedings in the US].  

Mr Justice Arnold

The judgment

Arnold J concluded in the negative in relation to all three issues.

In relation to the first point, the judge held that no contract could be considered as subsisting between the claimants and defendants. 

As regards the proprietary estoppel point, Arnold J derived from Motivate Publishing that such defence is not available in a case like the one at hand, ie a 'subject to contract' case.

Fair use under US law

In determining whether the use made of the songs could be considered fair use under §107 of the US Copyright Act, the judge started his analysis by recalling the relevant factors, these being:

"(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;

(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."

Besides the US Supreme Court decision in Campbell, Arnold J also recalled Pierre Laval's influential article entitled Toward a Fair Use Standard, in which he held that "the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original."

As a preliminary point Arnold J also addressed criticisms of the fair use doctrine as "indeterminate and unpredictable". The judge recalled that "[o]ver the last decade, however, work by scholars such as Pamela Samuelson, Barton Beebe and Matthew Sag has demonstrated that what at first blush may appear to be an amorphous mass of individual decisions can be analysed and categorised in the same way as other areas of common law (negligence, for example)." [para 100]

Then Arnold J turned to individual consideration of the four fair use factors, as considered in Campbell.

Not this time

With particular regard to the first three factors, he rejected the claimants' argument that to succeed in a fair use defence, the defendant must show that no more has been taken of the copyright work than is necessary for the transformative purpose. 

According to the judge, "what the defendant must show is that the amount taken is reasonable, and not excessive. If no more is taken than is necessary, then that will be reasonable. The defendant does not have to show that he has taken the minimum necessary, however." [para 107] 

The judge also accepted WPMC's contention that "it can be fair use to copy the whole of the copyright work where this is justified by the transformative purpose, particularly but not exclusively if the copy is not a high quality one (e.g. where an image is reduced in size)." [para 108]

In considering whether the use made of the copyright works [isn't it just so refreshing to read about fair use without seeing references to 'copyrighted' works?] could amount to fair use, the judge held that:

Factor (1) - The documentary amounted to a commercial use of the works, and was partly transformative.

Factor (2) - The copyright works are fully expressive works falling within the core of copyright protection.

Factor (3) - The documentary reproduced the entirety of each of the copyright works. According to the judge in this case "the amount copied is clearly excessive. If the [d]ocumentary had merely used a number of excerpts from the [c]oncert [v]ideo, and hence of the [c]opyright [w]orks, then that might well have been reasonable having regard to the transformative purpose. As it is, however, the Documentary goes well beyond that ...[W]hat WPMC are presenting amounts to a package of the [c]oncert [v]ideo with additional material. Furthermore, there is substantial additional use of the [c]opyright [w]orks as part of the soundtrack. Not only does the usage exceed what is necessary to illustrate the nature and effect of the Beatles' performances of the [c]opyright [w]orks, it exceeds what is reasonable for that purpose" [para 116]

Factor (4) - Here the defendants failed to establish that the documentary would not damage the market for, or potential value of, the copyright works if permitted as fair use. On the contrary, Arnold J considered "likely that this would damage the market for, or potential value of, the [c]opyright [w]orks." [para 118] 

Hence Arnold J concluded that inclusion of the copyright works in the documentary did not amount to fair use.