James Joyce & Fair Use

Represented by Larry Lessig, Carol Loeb Shloss, an English professor at Stanford University, has filed a law suit in the U.S. District Court for the Northern District of California, against the Irish estate of James Joyce.

The lawsuit alleges that the estate has improperly interfered with the professor’s efforts to reproduce, consistent with the provision of “fair use” under copyright law, portions of Joyce’s writings. The estate reportedly has a long history of telling scholars and others that they cannot reproduce anything Joyce wrote without the estate’s permission. The professor seeks a declaratory judgment that her reproductions constitute fair use and, further, that the estate has engaged in copyright misuse and therefore cannot enforce its copyrights against her. The complaint is available here. The New Yorker also recently published an account of the case.

My article, Copyfraud, published this month in the NYU Law Review, deals with the problem of publishers, archives, and estates leveraging copyright law to prevent legitimate forms of copying and makes some proposals for how Congress and the courts should respond to this problem, including by expanding the rarely used “copyright misuse” doctrine.

Though I’m all in favor of developing the law in this area, I’m not sure that this is the right case to do it.

Some judges are going to bristle at this lawsuit. The materials at issue are excerpts from Joyce’s writings that the professor’s own publisher told her to remove from her book. At Lessig’s suggestion, she decided to post those removed excerpts on a website and provocatively told the Joyce estate of this plan. Copyright misuse, like patent misuse, is normally a defense once you’ve been hauled into court and found guilty of infringement. Here, the professor has not even been sued by the Joyce estate for infringement. Granted, she fears a lawsuit (as did her publisher), but there is a good chance that the court will deny the motion for declaratory relief–not wanting to intervene until the professor is actually sued.

This is a case to watch.

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4 Responses

  1. clerk says:

    Though copyright misuse is an affirmative defense, it is a perfectly proper claim in a declaratory judgment proceeding. Indeed, several district courts in the Ninth Circuit have approved of misuse in this posture.

    If you mean that the lack of an explicit lawsuit on behalf of the Joyce Estate will psychologically affect the determination, then you might be right. But the problem with copyright law is that statutory damages are so immense that virtually no author/scholar will risk going forward with publication. Estates know this and can thus misuse their copyrights without the costs of actual litigation (as the Joyce Estate has done for decades).

    Thus, this might be the precise posture a misuse claim needs to succeed in order to provide adequate protection against overbearing estates.

  2. Jason Mazzone says:

    Thanks, clerk.

    Are there cases, though, in which somebody who hasn’t been sued for infringement has obtained a DJ that a copyright owner has engaged in copyright misuse and so cannot bring in the future a lawsuit for copyright infringement?

    My initial reaction was that since misuse is a claim of unclean hands (that a court can, in its discretion, invoke to prevent a plaintiff from making use of the court to enforce its claim) you need a plaintiff actually seeking to make use of the court before the defense applies.

    Or perhaps that’s not correct as a matter of misuse doctrine or unclean hands doctrine more generally. Do you (or does another reader more familiar than I am with tort law) know?


  3. clerk says:

    Misuse originally derived from unclean hands, but the doctrine has expanded after it adopted some antitrust-like rationales. And copyright misuse, at least according to the four circuits that have adopted the doctrine, follows this mixed theory.

    Under the Ninth Circuit’s approach, the defense of copyright misuse forbids a copyright holder from “securing an exclusive right or limited monopoly not granted by the Copyright Office.” What this means is still not entirely clear because the doctrine is relatively new.

    But what is clear is that one can assert misuse in a DJ without the copyright holder bringing a lawsuit. Indeed, the Ninth Circuit first recognized the doctrine of copyright misuse in a DJ case. See Practice Mgmt. Info. Corp. v. American Med. Assoc., 121 F.3d 516 (9th Cir. 1997).

    Also, recently the Northern District explicitly responded to your concerns. In the Open Source Yoga Unity v. Choudhury, the copyright holder argued that “copyright misuse may only be asserted in a declaratory relief action when infringement claims have been asserted by the declaratory relief defendant.” 74 U.S.P.Q.2D 1434 (2005). But the court believed this to be an “unduly narrow reading of the copyright misuse doctrine.”

    It held: “In a declaratory relief setting, the declaratory relief plaintiff is thus permitted to ‘assert’ a claim for copyright misuse because the declaratory relief plaintiff is in fact likely to be accused of copyright infringement.”

    Of course, this doesn’t mean the copyright misuse claim will actually succeed. Courts remain unsure how to apply and (more importantly) how to limit the scope of the doctrine. But I agree that this is a case to watch.

  4. Jason Mazzone says:

    Thanks, clerk. Though, I’m not sure the case law is as clear as you conclude. In the Practice Management case, there was no holding that misuse is properly presented in a preemptive action for declaratory relief. The issue doesn’t seem to have been raised either in the district court or on appeal. Moreover, the misuse in that case involved the defendant having hoodwinked a government agency, which is quite different from the claim brought against the Joyce estate (though that might go to whether there is misuse not whether the claim can be raised in a declaratory action).

    In the Choudhury case, the district court recognized that the issue is tricky and, though finally deciding the claim can proceed, it ends up finding there was no misuse on the merits. That court’s holding is also not binding precedent.

    I’d want to see a case where the court holds that misuse can be claimed in a declaratory action and that the defendant’s misuse means it can not bring a future claim for infringement.

    The problem I see when you assert copyright misuse in an action for declaratory judgment is that there are real issues about how far a misuse holding will extend. (Will anybody be able to benefit from it? Does the misuse have to have occurred vis a vis you? Does it have to be misuse of a copyright with respect to the specific materials now at issue or can it be more general?) In general, unclean hands requires some kind of nexus between the misdeed and the party seeking to benefit from the defense. Perhaps in the Joyce case where you are talking about alleged threats to the professor seeking to use a specific set of materials there will be a way to apply the defense, even in a declaratory action, without opening the door too far to broader claims by others.

    Stay tuned.