All's Fair in Speech and Copyright: Fair Use and the First Amendment in Light of the "Dancing Baby Case"

Aimée Scala


Currently contracted as Director of Business Affairs and Legal Counsel at Disney Television Animation, Aimée is also Of Counsel for Anand Law PC where her practice focuses on intellectual property and media law, with an emphasis on copyright and the visual arts. She can be reached at aimee@aimeescalalaw.com.


In the wake of the Ninth Circuit's recent decision in Lenz v. Universal Music Corp.1 there has been a flurry of discussion by both critics and supporters alike. There are those who are concerned about, among other things, the holding's logistical implications for copyright owners. The owners must now conduct ever more thorough evaluations of particular online uses of their copyrighted works before taking advantage of the "takedown" provisions of the 1998 Digital Millennium Copyright Act (DMCA).2 Other commentators have applauded the decision as a victory for online speakers and a step towards reining in a system that grants too much power to copyright holders.3 Largely absent, however, has been any serious discussion of the implications of the ruling as a potentially significant step in protecting the First Amendment rights of online speakers within the DMCA.

The Lenz Case

In February 2007 Stephanie Lenz uploaded to YouTube a 29-second video of her toddler dancing to Prince's hit "Let's Go Crazy." Universal, administrator of Prince's copyrights, sent YouTube a takedown notice pursuant to the provisions of the DMCA.4 YouTube, availing itself of the DMCA's safe harbor provisions in order to avoid liability for infringement, removed the video upon receiving Universal's takedown notice and notified Lenz of the video's removal. Lenz then tried to restore the video by sending a counter-notification to YouTube5 and the video was eventually restored to YouTube in July 2007. Lenz then sued Universal, claiming that Universal knowingly misrepresented that her video was infringing under Section 512(f) of the DMCA.6

At the heart of the Lenz decision was the court's finding that copyright holders must conduct a subjective good faith analysis of whether the use in question qualifies as "fair use" under Section 107 of the Copyright Act before issuing a DMCA takedown notice. Put simply, because the plain language of 17 U.S.C. § 107 states that fair use is "not an infringement of copyright"—a point the Supreme Court has also emphasized7—Section 512(c)(3)(A)(v) of the DMCA then "unambiguously contemplates fair use as a use authorized by the law."8 Since fair use of a copyrighted work is a lawful use, neglecting to consider it before sending a takedown notice violates Section 512(c)'s requirement that the copyright holder submit a "statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by ... the law."

The Fair Use Doctrine

Entering American jurisprudence as early as 1845, the fair use doctrine began rather humbly as a judicial acknowledgement that, to a certain degree, all art and literary work borrows from other creators. The doctrine was eventually codified as the fair use provision of the 1976 Copyright Act, 17 U.S.C. § 107.10

In 1939 the fair use doctrine was described as "the most troublesome in the whole law of copyright," a refrain recently repeated by the Ninth Circuit.11 Its "troublesome" nature leaves little doubt that the contours of fair use are murky at best. Instead of offering a bright line rule, the doctrine requires an application of Section 107's multi-factor balancing test to the specific facts of a case. As a result, it is often difficult to discern prior to judicial determination whether one's use of another's copyrighted material is infringement or protected expression. Indeed, some have even claimed that the doctrine is "notorious for leading to unexpected and perhaps results ­driven decisions by courts."12 Though fair use has been a part of American copyright law for more than a century and a half, the varied interpretations—and sometimes contradictory rulings—by different courts facing similar factual circumstances underscore the point that the doctrine is unstable at best. Relying on fair use has been a source of risk for cultural producers and now, under the Ninth Circuit's understanding of the DMCA takedown provisions, a risk for copyright holders as well, by opening them up to potential liability under Section 512(f) for neglecting its consideration.

Incredibly, the Lenz court notes that the question of whether fair use must be considered at all prior to sending a DMCA takedown notice is "an issue of first impression in any circuit across the nation,"13 despite the fact that the DMCA has long been criticized for giving copyright holders too much power to the detriment of the public.14 The Ninth Circuit's recent acknowledgement that fair use must be considered in the DMCA context is refreshing. The doctrine's often-overlooked but crucial role in protecting First Amendment rights within the realm of copyright law is essential to the balance struck by courts to handle the tension created by these conflicting constitutional principles. In practice, however, it is often ignored due to the risk of defending an infringement suit, contributing to our current culture of arguably excessive licensing of copyrighted content.

Copyright and the First Amendment

There is an inherent tension between copyright law and the First Amendment of the U.S. Constitution: one grants authority to restrict the free flow of certain expression, while the other seeks to ensure the free flow of expression. Moreover, one of the fundamental roles of the First Amendment is to protect speakers from the silencing of speech before it occurs, or from prior restraints on their speech by the government.15 Indeed, apart from certain rare and "exceptional" circumstances such as publishing troop movements and the like,16 there is a heavy presumption against the constitutionality of prior restraints. In the realm of copyright law, however, prior restraints are a standard remedy to potential infringement—as a matter of course in copyright disputes, prior restraints, in the form of injunctions, are routinely granted and upheld.17

The DMCA takedown procedures take the ability to silence a speaker online to another level. Instead of having a neutral and impartial body, such as a court, evaluate whether a restraining order or injunction should be granted, the DMCA takedown procedures grant that power to the copyright holders themselves. A copyright holder sends a DMCA takedown notice to a content distributor, and the allegedly infringing content is "expeditiously" removed. The user who uploaded the content receives a notification and may dispute the takedown, but during the statutory takedown and counter-notification process, the speaker is silenced—a classic prior restraint.18 To check this power Congress built Section 512(f) into the DMCA. However, until Lenz, this provision has largely lacked any teeth. Copyright law is already unique in its ability to so quickly and effectively silence a speaker through the use of injunctions, and the DMCA effectively expanded this ability, often to the detriment of the speaker and the public, who generally have little ability or motivation to battle a copyright holder who may be overreaching.19

The Fair Use Doctrine's Role As Ensuring First Amendment Protections in Copyright Law

Despite the seeming constitutional conflict between copyright law and the First Amendment, courts have viewed internal aspects of the Copyright Act itself as largely resolving this tension by protecting First Amendment rights in two main ways: first by distinguishing between unprotectable ideas and protectable expression (the idea/expression dichotomy),20 and second, through the fair use doctrine. In addition, courts have noted that the constitutional purpose of the Copyright Act, "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,"21 itself promotes expression and dissemination of original works through the creation of market incentives.22

It is in this context that the fair use doctrine has been understood to be a safety valve for First Amendment rights within the Copyright Act—the doctrine ensures the right to free expression even within the realm of a legal regime that grants broad powers to silence speakers who might want to express themselves using the words and works of others. Indeed, "the 'fair use' defense allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances."23 Problems arise in practice within this neat theoretical framework, however, because of the significant guesswork surrounding which uses qualify as fair use, and which instead, constitute infringement.

Looking Ahead

The inherent problem of relying on an uncertain doctrine to protect fundamental speech rights is all the more significant for online speakers who can be silenced by automated takedown notices instead of an injunction granted by a reviewing court. The problem is also compounded by the nature of our present media reality. Our contemporary world is awash in images and information, all available to consume at the touch of a button from a myriad of devices. As cultural material proliferates and reaches larger audiences through the power of the Internet, such material becomes part of the way in which we express ourselves and communicate with one another. Memes, viral videos, photographs and advertisements are routinely appropriated and repurposed to amuse, criticize and raise political awareness, among other expressive purposes.

The First Amendment rightly protects these activities. The fair use doctrine theoretically balances these expressive rights with the rights of copyright holders, but unfortunately, it falls far short of the task. The Lenz case is significant because it acknowledges that fair use must be considered before issuing a DMCA takedown notice. However, perhaps the public is better equipped to create and use tools that strike the balance between these competing rights to protect all speakers, copyright holders and others from censorship and the chilling effects of litigation threats on the one hand, and potential exploitation of copyrighted material, on the other.

Private actors have been working in various contexts to generate acceptable bright line rules that seek to reduce the risks of relying on the fair use doctrine alone. For example, in the area of documentary film, a type of creative work that necessarily relies on the fair use doctrine and has increasingly been restricted due to excessive licensing demands and overreaching by some copyright holders, the Center for Social Media at American University has published the Documentary Filmmakers' Statement of Best Practices.24 In order to further assist documentarians, in 2007 The Fair Use Project of the Center for Internet & Society at Stanford Law School teamed up with Media/Professional Insurance and intellectual property attorney Michael Donaldson to provide pro bono legal representation to defend against copyright infringement claims and insurance in the event of liability to documentarians who utilized the Documentary Filmmakers' Best Practices in their work.26 More recently, and perhaps in part because of the Ninth Circuit's holding in Lenz, YouTube has decided to pay the costs of defending some of its users whose work, despite appearing to constitute fair use, has been removed through DMCA takedown procedures.

These attempts by private actors to protect free expression and reign in overreaching by copyright holders by helping to reduce the risk of relying on fair use by individual speakers is a positive move in the direction of attempting to ensure that the doctrine lives up to the role we have proscribed for it in protecting fundamental First Amendment values within the realm of copyright law. The Lenz decision bolsters these attempts by for the first time requiring copyright holders who take advantage of DMCA takedown procedures to formally acknowledge that fair use is a legitimate use of copyrighted work and that silencing online speakers through automated takedown notices without considering it may have real consequences.

It remains to be seen whether the ruling will actually discourage overreaching in the DMCA context because it is unclear at this point whether a subjective good faith belief by the copyright holder that the use in question does not qualify as fair use is sufficient to avoid liability under Section 512(f). Indeed, this is one of the questions the parties have sought to resolve in their respective motions for a rehearing. Although the Lenz court took pains to point out that mere "lip service" to the doctrine will still incur liability,27 a subjective standard would make the strength of the Lenz holding largely symbolic.

1 Lenz v. Universal Music Corp., 801 F.3d 1126 (9th Cir. 2015).

2 Elizabeth McNamara and Samuel M. Bayard, Can a Machine Consider Fair Use? 'Lenz' and Automated Takedown Notices, 254 N.Y. L. J., no. 61, Sept. 28, 2015, at 3; Jennifer Stanley and Kathleen Lu, Litigation Alert: Lenz v. Universal Music Group—Baby Keeps on Dancing (Sept. 23, 2015), FENWICK & WEST LLP, https://www.fenwick.com/publications/pages/lenz-v-universal-music-group-baby-keeps-on-dancin.aspx.

3 Mike Masnick, Big Confusing Mess Of A Fair Use Decision Over DMCA Takedowns (Sept. 14, 2015 at 10:47 am), TECHDIRT, https://www.techdirt.com/articles/20150914/10381232252/big-confusing-mess-fair-use-decision-over-dmca-takedowns.shtml; Jon Queally, Federal Court Marks Win for Fair Use in 'Dancing Baby Case:' Ruling sends strong message that copyright law does not authorize thoughtless censorship of lawful speech (Sept. 15, 2015), COMMON DREAMS, http://www.commondreams.org/news/2015/09/15/federal-court-ruling-marks-win-fair-use-dancing-baby-case.

4 Section 512 of the DMCA limits liability relating to online material. Section 512(c) grants Internet Service Providers (ISPs) safe harbor from liability for copyright infringement for content uploaded by the ISP's users as long as, among other things, the ISP does not have knowledge that the content is infringing and "expeditiously" removes, or disables access to, the infringing material once it learns of it, by notification to its required designated agent, or otherwise. 17 U.S.C. § 512 (c). The required elements of the notification of claimed infringement, or "takedown" notification, are listed in 17 U.S.C. § 512(c)(3) and require, among other things, "[a] statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law." 17 U.S.C. § 512(c)(3)(A)(v).

5 The counter-notification provisions of the DMCA can be found at 17 U.S.C. § 512(g).

6 17 U.S.C. § 512(f) states, "Any person who knowingly misrepresents under this section . . . that material or activity is infringing . . . shall be liable for any damages, including costs and attorney's fees, incurred by the alleged infringer. . . ."

7 Lenz, 801 F.3d at 1131 ("Supreme Court precedent squarely supports the conclusion that fair use does not fall into the latter camp [of an affirmative defense that excuses impermissible conduct]: '[A]nyone who . . . makes a fair use of the work is not an infringer of the copyright with respect to such use.'") (Quoting Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 433 (1984)).

8 Lenz, 801 F.3d at 1131.

9 Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845) (No. 4,436) ("In truth, in literature, in science and in art, there are, and can be, few, if any things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science, and art, borrows, and must necessarily borrow, and use much which was well known and used before.")

10 17 U.S.C. § 107 states that "the fair use of a copyrighted work . . . is not an infringement of copyright. In determining whether the use made of a particular work 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; (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."

11 Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939); Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th Cir. 2012).

12 Gary J. Gorham, What's Fair About Copyright Law?, 1 ELIPS L. LAB, no. 1, April 2014.

13 Lenz, 801 F.3d at 1131.

14 See, e.g., JESSICA D. LITMAN, DIGITAL COPYRIGHT 174 (2d ed. 2006), ("In the efforts to enact the Digital Millennium Copyright Act, stakeholders focused almost exclusively on the copyright holders' side of [the] bargain" between the rights of the public and those of copyright holders).

15 See, e.g., N.Y. Times Co. v. United States, 403 U.S. 713, 714 (1971) ("Any system of prior restraints of expression comes to this Court bearing a heavy burden against its constitutional validity.") (Internal citations and quotations omitted.)

16 Near v. Minnesota, 283, U.S. 697, 716 (1931).

17 Despite the fact that in copyright disputes the prior restraint is often being requested by a private actor, the granting or enforcement of an injunction by the judiciary qualifies as "government action" such that the First Amendment is implicated. See, e.g., SunTrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1259 (11th Cir. 2001) (upholding the vacating of preliminary injunction which sought to enjoin a publisher from releasing a book on the grounds that the injunction "was an unconstitutional prior restraint.")

18 Although it is true that in a technical sense a speaker is not restrained from speaking pre publication under DMCA takedown procedures, it is also true that in a practical sense, the result of the procedures—immediate and complete removal of the content—operates just like a prior restraint because the work is not available for public consumption while a determination of its lawfulness is made.

19 Though Lenz raised damages arguments relating to her First Amendment rights, the court declined to consider them because neither Universal nor YouTube are government actors. Lenz, 801 F.3d at 1137 n. 4 ("Lenz may not recover damages for 'impairment of free speech rights.' No authority supports the recovery of nominal damages caused by a private actor's chilling of free speech rights. All of the cases Lenz cites addresses challenges to governmental action.") Defendants' private actor status, however, might not end the inquiry. Temporary restraining orders and permanent injunctions requested by private actors "are classic examples of prior restraints." Alexander v. United States, 509 U.S. 544, 550 (1993) ("The term 'prior restraint' is used to describe administrative and judicial orders forbidding certain communications when issued in advance of the time that such communications are to occur.") (Citations and quotations omitted; emphasis in original). Though perhaps a colorful argument, in the context of the DMCA, a private actor is granted the right to effectively silence a speaker. It is worth considering that, because the government played a substantial role in the creation of the policy behind the administrative takedown and counter-notification procedures embodied in the DMCA, it played a significant enough role in Universal's action such that a First Amendment claim should not be dismissed so easily. Of course, Lenz did not attempt to argue that Universal's actions fell within the realm of state action when it issued the takedown notice, only that loss of First Amendment rights at all is an "irreparable harm" that should be compensated because of the DMCA's authorization of "any" damages under Section 512(f). See Lenz v. Universal, Nos. 13-16106, 13-16107, Appellee/Cross-Appellant Ans. and Opening Br. 61-2, Dec. 6, 2013, ECF No. 42, available at https://www.eff.org/files/2013/12/17/040.1_our_cross-appeal_and_opp_12.6.13.pdf.

20 "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b).

21 U.S. Const. Art. I, Sec 8.

22 See, e.g., Harper & Row, Publishers, Inc. et al. v. Nation Enterprises et al., 471, U.S. 539, 558 (1985) ("the Framers intended copyright itself to be the engine of free expression. By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas.")

23 Eldred v. Ashcroft, 537 U.S. 186, 219 (2003).

24 Documentary Filmmakers' Statement of Best Practices in Fair Use, Nov. 18, 2005, http://www.cmsimpact.org/sites/default/files/fair_use_final.pdf.

25 See Lauren Gelman, Fair Use Project Helps Launch Breakthrough Initiative for Documentary Filmmakers, STANFORD L. SCH.: THE CTR. FOR INTERNET AND SOC'Y. (Feb. 27, 2007 at 10:34 am), http://cyberlaw.stanford.edu/blog/2007/02/fair-use-project-helps-launch-breakthrough-initiative-documentary-filmmakers.

26 Cecilia Kang, YouTube to Pay Fees for Some Video Makers to Fight Takedowns, N.Y. TIMES (Nov. 19, 2015), http://www.nytimes.com/2015/11/20/technology/youtube-to-pay-fees-for-some-video-makers-to-fight-takedowns.html?_r=0.

27 Lenz, 801 F.3d at 1135 ("A copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to § 512(f) liability.")

ELIPS home page link ELIPS newsletters LACBA twitter link ELIPS LinkedIn link ELIPS on facebook