A case from the Seventh Circuit Court of Appeals deals with the issues related to the fair use of works that were not “published” at the time the claimed infringer infringed on the works.

        In these were the facts as set forth by the Court in Chicago Board Of Education vs. Substance, Inc. and George N. Schmidt:

The following facts are either undisputed or indisputable. At some considerable expense (more than $1 million, according to Schmidt, though the actual figure is not in the record), the school board created and copyrighted a series of standardized tests that it called the “Chicago Academic Standards Exams” (CASE). These were, in copyright lingo, “secure tests.” “A secure test is a nonmarketed test administered under supervision at specified centers on specific dates, all copies of which are accounted for and either destroyed or returned to restricted locked storage following each administration. For these purposes a test is not marketed if copies are not sold but it is distributed and used in such a manner that ownership and control of copies remain with the test sponsor or publisher.” 37 C.F.R. § 202.20(b)(4). To maintain secrecy, the Library of Congress does not retain a copy of such a test. § 202.20(c)(2)(vi). [emphasis added]

The first step in making the CASE tests was to create a pool of questions—the record does not indicate how many—that would be drawn on to create the individual exams, each consisting of between three and 30 questions. The teachers who administered the exams were instructed not to make copies of them and to collect the test papers at the end of each exam so that the tests could be reused. Reuse of questions in standardized testing is not a sign of laziness but a way of validating a test, since if performance on the same questions is inconsistent from year to year this may indicate that the questions are not well designed and are therefore eliciting random answers. [citations omitted] Such validation is of particular importance for a new battery of standardized tests, such as CASE, the subject of a three-year pilot program.  And publication of standardized tests would not only prevent validation by precluding reuse of any of the questions in them, but also require the school board to create many new questions, at additional expense; and they might not be as good as the original questions, in which event there would be diminished quality as well as added cost. Hence the copyright category “secure tests.[emphases added]

        The Court stated that copyright exists for unpublished works.  In this regard, section 104 (a) of the United States Copyright law says:
§104. Subject matter of copyright: National origin

(a) Unpublished works. The works specified by sections 102 and 103, while unpublished, are subject to protection under this title without regard to the nationality or domicile of the author.

        Furthermore, section 301 (a) states:
§301. Preemption with respect to other laws

(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. [emphasis added]

        Thus, unpublished works are protected by the copyright law and thus, if the defendants infringed on the said works, the plaintiff’s rights would be equally impacted as if the protected works had been published.  The Court stated:
There is no analytical difference between destroying the market for a copyrighted work by producing and selling cheap copies and destroying the subsequent years’ market for a standardized [i.e. unpublished] test by blowing its cover.
        In other words, even though the act of publishing the unpublished tests does not destroy the “market value” of the tests since in this instance the tests were never intended to be sold, it still can destroy the “value” of the tests since it would require the board to develop new questions etc.  And under any circumstances, the right of copyright in the unpublished material protects the copyright proprietor.  Except if the publication is protected by the fair use doctrine.

        The defendant wrote about these tests in a newspaper that the defendant edited and in the article, the defendant published 6 of the tests. In the words of the Court:

He did this because he thought them bad tests and that he could best demonstrate this by publishing them in full. His answer to the school board’s complaint asserted that the unauthorized copying and publication of the tests were a fair use and therefore not a copyright infringement.
The Legal Positions of the Parties

        The school board claimed that the defendant had infringed and that fair use did not apply.  They cited to the case of Harper & Row Publishers, Inc. vs. Nation Enterprises in which the defendant had quoted parts of the then unpublished memoirs of Gerald Ford and the Court in that case said that fair use did not apply and that the act of publishing the passages from the unpublished memoirs had reduced the value of the forthcoming book.  The Court in this case distinguished the Nation case as follows:

But the board overlooks the fact that the Nation was not publishing the excerpts from Ford’s memoirs in order to be able to criticize Ford, or anyone or anything else, and the further fact that Schmidt was not trying to steal the school board’s market, because unlike Harper & Row the school board did not intend ever to publish the copyrighted work that the alleged infringer published first. The second point has little force, as we’ll see; but the first is important. As Schmidt points out, one office of the fair use defense is to facilitate criticism of copyrighted works by enabling the critic to quote enough of the criticized work to make his criticisms intelligible. Copyright should not be a means by which criticism is stifled with the backing of the courts. And since doubts that fair use could ever be a defense to infringement of a copyright on an unpublished work (see, e.g., Salinger v. Random House, Inc., supra, 811 F.2d at 97) have now been stilled (see 17 U.S.C. § 107; Sundeman v. Seajay Society, Inc., 142 F.3d 194, 204-05 (4th Cir. 1998); Wright v. Warner Books, Inc., 953 F.2d 731, 740 (2d Cir. 1991)), the fact that the CASE tests were quasi-secret does not exclude the possibility of a fair use defense.
        On the other hand, the Court did not allow the full argument of the defendant in this regard either.  The Court said that the defendant “overreads” the Court’s decision in Ty, Inc. vs. Publications International, Ltd. [the reader should read the article I wrote discussing this case in “Beanie Babies Collector’s Guide: Another Study in Fair Use”].
Ty was trying to enjoin the publication of Beanie Babies collectors’ guides that contained criticisms of some of the Beanie Babies, with accompanying photographs that constituted derivative works of the soft-sculpture Beanie Babies and hence prima facie infringements of Ty’s copyrights. There was no danger that if Ty failed to enjoin the publication of the collectors’ guides the value of its copyrights would be impaired, because collectors’ guides are not substitutes for the Beanie Babies themselves. More precisely, the only harm that could come to Ty from the unauthorized publication of the guides would be caused by the criticisms of particular Beanie Babies, whereas a harm to the school board from Schmidt’s copying and publication that is independent of any criticisms is the cost of creating substitutes for the questions that Schmidt published and of extending the period of the pilot program because his publishing the six tests prevented the board from asking any of the questions in those tests in subsequent years.[emphasis added]
        Thus, clearly there is a conflict between the rights of the copyright owner and the rights of the user of the material, as there is in any fair use case.  The Court stated:
So where to draw the line? The question cannot be answered precisely. The fair use defense defies codification. As we said in Ty, the four factors that Congress listed when it wrote a fair use defense (a judicial creation) into the Copyright Act in 1976 are not exhaustive and do not constitute an algorithm that enables decisions to be ground out mechanically. [citing cases] The general standard, however, is clear enough: the fair use copier must copy no more than is reasonably necessary (not strictly necessary— room must be allowed for judgment, and judges must not police criticism with a heavy hand) to enable him to pursue an aim that the law recognizes as proper, in this case the aim of criticizing the copyrighted work effectively.
        The Court discussed the balance of factors involved in the position of both parties.  These discussions are always fact-specific and although the general rules about fair use can be recited, each case is necessarily going to be treated differently.  This is precisely the reason that fair use is always a risky defense since it is virtually impossible to know, beforehand, whether a given use is going to be held to be a fair use.  I emphasize the words “given instance” below to stress the point that I have made in all the articles dealing with fair use: these are all fact-specific.

        The Court found that in the given instance of this case, the balance swung in favor of the school board in protecting its rights in the tests.

So if Schmidt can publish six tests, other dissenters can each publish six other tests, and in no time all 44 will be published. The board will never be able to use the same question twice, and after a few years of Schmidtian tactics there will be such difficulty in inventing new questions without restructuring the curriculum that the board will have to abandon standardized testing. Which is Schmidt‘s goal.

If ever a “floodgates” argument had persuasive force, therefore, it is in this case. And this suggests another fair use factor that supports the school board: the aspect of academic freedom that consists of the autonomy of educational institutions, see, e.g., Grutter v. Bollinger, 123 S. Ct. 2325, 2339 (2003); Piarowski v. Illinois Community College Dist. 515, 759 F.2d 625, 629 (7th Cir. 1985) (cases involving a university and a college respectively, but the point is general), including their authority here gravely threatened to employ standardized tests in support of their conception of their educational mission. If Schmidt wins this case, it is goodbye to standardized tests in the Chicago public school system; Schmidt, his allies, and the federal courts will have wrested control of educational policy from the Chicago public school authorities.

        In this given instance, the Court found that the defendant failed to produce evidence in support of his claims and the Court also quickly dismissed several legal arguments raised by the defendant in addition to his defense of fair use.

        However, given that the Court determined that the injunction issued by the trial court was “overbroad” and “appallingly bad,” the Court affirmed in part and vacated in part the ruling of the trial court and remanded the case for further determination.  The Court stated:

It [the injunction] must be modified to enjoin the defendants, and those in privy with them or with notice of the injunction, just from copying or publishing or otherwise distributing copies of secure Chicago public school tests, in whole or substantial part, in which the school board has valid and subsisting copyright, without the board‘s authorization. No evidentiary basis has been laid for a broader injunction.

The “conclusion” is self-evident: fair use is a very uncertain legal defense.  Just because you call something “criticism” or “comment” does not in itself make it fair use.   In many instance, of course, seeking a license is not an option but where possible, licensing is the best approach.   Read “Screen Shot Liability Of Computer Book Authors” for the benefits of licensing.

Copyright © 2004 Ivan Hoffman.  All Rights Reserved.


This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.



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