Beatles documentary reproducing twelve songs in their entirety is not fair use

Author: Eleonora Rosati (University of Southampton and e-LAWnora)

Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch), Chancery Division, England and Wales, 1 July 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv144, first published online: September 2, 2015

In his decision Arnold J ruled, among other things, that the unauthorized use of twelve songs by the Beatles for inclusion in a documentary on their first US concert could not be considered fair use under §107 of the US Copyright Act.

Legal context

The Beatles in 1964

What the High Court had to determine in this case was (1) whether (under English law) a collateral contract to grant a synchronization licence was concluded during the negotiations between the claimants and the defendants; (2) whether (under English law), if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronization licence; (3) whether the exploitation of the documentary in the US (currently subject to consideration in parallel US proceedings) would infringe the US copyrights in the works, or whether instead the fair use defence under §107 of the US Copyright Act would apply.

Facts

In 1964 the Beatles held their first US concert at the Washington DC Coliseum. On that occasion the group performed twelve songs. The 35 min concert was videotaped for subsequent exhibition at cinemas and theatres across the US.

In 2009 one of the defendants (Iambic) acquired a copy of the master tape of the concert video to make a documentary of the concert. Subsequently it transferred the rights to the tape to the first defendant (WPMC). Between 2009 and 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 synchronization 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. SATV thus brought proceedings in both the UK (where the documentary had been made) following the UK Supreme Court decision in Lucasfilm Limited and Others v Ainsworth and Another [2011] UKSC 39, and the US (this being the defendants' principal target market).

Analysis

In relation to the issue whether a collateral contract to grant a synchronization licence was concluded during the negotiations, Arnold J held that no contract could be considered to subsist between the claimants and the defendants.

Turning to the point whether, if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronization licence, the judge relied on Motivate Publishing FZ LLC and Another v Hello Limited [2015] EWHC 1554 (Ch) to hold that the defence of proprietary estoppel is not available in a case like the one at hand, ie a ‘subject to contract’ case.

Finally Arnold J considered whether the exploitation of the documentary in the US would be eligible for the application of the fair use defence under §107 of the US Copyright Act. Among his preliminary observations, the judge addressed criticism of the fair use doctrine as being ‘indeterminate and unpredictable’ (para 100). He recalled that over the previous decade scholarly research in this area ‘has demonstrated that what at first blush may appear to be an amorphous mass of individual decisions can be analysed and categorized in the same way as other areas of common law (negligence, for example)’ (para 100).

The judge then undertook his analysis of the four fair use factors within §107 as the US Supreme Court interpreted them in Campbell v Acuff-Rose Music (92–1292), 510 US 569 (1994). 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 protected work than is necessary for the transformative purpose. Instead, ‘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 (eg where an image is reduced in size)’ (para 108).

This said, Arnold J ruled, however, that the inclusion of the copyright works in the documentary could not be considered fair use because the Beatles' songs in it ‘are expressive works within the core of copyright protection; the use is a commercial one; the use is only partly transformative; the [c]opyright [w]orks are reproduced in their entirety; the extent of the reproduction is excessive having regard to the transformative purpose; and to permit such use would be likely to damage the market for, or potential value of, the [c]opyright [w]orks’ (para 122).

Practical significance

Besides issues relating to existence of a contract and proprietary estoppel, the importance of this case lies in the appreciation of the fair use doctrine by a court outside the US. In reviewing the relevant fair use factors, not only did Arnold J address the main criticisms against this doctrine but also provided a clear overview of the current law on fair use.

Considering the sometimes contrasting approaches at the level of US courts, this judgment sheds light on controversial aspects of the fair use doctrine. By tackling issues such as transformativeness, Arnold J clarified both that: (1) what is required for a finding of fair use is that the defendant proves that what he/she has taken from the original work is reasonable, rather than the minimum necessary, and (2) reproduction of a work as a whole does not prevent per se a finding of fair use.