Indiana Law Review


Campbell v. Acuff-Rose Music, Inc. :
The Rap on Remedies

Jeff Toole*

Introduction

The traditional remedy for a copyright infringement has been an injunction.
1

However, on March 7, 1994, the Supreme Court rendered its opinion in Campbell

v. Acuff-Rose Music, Inc.
2
In footnote ten of the opinion, the Court stated "that the

goals of the copyright law ... are not always best served by automatically granting

injunctive relief when parodists are found to have gone beyond the bounds of fair
use."

3 The Court also explained that in "special circumstances," where "'there

may be a strong public interest in the publication of . . . [a] secondary work,'" a
court may wish to refrain from issuing an injunction and "'award . . . damages for
whatever infringement is found.'"

4
The primary focus of this Note will be to

explore three possible interpretations of footnote ten and to determine when a
court should allow an infringement to continue and award damages in lieu thereof.

To provide context for interpreting the Campbell opinion, Part I of this Note
will outline the underlying policies of copyright law and the fair use doctrine as

well as describe the traditional remedies awarded once an infringement is found.

Part II will provide a detailed, factual account of the Campbell case and will

briefly examine what many commentators view as the most important aspect of the
Campbell decision: The Supreme Court's repudiation of its own dicta in earlier
fair use decisions.

5
Part III of this Note will then explore three possible

interpretations of footnote ten. The first proposes that courts should refrain from

issuing an injunction whenever there is a great public interest in a work, regardless

of the creative motivation and the published or unpublished status of the original

work. The second asks courts to refrain from issuing an injunction in only those

cases where there is a high degree of public interest in the work and the original
work was created for purely private purposes. Finally, a third possible
interpretation of footnote ten would award damages in lieu of an injunction and

* J.D. Candidate, 1996, Indiana University School of Law—Indianapolis; B.S., 1989,
Indiana University.

1

.

See New Era Publications Int'l v. Henry Holt & Co., 873 F.2d 576, 582 (2d Cir. 1989)
(recognizing that "injunctions generally are granted to prevent copyright infringement"); Salinger

v. Random House, Inc., 81 1 F.2d 90, 96 (2d Cir.), cert, denied, 484 U.S. 890 (1987) (holding that

"if [a biographer] copies more than minimal amounts of (unpublished) expressive content, he

deserves to be enjoined"); Blackburn v. Southern California Gas Co., 14 F. Supp. 553, 554 (S.D.

Cal. 1936) (holding that the customary remedy for a copyright infringement is an injunction or

accounting).

2. 114S. Ct. 1164(1994).

3. Id. at 1171 n. 10.

4. Id. (quoting Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1 105,

1132(1990)).

5. See infra note 72 and accompanying text.



468 INDIANA LAW REVIEW [Vol. 29:467

allow the infringement to continue whenever the facts of a case closely parallel the

prerequisites for invoking one of the compulsory licenses, as set forth in the

Copyright Act of 1976.
6
This Note will reveal that neither the first nor the second

theories comport with the underlying policy of copyright law, and it will conclude

that the "compulsory license" approach is the most appropriate interpretation of

the Campbell opinion's footnote ten.

I. The Copyright Law

The laws of copyright can be traced to the Star Chamber Court7 and the
censorship laws of England in the 1500s.

8
In order to suppress the printing and

teaching of the Protestant Reformist, the King granted to the Stationery Companies

a monopoly over book publication by prohibiting printers from accepting anything

not approved by the Star Chamber.
9
There was no intent to protect authors, the

only goal was to suppress speech that the government believed rebellious or

contrary to church doctrine.
10

Later, the Stationery Companies recognized

copyright as a means for securing exclusive and perpetual rights in their works.
11

They asked the Crown to reform copyright laws and give them permanent rights. 12

From this process, the first copyright act emerged, the Statute of Anne. 13 The
Statute secured to authors, as opposed to publishers, exclusive rights in their works

for periods of time from fourteen to twenty-one years.
14

This concept of protecting

the author's work was included in the United States Constitution.
15 The

Constitution states that Congress is authorized "[t]o 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."
16

Copyright law did not evolve solely to provide original authors absolute

ownership and control of their works. Instead, it was designed to stimulate

6. See, e.g., 17 U.S.C. § 115 (1994) (compulsory license for making and distributing

phonorecords).

7. See generally ARTHUR W. WEIL, AMERICAN COPYRIGHT Law 8-9 (1917). The Star
Chamber was established to monitor unlicensed printers and writers whose works were considered

obnoxious to the church or state. Id.

8. Lyman R. Patterson, Copyright in Historical Perspective 20-77 ( 1 968).

9. Rick G. Morris, Use of Copyrighted Images in Academic Scholarship and Creative

Work: The Problems ofNew Technologies and A Proposed "Scholarly License, " 33 IDEA 123,

124(1993).

10. Id.

1 1

.

Patterson, supra note 8, at 25.

12. Morris, supra note 9, at 124.

13. Act for the Encouragement of Learning, 1709, 8 Anne, ch. 19 (Eng.), reprinted in 5

Melvile Nimmer & David Nimmer, Nimmer on Copyright § 7-5[A] app. (1994) [hereinafter
Nimmer & Nimmer] .

14. Morris, supra note 9, at 124.

15. Id.

16. U.S. Const, art. I, § 8, cl. 8.



1995] COPYRIGHT REMEDIES 469

creative activity for the benefit and enrichment of the public.
17 To fulfill the

Constitutional mandate of protecting authors, Congress passed the first copyright

act in 1790;
18

subsequent acts frequently included major revisions and

amendments.
19

The Copyright Act of 1976
20

has been amended several times,
principally to accommodate new technologies and to conform with international
law.

21
Notwithstanding its several amendments, the central philosophy of

copyright law remains the same: To create a monopoly that rewards the individual
author and benefits the public.

22
Without the protection of copyright, infringing

users could quickly copy and distribute new works. The original authors would
then be unable to fully reap financial benefits from their works, and publishers

would be reluctant to invest in the publication and distribution of new works. In
addition, the growth of the arts and the transfer of knowledge would be reduced

because future authors would fear the infringement of their new works.23

Although the monopoly protection of copyright prohibited unauthorized

duplication of an author's work, early courts and legal scholars recognized that a

rigid adherence to the original author's monopoly power would, on occasion, stifle

the very creativity that copyright law was designed to foster.
24

For example, if

17. Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. Rev. 11 05, 1 107 (1990).

18. Morris, supra note 9, at 125.

19. Id.

20. 17U.S.C. §§ 101-1101 (1994).

21. See generally J. Wesley Cochran, Why Can't I Watch This Video Here? Copyright

Confusion and Performance ofVideocassettes & Videodiscs in Libraries, 15 HASTINGS COMM. &
Ent. L.J. 837 (1993) (discussing the applications of copyright law to the viewing of commercially

prepared videocassettes and videodiscs in libraries).

22. See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 545-46 (1985)
(copyright is intended to increase, not impede, the harvest of knowledge and the rights conferred

by copyright are designed to assure contributors a fair return for their labors). In numerous

decisions, the Supreme Court has explained the theory behind copyright in similar terms. See, e.g.,

Fogerty v. Fantasy, Inc., 114 S. Ct. 1023, 1029 (1994); Feist Publications, Inc. v. Rural Tel. Serv.

Co., 499 U.S. 340, 349-50 (1991); Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156

(1975).

23. Robert B. O'Connor, Rap Parodies?: An In-Depth Look at Acuff-Rose Music, Inc. v.

Campbell, 2 Fordham Ent. Media & Intell. Prop. L.F. 239, 240 (1992).
24. See generally WILLIAM F. PATRY, THE FAIR USE PRIVILEGE IN COPYRIGHT LAW 6-25

(1985) (reviewing early English cases and reviewing Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass.

1 841 ) (No. 4901)); see also Stephen Breyer, The Uneasy Casefor Copyright: A Study of Copyright

in Books, Photocopies, and Computer Programs, 84 HARV. L. Rev. 281 , 281-91 (1970). Professor

Breyer' s article proposes "that the case for copyright in the book trade is not a strong one generally

and is even weaker for some parts of that trade." Id. at 283-84. Professor Breyer suggests that

while the copyright law should not be abolished, Congress should "hesitate to extend or strengthen

it." Id. at 284. He argues that "the general case for copyright protection is weak." Id. at 350. But

see Barry W. Tyerman, The Economic Rationale for Copyright Protection for Published Books:

A Reply to Professor Breyer, 18 UCLA L. Rev. 1 100 (1970). In response to Professor Breyer, Mr.
Tyerman' s article concludes that:



470 INDIANA LAW REVIEW [Vol. 29:467

original authors were given a complete monopoly over their works, research
efforts would be greatly curtailed because quoting and citing earlier works could
be considered an infringement.

25
In response, the fair use doctrine evolved to

protect the use of original works under proper circumstances.

A. The Fair Use Doctrine

The fair use doctrine is defined as "a privilege in others than the owner of a
copyright to use the copyrighted material in a reasonable manner without [the
owner's] consent, notwithstanding the monopoly granted to the owner."

26
The fair

use doctrine recognizes that there are circumstances in which the opportunity for

fair use of copyrighted materials is thought necessary to fulfill copyright's

purpose, which is "[t]o promote the Progress of Science and useful Arts."27 As
Justice Story explained, "[i]n truth, in literature, in science and in art, there are .

. . few . . . 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."28

The fair use doctrine was first adopted in an American court in 1841 in the
case Folsom v. Marsh?9 In Folsom, Justice Story distilled the essence of the fair
use doctrine from earlier English cases by explaining that a court should "look to

the nature and objects of the selections made, the quantity and value of the

materials used, and the degree to which the use may prejudice the sale, or diminish
the profits, or supersede the objects, of the original work."

30
Fair use remained

exclusively a judge-made doctrine until the passage of the Copyright Act of

1976,
31

which codified the common law fair use doctrine as section 107. 32

[T]he existing federal copyright structure provides a relatively efficient, and, most

importantly, time-proven system for ensuring both that authors find it intellectually and

financially profitable to write, and that the American publishing industry is capable of

producing a broad spectrum of book titles, and not merely a few commercially popular

books. Thus, considering the crucial role that printed material plays in an enlightened

democratic society, it is essential that copyright protection for published books be

continued in substantially its present form.

Id. at 1 102-03 (citations omitted).

25. Patry, supra note 24, at 1 5- 1 7.

26. Rosemont Enters., Inc. v. Random House, Inc., 256 F. Supp. 55, 65 (S.D.N.Y. 1966);

see also BLACK'S Law DICTIONARY 598 (6th ed. 1990).
27. U.S. CONST, art. I, § 8, cl. 8.

28. Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845) (No. 4436).

29. 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4901).

30. Id. at 348.

31. 17U.S.C. §§ 101-1101 (1994).

32. The statute states:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted

work, including such use by reproduction in copies or phonorecords or by any other

means specified by that section, for purposes such as criticism, comment, news



1 995] COPYRIGHT REMEDIES 47

1

Although the wording of the provision was revised several times, Congress

intended for the courts to apply the doctrine in an equitable manner so that the

goals of copyright might be furthered.
33

This intent was reflected in the drafting

of section 107 which does not define the term "fair use," but instead gives

examples of the types of uses that might be considered fair,
34

as well as four

illustrative factors for courts to weigh on a case-by-case basis.
35

The four factors include: "the purpose and character of the use, including

whether such use is of a commercial nature or is for nonprofit educational

purposes;"
36

the "nature of the copyrighted work;"
37
the "amount and substantiality

of the portion used in relation to the copyrighted work as a whole;"
38

and "the

reporting, teaching (including multiple copies for classroom use), scholarship, or

research, is not an infringement of copyright. In determining whether the use made of

a work in any particular case 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.

The fact that a work is unpublished shall not itself bar a finding of fair use if such

finding is made upon consideration of all the above factors.

Id. § 107.

33. H.R. Rep. No. 1476, 94th Cong., 2d Sess. 62 (1976); S. Rep. No. 473, 94th Cong., 1st

Sess. 62 (1975), reprinted in 1976 U.S.C.C.A.N. 5659, 5675.

34. The statute sets forth examples of what may qualify as a fair use such as criticism,

comment, news reporting, teaching, scholarship or research. 17 U.S.C. § 107.

35. Id.

36. Id. § 107(1). This language focuses a court's inquiry on the type of use being made,

rather than the type of entity making the use. While not unrelated, they do not necessarily coincide.

A profit-making company may on occasion engage in a noncommercial use and a nonprofit
organization may use a work in a way that is blatantly commercial. See Lish v. Harper's Magazine

Found., 807 F. Supp. 1090, 1101 (S.D.N.Y. 1992) (explaining that "the mere fact that ... a non-

profit organization . . . operates at a loss does not preclude a finding of 'commercial use'").

37. 17 U.S.C. § 1 07(2). Courts have interpreted this factor as permitting fair use more freely

in cases involving informational works than those involving works of a creative nature. See Harper

& Row Publishing, Inc. v. Nation Enters., 471 U.S. 539, 563-64 (1985) (observing that a fair use
defense is more readily upheld with respect to factual works because "the law generally recognizes

a greater need to disseminate factual works than works of fiction or fantasy").

38. 17 U.S.C. § 107(3). In general, the larger the volume or the greater the importance of

what is taken, the greater the affront to the interests of the copyright owner and the less likely the



472 INDIANA LAW REVIEW [Vol. 29:467

effect of the use upon the potential market for or value of the copyrighted work."39

Congress intended these four factors to be only illustrative of what a court may
consider when determining fair use.40 Given the endless variety of situations and
combinations of circumstances that can arise in a particular case, the formulation

of exact rules is precluded, and courts often consider other factors beyond those
set forth in the Copyright Act,

41
such as the good faith of the infringer, the good

faith of the copyright owner, and the public's interest in the dissemination of a

work.
42

Notwithstanding the potentially vast number of factors a court may
consider when determining fair use, the policy behind both the copyright law and
the fair use doctrine remains the same: "[t]o promote the Progress of Science and

useful Arts."
43

Therefore, the Supreme Court has been careful to limit the scope
of the fair use analysis to only those factors which achieve this objective.

44

B. The Remedies Rap

Regardless of what factors a court may use to determine infringement or fair
use, sections 501 through 510 of the Copyright Act set forth the remedies available

to a plaintiff when an infringement is found.
45

Under the current statutory

language, a successful plaintiff is entitled to recover: (1) actual damages and any

additional profits of the infringer not taken into account in computing actual

damages;
46

(2) statutory damages;
47

or (3) a permanent injunction barring future

taking will qualify as a fair use. See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471
U.S. 539,565(1985).

39. 17 U.S.C. § 107(4). Not every type of market impairment opposes fair use under the

fourth statutory factor. An adverse critical review of a book or a movie may impair the market for

the original work. However, such a market impairment is not relevant to the fair use analysis.

William F. Patry & Shira Pelmutter, Fair Use Misconstrued: Profit Presumptions, and Parody,
1 1 Cardozo Arts & Ent. L. J. 667, 688 (1990). Instead, the fourth factor disfavors a finding of
fair use when the market is impaired because the quoted material or secondary use serves as a

substitute or "supersede^] the use of the original." Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D.

Mass. 1841) (No. 4901).

40. 17 U.S.C. § 101 ("The terms 'including' and 'such as' are illustrative and not

limitative."); see also H.R. REP. No. 1476, 94th Cong., 2d Sess. 65 (1976), reprinted in 1976

U.S.C.C.A.N. 5659, 5678 (explaining that the four factors are "in no case definitive or

determinative, [but] provide some gauge for balancing the equities").

41

.

See H.R. REP. No. 1476, 94th Cong., 2d Sess. 66 (1976), reprinted in 1976 U.S.C.C.A.N

5659, 5679.

42. Leval, supra note 17, at 1 128-32.

43. U.S. Const, art. I, § 8, cl. 8.

44. See generally Campbell v. Acuff-Rose Music, Inc., 1 14 S. Ct. 1 164 (1994); Harper &
Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985); Sony Corp. of Am. v. Universal City

Studios, Inc., 464 U.S. 417 (1984).

45. 17 U.S.C. §§ 501-510 (1994).

46. Id. § 504(b).

47. Id. § 504(c). The actual damages, profits, and statutory damages outlined in section 504



1995] COPYRIGHT REMEDIES 473

infringement.
48

It is the latter of these remedies which will be the primary focus

of the remainder of this Note.

Section 502 of the Copyright Act states that "[a]ny court having jurisdiction

of a civil action arising under this title may . . . grant temporary and final
injunctions on such terms as it may deem reasonable to prevent or restrain
infringement of a copyright."

49
Courts have traditionally interpreted this section

as calling for the issuance of an automatic injunction whenever an infringement

is likely to continue.
50

However, language in Campbell v. Acuff-Rose Music, Inc.
51

appears to reject this traditional approach of automatically issuing injunctions

against future infringements.

II. Campbell v. Acuff-Rose Music, Inc.

A. Purging the Presumptions

On March 7, 1994, the Supreme Court handed down its opinion in Campbell
v. Acuff-Rose Music, Inc.

52
The issue before the Court was whether the rap group

2 Live Crew's commercial parody of Roy Orbison's song, Oh Pretty Woman was
a fair use within the meaning of the Copyright Act of 1976.

53
In 1964, Roy

Orbison and William Dees wrote the song Oh Pretty Woman and assigned their
rights to Acuff-Rose Music, Inc. ("Acuff-Rose").

54
In 1989, Luther Campbell, a

member of 2 Live Crew, wrote a song entitled Pretty Woman which he described

are designed to compensate the copyright owner for losses from past infringement, and to prevent

the infringer from unfairly benefiting from a wrongful act. 3 NrMMER & Nimmer, supra note 13,
§ 14.01 [A]. They do not provide the infringer with a compulsory license to continue the

infringement. Often, section 504 damages will be awarded along with an injunction to prevent

future infringement.

48. 17 U.S.C. §502(1994).

49. Id.

50. See New Era Publications Int'l v. Henry Holt & Co., 873 F.2d 576, 582 (2d Cir. 1989)
(recognizing that "injunctions generally are granted to prevent copyright infringement"); Salinger

v. Random House, Inc., 81 1 F.2d 90, 96 (2d Cir.), cert, denied, 484 U.S. 890 (1987) (holding that

"if [a biographer] copies more than minimal amounts of (unpublished) expressive content, he

deserves to be enjoined"); Blackburn v. Southern California Gas Co., 14 F. Supp. 553, 554 (S.D.

Cal. 1936) (holding that the customary remedy for a copyright infringement is an injunction or

accounting).

5 1

.

See supra notes 1-4 and accompanying text.

52. 1 14 S. Ct. 1 164 (1994). Campbell is one of only four cases in which the Supreme Court

has addressed the issue of fair use since the enactment of the Copyright Act of 1976. The other

three cases are: Steward v. Abend, 495 U.S. 207 (1990); Harper & Row, Publishers, Inc. v. Nation
Enters., 471 U.S. 539 (1985); and Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417

(1984).

53. Campbell, 1 14 S. Ct. at 1 167.

54. Id. at 1168.



474 INDIANA LAW REVIEW [Vol. 29:467

as intended, "through comical lyrics, to satirize the original work."
55 On July 5,

1989, 2 Live Crew's manager informed Acuff-Rose that 2 Live Crew had written
a parody of Oh Pretty Woman, that they would give all credit for ownership and
authorship of the original song to Acuff-Rose, and that they were willing to pay

a fee for the use they wished to make of it. 56 Acuff-Rose refused permission.57

Nonetheless, in the summer of 1989, 2 Live Crew released records, cassette tapes,
and compact discs of Pretty Woman in a collection of songs entitled As Clean As
They Wanna Be.5*

Almost a year later and after nearly a quarter of a million copies of the
recording had been sold, Acuff-Rose sued 2 Live Crew for copyright
infringement.

59 The district court granted summary judgment for 2 Live Crew
reasoning that the commercial purpose of 2 Live Crew's song was not a bar to fair

use. Instead, it viewed 2 Live Crew's version as a parody which "quickly

degenerates into a play on words, substituting predictable lyrics with shocking

ones" to show "how bland and banal the Orbison song seems to them."60 The
district court also concluded that 2 Live Crew had taken no more than was
necessary to "conjure up" the original in order to parody it; and that it was unlikely

that 2 Live Crew's song could adversely affect the market for the original song.
61

The district court weighed these factors and held that 2 Live Crew's song was a
fair use of Orbison' s original.

62

The Court of Appeals for the Sixth Circuit reversed and remanded.63

Although it assumed for the purposes of its opinion that 2 Live Crew's song was

a parody of the Orbison original, the court of appeals noted that the district court

had put too little emphasis on the commercial nature of 2 Live Crew's use.
64

The
court of appeals, relying on dicta from the Supreme Court's opinion in Sony Corp.

ofAmerica v. Universal City Studios, Inc.,
65

"that every commercial use ... is

55. Id.

56. Id.

57. Id. The fact that Acuff-Rose denied Campbell permission could strengthen the fair use

defense because the copyright law is designed to promote the progress of science and useful arts

and should not allow an author to censor the use of his or her work. See, e.g., Maxtone-Graham

v. Burtchaell, 631 F. Supp. 1432, 1436 (1986). In Maxtone-Graham the copyright owner, who had

denied the defendant permission to use the work, argued that the defendant could not claim fair use

because the custom in the publishing industry was to not claim fair use after permission to quote

copyrighted material had been denied. Id. The court held that "since the doctrine of fair use is a

legal doctrine having Constitutional implications, it cannot be subject to definition or restriction

as a result of any such trade custom or practice." Id.

58. Campbell, 1 14 S. Ct. at 1 168.

59. Id.

60. Acuff-Rose Music, Inc. v. Campbell, 754 F. Supp. 1 150, 1 155 (M.D. Tenn. 1991).

61. Id. at 1157-58.

62. Id. at 1160.

63. Campbell v. Acuff-Rose Music, Inc., 972 F.2d 1429, 1439 (6th Cir. 1992).

64. Id.

65. 464 U.S. 417,451 (1984).



1995] COPYRIGHT REMEDIES 475

presumptively . . . unfair," held that "the admittedly commercial nature" of the

parody required the conclusion "that the first factor weighs against a finding of fair

use."
66

Next, the court of appeals relied on dicta from another Supreme Court
decision, Harper & Row, Publishers, Inc. v. Nation Enterprises,61 which
concluded that every commercial use would adversely affect the original or

derivative markets for the original work.
68 By interpreting the dicta in the two

Supreme Court decisions as creating presumptions against fair use, the court of
appeals held that 2 Live Crew's parody was an infringement of the Orbison

original.
69

The Supreme Court in reversing and remanding, criticized the court of
appeals' limited analysis of the fair use factors.

70
The Court specifically observed

that the Sixth Circuit erred in its elevation of the dicta in Sony to a per se rule and

the Court explained that such an attempt to reduce the fair use test to an inflexible

rule runs counter to the "common law tradition of fair use adjudication."71

B. Additional Dicta

Several commentators and scholars have praised the Supreme Court's opinion

in Campbell for repudiating its own dicta in Sony and Harper & Row and for
retreating from any prior suggestions that a commercial use gives rise to a

presumption or has a dispositive significance in the fair use analysis.
72

These

commentators may be correct in concluding that the Campbell opinion will restore
the common law traditions behind the copyright law and the fair use doctrine.
However, they have overlooked other dicta in the Campbell opinion that may have
a far greater impact on the law of copyright.

The additional dicta is the Court's suggestion in footnote ten that a balancing

test be applied when a court considers the proper remedy for a copyright
infringement and that the balancing test may include the public's interest in the
original work.

73
In footnote ten the Court invited future courts "to bear in mind

that the goals of the copyright law, 'to stimulate the creation and publication of

edifying matter,' are not always best served by automatically granting injunctive

relief when parodists are found to have gone beyond the bounds of fair use."74

66. Campbell, 972 F.2d at 1437.

67. 471 U.S. 539, 566(1985).

68. Campbell, 972 F.2d at 1439.

69. Id.

70. Campbell v. Acuff-Rose Music, Inc., 1 14 S. Ct. 1 164, 1 173-75 (1994).

71. Id. at 1174.

72. See Howard J. Schwartz & Cynthia D. Richardson, 2 Live Crew Case Sets 'Fair Use

'

Back on Track, N.J.L.J., July 25, 1994, at S12; Henry R. Kaufman & Michael K. Cantwell, From
A First Amendment Standpoint, The 2 Live Crew Case Added 'Breathing Space' Into The

Copyright Mix, Nat'lL.J., May 16, 1994, at A7; Joseph Mauro, 'Pretty Woman' Packs A Punch,

N.Y.L.J., April 29, 1994, at 7.

73. Campbell, 114S. Ct. at 1171 n.10.

74. Id.



476 INDIANA LAW REVIEW [Vol. 29:467

The Court cited Judge Pierre N. Leval,75 who had stated that where "there may be
a strong public interest in the publication of the secondary work," a court may
wish to protect the copyright owner's interest by awarding damages rather than
issuing an injunction.

76 The Court buttressed its assertion in noting the position
taken by the Ninth Circuit in Abend v. MCA, Inc.,11 that an injunction should not
issue when "special circumstances" may cause "great injustice" to defendants and
"public inquiry."

78

The Campbell decision was the first time the Supreme Court supported the
proposition that an injunction should not automatically issue whenever an

infringement is likely to continue, and is a tremendous departure from the

traditional approach of automatically issuing injunctions against future copyright

infringements.
79 The proposition is particularly interesting because the Court did

not define the proper scope of the public's interest nor did it determine what

"special circumstances" will allow an infringing user to pay damages and continue

the infringement. The remainder of this Note will explore these issues.

III. The Interpretation of Footnote Ten

This Note addresses three possible interpretations of footnote ten in the

Campbell opinion. One interpretation is based on the First Amendment, and is
founded on the notion that the public's interest in a work, regardless of the

underlying motivation for the creation of the original work and its published or

unpublished nature, should be considered when fashioning a remedy for an
infringement.

80
Proponents of this theory argue that the "special circumstances"

for withholding an injunction are met whenever there is a high degree of public

interest in the information conveyed.
81

A second approach was set forth by Judge Pierre N. Leval in his Harvard Law
Review article, Toward A Fair Use Standard*2 Judge Leval' s interpretation is
also founded on the notion that the public's interest is relevant to the selection of

75. Judge Leval currently presides over the United States District Court for the Southern

District of New York.
76. Leval, supra note 17, at 1 132.

77. 863 F.2d 1465, 1479 (9th Cir. 1988).

78. Campbell, 114 S. Ct. at 1171 n.10.

79. See, e.g., New Era Publications Int'l v. Henry Holt, Co., 884 F.2d 659, 662 (2d Cir.

1989) (holding that "the copying of 'more than minimal amounts' of unpublished expressive

material calls for an injunction barring the unauthorized use"); Salinger v. Random House, Inc., 81

1

F.2d 90, 96 (2d Cir. 1987) ("If [an author] copies more than minimal amounts of . . . expressive

content, he deserves to be enjoined.").

80. See generally, Paul Goldstein, Copyright and The First Amendment, 70 COLUM. L. REV.

983 (1970) (assessing the extent to which a copyright's statutory and enterprise monopolies infringe

upon the First Amendment).

81. Id. at 990.

82. Leval, supra note 17, at 1 132.



1995] COPYRIGHT REMEDIES 477

the proper remedy.
83

Judge Leval, however, places factual restrictions on his

approach and would deny an injunction in only those circumstances where there

is a great public interest in the original work and the original work was created for

purely private purposes.
84

A third interpretation withholds an injunction in only those cases which have
factual scenarios that closely parallel the prerequisites for invoking one of the

compulsory licenses set forth in the Copyright Act.
85

This is the most restrictive

approach and the key to understanding this interpretation of footnote ten is to

understand why Congress created the compulsory licenses.

A. The First Interpretation—Unbounded Public Interest
In light of the policy supporting copyright law and the fair use doctrine, should

the degree of the public's interest in an infringing work determine the type of

remedy a court should order for an infringement? More specifically, should a
court withhold an injunction when there is great public interest in an infringing
work, regardless of the creative motivation and the published or unpublished status

of the original work? In order to answer these questions, it will be helpful to

explore the debate surrounding the coexistence of the copyright law and the First

Amendment. Also, it will be beneficial to examine the Supreme Court's reaction

to an earlier proposition that the public's interest in a work should be considered

when determining fair use. 86

I. Copyright's First Amendment Infringement.—Given the broad language
in section 107 of the Copyright Act, several commentators and courts have

entertained the question of whether the public's right to receive information plays

a role in the law of copyright.
87

This debate was largely fueled by the apparent

clash of the monopoly power granted to a copyright owner
88
and the free speech

guaranteed by the First Amendment.
89 The fundamental rationale of the First

83. Id.

84. Id.

85. See 17 U.S.C. § 1 15 (1994). This section allows a secondary user to pay a statutorily

determined fee and obtain a compulsory license to record his version of a nondramatic musical

work when: (1) the original work has been distributed to the public under the authority of the

copyright owner; (2) the primary purpose of the secondary user in making the recordings is to

distribute them to the public for private use; and (3) the secondary user only changes the original

work to the extent necessary to conform it to the style or manner of interpretation of the

performance involved, but does not change the basic melody or fundamental character of the

original work.

86. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 555-56 (1985).
87. See Salinger v. Random House, Inc., 81 1 F.2d 90 (1987); Harper & Row, 471 U.S. at

539; see also Floyd Abrams, First Amendment and Copyright, 35 J. COPYRIGHT SOC. 1,12 (1987);

Goldstein, supra note 80, at 983.

88. 17 U.S.C. § 106 (1994) (giving the copyright owner exclusive rights to his works).

89. The amendment states that "[cjongress shall make no law . . . abridging the freedom of

speech, or the press " U. S. CONST, amend. I.



478 INDIANA LAW REVIEW [Vol. 29:467

Amendment was stated by Justice Brandeis in the following passage:

Those who won our independence believed that the final end of the
State was to make men free to develop their faculties; and that in its
government the deliberative forces should prevail over the arbitrary.

They valued liberty both as an end and as a means. They believed liberty
to be the secret of happiness and courage to be the secret of liberty. They
believed that freedom to think as you will and to speak as you think are
means indispensable to the discovery and spread of political truth; that
without free speech and assembly discussion would be futile; that with
them, discussion affords ordinarily adequate protection against the

dissemination of noxious doctrine; that the greatest menace to freedom
is an inert people; that public discussion is a political duty; and that this

should be a fundamental principle of the American government.90

The First Amendment is central to preserving a democratic society. 91

An important prerequisite "in a society of free choice is that its members be
broadly educated in the ideas that affect their political decisions."

92
However,

political choices are not only the result of exposure to political ideas. Cultural

experiences such as philosophy, science, and the written, visual, and musical arts

are also important.
93

This same general principle was recognized by the judiciary
and reduced to three judicial rules of thumb in modern constitutional decisions.
First, the "assertion that the first amendment was intended to define not an
individual's right to speak, but, rather, a community right to hear."

94
Second, "this

right to hear, while ultimately justified by reasons of political fluency, extends to

artistic as well as political expression."
95

Third, and connected to the second, "the

fact that the motive for an expression is commercial rather than political does not

exclude it from First Amendment protection."96

The latter two rules are concerned with works "typically subject to the
copyright monopoly. Copyrighted works are usually artistic rather than political,

90. Whitney v. California, 274 U.S. 357, 375 (1927) (Brandeis, J., concurring).

9 1

.

Goldstein, supra note 80, at 988.

92. Id.

93. Id.

94. Id. See, e.g., Rosenblatt v. Baer, 383 U.S. 75, 95 (1966) (Black, J., concurring and

dissenting); Lamont v. Postmaster Gen., 381 U.S. 301, 308 (1965) (Brennan, J., concurring); Roth

v. United States, 354 U.S. 476, 484 (1957); Stromberg v. California, 283 U.S. 359, 369 (1931).

95. Goldstein, supra note 80, at 989. See, e.g., Curtis Publishing Co. v. Butts, 388 U.S.

130, 147 (1967); Time, Inc. v. Hill, 385 U.S. 374, 388 (1967); William J. Brennan, Jr., The

Supreme Court and the Meiklejohn Interpretation ofthe First Amendment, 79 HARV. L. Rev. 1,13

(1965).

96. Goldstein, supra note 80, at 989. See, e.g., Time, 385 U.S. at 396-97; Ginzburg v.

United States, 383 U.S. 463, 474 (1966). But cf. Valentine v. Chrestensen, 316 U.S. 52, 54 (1942)

(explaining that "the Constitution imposes no such restraint on government [regulation] as [it]

respects purely commercial advertising").



1995] COPYRIGHT REMEDIES 479

and their motive is commonly economic."
97 To the extent that copyrighted

material falls within the reach of the First Amendment's protection, copyright's
monopoly will inevitably conflict with the community's right to hear. Inherent in

the copyright owner's monopoly power is the right to withhold his expression

from the public. The original owner's right to limit the size of the audience to

which the work is distributed restricts the public's right to hear, read, and view the

copyrighted material.

Based upon the above analysis, the government's grant of copyright

monopolies tends to abridge the public's right to information.
98

However,

copyright can also be viewed as advancing this right. The First Amendment has
historically been used to destroy barriers that may prevent a malleable and
revolutionary public from having access to new political speech and information
about its elected government.

99
The only stimulus required to induce political

speech is an audience capable of political action. In contrast, the rewards of

artistic expression are economic;
100

the artist seeks money rather than votes. By
providing the economic incentive for the production of artistic creations, copyright

theoretically assures that the information distributed to the public will also include

that which is motivated by profit.

If the right to hear and the underlying theory of the First Amendment were
taken to their furthest extent, the public could demand access to nonpolitical,
creative works with little or no compensation being paid to the original author or

creator. This full measure of the public's interest—free participation in all forms
of expression—would require that the artist be denied copyright protection and the
right to exclude. This withdrawal of copyright protection would reduce the

incentives for creation and would be accompanied by a decline in the

dissemination of needed expressions, thoughts and ideas.

2. Harper & Row.—The apparent tension between copyright law and the First
Amendment was largely resolved by the Supreme Court in the seminal case
Harper & Row, Publishers, Inc. v. Nation Enterprises}01 In Harper & Row, the
Court sought to determine if the unauthorized use of quotations from President

Gerald R. Ford's unpublished manuscript was a "fair use" under section 107 of the

Copyright Act of 1976.
102

In March, 1979, an undisclosed source provided Nation

Enterprises with the unpublished manuscript of President Ford's autobiography,

A Time to Heal: The Autobiography of Gerald R. Ford.
103

Working directly from

the manuscript, a Nation editor produced a short piece entitled The Ford

97. Goldstein, supra note 80, at 989.

98. Thomas I. Emerson, Toward a General Theory of the First Amendment, 72 Yale L. J.

877,918(1963).

99. Goldstein, supra note 80, at 989.

100. Zechariah Chafee, Jr., Reflections on The Law of Copyright: I, 45 COLUM. L. Rev. 503,
:
)6-08 (1945).

101. 471 U.S. 539 (1985).

102. Id. at 541-42.

103. Id. at 542.



480 INDIANA LAW REVIEW [Vol. 29:467

Memoirs—Behind the Nixon Pardon. 104 The work was timed to "scoop" an article
scheduled to appear in Time magazine. Time had agreed to purchase from Harper
& Row the exclusive right to print prepublication excerpts ofA Time to Heal, but
as a result of Nation's article, Time canceled its agreement with Harper & Row. 105
Harper & Row then brought a successful copyright action against Nation
Enterprises. On appeal, however, the Second Circuit reversed the lower court's
finding of infringement, explaining that Nation's act was sanctioned as a "fair use"
of the copyrighted material.

106 The Supreme Court granted certiorari. 107

A principal argument set forth by Nation on appeal was that the First
Amendment widened the scope of fair use when the information conveyed related
to matters of "high public concern."

108
Nation argued that the "substantial public

import of the subject matter of the Ford memoirs [was] grounds for excusing a use

that would ordinarily not pass muster as a fair use."
109

Nation, therefore, set forth

the notion "that the public's interest in learning . . . news . . . outweighs the right
of the author to control its first publication."

110

The Supreme Court did not find this reasoning persuasive. The Court noted
that copyright's idea and expression dichotomy "'strikes a definitional balance

between the First Amendment and the Copyright Act by permitting free
communication of facts while still protecting an author's expression.'"

111
The

Court observed that "'the news element—the information respecting current
events contained in the literary production—is not the creation of the writer, but
is a report of matters that ordinarily are publici juris; it is the history of the

day.'"
112

Notwithstanding the lack of protection copyright offers to facts contained

in a work, the Court ensured that those who write and publish factual narratives,
such as A Time to Heal, would "at least enjoy the right to market the original
expression contained therein as just compensation for their investment."

113

The Court explained that Nation's theory of expanding fair use would
effectively destroy any expectation of copyright protection in a work of a public
figure and would leave little incentive to create such memoirs.

114
This in turn

would deny the public an important source of significant historical information. 115

The Court then warned that in society's "haste to disseminate news, it should not

be forgotten that the Framers intended copyright itself to be the engine of free

104. Id.

105. Id.

106. Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 195, 208 (2d Cir. 1983).
107. Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985).
108. Mat 555-56.
109. Id. at 556.

110. Id.

111. Id. (quoting Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 395, 203 (2d
Cir. 1984)).

112. Id. (quoting International News Serv. v. Associated Press, 248 U.S. 215, 234 (1918)).

113. Id. at 557.

114. Id.

115. Id.



1995] COPYRIGHT REMEDIES 481

expression. By establishing a marketable right to the use of one's expression,
copyright supplies the economic incentive to create and disseminate ideas."

116

The Court concluded that it is "fundamentally at odds with the scheme of
copyright to accord lesser rights in those works that are of greatest importance to

the public. Such a notion ignores the major premise of copyright and injures

author and public alike."
117

"'[T]o propose that fair use be imposed whenever the

"social value [of dissemination] . . . outweighs any detriment to the artist," would

be to propose depriving copyright owners of their right in property precisely when
they encounter those users who could afford to pay for it.'" 118 As one
commentator noted: "If every volume that was in the public interest could be

pirated away by a competing publisher, ... the public would have nothing worth

reading."
119

3. The Public 's Interest and The Appropriate Remedy.—Since the Harper &
Row decision, First Amendment lawyers and commentators have argued that the
public's interest in a work should still be an important consideration when
determining the appropriate remedy for an infringement.

120
However, both the

policy behind the copyright law and the practical effect of considering the public's

interest at the remedial stage renders this suggestion inappropriate. An example
will show how the same reasoning used in Harper & Row, which rejected the
proposal that the public's interest should play a role in the fair use determination,

can be used to reject the notion that the public's interest in a work should be
considered when choosing the appropriate remedy for an infringement.

Suppose a plaintiff is a gifted photographer who, through a combination of

diligence and skill, manages again and again to take captivating photographs of

cataclysmic or historic occurrences which are of insurmountable public interest.

Also, suppose that because of the great public interest in the plaintiffs

photographs, several newspapers, news magazines and television networks

infringe upon the photographer's copyright by republishing and broadcasting his

photos without payment and without regard to whether the photographer had an

opportunity for first publication.
121 Under the theory that the public's interest

should bear upon the type of remedy, regardless of the motivation for creation or

the published or unpublished status of the original work, an injunction against the

infringement in the above hypothetical would be disfavored.

Proponents of this theory would interpret the word "may" in section 502 of the

Copyright Act as allowing a court to choose between enjoining the infringers or

116. Id. at 558.

117. Id.

1 1 8. Id. (quoting Wendy J. Gordon, Fair Use as Market Failure: A Structural and Economic

Analysis of the Betamax Case and its Predecessors, 82 COLUM. L. REV. 1600, 1615 (1982)).

119. Lionel S. Sobel, Copyright and the First Amendment: A Gathering Storm?, 19 ASCAP
Copyright L. Symp. 43, 78 (1971).

1 20. See, e.g., James A. Oakes, Copyrights and Copyremedies: Unfair Use and Injunctions,

18 HofstraL. Rev. 983, 994-96 (1990).

121. Leval, supra note 17, at 1131 n.114.



482 INDIANA LAW REVIEW [Vol. 29:467

limiting the plaintiff to damages.
122

If a court chose not to issue an injunction, the

plaintiff would then look to section 504 of the Copyright Act for his remedy. 123

Section 504(b) of the Copyright Act provides that "[t]he copyright owner is
entitled to recover the actual damages suffered by him or her as a result of the
infringement, and any profits of the infringer that are attributable to the
infringement and are not taken into account in computing the actual damages."

124

Under this section, the plaintiff—the photographer in the above
example—should be entitled to receive all the profits from the newspapers,
magazines, and networks for their infringements. Proponents of this theory,

however, would not support this outcome because awarding the plaintiff all profits

from the infringing use would have the same effect as an injunction. The
infringing users would no longer profit from the use and would discontinue the
infringement. This would have the effect of decreasing or completely halting the

dissemination of the photographs, which was the very thing the proponents of this

theory wished to avoid. Instead, the proponents of this theory would interpret
section 504 of the Copyright Act as allowing the public's interest in the

photographs to decrease the compensation awarded the photographer to a level

that would allow the infringement to remain profitable, yet provide the

photographer with some compensation. 125

Awarding the plaintiff-photographer a remedy and allowing the infringement

to continue may appear fair and in compliance with the congressional suggestion
that the fair use doctrine "is an equitable rule of reason."

126
However, the long-

term effect of awarding such a remedy and allowing the infringement to continue

may not comply with the constitutional mandate of "promoting the Progress of
Science and the useful Arts."

127
For example, what will the photographer do the

122. The statute states that "[ajny court . . . may . . . grant temporary and final injunctions on

such terms as it may deem reasonable to prevent or restrain infringement of a copyright." 17 U.S.C.

§ 502 (1994) (emphasis added). In a recent copyright infringement case the Supreme Court

interpreted the word "may" in section 505 of the Copyright Act as "clearly connot[ing] discretion."

Fogerty v. Fantasy, Inc., 114 S. Ct. 1023, 1033 (1994). The full text of section 505 reads as

follows:

In any civil action under this title, the court in its discretion may allow the recovery of

full costs by or against any party other than the United States or an officer thereof.

Except as otherwise provided by this title, the court may also award a reasonable

attorney's fee to the prevailing party as part of the costs.

17 U.S.C. § 505 (emphasis added).

123. 17 U.S.C. §504.

124. 17 U.S.C. § 504(b).

1 25. Interpreting the statute in this manner would be difficult because, unlike section 502,

section 504(b) does not contain discretionary language that would allow a court to reduce the

copyright owner's actual damages and profits. Id. Instead, the language in section 504(b) "entitles"

the copyright owner to the actual damages suffered by him and any profits of the infringer. Id.

126. H.R.REP.No. 1476, 94th Cong., 1st Sess. 65 (1975), reprintedin 1976 U.S.C.C.A.N.

5659, 5679.

1 27. U.S. Const, art. I, § 8, cl. 8.



1995] COPYRIGHT REMEDIES 483

next time he is presented with an opportunity to take another captivating

photograph? If courts allow newspapers, magazines, and networks to infringe

upon the copyright of his photographs and pay only a judicially determined fee,

which may have been far below market value in order to ensure that the infringing
use would remain profitable, he may hesitate to raise his camera.

128 The

photographer would soon realize that the more successful he becomes in capturing

photographs of great public interest the better defense secondary users would have

for infringing upon his copyright. At some point, the photographer would

generate such a high degree of public interest in his photographs that an

infringing, secondary user would be able to copy and distribute his photographs

and pay little or nothing in damages.

Such a case is no different from that presented to the Court in Harper & Row,
Publishers, Inc. v. Nation Enterprises

129
where the infringers argued that a high

degree of public interest in a work should allow them to make a fair use of the
original work without compensating the original creator.

130
In Harper & Row, the

Court explained that to allow such an outcome would "effectively destroy any

expectation of copyright protection" and would leave little incentive to create such

works.
131

Here again, to allow a high degree of public interest in a work to reduce

the amount of compensation awarded to the gifted photographer would

"effectively destroy any expectation of copyright protection" and would reduce or

eliminate the incentives
132

for taking photographs of public interest.

To avoid future appropriation of his work, a photographer would not strive to
take compelling photographs and the public would soon have few photographs

worthy of interest and would be denied those photographs which could best

advance the progress of science and useful arts.
133

Given this result, the approach

that the public's interest should be considered when fashioning a remedy for an
infringement, regardless of the underlying motivation for creation or the

publication status of the original work, must be regarded as an inappropriate

interpretation of the Campbell opinion's footnote ten.

B. The Second Interpretation—Judge Leval's "Purely Private " Approach
I. The Public's Interest and Purely Private Works.—A second possible

interpretation of footnote ten
134

comes from Judge Pierre N. Leval. Like the first
approach, his theory is founded on the notion that the public's interest is relevant

128. Another problem with a judicially determined fee is that the judiciary is not always

aware of the many different markets and market prices for copyrighted material. A proper market
price requires a great deal of economic analysis and market study; even then reasonable minds will

differ.

129. 471 U.S. 539 (1985).

130. Id. at 556.

131. Id. at 557.

132. Id.

133. U.S. Const, art. I, § 8, cl. 8.

1 34. See supra notes 1-4 and accompanying text.



484 INDIANA LAW REVIEW [Vol. 29:467

to the selection of a proper remedy.
135

However, Judge Leval limits the application

of his approach to narrowly defined circumstances. Unlike the first approach,

which its proponents would apply in all fair use cases regardless of the creative
motivation for the original work or its publication status, 136 Judge Leval would
apply his approach in only those instances where the original work was created
"for purely private purposes and not as a work ... for the public benefit." 137 By
considering the public's interest in a work in only those cases where the work is
created for purely private reasons, he professes to eliminate the flaws of the first

approach as revealed in the above hypothetical.
138

Judge Leval reasons that when a work is created for public dissemination and
monetary gain, the refusal to issue an injunction against future infringements

reduces the original author's compensation, diminishes the incentive to create, and

does not comport with the underlying policy of copyright.
139 On the other hand,

Judge Leval reasons that in cases where the original work was created for "purely

private reasons" the original author has no expectation of monetary gain and

allowing a secondary user to infringe upon the copyright of the original work does

not reduce the incentive to create future works for purely private purposes.
140

Judge Leval is mistaken. The practical effect of allowing secondary users to
make an unfair use of private works can reduce the incentive to create such works
and does not "promote the Progress of Science and the useful Arts."

141
In order

to reveal the weaknesses in Judge Leval' s theory, it will be necessary to explore

the facts of the case that motivated Judge Leval to adopt his position: Salinger v.

Random House, Inc. 142 This Note will then apply Judge Leval' s proposal to the
facts of Salinger and explore the ramifications.

2. Salinger v. Random House, Inc.—Salinger involved the highly regarded
American novelist J.D. Salinger, best known for his novel The Catcher in the Rye.
The defendants were Ian Hamilton, a well-respected writer on literary topics, and

his publisher, Random House. 143 In July, 1983, Hamilton informed Salinger that
he was undertaking a biography of Salinger and sought Salinger's cooperation.

144

Salinger refused, informing Hamilton that he preferred not to have the biography

written during his lifetime.
145

Hamilton nevertheless proceeded and spent the next

three years preparing a biography titled, J.D. Salinger: A Writing Life. 146 Several
unpublished letters written by Salinger between 1939 and 1961 were an important

1 35. Leval, supra note 17, at 1 134.

1 36. See supra notes 1 20- 1 22 and accompanying text.

137. Leval, supra note 17, at 1 134.

138. Id.

139. Id.

140. Id.

141. U.S. Const, art. I, § 8, cl. 8.

142. 650 F. Supp. 413 (S.D.N.Y. 1986), rev'd, 811 F.2d 90 (2d Cir. 1986).

143. Salinger v. Random House, Inc., 811 F.2d 90, 92 (2d Cir. 1986).

144. Id.

145. Id.

146. Id.



1995] COPYRIGHT REMEDIES 485

source of research material for the biography.
147

Most were written to his close

friends and business associates.
148

Hamilton located several, if not all, of the

letters in the libraries of Harvard, Princeton, and the University of Texas where

they had been deposited by their recipients.
149

Prior to examining the letters at the

libraries, Hamilton signed agreements restricting the use he could make of the
letters without permission from the owner of the copyright.

150

After Hamilton finished the first version of the biography, Salinger was

provided a set of the biography proofs.
151

After reviewing the proofs, Salinger

objected to the publication of the biography until all of his unpublished materials

were deleted.
152

In response, Hamilton and Random House revised the initial draft
of the biography.

153 Much of the material previously quoted from the Salinger
letters was replaced with close paraphrasing.

154
However, more than 200 quoted

words remained. Salinger then filed suit seeking both an injunction to prohibit

future publication of the biography and damages.
155

Judge Leval, in his district court opinion, held in favor of Hamilton.
156 The

circuit court reversed,
157

finding that Hamilton had copied too much of Salinger's
expressive material.

158
Further, the court rejected the notion that denying

Hamilton the opportunity to copy the expressive content would interfere with the

process of enhancing public knowledge.
159

The Second Circuit held that Hamilton

could copy the facts contained in the letters but not the expressive content,

regardless of the public's interest.
160

147. Id.

148. Id.

149. Id. The general rule concerning copyright ownership of a letter is that although the

author of a letter sends the document to another, the author retains the copyright in the expressive

content of the letter. 1 NlMMER & Nimmer, supra note 13, § 5.04. The author is therefore entitled
to prevent the letter's copying or publication. The recipient of the letter becomes the owner of the

ink and paper or other physical materials of which the letter consists. Id. The recipient has the right

to permit a limited number of people to inspect the letter, to transfer possession of the document

to another, or to simply destroy it. Id. The recipient may also permit the letter to be displayed by

a library. Exceptions to these general principles apply when the author intends to convey the

copyright to the recipient or dedicate such right to the public, when the recipient's publication of

the letter is necessary to protect his or another's rights or character, and when the letter is written

by a public official to a governmental body. Id.

150. Salinger, 811 F.2d at 93.

151. Id.

152. Id.

153. Id.

154. Id.

155. Id.

156. Salinger v. Random House, Inc., 650 F. Supp. 413, 428 (S.D.N.Y. 1986).

157. Id.

158. Id.

159. Id.

160. Id.



486 INDIANA LAW REVIEW [Vol. 29:467

Unable to reconcile the Second Circuit's finding of infringement with the
great public interest in having access to Hamilton's unedited work, Judge Leval

used the facts of Salinger to create a narrow exception to the general rule that with

infringement comes injunction.
161

In his Harvard Law Review article, Judge Leval
explained that the facts of Salinger were worlds apart from cases of "simple
piracy" in which the infringer incurs "no development cost, no advertising
expense, and little risk." In cases of "simple piracy" the infringer takes a "free-

ride on the copyright owners publicity . . . and deprive[s] the copyright owner of
the rewards of his creation."

162
Judge Leval then narrowly defined the

circumstances of when a court should refrain from issuing an injunction against
an infringement by looking to the original author's intent or interest in the work. 163

When the original author created a work with a "view toward publication," Judge
Leval would have a court grant an injunction against a future infringement. 164

However, in cases where the original work was created for "purely private
purposes," Judge Leval would have a court refrain from issuing an injunction,

allow the infringement to continue, and limit the original author's remedies to

monetary damages

.

1 65

3. Problems With Judge Leval's "Purely Private" Proposal.—Like the first
theory, Judge Leval' s approach may appear equitable because it allows for both
the dissemination of the work and the compensation of the original creator.
However, like the first approach, the long-term effects of Judge Leval'

s

interpretation may harm both the copyright owner and the public. For example,
suppose the Second Circuit had applied Judge Leval' s theory to the facts of

Salinger?
66

If so, the court would have allowed Hamilton to continue the

infringing use and would have provided Salinger with any provable damages,

which would have likely been nominal because the original work was not created
with an eye toward publication.

167
Next, suppose that the day after the court

rendered judgment, Salinger is asked by his relatives to compile a list of all the

family traditions he can remember and give the private list to members of his
family so that future generations could carry on the traditions. No doubt, Salinger
may hesitate to compile the list. He may fear that the list would one day be
obtained by an opportunistic writer who would reproduce the list knowing that
there would be a great public interest in learning about the Salinger family

traditions, as described by J.D. Salinger. Given this result, the continuance of the

Salinger family traditions would be relegated to the chance of memory.

In addition to the harm suffered by Salinger and his family, the public may

161

.

See supra note 1 and accompanying text.

162. Leval, supra note 17, at 1 132.

163. Id.

164. Mat 1133.
165. Id. at 1133-34.

166. 811 F.2d 90 (2d Cir. 1986).

167. Id. at 93. Under section 505 of the Copyright Act, Salinger may also receive attorney

fees; however, he would only be recouping what he had already paid and would not be receiving

the full benefits from his work. 17 U.S.C. § 505 (1994).



1995] COPYRIGHT REMEDIES 487

suffer as well. For example, suppose that if not for the hypothetical holding of the

Second Circuit, which allowed Hamilton's infringement to continue, Salinger

would have compiled the list of family traditions and voluntarily deposited it in the

Harvard, Princeton, and University of Texas libraries. Instead, fearful that

secondary users would infringe upon the copyright of his work, Salinger's refusal

to compile the list and make the contribution would deny the public access to a
work of great public interest. Other writers and contributors of works may also
follow Salinger's lead and withhold information and withdraw works already

deposited in those and other public libraries. Given this result, the very

institutions which are to be the centers for research and the depositories of

knowledge would be boycotted by those most able to make worthwhile
contributions. As a consequence, all of society would be denied access to works
of great public interest and would suffer because of the actions of an infringing

secondary user and the holding of an ill-informed court.

Another problem with Judge Leval's theory is that it allows the judiciary to

determine the appropriate licensing fee. In most cases, economist and market

analysts can testify about market conditions and help establish an appropriate fee.

However, when the original work was created for purely private purposes there is
no market to analyze, and the expert testimony will largely be based on subjective

factors. Without an existing market price as a guide, it is unlikely that judges and

jurors will be able to fashion an appropriate licensing fee that comports with the

underlying purpose of the copyright law.

This Note is not suggesting that copyright law should be structured to protect

the narrow interest of an individual obsessed with privacy
168

or allow authors to

censor the use of their works. Secondary users should be free to make a fair use
of private works that are legally obtained. Judge Leval's proposal is disturbing

because it provides private works less protection under the copyright law than

works which are created with an eye toward publication. Judge Leval's proposal

allows a secondary user to go beyond fair use and infringe upon the copyright of

private works.
169 He attempts to compensate for the infringement by providing the

copyright owner with monetary damages.
170

This, however, is an illogical remedy

because the original author's incentive to create the private work was not based on

monetary gain. Instead, the original author created the private work in order to

communicate with others.

One could argue that private works should receive less protection under the
copyright law because the incentive to create private works will always exist

regardless of infringements. However, if an author is concerned about the

infringement of her private works, "she will be less likely to present her thoughts

168. Other areas of the law protect the right to privacy. See, e.g., 16A Am. Jur. 2d

Constitutional Law § 504 (1979). "[T]he First Amendment does not guarantee to the press a

constitutional right of special access to information or places not available to the general public,

nor does the right to speak and publish carry with it the unrestrained right to gather information."

Id.

1 69. See Leval, supra note 1 7, at 1131 -32.

170. Id. at 1132.



488 INDIANA LAW REVIEW [Vol. 29:467

in tangible form;
171

she may edit the expression of her ideas more scrupulously or
she may be inhibited in the creation of her works."172 She will also be discouraged
from donating her works to libraries and institutions of higher learning.

Allowing a court to refrain from issuing an injunction against infringement,

when the original work is created for purely private purposes, does not advance
the underlying philosophy of copyright law

173
and may impede the transfer of

knowledge. Judge Leval's proposal, like the first approach, does not always

comply with the constitutional mandate of promoting the progress of science and
the useful arts and is not the proper interpretation of the Campbell opinion's

footnote ten.
174

C. The Third Theory—The "Compulsory License " Approach
1. The Compulsory Licenses.—A compulsory license allows a secondary user

to use an original work by simply paying a statutorily controlled price. 175

Compulsory licenses reflect the conclusion that in certain narrowly defined

circumstances, the public's interest in having access to a work outweighs the
creator's interest in appropriating the pure market value of the work.

176

Specifically, Congress concluded that a compulsory license would not reduce

creative incentives to a point where authors would decline to create and publishers

would decline to produce desired works in desired numbers.
177

Section 115(a) defines the availability and scope of compulsory licenses for

nondramatic musical works.
178

It states that "[w]hen phonorecords of a

nondramatic musical work have been distributed to the public . . . under the
authority of the copyright owner, any other person may . . . obtain a compulsory
license to make and distribute phonorecords of the work."179 However, until

171. Teresa De Tunis, Copyright Protection ofPrivacy Interests in Unpublished Works, 1994

Ann. SURV. Am. L. 277, 287. See also Jay Dratler, Jr., Distilling the Witches' Brew of Fair Use

in Copyright Law, 43 U. MIAMI L. Rev. 233, 272 (1988) (explaining that one of the underlying

rationales of the Harper & Row decision is that "special protection of unpublished works [would]
. . . promote full gestation of [an author's] creative effort [and] foster artistic integrity").

172. De Turris, supra note 171, at 287.

173. See U.S. CONST, art. I, § 8, cl. 8.

174. 114S. Ct. 1164,1171 n.l0(1994).

175. Id.

176. 1 Paul Goldstein, Copyright § 1.2.3.1, at 17 (1989).

177. Id.

178. 17 U.S.C. § 1 15(a) (1994). For the purposes of this Note, section 115 will serve as a

fair representation of all the compulsory licenses. Other compulsory licenses include the

compulsory license for secondary transmissions by cable systems and the compulsory license for

coin-operated phonorecord players. 17 U.S.C. §§ 1 1 1(d), 1 16.

179. 17 U.S.C. § 1 15(a)(1). This section does not allow the secondary user to make and

distribute copies and phonorecords of the original work. It only allows the secondary user to record

their own version of the original nondramatic, musical work and distribute their version of the

original work. See 2 NlMMER & NlMMER, supra note 13, § 8.04[A].



1995] COPYRIGHT REMEDIES 489

copyright owners distribute their works to the public their rights remain exclusive

and they cannot be forced to reveal their work in the name of the public interest.
Section 1 15 also restricts the nature of the rights granted under the compulsory

license.
180

For example, under section 115, the compulsory licensee does not

obtain the right to reproduce transformative derivatives of the original musical

work, such as sheet music or public performances.
181

Instead, the section 115

compulsory licensee is accorded only a limited adaptation right in connection with

his recording of the licensed musical work.
182 He may make a musical

arrangement of the work "to the extent necessary to conform it to the style or
manner of interpretation of the performance involved, but the arrangement shall
not change the basic melody or fundamental character of the work."

183
Therefore,

Congress has concluded that the requirements for obtaining a compulsory license

under section 115, combined with the limited rights granted to the licensee, and

the compulsory licensing fee protect the creative incentives of the copyright owner

to the extent that the copyright owner will still create nondramatic musical works

even if subject to a compulsory license.

Section 115 also outlines the procedures for accounting and payment of the

compulsory licensing fees to the copyright owner of record in the Copyright

Office.
184

The licensing fees are determined by the Copyright Arbitration Royalty
Panels (CARPs).

185
However, in practice, the compulsory license provisions are

rarely invoked by the major record companies because they would like to avoid the

burden of monthly or annual statements and payments. Instead, an important role

is played by the Harry Fox Agency, Inc., a wholly owned subsidiary of the
National Music Publishers Association.

186
Almost all the major music publishing

firms in the United States have authorized the Harry Fox Agency to issue licenses
to record companies for the manufacture of phonorecords of their musical

compositions.
187

The license is issued at a royalty equal to the prevailing statutory
rate and requires accounting and payment schedules less onerous than those of the

180. 17U.S.C. § 115(a)(2).

181. Id. ; see also 2 NlMMER & NlMMER, supra note 13, § 8.04[B].
1 82. 2 NlMMER & NlMMER, supra note 1 3, § 8.04[F].
183. 17U.S.C. § 115(a)(2).

184. Id. § 115(c)(1).

185. Id. § 801(b)(1). The now defunct Copyright Royalty Tribunal was a major and

controversial creation of the 1976 Act. It was an independent agency functioning within the

legislative branch of the government, and was set up to administer compulsory copyright licenses.

The Copyright Royalty Tribunal served two functions. The first was to set the statutory royalty

rates for the compulsory licenses. The second was to settle disputes concerning the distribution of

monies collected for cable television and jukebox performances. In 1993 Congress abolished the

Copyright Royalty Tribunal, replacing it with Copyright Arbitration Royalty Panels to be convened,

as the need arises, by the Librarian of Congress with the recommendation of the Register of

Copyrights. Marshal Leaffer, Understanding Copyright Law 223-25 (2d ed. 1995).
186. Sheldon W. Halpernet al., Copyright Cases and Materials 212 (1992).

187. Id.



490 INDIANA LAW REVIEW [Vol. 29:467

statute.
188 The record companies are also free to negotiate directly with the

copyright owner in an attempt to get a license at a lower rate.
189

With this background, a third possible interpretation of footnote ten in the
Campbell opinion

190
is the "compulsory license" approach. This approach does

not enjoin infringements in cases that have factual scenarios which closely parallel

the prerequisites for normally invoking one of copyright's compulsory licenses.
191

Instead, this approach allows an infringing user to pay a fee and continue to

infringe upon the copyright of the original work. The "compulsory license"
approach can be distinguished from the two previously discussed interpretations

in two ways. First, the "compulsory license" approach requires the copyright
owner to voluntarily distribute his or her work to the public before it can be
invoked. Both the first and second approaches allowed for the continued

infringement of works that had not been published or were never intended to be

published. Second, the "compulsory license" approach requires the existence of

an organization or agency that has already determined an appropriate licensing fee

for the continued infringement of the original work. Under both the first and

second approaches, the judiciary was required to determine the appropriate fee and

this created a risk that the fee would be set far below the proper market price.

2. American Geophysical Union v. Texaco, Inc.—The "compulsory license"
approach to interpreting footnote ten of the Campbell opinion recently found

support in American Geophysical Union v. Texaco, Inc.
192

In Texaco, the

American Geophysical Union and 82 other publishers of scientific and technical

journals brought a class action suit against Texaco claiming that Texaco'

s

unauthorized photocopying of articles from their journals constituted copyright

infringement.
193 Among other defenses, Texaco claimed that its copying was a fair

use under section 107 of the Copyright Act.
194 The actions which gave rise to the

suit focused on Dr. Donald H. Chickering, II, a scientist at one of Texaco'

s

research centers.
195

As part of its substantial expenditures to support research activities, Texaco
subscribed to many scientific and technical journals and maintained a sizable
library of these materials.

196
In order to keep abreast of developments in his field,

Dr. Chickering would review works published in various scientific and technical

journals related to his area of research.
197

Texaco assisted him by having the

company library circulate current issues of relevant journals to Dr. Chickering

188. Id.

189. Id.

190. See supra notes 1-4 and accompanying text.

191. See, e.g., 17 U.S.C. § 115 (1994) (compulsory license for making and distributing

phonorecords).

192. 37F.3d881(2dCir. 1994).

193. Id. at 883.

194. Id.

195. Id.

196. Id.

197. Id. at 884.



1 995] COPYRIGHT REMEDIES 49

1

when he placed his name on the appropriate routing list.
198 When he received the

various publications, Dr. Chickering would photocopy any material or data from

them which he felt would facilitate his current or future research, and would then

place the copies in his files for future reference.
199

American Geophysical Union

claimed that this copying constituted copyright infringement.
200

The district court considered the statutory fair use factors identified in section

107,
201

weighed other equitable considerations, and held that Dr. Chickering'

s

photocopying of the articles did not constitute fair use.
202 The Second Circuit

affirmed the district court's finding of infringement.
203 The Second Circuit

concluded that the first factor, "the purpose and character of the use,"
204

favored

the publishers because the "dominant purpose of the use [was] 'archival' --to

assemble a set of papers for future reference, thereby serving the same purpose for

which additional subscriptions are normally sold, or . . . for which photocopying

licenses may be obtained."205 The court held that the second factor, "the nature of
the copyrighted work,"

206
favored Texaco because of the "predominately factual

nature of [the articles]."
207 The third factor, "the amount and substantiality of the

portion used in relation to the copyrighted work as a whole,"
208

weighed in favor

of the publishers because Texaco had copied entire articles and "each article

constituted an entire work in the fair use analysis."
209

Under the fourth factor,
"the effect of the use upon the potential work,"

210
the Second Circuit held that, in

addition to the sale of additional journal subscriptions, Texaco' s copying was

reducing the publishers' markets for the sale of individual journal articles.
211

The court concluded that "the publishers . . . [had] created, primarily through

the CCC [Copyright Clearance Center],212 a workable market for institutional users
to obtain licenses for the right to produce their own copies of individual articles
via photocopying."

213 The court concluded "that three of the four statutory factors,

including the important first and fourth factors, favored the publishers" and agreed

198. Id.

199. Id.

200. Id. at 883.

201. 17U.S.C. § 107(1994).

202. American Geophysical Union v. Texaco Inc., 802 F. Supp. 1 (S.D.N.Y. 1992).

203. American Geophysical Union v. Texaco Inc., 37 F.3d 881 (2d Cir. 1994).

204. 17U.S.C. § 107(1).

205. Texaco, 37 F.3d at 892-93.

206. 17U.S.C. § 107(2).

207. Texaco, 37 F.3d at 893.

208. 17U.S.C. § 107(3).

209. Texaco, 37 F.3d at 894.

210. 17U.S.C. § 107(4).

211. Texaco, 37 F.3d at 898.

212. "The CCC is a central clearing-house established in 1977 primarily by publishers to
license photocopying. The CCC offers a variety of licensing schemes; fees can be paid on a per
copy basis or through blanket license arrangements." Id. at 897 n.16.

213. Id. at 898.



492 INDIANA LAW REVIEW [Vol. 29:467

with the district court that Texaco' s photocopying of the journal articles was not
a fair use.

214
The Second Circuit then went beyond the issues before it and

considered the publishers' remedies.
215 The court explained "that the context of

this dispute appears to make ill-advised an injunction," and the dispute "appears
to be an appropriate case for exploration of the possibility of a court-imposed

compulsory license."
216 The court cited footnote ten of the Campbell opinion to

support this suggestion.
217

3. The "Compulsory License " Approach Appears to Comply.—The factual
similarity between the Texaco case and the requirements for invoking one of

copyright's compulsory licenses was most likely the reason that the Second Circuit

recommended withholding an injunction notwithstanding Texaco'

s

infringement.
218

For example, the publishers in Texaco produced their journals

with an eye toward publication and had voluntarily disseminated their journals for

the purposes of exploiting the public's interest in the work,
219

thereby meeting the

requirement in section 1 15 of the Copyright Act that the copyright owner of a

nondramatic musical work voluntarily distribute it to the public before a
compulsory license can be invoked.

220
Second, section 115 includes a built-in

damage estimator in that a compulsory license is issued only after the original
composer markets his work. In Texaco, the publishers had the opportunity of first

publication,
221

and a court could avoid undercompensating them by basing the

court-imposed licensing fee on a percentage of the cover price in proportion to the

amount copied. Third, section 115 guards against the infringement of derivative

works by allowing for only a limited transformation of the original work. The
infringing use of the journals in Texaco did not transform them into derivative

works. Instead, Texaco simply reproduced sections of the journals in their original

form.
222

Finally, like the Copyright Arbitration Royalty Panels and the Harry Fox

Agency, which oversee the regulation and payment of compulsory licenses for

nondramatic musical works, the existence of the Copyright Clearance Center

(CCC) in the Texaco case provided an efficient mechanism to oversee and license
the photocopying of individual journal articles.

223

214. Id. at 899.

215. /i at 899 n. 19.

216. Id.

217. Id.

218. See, e.g., 17 U.S.C. § 115 (1994) (compulsory license for making and distributing

phonorecords).

219. Texaco, 37 F.3d at 883.

220. 17 U.S.C. § 115(a)(1).

221

.

Texaco, 37 F.3d at 883.

222. Id.

223. Id. at 897. Because few judges are familiar with the market for the direct sale and

distribution of individual journal articles, organizations such as the CCC can help courts establish
the proper rate for a judicially imposed compulsory license, provide judges with an independent,

expert opinion on the appropriate rate for individual journal articles, and help a court avoid

undercompensating the copyright owner.



1995] COPYRIGHT REMEDIES 493

Making the "compulsory license" approach contingent upon the original
author's act of public dissemination ensures that the original author will have the

right of first publication and avoids the problems of the first theory, which allowed

for the use of all works of high public interest, regardless of the published or

unpublished nature of the original.
224

This approach also avoids the pitfalls of

Judge Leval's theory, which allows for the continued infringement of works

created for purely private purposes, because it permits the continued infringement

of only those works which were created with an eye toward publication.
225

Finally,

the "compulsory license" approach ensures that the copyright owner will be
properly compensated because the ill-equipped judiciary is not required to

determine the appropriate licensing fee. Instead, this approach requires the

preexistence of an organization or agency, such as the CCC or the Harry Fox
Agency, which has already determined the appropriate licensing fee.

The "compulsory license" approach can succeed where the other two
interpretations fail because it allows for an expedited dissemination of works while

at the same time preserves the incentives for future creation. By accomplishing
both of these tasks, the "compulsory license" approach more readily complies with

the constitutional mandate of promoting science and the useful arts and is a more

appropriate interpretation of footnote ten.

Conclusion

This Note briefly reviewed the policies behind copyright law and the fair use

doctrine and explored three possible interpretations of footnote ten in the

Campbell opinion. The primary focus was to determine under what circumstances

a court should refrain from issuing an injunction against infringement and award

monetary damages. The first approach, which would deny an injunction whenever
there was a high degree of public interest in a work regardless of the motivation
for creation and the publication status of the work, would reduce creative

incentives to produce future works and does not comport with the underlying

policy of copyright law. The second approach, which would deny an injunction
in only those cases where there was a high degree of public interest in the original

work and the original work was created for purely private purposes, mig&t chill the
incentives for creating private works and to a greater extent, chill the frequency

with which such works are donated to libraries. Given these ramifications, the

second interpretation, like the first, fails to comport with the underlying policy of

copyright law and is not a proper interpretation of footnote ten. The third
interpretation of footnote ten allows a court to withhold an injunction against

infringement and award monetary damages only in those cases that are factually

similar to the requirements for invoking a compulsory license. By preserving
creative incentives and allowing for the expedited dissemination of works, this

approach more readily complies with the underlying philosophy of copyright law

and therefore is the appropriate interpretation of footnote ten in the Campbell

224. See supra notes 126-133 and accompanying text.

225. See supra 166-174 and accompanying text.



494 INDIANA LAW REVIEW [Vol. 29:467

opinion.

The Supreme Court has not resolved the proper interpretation of footnote ten
and future litigation will determine its proper meaning. Given the broad language

of footnote ten, courts are likely to adopt several different interpretations. The task
for future courts will be to determine when a licensing fee, as opposed to an
injunction, is the appropriate remedy for an infringement. In doing so, two
important aspects of the Campbell opinion should be considered: first, that

footnote ten's proposition is dicta; and second, that the primary focus of the

Campbell opinion was to reject the lower courts' elevation of the Supreme Court's

dicta in the Sony and Harper & Row opinions. Thus, future courts should not
inflate footnote ten to a per se rule that denies injunctions whenever there is a high

degree of public interest in a work, but instead, they should apply the proposition

in a manner that will comply with copyright's constitutional mandate of promoting

the progress of science and useful arts.