Green v. U.S. Dep't of Justice

111 F.4th 81

Matthew D. GREEN, et al., Appellants, v. UNITED STATES DEPARTMENT OF JUSTICE, et al., Appellees.

No. 23-5159

United States Court of Appeals, District of Columbia Circuit

Argued May 6, 2024

Decided August 2, 2024

Appeal from the United States District Court for the District of Columbia (No. 1:16-cv-01492)

Benjamin D. Margo argued the cause for appellants. On the briefs were Corynne McSherry, Mitchell L. Stoltz, Brian M. Willen, and Lauren Gallo White.

John W. Crittenden was on the brief for amicus curiae Legal Scholars in support of appellants.

Charles Duan was on the brief for amici curiae Public Knowledge, et al. in support of appellants.

Jack I. Lerner was on the brief for amicus curiae Kartemquin Educational Films and International Documentary Association in support of appellants.

Vivek Krishnamurthy was on the brief for amicus curiae Accessibility, Archival, and Security Fair Users in support of appellants.

Brian J. Springer, Attorney, U.S. Department of Justice, argued the cause for appellees. With him on the brief were Brian M. Boynton, Principal Deputy Assistant Attorney General, and Daniel Tenny, Attorney.

John Matthew DeWeese Williams and Lucy Holmes Plovnick were on the brief for amici curiae Association of American Publishers, Inc., et al. in support of appellees.

David Jonathan Taylor was on the brief for amici curiae DVD Copy Control Association, Inc. and Advanced Access Content System Licensing Administrator, LLC in support of appellees.

Before: Henderson, Millett and Pillard, Circuit Judges.

Pillard, Circuit Judge:

Twenty-six years ago, Congress enacted the Digital Millenium Copyright Act to protect copyrighted works made available online from digital piracy and unauthorized access. Plaintiffs-Appellants, a computer science professor and a tech inventor, say the Act is so plainly unconstitutional that it cannot be applied to anyone. They challenge the law's prohibitions against circumvention of technological protections on copyrighted works and distribution of the means to circumvent. In their view, those provisions violate the First Amendment's free speech protections by unduly stifling the fair use of copyrighted works. Having abandoned their as-applied challenges, plaintiffs seek outright invalidation of a central pillar of the Act as overbroad and a prior restraint on speech in violation of the First Amendment. We reject both facial challenges.

I.

A.

The First Amendment and Copyright Clause appear, at first glance, to be in tension. The First Amendment guarantees freedom of speech, see U.S. Const. amend. I, but the Copyright Clause, by "securing for limited Times to Authors ... the exclusive right to their respective writings...," id. art. I, § 8, cl. 8, has the "inherent and intended effect" of restricting some expression by others, Golan v. Holder, 565 U.S. 302, 327-28, 132 S.Ct. 873, 181 L.Ed.2d 835 (2012). The tension is more apparent than real, however, insofar as the Copyright Clause bolsters the First Amendment by acting as an "engine of free expression." Id. at 328, 132 S.Ct. 873 (quoting Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)). By creating a "marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas." Id. (quoting Harper & Row, 471 U.S. at 558, 105 S.Ct. 2218). Consistent with the Copyright Clause, the First Amendment "securely protects the freedom to make—or decline to make—one's own speech," but it "bears less heavily when speakers assert the right to make other people's speeches." Eldred v. Ashcroft, 537 U.S. 186, 221, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003). The purpose of Copyright law to "promote the Progress of Science and useful Arts," U.S. Const. art. I, § 8, cl. 8—in other words, to "promote the creation and publication of free expression," Eldred, 537 U.S. at 219, 123 S.Ct. 769—generally accords with the First Amendment's aims.

That said, to avoid impeding robust expression, courts have long recognized a common-law doctrine of "fair use" that implies an "author's consent to a reasonable use of his copyrighted works" by other speakers. Harper & Row, 471 U.S. at 549, 105 S.Ct. 2218 (quoting Horace G. Ball, Law of Copyright and Literary Property 260 (1944)). Fair use has historically limited copyright owners' exclusive rights in order to facilitate certain uses of information by nonowners. In the Copyright Act of 1976, which gave copyright holders "a bundle of exclusive rights" to their copyrighted work, Congress codified fair use as an affirmative defense to a claim of copyright infringement. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 526-27, 143 S.Ct. 1258, 215 L.Ed.2d 473 (2023) (quoting Harper & Row, 471 U.S. at 546, 105 S.Ct. 2218). The fair use doctrine permits the use of copyrighted work "for purposes such as criticism, comment, news reporting, teaching,... scholarship, or research," 17 U.S.C. § 107, and enables "courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster," Andy Warhol Found., 598 U.S. at 527, 143 S.Ct. 1258 (quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990)).

Faced with First Amendment challenges to statutes that regulate copyright, the Supreme Court has described fair use as one of two "traditional First Amendment safeguards" designed to strike a balance in copyright law. Eldred, 537 U.S. at 220, 123 S.Ct. 769. The other referenced safeguard is copyright's distinction between uncopyrightable ideas and copyrightable expression, codified at 17 U.S.C. § 102(b). That distinction ensures that "every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation" even though particular means of expressing it do not. Eldred, 537 U.S. at 219, 123 S.Ct. 769. Copyright laws are not categorically invulnerable to First Amendment challenge, but where "Congress has not altered the traditional contours of copyright protection"—as where it aptly respects the idea/expression dichotomy and fair use—the Supreme Court has opined that "further First Amendment scrutiny is unnecessary." Id. at 221, 123 S.Ct. 769. Thus, fair use is a "built-in First Amendment accommodation[]" in copyright law—endowing fair use with some constitutional pedigree. Id. at 219, 123 S.Ct. 769.

In acknowledging that the fair use defense serves constitutional values, we do not mean to suggest that Congress lacks freedom to alter the contours of that defense. To the contrary, the Supreme Court has consistently acknowledged Congress's power to "take a fresh look" should it disagree with judicial application of fair use doctrine. Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 456, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). And Congress has in fact done so at various points throughout the nation's history. For instance, while Justice Story once recognized abridgment as one type of non-infringing fair use, Folsom v. Marsh, 9 F. Cas. 342, 344-45 (C.C.D. Mass. 1841), Congress later extended copyright's protection to exclusive abridgement rights, see Copyright Act of 1909 § 1(b), Pub. L. 60-349, 35 Stat. 1075 (1909); see also Paul Goldstein, Derivative Rights and Derivative Works in Copyright, 30 J. Copyright Soc'y U.S.A. 209, 214 (1982).

Fair use plays a key role in striking a balance between expression and prohibition in copyright law. But because the line between uses that are fair and those that are infringing eludes crisp definition, creators relying on fair use as a defense against claims of copyright infringement inevitably face some uncertainty. Courts determine case by case whether use of a copyrighted work constitutes fair use, sometimes based on subsidiary factual determinations made by juries. See Google LLC v. Oracle Am., Inc., 593 U.S. 1, 23-26, 141 S.Ct. 1183, 209 L.Ed.2d 311 (2021). Indeed, the Supreme Court has described reliance on a "potential fair use defense" as a "roll [of] the dice," subjecting the user of copyrighted material to a "notoriously fact sensitive" analysis that typically cannot be resolved "without a trial." Georgia v. Public.Resource.Org, Inc., 590 U.S. 255, 275, 140 S.Ct. 1498, 206 L.Ed.2d 732 (2020).

That uncertainty risks chilling some privileged speech, but it inheres in the contextual character of the fair use defense. The Copyright Act directs courts determining whether a work constitutes fair use to consider a non-exhaustive list of factors, including:

(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.

17 U.S.C. § 107. When those factors favor a finding of fair use, that use is "not an infringement of copyright." 17 U.S.C. § 107.

B.

With the rise of streaming services and electronic readers, the public enjoys unprecedented access to copyrighted materials. Billions of people worldwide can stream copyrighted TV shows into their homes, listen to copyrighted music through the smartphones in their pockets, or instantaneously download copyrighted novels onto an e-reader. In the 1990s, Congress anticipated that "the movies, music, software, and literary works that are the fruit of American creative genius" could soon be accessed "quickly and conveniently via the Internet." S. Rep. No. 105-190, at 8 (1998). Spurred by that accurate forecast and obligated to implement two World Intellectual Property Organization treaties, Congress erected new legal guardrails to facilitate those advances. After all, "without reasonable assurance that they will be protected against massive piracy," copyright owners could...