By Kenneth R. L. Parker*
There are a number of areas in which copyright law appears to have lagged behind technological advancement, including fan fiction, web videos that incorporate copyrighted elements, songs that sample from earlier copyrighted recordings, and online user-generated content. Each of these types of “gray works” has been the subject of scholarship.1 However, one class of gray works that has received considerably less scrutiny is forwarded emails.2 While forwarding emails is a common practice, it may also constitute copyright infringement.
On its face, an email message appears to merit the same level of copyright protection as a written letter, since the copyrighting process is automatic at the time a writing is fixed in a tangible form3 and electronic communication has been construed to be tangible for purposes of copyright.4 Copying or distributing a copyrighted work, absent an applicable defense, constitutes infringement.5 Just as copying and distributing a letter violates the author’s copyright in the letter, forwarding an email or copying its contents to a web page appears to make out the prima facie case for copyright infringement. Is there a defense or exception under which email forwarding is not copyright infringement or is the law merely ignored by email authors and forwarders alike?
Part I of this article examines under what circumstances emails are copyrighted works. Part II explores possible defenses to infringement, including implied licenses and fair use, and concludes that neither defense is consistently applicable to email forwarding. Part III discusses the implications of email forwarding constituting copyright infringement.
I. When Are Emails Copyrighted Works?
In order for an email to be a copyrighted work, it must be an “original work of authorship fixed in any tangible medium of expression . . . .”6 While a one-word email or an email that itself copies a prior work would not itself be “an original work of authorship,” the vast majority of emails of more than a few words meet the low bar for originality described by the Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Company.7 In order to be “fixed in a tangible medium of expression,” a work must be perceivable by people either with or without the aid of a machine.8 Therefore, emails are automatically copyrighted when written, so long as they are sufficiently original to meet the low bar of Feist.9
II. What Defenses to Infringement Are Available For Forwarding Emails?
When determining whether a copyrighted work has been infringed, a number of questions must be asked, including how much of the work was copied or distributed and whether the purpose of the replication or distribution was to comment on or to criticize it.10 Certainly, it is a fairly common practice to include a quotation from an email or an entire email chain in an email response.11 Rather than parsing the borderline cases, it is helpful to begin this conversation by examining the most basic example: when an entire original email is forwarded without commentary. In such a case, what are the viable defenses to infringement, if any? Two possibilities merit examination: (a) whether by sending an email, the author of the email grants an implied license to the recipient to forward it and (b) whether the forwarding of the email may constitute fair use.
A. Does the author of an original email grant an implied license that permits the recipient of that email to forward it to others?
An author of a copyrighted work has the exclusive right to copy and to distribute that work and to authorize others to copy or to distribute that work,12 from which it can be derived that unauthorized copying and distribution constitutes infringement.13 However, it is possible that copying and distribution may be authorized by an implied license granted by the author, which may be found based on his course of conduct.14 Courts have found implied licenses where an author had a commercial relationship with the alleged infringer that required the use of the copyrighted work.15
Some courts apply a three-pronged test to find an implied license: “whether the licensee requested the work, whether the creator made and delivered that work, and whether the creator intended that the licensee would copy and make use of the work.”16 These criteria could apply outside the context of an existing commercial relationship, but the first prong fails in the case of an unsolicited email. In cases where the first prong is not satisfied, it is unnecessary to examine the other two. Therefore, there cannot be an implied license to send an unsolicited email outside of an existing commercial relationship. It is not relevant that the second test is satisfied by the sending of the email or necessary to examine whether the author demonstrated an intent that the recipient would “copy and make use of” the email.
However, short of a formal implied license, implied permission may be adequate in a noncommercial context, since only unauthorized copying and distribution constitute infringement.17 It may even be possible to derive implied permission for email forwarding from a course of dealing or from broader societal expectations regarding email usage.18 But any such defenses to infringement may fall apart in cases where the author clearly does not authorize forwarding, such as when an email specifies that it is confidential or not to be shared or forwarded or “only for the intended recipient” as many business footers indicate.19 As such, the implied license or implied permission defense to copyright infringement for forwarding an email would be unavailable in many cases.
B. Is forwarding a noncommercial email protected by the fair use doctrine?
Another possible defense to email forwarding constituting copyright infringement is the fair use doctrine under which actions that would otherwise constitute copyright infringement may be deemed permissible.20 Section 107 lists four factors for courts to consider in determining whether a fair use defense to infringement is available:
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.21
The Supreme Court has found that the four criteria must be considered together.22 However, cases applying the fair use doctrine have weighed these factors differently, making it difficult to predict whether a given act of apparent infringement is entitled to the fair use defense.23 It is therefore likely that some instances of email forwarding will be found to enjoy fair use protection and others will not. But in order to foreclose the possibility that all email forwarding is protected by the fair use doctrine, it is necessary to weigh a forwarded noncommercial email using the four factors of the statute.
1. Purpose and Character of the Use
The first factor might at first blush appear to weigh in favor of fair use based on the noncommercial nature of a forwarded email. However, the purpose factor also considers the extent to which the alleged infringer transformed the work: “[T]he more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”24 Transformation requires that the new work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”25 Forwarding an email could meet this test if the forwarded email includes a response to or criticism of the original email, but is unlikely to meet this test if the email is forwarded without comment. In such a case, the first factor would tend to weigh against the applicability of the fair use doctrine.
2. Nature of the Copyrighted Work
The second factor acknowledges that not all copyrighted works are entitled to the same degree of protection. In particular, unpublished works are afforded greater protection than published ones.26 While courts have found that posting on the internet may constitute publication,27 an email sent only to a single recipient is unlikely to be deemed to be so widely dispersed as to have been published.28 As such, the second factor is also likely to weigh against applicability of the fair use doctrine.
3. Amount of the Copyrighted Work Used
The third factor examines the portion of the copyrighted work being used, asking “whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole. . . are reasonable in relation to the purpose of the copying.”29 Because a forwarded email is copied in its entirety, this factor weighs against availability of a fair use defense.30
4. Market Impact of the Use on the Value of the Copyrighted Work
The fourth factor asks to what extent the use depletes the value of the copyrighted work. One commentator has suggested that because noncommercial emails have little value to start with, their unauthorized reproduction cannot harm their value.31 This factor therefore weighs in favor of fair use.
Although the economic impact on the copyrighted work is an important criterion in a fair use analysis, some courts have given significant weight to other fair use factors, such as the portion of the work copied32 and the nature of the work.33 It is therefore not possible to conclude that the fair use defense will necessarily be available to possible infringement by noncommercial emails that are forwarded in their entirety without comment or response.
III. Implications and Other Considerations
It is easy to imagine a scenario in which (1) an email author sends a non-commercial email containing an explicit instruction that the email be kept private, (2) the recipient of the email disregards that instruction and forwards the email without comment, causing harm to the author, and (3) the author learns that the recipient has forwarded the email and responds by registering the email and filing suit in federal court. It is far more difficult, however, to anticipate how a federal judge might react to such a lawsuit. In a circumstance where there was no fair use defense available and the forwarder was unable to rebut the presumption that the forwarding had been willful, the court could, in theory, award the author of the original email up to $150,000 in statutory damages.34 On the other hand, the judge could react to the suit negatively, seeing it as an abuse of the courts, possibly looking to the course of dealing between the parties or even to broader societal expectations with respect to email correspondence to find that – disclaimers to the contrary – the author had granted permission or the recipient to forward the email.
Rather than waiting for this question to be tested in litigation, Congress should act to clarify whether and when forwarding an email infringes the author’s reproduction right in the work. One approach would be to offer full copyright protection to emails that explicitly state that they are confidential or not to be forwarded, but to allow forwarding of emails in other cases. Such a bright line rule would put the authors of emails in charge of the fate of their writings, an outcome that would be consistent with the core principles of intellectual property protection.
* Attorney, GTC Law Group; J.D., 2013, Northeastern University School of Law. Mr. Parker wishes to thank Professor Kara Swanson of Northeastern University School of Law for her invaluable guidance during the development and writing of this article.
1 See, e.g., Stacey M. Lantagne, The Better Angels of Our Fanfiction: The Need for True and Logical Precedent, 33 Hastings Comm. & Ent. L.J. 159 (2011); Rebecca Tushnet, I Put You There: User-Generated Content and Anticircumvention, 12 Vand. J. Ent. & Tech. L. 889, 914-15 (2010); Reuven Ashtar, Theft, Transformation, and the Need of the Immaterial: A Proposal for a Fair Use Digital Sampling Regime, 19 Alb. L.J. Sci. & Tech. 261 (2009); Carl Michael Szabo, Thwack!! Take That, User-Generated: Content!: Marvel Enterprises v. NCSoft; 62 Fed. Comm. L.J. 541, 544 (2010).
2 One scholar to examine this question concludes that forwarded emails are not generally protected by the Copyright Act, but they are instead protected by common law copyright. Ned Snow, A Copyright Conundrum: Protecting Email Privacy, 55 Kan. L. Rev. 501, 506 (2007) (“Despite the Act's fair-use provision, private email expression may nevertheless receive legal protection. A strong argument exists that the Act does not preempt the common-law right of first publication.”). In the article, Professor Snow argues that forwarding emails generally falls into the fair use exception. Id. at 540-41 (“This subpart analyzes the rights relevant to the email context and then discusses whether the fair-use doctrine protects otherwise infringing uses. It concludes that fair use protects a recipient's use of casual email correspondence.”). However, Professor Snow’s analysis is predicated on the possibility that the common law of copyright survived the passage of the Copyright Act of 1976. Id. at 507 (“The Act does not preempt common-law copyright to the extent that the common law protects an author's privacy interest.”).
3 See 17 U.S.C. § 102(a) (2013) (“Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”); 17 U.S.C. § 101 (2013) (“A work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”).
4 17 U.S.C. § 108(b)(2) (2012) makes an exception to the author’s exclusive rights of reproduction and distribution allowing libraries to make up to three copies in “digital format,” so long as those copies are not made available to the public. In order for this exception to be meaningful, a “digital copy” must be read as otherwise violating the reproduction right and must therefore be deemed to be “tangible.” The Supreme Court has found digital music files to be tangible for purposes of copyright protection. See, e.g., MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 940-41 (2005) (finding the defendant to have secondary liability for copyright infringement for its role in encouraging and profiting from the transfer of digital music files without the permission of the copyright holders of those music files).
5 See 17 U.S.C. § 106 (2012) (“Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights . . . to reproduce the copyrighted work in copies or phonorecords . . . [and] to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending . . . .”).
6 17 U.S.C. § 102(a) (2006).
7 See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) [hereinafter Feist] (“[T]he requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.”).
8 See Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121, 127 (2d Cir. 2008) (“[T]he work must be embodied in a medium, i.e., placed in a medium such that it can be perceived, reproduced, etc., from that medium . . . and it must remain thus embodied ‘for a period of more than transitory duration’ . . . .”). Emails may be perceived and reproduced with the assistance of a computer and relatively permanent, satisfying the fixation requirement. Matthew Bender & Co., Inc. v. W. Pub. Co., 158 F.3d 693, 702 (2d Cir. 1998) (“Under § 101's definition of ‘copies,’ a work satisfies the fixation requirement when it is fixed in a material object from which it can be perceived or communicated directly or with the aid of a machine.”).
9 See Feist, 499 U.S. at 345.
10 See infra Section II(B) (discussing the fair use standard).
11 In fact, most email software automatically copies only a highlighted portion of an email when the reply button is clicked while some of the text of the original email is highlighted. See also Posting Style Wikipedia, http://en.wikipedia.org/wiki/Posting_style (last modified Oct. 23, 2013 at 18:30) (discussing methods used to quote from previous emails in an email response).
12 See 17 U.S.C. § 106.
13 See M. Elaine Buccieri, Cause of Action for Copyright Infringement Under the Federal Copyright Act of 1976, as Amended, 9 Cause Of Action 2d 65 (2013) (establishing a prima facie case for copyright infringement requires the plaintiff to prove that “the defendant has wrongfully copied the work . . . without the plaintiff's consent or authorization . . . .” (emphasis added)).
14 See David Nimmer, 3-10 Nimmer on Copyright § 10.03(A)(7) (2012) (“[N]onexclusive licenses may therefore be granted orally, or may even be implied from conduct.”).
15 See, e.g., Oddo v. Ries, 743 F.2d 630, 633 (9th Cir. 1984) (finding an implied license where an author of a manuscript entered into a partnership to have his manuscript included in a book). In Oddo v. Ries, the court reasoned that the author had granted an implied license by entering into the partnership. Id. at 634 (“Oddo, by preparing a manuscript based on his preexisting articles as part of his partnership duties, impliedly gave the partnership a license to use the articles insofar as they were incorporated in the manuscript, for without such a license, Oddo's contribution to the partnership venture would have been of minimal value.”). The Ninth Circuit applied this doctrine to special effects footage that was included in a horror movie, despite a contractual dispute between the special effects producer and the movie executive that resulted in the executive only paying the special effects producer half of the agreed upon price. Effects Associates, Inc. v. Cohen, 908 F.2d 555, 559 (9th Cir. 1990) (“[W]e conclude that Effects impliedly granted nonexclusive licenses to Cohen and his production company to incorporate the special effects footage into “The Stuff” and to New World Entertainment to distribute the film.”). However, these precedents appear to rely on the financial relationship between the author and the alleged infringer and therefore are likely not to apply to noncommercial email correspondence. Id. at 559 (“To hold that Effects did not at the same time convey a license to use the footage in [the film] would mean that plaintiff's contribution to the film was ‘of minimal value,’ a conclusion that can't be squared with the fact that Cohen paid Effects almost $56,000 for this footage.”).
16 Estate of Hevia v. Portrio Corp., 602 F.3d 34, 41 (1st Cir. 2010) (citing Nelson-Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 514 (4th Cir. 2002)); see also Erik Ketzan, Rebuilding Babel: Copyright and the Future of Online Machine Translation, 9 Tul. J. Tech. & Intell. Prop. 205, 230 (“Although no single test has been adopted, a number of courts have held that the touchstone for finding an implied license is intent.”).
17 See Buccieri, supra note 13.
18 Implied permission has been found in analogous cases in other contexts. See, e.g., Nicholas v. Sugar Lo Co., 471 A.2d 44, 48 (N.J. Super. Ct. App. Div. 1983) (“[I]t might well be reasonable to hold from a course of dealings between parties that the continuous granting of permission to use a vehicle implied permission to use it without express consent on another occasion.”); Florida v. Jardines, 133 S. Ct. 1409, 1420 (2013) (Alito, J., dissenting) (“The law of trespass generally gives members of the public a license to use a walkway to approach the front door of a house and to remain there for a brief time.”). This logic could also be applied in the email forwarding context.
19 Spare us the e-mail yada-yada, The Economist, Apr. 7, 2011, available at http://www.economist.com/node/18529895 (“‘If this e-mail is received in error, notify the sender immediately.’ ‘This e-mail does not create an attorney-client relationship.’ ‘Any tax advice in this e-mail is not intended to be used for the purpose of avoiding penalties under the Internal Revenue Code.’ Many firms—The Economist included—automatically append these sorts of disclaimers to every message sent from their e-mail servers, no matter how brief and trivial the message itself might be.”).
20 See generally Alan Latman,12-S14 Nimmer on Copyright II (“Fair use may be viewed from two standpoints. It may be considered a technical infringement which is nevertheless excused. On the other hand, it may be deemed a use falling outside the orbit of copyright protection and hence never an infringement at all.”).
21 17 U.S.C. § 107 (2012).
22 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994) (“[T]he four statutory factors [may not] be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright”).
23 See Latman, supra note 20 (“There is one proposition about fair use about which there is widespread agreement: it is not easy to decide what is and what is not a fair use.”). See also Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978-2005, 156 U. Pa. L. Rev. 549, 610 (2008) (analyzing how courts balanced fair use factors from 1978 through 2005, finding that different courts weighed the factors differently and some courts ignored certain factors entirely: “Despite section 107's command that ‘the factors to be considered shall include’197 factor two, 17.7% of the 306 opinions failed even to refer to the factor, while an additional 6.5% did so only to call it irrelevant.”).
24 Campbell, 510 U.S. at 579.
26 Harper & Row, Publishers, Inc. v. Nation Enterps., 471 U.S. 539, 550 (1985) ("[T]he fact that the plaintiff's work is unpublished is a factor tending to negate the defense of fair use.”) (internal quotation marks omitted).
27 See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1167 (9th Cir. 2007) (“Once Perfect 10 has exploited this commercially valuable right of first publication by putting its images on the Internet for paid subscribers, Perfect 10 is no longer entitled to the enhanced protection available for an unpublished work.”).
28 The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance or public display, constitutes publication.” 17 U.S.C. § 101. Mailing a letter does not consititute publication, nor does the subsequent display of the letter in a library. Salinger v. Random H., Inc., 811 F.2d 90, 97 (2d Cir. 1987), opinion supplemented on denial of reh'g, 818 F.2d 252 (2d Cir. 1987) (“Salinger's letters are unpublished, and they have not lost that attribute by their placement in libraries where access has been explicitly made subject to observance of at least the protections of copyright law.”). Since intent to distrubute is a prerequisited for publication, sending an email to one recipient with the specific request that it not be further distributed is unlikely to be found to constitute publication.
29 Campbell, 510 U.S. at 586.
30 Balsley v. LFP, Inc., 691 F.3d 747, 760 (6th Cir. 2012) (“While wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use.”) (quoting Kelly v. Arriba Soft Corp., 336 F.3d 811, 820 (9th Cir. 2003)).
31 See Snow, supra note 2, at 545 (“The lack of a potential market for personal email suggests an absence of economic harm, thereby implying that a recipient's forwarding use would be a fair use.”).
32 Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1179 (9th Cir. 2012) (Defendant published copyrighted photos for legitimate news purposes, but used “far more than was necessary to corroborate its story,” weighing against fair use.”).
33 Harper & Row, Publishers, Inc. v. Nation Enterps., 471 U.S. 539, 553 (1985) (“Congress intended the unpublished nature of the work to figure prominently in fair use analysis.”).
34 17 U.S.C. § 504(c)(2) (2012).