5th Cir affirms fair use on a motion to dismiss, fee award to D

Bell v. Eagle Mountain Saginaw Independent School District, No. 21-10504 (5th Cir. Feb. 25, 2022)

“The softball team and flag corps at a public high school outside Fort Worth used their Twitter accounts to post a motivational passage from sports psychologist Keith Bell’s book, Winning Isn’t Normal.” He sued; the court of appeals affirms a finding of fair use on a motion to dismiss and an award of attorneys’ fees.

Bell continues to market his 1982 72-page book, and also sells merchandise, “including t-shirts and posters that display the passage that was quoted in the tweets.” The passage is “separately copyrighted,” by which I take it the court means “separately registered.” Bell allegedly offers licenses for its use. The passage offers a number of bromides about “winning” (the court repeats the whole thing, making the opinion yet another place the passage can be found freely online). The theme: winning is unusual, so winners must be unusual and “want it more.” [I find this stuff actively toxic, but then again I do believe that chance favors the prepared or, as a debate coach of my acquaintance said, “The harder you work, the luckier you get.”]

Anyway, Bell goes around suing unauthorized users of the passage, mostly public schools or nonprofits that publish the passage on social media. That’s what Chisholm Trail High School’s softball team and color guard did in 2017, on Twitter, to under 1000 followers, crediting Bell. Bell discovered them “soon after they were posted,” but waited almost a year to notify the district, which promptly “removed both posts, told Bell that the mistake was a ‘teachable moment,’ and announced it was implementing a training program to avoid similar incidents.” [I hope it modifies the training program to talk about fair use!] Bell sued anyway.

“[F]air use is an affirmative defense that can support Rule 12(b)(6) dismissal.”

Factor one: Not transformative, but noncommercial, which weighs in favor of the school district. Bell argued that the tweets could “indirectly” benefit the school by bolstering its “professional reputation.” “Enhanced reputation can be a commercial benefit, such as when a scientist falsely presents another’s article as her own.” But the tweets didn’t do that. “The tweets attempted to motivate the student members to perform at their best, not to motivate donors to contribute to the programs. There is no logical theory for how tweeting Bell’s motivational message to inspire students would enhance the reputations of these programs, let alone how that might lead to some tangible benefit for the school district later on.” Good faith also favored the school district, and transformative use is not “absolutely necessary.” In its absence, other factors like commerciality “loom larger,” but here that helped the school district.

Nature of the work: Somewhat creative, but very published. “Bell is entitled to the inference that the school chose the WIN Passage because it combines and condenses these principles in a particularly inspiring way.” But this was of “meager” help to Bell, since “[t]he nature of the work is widely considered the least significant fair-use factor,” and it only weighed for him narrowly in the first place.

Amount/substantiality: Accepting his allegation that the passage was the heart of the work, the court saw no need to separately address his argument that the separate registration meant that the school district copied the “whole” work. [Not for nothing, the Second Circuit has wisely rejected assessing factor three by counting registrations. NXIVM Corp. v. Ross Institute, 364 F.3d 471 (2d Cir. 2004).] “If that were all, copying the WIN Passage would be qualitatively significant. The pleadings, however, also indicate that the WIN Passage was freely accessible before the softball team and flag corps posted it.” Sony held long ago that if an unauthorized use “enables a viewer to see such a work which he had been invited to witness in its entirety free of charge, the fact that the entire work is reproduced . . . does not have its ordinary effect of militating against a finding of fair use.” Quoting a small excerpt that was “already freely available to the public” rendered the third factor neutral.

Effect on the market: Harm was implausible. In a footnote, the court rejected Sony’s rule that noncommercial use is presumptively not market-harming, reasoning that “the Supreme Court has since clarified that no such presumption exists, see Patry § 6:4 (“[T]he burden of proving the defense always remains on the party asserting it.”); Campbell, 510 U.S. at 584–85; Harper & Row, 471 U.S. at 566–69.” [Ugh. First, it’s troubling to have the first cite be a treatise paraphrasing what the Supreme Court did. Second, I think this is just a legal mistake: Sony says that noncommerciality creates a presumption in favor of the defendant on the fourth factor, and the Supreme Court has never rejected that; rather, it has explicitly rejected the opposite rule—that all commercial uses are presumptively disfavored.]

Anyway, the complaint alleged that widespread use of the passage on social media could reduce “the incentive to purchase Winning Isn’t Normal or related merchandise.” But that’s not plausible. The tweets don’t reproduce enough of the work to substitute for it, and, “[i]f anything, the properly attributed quotation of a short passage from Winning Isn’t Normal might bolster interest in the book; it is free advertising.” Nor is a tweet “a market substitute for a coffee mug”; viral sharing might increase demand for those, but not plausibly decrease it.

Bell also alleged interference with his theoretical market for licensing tweets, but it was not plausible that there was a “traditional, reasonable, or likely to be developed market[]” for licensing tweets. “[D]espite being embroiled in litigation for years, Bell is unable to allege that anyone has ever purchased a license before posting the WIN Passage on social media—much less a public school district, which has no commercial interest in its online presence.” The fact that he extracted settlements from alleged infringers does not a real market make. “Absent any plausible allegation that public schools would willingly pay to tweet the WIN Passage, Bell’s licensing concerns ‘are purely speculative.’” Factor four favors fair use.

Result: fair use. “[C]opyright law’s goal of promoting creativity would be better served by allowing the use than preventing it.”

Fee award: “[A]ttorney’s fees to the prevailing party in a copyright action is the rule rather than the exception and should be awarded routinely.” There was no abuse of discretion in “following the normal rule.” Bell had “a long history of suing public institutions and nonprofit organizations over de minimis uses of his work” and made “exorbitant demands for damages in hopes of extracting disproportionate settlements.” “Attorney’s fees were thus an appropriate deterrent, both with respect to Bell and other copyright holders who might consider a similar business model of litigation.”