A new fair use analysis?

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Cookies Settings

A new fair use analysis?

Butler_Brandon_crop_100

During a session on copyright, Brandon Butler of the American University Washington College of Law discussed the history and evolution of the fair use doctrine, including a look at the recent Google Books decision

Butler Brandon
Brandon Butler

According to Butler, the decision is an important one because it is a refinement of fair use analysis by one of the most influential thinkers on the subject. Though the four fair use factors have been codified in the copyright statute since 1976, Butler said that application had long been “mushy” and somewhat inconsistent, with judges applying a range of concepts from equity concerns to market effect.

Even after the seminal Sony v Betamax case, fair use analysis was still relatively undeveloped. Butler said that Judge Pierre Leval, then of the Southern District of New York, admitted that he essentially had no theory of fair use even after years of applying it. In an attempt to fix this, Leval wrote an article looking at the history of copyright and argued that the concept is justified by utilitarian concerns, that the incentive for authors is a means to secure a societal benefit through increased human knowledge. Laval further suggested that fair use is justified by the same model – a use is fair if it serves to increase overall human knowledge. The theory of “transformative use”, that a use is fair if it transforms the original material and creates new information, embodies this.

Butler noted that a few years later, the Supreme Court strongly endorsed the theory of transformative use as an important part of fair use analysis in Campbell v Acuff-Rose Music. In fact, several scholars found that transformative use analysis has helped to make fair use jurisprudence much more consistent and less “mushy.”

Perhaps appropriately, last week’s Google Books decision was written by Judge Leval, now a judge on the Second Circuit. Twenty-five years after his influential article on fair use, he revisits the issue in what Butler described as a “tour-de-force” on his concept of transformative use.

In Google Books, Leval found that the service was transformative because it provided valuable information about the books, not the information inside. Furthermore, he thoroughly analyzed many key fair use issues, including the effect on the marketplace, commercial versus non-commercial use and the fact-expression dichotomy.

However, what is most interesting about the case is that Leval appeared to have added a new refinement to fair use analysis based on market concerns. In addition to requiring a finding of transformative purpose, a use is fair only if it does not provide a market substitute.

“Even if your purpose is new, the effect cannot be to provide market substitutes that substantially impairs the market of the original,” Butler explained.

“I think this is really interesting, and I think it’s new.”

more from across site and SHARED ros bottom lb

More from across our site

The role’s remit, which comes as the firm is building its litigation team, will include expanding the use of AI in patent and legal work and automating manual processes
Former Hoyng Rokh Moneiger partner Laura Alonso, who brought her team to ECIJA in March, discusses plans to expand further and why ECIJA’s ‘IP DNA’ is helping broaden her work
Amita Haylock discusses building an integrated Asia practice as clients increasingly demand that firms combine IP, technology and data expertise
François Pochart, Grégoire Desrousseaux and Lionel Martin, long-standing figures in the firm’s patent litigation team, are set to help launch a Paris-based litigation offering
The Unitary Patent has passed 100,000 registrations, but new data raises the question of whether 30% uptake is a ceiling or a staging post for further growth, say Michael Nielsen and Darren Smyth of EIP and Andrew Samm at Patently
The new generation of in-house IP leaders want commercial judgment, accessibility and flexibility, with AI raising expectations around both fees and delivery
The firm launched a San Diego office earlier this month, but California investment and expansion is far from complete
The industry’s response to AI requires an unfamiliar ingredient as firms battle to shape their futures
The firm is looking beyond replacing recently departed talent, betting instead on senior leaders to strengthen and expand its patent litigation platform
Olga Partington, director in Sterne Kessler’s biotechnology and chemical practice group, shares why a patent's vulnerability peaks when it is young, rather than when it is most valuable, under the PTAB's new framework
Gift this article