Photography, Fair Use and Free Speech

All of us take a bad picture now and then.  You know, one of those pictures of yourself that makes you cringe every time you see it.  Honestly, I don’t think I have liked a picture taken of me since 1995.  But most of us react mildly to a bad picture; we moan a little and move on.  Raanan Katz, however, takes more dramatic action.  Katz, who is a real estate developer and part-owner of the Miami Heat basketball team, has been trying to erase an unflattering picture of himself from the Internet for the past three years.  As is so often the case with this kind of legal action, it has had the ironic effect (often called “the Streisand Effect”) of drawing more attention to the photo than it would have received if ignored.  But it is Katz’s method of trying to make the picture go away that is the reason for this post; he bought the copyright in the picture and brought a lawsuit for infringement.

Those who want to know more about the history of this effort, and see the offending photograph, can read this short story from Forbes magazine.  But I want to focus on a couple of specifics in the holding, which upheld the lower court’s ruling that the use of the photography by the defendants was fair use. There are a couple of items in the Eleventh Circuit’s fair use analysis that are worth attention, as well as an interesting connection with the Georgia State copyright case.

The connection with Georgia State is mostly found in the fact that the opinion in Katz v. Google was written by Judge Tjoflat, who also wrote the appellate opinion in Cambridge University Press v. Georgia State.  The Judge seems to be getting more comfortable with the fair use analysis, although it is also arguable that this one was an easier case.  The GSU opinion actually makes a cameo appearance in the Katz ruling; there is a footnote in which Judge Tjoflat acknowledges Katz’s claim that the trial court failed to do the necessary case-by-case analysis of the challenged works, and cites to GSU for the proposition that such analysis is required.  The Judge dismisses this, however, by finding that the magistrate whose “Report and Recommendation” was adopted by the lower court, had taken account of each of the different uses that the defendants had made of the ugly photo.  He adds that “the district court was not required to write a prolix, unwieldy opinion with 25 separate sections devoted to each alleged instance of infringement.” (FN 3)  One can’t help but read that comment as an oblique reference to the massive decision that Tjoflat and his colleagues confronted in the GSU case; I wonder what Judge Evans, who presumably is preparing a similarly lengthy opinion on remand, might make of that comment?

More substantively, the Eleventh Circuit ruling in Katz raises an interesting point about copyright in photographs.  While discussing the second fair use factor, the nature of the original work, the court finds that the photograph in question is “primarily factual,” a finding that supports fair use, by helping to tip that one factor, out of four, in its favor.  The court explains this holding, while acknowledging that photography may require many creative decisions, this way, “The Photo, however, is merely a candid shot in a public setting, and there is no evidence in the record that Magriso, the photographer, attempted to convey ideas, emotions, or in any way influence Katz’s pose, expression, or clothing.” (p. 9).  This language seems, to me, to suggest that copyright is somewhat weaker, or at least more susceptible to fair use, in photographs that simply  attempt to record events that take place in public, as opposed to deliberately artistic photos.  I wonder how news organizations and photojournalists feel about this.  While it makes sense, I think, it also suggests a difficult line.  If copyright is less protective for such “merely” journalistic photos, is there a point where we should not grant copyright at all, as we don’t, for example, where a photograph merely “slavishly reproduc[es]” a two-dimensional public domain artwork.  The question of how much originality is enough in a photograph, which by its nature is often a record of “facts” such as the appearance of people or the external world, to meet the standard for copyright seems less easy here than it is, perhaps, for other media.  But perhaps the answer is that we will protect most photographs, while recognizing that there may be a lower bar for fair use because of this particular and peculiar nature of the art form.

The other point in this ruling that I found very interesting is the analysis of the fourth factor, where the court found that Katz’s purchase of the rights and registration with the Copyright Office, entirely for the purpose of suppressing the picture, was evidence that the challenged uses did not do any harm to a cognizable market.  In short, because the owner’s purpose was to prevent all use, fair use becomes more likely, since it shows there is no market, because no intent to ever license the work.  This logic casts some doubt on the argument often made by rights holders that they have a right not to allow the work to be used.  That is true, but it is still subject to fair uses, which by definition are not copyright infringement — they do not intrude on rights that the copyright owner actually holds.  While the reasoning seems a bit difficult here, for me it is the most important point in this decision; the market harm factor clearly plays its part in the “safety valve for free speech” function that courts often assign to the whole fair use analysis.  Simply put, fair use gets a boost whenever the issue before the court is this alleged right to suppress; copyright gives the rights holder a lot of power over a work, but it does not convey the right to entirely prevent protected speech, even when (especially when!) that speech is critical of,or distasteful to, the rights holder.

PS — this post was mostly written before I learned of yesterday’s ruling in the dispute over an alleged, and now quite doubtful, copyright in the song “Happy Birthday To You.”  That decision is much more widely covered than the one discussed above, and, because it turns on such unique and difficult-to-establish facts, seems to have less impact on daily copyright issues than the Katz case does.  So while I wanted to acknowledge the decision, and provide a link to the ruling for anyone interested who has not already seen it, I decided to stick with my original plan to discuss Katz today.

Sit, Stay, Pay: Paywalls and Popular Research

A couple of weeks ago, an article detailing new research findings by the Duke Canine Cognition Center appeared in our Raleigh area newspaper, the News and Observer. The researchers found that tone of voice can affect how different types of dogs—calmer dogs versus more energetic dogs—respond to their owners’ commands. As a dog owner myself, this is a potentially useful discovery that could help me and many others develop better relationships with our pets.

For those readers who wanted to delve deeper into the researchers’ methods and results by reading the original article, the News and Observer thoughtfully included a link to the article from the journal in which it was published: Animal Cognition. However, clicking on the link takes the reader not to the article itself but to an intermediary page that requires a payment of $40 in order to access the article. In the parlance of scholarly communication, the reader is “hitting a paywall.” By charging prohibitively high fees to view single articles, journals create a barrier between readers without a subscription (read: most of the general public) and the research they want to access.

This problem is not a new one. The open access movement has been trying to address the paywall issue for the better part of two decades. In 2010, as a part of that effort, the Duke faculty adopted a university-wide open access policy to facilitate wider access to their research. The policy enables faculty members to archive copies of their research articles in our institutional repository, DukeSpace. Open self-archiving is accepted by most journals, and many of Duke’s faculty members have uploaded their work to the repository. Anything archived in DukeSpace is free and open to anyone with an internet connection.

For the past two years, to raise awareness about the availability of DukeSpace as resource for making faculty work available to the public, the Duke Libraries Office of Copyright and Scholarly Communication has been collaborating with our Office of News and Communication to provide open access copies of research papers that are featured in the news. When a news story is about to be released, we are alerted so that we can get in touch with the authors and request a copy of the research article. Most authors get back to us within a day or two. My colleagues and I then upload the article to the repository and provide the permanent link to Duke News to include in the story.

Since we began seeking these articles out, we’ve uploaded dozens of papers to the repository, many of which have seen very high numbers of downloads. One particular article about a new material that can harvest power from the airwaves has been viewed nearly 17,000 times since it was archived in DukeSpace in 2013. And the readership wasn’t limited to the United States. Many of the downloads came from other countries, including India, China, Russia, and Japan.

Like that article, we wanted to make the Canine Cognition Center’s paper available openly. Though the News and Observer is not a Duke publication, we still saw the opportunity to leverage our open access policy to provide wider access to the article. When the authors received my request, they were—like most of the authors we contact—more than happy to provide a copy of the article. They were quite appreciative, in fact, of the offer to upload it on their behalf, as it would help increase the impact of the article’s findings. It is now available for download free of charge in Dukespace.

I hope that this case will raise awareness among news agencies of the limited access the public has to academic research, but also of ability to collaborate with authors and institutions to provide open copies of research articles. By contacting the researchers and asking them to post an open access version of their paper, you will not be imposing on them, but helping them increase the reach and impact of their scholarship. And in so doing, you’ll be affording more readers the opportunity to engage with current research.

For all the dog lovers out there, enjoy the article.

Ignore fair use at your peril!

One could be forgiven for thinking of the “Dancing Baby” case as a thing of the past.  It seems a long time ago that a district court affirmed that the music heard in the background (for only 29 seconds) of a video in which Stephanie Lenz’s baby is dancing — the music was Prince’s “Let’s Go Crazy” — was fair use, and told Universal Music that they were required to consider fair use before sending out take down notices under authority of the DMCA.  The video, after all, was posted in 2007.  Lenz sued Universal, arguing that, because they failed to consider even an obvious example of fair use before sending a take down notice for the video to YouTube, they had committed copyright misuse under section 512(f) of the Copyright Act by knowingly misrepresenting the legal situation in such a notice.

There was, in fact, an initial ruling that rejected some of Universal’s attempts to exonerate itself, back in 2010.  Then, in 2013, the judge rejected cross motions for summary judgment, essentially allowing the case to go forward on the misrepresentation claim.  Universal appealed this dismissal, and the Ninth Circuit Court of Appeals issued its decision today.  The Court of Appeals affirmed the lower court ruling, agreeing that the DMCA requires rights holders to consider fair use when sending take down notices and letting the suit go forward to determine if Universal was “willfully blind” to the clear fact that Ms. Lenz’s use was authorized by the law.

The thing about the decision that I really want to bring to readers’ attention is what it says about the nature of fair use.  About a year ago I wrote a blog post about the idea that fair use was an “affirmative defense.”  I pointed out that many positive rights, including free speech, would manifest themselves in court as affirmative defenses, meaning that they would be asserted by a defendant to answer a complaint, but that they were still positive rights — a space for freedom of action, not merely an excuse.  In its new ruling in Lenz, the Ninth Circuit makes this point abundantly clear, telling us that, “Fair use is not just excused by the law, it is wholly authorized by the law.” (p. 11 of the PDF)  In fact, the court is so clear and eloquent on this point that I want to quote a whole paragraph, which is found on page 13 of the PDF and which states the situation regarding fair use and affirmative defenses much better than I did:

Universal’s sole textual argument is that fair use is not “authorized by the law” because it is an affirmative defense that excuses otherwise infringing conduct. Universal’s interpretation is incorrect as it conflates two different concepts: an affirmative defense that is labeled as such due to the procedural posture of the case, and an affirmative defense that excuses impermissible conduct. Supreme Court precedent squarely supports the conclusion that fair use does not fall into the latter camp: “[A]nyone who . . . makes a fair use of the work is not an infringer of the copyright with respect to such use.” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 433 (1984).

Given that 17 U.S.C. § 107 expressly authorizes fair use, labeling it as an affirmative defense that excuses conduct is a misnomer.

So perhaps it is time to stop scaring people with this language about fair use as an affirmative defense.  As courts keep telling us, fair use is a positive right, an authorized and vital part of the copyright law in the U.S.  We cannot have one half of that law — exclusive rights for creators — without the other half, which is fair use and the other exceptions that protect productive uses.  Without the latter, copyright would be mere protectionism, and, in all likelihood, unconstitutional.

Defining derivatives

It is frequently interesting, and sometimes appalling, to see how a court that does not usually deal with copyright issues reacts when confronted with one.  Judge Amy Berman Jackson of the U.S. District Court for the District of Columbia is certainly not a complete novice regarding copyright, but the issue she confronted in Drauglis V. Kappa Map Group must certainly have been a new one for her.  It is a case involving the scope and interpretation of a Creative Commons license, and Judge Jackson deals quite well with it, in my opinion, in a decision issued last week.  But she is drawing lines in this case that I am quite sure will be discussed and readjusted over the next few years.

The facts in the case pose a situation that anyone familiar with CC licensing could probably have seen coming.  Art Drauglis, the plaintiff, took a quite lovely photograph  of a scene in rural Maryland that he calls “Swain’s Lock.”  There is no indication that Drauglis is a professional photographer, and he uploaded the image to a Flickr account he shares with his wife, using a CC Attribution Share Alike license.  Several years later he was upset to find that a publisher, Kappa Map Group, had used his photograph on the front cover of their Montgomery County Street Atlas, which, of course, they offered for sale.  Drauglis sued alleging copyright infringement based on the commercial use,  that the share alike provision of his license had been violated, and that he was not given appropriate attribution.  The court dismissed all of these claims on a motion of summary judgment, in the process making some important rulings about how we should understand Creative Commons licenses.

As an initial matter, Judge Jackson cites several authorities for the general proposition that a copyright holder who licenses his or her work can only sue for copyright infringement if the use is outside the scope of that license.  The issue of commercial reuse is an easy matter for the court, since the license Drauglis chose allows such commercial reuse.  He could have chosen an non-commercial (NC) term for this photo, but did not. So the fact that Kappa Maps took the photo and used it as the cover illustration for a commercial product does not, by itself, support a claim of copyright infringement.

The lesson from this part of the story is clear; rights holders need to think carefully about the terms of the licenses they imply.  Creative Commons offers a very flexible set of licenses, and those of us who use them can adjust to suit our particular needs.  But we need to think through what those needs are and select the appropriate terms.

If this was an easy call, three other points raised in this decision are more complicated, and offer some insights into how we might think about some of the aspects of Creative Commons licenses.

First, Drauglis asserted that the terms of his Share Alike provision had been violated because the Atlas was not offered for free and under similar conditions.  To decide this issue, Judge Jackson notes that a CC SA provision applies only to derivative works, and she then examines the definition of a derivative in section 101 of the copyright law.  Noting that a derivative is defined as a work that is “based upon” a preexisting work and that modifications appear to be required, the judge determines that simply reprinting the photo as the cover illustration of a map book does not create a derivative work.  Instead, she considers the atlas to be a compilation, which is treated quite differently in our copyright law.

In general I think this aspect of the case raises a distinction that many users of CC licenses and CC licensed material do not think about — the fact that a share alike provision applies only to derivative works, and not all uses would qualify as derivatives.  The reason I think this will be a matter for future debate is because the line is not very clear.  If I use a preexisting image as an illustration for a web page I create, at what point does that use result in a derivative work?  If the image is reproduced in its entirety and not changed, but merely surrounded by the other parts of the site, it sounds from this decision like the website might be a compilation of sorts, and the SA provision would not come into play.

One thing that is clear, and this is my second point, is that a Share Alike provision does not require that the second work be made available for free, as long as a derivative is not created. The compilation atlas containing Drauglis’ photo was sold, of course, and the court said that was OK because there was no non-commercial restriction on the license and the commercial work was not a derivative (which would activate the share alike restriction).  This was a important issue for me when I was deciding which CC license to use for my book that was published last year.  I considered a CC-BY-SA license in the mistaken belief that this would prevent commercial exploitation of the book without my explicit consent, something I wanted to prevent in order to protect the publisher.   My colleague Paolo Mangiafico corrected my thinking on this point, pointing out that someone could, conceivably, download the book and sell unmodified copies without violating the SA provision.  In this Paolo correctly anticipated the district court, and his argument convinced me to use an attribution/non-commercial license.  Thus non-commercial derivatives are allowed, which was important to me, but all commercial uses other than by the ACRL, who published the book, would require my additional permission.

The third aspect of the case that I think will generate ongoing discussion is the small controversy about appropriate attribution.  This is an issue that I hear about frequently from users of CC-licensed material, who want to do the right thing.  In the case against Kappa Map Group, Drauglis argued that the credit given for his photo, on the outside of the back cover of the Atlas, was inadequate and conflicted with the general statement claiming copyright in the work as a whole that was inside of the front cover.  To decide this issue the judge looked at how copyright notices for the individual maps were handled and what the general standards for appropriate attribution were, and concluded that Kappa had behaved correctly.  This aspect of the case offers a clear lesson for other users of CC licenses.  It is long established that works can have multiple copyright statements, and an assertion of copyright in an overall work does not negate attribution and assertion of rights for incorporated material as long as that attribution is given in a manner appropriate to the medium and the work.  So I think the messages for users of CC-licensed materials from this part of the decision is to relax, give attribution in the best way appropriate to the new work, and not worry too much about the fact that a new work may have multiple attributions and copyright statements.

There is additional analysis and discussion of this case over at TechDirt.  To me the bottom line is that Kappa Map Group behaved responsibly and Mr. Drauglis, suffering from licencor’s remorse, tried to use the courts to remedy his own mistaken selection of a license.  Nevertheless, whether this case is finished or not, I think we will hear more about what the boundaries of a derivative work really are.



Conspiracy theories, copyright term, and the TPP

I try to resist the urge to find conspiracies behind political developments; I tell myself that politicians and bureaucrats are just too unorganized and divided to really conspire about much of anything.  But sometimes that conviction gets tested.

Consider this: under our current, very confusing, set of rules for copyright term, at least some published works will begin entering the public domain in 2019.  No published works have been rising into the public domain for a long time in the U.S., but a work published in the U.S. in 1923, which had its term extended to 95 years from publication by the 1976 Copyright Act, would enter the public domain on Jan. 1, 2019, since 1923 + 95  equals 2018, and for administrate simplicity, works become PD on the first day of the year after their term expires (hence January 1 is celebrated as Public Domain Day).  Many works are protected for even longer, but this is the earliest we could hope to see published works entering the U.S. public domain.  And because this date is drawing near, it probably will not surprise many, including those who have always believed that protecting Mickey Mouse lies behind the U.S. term of protection, that Congress is once again beginning the process of formulating a new copyright act.  Do we really have any doubts that an extended term will be high on the wish list of the entertainment industry lobbyists?

But — and here is the conspiracy part — in case term extension can’t get through Congress, or cannot get through fast enough (the last copyright revision took over 20 years), there is an alternative approach to punitively protecting valuable icons from the mid-twentieth century — the Trans-Pacific Partnership agreement.

The TPP, as many readers will know, is a massive free trade agreement being negotiated in secret (more or less) between the U.S and eleven other countries.  Included in the TPP is a  chapter on intellectual property, and leaks of the text of that chapter have shown us that negotiators are considering binding the 12 parties to a copyright term that might significantly exceed, possibly even double, the minimum requirement under the Berne Convention of life of the author plus 50 years.  The longest term being proposed in the TPP, and the negotiators do not seem to have agreed on this point yet, is life plus 100 years.

Back in June, Congress renewed so-called fast track authority for the President over trade agreements, so no matter what is in the final version of the TPP, Congress will not get to amend the provisions; they will have to vote either yes or no on the text as it comes from the hands of the negotiators.  Obviously this gives a great deal more influence to the lobbyists, who must work only with the very friendly folks from the U.S Trade Representative’s office, not with the splintered and demanding Congress.  So perhaps this is a backdoor way to protect Mickey well into the 21st century.

We should note, however, that trade agreements are generally not “self-executing,” meaning that they do not become law automatically even once they are ratified.  Each nation must still make changes to their own national laws to bring them in line with the negotiated requirements.  So if a TPP with a copyright term requirement of life plus 100 years did emerge, Congress would still have to act to make that part of U.S. law.  But it would obviously be much easier to get Congress to do so if it were a requirement of a ratified trade agreement; that is great platform on which the lobbyists can stand.

Krista Cox from the Association of Research Libraries has done a wonderful analysis of the latest leaked IP chapter from the TPP, which is worth reading by anyone interested in these issues.  For me, there are three important points to take away from Krista’s analysis.  First, the current version of the IP chapter is an improvement in several ways over what we had seen before.  Second, there is still significant cause for concern in two areas — the proposal to make the issue of technological protection measures independent of the underlying copyright rules regarding a work and the issue discussed above — the potential for a much-extended copyright term to emerge from the negotiation.  And, finally, there is cause for real disappointment, if not much surprise, at the fact that the U.S. is one of only two countries that is apparently opposing a very innocuous provision that acknowledges the importance of the public domain.

With this final point we seem to come full circle.  The U.S., for which the public domain is a Constitutionally-required aspect of our copyright law, opposes an acknowledgement of the importance of that gesture to the public interest.  How can this be?  I am afraid it reminds us again that the folks responsible for copyright policy in our government do not much like the idea that copyright is a bargain with the public.  Rather than listening to the Constitution or to the 225 years of experience of copyright in this country, those officials turn their ears exclusively to the needs and concerns of the legacy entertainment and publishing industries. They seem to hear only the siren song of the lobbyist, and indeed, to move freely in and out of the ranks of those lobbyists.  Perhaps that is the conspiracy I would rather not believe in, a conspiracy to cut the public, and the public interest, out of their discussions about how copyright should work.

What happens when there is no publication agreement?

Scholarly communication discussions and debates usually focus, quite obviously, on the terms of publication agreements and the licenses those agreements often give back to authors to use their own work in limited and specific ways.  This is such a common situation that it is hard to realize that it is not universal for scholarly authors.  But recently it has come to my attention that some authors actually never sign any agreement at all with their publishers, and in one situation that I will explain in a moment, that led to a dispute with the publisher about whether or not the author could place her article in an institutional repository.  The issue, broadly speaking, is when an implied license can be formed and what such licenses might permit.

In a couple of previous posts, I have discussed the idea of implied licenses: licenses that are formed without an explicit signature, usually because someone takes an action in response to a contractual offer, and the action is clear enough to manifest acceptance of that offer.  One of the most common implied licenses that we encounter underlies the transaction every time we open a web page.  Our browsers make a copy of the web page code, of course, and that copy implicates copyright.  But our courts have held that when someone makes a web page accessible, they are offering an implied license that authorizes the copying necessary to view that webpage.  No need to contact the rights holder each time you want to view the page, and no cause of action for infringement based simply on the fact that someone viewed a page and therefore copied the code, temporarily, in their browser cache.

It is important to recognize that such licenses are quite limited.  An implied license can, at best, be relied upon when doing the obvious acts that must have been anticipated by the offeror, such as viewing a web page.  An implied license would not, for example, authorize copying images from that website into a presentation or brochure; that would be well beyond the scope of an license implied by merely making the site available.  For those sorts of activities, either permission (an explicit license) or an exception in the copyright law would be needed.

So how might implied licensing help us untangle the situation where an author has submitted her work to a journal, and the journal has published it without obtaining an explicit transfer of right or a license?  As I said, this is a reversal of the normal situation, and it caught me by surprise.  But I have heard of it now from three different authors, all publishing in small, specialized journals in the humanities or social sciences.

The way the question came to me most recently was from an author who had published in a small journal and later asked, because she had no documentation that answered the question, if she could deposit her article in an open repository.  The publisher told her that she could do so only after obtaining permission from the Copyright Clearance Center, and she came to me, through a colleague, asking how the publisher could insist on her getting permission if she had not signed a transfer document.  Could the publisher, she asked, claim that the transfer had taken place through some kind of implied contract?

The answer here is clearly no; the copyright law says explicitly, in section 204, that “A transfer of copyright ownership… is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”  So an implied transfer of rights is impossible; all that can be conveyed implicitly is a non-exclusive license (as in the web site example).

In the case of my author with no publication agreement, she remains the copyright holder, whatever the publisher may think.  At best, she has given the publisher a non-exclusive license, by implication from her act of submitting the article, to publish and distribute it in the journal. This is not really all that unusual. I have written opinion pieces for several newspapers in the past and never signed a copyright transfer; the pressure of daily publication apparently leads newspapers to rely on this kind of implied license quite frequently.  But it is unusual in academia, and requires some unpacking.  No transfer of copyright could have occurred by implication, so the rights remain with the author, who is free to do whatever she likes with the article and to authorize others to do things as well.  The publisher probably does have an implied license for publication, but that license is non-exclusive and quite limited.

As we worked through this situation, three unanswered questions occurred to me, and I will close by offering them for consideration:

  1. Are authors always correct when they tell us they did not sign a publication agreement?  Sometimes an agreement may have been forgotten amidst all the paperwork of academic life, or the agreement might have been online, a “click-through” contract at the point of submission.  We need to probe these possibilities when confronted with the claim that no agreement was signed, but those are very delicate conversations to have.
  2. Returning for a moment to the possibility of a click-through agreement that the author could have forgotten, we might also ask if this type of arrangement, increasingly common among academic publishers, are really valid to transfer copyright.  I am well aware that courts are becoming quite liberal in accepting online signatures and the like, but is there a limit?  Where there is a statute that explicitly requires a signed writing for a specified effect, as the Title 17 does for assignment of copyright, could an author challenge the sufficiency of a (non-negotiable) click-through agreement?  I expect that this issue will eventually come before a court (if any readers who know of such cases, please add the information in the comments), and I will be very interested in that discussion.
  3. Finally, what do we make of the journal’s claim, in the situation I was asked about, that the author must purchase permission to use her own work from the Copyright Clearance Center?  If there was no transfer of rights, the journal has no right to make such a demand and the CCC has no right to sell a license.  This is one more situation where it seems that the CCC is sometimes used to sell rights that are not actually held by the putative licensors, and it renews my concern about whether, and when, we actually are getting value for the money we spend on licensing.

What is “extended” about Extended Collective Licensing?

There has been a lot of discussion recently about the new proposals sent out for comment by the Copyright Office about orphan works and mass digitization, and numerous library groups are drafting responses to the Notices of Inquiry as I write.  Part of what the CO proposes in regard to mass digitization is an “extended collective licensing” scheme, which prompts the question in my title.

Before turning to that, however, let’s look a moment at the whole picture of what the CO is suggesting here.  The proposals address the overall problem of orphan works.  Unfortunately they do not do so by taking steps to reduce the number of orphan works or to make finding rights holders easier.  Instead, they create significant new obstacles for users who want to make use of an orphan work.  If you are looking to use just one or two works for which a rights holder cannot be determined, the CO wants you to go through a poorly-defined process of making a “reasonably diligent” search AND they will insist that you register your use.  If this seems backwards, that is because it is.  The goal here seems to be to discourage use, and hence new creation, by placing the onus on the user rather than the rights holder to make themselves known.  The excuse for such lousy policy would probably be the prohibition of formalities in the Berne Convention, but other countries have adopted voluntary registries for rights holders. Our Copyright Office, however, has been blinded by staring into the brilliance of Hollywood for so long, and can only see copyright on their terms.  Hence the necessity of burdening users who, we know, are significant threats to the “creativity” of the music and movie companies.

Alongside this proposal for how to deter use of individual orphan works is a grander scheme to deter mass digitization projects, called extended collective licensing.  So what does “extended” mean in this context?  A normal collective licensing scheme means that rights holders get together and create a collective organization to administer the rights that they own.  Such organizations are usually inefficient and sometimes prone to corruption, but there is nothing inherently wrong with the idea behind them.  They could, if done well, increase efficiency for both rights holders and users (that is, for new creators).  When a collective licensing scheme is extended, however, it means that licenses are being sold for rights not held by any of the members of the collective society.  That is the point about orphan works — a collective society representing the traditional content industries would sell licenses for the use of works for which they do not, by definition, hold the rights.  They would collect licensing fees “on behalf” of the unknown owners.  According to the proposed pilot, such a collecting agency would have an obligation to look for the correct rights holders in materials for which the collect fees, but there is no indication of how they would do this and no indication that a significant success rate could be achieved.  After a certain period of time, of course, the money collected would belong to the usual suspects; they would reap where they did not sow.

So what does “extended” really mean here?  If the situation were reversed, the content industries themselves would have a perfect word for it.  They would call it theft, or piracy.  Traditional rights holders love to use analogies with real property, claiming, ad nauseum, that downloading an unlicensed movie is equivalent to driving off in someone else’s car.  Now they are proposing, through the Copyright Office, to sell other peoples’ property for their own benefit.  Wouldn’t the “extended” analogy then be me trying to sell a car parked in front of my house, just because I do not know who the owner is?  It seems that in this context, “extended” just means parasitic — claiming a unjust and undeserved benefit from someone else’s labor.

Economists, of course, have less harsh, but no less pejorative, terms for this sort of arrangement.  One is “rent seeking,” which refers to efforts to gain a profit without making any reciprocal contribution to society by creating value.  When a company records and distributes a song or an album, and collects money for it, that is a normal economic exchange — value for value.  But when Warner Music Group continues to collect fees for the use of “Happy Birthday to You” long after any incentive for creativity is being fostered and, apparently, long after the rights have been abandoned, that is pure rent seeking — the pursuit of an undeserved profit without a normal exchange of value.  ECL is a similar exercise in rent-seeking, asking, that is, to benefit from the labors of unknown others without the obligation to provide value in exchange.

Another economic term is relevant here — deadweight loss.  Taxation is often held to be responsible for deadweight loss, when, because of taxes, it becomes too expensive to make or sell some good.  In that situation, the manufacture will stop making the good, and society will lose all the potential benefits — no goods and no tax revenue.  Deadweight loss.  In the case of extended collective licensing, the risk of deadweight loss, and the analogy to a tax, is the same.  ECL is a form of tax on using orphan works.  The revenue from that tax will have no benefit in providing an incentive for further creation, because it will not go to the creators who made the works in the first place.  But a requirement to pay such an unproductive tax will certainly deter many digitization projects that could make rare historic materials available for research, study and teaching.  Thus productivity is lost without the benefits of an economic incentive.  It is, truly, a lose-lose situation.

Can this gulf be bridged?

Litigants in court cases often disagree sharply about the law and its application to the facts, so it is probably not a surprise that the briefs filed in the District Court’s re-examination of its ruling in the Georgia State copyright infringement trial should see the issues in such starkly different terms.

If you read the publishers’ brief, the 11th Circuit decision that sent the case back to the District Court changed everything, and every one of those 70 excerpts found to be fair use at trial now must be labeled infringement.  This is absurd, of course, and I don’t actually believe that the publishers expect, or even hope, to win the point.  They want a new ruling that they can appeal.  In my opinion the publisher strategy has now shifted from an effort to “win” the case, as they understand what winning would mean, to a determination to keep it going, in order to profit from ongoing uncertainty in the academic community (and, possibly, to spend so much money that GSU is forced to give up).

On the other hand, the brief from Georgia State, filed last Friday, argues that all 70 of those challenged excerpts are still fair use.  It seems likely that the actual outcome will be somewhere in the middle, and, to be fair to them, GSU does recognize this, by making a concession the publishers never make.  For a number of excerpts where a digital license was shown to be available at the time of the trial, GSU argues that the available licenses were not “reasonable” because they force students to pay based on what they are getting access to, whether or not the specific excerpt is ever actually used.  This is an interesting argument, tracking a long-standing complaint in academic libraries.  If the court accepts it, it would dramatically restructure the licensing market.  But GSU also seems to recognize that this is a stretch, and ends several of its analyses of specific excerpts by saying that the specific use “should be found to be fair if the Court finds the licensing scheme unreasonable, and unfair if the Court finds the licensing scheme reasonable.”  So it seems GSU is prepared for what I believe is the most likely outcome of this reconsideration on remand — a split between fair uses and ones that are not fair that is different than the original finding — probably with some more instances of infringement — but still a “split decision.”

The availability of licenses is one of the interesting issues in these briefs.  The publisher plaintiffs now argue that licenses were available, back in 2009, for those excerpts where the judge said no licenses were “reasonably available.”  They are continuing to try to introduce new evidence to this effect; which is something GSU vigorously opposes.  But those of us who have been involved in e-reserves for a while remember clearly that such licenses were not available at all through the CCC from Cambridge University Press and only occasionally from Oxford.  So what is this new evidence (which the publishers’ brief says was not offered before because they were so surprised that it was being requested)?  It is an  affidavit from a VP at the CCC, and my best guess is that it would argue that licenses were “reasonably available” because it was possible, through the CCC system, to send a direct request to the publisher in those instances where standard licenses for digital excerpts were not offered.  GSU argues that the evidence gathering phase of the case is over, a ruling about licenses has been made and affirmed by the Court of Appeals, and the issue settled.  A lot will depend on how Judge Evans views this issue; so far she has ruled against admitting new evidence.

Another controversy, about which I wrote before, involves whose incentive is at stake.  The Court of Appeals wrote a lengthy discussion of the incentive for authors to write, and its importance for the fundamental purpose of copyright.  To this they appended an odd sentence that says they are “primarily concerned… with [publisher’s] incentive to publish.”  The publishers, of course, hang a lot of weigh on this phrase, and take it out of context to do so.  GSU, on their side, make a rather forced argument intended to limit the impact of the sentence.  Neither side can admit what I believe is the truth here: that that one sentence was inserted into an opinion where it does not fit because doing so was a condition of the dissenting judge for keeping his opinion as a “special concurrence” rather than the dissent it really was.  If I am right, this compromise served the publishers well, since they can now cite the phrase from the actual opinion of the Court; it is seldom useful to cite a dissent, after all.  So the publishers quote this phrase repeatedly and use it to argue that all of the factors really collapse into the fourth factor, and that any impact at all, no matter how small, on their markets or potential markets effectively eliminates fair use.  Authors, and the reasons that academic authors write books and articles, do not appear in the publishers’ analysis, as, indeed, they could not if the argument for publisher hegemony over scholarship is to be maintained.

GSU, as we have already seen, takes a more balanced approach.  For the first factor, they discount the publishers’ attempt to make “market substitution” a touchstone even at that point in the analysis, and focus instead on the 11th Circuit’s affirmation that non-profit educational use favors fair use even when transformation is not found.  The GSU brief fleshes this out nicely by discussing the purpose of copyright in relationship to scholarship and teaching.  On the second factor, GSU discusses author incentives directly, which in my opinion is the core of the second factor, even though courts seldom recognize this.  GSU also points out that the publishers have ignored the 11th Circuit’s instruction, both here and in the third factor analysis, to apply a case-by-case inquiry to those factors; instead, the publishers assert that since every book contains some authorial opinion, the second factor always disfavors fair use, and that no amount is small enough to overcome the possibility of “market substitution.”  For their part, GSU introduces, albeit briefly, a discussion of the content of each excerpt (they are often surveys or summaries of research) for the discussion of factor two, and of the reason the specific amount was assigned, in regard to factor three.

As I said, these differences in approach lead to wildly different conclusions.  Consider these paragraphs by which each side sums up its fair use analysis for each of the excerpts at issue:

The publishers end nearly every discussion of a specific passage with these words — “On remand, the Court should find no fair use as to this work because: (1) factor one favors fair use only slightly given the nontransformativeness of the use; (2) factor two favors Plaintiffs, given the evaluative/analytical nature of the material copied; (3) factor three favors Plaintiffs because even assuming narrow tailoring to Professor _____________’s pedagogical purpose, it is counterbalanced by the threat of market substitution, especially in light of the repeated use; and (4) factor four “strongly favors Plaintiffs,” and is entitled to “relatively great weight,” which tips the balance as to this work decidedly against fair use. ”

On the other side, GSU closes many discussions (although there is more diversity in their analysis and their summations than in the publishers’) this way — “Given the teaching purpose of the use, the nature of the work and the decidedly small amount used, the fact that this use did not supplant sales of the work, and the lack of digital licensing, the use of this narrowly tailored excerpt constituted fair use.”

These are starkly contrasting visions of what is happening with these excerpts and with electronic reserves, as practiced at a great many universities, as a whole.  It will be interesting, to say the least, to see how Judge Evans decides between such divergent views.

An international perspective on statutory damages

It has been a long time since we discussed statutory damages in this space.  Statutory damages are, of course, the high monetary damages that rights holders can elect when they sue someone for infringement.  Instead of having to prove the actual harm they suffered, statutory damages presume that harm and make proving it unnecessary.  In the U.S., statutory damages can be as high as $150,000 per infringing act (see 17 U.S. Code section 504(c)).  This is a number that the content industries love to throw around, especially as part of the highly-fictionalized warning you see at the beginning of DVDs.

Back in 2009, when the recording industry was actively suing its own customers for copyright infringement because of file-sharing, statutory damages were briefly a hot topic after juries returned million-dollar verdicts against ordinary individuals for downloading files the actual value of which was less than $100.  At the time I wrote about this issue, and also linked to another lawyer’s blog post which argued that these statutory damages were likely unconstitutional.  Since the RIAA has taken its campaign for ever-stronger copyright enforcement and ever-steeper penalties in a different direction, there has been less conversation about these disproportionate penalties.

This week, however, a development in Europe has reminded me that we should not let this issue drop.  Last week Poland’s Constitutional Court released a ruling which effectively declares Poland’s own take on statutory damages a violation of the Polish Constitution.  Polish law, it seems, enacts the same policy of allowing increased damages, well beyond ordinary judicial remedies, for copyright infringement with a provision that allows tripling of the “respective remuneration that would have been due at the time of claiming it in exchange for the rights holder’s consent for the use of the work” (see Article 79 of the English translation of Poland’s copyright law here, on the WIPO site).  What this essentially says is that triple the actual harm done (the amount the rights holder would have been due) can be awarded as a form of statutory damages.  And the Polish Constitutional Court has now decided that that provision must be changed because it violates a constitutional provision ensuring equality of protection for property ownership.  It seems they are concerned that the Polish copyright law gives a level of protection to copyrighted property that is much greater than other forms of property.

It is interesting to compare this situation to what we find in U.S. law.  We do not, of course, have the same provision about equal protection for copyright ownership in our Constitution.  The Constitutional case against statutory damages is made more on the grounds of due process, where the damages are so in excess of the harm that they are unreasonable, out of proportion, and unfair to defendants.  Still, there is intuitive sense to the idea that copyrighted works are protected far more comprehensively and stringently than most other kinds of property,  If this is true in Poland, and the Polish Court thinks it is, it is certainly even more the case in the U.S.

Consider two points.  First, in the Jamie Thomas file sharing case, the relationship between the actual harm — it would have cost about $24 for her to buy the songs at issue — and the 1.9 million dollar verdict against her, was much more disproportional than the triple damages that concerned the Polish court.  If a factor of 3 was too much for the Polish court to accept, a multiplier of nearly 800,000 ought to shock every U.S. court and every U.S. citizen.  Second, it is important to notice the different types of parties involved in the Polish case; it involved a cable TV network that apparently rebroadcast some films without a license.  So corporate entities were involved, and the Polish Court still felt that tripling the damages was unfair.  Yet in the U.S. we have allow grossly more disproportionate damages to be awarded against private citizens.

The content industry often looks to Europe and to other international laws and agreements they can use to convince U.S. lawmakers to increase protection for copyrighted works.  Here we have an international court pointing the other way; showing us in the U.S. how out of whack our copyright law has become in the area of statutory damages.  Something tells me this will not be an example cited by the MPAA or the U.S. Trade Representative.  But as Congress and the Copyright Office discusses reforming the copyright law, this finding from the Constitutional Court of Poland should shame us into looking at statutory damages here in America and recognizing that this is a problem in desperate need of remedy.


This is a solution?

Ever since it appeared, I knew I should write about this new report concerning  orphan works that the Copyright Office issued earlier this month.  But, to be honest, I have been on vacation, and have not had a chance to read the full report yet, only excerpts.  Fortunately, on Monday Mike Masnick from Techdirt posted about the report and absolutely nailed it.  So I have little to add, and simply want to direct readers to Mike’s post.

As Mike observes, the new CO report would mostly make a serious problem worse, in that it would make the use of orphan works more difficult rather than less.  The idea of creating a registry for users to register their proposed use is positively Kafkaesque; the real need is to be able to better identify rights holders, not users.  So why not provide incentives for rights holders to register, rather than creating a new registry that will probably not be used, since it is so counter-intuitive and will be unknown to the vast majority of putative users?

The Techdirt post correctly notes that the problem of orphan works increased exponentially after the U.S. made two changes in its law — the elimination of formalities and the extension of the copyright term of protect to life plus 70 years.  These changes were made because the U.S. joined the Berne Convention and other international treaties on copyright in the 1980s, so reversing them would be very difficult.  Still, the problem is world-wide, so maybe someday sanity will prevail at the WIPO and these issues will be addressed directly, instead of taking a kind of backwards approach that tries to solve a problem without addressing its root causes, which has the result of making things worse.  See the suggestions I made several years ago for solving the “Berne Problem” here and here.

The most troubling aspect of the Copyright Office’s new report is the disdain with which it treats fair use.  The U.S. is actually in a better position as far as uses of orphan works are concerned than most nations  because our judges were wise enough to create this doctrine over 150 years ago.  But today’s Copyright Office thinks it knows better; it believes that fair use is “of limited utility” in solving the orphan works problem.  Instead, we need more bureaucratic apparatus.  Worse, to get to this position, the CO presents the HathiTrust case, with its strong affirmation of fair use, as being about “the digitization of millions of non-orphaned works” (p.42).  This is ridiculous, of course; the HathiTrust corpus contains both orphan works and works for which rights holders can be identified.  The CO seems to take the position that since specific uses of orphan works were not ultimately adjudicated in the HathiTrust case, that case is not relevant to the application of fair use to the orphan works problem. So although the report does recommend that any legislative “solution” to the orphan works problem should preserve the users’ ability to rely on fair use, the CO does not seem to feel that fair use is very helpful.  But that simply reflects the prejudice that the CO has about fair use, a prejudice that makes them an unreliable guide to copyright law in the U.S.