What wasn’t decided

Sometimes what a court does not decide can be more important than the actual ruling that the court makes.  One newsworthy example of this possibility is the extraordinary step taken by the judge in the file-sharing case of Joel Tenenbaum.  As this opinion piece from Ars Technica reports, Judge Nancy Gertner has finalized the decision holding Mr. Tenenbaum liable for copyright infringement, but has also detailed how she might have ruled if a limited fair use defense had been raised.  To say that her 35-page memo is extraordinary is an understatement; in it she suggests that the defense team’s error in raising a sweeping fair use claim rather than one narrowly tailored to specific circumstances was costly indeed.

Judge Gertner is no fan of copyright laws that hold people liable for accidental infringement, which happens fairly often with file-sharing systems (although not, apparently, in the Tenenbaum case) or hold teenagers liable for hundreds of thousands of dollars over a handful of songs.  In her memo she invites Congress to reconsider some of the draconian provisions of our current copyright statute and also suggests that she might have found some file-sharing, in select circumstances, to be fair use.  But that was not the issue put before her or decided in the case.

An even more significant decision for higher education — or really a lack of a decision — is found in a case from late October in the Southern District of New York involving online solution manuals for copyrighted textbooks.  In Pearson Education & Cengage Learning v. Nugroho Judge Deborah Batts (who I criticized earlier in the year over her Salinger ruling) found copyright infringement in the defendant’s online sale of solution manuals for plaintiffs’ textbooks.  Apparently the solution manuals were identical to ones sold by the textbook publishers themselves, although Mr. Nugroho claims he did not realize this, so the decisions seems to me to be correct for this situation.  There is a nice description of the case here. But, in keeping with my theme, let’s look at what was not decided.

First, this ruling involved the recognition that the solution manuals were derivative works of the textbooks.  This finding was necessary because the copyright in the solution manuals had never been registered, so the court was barred from considing them as independently protected works. The opinion focus on the fact that the solution manuals “have no independent viability” from the textbooks (which were registered), and are therefore considered infringing derivative works.  What is not clear is where the line is after which something is no longer a derivative works, and the “independent viability” test does not seem to be a precise enough answer.  If I take a single problem from a textbook and work out the solution, but do not copy any original expression, that solution may not have independent viability, but I doubt that by itself it is a derivative work.  Indeed, this kind of thing happens all the time when instructors or their teaching assistants provide sample solutions through various course websites and other tools.  Surely not all of these are infringing derivative works.  Let me repeat that I have no quarrel with the decision as it stands, but wonder where its boundaries are, especially in regard to common educational practices.

Another issue that was not decided in this case is when the kind of derivative solutions that I have just described might be fair use.  Fair use was apparently not raised, and it certainly is not considered in the ruling.  Given the fact that entire solution manuals identical to those produced by the companies were being sold without authorization, I doubt a fair use defense would have been appropriate.  But there are certainly situations where the creation of answer sets for problems posed in a textbook could be fair use, perhaps where a small amount of protected expression is copied or the problem represents largely unprotected facts, and the solution sets are available without charge to a small group of students.  Whether this is allowable or not is a fairly common question, especially from teaching assistants, and the important point from the Pearson case is to note that this issue has not been decided.