All posts by Kevin Smith, J.D.

Steal this book?

Last week I was researching a copyright and fair use issue for a faculty member, and needed to see a copy of a book held by Duke’s Rubenstein Rare Book and Manuscript Library.  As I explained the issue and what material I wanted to use to the Rubenstein staff, a researcher sitting nearby listened intently. As soon as we finished, she told me that she was the President of the Authors Guild and that they were suing Google over fair use.  She began to explain to me why Google was wrong, but that the author for whom I was doing the research should be allowed to rely on fair use.  When I introduced myself as a lawyer and copyright specialist for the Libraries, the conversation came to a polite but stilted conclusion.

This week, however, I got a chance to see more fully what that researcher, whose name is Roxana Robinson and who was giving a lecture that afternoon in the Library, has to say about Google, in a column she wrote for the Wall Street Journal called “How Google Stole the Work of Millions of Authors” (behind a paywall).  Ms. Robinson, a novelist and biographer, unfortunately proves what I suspected at the time of our encounter, that her perspective on fair use is based on a preconceived idea about who are good users entitled to rely on fair use (authors) and who are bad, unworthy users (Google), rather than on an understanding of the careful legal analysis of specific uses that actually underlies these decisions.

The WSJ column employs some interesting rhetoric, starting with its title, which is clearly intended to provoke a visceral response.  Many people have noted that the language of theft and stealing is inappropriate when the issue is copyright infringement.  This point is made in great detail in William Patry’s book “Moral Panics and the Copyright Wars.”  As is true for most crimes, the definition of theft includes an intention, a mental state or “mens rea” that is a required element of that crime.  For theft this intention is “to deprive the true owner of [the personal property]” (definition from Black’s Law Dictionary, Seventh edition).  Because of the nature of intellectual property, copyright infringement never meets this definition; that is why the law has a different word — infringement — for the unauthorized taking of someone else’s IP.

So the headline of Ms. Robinson’s column is legally incorrect and intended, I think, to stir up her base rather than to make an argument that could sway the Supreme Court (for more on this point, see the rebuttal published in Fortune “Why the Authors Guild is Still Wrong about Google’s Book Scanning“).

The column also makes a couple of sardonic remarks about quotes that can be found using Google Books.  Here the argument breaks down pretty badly, because both of the quotes Ms. Robinson chooses, one from Shakespeare and one from Emerson, are in the public domain.  Her effort to be ironic seriously backfires here, because her own column is actually proving the utility of the Google Books database in a way that emphasizes its lawful use of PD texts.  Rhetoric has truly overcome logic.

It is worthwhile, nevertheless, to think a minute about the logic structure of the argument that what Google has done is infringement.  Ms. Robinson makes the point that there are many books that were scanned by Google, that Google is a profitable company, and that no authorization for the scanning was asked for or given by the authors of the works that were scanned.  All of this is true, of course, but it does not amount to an argument that Google has infringed any copyrights.  What is missing, at least as I see it, is any notice that the authors have been harmed.  The rhetoric of the column clearly tells us that the Authors Guild, and at least some individual authors who are involved in the lawsuit, are angry.  But it does not explain a fundamental element of any tort action — harm.

The two courts that have considered this case both found that there was no harm done here — no negative impact on the market for or value of the works in question, to use the language that is part of a fair use analysis.  Users cannot obtain any significant portions of books that are limited to snippet views; the AG’s own experts were unable to retrieve as much as 16% of any work using word searches and snippet results, and even that amount of text was randomized in a way that made reading a coherent piece of the work impossible.  The is just no evidence that any sales are lost due to this finding aid, and it is quite possible that sales will be gained.

There is, of course, the question of a licensing market.  But that is almost a silly question.  A market for licensing scans to create an index has never existed, and it is impossible to imagine that any of the authors had such an idea in mind when they wrote their works.  As Judge Leval said in his decision for the Second Circuit Court of Appeals, this is not really even a use of the work, it is a use of information about the work, for which a secondary licensing market simply is not appropriate.  Creating such a market would be revolutionary, and it would do much more harm to the overall environment for books and reading than anything Google could think up.  What the Authors Guild seems to be saying here is that Google should pay us for something we never thought we would or should get paid for, simply because they have a lot of money.  Perhaps when we recognize how weak that argument actually is it becomes understandable that Ms. Robinson relied on overheated rhetoric rather than legal or logical arguments.  But if the purpose of her essay is to convince people that the Supreme Court needs to take the case to right a serious wrong, it falls far short, and is unlikely to convince the nine citizens whose opinion on that issue matters the most.

Copyright MOOCs, new and refreshed

When my colleagues Anne Gilliland and Lisa Macklin and I released our first Coursera MOOC about copyright, called Copyright for Educators and Librarians, we were very pleased with the reaction.  Although our enrollment for that first MOOC was, at just over 10,000 participants, rather low by MOOC standards, we had a higher than normal percentage of completions, and the feedback we got from colleagues was quite positive.

That course ran in the summer of 2014.  In July of 2015, we were able to release a new version of the same course in an on-demand format, meaning that participants are able to start the course whenever they wish and can proceed at their own pace without a proscribed ending point.

The move to on-demand is important because it brought us a bit closer to our overall goal, which has been to provide a form of copyright education that is accessible in the several sense of that word to all of our colleagues in education, especially.  The course is still free, although there is a small fee if the participants want to receive a “verified certificate” of completion.  We began this project aware that the Center for Intellectual Property at UMUC had recently closed, so the education community had lost access to their series of course offering on copyright that carried continuing education credit.  Our hope was to provide an opportunity to learn about copyright that was free to all, but also could be used, through the verified certificates, by those colleagues who want to learn about the subject AND get some form of (less expensive) credit for this professional development activity.

Now we have taken another big step toward that goal, with the release today of our second MOOC, on Copyright for Multimedia.  Like the first course, this MOOC is on-demand, free to take, and relatively short – four substantive modules and an introduction.  In this second course, the modules focus on four different media – data, images, music and film.  It grew out of our awareness how often the questions brought to us focus on different media.  Many of our colleagues seem confused about how copyright “rules” from the print world, apply in an environment rich with diverse forms of expression and communication.  This confusion is understandable, since copyright was born with print technology and continues to adapt only uncomfortably to these “new” media.

When we are asked about what “copyright for music,” or “copyright for film,” looks like, we try to emphasis that the one copyright law in the U.S. is intended to apply without regard to medium of expression.  Nevertheless, it is perfectly true that some provisions of the law are media-specific.  More significantly, the circumstances in which different media are used are often quite different from the more familiar facts surrounding the use and distribution of print.  There is an lawyer’s maxim that says, “change the facts and you change the outcome,” and that is never more true that when we are talking about different media.

Our new MOOC tries to address these differences, and also to further develop the framework for analyzing a copyright issue that we built in the first course.  Now that both MOOCs are available on the Coursera platform, we hope that they will be a continuing resource to improve copyright understanding for our colleagues.

I want to add a couple of personal notes to this announcement of the two-part series of MOOCs on copyright.

First, I want to say what a wonderful experience it has been to work with Lisa and Anne, who are as smart and creative about teaching as they are about copyright, as well as with the online course team at Duke.  I want especially to note my sense of awe at the creative, complex and realistic scenarios that Anne Gilliland can think up to tease out the implications of copyright in different situations; I hope our participants find them as thought-provoking and amusing as I do.

Second, because of the announcement issued today about my new position as Dean of Libraries at the University of Kansas, and thus my departure from Duke, it seems unlikely that I will participate in any more MOOCs in this series.  Our original plan was for three courses, but the two we now have stand alone and, we hope, also work together as a series.  It is now an open question whether there will be a third MOOC in this series, but the process of creating these two has been delightful, and the product, I profoundly hope, useful to our colleagues and to many others.

Rebels in the Campus Bookstore

A guest post by Will Cross, Director of Copyright and Digital Scholarship at North Carolina State University

As the semester winds down most normal people are sweating through final projects, scheduling visits with family and friends, or looking forward to a well-deserved holiday break by the fire (or at least the warming glow of the new Star Wars movie).  I can’t stop thinking about textbooks.

Several recent events have kept this topic on my mind.  First, Kevin and I are preparing to teach a class in the spring and we’re currently putting the finishing touches on our assigned readings.  Sitting at the breakfast table working through the syllabus, I was struck by a seemingly-unrelated comment from my wife, Kimberly, who is finishing her first semester in a doctoral program.  Making her own plans for the spring, she noted “I need to decide if I’m going to renew my statistics textbook.”

Readers who have been out of school for a few years might be surprised that many students like Kimberly rent, rather than purchase, their more expensive textbooks.  If textbook rental companies like Chegg and College Book Renter are not familiar names, you may also be surprised by how quickly textbook prices have spiraled out of control in the past decade.  Increasing at nearly triple the rate of inflation, textbook costs have outpaced rises in health care and housing prices, leaving students with an expected bill of more than $1,200 a year.

Faced with these unsustainable costs, students like Kimberly find themselves in an arms race, seeking alternative channels to acquire textbooks while publishers work to plug leaks in their captive marketplace.  Indeed, one of the largest copyright cases decided by the Supreme Court in recent years resulted from publishers’ attempt to create a “super-property” right in order to quash the sale of less expensive international textbooks.  The following year a casebook company attempted something similar using license provisions to strip property rights from students who “purchased” (ironically) their property law textbook.

While prices have gone up, student spending has not always followed suit, with many students renting, borrowing, or pirating textbooks.  Many more simply choose their courses and majors based on the costs of textbooks or delay their purchases to determine the extent to which a title is used in class, setting them back days or weeks in assigned readings.  Of greatest concern, a recent PIRG survey revealed that more than 65% of students simply muddle through with no textbook, even though the majority recognized that this presented a “significant concern” for their ability to successfully complete the course.  As a result, more than 10% of students fail a course each year because they simply cannot afford the book.

Textbook costs have priced many students out of equal participation in higher education and colleges and universities should regard this as social justice issue that threatens students’ academic progress.  Students have written powerfully about these issues on social media, using hashtags like #textbookbroke to document the burdens

created by high prices.  For example, tweets from Kansas’ #KUopentextbook project have documented the harm done by students’ lost opportunities to travel to conferences, take unpaid internships, and compete on equal footing in the classroom.  As one student put it, “my wage shouldn’t determine my GPA.”

Closed, commercial textbooks also do significant harm to instructional design and academic freedom, forcing instructors to use one-size-fits-all books rather than diverse, tailored course materials.  This issue received national attention in November when an instructor was formally reprimanded for refusing to assign a $180 algebra book written by the chair and vice chair of his department.  As SPARC’s Nicole Allen notes, the well-intentioned practice of assigning a single book for multiple sections was designed to support a strong local used-book market but in practice it often entrenches a system of static commercial works.  It can also homogenize educational materials, limiting them to publisher-approved narratives that inhibit an instructor’s ability to bring her own voice and experience into the classroom.  Indeed, many publishers include value-added materials like test banks and pre-made assignments designed to create textbooks that are fully “teacher-proof.”

Students are often caught in the crossfire of a broken textbook market where books are sold by a small group of for-profit publishers who control 80% of the market, and purchasing decisions are made by faculty instructors but students are asked to pick up the bill.  This situation – where for-profit publishers leverage faculty incentives to exploit a captive academic market – should sound familiar to anyone working to bring open access to scholarly publishing.  The scale, however, is quite different: the textbook market exceeds the scholarly journal market by roughly $4 billion each year.

As they have with open access, academic stakeholders have begun to rebel, designing open materials that are not just cheaper than closed works but are positively better.  These open educational resources (OER’s) may be peer-reviewed Creative Commons-licensed textbooks like those found in Rice University’s OpenStax program or the University of Minnesota-led Open Textbook Network. They also encompass modular learning objects like those found in the MERLOT repository or even full courses like those offered through MIT’s OpenCourseWareCommunity colleges and system-wide efforts like Affordable Learning Georgia have been particularly effective in this space, with programs like Tidewater’s “Z-Degree” that completely remove student textbook costs from the equation.

In the past several years, academic libraries have joined the fray, raising awareness, offering grants, and collaborating with faculty authors to create a diverse body of open educational resources.  In the NCSU Libraries, we have followed the outstanding examples of institutions like Temple and UMass-Amherst by offering grants for faculty members to replace closed, commercial works with open, pedagogically-transformative OERs.  These projects create massive efficiencies for libraries – spending a few thousand dollars to save students millions – and a growing body of empirical data indicates that student learning and retention are improved by open materials.

It’s no surprise that an open textbook would be more effective than one that a third of students can’t afford to buy.  The greatest potential for OERs, however, comes from the way they empower instructors and engage with library expertise.  The “teacher proof” books offered today frequently reduce instructors to hired hands, reciting homogenized narratives approved by for-profit publishers.  In contrast, as one recent study concluded, an OER “puts ownership of curriculum directly back into the hands of teachers, both encouraging them to reflect on how the materials might be redesigned and improved and empowering them to make these improvements directly.”  Combined with support from libraries for instructional design, copyright and licensing, and digital competencies, OERs have the potential to transform pedagogy at the deepest levels.

For today’s students, textbook prices mean more than just a few extra days of subsisting on ramen noodles.  Too often, students have to choose between adding another thousand dollars to an already historical debt load or trying to get by without essential resources and closed, and commercial textbooks often leave faculty instructors with no choice at all.   These, to borrow a phrase, aren’t the books we’re looking for.

Swatting three bugs at once

In was warm here in North Carolina over the Thanksgiving holiday, and, like many of our neighbors, we left our doors open during the day to enjoy the pleasant breeze.  The downside, however, was that while watching a football game on Sunday, I found myself swatting ineffectively at several small insects that found their way into the house in spite of our screens.  I was reminded of that experience today (the weather is sadly much cooler) when a question about ILL and DVDs was forwarded to me.  It seemed there were three different misapprehensions at work in the question, so I want to take this opportunity to swat these three “bugs” in one blog post (but I am absolutely am not comparing any of the folks who posed this question to insects; it is just that the misunderstandings of copyright law represented therein are “pesky”).  In addition to debunking these three worries, I also want to acknowledge two caveats that arose as I discussed this situation with some colleagues.

So here is the problem.  A librarian is searching for a DVD of a relatively obscure foreign-language film from 1938, and concludes that she cannot obtain a copy through ILL because the professor who is requesting the film plans to show it in her classroom.  The request went to a librarian list as a plea for help in finding a copy of the film to purchase because, the librarian had concluded, ILL was not an option.

As I say, I think there are three potential misapprehensions behind this conclusion that sometimes cause librarians to restrict their options for obtaining material out of a misplaced fear of copyright problems.

The first possible reason someone might be hesitant in this situation is the notion that audio/visual works cannot be loaned through ILL.  It is easy to see the source of this mistake, since various A/V materials are explicitly excluded from the two provisions in section 108 of the copyright law that authorize copying for ILL (subsections d and e).  But we must remember that those two subsections of section 108 are only about making copies for ILL; they have no impact on the issue of loaning originals.  So where an original of a DVD (that is, a lawfully-made copy that is made with the direct authorization of the rights holder) is requested, ILL is perfectly OK.

Now here is one of the caveats.  Many institutions decide not to loan audio/visual works because of work flow and availability issues.  They may fear damage that can occur during mailing.  Those are perfectly fine reasons to decline to loan a DVD, and the holding library is entitle to make such a decision.  Just because the law allows a practice does not mean any particular person or entity is required to do it.  But it is important to recognize that a decision not to loan A/V works through ILL is just that, a decision.  It is not based on a legal prohibition.

The next potential misconception here is that the doctrine of first sale, which is what really does underlie all lending of originals from a U.S. library, somehow does not apply to the particular DVD in question.  But first sale, found in section 109 of the copyright act, does allow the lending of any type of original of a copyright-protected work (with a narrow exception for computer software that is not relevant to this discussion).  Whether it is a copy of a book, a filmstrip, a music CD, or a DVD, first sale — which is an exception to the exclusive right over distribution — allows lending of the lawfully made original.  It does not matter if that loan is accomplished through ILL, or library reserve, or simply between two friends.  Nor does it matter, after the Supreme Court ruling in Kirtsaeng v. John Wiley, where the lawfully-made original came from; as long as it was original made with the consent of the rights holder (i.e. not a bootlegged copy) it can be loaned.

Here is a good place for my second caveat.  These rules from the copyright act about ILL, lending of originals and, in a moment, classroom showings, are default rules.  They are in place unless they have been changed by an agreement between individual parties.  Where there is such an agreement, it is the agreement that provides the rules and restrictions for those parties, while the default rules of the copyright law apply to everyone else and in regard to any other topic or material.  So if the specific DVD was obtained under a license that prohibited lending or ruled out classroom showings, that license should be obeyed.  Likewise if the film is part of a licensed database.  But most individual DVDs do not come with their own license.  Instead, they are purchased under the default rules for distribution, performance, and lending that I am describing here.

Which brings me to the last potential misunderstanding, that a borrowed DVD cannot be used for a classroom showing.  Classroom showing is allowed, as most academics know, as an exception to the exclusive right over public performance.  Actually, the exception is somewhat broader than in-class performance; it allows a public performance or display of a copyrighted work in any “face-to-face teach activity” that takes place in “a classroom or similar place devoted to instruction.”  So it is easy to imagine a film showing that would qualify, as part of an in-person teaching activity, even when not directly connected to a scheduled class or a regular course.  More importantly, for our issue, the copy used for such a showing need only be “lawfully-made,” the same requirement as for the application of first sale, described above.  There is nothing to prevent a classroom showing of a DVD that is borrowed from the library, from Redbox, from your neighbor, or through ILL.

This problem has given us a chance to examine three potential misunderstandings that can sometimes cause librarians to restrict their own activities unnecessarily, out of fear of copyright issues.  It is easy to see how such misconceptions arise, since the law is complicated on these points.  But, properly understood, the law often gives more leeway to libraries than we often realize.  It is nice to have the chance to dispel these myths.  Now if I could just get those bugs out of the house!

Google Books, Fair Use, and the Public Good

Note — thanks to several readers who pointed out that I had carelessly misspelled Judge Leval’s name in my original posting.  That error has now been corrected.

On Friday the Second Circuit Court of Appeals issued its ruling in the appeal of the Authors Guild lawsuit against Google over the Google book search project.  The decision was a complete vindication of the District Court’s  dismissal of the case, affirming fair use and rejecting all of the counterarguments offered by the Authors Guild.

As it happens, I was traveling when the decision came down, confirming a troubling tendency of the federal courts to issue important copyright opinions when I am out-of-pocket.  (My wife says that it is not about me, but what sense does that make?)  In any case, that slight delay allows me to benefit richly from the analyses posted by some very smart colleagues.  Here are several great places to read about the decision:

From Brandon Butler of American University.

From Corynne McSherry of the Electronic Freedom Foundation

From Krista Cox of the Association of Research Libraries

From Carrie Russell at the American Library Association

I want to add, or really just pull out from these previous posts, three points that I think are especially important.

First, Judge Pierre Leval, who wrote the opinion, does a nice job of drawing a line from the idea of transformative uses to the public purpose of copyright law.  This is hardly surprising, since it was Judge Leval who wrote the 1990 article that coined the term transformative use and had such an influence on the Supreme Court in its 1994 decision in Campbell v. Acuff-Rose Music.  In this ruling, Judge Leval reminds us quite forcibly that the primary beneficiary intended by copyright law is the public, through “access to knowledge” (p.13) and “expand[ed] public learning” (p. 15).  Economic benefits for authors are instrumental, not the ultimate goal of the copyright monopoly.  Then Judge Leval explains how this analysis of transformation serves those goals, clarifying why fair use is an essential part of copyright’s fundamental purpose.  He tells us that transformation is an answer to the question of how a borrowing from a copyrighted work can be justified.  The court, on behalf of a rights holder, asks a user “why did you do this?”  When the answer to that question is “because I wanted to make a new contribution to knowledge,” that is a transformative purpose.  And, by definition, it is a purpose that benefits the public, which justifies whatever minor loss a rights holder might suffer from the use.  The second step in Judge Leval’s  analysis, asking if the new use is a market substitute for the original, ensures that that loss is not so great as to outweigh the benefit. Thus we have a coherent analysis that recognizes the public purpose of copyright and still respects it chosen method for accomplishing that purpose.

Another important thing we can learn from Judge Leval’s opinion is about the difference between a transformative use and a derivative work.  The Author’s Guild (really some individual authors set up as plaintiffs because the AG has been found to lack standing to sue in this case) argues that allowing the Google Books’ search function usurps a right held by those authors to license indexing of their works.  This is ridiculous on its face, of course — imagine the effect such a right would have on libraries — but the judge does a nice job of explaining why it is so wrong.  The decisions rest heavily on the idea/expression dichotomy that is fundamental in copyright, and stresses that what is presented in the Google Books “snippet view” is more information about books (facts) rather than expressive content from those books.  A derivative work, Judge Leval suggests, is one that represents protected aspects — the expressive content — of the original in an altered form (such as a translation or a movie script).  A transformative use, on the other hand, uses information about the works, as in an index, or uses their content for a different expressive purpose, as in parody or scholarly comment.  This is a difficult distinction to make, as all of us who work in copyright know all too well, and it remains to be seen if the approach outlined above will hold up or prove useful in the full range of situations.  But it is a pointer toward a coherent way to understand a difficult part of the copyright balance.

As an aside, while reading the opinion in this case I was struck by how well the four fair use factors were handled, in a way that showed that the test used by Judge Leval respected all of the factors while essentially applying two basic questions — is the use transformative and does the new work create a market substitute for the original.  In fact, I can suggest three specific passages that are especially exciting, I think, for the application of fair use and the issue of transformation — footnote 21 and accompanying text, which helpfully clarifies the relationship of the second fair use factor to the analysis of transformation; the full paragraph on page 33, that considers the use and misuse of the third factor; and the careful distinction of Google snippets from a case involving telephone ringtones that is found on pages 40-41.  These are discussions that I think will have a significant impact on our ongoing consideration of fair use.

Finally, we should note that the Authors Guild has already indicated its intention to ask the Supreme Court to review this decision.  This is a very bad idea, indicating that the AG simply does not know when to cut its losses and stop wasting the money provided by its members.  The real point, however, is that the Supreme Court is not likely to take the case anyway.  This is not a situation where a fundamental Constitutional issues is involved, as it was in the Campbell case (fair use as a protection for free expression) nor one where a fundamental point about our obligations in the international arena was at issue, as it was in the Kirtsaeng case about the application of first sale to works of foreign manufacture.  In short, this is just a case about a greedy plaintiff who wants to be given an even bigger slice of the copyright pie, which the courts have determined repeatedly it does not deserve.  This is not the sort of issue that attracts the very limited attention of the Supreme Court.  In fact, reading the Court of Appeals’ ruling leaves one with a sense that many of the AG’s arguments were rather silly, and there is no reason to believe they would be less silly when presented to the Supreme Court in a petition for certiorari.

There are some who have argued that there is a split among the Circuit Courts of Appeal over transformative use, which is also a situation that can lead to Supreme Court review.  But that split has always been predicated on the idea that other courts, especially the Ninth Circuit, have carried the idea of transformation too far and departed from the ambit of the original doctrine.  The fact that it is Judge Leval, the author of that approach to fair use, who wrote this opinion, effectively undermines that claim.  In short, this decision closes a circle that outlines a capacious and flexible approach to fair use.  For getting us to this point, I suppose we should thank the Authors Guild for the unintentional support they have provided for a balanced copyright law in the digital age.

Happy Birthday and extended collective licensing

I had not intended to write about the case decided last month involving the claim by Warner/Chappell Music that they owned the copyright in the song “Happy Birthday To You.”  I figured that it would be so widely covered that I would have little to contribute.  Obviously I have changed my mind, and it is partly because of the nature of the coverage I have seen.

Consider this story from Reuters, which says that the judge in the case ruled that Warner/Chappell Music does not hold a valid copyright in the song, and that that ruling puts “Happy Birthday To You” in the public domain.  Unfortunately, this is only half right.  The decision is complicated and careful, making a number of important distinctions, as legal arguments must always do.  The court held, in fact, that the tune to “Happy Birthday,” originally written for a song called “Good Morning To You,” is in the public domain.  But about the lyrics to “Happy Birthday,” the court remained uncertain. Judge George King held that there is no evidence that Warner/Chappell Music ever received a valid transfer of rights in the lyric, so they are not the legitimate copyright holder, but he lacked sufficient evidence to determine the status of the lyrics with certainty.  The decision lists several possible scenarios, including that the lyric is itself in the public domain, but it also acknowledges the possibility that the song is owned by someone who is either unknown or not able to be found.

In short, the lyric to “Happy Birthday to You” was found to be an orphan work, although the court didn’t put it that way.  This is a scenario familiar to most folks in the library community, where we can gather some evidence about ownership of a work, but cannot arrive at a definitive conclusion about the existence of rights, or the ownership of them if they do exist.  There is a nice discussion here of the problems involved in proving that one owns an older copyright, as in this case, by Laura Quilter from U. Mass Amherst.  But what really interests me about the situation uncovered in this decision is how it reflects on the proposals being floated by the Copyright Office to address the orphan work problem through extended collective licensing.

The Copyright Office scheme would require users to pay a set licensing fee to a collective rights management organization (CRO) if they wanted to use a putative orphan work.  The CRO would then be responsible to make reasonably diligent efforts to find a rights holder.  If a rights holder was found, licensing revenue would be disbursed by the CRO.  If an owner could not be found, the money would eventually be dedicated to some fund for the benefit of creative artists and, of course, to the maintenance of the CRO’s own bureaucracy.

Two things we can be sure of about this proposal.  One is that it would create a bureaucracy which would inevitable take its own maintenance and support as a top priority.  It is well-documented that such agencies have high overhead and pay out relatively low amounts to artists, even in situations where those artists are known or easy to identify.  The second thing I think we can be sure of is that this scheme would reduce the role of fair use in mass digitization projects.  Even if the shame included a so-called savings clause for fair use, the existence of a licensing scheme, even when the purported licensor does not actually hold the rights, would chill efforts to apply fair use to many projects.

With that background in mind, what does the “Happy Birthday” decision add to our think about this ECL proposal?

First, let’s think about the situation that lead to the case, where Warner/Chappell music was collecting licensing fees without any valid claim of ownership in the “Happy Birthday” song.  I am not asserting that Warner/Chappell Music was necessarily acting in bad faith; they had some reasons to believe they were valid rights holders, but those were dismantled in the court’s opinion.  Nevertheless, for many years users paid fees that we now believe were unnecessary, and fair use was badly curtailed, especially in things like documentary films, by litigation threats.  This situation would be replicated under the Copyright Office’s ECL plan.  Users would be paying fees to a licensor that did not actually hold rights, so those fees would be a pure loss in the economic realm of copyright (although they would support the creation of an otherwise unnecessary bureaucracy).  In the same way as with “Happy Birthday,” the availability of a putative licensor would have a chilling effect on fair use, especially where the use would be publicly accessible, as with documentary films, in the case of “Happy Birthday,” or mass digitization projects, in the case of libraries.  The upshot of both situations is the same — economic loss without any real public benefit.

The second consideration we can glean from the “Happy Birthday” case is about just how hard it is to determine the rights holders for many orphan works.  With all the powers of discovery and subpoena that were available to the court, it was unable to determine if the “Happy Birthday” lyrics were in the public domain, or, if they are still owned by someone, who that owner might be.  In a ECL scheme this problem would exist both for users and for the CRO, and it is severe enough to render the whole plan inefficient and unworkable.  If users were required to make some determinations before applying for such a license, that would increase the cost of every project without producing much in the way of useful results; many situations, as with “Happy Birthday,” could require tremendous investment of resources without bearing any fruit.  On the other side, the CRO would be unlikely, in similar situations, to ever actually find a rights holder to pay.  Here too, lots of resources (provided by the users) could easily be wasted in fruitless quests for rights holders.  And, of course, any leftover money would equally be wasted by providing for the expenses of an organization that would be unneeded and unable to fulfill its purpose.

If we take a serious look at what happened in the “Happy Birthday” case, where a putative rights holder was found to be collecting fees for something they did not own, and the actual rights situation was found to be undeterminable even after all of the discovery at the power of the court was exhausted, we should see an object lesson in what a bad idea, economically, an extended collective licensing scheme for orphan works would be.  Fair use is a workable and economically much more efficient approach to digitization projects that involve orphan works.

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.

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.