Category Archives: Copyright Issues and Legislation

Copyright Issues and Legislation, Technologies

Are we done with copyright?

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There has been lots of talk about copyright reform in Washington over the past few months, as evidenced by the announcement from the Chair of the House Judiciary Committee that that panel would undertake a comprehensive review of the copyright law.  The first hearing for that review was held back in May.  As Mike Masnick from TechDirt noted, the Registrar of Copyrights is supportive of the effort but “still focused on bad ideas.”  More recently, the Department of Commerce Task Force on Internet policy issued a “Green Paper” last month that helps us see what is right and what is wrong with the current attention in D.C. on copyright reform.

The Task Force recommended three broad categories of reform: updating the balance of rights and exceptions, better enforcement of rights on the Internet, and improving the Internet as a marketplace for IP through licensing.  These last two are straight out of the legacy entertainment industries’ wish list, of course, and they would do nothing at all to better realize the fundamental purpose of copyright to promote creativity and innovation.  As for the first, it all depends, of course, on where one thinks the balance has gone wrong.  The Task Force includes as a priority the reform of the library exception in section 108, which is a favorite goal of the Copyright Office right now, but it is not at all likely that anything the Office cooks up would be better than leaving the current 108 alone.  The Green Paper also seeks “input” about digital first sale and remixes; note that input is a much weaker commitment than the task Force is willing to make to such things as online enforcement, reform of 108, or — another industry favorite — the extension of the public performance right for sound recordings.

Most of this is just patching the current law around the edges, and addressing only those problems that the industry lobbyists would like to see fixed.  But it provides a context for asking a much more searching question about the utility of copyright in a digital age.  Does copyright actually serve its purpose, or any socially desirable purpose, in the current economic and technological environment?  What would it look like if we reformed the law in a way that paid close attention to that environment, rather than just listening to lobbyists for industries that are failing to adapt and want the law to protect them?

Let’s start with this report from The Atlantic about research into the effect of copyright protection on the availability of books.  This should be the “sweet spot” for copyright; if it does anything right, it should encourage the creation and distribution of books.  But the research reported in the article suggests just the opposite, that copyright protection, especially protection that lasts as long as it now does, actually depresses availability, so that more books are available from the decades just outside of copyright than from the most recent years.  Here is the conclusion of the researcher, a professor at the University of Illinois:

Copyright correlates significantly with the disappearance of works rather than with their availability. Shortly after works are created and proprietized, they tend to disappear from public view only to reappear in significantly increased numbers when they fall into the public domain and lose their owners.

This is not really that surprising if we think about what happens in modern book publishing.  A title is published and sold for 3-5 years, at most.  Then other titles come along and push the “older” ones “off the shelf.”  The initial publisher no longer is interested in marketing the vast majority of these books that are 10 or 20 years old, and, because of copyright, no one else can do so.  So a vast black hole swallows up most of the works of our culture that are less than 95 years old.  Only as they reach the century mark do these works begin to reappear as reprints, because other publishers, and even members of the general public, can now reproduce and distribute them.

By the way, one of the ironies of this article, which helps to define and quantify what is widely known as the “orphan works problem,” is that many of the books that are unavailable actually may be in the public domain.  Because for much of the 20th century copyright had to be renewed after 28 years and most rights were not renewed (due to the same lack of interest by their publishers that sent them to the remainder table) many of these books could be reprinted, but the Byzantine tangle of rules and Copyright Office record makes it too risky for anyone to undertake the task.

As I say, this situation is not a surprise.  Back in 1970, then Harvard Law professor and now Associate Justice of the Supreme Court Stephen Breyer wrote about “The Uneasy Case for Copyright” (the link is to the article in JSTOR) in which he argued that copyright was not fulfilling its purpose very well and probably should not be dramatically expanded in the then-nearly-completed copyright revision process.  Unfortunately Breyer’s article had little impact on that process, which resulted in the 1976 Copyright Act, but the past forty years have proven that he was largely correct and the Atlantic article discussed above is just one of many pieces of evidence. But “the real force of Breyer’s article is in arguing that copyright must be justified in a particular economic context and that technological changes may modify economic conditions.”

This quote about Breyer’s “Uneasy Case” comes from a 2011 article by another law professor, Niva Elkin-Koren of the University of Haifa, called “The Changing Nature of Books and the Uneasy Case for Copyright.”  In her article, Professor Elkin-Koren carefully examines the technological changes and lays out the subsequent economic analysis, just as Breyer did back in 1970, for the eBook age.  If in Breyer’s day the case for copyright was “uneasy,” then in the digital age it is downright painful.  Were I to summarize Elkin-Koren’s conclusions in a single sentence, it would be this — what we need most in the digital environment is competition, and copyright in its current form suppresses competition.  The digital environment is fundamentally different than print, largely due to the lower barriers to entry into the publication market.  In this context, competition can be vital and beneficial, but the copyright monopoly threatens to help established players gain an even tighter stranglehold on the marketplace than was possible in the print era (and that grip was already too tight, as we have seen).  Placing Elkin-Koren’s work next to Breyer’s, it is plain to see that the harmful economic and cultural effects of our current copyright regime are more visible and more harmful than ever.

If copyright reform were undertaken in the context of this awareness, what would it look like?  Suppose we were willing to do more than simply rearrange the deck chairs, where might we end up?  Elkin-Koren suggests a possibility:

[A] legal right to control copies may no longer be useful in a digital environment.  One reason for the weakening strength of copyright is that the legal right against unauthorized copying is no longer effective in digital markets… In order to secure the rights of authors to a share in the commercial revenues extracted from their books it may suffice to simply define a legal right to receive compensation: a fixed share from any commercial use.

It is breathtaking to consider the consequences of this kind of lightweight approach to copyright, as opposed to the steady process of adding more and more restrictions and penalties that has characterized nearly all previous copyright legislation.  Harkening back to the first U.S. copyright law, perhaps a “right to vend” is all that we really need in the Internet era. Certainly this would bring competition into the digital marketplace for copyrighted goods, which would scare the entertainment industry to death!  It is a fantasy, I know, but I would love to see copyright reform discussions in Washington start from that simple baseline, and then have an open discussion (one not dominated by those lobbyists best known to legislators and bureaucrats) about the consequences, problems and additions, if any, that would be needed to make that simple proposal work.

Copyright Issues and Legislation, Licensing, Scholarly Publishing

The problem with permission

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Because Duke has begun teaching Massively Open Online Courses (MOOCs), my office has gotten much more involved, over the past year, in the process of seeking permission to use copyrighted content.  We began a new service to help MOOC instructors make careful fair use decisions, find freely-licensed content for their courses, and get permission for materials where we deem it necessary.  The story of the first year of that service is told in this article that has just been published by D-Lib Magazine, written by Lauren Fowler, our first permissions intern, and me.

From the perspective of one asking a rights holder for permission to use some content, the process has a lot of frustration, some of which we detail in the article.  The most common frustration, as many people have discovered, is that so many rights holders simply do not respond.  They are not obligated to, of course, but even a simple “NO” would save lots of wasted effort and time on both sides of the exchange.  Yet a significant number of rights holders do not even send that; in our article we note that 23.5% of our requests garnered no reply at all, even after several contacts.

Sometimes, however, it is even more frustrating to receive a reply, because those answers often confirm that we are not dealing with a well-managed or carefully-administered process.  Frequently when we do get a response, what we hear back clearly indicates that the staff member who contacts us is unaware of what we have actually asked.  We have a carefully written request letter that is very clear about exactly the use we intend to make of the work if permission is granted, yet over and over the rights holder’s staff replies with inapposite questions or, amusingly, a grant of permission to do something else entirely.

One example can illustrate this humorous frustration.  Shortly before she left to take up a full-time library job, Ms. Fowler sent a letter to a major motion picture studio because one of our instructors wanted to use an illustration from a movie in a way that was probably fair use but for which we decided to ask permission, since it is a well-known picture and MOOCs are receiving so much attention and such large participation.  We got back a very nice message from a permissions rep saying that “the attached letter should cover your use.”  Unfortunately, the attached letter was a painstaking, though inaccurate, description of the exception for the public display of a copyrighted work in the course of face-to-face teaching.  I reviewed our multiple requests, and it seemed impossible not to understand that we were asking about an online use.  Yet we were told that a letter about physical classroom use, for which permission is not even required, would serve our purpose.  This left us at loss about how to proceed; we didn’t really have the needed permission, but it seemed like the rep was trying to grant it.  Maybe she just attached the wrong form letter.  So what do we do, as the time to make decisions about course content grows short?

It is certainly possible to conclude from the experiences we have had, which many others have also reported — see Susan Bielstein’s wonderful book on “Permissions, A Survival Guide” — that large rights holders simply are not interested in giving permission, or even in asking for permission fees.  The experience seems to confirm what the judge in the Georgia State case held in her ruling, that permission income is simply not that vital for most rights holders, so they invest very little time and energy into processing permission requests.

But recently I have dealt with two requests from the other side — requests directed at Duke from two large textbook publishers for permission for them to use content putatively owned by us in books they were publishing.  Astonishingly, the same laissez faire attitude seems to prevail when the big content company is doing the asking as it does when we are seeking permission from them.

In the first instance, a big textbook publishers sent an e-mail asking for permission to reuse an image, and a high-res scan of the image, to the Coordinator of Academic Support in our Office of Information Technology.  That person was clearly mystified — she is not engaged in IP issues or rights in any way — so she got in touch with me.  I could see very clearly that the image in question had been published by the Duke University Press, so we were able to redirect the request.  But we had to do the research (which was easy) because the company did not bother.

When this request finally reached the correct folks at Duke Press, they were shocked at the shoddy effort that the textbook publisher had made.  Even with more limited resources, I know from experience that DUP does much better work.  But the folks at the Press were inclined to see this as isolated incompetence on the part of a company with, it seems, a less than stellar reputation.  Unfortunately, the very next day I received confirmation that the problem is not isolated at all.

Yesterday I received a similar request from a different major textbook publisher.  It was directed to me, which is perhaps a little more sensible than selecting a random person from IT; I get these types of requests quite often, and routinely try to direct them to the right office.  But this one was especially difficult, because it just attached a scan of a page from a published work, and asked for permission to use “the attached.”  The request gave us no idea of where the page had been originally published, what part of that page was the focus of the request, or why the request had been sent to Duke in the first place.  An email to the publisher rep who sent the initial message told us that they were seeking permission to use only a single sentence quotation from the page, which is absurd.  And the request apparently came to us because of a connection between the publication and one of our collection centers.  So I forwarded it to the collection curator, but shook my head as I did so at the bumbling way these and so many other requests from permission come to us from those who yell loudest about the need to base our copyright system on permission.

It is hard not to conclude from these and similar experiences that the publishers sending the requests are not really interested in contacting the correct rights holder or in defining an appropriate scope for a license  They appear to simply be trying to collect paper — any message or letter that says the use is OK is sufficient to be filed away and forgotten.  From the other side, when we make a request for permission the same attitude prevails.  Little effort is made to accurately understand the request or craft an effective license.

Permission from a rights holder can solve many problems; it is an important part of a complete IP rights strategy in the digital environment.  But it is not a process for the faint of heart, nor a solution to be suggested lightly.  Even large professional publishers seem to find it overwhelming or, perhaps, not worth the investment of staff time and effort.  So when, in debates or litigation over copyright issues, rights holders groups assert that permission is the best solution and copyright exceptions should give way to a licensing process, we need to counter those claims by telling these sorts of stories.  Many of us can recount similar instances, and also catalog teaching opportunities that have been lost because permission was simply not available.  Judges and legislators need to know about these problems with permission, because they reenforce the wisdom — the necessity — of building exceptions into copyright and not relying on the whims and dubious competencies of rights holders to manage a permissions-based culture.

Copyright Issues and Legislation, Fair Use

Parallel tracks, parallel successes

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The two lawsuits currently going on that involve the scanning of books for the Google Books project, one against Google directly and the other against the HathiTrust, raise very similar issues.  In both cases, the two major issues are fair use and the posture of the plaintiffs who are bringing the cases in the first place.  The Authors Guild is now the major plaintiff in both cases; they are the only plaintiff left in the case against Google because the Association of American Publishers settled out of it, and the AG brought the case against HathiTrust by itself in the first place.

Yesterday the Second Circuit Court of Appeals issued a ruling in the Google Books case that takes an important approach to the issue of how fair use and the “standing” question (who can bring a lawsuit and in what position they stand) are related, and it reminds us of the parallel tracks along which the two cases seem to be moving.

As many will recall, the Google Books case has been going on for a very long time.  There was a complicated settlement agreement proposed back in 2009, but it was ultimately rejected by Judge Denny Chin.  Since then the AAP has gotten out of the lawsuit, and it has gone to trial with only the Authors Guild as the lead plaintiff against Google, asserting copyright infringement.  Early in that trial, Judge Chin (who is continuing to act as the trial court judge for this case even though he has since himself been appointed to the Second Circuit Appeals Court) “certified a class” for the purposes of allowing the case to be a class action lawsuit.  Because it was not at all clear that the plaintiffs in the case really do represent all authors, or even a majority of authors, Google appealed this class certification

In its July 1 decision, the Court of Appeals held that their colleague was “premature” in certifying the class.  They said that the trial court should consider the fair use issue that defendant Google had raised prior to determining class action status.  There are news reports from Reuters and the NY Times on this stage of the case.

What makes this so important is that class action certification can really be the end of a case for practical purposes.  The process of litigating a class action is so complex and expensive that class action certification is often a signal to the defendant to settle the case.  The result is that, if a class is certified, there is much less chance that a full determination about fair use will ever be made.  In this case, the fair use argument is very strong, and virtually identical issues were decided in favor of fair use at the trial level of the HathiTrust case.  So it would be very unfortunate if the Google case never got to that stage.  By fighting off the class certification, Google has won for itself a better opportunity to make that argument.  And the precedent set by this decision is important, since it tells trial courts to consider fair use before they make the potentially destructive decision about class certification.  In many cases, and the Second Circuit suggests that this may be one of them, the complexity and cost of a class action might be entirely avoided because fair use would lead to a lawsuit being dismissed before it got that far.

One interesting note is that Judge Pierre Leval was part of the Appeals Court panel that made this ruling.  Judge Leval wrote the famous law review article called “Towards a Fair Use Standard” that is the foundation of the recent stress on transformative uses in the fair use context.  Now, as part of this three judge panel, he has sent back to the trial court a case where the fair use standard he suggested is very, very applicable.  So we will see if Judge Chin takes the strong hint that he has been given by his Second Circuit colleagues (including Judge Leval and the rest of the appellate panel, as well as Judge Harold Baer, who ruled in favor of fair use in the HathiTrust case) and finally dismisses this case on fair use grounds without letting it grow into a class action.

As I said, the issue of whether or not the Authors Guild can really adequately represent the class of all authors is also very important.  Their membership is quite small – apparently less than 10,000 people – compared to all of the authors in the United States, and the interests they represent are even narrower.  They seem to focus on the need to protect every copyright for ongoing and exclusively commercial exploitation, in blissful ignorance that many, probably most, authors do not make any significant income from writing and often feel that exposure and impact are far more important incentives for authorship.

It is on this point that yesterday’s decision so clearly shows us that the Google Books and the HathiTrust lawsuits are on parallel tracks.  Late last year the trial court in the HathiTrust case made two important rulings.  The first was that the activities of the HathiTrust that had been challenged were fair use.  The second was that the Authors Guild could not assert “associational standing” to bring the case.   Now the Appeals Court has sent the Google Books case back to the trial court for consideration of the fair use issue and reconsideration of the association’s standing (in this instance, whether it is an adequate class representative).  On this second point the panel said that it did not have to decide the issue of adequate representation because a fair use decision might well moot the class action issue, but it indicated that the argument that the AG was not inadequate as a class representative “may carry some force.”  Now we might see a situation in which the Google case is resolved the same way the HathiTrust lower court case was – the activity is fair use and the Authors Guild is not a proper party.

It would be nice if the Authors Guild took this ruling as an opportunity to back out of the case.  But they have already appealed the HathiTrust verdict, and there is little reason to suppose that the AG will suddenly be seized by a fit of good sense.  So we must watch these lawsuits, brought out of a misplaced desire to force copyright to be something it is not and never was intended to be, get decided step-by-step in favor of fair use.  This latest decision, which will compel courts to consider fair use at an earlier, and potentially less devastating, point in a putative class action is, as they say, “another brick in the wall.”

Copyright Issues and Legislation, Fair Use

Of fences and defenses

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It is very common to hear people say, in a discussion of copyright, that fair use is “an affirmative defense.”  One of the amicus briefs filed in the Authors Guild’s appeal of the favorable fair use decision in their lawsuit against the HathiTrust, however, puts that common assertion into question and raises an argument worth considering.  The brief on behalf of the HathiTrust that was filed by a group of universities (Illinois, Michigan State, Minnesota, Nebraska, Northwestern, Penn State and Purdue) argues at some length that fair use is not and was not intended as an affirmative defense but is better viewed as a positive limitation on the rights held by a copyright owner. They argue, in short, that fair use is not so much a defense as it is a fence — a boundary that courts have built to prevent the exclusive rights in copyright from expanding too far. (Hat tip to Jack Bernard of the University of Michigan, who pointed this argument out to me but is not, of course, responsible for what I make of it).

To understand this argument, and to see what difference it makes, let’s start by defining an affirmative defense.  Black’s Law Dictionary tells us that an affirmative defense is “an assertion by a defendant that raises new facts and arguments that defeat the plaintiff’s claim even if all of the allegations in the complaint are true.”  When one raises an affirmative defense, one basically says that “even if I did exactly what the plaintiff says I did, I should be excused because of these additional reasons which justify my actions.”  Self-defense is a classic affirmative defense, as is duress.  In the latter case, for example, someone charged with writing a fraudulent check might say “yes, I signed that check knowing it was a fraud, but at the time I was being threatened at gunpoint if I did not do  so (i.e., I was under duress).”

It is easy to see why fair use seems like an affirmative defense; the general assumption is that a defendant in a copyright infringement lawsuit admits, when raising fair use, that they were responsible for the use being challenged, but that that use was authorized by the law under section 107 of the Copyright Act. Well-known copyright scholar William Patry takes exactly this position in a 2005 blog post, although he also adumbrates the argument that the amici universities are making in the HathiTrust brief.

The “public relations” problem with this position is that talk about affirmative defense is often used to frighten potential users of copyrighted works away from their proposed use by telling them that if the copyright holder objects, they will have to “prove” fair use, which is difficult and expensive.  The legal problem with maintaining that fair use is an affirmative defense is found in that word “prove” — the HathiTrust amici maintain that, because fair use is NOT an affirmative defense, the burden of proof shifts to the plaintiff, who should be required to prove that the use in question violates their rights.

Burden of proof is very important in most litigation.  We all know that in a criminal trial, it is the state which must prove “beyond a reasonable doubt” that the defendant committed the offense.  In a copyright infringement case, which is usually a civil trial rather than a criminal one, the standard of proof is lower — usually infringement must be proved by “a preponderance of the evidence.” Here is how the jury instructions for the federal courts in the Ninth Circuit describes this requirement:

the plaintiff contends that the defendant has infringed the plaintiff’s copyright. The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of the copyright and that the defendant copied original elements of the copyrighted work. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the copyrighted work was infringed.

If fair use is an affirmative defense, the burden of proving those additional facts that would establish the defense falls on the defendant.  She has to show that her otherwise infringing use was authorized by the law.  But the HathiTrust amici argue that that is not how fair use works.  They suggest, based on language in the statute, that fair use is about establishing the plaintiff’s right in the first place, so that the burden falls on that plaintiff to show that they have any right to prevent the particular use.

This is the difference between admitting the plaintiffs’ assertions and then arguing that there was a justification for the otherwise infringing activity versus denying that plaintiffs’ basic claim that they hold the right to object to the use in the first place.  It is an argument that fair uses simply fall outside of the scope of the copyright holders authority in the first place, 0n the other side of a statutorily-defined “fence.”  Then it becomes that copyright holders’ obligation to convince the court that their rights DO reach as far as they say they do.

As I said, the HathiTrust amici assert that the language of the copyright law supports this argument.  The section that enumerates the exclusive rights in copyright is immediately followed by a series of limitations on those rights, and fair use is the first of these limits.  The fair use provision says that a fair use “is not an infringement,” “notwithstanding” the rights granted just one section earlier.  This sounds like the scope and extent of the rights are being defined.  And just one more section later the law refers to “the right of fair use,” language that further suggests that fair use is much more than a defense.  Indeed, it looks like Congress was telling us that fair use is a positive right, the existence of which defines the inherent limits of the rights given to copyright holders.

By the way, this perspective is also useful in thinking about the publisher arguments in the GSU lawsuit.  The publishers’ reply brief in that case, about which I wrote a couple of weeks ago, asserts that those who claim fair use have”the burden of demonstrating the limited nature of the unauthorized use.”  Not only is there no such requirement about fair uses being “limited” in the legislative or judicial definition of fair use, but this assertion potentially gets the burden of proof wrong.  It is the plaintiff publishers, according to this perspective, who must show that the use in question is not fair use and therefore that they are entitled to assert any control over it.

If these seven amici universities convince the Court of Appeals panel, it will make a big difference in how the arguments proceed.  Since plaintiffs must first, as everyone agrees, show that they own a right that has been infringed, this argument would mean that it was up to them to convince the panel that the use was not fair use as part of that initial showing.  But it could be even more influential on the “public relations” issue I spoke of.  If we understand fair use as a positive right that creates a boundary limiting the control of rights holders, we ought to be less afraid of exercising it.  After all, we do not fear to walk on a public sidewalk just because some landowner might scream “trespass;” we recognize that rights over land have boundaries and do not shirk from exercising our positive right to use public land.  The argument in this amicus brief points us to a similar confidence when exercising our fair use right.  While we should respect the legitimate rights held by an intellectual property holder, we should not let attempts to expand those rights beyond the boundaries set by Congress dissuade us from making fair use of materials under this public right that is equally a defining part of copyright.
Copyright Issues and Legislation, Public Domain, User Generated Content

Museums can get copyright right

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One type of question that I get over and over again from faculty and graduate students involves copyright and images of art works held in museums.  In fact, question is probably the wrong name for these discussions; mostly I try to be sympathetic as the researcher bemoans the thicket of claims and permission costs in which they have become entangled as they undertake some project.  I recently met with one faculty member who is creating an amazing “digital humanities” project and needs to obtain, from a significant number of different museums, high-res images of works that are clearly in the public domain.  Even this author, who is both remarkably good-humored and very persistent, was confused and bemused by the Pandora’s box she had opened.

Then I saw this article about the Rijsmuseum in Amsterdam, which reminded me that even in Pandora’s box, hope remained in the bottom — some museums are bucking the trend and creating reuse-friendly policies for images of public domain works.

Whenever I am asked about the process of getting “copyright permission” from museums to use images of artworks in a new project, I start by explaining three basic principles:

  1. Many of the artworks held by museums around the world are in the public domain, either because they were created before copyright came into existence in the late 17th and early 18th centuries or because any copyright they had has expired.  And even for works that are still protected by copyright, most often the museum that owns the art work does not also hold the copyright.
  2. Even a photograph or digital scan of a public domain artwork that is created by the museum may lack copyright protection under a U.S. District Court decision that said that such “slavish” reproductions — reproductions that add nothing but attempt *just* to accurately reproduce the work — are not original enough to gain any copyright other than whatever protection the underlying work enjoys (which, if the work is public domain, is none).  This is only a District Court case, but it has never been appealed or, to my knowledge, otherwise challenged so it probably should guide us unless or until we get something more definitive.
  3. Museum claims over the use and reuse of images from their collection, even though often called and often understood as copyright claims, are really mostly a matter of contractual agreement and simple control over access to the unique works that the museum holds.  Because these works are (more or less) unique, the ability to make a reproduction can be tightly controlled and the museum can impose contractual conditions on access to make such a reproduction or on the reuse of a museum-supplied image.  These contractual obligations actually bind only the parties that agree to them, but in practice they are often passed to downstream users in the form of conditions on reuse that the original recipient feels bound to impose.

All of this is explained very elegantly and discussed in great detail in a superb article written on the topic by Kenneth Crews of Columbia University, which is available here.  It is a subject all librarians, in my opinion, should understand, so the article deserves a wide readership.  Dr. Crews points out both that many claims made by museums tend to stretch the copyright law beyond reasonable bounds AND that some of the claims for control and remuneration are supported by sound business practices and cultural policy considerations.  This is not a black or white issue, just one where more clarity and an open discussion of genuine needs and concerns can lead to better conditions for the reuse of artworks and images.

Which brings me to the Rijsmuseum.  Their decision to offer high-resolution images of many works in their collection available for free download is a startling example of the other side of this issue — there are good reasons, especially from the perspective of fundamental museum missions to make culture more accessible to the public, to take the opposite approach from that of some museums and support radical reuse.  I was struck by the reasoning behind allowing even commercial reuse of these high-res images:

If they want to have a Vermeer on their toilet paper, I’d rather have a high-quality image of Vermeer on toilet paper than a very bad reproduction.

Maybe the example chosen is not one involving high culture, but it illustrates quite dramatically that reuse of public domain art is inevitable, even for purposes we may deplore, and that the public is, in many cases, better served by access to good-quality reproductions than it is by complex contractual terms and absurd restrictions on even the most traditional practices (like sketching an artwork at the Art Institute of Chicago).  If we must chose between extremes, there is a great deal to recommend the Rijsmuseum approach.

As libraries, museums and archives work to digitize more and more of the public domain materials that they hold, it is worth considering how others will be able to use and reuse those images.  With so many digital humanities projects being pursued around the world, the thickets of permissions and use restrictions will grow evermore burdensome.  An example like the Rijsmuseum is a great counterweight to that burden, and a graphic reminder that it really does not have to be that way.  Of course, not every cultural institution can afford to make high-res reproductions available for free; fees are often essential to support the mission-driven activities of these collections.  So fees may be needed for the provision of high-res images, as may some restrictions on further dissemination of those images. But many of the restrictions and fees we often encounter cannot be justified in this way.  So if we start from the very open policy of the Rijsmuseum and then apply only those restrictions that have sound, policy-based foundations, we can arrive at much more supportive approaches to reuse and new creativity.  The policy adopted by the Cornell University Library’s digital collections is, in my opinion, a model of such a moderate and sensible approach.

For those beginning to explore the uncharted territory of the digital humanities, permission fees and reuse restrictions will probably continue to create nearly unnavigable thickets of complication.  But with these few counter-examples, we can see that a better approach is possible.  Libraries and the digital archives associated with them need to model the best practices that we can in hopes that the most absurd kinds of copyright overreaching will become less common and rational policies based on an accurate assertion of rights and a realistic assessment of needs will begin to dominate.

 

Copyright Issues and Legislation, Fair Use, Libraries

Time for breakfast at the 11th Circuit

In Alice in Wonderland, the White Queen chides Alice about her professed inability to believe unbelievable things, suggesting that it is just a matter of practice.  Because of her own discipline in practicing this art, the Queen is able to assure Alice that “sometimes I’ve believed as many as six impossible things before breakfast.”  Lawyers, of course, have to be skilled at making arguments even for implausible positions, but the reply brief filed in the GSU copyright infringement appeal last Monday would challenge even the White Queen’s gullibility.

In this brief the plaintiff publishers are attempting to respond to the arguments made in the last round of filings by Defendant Georgia State University and the “friends of the court” who argued on its behalf.  This is essentially their last shot at convincing the judges that they should reverse the decision of the trial court that largely ruled in favor of fair use.  Unfortunately for the publishers, it is not very convincing.

The core argument of this brief is one the publishers have been making, unsuccessfully, throughout the case — that the so-called “course pack” cases from two decades ago are absolutely dispositive in this case and render incorrect all of the fair use analysis done by Judge Evans in her comprehensive ruling at trial.  Some of this argument is based on misdirection, wherein the publishers argue that the judge was treating digital formats differently from print.  She did no such thing, of course; she distinguished the situation before her from the course pack cases because the facts were different.

The publisher  do address the distinction more directly, however, when they argue that GSU’s non-profit status is (for obscure reasons) not relevant to the fair use analysis.  Of course, the course pack cases explicitly rejected  fair use precisely because the defendants were commercial entities who were selling the course packs to students.  In the GSU case, on the other hand, the university is non-profit and the readings are made available at no charge.  It is absurd to say that this difference doesn’t matter.  In fact, at least one publisher I have dealt with granted gratis permission for an excerpt on e-reserves only after I assured them that no charge was made to students.  So even publishers understood that this was a crucial fact in determining the appropriateness of unlicensed uses in academia, before their lawyers told them they had better deny it.

From this basic assertion that the matter was already settled by different courts back in the 90’s, the publishers proceed to explain that the trial court was wrong on every one of the four fair use factors.  Much of the argument is very strange, twisting back on itself in an effort to obscure the clear and cogent path that Judge Evans used to arrive at her original ruling.  Its overall effect, however, is to emphasize what a sensible, careful analysis that trial court opinion offers.

It is, perhaps, worth looking at some of the general statements made in the opening summary of the brief’s argument to find some clues about how this analysis went so badly wrong.

First, of course, is this assertion that fair use is not supposed to favor non-profit educational uses.  We have heard this complaint many times over the long course of this cases, but here is last week’s version of it:

To sanction GSU’s practices under the rubric of fair use on the grounds urged by Appellees — GSU’s non-profit status and the importance of Appellants’ work as teaching tools — would undermine fundamental tenets of copyright law by effectively dedicating the works of scholarly publishers to the public domain. (emphasis added)

This is truly a staggering bit of argumentation.  First, a non-profit purpose is specifically mentioned as favoring fair use in the text of section 107 itself, so it is hard to see how it could NOT be an appropriate part of a fair use argument.  And a quick look at all of the exemplary purposes for fair use that are also mentioned in section 107 should convince any unbiased reader that social utility — the importance of education, for example — is the fundamental purpose for which fair use was created.  Indeed, courts have told us this over and over.  So the rubric suggested as inadequate is, in fact, a nice, concise statement of why the original ruling in this case was correct.  And then, the grotesque hyperbole that follows illustrates for us that the lawyers writing this brief know how far out on a limb they have climbed.  To say that a fair use finding effectively dedicates a work to the public domain is simply absurd.  I do not think the publishers could cite a single instance where fair use has had that effect, where the original became unmarketable because someone made a fair use of a portion of that work. When movie companies challenged the video recorder, for example, by saying that it would destroy the movie industry, they were making a parallel, and equally silly, claim; home video recorders, of course, did not harm the market for movies at all, even though entire films could be recorded under the Supreme Courts ruling on fair use.

And of course, we should not ignore that phrase “the works of scholarly publishers.”  Throughout this brief the publishers are not sure whether they are arguing for their own profits or on behalf of authors.  Sometime they throw the authors in to their argument, but mostly they want the court to believe that they, the publishers, actually created the works in question ex nihilo.  But none of these works were created by publishers, and their argument collapses when we realize that the fees they are seeking have virtually no role at all in incentivizing scholarly creation, which is what copyright is for. More about this in a minute.

But before we leave fair use proper, we should also examine this gem: “Fair use … imposes on the proponent of fair use the burden of demonstrating the limited nature of the unauthorized use …”  There is no such requirement in the text of the law, of course, and the Sony case about VCRs illustrates, at the highest level of U.S. legal precedent, that simply because a practice is widespread does not prevent it from being a fair use.

To return to the issue of incentives, let’s look at one more passage from the preliminary statement in this brief:

This blatant end-run of copyright law not only threatens to undermine the established legal norms that have long governed course-pack copying, but it comes at a time when Appellants and other academic publishers are investing heavily in publishing and delivering content in digital form.  These publishers cannot hope to recoup their investment if institutions like GSU are permitted to make exact digital copies of their works … without compensation to the works’ authors and publishers.

The first part of this quote is, as we have already seen, irrelevant; a fair use ruling in the GSU case would not alter the precedent created by the course pack cases, when those cases are properly understood.  But the second part is also interesting, and it echos an earlier statement, quoted from one of those course pack cases, about how publishers have “risked their capital to achieve dissemination.”  By way of reply, we should note first that dissemination is quite different now than it was nearly twenty years ago when that case was decided.  Many  Gold OA journals and other forms of digital writing can be distributed with much less expense than these traditional publishing houses claim is required.  So we are entitled to ask if it is being done efficiently by them; whether that capital the Court is asked to protect is being invested wisely.  And in any case, copyright law is not designed to support any particular business model, but to give creators more reason to create.

Given these statements, the Appeals Court would be justified, I think, in asking the plaintiffs to open the books and show how much investment is being made, how it is being spent, and how dependent that investment really is on permission fees.  The trial judge did not think those fees mattered all that much to publisher revenue.  If the plaintiffs continue to assert that their business will be ruined by fair use, they should be obligated to prove it, and also to show that the threat is systemic and not just the result of poor management.

Finally, it is worth noting that authors have now appeared in the argument.  Whereas earlier the issue was “the works of scholarly publishers,” now, in classical fashion, the authors have been belatedly recalled and tossed in to the mix.  Publishers have made pathos-filled appeals on behalf of starving authors in order to justify their own businesses since copyright began.  But academic authors are different, so this reflexive reference to authors should not go unchallenged.  In response to this argument, there are two questions the Court of Appeals should examine closely.  First, how much money actually makes its way into the hands of authors, rather than the publishers, from permission fees paid to the Copyright Clearance Center?  Second, what role, if any, do these fees play in creating the incentive that academic authors have to create scholarly monographs, recognizing that all of the books in question in this lawsuit are such monographs, rather than textbooks.  These questions are perfectly within the competence of the Court of Appeals, both because they are relevant to the second fair use factor and because the publishers’ reply brief has put them at issue.

Th Eleventh Circuit Court of Appeals is asked to swallow lots of unbelievable things in this reply brief.  Now is the time for them to sit down at the metaphorical breakfast table (harkening back to the White Queen) and demand substantive information from the plaintiffs before they finish this meal.

Copyright Issues and Legislation, Fair Use, Scholarly Publishing

Finding out who your friends are

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The period for filing amicus curiae (“friend of the court”) briefs in the appellate phase of the Georgia State University copyright and fair use case has closed, so it is a good time to take stock of who has weighed in on each side, and what their arguments look like.  Even though this will be a long post, it is still only a very sketchy summary of all of the arguments being made.

I have already written about some of the arguments made in support of the publishers who brought the original lawsuit and are pursuing this appeal after having lost in the district court.  Notably, we have discussed the strange argument made, essentially on behalf of the Copyright Clearance Center, which is helping to organize and finance this quixotic lawsuit, by two former Registrars of Copyright that fair use was never intended to favor non-profit educational uses.  We also noted the decision by the U.S. Justice Department NOT to get involved on behalf of the publishers.

When the briefs supporting the publishers are examined, the striking fact, to me, is that no one supports their position who does not stand to gain direct financial benefit if it is upheld.  No one is arguing that giving more money to the intermediaries who are such a drain on college and university budgets is a good idea in itself, or would be a benefit for scholarship.  The supporting groups like the American Association of University Presses (whose participation on this side is especially tragic), the Authors Guild and the “Copyright Alliance” are all looking to line their own pockets by supporting a reversal of the trial court.  Not surprising really, nor an evil intent in the abstract, but something that is well beyond the purpose and intent of the copyright law.  This is prospecting for gold on the part of the publishers, and they are trying to do it on public property.

I was interested to see that one of the parties on the amicus brief filed by the Author’s Guild was a group called the “Text and Academic Authors Association,” of which I had never heard.  Was this really an group of academic authors opposed to fair use on campus?  Well, only sort of.  The website of this oddly named group (all authors write text; I think they mean “textbook”) shows that the majority of their leadership council is made up of non-academics or retired professors, who presumably no longer need to rely on fair use for good teaching.  And the strange perspective of the group can best be judged by this article arguing that textbook prices are justified and are not too high to interfere with quality education, a perspective thoroughly debunked by nearly every study as well as by day-to-day experiences on campus.  Indeed, the only sensible way to read the article is to recognize that every “myth” it undertakes to refute represents a demonstrable fact. More on this shortly.

So now lets look at the friends of GSU and some of the arguments they are making.  In addition to the brief filed by GSU itself, there are at least five amici groups –  The Library Copyright Alliance filed a brief on behalf of the ALA, the ACRL, and the ARL, and was joined in that brief by the Electronic Frontier Foundation.  There was a joint brief from the American Council on Education, the Association of American Universities and three other higher education groups, one by the American Association of University Professors, and another from an independent group of academic authors and legal scholars.  Finally, ASERL, the Association of Southeastern Reasearch Libraries, which is the nation’s largest regional research library consortium, filed its own brief (which — full disclosure — I had a very small role in assisting with).

Note how clearly these friends of the court break down between those arguing for their own private gain versus those trying to uphold a public good.  Given all the rhetoric about copyright as primarily intended to benefit the public interest in hundreds of precedents, the 11th Circuit Court of Appeals cannot help, one would think, but notice this disparity.

Let’s look at some of the arguments from a few of these documents.

In the Appellees’ own brief (that’s Georgia State) we find the fundamental points that are elaborated and supported by all of the amici.  Primarily, the Appellees argue that all four of the fair use factors weigh more or less heavily in favor of fair use for short excerpts provided as course readings and accessible only by students in a particular class.  This argument is supported in the brief from ACE and the other university groups.  The GSU discussion is especially interesting on the fourth fair use factor, impact on the market.  First, it makes the point that the publishers argument about how the “easy” licensing that is supposedly available should make this factor count against fair use is circular.  As many courts have recognized, this argument would undermine virtually all fair use, which Congress could not have intended (although the publishers do), and insofar as Judge Evans accepted it in the trial court, she erred.  Then the Appellees go on to point out that that licensing market actually is neither easy nor comprehensive.  Fair use continues to be needed in this area even if one applies a market failure standard for fair use, because the “market” for licensing, and even the CCC’s blanket campus license, fail higher education far too often.  As we will see, other amici also support this point.

Two other points made in the Appellees’ brief are worth noting.  First, they argue, as I have in the past, that Judge Evans’ work-by-work analysis of fair use was the appropriate approach to the case, dictated both by the nature of fair use itself and by higher court precedents.  Second, they show that the publishers’ reliance on the principle of “media neutrality” is just a silly distraction (my words, not those in the brief).  Judge Evans simply did not apply fair use any differently in the digital realm than it would be applied to print works; she distinguished some cases that involved print, but she did so for much better reasons, reasons the publishers would like the 11th Circuit to overlook.

The Library Copyright Alliance also demonstrates, in their brief, that all four fair use factors actually favor Georgia State’s fair use argument, supporting from a slightly different perspective the argument made by GSU and by the multiple college and university associations.  The LCA goes on to argue that this fair use argument is widely-recognized in the educational community, and that GSU’s policy on copyright and fair use is consistent with widespread practices through education.  One result of that fact is a clear demonstration that upholding the trial court’s finding of fair use would not have any negative effect on scholarship.  Colleges and universities have relied on fair use in this way, even in the pre-digital world, for a long time.  Yet scholars continue to produce scholarly works at an ever greater rate, undaunted by fair uses made of those works (and they continue, unfortunately, to transfer copyright in those works to these irresponsible publishers).  Fair use supports scholarship, it does not undermine it.  And the publishers have not discovered any “new” threat to scholarly production that must be averted; they simply decided that they needed and deserved more money from academic budgets.

The LCA also develops the point about the failure of the licensing market for electronic reserves and other course readings.  A reversal in this appeal would not cause that market to grow.  It would not, that is, actually result in more money in the system to support scholarship, even if we assume that money in publishers’ coffers did support scholarship.  In fact, if the trial court’s findings of fair use were reversed, education would be harmed because fewer resources would be available for teaching, since library and university budgets cannot support the astronomical fees that publishers want to charge for licensing.  The overall effect on the production of scholarly work would be negative, which undermines the fundamental purpose of copyright law in the U.S.

The ASERL brief develops this point a bit further, partly by pointing out that the licensing market touted so highly by publishers is already harming the ability of colleges and universities to teach students.  On every campus it is easy to find stories about how the inability to get permission, either because of the prohibitive cost of licensing or because no license for the particular work was available, forced a teacher to changed his or her plans and resort to “plan B” pedagogy.  Most librarians have had to assist such faculty to find other, less optimal, resources in those situations; it is something we do well, but wish we didn’t need to do.

Related to this point is the discussion in the ASERL brief about the cost of higher education, and the role of publishers and licensing in those costs.  One statistic the brief cites shows that textbook prices have actually risen much faster in the past 30 years than tuition and fees have, which is a telling refutation of the argument made by the TAA in the article mentioned above.  And the structure of digital licensing from the CCC actually contributes to accelerating costs, because the CCC will refund the licensing fees for printed course packs that are not sold, but requires that e-reserve materials be licensed for each student in the class regardless of how many times an excerpt is actually accessed or even whether or not it is used by anyone.  Where, by the way, is their concern for “media neutrality” in that pricing policy?

Finally, I want to end this long post by quoting a passage from ASERL’s amicus brief that deserves to be remembered by everyone thinking about fair use.  In discussing the mistaken assertion by the publishers that all fair uses must be transformative and that, in any case, fair use should be extremely limited in application, ASERL reminds the Court of Appeals that, on the contrary, fair use is an integral and indispensable part of the very structure of U.S. copyright law, without which that law would arguably be unconstitutional:

Fair use is not a rarely-used “exception” to a copyright holder’s rights that should only be applied “on occasion.” [citing arguments from Appellants brief] Rather, fair use is viewed by the courts as “necessary to fulfill copyright’s very purpose.” [citing the Supreme Court in the Campbell case]… Fair use is necessary, in part, because “[t]he primary objective of copyright is not to reward the labors of authors, but [t]o promote the ‘Progress of Science'”… [citing the Constitution and the Supreme Court in the Feist case].  And for that reason, following direction from Article III of the Constitution, the District Court was correct to apply fair use “in a way that promotes the dissemination the knowledge, and not simply its creation.” [quoting Judge Evans and again citing the Supreme Court].

All of the arguments that support BOTH the creation and dissemination of knowledge line up on the side of affirming the trial court in this case.  It ought to be an easy decision for the 11th Circuit Court of Appeals.  And it is well past time for scholars and universities to rebel against so-called “scholarly” publishers who try to use the courts to undermine the best interests of research, teaching and learning in a futile attempt to improve their bottom line.

Copyright Issues and Legislation, Fair Use, User Generated Content

Fair use for appropriation art

A new ruling came out last week in one of the most interesting cases involving appropriation art, the ongoing dispute between photographer Patrick Cariou and appropriation artist Richard Prince.  I wrote about the unfortunate decision from the district court back in 2011, and on Thursday the Second Circuit Court of Appeals reversed that decision, determined the 25 of the 30 challenged artworks were fair use, and remanded the case back to the District Court for a better decision on the remaining five.

The decision from the Appeals Court tells the story of this dispute very clearly, but just to summarize, let me remind readers that Patrick Cariou took a series of photographs of Rastafarians that were published in a book, now out-of-print, called “Yes, Rasta.”  Richard Prince then made a series of appropriation art works, which included collages of the photos as well as various other alterations.  The trial court in the case decided on a summary judgment motion that these art works by Prince were copyright infringement.  Judge Deborah Batts, whose opinions we have had cause to regret in the past, held that a fair use defense for the appropriation art failed because the new work must “comment on, relate to the historical context of or critically refer back to the originals.”  When asked what his point was in these artworks, Prince told the trial court that he did not have a point, and that was very damning in Judge Batts’ eyes; for her, his works could be transformative only insofar as they were making a comment about Cariou’s work.

In Thursday’s decision, the Appeals Court told us, and Judge Batts, that this was not the right standard for assessing transformation for the purposes of fair use.

By the way, in her original injunction, which was vacated by the Appeals Court, Judge Batts had given Cariou the right to destroy Prince’s allegedly infringing works.  I wrote about this with some outrage two years ago, so it is worth noting that, to their credit, Cariou’s counsel told that Appeals Court early on that they opposed destruction of the art, even though they wanted it to be held to be infringing.

The Second Circuit begins its opinion by pointing out, in clear and forceful language, that copyright is not intended to give authors or other creators “absolute ownership” in their works, as if by natural right.  Instead, the Court notes, copyright is designed to stimulate creativity and progress in arts and sciences.  This is not new, but placed as it is in the opinion, it strongly reinforces the point that fair use is part of the structure of copyright, not an oddity or a mere exception for extraordinary situations.  Without fair use, copyright fails in its Constitutional purpose.

As for the correct standard for deciding if a work has a transformative purpose, the Second Circuit wants a broader rule than that articulated by the trial judge.  Transformation can exist even without direct comment on the original, whenever the original work is altered with “new expression, meaning, or message” (quoting the Supreme Court in the Campbell case).   The new work can be transformative if it “superseded the object of the original creation” by offering “new information, new aesthetics, new insights and understandings.”

Significantly, and especially important given Prince’s refusal to assign a “point” to his work, the court wants us to look at transformation from the perspective of the viewer, not the creator:

Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so.  Rather than confining our inquiry to Prince’s explanations of his artworks, we instead examine how the artworks may “reasonably be perceived” in order to assess their transformative nature.

For me personally this is very reassuring.  One of the ways I frequently tell students, faculty and librarians to try to decide if a proposed use is tranformative is to advise them to ask themselves three questions.  First, will the “quotation” of the original help me make my point?  Second, will it help my reader/viewer get the point?  Finally, did I use no more than necessary to make my point? These questions, by the way, are borrowed from LA attorney Dean Cheley, thanks to a panel we were both on at the 2012 ALA Annual conference.  The part of the decision that reinforces these questions is the reference to what will help readers and viewers perceive the new message or new aesthetic.  And while my “clients” usually do have a point to make, it is encouraging to see that fair use supports even appropriation art for its own sake.

Finally, the Second Circuit is very careful in its discussion of potential markets when assessing a transformative fair use.  It is not enough, the Court says, that argue the new work could have been licensed, and thus assert that any fair use harms that hypothetical market for a license.  Instead, the Court reminds us that the question is whether the alleged infringer has “usurped” a market in which the target audience and the nature of the content is the same as for the original.  Where the audience for the new work is different, and there is nothing to suggest that the original rights holder would have thought to exploit that different audience or communicate the new message, aesthetic or insight to them, the entirely speculative possibility of a license will not undermine fair use.

In the end, the Appeals Court finds that 25 of the challenged art works are fair use.  It remands only five of them back to the District Court for a new decision applying the correct standard.  The chances are good, I would think, that this will never actually get back to the trial court, because some settlement, based on a licensing fee in regard to those five, is probably in everyone’s best interest.  But regardless of what happens about those five art works, we now have a very strong decision about transformative fair use for appropriation art out of the Second Circuit.  Although not all fair uses, as we know, have to be transformative, this kind of decision helps lend support to many of the most creative forms that teaching and learning take on our campuses.

Copyright Issues and Legislation, Technologies

We’re not done with First Sale

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In the Supreme Court’s Kirtsaeng v. John Wiley decision, libraries caught a big break.  But it was really no more than an affirmation of the status quo — libraries can still lend materials manufactured in other countries, students can still resell their textbooks regardless of where they were printed, and consumers and stores can sell second-hand books, CDs and DVDs.  The “break” for libraries is in the danger we avoided, but the legal result is that the doctrine of first sale was NOT radically reordered to suit the demands of publishers for a “super property” right.  Nevertheless, the effort by the content industries to secure ever-greater control over secondary markets is continuing, and last week a decision about first sale as it applies — or, more accurately, does not apply — in the digital environment has supported that unprecedented level of control.

The case involves the digital music re-sale service ReDigi, through which subscribers can sell their digital music files through a complex process that is designed to ensure that the original owner absolutely cannot keep or access a copy of the music file once it has transferred to another subscriber who has purchased it.  From the trial court’s description of the process, it is very clear that ReDigi was trying to comply with a reasonable interpretation of the doctrine of first sale for the digital age.  Most of their system was intended to enforce a “forward and delete” version of first sale that would seem to embody the spirit of what that doctrine is trying to accomplish.  Unfortunately, Judge Richard Sullivan of the Southern District of New York found that ReDigi had moved too far beyond an obsessively close reading of the letter of the law.

Judge Sullivan’s order is a close analysis of the wording of the doctrine of first sale, found in section 109 of the Copyright Act (Title 17 of the U.S. Code) and a very “physical” understanding of the digital world.  The question he is addressing is “whether a digital music file, lawfully made and purchased, may be resold by its owner through ReDigi under the first sale doctrine.”  The judge answers that question with a resounding no.  His decision is based first, on the conclusion that the reproduction right in copyright is implicated whenever the copyrighted work is embodied in a new “material object” and that each movement of a digital file from one server location to another is a new material object.  “It is simply impossible,” Judge Sullivan writes, “that the same ‘material object’ can be transferred over the Internet.”  Since each movement from server to server, or from one segment of a server to another, is a reproduction, the Judge holds that the files sold over ReDigi are unlawful reproductions.  First sale, furthermore, cannot apply to such copies.  He is very explicit about this: “it is therefore impossible for the user to sell her ‘particular’ phonorecord on ReDigi… the first sale defense is limited to material items, like records, that the copyright owner put into the stream of commerce.”  There is no first sale — none at all — on the Internet, even without licensing restrictions on transfers.

The Judge does address very briefly the argument that this attempt to impose the analysis from the analog world onto the digital environment would have damaging implications for all kinds of consumer digital products, since reproductions are made all the time in ordinary computer maintenance activities and when content is moved from one device to another.  But he dismisses that concern as a “red herring” because “other doctrines or defenses” protect such activities “almost certainly.”  But he does not say which doctrines or defenses, and the fact that he has to resort to this vague reliance on the idea that the obvious negative outcomes from his decision will not come to pass shows that the decision is problematic from a policy perspective.

Indeed, it seems to me that Judge Sullivan is legally correct in his analysis, and thereby demonstrates that legal accuracy is not sufficient for this rapidly changing technological environment.  I think even he recognizes that the ruling he is obligated to make is not satisfactory; in regard to the policy implications of what he is doing, he falls back on that old judicial claim that he is not allowed to legislate from the bench, and that Congress must fix the problem he is creating.

Congress should take up Judge Sullivan’s invitation.  It seems clear, in light of Kirtsaeng, that Congress will be asked to modify first sale this term.  They should resist the publisher’s pressure to “fix” the Supreme Court’s sensible decision to leave consumers in no worse position than they have been in since 1908, but they can still readjust first sale to make it work for consumer sales of digital materials on the Internet.  They should consider Justice Kagan’s suggestion, in her concurrence in Kirtsaeng, that Congress fix the result from the Quality King case that read first sale as a limitation on the importation restrictions in section 602 of the Copyright Act. And they should recognize that the principle of “you bought it, you own it” is foundational to commerce, and in the absence of a negotiated agreement to the contrary, it should apply to the digital world.  So Congress has a chance to look at the very reasonable business model that ReDigi put in place and find ways to authorize it under a modified doctrine of first sale.  Unfortunately such reform, if it were to happen, would come too late for ReDigi and its customers.

Copyright Issues and Legislation, international IP, Libraries, Scholarly Publishing

The quest for “super-property”

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Before yesterday’s ruling in the Kirtsaeng v. John Wiley & Sons Supreme Court case, I had written a post about the oddity that copyright law is the only form of property right that does not include a specific mechanism by which the rights holder can lose their rights if they do not use the property for a long period of time.  In this way copyright violates one of the principal reasons that property rights are granted, to encourage the efficient use of resources.

In thinking about the Kirtsaeng case — the decision is here, there is a Chronicle of Higher Education story about the ruling here, and Kenny Crews of Columbia offers a detailed analysis of the decision here — I have come to realize that the same issue of whether or not copyright should behave like other forms of property was in play in this litigation.  In short, by trying to enforce a “geographical” reading of the doctrine of first sale, publishers were attempting to create a “super” property right that would gave them a level of control that other property owners do not get.

On a trip to Turkey two years ago, I purchased a silver and onyx ring while in Cappadocia, where onyx is mined in large quantity.  My wife and I also purchased a carpet for our dining room.  Both items could have been purchased in the U.S., but both were less expensive in Kaymakli than they would have been had we done our shopping in Raleigh.

I mention this small shopping spree to make two points.  First, the sale of these goods at lower prices in other countries than are available in the U.S. does not, apparently, make it impossible for U.S. merchants to sell at higher prices to shoppers here at home.  Price discrimination, as it is called when vendors adjust their price structure to take account of local market conditions, does not depend, apparently, on an absolute prohibition on importation or cross-border sales.  Second, now that we own the ring and the carpet, we are free to do with them what we like.  No one can tell us where to place the carpet, or to what events I may or may not wear my ring.  And we can resell either item if we wish.

What publishers wanted from the Supreme Court was an unprecedented level of control that no other property owner gets — the right to control the use of a copy that was manufactured in another country (i.e. whether or not it could be lent) and to control any resale of that copy.

Let’s think back for a minute to the Costco v. Omega case from a few years ago that also dealt with unauthorized importation of copyrighted goods.

First, it is interesting that that case involved copyright at all, since the goods in question were watches, which are not copyrightable subject matter.  Omega was able to bring the suit only by registering a small emblem on the back of the watches for U.S copyright protection.  They had to do this, of course, because simply being the owner of a batch of watches would not have given them control over the importation of legally purchased watches to the U.S.  They resorted to this ploy to take advantage of the unique feature of copyright that they believed gave them more control than “mere” property ownership did.  They were trying to exploit the “super” property features of copyright.

Second, even though Omega got a tie from the Supreme Court that left in place a favorable decision for them from the Ninth Circuit, they were ultimately unable to take advantage of that quasi-victory.  On remand, the District Court granted summary judgment to Costco because, it held, Omega was trying to misuse its copyright to prevent perfectly legal importation.  In spite of that ruling (which is under appeal), I am pretty confident that Omega still sells watches for less in South America than it does in North America.  Again, an absolute ban on importation is not a prerequisite to price discrimination; while there is always some “leakage” of “grey market” goods, price discrimination works well enough that all kinds of businesses that sell different types of property depend on it anyway.

So the outraged threats that are being heard from publishers about how U.S. market prices will now have to be charged for copies sold in the developing world are simply ridiculous.  One extremely vocal advocate for the publishing position puts the claim this way, in a comment to the Chronicle story linked above:

The only practical effect of the decision will be to stop the practice of publishers licensing the sale of U.S. works for sale in foreign countries in cheaper editions, thus greatly inhibiting the flow of knowledge to underdeveloped countries.

If academic publishers were really to do this, it would be a crime against their self-declared mission of making knowledge available.  It would also be bad business; a self-defeating fit of pique that would cost them a lot of money.  But no, I am confident that publishers will still sell books at prices adjusted for market conditions, unless they are even worse businesspeople than I think they are.  Perhaps it will be necessary to adjust prices to account for that leakage which the Supreme Court has said cannot be choked off entirely, but I actually suspect that that small loss is already built in to decisions about pricing.

One way to think about what was being considered in the Kirtsaeng case is to look at it as a tariff — an attempt to guarantee extra, post-sale income from goods when they were imported into the United States by forcing purchasers to license certain uses of those goods they had already bought.  The U.S. disfavors tariffs, and where they do exist the money is paid to the government, which is trying to protect specific domestic industries.  If Kirtsaeng had gone the other way, however, there would have been, in effect, a tariff on importing books and films that would have been an entirely private benefit.  From this perspective, as from that of property rights as a general notion, what was being sought by the publishers in Kirtsaeng was unprecedented, as well as unwise.

[By the way, Mike Masnick of TechDirt also uses this analogy with tariffs in one of his comments on the case, and his post is an indication that the publishers are already beginning to pull strings to try and get Congress to give them the extraordinary benefit that the Supreme Court has just denied them.]

One argument that the publishers have made and continue to make is that the “parade of horribles” that was predicted by libraries and many others in the Court would not have actually come about; they frequently say that what they were asking for was actually the state of the law for the past thirty years, and things have run pretty smoothly up till now.  But to make that claim is to beg the question of why the case had to be brought at all.  Libraries did not sue over first sale; neither did Supap Kirtsaeng.  It was publishers who decided that they needed to go to court because, obviously, they wanted to change the conditions that actually have been in place up till now.  Publishers were seeking a “new deal,” a super-property right that is unprecedented in any other market place.  And what libraries “won” (remembering that no library was a party to the case) was simply the right to proceed as we have been for many years.  I have no doubt that if the lower courts had been upheld in this case, publishers would begin to demand “public lending fees” from libraries whenever a book was printed in another country, and would have moved operations offshore to increase the situations in which they could demand such a fee (as the Second Circuit Court of Appeals acknowledged was a likely outcome).  It is an overstatement to call this a victory for libraries; it was merely a successful defense of what we have done for many years, which, it turns out, is something that our courts really value and appreciate.