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.

Meet me at the intersection

In March the ACRL published a new White Paper on Intersections of Scholarly Communication and Information Literacy: Creating Strategic Collaborations for a Changing Academic Environment which looks at the ways in which the dramatic changes taking place in the environment for scholarly communication have necessary consequences for nearly all librarians, and especially those who teach information literacy to graduate and undergraduate students.  As the current Chair of the ACRL’s Committee on Research and the Scholarly Environment, I had a small role in preparing the White Paper (most of the heavy lifting was done by Barbara DeFelice of Dartmouth, who chaired an ad hoc working group), and so was asked to take part in a program about the document and the issue at the ACRL Conference earlier this month.  On the morning of that program, I found in my email a link that led me into a fascinating story about exactly why this intersection can be so tricky to navigate, which I decided I would share here as well as at the panel discussion.

Coincidentally, the story involves a Duke professor, Dr. Mark Goodacre of Duke Divinity School, who is an active and engaging blogger on the general topic of the New Testament and early Christian literature.  Several years ago, Mark wrote a blog post outlining a possible approach to a long-standing problem in the interpretation of one of the non-canonical gospels, the Gospel of Peter.  By Mark’s own admission it was a casual piece of writing, as many academic blogs are (he calls it “random jottings,” but that is probably excessively modest).  Recently, however, an entirely non-casual peer-reviewed article critiquing Mark’s blog post has been published in a highly-regarded journal in the field.

Mark tells his own story, and links to the relevant documents, in this later blog post.  He also raises some interesting questions about the etiquette of the situation, which are discussed at length in the comments to the post.  The entire discussion is worth reading, but I want to make a specific comment about how it relates to those intersections of scholarly communications and information literacy.

One of the things that information literacy librarians spend a lot of time teaching about is the set of “signals” by which the scholarly authority of a particular work is measured.  Everything from the presence of footnotes to a notation that the article has been peer-reviewed can help students determine where on the continuum of authority a particular work they discover belongs.  Also, students learn from librarians and others how to “backtrack” from one article to find those conversation partners whose combined contributions help form a complete and coherent view of any particular issue.

Both of these basic skills are undermined, to some extent, by situations such as the one Mark recounts.  For one thing, it is perfectly possible that he could remove or revise his original blog post.  Now Mark is a scholar and a very astute blogger, so I would expect him to acknowledge and explain any subsequent changes he might make to that post.  But the possibility certainly exists, for this set of writings or for others, that the scholarly works under discussion could change or even disappear.  That possibility presents those who teach about research skills a new challenge — to explain and help students account for the potential impermanence of the scholarly record.  And even if they remain intact and unchanged, the challenge of helping students understand that a peer-reviewed work might be based on one that was never peer-reviewed, and consider what impact that possibility would have on their judgments about authority, persists.

I offer this anecdote as concrete evidence that the changing system of scholarly communications compels all librarians, and especially those who teach information literacy, to remain aware of what we might call the “socioeconomic” structure of information.  That is, the conditions — social, economic, legal and technological — under which different forms and types of information are created and disseminated.  We are witnessing, I believe, a radical disaggregation of scholarship, as new formats, new business models and diverse levels of accessibility become the norm for some disciplines and for many scholars.  Even in a humanities field like Early Christian Literature, which still preserves many of its traditional modes of communication, this splintering of once solid lines has its effect.  And for our students, whose entire information-seeking lives will be lived in an environment where technology, copyright and licenses control what they can find and what they can do with what they find, education on these matters is no longer optional.

It is precisely these changes, and the ever-more-pressing need to take them into account, that the ACRL White Paper is intended to document and encourage.  It deserves attention from the library community precisely because we cannot ignore the revolution in scholarly communications itself.

What I learned getting published by Taylor & Francis.

It was a rather embarrassing moment.  I was in a meeting with other copyright specialists from academic libraries when I received the email telling me that my article with Taylor & Francis had been published.  Before I could stop myself, I expressed my surprise out loud, then had to explain to my colleagues that I had just had an article published in a library science journal published by Taylor & Francis, and that I was not expecting it.  Two sources of embarrassment here.  First, especially following the resignation of the entire editorial board of a different library-related T&F journal due to their archaic authors’ rights policies, this is not a publisher with whom I would have chosen to do business or encouraged authors who consulted me to use.  Second, the fact that I was surprised by this news showed that I had been much more lax in my own decisions about publishing than I advise other academic authors to be.  It is always awkward to be caught in a “do as I say and not as I do” situation, and especially so when you have to explain it to a respected set of colleagues.

So let me explain how this happened and what lessons can be gleaned from my experience.

The story began when I gave a talk at the 2012 conference of NASIG, the North American Serials Interest Group.  Let me say at the start that no one at or representing NASIG did anything wrong in this encounter and that whatever misunderstanding or lack of information existed was entirely my fault.  NASIG provided me with an interesting and engaged audience of librarians, which was all I could ask.  In any case, I signed an agreement, as a “Vision” speaker (kind of ironic), allowing my talk to be mechanically recorded and also agreeing that a human “recorder” would write up what I said for an article for The Serials Librarian.  In due time, that reporter sent me a copy of the article and I agreed that it was a good representation of the talk I had given, ready to be published.  Not until the article was published did I realize that The Serials Librarian was a Taylor & Francis journal, and to the best of my recollection I never signed a copyright transfer agreement with T & F.  At least, I can find in my saved e-mail the agreement to publish in The Serials Librarian but not a CTA.

Again, neither NASIG nor the article author did anything wrong; they sought and obtained all the necessary authorizations from me.  It may well also be the case that the recorder who wrote up the article signed a CTA with Taylor & Francis, which she would have been entirely entitled to do.  But as I say, to the best of my knowledge I did not, and the lessons I take from this incident are premised on that recollection.

So the first lesson is obvious — be careful what you sign.  More careful than I was.  I should have determined who the publisher was and made an intentional decision before I signed that agreement about what would be done with the article that resulted from my talk.  It is quite likely that I would have agreed even after that small bit of research, since the article was actually written by someone else (as, I suppose, a derivative work from my original talk), and I had no further plans to use it in any way.  What I often tell authors is to consider the agreement they are presented with in light of their own plans and hopes for their work, and transfer or license rights in a way consistent with those plans.  If the agreements allow one to meet those goals, well and good; if they do not, negotiation is called for.  The decision should rest with the author.  In the experience I had, I did not make that decision in an informed way, and that, rather than the ultimate result, was the problem.

The second lesson from this experience is that authors choose journals, not publishers.  When I read over the agreement with NASIG, The Serials Librarian seemed like a proper venue for the article resulting from my talk, and I failed to inquire further.  Although I should have done, I did not look into the publisher’s identity because for me at that moment, as for many academic authors, it simply didn’t matter.  The first step in getting academic authors to pay attention to the rights they transfer or retain is helping them realize that not all publishers are alike in this matter, and that they do need some awareness of who is who.

Next, my little story provides an opportunity to remind readers about the issue of joint authorship.  Joint authors are very common, of course, in academia.  Once mostly found in the STM fields, digital humanities projects are now making joint authors out of folks from many different departments.  Joint authorship arises, of course, whenever two or more people each contribute original expression with the intent of creating a unified work.  In the case of my talk, my original expression was fixed in the PowerPoint slides and notes that I had made.  Recorder Susan Davis then created a derivative work from that original, adding a great deal of her own original expression.  Once I had indicated my assent to that process, she and I became joint authors.  Like all joint authors, we each hold an equal and undivided share in the copyright, and are each entitled to exercise the exclusive rights granted by copyright, subject only to a duty to account to each other for any profits (which I don’t expect, in this case).  Because of this situation, if Susan signed a copyright transfer agreement for publication of the article, she was perfectly entitled to do so.  And because of the potential that fact has to create misunderstandings and surprises for other joint authors, it illustrates how important it is in general that joint authors agree in advance, whenever possible, about how their shared work will be used, licensed and made public.

Finally there is this point — if I am correct that I never signed a copyright transfer, and assuming, for the sake of illustration, that Susan did, then Taylor and Francis and I are now joint holders of the copyright in this article.  One thing that means is that I can continue to exercise all the rights as a copyright owner — I could post the article to the web if I wanted to, for example — without consent from T & F.  So when publishers tell us that they need to be the exclusive holder of copyright in every item that they publish, it is important to realize that that may be an aspiration, but it is not a necessity.  In fact, my experience is only one of a large number of scenarios under which publishers routinely publish articles for which they are not the exclusive rights holders.  As we seek to reform the scholarly publishing system, partly by encouraging academic authors to pay better attention than I did in regard to this article, this fact is an important piece of information to remember.


The O in MOOC

I am generally a poor speller, but even I understand that there are two Os in MOOC.  So for added clarity, let me state up front that this post will focus on the first O — the one that stands for “open.”  But I want to get to the discussion about that O in a slightly round about (pun intended) way.

Let’s start with an insightful article from the recent issue of Nature that contained several pieces about open access.  The one that caught my attention is “Open Access: The true cost of science publishing.”  The author, Richard Van Noorden, provides a wealth of detail, and a very even-handed analysis, about the varying cost of publishing an academic article. He is hampered, unfortunately, by on-going secrecy on the topic. Neither Nature, which is publishing the article, nor PLoS would not talk with him about actual costs.  Nevertheless, there is a great deal of information here, and it all points to the conclusion that logic alone would have suggested — open access publishing, especially by non-profit entities, is much the more efficient way to disseminate scholarship.

One thing Van Noorden is able to show very clearly is that almost all open access publication charges are lower than the average per-article revenue that traditional publishers earn.  The difference can be as much as between a $300 cost per OA article and the average $5000 revenue per toll-access one.  The difference can be accounted for in one of two ways –large corporate profit margins or inefficient publishing methods.  Whichever is the case, however, it is clear the open access is the better option.  These lower costs are among the many reasons that open access provides a much greater benefit to academia than the traditional, pre-Internet system can.

Inspite of this documented good news about OA, however, the article ends on a discouraging note, or perhaps it is better to say a note of frustration.  Open access is obviously growing every year, but it is not growing as quickly, except where it is mandated, as it’s obvious superiority would suggest.  So at the end, the article leaves us to speculate on the incentives faculty authors have for choosing, or not choosing, OA.

And that brings me back to the “open” in Massively Open Online Courses.  The growing popularity of MOOCs, and their potential, parallel to that of open access itself, to revolutionize higher education, is a new and powerful incentive for scholarly authors to rethink access to their publications.

The fundamental driver behind the growth of MOOCs is the desire to expand the scope of our educational mission and to reach a global community of students we could not otherwise serve.  Seen in that light, the “open” in MOOC is key.  Part of our commitment as institutions participating in MOOCs is to try very hard not to erect financial barriers to participation in these courses.  We resist the normal urge to require textbook purchase, for example.  Our instructors are encourage to recommend but not require books for purchase (with the result, BTW, that sales for the merely-recommended books nearly always skyrocket). But this commitment to keeping the courses open for students also means that we look for an increasing amount of open content for teaching.

When our instructors want to provide readings for students taking a MOOC, we generally pursue one of two options.  Either we negotiate with publishers, who are slowly figuring out the marketing advantage they gain by allowing small excerpts of books and textbooks to be made available freely, or we look for OA content.  Unfortunately, the negotiation option is slow and labor-intensive; often we must explain the purpose and the conditions over and over again, to ever-shifting groups of officials, before we can get a decision.  So open access is ever more important, because more efficient, for our MOOC instructors and their students.

One story will illustrate this growing interest in open access.  A faculty member who was recently preparing to teach his first MOOC wanted his students to be able to read several of his own articles.  When we asked his publisher for permission on his behalf, it was denied.  A rude awakening for our professor, but also an opportunity to talk about open access.  As it turned out, all of the articles were published in journals that allowed the author to deposit his final manuscripts, and this author had them all.  So we uploaded those post-prints, and he had persistent, no-cost links to provide to the 80,000 students who were registered for his course.  An eye-opener for the author, a missed opportunity for the publisher, and a small triumph for our OA repository.  Enough of a triumph that this professor has begun asking colleagues if they could deposit post-prints of their own articles in the repositories at their institutions so that he can use those for his MOOC students as well.

So when we are counting up incentives for open access publishing, whether Gold or Green, lets remember that the massive opportunity that is represented by MOOCs is also a new reason to embrace open access.

We’re not done with First Sale

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.

The quest for “super-property”

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.


International First Sale is upheld

The decision in the Kirtsaeng v. Wiley case was released this morning, and the outcome is wonderful for libraries.  I have not had the chance to read the whole opinion yet, but the upshot is that the Second Circuit rule that said that First Sale applied only to materials manufactured in the United States was reversed.  The Supreme Court majority appears to have ruled that First Sale applies to all non-pirated goods — that is, all works that are originally manufacture under authority of the rights holder in a way that would entitle them to protection under U.S. law.  In other words, if the work can be protected by copyright in the U.S., it is also subject to the rule in the U.S. that allows library lending and second-hand sales.

The opinion is here.

It appears that the Court took very seriously that “parade of horribles” that were suggested if they upheld the Second Circuit — libraries would be unable to lend some materials without a license from publishers., student could be prevented from buying or selling second-hand textbooks, etc.  According to the Court, these were too distressing, and too likely to occur.  Furthermore, the Court held that a “non-geographical” reading of the language of First Sale in section 109 of the Copyright Act is a more sensible construal of the words that are actually used.

It seems that libraries have really ducked a bullet here.  Business as usual is the way forward, for which we must be grateful to the Supreme Court.  We probably should also be prepared to see this issue come before Congress, so we will likely again be called upon to defend the value of what we do and the need to have the law, at least, not step in the way of that very important work.

Why is copyright different?

One of the most basic justifications for all forms of property rights, something every first-year law student is taught, is that these rights encourage the efficient use of property.  Because property (usually) is a scarce resource, exclusive ownership rights help encourage people who value and will use the property.  For the same reason, restraints on the ability to sell property are generally discouraged — we support the “free alienability” of property so that those who do not wish to fully exploit a piece of property will be able to transfer that land (as it usually is) to someone who will.  In short, the rules around real property exist because of the foundational belief that fields should be tilled and planted, and houses should be lived in.

In this context of why we have property rights at all, it is very easy to see and understand that the problem in copyright of so-called orphan works is a fundamental failure of the rights system itself.

In addition to rules that encourage property owners to sell that they do not intend to use, nearly all forms of property rights regimes also have doctrines that will take the property away from an owner who declines to exploit what he or she owns.  The classic doctrine that does this is adverse possession, which can actually transfer title to a piece of land from the owner to a person whose only claim is that he is using the property while the owner is not.  In North Carolina, for example, a person who openly possesses and uses a piece of land that is not her own for a period of at least fifteen years can ask the courts to transfer title to her.  That is, owners of real property can lose their ownership simply because they did not use the property.

Real property is not the only property rights regime that has such a doctrine.  Ownership over personal property can also be lost, through the doctrine of abandonment.  If I leave my bicycle in a local park for long enough, without any indication of my claim to it or my intention to ever use it again, I may have abandoned the bicycle and it could become the property of another person who finds it, claims it and uses it.  Although we do not usually think about it this way, property rights are a “use it or lose it” legal regime.

Perhaps someone will suggest that these use it or lose it rules make sense in the realm of tangible property, where scarcity is really a problem, but would be inappropriate for intangible, intellectual property.  But that distinction does not work, because two other intellectual property regimes, trademark and patent, also have “use it or lose it” rules.  A trademark owner can lose their rights in a mark through neglect — one must defend the ability of the mark to identify specific goods or services, or else the mark will be lost because it is not serving the purpose for which trademarks are granted.  And patent rights can likewise be lost, if the rights holder does not pay the regular maintenance fees that are required.

In fact, as far as I can tell, the only form of property interest that cannot be lost even if it is never used is copyright.  Unlike with land, chattels, trademarks, or patents, a copyright holder can hold on to their rights for nearly a century without using them at all, and still without losing them.  And it is this bizarre feature of copyright, which distinguishes it from all other forms of property rights, that creates the problem of orphan works.

Of course, our copyright law used to have the same kind of mechanism that exists in other property regimes; renewal of copyright served as a very simple way to indicate a continued intention to use the property right, and without renewal the right was lost.  With that renewal requirement, copyright stayed on a par with other forms of property.  But we removed that requirement when we joined the Berne Convention, which forbids “formalities.”  That probably made very little sense (and we have ignored other requirements of the Berne Convention in spite of our adherence to it in 1988) because it created the orphan works problem and undermined one of the most basic justifications — efficiency through use — for allowing exclusive property rights in the first place.

The best solution to the orphan works problem would simply be to reinstate the renewal requirement.  That could probably be done without violating our obligations under Berne, if the requirement was imposed only on rights holders who are U.S. citizens.  That would be only a partial solution, of course, but it would be better than the current situation and would address the oddity that copyright is a more ironclad right, at this point, than any other form of property rights.

There are also more “gentle” ways to address this problem.  Given the current situation, where we give copyright holders a grip on those rights that is stronger than any other form of property, it would be possible, and eminently fair, to ask them to voluntarily take a simple step to make their intention to continue using their property known to others.  A registry, or perhaps different registries for different genres of copyrighted works, would allow rights holders to assert their continued interest in their rights, and make it much easier for potential users of the work to find and contact the appropriate rights holder if they are seeking permission for their use.  This would be a very non-intrusive way to address the problem of orphan works, especially in the context where other forms of neglect of property can result in forfeiture.

If a registry regime were voluntary and did not carry the threat of forfeiture that exists in other property regimes, what kind of “teeth” could be built into a registration system?  The most sensible approach would be for judges, when considering a fair use claim over a piece of copyrighted work, to take into consideration the “find-ability” of the right holder.  If the rights holder has taken any positive steps to be known and locatable, a claim of fair use should have to meet the same threshold that is currently erected for such defenses.  But if the rights holder has done nothing, has “sat on their rights,” to use a old-fashioned phrase that is amazingly applicable to the current copyright system, then it should be much easier to establish fair use.

When Congress considered an orphan works solution a few years ago, it wanted to put the onus on users to search for the rights holder.  But when we put copyright in the proper context of other property rights regimes, it should be obvious that these obligations should be a two-way street.  All other property rights require some kind of indication that the rights holder will use the rights, or else they can lose them.  In copyright, it would be fair, and a very small burden, to require a similar gesture — inexpensive and easy — of continued interest on the part of the rights holder. This is especially true if the only consequence of failing to make that gesture would be easier use, rather than a loss of the rights.  Copyright would still not be on a par with other property rights in terms of encouraging, indeed demanding, efficient use of the property, but the balance would be redressed a little.

What’s up with Antigua?

I wrote this post several weeks ago, intending to explain the oddities of international copyright treatises that led to Antigua being poised to become a “copyright haven” that does not recognize US copyrights.  Many other events intervened, but I think it is still worth posting for the sake of the explanation, which some readers might find informative.  As far as I know, nothing further has occurred, and I suspect that the two governments are negotiating, after the threat from Antigua got the attention of the US.

The media and bloggers have feasted on the irony — little Caribbean island nation Antigua is going to become a copyright haven, where works from the US film and music industry can be shared freely and without constraint from copyright laws.  The US has warned Antigua not to do this, but the World Trade Organization has ruled that it is an acceptable sanction to impose on the U.S. for, of all things, not allowing Americans to gamble on Antigua’s online casino sites.  The whole thing, I think, requires some explanation.

The story really begins when the World Trade Organization (WTO) adopted an agreement, called TRIPs, for “Trade-Related Aspects of Intellectual Property Rights,” that made the Berne Convention binding on all members of the WTO.  Prior to TRIPS, the international copyright agreement known as the Berne Convention obligated its signers to do certain things, but it did not really have any “teeth.”  If nations ignored the obligations they undertook, there was little that the World Intellectual Property Organization, a U.N. body that administers Berne, could do about it.  But when the copyright requirements were made part of the obligations of all members of the World Trade Organization as part of the 1994 General Agreement on Tariffs and Trade (GATT), they suddenly gained an enforcement mechanism.  WTO members are allowed to retaliate against other WTO members that implement unfair trade practices, as defined by the GATT.

Trade sanctions usually involve the same goods and the same market — if country X refuses to buy cotton from country Y, country Y is entitled to impose a tariff on cotton from country X.  But the WTO also allows so-called cross-retaliation, where a country can redress the wrong done to it in one market by suspending its obligations in another market.

In the Antigua/U.S. dispute, cross-retaliation has been approved by the WTO.  The origin of the dispute is in the U.S. Unlawful Internet Gaming Enforcement Act from 2006, which made it illegal for off-shore gaming sites to take wagers from gamblers in the U.S.  Antigua complained that this was an unfair trade restraint, and the WTO agreed, saying that Antigua was harmed to the tune of 21 million U.S. dollars.  The ruling also affirmed the right of Antigua to take retaliatory steps against the U.S., including in different markets.  Since intellectual property is now a market governed by the WTO through the TRIPS agreement, Antigua announced, and the WTO approved, that retaliation would take the form of suspending the recognition of U.S. IP rights in Antigua.  This was an astute strategy on the part of Antigua, given how dedicated the U.S. administration is to appeasing the traditional entertainment industries. Thus it has become possible, but not certain by any means, that free Internet movie and music sites would develop on the island, which could not really be called “pirate” sites because  the failure to recognize US copyrights would be sanctioned by the WTO.

The irony of the situation is fodder to many commentators.  This column from a British paper notes that the idea of allowing cross-retaliation in the first place came from the U.S.  And Mike Masnick from TechDirt suggests that the US entertainment industry has been “hoist by its own petard,” since one of the many means by which the so-called “copyright minimalists” have sought to ratchet up IP enforcement seems to be coming back to bite them.

For my part, I think the whole dispute illustrates what a mistake it is to treat intellectual property rules, and especially copyrights, as mere trade regulations.  First and foremost, to do so ignores the underlying purpose to serve the public good that animates those rules in the U.S. and in many other nations.  When these rights become pawns in the cross-retaliation games of international trade organizations, it  becomes clear how complete the divorce is between copyright and its justification, which is to build an incentive for creators to create.  And what seemed like a good idea to the major content industries, because treating copyright as a purely trade issue would provide greater enforcement opportunities, has turned out to be a very sharp two-edged sword.

In reality, copyrights very seldom serve their proper function as incentives for creation.  Many creators are unaware of the vast period of protection their works will receive automatically and create for entirely other reasons.  For the small fraction of copyright holders who do rely on copyrights to produce income, those rights are almost always transferred to intermediaries who exploit them primarily for their own benefit, so that the incentive function is curtailed.  Witness how ardently the music and movie industry is fighting the “termination right” that was enacted in our copyright law to ensure that creators would have an ongoing opportunity to gain from their rights.  Although support for individual authors has always been the battle cry of the publishing and entertainment industry, its role as an incentive has always been dubious.  And when it becomes a chip in this poker game over trade — a bargaining position to defend online gambling, of all things — it is even more clear that concern over creativity has gone out the window.  We will hear, of course, that what Antigua has threatened will be bad for artists, musicians and actors, but those folks will likely never feel any effects if Antigua becomes a “copyright haven.”  Instead, this is a battle over trade policy that reveals just how cynical we have become over IP rights.

Good government in action, and inaction

Governments are funny things.  No matter where we fall on the “more government, less government” political spectrum. it is inevitably the case that sometimes we applauded government actions, and sometime we prefer government inaction.  Last week, however, the scholarly communications community got the opportunity to admire BOTH positive action taken by the Administration and a positive decision in favor of inaction.

Let’s start with the inaction.  On Friday, attorneys for the Department of Justice sent a letter to the 11th Circuit Court of Appeals, where the Georgia State copyright decision is being appealed, informing the Court that the DoJ would not be filing an amicus brief in that appeal.  Recall please that the appeal is brought by the three publishers who lost pretty comprehensively in the trial court, and the DoJ had asked the 11th Circuit for an extension of time to file a “friend of the court” brief that would either support the publishers or support neither party.  That generated a lot of consternation in the higher education community, and many calls for the DoJ to rethink its position.  Apparently the outcry had an effect, and the Justice Department decided that it should not take sides in this dispute.  It is even possible that the plaintiff publishers themselves realized that a brief supporting them from the DoJ would open up cans of worms best left closed and mobilize even greater opposition to their efforts to squeeze more money from college and university budgets.  They may have asked the DoJ to stay on the sidelines.  But that is pure speculation.

What is clear is that the folks at Justice decided that their original idea to get involved was a bad one.   Because of the way a litigation schedule works, however, it is not too late for the DoJ to file a brief on the other side — supporting the careful analysis that the trial court judge did on the issue of fair use.  But that is unlikely, I fear.  Now, however, is the time for the higher education community to mobilize its own passion for its mission, and its own lawyers, to file on behalf of the defendant/appellee — Georgia State.

Then there is the action that was announced on Friday, and it could hardly have been better.  The White House, after a long delay, issued a directive that instructs all federal agencies that have large research and development budgets to develop plans to make the articles that arise from such research funding publicly available within 12 months of publication.  In short, the White House has recognized the success of the NIH public access mandate and has committed to providing the same benefit to taxpayers for the other research efforts that they fund.  Additionally, the new directive also instructs agencies to examine data access and sharing, so it genuinely is seeking to improve the overall environment for research, and to give taxpayers a greater return on their investments.

Many readers of this blog responded to our appeal for signatures on the We the People petition that was begun last year on the White House web site.  Those signers will all have received a letter from the Office of Science and Technology Policy,which explicitly portrays the new directive as a response to the opinions put forward in that petition.  So congratulate yourselves, maybe even buy yourselves a drink, in celebration of the good work you did on behalf of making scientific research faster, more nimble and more widely usable.

There is lots of press coverage on this directive from the White House.  Check out these stories from Science, the Wall Street Journal, and the Washington Post for more details.  But here is a detail that you won’t find in any news coverage, because it is not yet decided.  What repositories will be used for public access to non-NIH funded research?  Unlike the NIH, most agencies do not already have repositories that can become the mandated site for deposit.  And it would be a travesty, as well as a sure way to undermine compliance, if open access were left for authors to arrange with their publishers, who will want to add new fees, which would inevitably be borne, eventually, by those same taxpayers.  The sensible alternative is to tell authors that they can use open access repositories at their home institutions or at other educational institutions.  Agencies might also specify some standards for reliability and access that could apply to acceptable institutional repositories.  This will facilitate access at a lower cost.  But it will also increase the urgency for institutions to develop or improve their repositories, since those IRs will very quickly become a vital service to assist faculty authors in complying with the broader mandates that are now so clearly on the way.

The White House directive might lead some people to assume that the FASTR Act, which was introduced in both houses of Congress a couple of weeks ago, is no longer necessary.  That would be a mistake.  FASTR, which stands for Fair Access to Science and Technology Research and is the latest version of the bill formerly known as FRPAA, will do some things that the directive will not, or, at least, may not.  FASTR, for example, directs each agency to investigate issues of reuse; although it does not mandate open licensing, it certainly sets genuine open access — including not just the right to read but also to reuse — as the ideal.  Also, an act of Congress is more difficult to reverse, whereas an executive order can be countermanded by a subsequent president.  So there is good reason to continue to urge our representatives in Congress to support the FASTR act.  We can celebrate a very good week last week while still recognizing that we have more work, both in turning away the attack on fair use in academia and in supporting open access, ahead of us.

Discussions about the changing world of scholarly communications and copyright