Fair use and the law of trespass

April 13, 2010 Kevin Smith, J.D. 2 Comments

A convoluted copyright infringement case that was decided earlier this month – Latimer v. Roaring Toyz, Inc. – once again raises the question of what is fair use. There is a nice summary of the case here, and the decision is here.

The facts are quite complicated, involving custom painted motorcycles and the issue of whether a photograph of the motorcycle is a derivative work that implicates the designer’s copyright. But the point that caught my attention was that the district court, in granting summary judgment, raised on its own initiative (the legal term is sua sponte) a fair use argument on the defendants’ behalf. The 11^th Circuit Court of Appeals subsequently held that this was a legal error; that fair use is an “affirmative defense” that must be raised by the defendant and cannot be invoked by the court if it is not.

First, I want to note with approval the statement by the 11^th Circuit that “Courts have historically viewed summary judgment as inappropriate in the copyright infringement context because of the inherently subjective nature of the inquiry.” I made this argument several weeks ago in suggesting that summary judgment on the fair use issue was inappropriate in the copyright infringement case brought against Georgia State University, and it is nice to see my opinion supported by the Court of Appeal for the same circuit in which the GSU case is being heard.

I am not so happy, however, with the conclusion that fair use, as an affirmative defense, cannot be raise sua sponte by a court. In general I do not have a problem with the principle of civil procedure — called Rule 8 — that says that a defense is waived if it is not asserted by the defendant in their answer or similar initial pleading. It is interesting, however, to note that fair use is not on the list of affirmative defenses mentioned in Rule 8; if it were there would not have been a controversy. But that exclusion makes sense, because fair use, although it functions as an affirmative defense, really plays a different role in the copyright statute.

An affirmative defense is one in which the defendant admits the actions complained of, but pleads additional facts that excuse those actions. Many potential defenses, of very different characters, thus function affirmatively. Rather than compare fair use to an obvious affirmative defense like a statute of limitations, I want to suggest an analogy from the law of real property.

Suppose my neighbor and I disagree over the extent of my property. When I build my garage on the disputed strip of land, my neighbor may well sue me for trespass. My defense – that I did build the garage as alleged but that it is not my neighbor’s property and therefore no trespass – will look a lot like an affirmative defense. But in reality the assertion is that there was no trespass because of the boundary on my neighbor’s property and, therefore, on his rights. Fair use, I suggest, is really a limitation on the rights held by a copyright holder; a boundary line on his or her property, if you will.

This, of course, is the plain reading of the fair use provision in the copyright statute – a fair use is “not an infringement.” The defendant-appellees in the Latimar case made this point, arguing that the clear language of the law shows that fair use is, essentially, a boundary to a copyright that courts are required to recognize even if it is not asserted by the defendant. Unfortunately, the 11^th Circuit conflated this argument with another one made by the defendant and then refuted the second argument without ever addressing this first, much more compelling, point.

I have argued before that real property law, much beloved by copyright maximalists for its draconian language about theft and piracy, actually can be a fruitful analogy for discussions of intellectual property law if and when the extensive limitations and exceptions on real property claims are recognized. The analogy between fair use and the boundaries that limit real property claims is one such point, and it suggests that courts can, and probably should, consider fair use and raise it on their own when it is appropriate but not asserted by a defendant.

Is it cool to be a pirate?

April 7, 2010 Kevin Smith, J.D. 2 Comments

The content industries have been using the terms ‘piracy’ and ‘pirate’ for many years to describe people the law itself would call infringers. In his book “Moral Panics and the Copyright Wars,” William Patry makes it very clear that he considers this term an excessive and exaggerated use of language intended to create a moral panic. That opinion seems to be reinforced when we read about defense lawyers who attempt to exclude the use of the term in a criminal trial, as reported in this blog post on “Can the Government Use the Term ‘Music Piracy’ in a Criminal Copyright Trial?”

Recently, however, another trend is developing, and it challenges the notion that this is an absolute term of opprobrium. I say developing, but I recently ran across this sentence from R.R. Bowker’s 1912 volume on “Copyright: Its History and Law”:

The word “piracy,” since that gentle craft has disappeared from the high seas, has come commonly into use to mean free-booting with reference to literary property.

It is highly unlikely that the content industries would agree that piracy is or ever was a “gentle craft,” but there are indications that those groups are now regretting the prevalence of the term because it sounds romantic and exciting. Several recent blog posts (here and here) have reported on concerns in the entertainment industry that “piracy” sounds “too sexy” and tends to remind people of Johnny Depp. This worry is well-taken; I was recently talking to a lawyer who is 20 years younger than I and he opined that the use of the pirate metaphor was a poor strategy because to folks of his generation, and in general to anti-authoritarian teenagers, the idea of being a pirate was “cool”.

This discussion is interesting to me as I read through Adrian Johns’ new book on “Piracy: The Intellectual Property Wars from Gutenberg to Gates.” Johns makes two important points, I think. First, that the use of pirate and piracy as a way to refer to some types of IP infringement is a very old phenomenon. Like Bowker, Johns locates such usage well back into the 18th century. Second, Johns argues that piracy has often been the driving force behind both technological innovation and the reform of intellectual property laws. So it seems that maybe we should accept the term, at least in a certain context, rather than seeing it as a prelude to moral panic, and also recognize that, if not gentle or sexy, piracy, at any rate, sometimes pushed law in the right direction. It is always useful to remember, for instance, that the video cassette recorder was considered a pirate device by the movie industry for quite some time before they realized — only after they were forced by the Supreme Court to deal with the technology — that it could be the source of considerable revenue.

I suggest that piracy should be reserved for instances of wholesale commercial exploitation of copyrighted material without authorization. Such usage, applied to bootlegged DVD or CD distribution, for example, makes some sense and is congruent with historical precedents. For less systematic acts of unauthorized reproduction and distribution, such as individuals who share files over P2P networks, the word pirate both seems like rhetorical overkill and might well backfire, as the content industries are apparently beginning to recognize.

international IP

More big words in international copyright

April 2, 2010 Kevin Smith, J.D. 1 Comment

Following up on an earlier post about the potential for fast-growing developing countries to adopt less restrictive, more growth-oriented IP regulations, I want to look at two concepts that are important for understanding international IP debates.

The first is “counter-harmonization,” which is used several times in the article I referred to about the BRIC countries by Jerome Reichman. The movement to harmonize international copyright laws resulted in the Berne Convention, which the US finally joined in 1988, and the TRIPs agreement (for “Trade Related Aspects of Intellectual Property”) adopted by the World Trade Organization in 1994. Those treaties have a lot to say about harmonizing levels of protection for copyrighted materials, but very little in regard to limitations and exceptions. In other words, parties to the agreements are obligated to provide protection without formalities and to extend protection for at least the life of an author plus 50 years. No similar obligation exists to provide any particular exceptions to copyright protection, such as educational viewings of films, free library lending, or reproduction of small excerpts for the purpose of research and scholarship.

In fact, the international treatises have generally seemed rather hostile to limitations and exceptions, even though they are as much at the core of the reason for copyright as is protection itself, at least insofar as copyright is intended to encourage creativity and innovation. Creativity depends on some rights of reuse as much as it does on the assurance of a market for new works. But in Berne and TRIPs, all exceptions in the national laws of the signers are made subject to a three-step test that has been interpreted, wrongly in my opinion, to be so narrow that many existing exceptions in national laws would violate its terms.

The call for counter-harmonization comes out of the WIPO development agenda, which has recognized that harmonizing only high levels of protection without also building in safeguards for reuse and innovation is contrary to the best interests of developing countries. Those countries are being encourage, by Prof. Reichman and others, to exploit the flexibility still available under Berne and TRIPS to adopt limitations and exceptions that best suit the needs of their own growing economies.

The other major concept that is currently getting some attention is “cross-retaliation.” The TRIPs agreement, for the first time in international law, gives countries the right to retaliate against another signer, if and when their IP rights are not protected, by imposing tariffs and other restrictions on other types of goods and trade. So if country A gets a ruling that its IP rights are not being adequately protected in country B, A can impose tariffs on manufactured goods or crops imported from B. This was new in the TRIPs agreement and has created some interesting problems. Pedro Paranagua, who is a law professor from Brazil and a doctoral candidate at Duke University’s Law School, explains in this blog post how retaliation can be used both to enforce IP protections and to penalize an IP producer who competes unfairly in other markets.

As Paranagua explains, the US and other developed countries want retaliation under TRIPs to be a one-way affair — available only to a country whose IP rights were infringed so that they could penalize the infringer in other markets. The WTO, however, ultimately allowed cross-retaliation to be two-way, so that a country whose markets in other goods are unfairly impeded — cotton is the market at issue in Paranagua’s post — could retaliate against IP from the offending country.

Cross-retaliation is another example of unintended consequences for the United States, and another indication that developing countries, particular those whose economies are growing rapidly, can use the international IP treaties to their own advantage. As the global economy becomes more and more competitive, it behooves each nation, including ours, to re-examine its stance on IP regulation with an eye to fostering its overall best interests, rather than the needs of only one segment of the world-wide market.

A lens on the digital challenge

March 29, 2010 Kevin Smith, J.D.

On March 19th a fascinating symposium was held in Chapel Hill, NC in honor of Laura (Lolly) Gasaway. Lolly, for many years Professor & Law Librarian at UNC Chapel Hill and now Associate Dean for Academic Affairs, is a prolific scholar and has had a tremendous impact on how libraries understand and work with copyright law. She is also a gracious and generous friend; meeting her has been one of the best parts of coming to work in the Research Triangle, even if we are on opposite sides of the great basketball divide. The symposium in her honor was a gallery of prominent and interesting speakers who witnessed to the full range of Lolly’s intellectual and practical influence.

I was particular interested in the remarks made by Professor Llewellyn Gibbons of the University of Toledo College of Law, who talked about the Visual Artist’s Rights Act (VARA) and its application in the digital environment.

VARA was adopted in 1990 and adds a section to the Copyright Act (section 106A) that carves out a special right for visual artists. An artist who creates a covered work under VARA gets a truncated version of the “moral rights” that are recognized in most other countries — a right of attribution and a right to ensure the integrity of the art work. VARA applies only to a narrow category of works — paintings, drawings, prints, sculptures, or still photographic images produced for exhibition only, and existing in single copies or in limited editions of 200 or fewer copies, signed by the artist. It is interesting to note that this is the only recognition of these moral rights in U.S. law, in spite of our commitment when we joined the Berne Convention to protect such rights for all rights holders.

Professor Gibbons raised the issue of how well or poorly VARA might apply to an artist who works in digital media. The real problem, he pointed out, is the limitation to works that exist in 200 or fewer copies. How do we talk about a limited number of copies in an environment that promiscuously makes copies every time material is displayed, download or transmitted? This question is remarkably similar to one that the Section 108 Study Group, co-chaired by Lolly, grappled with regarding the application in the digital realm of the limit on the number of preservation and interlibrary loan copies that a library can make.

Suppose an artist creates a digital work and displays it on her website. That, we could argue, is a single copy. But people will download that work and, without some control, soon there will be more than 200 copies. And even that way of stating the problem assumes that the ephemeral copies created in a computer’s memory whenever a site is visited do not count (they are not copyright infringements because of section 117 of the Copyright Act, but that does not determine whether they would count toward the restriction in VARA). Professor Gibbons discussed the possibility that a “download and delete” scheme, presumably based on coding that would prevent the 201st download and would prevent a downloaded copy from proliferating (similar to the DRM used by iTunes?), might preserve VARA rights for such an artist.

I am less than optimistic that the scheme Gibbons suggests could really work, but I look forward to reading his paper when the proceedings of the symposium are published in the Journal of Law & Technology. In the meantime, it seems very obvious to me that the idea of digital art is completely outside of what Congress was imagining when it drafted VARA 20 years ago. And that, perhaps, is the most important point. This attempt to imagine how VARA could apply to digital art clearly demonstrates the inability of copyright law, even with relatively recent revisions, to keep up with changing technology. It highlights the near impossibility of creating a law flexible enough to respond to new technologies. The real digital challenge is to create a copyright law that is permeable enough to provide “escape hatches” through which new technological possibilities can slide so that creativity is not inhibited for the long periods of time it takes for law to catch up with human ingenuity.

international IP

Getting hit with a BRIC

March 24, 2010 Kevin Smith, J.D. 2 Comments

The arena of international intellectual property and the WIPO Development Agenda is one I enter with considerable trepidation, because it is complex and shrouded in a language all its own. Fortunately, one of Duke’s own law professor’s, Jerome Reichman, is an always reliable guide, and I read with careful attention his article “Intellectual Property in the Twenty-First Century: Will Developing Countries Lead or Follow?” The article is itself technical and complex, but it is rewarding for its message to the developing world that they have a choice as they create or refine IP laws for their own best interests. Reichman argues persuasively that simply replicating the high-protectionist regimes in place in the U.S. and the European Union is not the only, or the best, option for countries trying to develop their own economies.

Reichman’s article is available here, on the web site for the Houston Law Review (in vol. 46, number 4).

The danger, of course, is that when levels of IP protection are set too high they can inhibit innovation and growth. Established technologies and industries can be protected to the point of becoming lazy, while new innovation and creative development can be stifled. Reichman cites several examples of this trend, in a general way, when he describes patent “thickets,” “blocking” strategies that prevent improvements and how overlapping IP claims can inhibit broad use of “platform technologies” for innovation. Anyone interested in a specific example of how patent protection can inhibit needed scientific development should read this blog post about hoarding of biological samples because of fears that patented drugs will be developed from them and increase the cost of health care for the developing countries that hold the samples.

Reichman proposes some specific strategies that developing countries, particularly that group of developing nations with very fast-growing economies that are known as BRIC (Brazil, Russia, India & China) countries, could follow to prevent these problems and to foster innovation and growth. In the patent arena he suggests several places where compulsory licenses would be productive – for secondary research, especially when it can offer an improvement on the original technology, and for third party suppliers whose involvement is necessary to supply a particular market in the public interest. He also advocates some doctrines that can be incorporated into IP law that would encourage growth. Here, for example, he suggests an “essential facilities” doctrine in patent law that would make it possible to “pool” overlapping patents when access to a vital technological platform for research is at stake. In copyright, he suggests that the idea/expression distinction be codified in national laws and that a broad, clear research exception be included, as well as a more flexible exception like the U.S. fair use provision.

In general, Reichman’s suggestions about how a combination of compulsory licenses and “liability rules” could be used to give IP law the flexibility to really encourage research and development point in a positive direction for the developing world. He also acknowledges that these countries will have to stand up against the pressure brought on them by the U.S and the E.U. to adopt imitative regimes of high-protectionist rules that, he argues, would ultimately be counter-productive.

As I read this article, I kept thinking about the concern expressed by politicians and the media about the high level of U.S. debt held by China and the general sense that these “BRIC” countries are mounting a serious challenge to the dominant place the U.S. has held in the world economy. If some of these fast-growing economies were to adopt Reichman’s recommendations, that competition could increase dramatically. Indeed, U.S. dominance might find itself “hit with a BRIC.” Perhaps the best way for the U.S. to stay competitive with the world is not to try a foist our regime, which seems to be counter-productive in the most literal sense, on others, but to move ourselves toward a more growth-oriented system of IP protections, limitations and exceptions.

Open Access and Institutional Repositories, Scholarly Publishing

Open Access at Duke

March 19, 2010 Kevin Smith, J.D. 17 Comments

Yesterday the Academic Council at Duke University unanimously adopted an Open Access policy for scholarly articles written by the Duke faculty. The policy was brought forward by a Provost-appointed committee of faculty and librarians that was chaired by Professor Cathy Davidson (whose earlier post on the subject is here) and Paolo Mangiafico, Duke’s Director of Digital Information Strategy. I also serve on the Task Force and participated with Cathy, Paolo and others in many discussion sessions where questions were raised and adjustments made to the final documents.

For those who would like to see the policy as adopted, which consists of a preamble, the policy itself, which is a single page, and a nine page FAQ, here is a link. There was also a news story that describes the policy quite well published by Duke News and Communications two weeks ago.

Several observations about the process of getting this policy adopted occur to me. First, I think we were all surprised to find that the idea of open access itself was fairly uncontroversial. Most of the difficult challenges we faced had to do with the process that will be implemented for faculty to make their works available in a repository, not the concept of openness. Now we are faced with developing procedures and systems that will be easy and intuitive for faculty, which may be the greatest challenge yet. Our faculty have told us, in essence, that if we build it they will come, as long as we build it well.

In that vein, I was interested by this blog post called “Let’s Make Open Access Work.” I don’t agree with all of it (as the author himself predicts), but it is a interesting set of challenges to reflect upon as we design OA systems.

There were, of course, questions about the impact of OA on journals, and the presence on the task force of a representative of the Duke University Press and others with ties to traditional publishing was a great help. But it is also true that we heard a lot of complaints directed against the traditional models of scholarly communication from the faculty.

One thing that librarians often believe is that faculty will only be motivated for open access by their own self-interest — impact, citation and the like. But yesterday Cathy Davidson made an eloquent plea for greater access for people around the world who are blocked by high subscriptions costs and other “toll-access” policies. All round the room, heads were nodding as she spoke. I was reminded that most faculty members genuinely do care about the overall welfare of scholarship and learning.

Finally, I was very impressed by the collegial and respectful system of faculty governance that I got to observe yesterday. The challenges raised throughout this process about open access were very real, and the work of getting to a unanimous vote was considerable. But all the way along, and especially in yesterday’s Academic Council meeting, I had the strong sense that people were listening to each other and learning as they conversed, which is, I believe, shared decision-making at its best. Of course, it helps that they ultimately made the decision that I favored; this is the real world, after all!

Uncategorized

It probably needs to be said

March 17, 2010 Kevin Smith, J.D. 3 Comments

Copyright junkies will remember the superb blog maintained for several years by copyright scholar, author and practitioner William Patry. Many will also recall that Patry shuttered his blog in 2008, in part because of his growing perception that readers were not able to separate his personal opinions expressed therein from official policies or opinions of his employer.

I can not claim even a fraction of Patry’s erudition or experience around copyright matters, but I am afraid I can claim a little bit of his problem. Several recent communications about this blog have pushed me to want to be very clear about the relationship between what is written here and the policies of Duke University.

To begin with, I have to acknowledge that the problem of separating my opinions from Duke policy is a little more difficult on this site because it is part of the Duke Libraries website and is maintained, as is the whole Libraries’ web presence, by Library IT staff. Nevertheless, much of what has been and, I hope, will continue to be written here is my opinion, and solely my opinion.

To begin with, I need to distinguish the blog from other parts of the web site. Many of the “static” pages are intended to provide guidance for Duke faculty, staff and students, as well as others who stumble across them. These pages contain, to the best of our ability, objective analysis and application of copyright law. Likewise, one category of blog posts, that labeled “Copyright Information Notes,” is used for explanations of copyright law principles, provisions and applications. All of this material, while not University policy per se, is somewhat more objective than mere opinion and is intended to be useful in guiding practice.

All of the rest of the blog posts, however, reflect my own opinion and not in any way the policies of Duke University. Indeed, I often express opinions about what legislation ought to be adopted or how a court in a particular case ought to rule that are at odds with my advice to individuals engaged in actual creation or use of copyrighted materials at Duke. This is because the way the law actually is can often be very different from how I think it ought to be.

To be very specific about this point, let me refer to two recent posts on this site. In one, I expressed agreement, after long uncertainty, with the general shape of a fair use argument for streaming digitized video for teaching purposes. My agreement with this argument, however, does not mean that Duke will suddenly embrace the practice, nor that I will encourage the University to do so. The reason is that, first, even well constructed fair use arguments do not always win in court and, second, that defending a fair use case is very expensive even when the defendant is successful. So my advice on this matter will always be tempered with a risk analysis for the University and a discussion of how the benefits of a new practice weight against the potential costs involved. This is a discussion that is unique to each institution and must remain distinct from the more theoretical opinions expressed in blog posts.

As another example, let me say very clearly that my comments about the flaws and/or causes for concern that I see in the plaintiff’s motion for summary judgment in the Georgia State copyright infringement lawsuit cannot be used to speculate about Duke’s policies about the practices in question. Indeed, Duke’s policies are clearly formulated and usually can be found on its website. Those interested can look for official documents and neither need to nor should assume that the opinions I express about how other conflicts ought to be resolved reflect University policy or practice.

Finally, I want to express my gratitude to Duke for allowing me the leeway to express my opinions in this manner. No one at Duke has ever challenged my right to say what I please in this space and this current message is not instigated by any internal concerns at Duke. Instead, I have become aware that some of my readers from elsewhere have tried to draw erroneous conclusions about Duke from what I have written. I hope that readers in the future will be more careful to recognize the nature of what they read here and that I will, on the basis of that care, be able to continue to trespass on Duke’s generosity by expressing my own opinions on this site.

Summary judgment in the GSU case?

March 9, 2010 Kevin Smith, J.D. 9 Comments

Both sides in the Georgia State copyright infringement case – which challenges as infringement the use of excerpts from copyrighted content in the University’s electronic reserves and course management systems – have now filed motions for summary judgment, with supporting briefs and affidavits. The actual motions and arguments in support can be found here, at filings 142 (plaintiffs) and 160 (defendants).

These filings, where each side asks the judge to decide the matter without trial on the basis of the documents filed with the court, are not unusual in copyright cases. An increasing number of civil cases of all kinds are decided on summary judgment, so this is “worth a shot” for both sides. And, of course, each side believes it has an argument that wins hands down.

The plaintiffs in the case – Cambridge University Press, Oxford University Press and Sage Publications – argue that supplying readings to students without paying permission fees each semester for pretty much everything is obvious copyright infringement. They specifically attempt to refute the claim that such copying is fair use. Several aspects of that argument should cause great concern in higher education.

First, the plaintiffs argue that a fair use “checklist” is the wrong tool for helping faculty members make fair use decisions. The checklist adopted as part of GSU’s new copyright policy is, they assert, “skewed in favor of a “fair use” outcome.” This is worrying because so many institutions have adopted a form of the checklist, believing it to be appropriate in part because the Association of American Publishers seemed to endorse it when they approved revised copyright policies that include the checklist in their negotiations with Cornell and several other institutions. In fact, the Copyright Clearance Center, which is the permissions collection agency for all three plaintiff publishers, itself suggests a version of the checklist that can be found here. If there is a distinction between these checklists and that used by Georgia State, we need to know what it is, but as far as I can tell, the CCC checklist works in exactly the same way that the plaintiffs object to regarding the GSU version.

If the checklist is not a good guide for fair use, in the publishers’ opinion, what should we look to? The plaintiffs suggest two major guideposts for fair use – the notion of transformation and the Classroom Copying guidelines from 1976. Transformativeness, of course, never appears to apply to copying of small excerpts for distribution to students, unless it is given a very broad definition which the plaintiffs deny here. And the guidelines for classroom copying, which were adopted in spite of objections from higher education and are intended to apply to a different situation, cap the length of an fair use excerpt at 1,000 words. Such a limit would rule out about 99% of all readings offered to students under fair use. So we are left to ask what would be fair use in an e-reserve situation; the plaintiffs’ brief suggests that almost nothing would be permitted without paying for permission each semester.

Interestingly, the defendants’ brief does not make an argument about fair use at all, although it is implicit in their reliance on their new policy. Instead they argue two fundamental points. First, they claim that the suit is misdirected under the narrow exception to sovereign immunity that the plaintiffs are trying to exploit. This is the force of the argument that none of the named defendants have a direct or indirect role in any copyright infringement, so an injunction against them would be ineffective and the suit, therefore, should be dismissed. Their second point is that the requested injunction, because it does not permit any room at all for the exercise of fair use as defined by the GSU policy, is too broad and vague to meet the basic requirements for such orders.

I have to note in regard to these cross motions that I am not particularly a fan of deciding fair use arguments on the basis of summary judgment. Fair use is intended to force courts to make a detailed examination of the circumstances of the use in each case. All too often it has become as mechanical in court as the plaintiffs complain that the fair use checklist is. Courts ask routine and traditional questions regarding each factor and then add up the results; they do not, usually, probe as they should into specific circumstances, for which the usual questions are often a very poor substitute. This unfortunate tendency is made much worse when fair use cases are decided on summary judgment, where all the judge has is the documents filed and is unable to ask questions and seek more specific information.

So I guess I am left hoping, in this case, for one of two results. Either the defendants’ motion should be granted, in which case the case goes away on essentially procedural grounds and we are all left where we have been for years, or both motions should be denied and the case taken to trial. In the latter case, the fair use dispute could be fully aired and a useful record developed. Only in that situation would other universities be able to glean really helpful guidance from a decision.

Smoke got in my eyes

March 5, 2010 Kevin Smith, J.D. 2 Comments

It has been widely reported that UCLA has decided to re-start its program of streaming digitized videos for course-related viewing. They do so based on a set of principles adopted by the faculty, which can be read here.

Readers of this blog will recall that I have previously expressed ambivalence about whether and how this practice can be justified under our current copyright law. I expressed that ambivalence in this posting, and many comments flowed in, most from experts for whose opinions I have great respect. Several were more sanguine than I about the legality of streamed digital video, while some were certain that no justification could be found.

I still had not made up my mind when I read about UCLA’s decision to resume their activities. But yesterday’s article in Inside Higher Ed., which includes statements from the lawyer for the trade group that originally threatened UCLA , has really helped me clarify the issues. It seems to me that there are two glaring and obvious misstatements in AIME’s denunciations of UCLA, and that these misstatements actually point out why the practice is justifiable.

First, AIME’s lawyer insists that UCLA will stream videos to “an unlimited number of students.” But a cursory reading of the principles adopted at UCLA shows that the program will limit access to each video only to students enrolled in a class for which that film is required content. Surely that is a limit on the number of students who will see the film using UCLA’s streamed service; only those students who can authenticate into the course management site for the particular course will be able to view each film. In other words, the audience is limited in exactly the same way that it would be if the film were shown in a classroom to the assembled students.

Second, the remarks from AIME stress the fact that UCLA will buy only a single copy of each film, as if that is different from prior practice. But of course, most universities buy only one copy of most DVDs, which are then shown in class to a group of students or put on reserve so that students can come in and watch the film in a library or media lab one at a time. During the time UCLA had suspended its program, this was the practice it followed. What it did not do was buy large numbers of each film and hand them out to individual students, which the AIME statement seems to suggest is the only alternative.

This, of course, is absurd, and it is disingenuous. In its negotiations with UCLA, I am very sure that AIME did not propose that there was some number of multiple DVDs which, if purchased, would render the practice of streaming that film for student viewing fair. If there is such a number, I suggest that AIME should tell us what it is; I am sure many schools would prefer to buy that number of copies in order to provide the streaming services our faculty and students want while still not exposing themselves to liability. But multiple sales are not the issue here.

What AIME is seeking, naturally, is repeated licensing fees. They are happy to have schools buy only one copy and stream it if, for each film, a license fee greatly in excess of the cost of the DVD itself is paid, and paid each semester. The film companies do not want to settle for slightly increased sales of DVDs in this matter, they want to turn our campus intranets into pay-per-use jukeboxes that will provide a new and virtually unlimited income stream.

In the past, universities bought single copies of films and showed them to groups gathered together in a classroom or to students on a one-to-one basis. The film companies may have grumbled about the doctrine of first sale and the face-to-face teaching exception that permitted this, but there was little they could do. Now those film companies hope to create new revenue by forcing us to pay to show the same single copy to the same students over a closed network. In short, they want large fees for space-shifting.

The fact that AIME’s attorney uses this phrasing, with its two statements that misdirect the reader from the real issue, suggests that he realizes how strong the fair use argument, based on space and time shifting to accomplish a purpose that is specifically authorized by the copyright act, really is. Rhetoric about single copies and unlimited students is a smokescreen, and when the smoke is cleared away it is easier than it has ever been for me to see the powerful fair use argument in clear focus.

A pyrrhic victory

March 3, 2010 Kevin Smith, J.D. 1 Comment

There was a disturbing decision in a copyright case from the US Court of Appeals for the Federal Circuit last week. The Court of Appeals held that a U.S. postage stamp issued to commemorate the 50^th anniversary of the armistice that ended the Korean War infringed a copyright held by the sculptor who created the famous statutes of soldiers matching in a column that is part of the Korean War Veterans Memorial in Washington D.C. The stamp is based on a photograph taken by a photographer who originally intended it as a gift for his Korean War veteran father, but later sold copies to, among others, the U.S. Postal Service.

Commentators on the decision have focus on the Circuit Court’s rejection of the lower court’s ruling that the stamp makes fair use of the statues; see comments here and here (with a link to the full decision). These commentators are rightly troubled by the finding on appeal that the stamp is not a transformative use of the statues. But I want to consider a couple of slightly different issues.

First, the right of Frank Gaylord, the sculptor, to assert a copyright claim against the United States is not entirely clear. One judge on the three judge panel dissented strongly from the majority conclusion largely on the basis that the United States, which commissioned the work, held rights in it by both statute and contract.

The majority holds, in its fair use analysis, that the use of the photo on a postage stamp was a commercial use, even though the “commercial” entity involved is a self-supporting agency of the US government. The decision that the sculptor is entitled to damages from the US Postal Service, in addition to the $775,000 he was paid for the original work, has direct implications for all of us as taxpayers. The reason for statutory and contractual claims by the government to rights in works it commissions is precisely to protect taxpayers from these kinds of claims. To call this stamp a commercial use ignores the relationship between “we the people” and the postal service, and it dishonors the real intent of the stamp to further honor Korean War veterans.

The second issue I want to raise is the impact of this decision on amateur photography and on public art. It is interesting that the court does not hold that the postage stamp has damaged the market for the original; they even note that the sculptor admits that the stamp has enhanced the value of the original work. Yet without evidence of market harm, they reject fair use based on the other three factors. By shaping the decision this way, the court seems to suggest that amateur photography of publicly visible works of art could be infringing. The original purpose of the photograph, after all, was purely personal. And, of course, personal uses do not get a mention in the fair use provision as one of those uses that are presumptively fair.

So is it possible that an artist whose work is displayed in public could have an infringement claim against a tourist who takes a picture? It seems unlikely, but this decision strengthens the possibility. The court explicitly considers the exception added to copyright law for photographs taken of architectural works and finds that sculpture does not fall within its ambit. If such an exception is needed for photographs of buildings and does not apply to sculpture or other art works, the status of photographs of the latter is clearly in doubt.

Apparently what we need is Congressional action to tell the Federal Circuit that this decision was wrong by enacting a separate exception for photographs of public art.

And then, finally, there is the chilling effect that this decision must have on commissions for public art. A single artist has here won a windfall against the government, but it is surely a Pyrrhic victory as regards artists in general. If works of public art cannot be photographed and displayed in order to encourage people to visit, admire and reflect, the reason for commissioning such works in the first place is diminished. The majority writes in its decision that allowing the government to “exploit” the statues “will not advance the purpose of copyright in this case,” but they do not explain why that is so. Indeed, if the purpose of copyright is to create incentives for artists to create, the opposite is true. Mr. Gaylord was well paid for his work and there is no evidence that licensing for a postage stamp was ever imagined as part of his incentive (although coffee mugs and commemorative plates apparently were). But the potential effect of the ruling on future commissions could depress the incentive for creation, a result entirely contrary to the point of copyright law.

By the way, there is another story of a lawsuit over photographs of a public art work here, describing a suit over the famous statue of Jesus that stands over Rio and was “destroyed” by filmmakers from Columbia Pictures in the movie 2012. More reason for a statutory (pardon the pun) exception to the copyright in public art.

Discussions about the changing world of scholarly communications and copyright