How fair use was born

May 21, 2009 Kevin Smith, J.D. 1 Comment

The history of copyright law is a fascinating study. Really, it is. One truism about that history is that copyright protection (as a body of law distinct from the earlier privileges granted to printers) arose at the same time that romatic ideals of original authorship did. The continued influence of that romantic, and highly fictionalized, view of authorship is evident in the ill-informed and self-serving comments of author Mark Halpern in this Wall Street Journal op-ed and in the new book he is flogging. But I was reminded, by this blog post criticising Halpern from Copycense, of an article that really deepens and complicates the history of authorship, originality and copyright. In “The Ideology of Authorship Revisited: Authors, Markets, and Liberal Values in Early American Copyright,” Oren Bracha argues that the romantic ideal of authorship was in a continuous tension with market forces and social values from the inception of the law and throughout its development in the US. He mines this tension for rich veins of insight into the nature of originality, the “work” that copyright protects and the rules about who should own the rights created by copyright law. It is in the c0ntext of his discussion of how the protected work was defined that I found a fascinating perspective on the origin of fair use.

It is hard to believe that in the mid-19th century a copyright holder did not have the right to authorize an abridgment or translation of a book, or to object to such unauthorized efforts. Yet in 1847 Justice McLean held, in Story v. Holcombe, that an abridgment did not infringe the rights held in the original, even though he admitted that it was a market substitute for that original. Six years later, Justice Grier found that a German translation of Uncle Tom’s Cabin was not an infringement of Harriet Beecher Stowe’s rights in her original novel (Stowe v. Thomas, 1853). Both an abridgment and a translation are clearly derivative works under today’s law, the exclusive rights to which are reserved to the copyright holder (see our last post about a translation law suit in Argentina). So what were these justices thinking? As Bracha points out, there was a shift in progress from looking primarily at the new work’s “usefulness to the reading audience” to primarily protecting the market value of the original in all its potential forms. These two cases are on the trailing edge of that shift; the last gasps of the older notion of allowing free adaptations when there was a clear social benefit.

The remarkable point, to me, is that the development of fair use occurred within this same transition. As Bracha sees it, fair use was “a vehicle for the radical enlargement of the scope of copyright.” Throughout the middle of the nineteenth century, the scope of copyright was dramatically expanding from a limited “printers” right to prevent near-verbatim reproductions to a full-blown notion of ownership over an “abstract intellectual essence” that could find express in a myriad of forms, all of which were under the control of the author. Fair use, created by the same judges who were overseeing this expansion, became a substitute for all of the socially beneficial uses that were previously outside the scope of copyright. Fair use is the bete noir of rights holders and copyright maximalist, yet Bracha argues effectively that it really developed in order to make judges more comfortable with a vast expansion of copyright’s scope, precisely to provide an economic windfall to rights holders.

Bracha offers a nice summation of the tension between economic protectionism and a social ideal of broad dissemination of knowledge and information that is, he says “inherently built into a modern copyright system.” As he phrases it, such a system “creates private exclusion power over information in the name of maximizing the free dissemination of information.” Would we actually be better off, to ask a radical question, if rights holders did not have control over translations, as they did not in 1853? Perhaps the students of that Argentinian professor that I wrote about last week would be. And it does not seem that fair use would do those students or their professor any good at all, even if they were in the US. It is hard to imagine a US judge today finding that fair use would permit an unauthorized translation even in a situation where no commercial translation was availabile. So the addition I would make to Bracha’s fascinating history is this observation: the massive expansion of copyright’s scope and its term of protection has forced fair use to do work it was never intended to do, and it is no longer an adequate safeguard of social interests; perhaps, instead of comforting ourselves with the fiction that fair use is good enough, we need to go back and look critically at the scope of copyright itself.

Enforcing scarcity

May 15, 2009 Kevin Smith, J.D. 3 Comments

For those in academia who take comfort in the comparative dearth of copyright infringement lawsuits against professors, this news out of Argentina will come as a rude awakening. Just as we have gotten used to the idea of academic presses suing academic institutions, as in the Georgia State University case, now we have a professor being charged with infringement in a criminal case (which is not really unusual in South American copyright suits).

So what did Professor Horacio Potel do? He made Spanish language translations of some 20th century classic works in philosophy (Heidegger, Derrida and Nietzsche) available to his students. He asserts that such versions simply are not available for purchase to his students.

Unfortunately for Professor Potel, lack of availability is not really a defense against copyright infringement. In a country with a fair use provision (US, Japan, Israel), such unavailability might help with the forth fair use factor, the impact (or lack thereof) on markets for the original. Rights holders, however, often point out that this factor includes potential markets, and asset that it should be their option whether and when to exploit a particular market. Thus the answer to Professor Potel’s dilemma from those who hold the rights in these works is basically that his students are out of luck. For those following the debate about whether copyright laws do more harm than good at The Economist, this instance where copyright is being used to enforce the unavailability of educational resource ought to weigh heavily on the harm side of the balance. (By the way, the voting on the motion showed 71% agreeing that the law did do more harm than good, while 29% felt it was more beneficial).

It is worth noting, while looking at an international infringement case, that the principle international treaty on copyright law, the Berne Convention for the Protection of Literary and Artistic Works, does not contain the same broad exclusive right for “derivative works” that is found in US law. This is probably a good thing, since it is sometimes very difficult to define exactly what is a protected derivative work. Leaving that definition up to individual countries seems like a good idea, but it really won’t help Professor Potel. The Berne Convention does mandate that its members protect two specific derivatives — translations, in article 8 (sorry, Professor) and cinematic adaptations in article 14. I have little doubt that Argentinian law includes those exclusive rights, so Prof. Potel must, I fear, base his defense on social utility and lack of market harm, two claims that don’t seem to carry much weight these days.

Licensing, Technologies

Click-wrap and illusory promises

May 12, 2009 Kevin Smith, J.D.

At the end of my last post I returned to a frequent theme, the unfairness of “clickwrap” licenses and the fear that they are over-enforced by courts, in spite of the inability of users to negotiate the terms or avoid enforcement of these one-sided deals.

So I was rather pleased to find an exception — actually a series of exceptions– to this over-enforcement in a recent case out of the federal district court in the northern district of Texas. While this line of cases does not accomplish what I have wished for, a ruling that copyright law and its exceptions should preempt non-negotiable contracts, they do show that, in some circumstances, courts will reject a clickwrap agreement when the seller takes too much advantage of its powerful position.

Cathryn Harris agreed to a clickwrap license when she signed up for a particular online program run by Blockbuster. Such licenses, of course, condition service or access on agreeing to a set of terms that is wholly non-negotiable; all the user can do is click “I Accept” or forgo the service entirely. I have complained about enforcement of a similar licenses in the Turnitin case by a court in Virginia, where the students were compelled by their school to sign up with Turnitin. In this case, when a dispute arose and Ms. Harris filed suit against Blockbuster, the company tried to enforce the clause in the clickwrap licenses that sends all disputes to arbitration (which is much less expensive). Ms. Harris opposed the motion to compel arbitration, and the Texas court sided with her, ruling that the entire agreement, including the arbitration provision, was invalid.

The reason the court rejected the license was that it contained a provision saying the Blockbuster could change the terms of the agreement at any time, without notice. Such provisions are not uncommon in clickwrap licenses, because the nature of the agreement makes it impossible for the seller to contact everyone who agrees to the terms of use. But here the court said that such a clause makes the contract “illusory.” Contracts, after all, are an exchange of promises, and a one-sided, “we can change the terms anytime” clause really means that the side that drafted the agreement has not made any promise at all that it is bound to stick to. When an apparent promise really is just statement of discretion — “I will pay you $20 to wash my car if I decide it was worth it” — courts call those contracts illusory because there is no real exchange of promises.

As this analysis of the case shows, there have been several cases in which such clauses allowing one-sdied changes have caused a clickwrap agreement to be found illusory. It is interesting that they are all about arbitration. I suspect this is because arbitration is something that must be based on mutual agreement, and courts are reluctant to limit a person’s access to the legal system based on a promise they could not undertake voluntarily.

For the purposes of our concerns here, this case is a small indication that clickwrap licenses must be drafted carefully, and that the fact that users seldom read such agreements is not an excuse to overreach too far. When the issue is important enough, a court will occasionally void a one-sided agreement rather than enforce terms that put one party at too great a disadvantage. Perhaps we will soon see such a willingness to reexamine clickwrap agreements when the disadvantage caused is a loss of those user rights that Congress so clearly intended when it drafted the copyright law.

Learning from ambiguity

May 6, 2009 Kevin Smith, J.D.

I have long believed that one of the most important skills one can develop in life is the ability to tolerate ambiguity and to learn from all side of a complex and irresolvable situation. Perhaps that philosophy helps explain how I can tolerate being a copyright lawyer in the current IP environment. But I continue to have an especially ambivalent reaction to the case involving the plagiarism detection software called Turnitin. I wrote about the district court decision over a year ago. Now the appeal has been decided — a win for Turnitin on ever front, upholding the major parts of the district court ruling and reversing only that aspect that disfavored iParadigms, the Turnitin parent company — and I still find myself feeling rather torn. So now I am trying to learn from the ambiguity.

The heart of the case, and the major issue affirmed by the Fourth Circuit Court of Appeals, is that Turnitin makes a fair use of submitted papers when it copies and stores them to be compared with later submissions. On this issue, I have been convinced; the 4th Circuit opinion has put to rest my earlier doubts. I still don’t think Turnitin is a particularly useful tool, especially for higher education, but the reasoning of the court on the fair use issue is so clear and compelling that I cannot resist their conclusion. Besides, I really wanted to agree with them on this point all along.

There are two important points that I want to emphasize in the appellate decision that really help explicate fair use. First, the Court is very clear that a work can be transformative, and so a favored candidate for fair use, even when the second work does not add anything to the original, but merely copies it for a different “function or purpose” that that for which the original was created. Here is the conclusion of the Court:

“The use of the copyrighted work need not alter or augment the work to be transformative in nature. Rather, it can be transformative in function or purpose without altering or actually adding to the original work.”

The Ninth Circuit has made similar rulings regarding Internet indexing in Kelly v. Arriba Soft and Perfect 10 V. Amazon, but it is nice to see this conclusion, which really broadens the scope of the transformative use analysis, arise in another circuit as well (especially in the one in which I live and work). This is a significant advance in the analysis of transformative uses over its original discussion by the Supreme Court in the “Oh Pretty Woman” case, and it offers grounds for hope that many of the innovative uses of copyrighted materials that new technology make possible could be considered transformative.

Even more exciting to me, is this remark made by the Court as it considered the second fair use factor, the nature of the original copyrighted work:

if the disputed use of the copyrighted work “is not related to its mode of expression but rather to its historical facts,” then the creative nature of the work is mitigated… the district court concluded that iParadigms’ use of the plaintiffs works “related solely to the comparative value of the works” and did not “diminish the incentive for creativity on the part of the students.”

This specific holding would benefit only a fairly limited class of uses, I think, but it is significant to me because it involves the Court’s recognition that the incentive structures for different kinds of works differ. Since the incentive structure for academic work is significantly different from that of commercial production, I would argue, the scope of transformative fair use for academic work should be broader than it might be for Disney films or songs by U2. The reasoning of the Fourth Circuit here, its willingness to ask how this specific use impacts the incentive for these specific authors, takes a step toward that kind of argument.

In general this decision is a very comprehensive and cogent fair use analysis that deserves to be widely read. So why am I still feeling ambivalent? Because the Court never did address the issue that troubled me most in the lower court’s ruling, the assertion that the “click-wrap” license that the plaintiffs had to agree to in order to get access to the site was valid and enforcable, even thought the plaintiffs were minors and took steps to indiccate that they did not agree to the non-negotiable terms. The appellate ruling, based as it was on fair use, never needed to address this holding, but I continue to think it was a mistake. The fact that courts will give such weight to contracts that users can neither negotiate nor avoid suggests to me that this is a problem in need of a legislative solution. I would like to see the copyright law ameded to state that non-negotiable contracts do not preempt copyright law; that is, that consumers cannot give away their statutory rights as users of copyrighted content unless they have a meaningful chance to do so intentionally and with forethought. If we could add such a provision to the federal law, my ambivalence about the Turnitin case would vanish altogether.

A flurry of activity

April 30, 2009 Kevin Smith, J.D. 1 Comment

There has been a sudden burst of activity in the Google Books case and the process of arriving at a settlement of the copyright infringement claim brought against Google by a group of authors and a publishers trade group. Last week Publishers Weekly reported that Judge Chin, who is hearing the lawsuit, rejected a motion to allow the Internet Archive to intervene in the case, which would have meant that IA would become a official party to the litigation. As PW says, “The IA wants to remove orphan works from the settlement and limited the settlement to rightsholders who have filed a claim.” With the denial of their motion to intervene, IA will have to look for another way to attain this end. More on that in a minute.

This week, two quite surprising developments have been reported (and really, the denial of IA’s motion was not very surprising). First, Judge Chin has decided to delay the deadline for authors to opt-out of the settlement class by four months (until September 4), with a parallel delay in the final hearing to approve or reject the settlement (until October 7). It seems Google had asked for a shorter delay in the deadline, and all parties seem to have been surprised by this ruling. But maybe it is not so surprising in light of this article in yesterday’s New York Times reporting that the Justice Department has decided to begin an inquiry into whether the settlement agreement poises an anti-trust problem. It is hardly a novel thought that there might be a anti-trust concern in the proposed monopoly over digitized books that would be created by the Google settlement, but it is, perhaps, unusual for the Justice Department to take notice of those concerns so quickly and to act before there is a final hearing on the settlement. Perhaps it was notice of that decision from Justice that prompted Judge Chin to delay the deadline and hearings.

So with this extra time, what should the concerned parties be doing? Specifically, is it possible to get the judge to limit the settlement to the parties in the litigation and to exclude orphan works? This long blog post by Professor Pamela Samuelson about the settlement suggests that there is another option, an objection by members of the putative class to the very certification of that class. As Samuelson points out, there has not yet been any hearing on whether or not the class in this class action suit really represents all of the authors who would be members of it, and with the settlement, there is not likely to be such a hearing. Google, as the defendant in the suit, would usually challenge a class certification and force the court to decide that the plaintiffs before him really do represent the rights and interests of all of the proposed class members. But with the settlement, Google has a huge financial incentive to support the class certification rather than oppose it — only through class certification will they get the compulsory license to digitize orphan works that is really at the heart of this settlement.

It is hard to believe that the Authors Guild really does represent the interests of the millions of rights holders in orphan works who, by definition, are not exercising those rights and who will not gain from the settlement. To include orphan works in the settlement is a shortcut to a lucrative business model, not a genuine effort to protect rightsholders, and it will likely derail legislative efforts to address the orphan works problem in a comprehensive way. It should be noted that even though the settlement is technically non-exclusive, no one else who undertakes a digitization project in the future will be able to get such a compulsory license for orphan works, since it depends on an extremely expensive and difficult manipulation of a very quirky aspect of US law, the class action mechanism. So if the Internet Archive really wants to exclude orphan works from the settlement, their best move would be to assist copyright holders who are members of the putative class to file an objection to certification and try to force a full hearing on the issue of representation.

If a class was ultimately not certified, the settlement would apply only to the parties in the litigation, and one has to believe that those parties would not be interested in settling unless they could get the immense commercial advantage that a class settlement would provide. The final result might be that the fair use issue with which the case began would actually go to trial. And that, I think, would not be a bad thing.

Ancient texts and a modern database

April 27, 2009 Kevin Smith, J.D.

What could be controversial about the United Nations launching an online database of 1,200 ancient documents from around the world, the World Digital Library? Surely this is a significant contribution to making scholarship more efficient and open.

But several commentators, such as this one from Slashdot, have noted that the legal page of this database appears to suggest that there is copyright to be reckoned with in these documents. As Slashdot notes, since some of these materials are over 8,000 years old, this sounds like an unprecedented claim. It seems worthwhile to take a minute and try to sort out what is being said on this page, and what might lie behind it.

First, it is worth noting that the language the UN uses about copyright is very general and indeterminate. It merely says that the country that contributed the material is the proper source for copyright information and that it is the responsibility of the user to determine what copyright issues, if any, need to be addressed. This is pretty much just “cover your (self)” language designed to permit the UN to say “we warned them” if any disputes should arise. But are there really any possible disputes?

I know of no national copyright law per se that could claim an interest in materials this old for any person. But that is not to say that governments themselves might not claim such an interest, perhaps under laws designed to protect “national patrimony.”

Another possibility, depending on how the UN site is structured, would be a claim under a database protection law. Although the United States pretty well rejected database protection in the Supreme Court’s Feist v. Rural Telephone Service case, it is a fact in other countries. The US Supreme Court said that no copyright protection is available for “sweat of the brow,” so a database that merely compiles public domain documents or facts in an obvious and unoriginal way (like a phone book) is not entitled to protection. The Feist ruling would probably include a database like the World Digital Library if US law were applied. But other countries have taken measures to protect “sweat of the brow” by adopting special legislation that gives copyright-like protection to those who compile databases. The European Union’s Directive on the Legal Protection of Databases is one such law. If that law applied, and it could well apply to a dispute arising about materials from one of the EU member countries, certain uses of the material in the database would be prohibited. It is not at all clear that these database laws would prohibit isolated copying of ancient documents found therein, but they would certainly bar wholesale or systematic copying.

The area of database protection is a complex and contested one. There have been recent protests in Europe arguing that the database directive is ineffective and stifles innovation. In the US, there have been abortive attempts to introduce similar legislation, but they seem to have subsided, at least for now. Anyone who would like to know more about the nature and scope of database protection in the United States cannot do better than read Prof. Mike Carroll’s recent blog post on the subject, “Copyright in Databases.”

One more topic from eIFl: Fair Use

April 16, 2009 Kevin Smith, J.D. 2 Comments

Because part of my assignment at the eIFL IP conference was to talk about library copyright policies, it was inevitable that we would talk some about fair use. For one thing, it is what I know about, so I invariable began a discussion of a particular library issue by talking about how it would be approached with fair use versus how you could address the same issue in a jurisdiction without an exception like fair use. Although a few countries — notably Israel and Japan — have adopted a US style fair use exception, none of the countries represented at eIFL had such a provision. So we were left to discuss just how important it is, or is not, for libraries to function.

The conference began with a presentation from Becky Hogge, who was the Executive Director of the Open Rights Group in the UK and remains a writer and commentator on technology and IP. Becky ended her presentation by pointing us to a web site called Thru-You.com where someone named Kutiman makes music mixes that are created entirely from other videos on YouTube. It is hard to describe these videos, but a lot of fun to watch them. The point to emphasize here is that these videos are another example of the flexible application of fair use, especially regarding the role of transformative reuses of copyrighted content.

With that introduction, it was interesting to hear about and discuss the relative merits of fair use for libraries. I am sympathetic to the worry that simply adopting a word-for-word version of the US section 107 will not be effective in other countries. After all, section 107 was not added to the US law until fair use already had about 100 years of development in US courts, and the accumulation of case law has continued since the 1976 act was adopted. It is hard to know how fair use will function when exported to a country that lacks that common law foundation to support the rather vague terms of the “equitable rule of reason” that we call fair use.

Many countries seem much more comfortable with the specific exceptions that make up what is often called, at least in the Commonwealth Countries, “fair dealing.” The model copyright law that eIFL has prepared for developing countries basically takes this approach, with specific exceptions for personal research, educational activities, library services, and the needs of persons with disabilities, to name only a few. All of these are tremendously important, and the advantage of having these specific exceptions is that they give a level of certainty that fair use never offers. US law, of course, has lots of specific exceptions, and I wish it included more of those suggested by the eIFL model law. Nevertheless, I still think there is an advantage to fair use. There is no other copyright exception that offers the flexibility that fair use does, especially in the face of technological change. We simply cannot know that a specific exception that works today for libraries or for researchers will still work tomorrow when the needs and services have moved to a different type of technology that may implicate an entirely different set of rights. The shift from print-based interlibrary loan to a system largely using digital copies and digital transmission, which are clearly outside of the “single-copy” parameters of the specific ILL exception in section 108, offers an example of why the decision around fair use versus specific exceptions needs to be both/and, not either/or.

For anyone interested in how fair use works, and what problems it generates, in an educational context, there is no better place to begin than with the series of blog posts by Peter Jazsi as guest blogger for the Collectanea blog at the University of Maryland University College Center for Intellectual Property, which begins with this post called “Educational fair use: a provocation.”

The World Blind Union, Amazon and the Author’s Guild — more from the eIFL conference

April 9, 2009 Kevin Smith, J.D.

One of the most passionate and compelling speakers at the eIFL 2nd IP conference in Turkey last month was Chris Friend, who is the strategic priority leader for the World Blind Union’s Right to Read initiative and also works with Sight Saver’s International training blind leaders in Africa. A couple of private conversations with Chris and his wife Judy gave me a much-needed education on the copyright issues facing vision-impaired people and the wide array of technological solutions that could be available if the IP problems were solved. Also, our hotel room was next to that of Chris and Judy, so my wife and I were often lulled to sleep by the rhythmic sound of his text-reader. At the conference, Chris presented about the World Blind Union’s proposed treaty before the world Intellectual Property Organization “for blind, visually impaired and other reading disabled persons.”

The treaty, which is linked in a variety of formats from this page by Knowledge Ecology International, makes for interesting reading. It represents a carefully constructed effort to craft an exception to international copyright law that would make it easier for visually impaired people to find books in accessible formats. Of course, WIPO has not been very interested, until recently, in harmonizing exceptions and limitations to copyright law, only protection. But there are signs that that is changing, and the WBU proposed treaty would be a great place for WIPO to start.

The treaty includes five provisions that I want to highlight.

First, it would permit users to reproduce works into accessible formats without authorization and to distribute those formats on a non-profit basis exclusively to visually impaired persons (article 4a). Second, it would permit distribute on a for-profit basis if the work is not reasonably available in an accessible format (article 4c). Third, it provides a useful definition of what “reasonably available” means, pegged to the price of the non-accessible version of a work and distinguishing between what is reasonable in the developed world and what is reasonable in the developing world (article 4d). Next, the proposed treaty includes a provision to permit circumvention of technological protection measures when those measures would prevent the creation of accessible formats (article 6). Finally, the treaty would explicitly state that contractual provisions that are contrary to the treaty would be voided (article 7). These last two provisions are extremely important as any discussion of harmonizing limitations and exceptions gets started, and we should be grateful to the WBU for stating them so clearly and in such a compelling context.

All this took on added urgency for me this week as another group that represents visually impaired people, the National Federation for the Blind, held a protest outside the headquarters of the Author’s Guild. The protest, about which there are photos and a story here, was because of the pressure brought to bear on Amazon to disable the text-to-voice features on its Kindle 2 e-book device. As I have written earlier, the legal claim made by the Author’s Guild that Kindle was infringing their copyrights was insupportable, but nevertheless, Amazon choose to cave in rather than risk a court battle, even one it could clearly win. I find myself wondering why, if the Kindle feature is a copyright infringement, the Author’s Guild is not also opposing the text-reading software that Chris Friend was using in Istanbul; could it be something as obvious as avoiding really bad PR? Anyway, the National Federation for the Blind is now taking the Author’s Guild to task for opposing a technology that, whatever other uses it might have, would be a great boon to the visually impaired. Kindle 2 is not an ideal technology for blind people — one must still see well enough to turn pages in order to use it — but the text-to-speech function, combined with Amazon’s wide array of available e-books, would surely assist a great many people experience literature that would otherwise be unavailable to them. Copyright law should not, and as of now does not, when understood properly, stand in the way of this benefit. Neverthless, the flap over Kindle 2 helps make the point that exceptions for the blind and visually impaired must be built in to copyright law at the highest level in order to prevent self-serving misinterpretations from further burdening those who want to exercise their “right to read.”

Big victory for the public domain

April 6, 2009 Kevin Smith, J.D. 1 Comment

Sometimes big victories can happen even in small forums. On Friday a district court in Colorado — the lowest level of court in our federal system — issued a decision with big time implications. I have written several times before about the interaction of copyright law and the First Amendment protection of free speech, and in an opinion in the case of Golan v. Holder, Judge Lewis Babcock has ruled a portion of the Copyright Act unconstitutional because of a conflict with the guarantee of free speech.

The case involves a fairly technical challenge to a fairly technical provision of the law. The Uruguay Round Agreements Act (1994), purporting to implement agreements made about international IP protections at the World Trade Organization, restored copyright to foreign works that had already fallen into the public domain in the US because their copyright holders had failed to observe the formalities that the US required up until 1988. The result was that works that had previously been free for anyone to use suddenly were protected, and people who had used those works for years — like a community orchestra that played the music of Prokofiev — would be liable to infringement suits after a one-year grace period.

The challenge brought against the URAA claimed that taking back a work that had been free to use “altered the traditional contours of copyright protection” and therefore (based on some language from a Supreme Court decision in 2003) was subject to “ordinary First Amendment scrutiny.” This part of the claim was upheld at a higher level, by the Tenth Circuit Court of Appeals, in 2007. On Friday, the district court applied that First Amendment scrutiny and determined that the URAA was not narrowly tailored to achieve an important government interest and, therefore, was unconstitutional.

At least two aspects of this decision make it such a big deal. First, it is one of the first times a court has found an actual conflict between copyright protection and free speech. As I have argued before (repeating remarks made by Anthony Falzone, who was one of the lawyers for the plaintiffs in Golan), copyright, as a monopoly over expression, seems to create an obvious tension with free speech. In the past courts have said that fair use and the idea/expression dichotomy are sufficient insurance against unconstitutional suppression of speech, but now, in a fairly unusual set of circumstances, a court has found that even with those safeguards, provisions of the copyright law can go too far.

Second, this ruling makes clear that the public domain, that “commons” of material that is free for all to use and is the raw material for so much new creation, is an aspect of copyright protection itself that must be respected. If the URAA stood unchallenged, the potential for the government to revoke freedoms Americans already enjoyed in using pd expression would always exist. By affirming that the promise of the public domain is a part of the traditional contours of copyright, the court has given copyright users their first reason to cheer in a long time.

Given the importance of this case, it is certain to be appealed. As noted above, the 10th Circuit has already considered one aspect of it, so the prospects on appeal seem favorable. But the government will assuredly fight this ruling, since it will force them to rewrite a provision of the law arguably needed to conform with international agreements. There is no doubt that the law could be rewritten successfully; there are models elsewhere in the world of restored copyrights that respect the “reliance interests” of users that arose prior to restoration. As challenges proceed, however, it will be interesting to see if the argument made by plaintiffs that, in the US and because of our relatively unique First Amendment, American law cannot ever restore any copyrights after works have passed into the public domain, regardless of treaty agreements, makes any headway.

There is a discussion of this decision here, and the order from Judge Babcock is here.

Lessons learned in Istanbul

April 1, 2009 Kevin Smith, J.D. 1 Comment

Traveling to an exotic and chaotic city like Istanbul is inevitably an education, and visiting Aya Sofia and Topaki teaches one a great deal about the Byzantine and Ottoman empires. But the real learning for me came at the eIFL IP conference at which I was a speaker. A group of about 45 librarians from Eastern Europe, Africa and the former Soviet Union participated, and they taught me a great deal more than I could hope to have taught them. Many of these attendees were the designated IP representative for eIFL, parts of the mission of which is to advocate for balanced copyright laws around the world.

One thing I learned is that amazing work is being done by libraries all over the world in conditions, both political and material, that would discourage many from trying to provide all but the most basic library services. In Mongolia, for example, their copyright law is very new, adopted in 1992 after a period of socialist rule during which all intellectual property was considered state-owned. The transition to privately owned IP is hard to navigate, and both the law and the social structures in Mongolia have not yet reached a high level of development. Yet the Mongolian Corsortium of Libraries, represented in Istanbul by Baljid Dashdeleg, is trying to contribute its share of literature to the International Children’s Digital Library, whose mission is to “excite and inspire the world’s children to become members of the global community – children who understand the value of tolerance and respect for diverse cultures, languages and ideas — by making the best in children’s literature available online.” The generous impulse of the Mongolian consortium to participate in this mission is hampered by both the lack of exceptions for digitization in the copyright law and the absence of usable mechanism to seek permission from publishers. But I was deeply impressed by the willingness to work hard to achieve the goal of sharing Mongolian children’s literature more widely.

Which brings me to my second point, which is to note how clearly and unselfishly many librarians around the world see the need for open access to all kinds of literature. In addition to its IP advocates, eIFL also recruits open access advocates in each country in which it works. Many of those librarians are very advanced in their ideological and practical commitments to using the Internet to achieve greater access to knowledge. I was told with great pride, for example, about the Armenian Digital Library of Classical Literature by Hasmik Galstyan, a librarian from the American University of Armenia. It is one of hundreds of examples of how the potential of the Internet can improve education all over the globe. In many ways, these librarians, and their universities, are far ahead of the US in their commitments to, and even mandates for, open access.

Nevertheless, it is impossible to ignore the fact that copyright law seldom helps, and often hampers, the educational mission of the institutions represented at the eIFL IP conference. These developing countries quite naturally look to the international treaties (primarily the Berne Convention) and organizations (the World Intellectual Property Organization) as the create their own IP laws. But it is a universally recognized truth that these international efforts have done much to harmonize copyright protection at a very high level and have ignored harmonization in regard to the limitations and exceptions that are so important for education. Thus many countries have very strong copyright protect and very weak exceptions and limitations, and libraries are left to guess at what they can do, especially vis-a-vis digitization, or to simply take the risk and plunge ahead. One African librarian told me very bluntly, but courteously, that the United States, with its zeal to export tough IP protections and disinterest in helping other countries design appropriate exceptions and limitations, was a very negative force in international IP.

There are certainly signs of hope, however. The matter of exceptions and limitations has, for the first time, been put on the agenda of the WIPO Standing Committee of Copyright and Related Rights. That sounds like a small matter, but it represents a big victory. Perhaps even more promising are the efforts to get the WIPO to see exceptions and limitations to IP protections as part and parcel of the Development Agenda it adopted in 2007. That agenda recognizes, primarily in the area of patents and especially pharmaceuticals, that a level of protection appropriate for the developed countries may be stifling for those on the way up. For WIPO to recognize that these agenda requires more attention to copyright exceptions and limitations would be a giant step forward, one that eIFL is committed to realizing.

One of eIFL’s most important contributions to this discussion will be the Model Law it has drafted to aid librarians as they advocate for a balance copyright law in their own countries. I was given a copy of the law “hot off the presses” while in Istanbul, and told that it would soon be posted to the eIfl web site. In the model law (which I read on an airplane coming home and need to look at again when I can give it my full attention) is a sensible approach to both protection and exceptions that would greatly improve the international IP environment if adopted. It should be the starting point, in spite of some reservations I will discuss in a later post, of any discussion of international copyright in the future.

Discussions about the changing world of scholarly communications and copyright