As we round out January and the celebration of new works entering the public domain this year, Authors Alliance is pleased to bring you this post on a specific type of derivative work based on a work in the public domain: new translations of familiar stories. We are grateful to Authors Alliance’s research assistant, Derek Chipman, for authoring this post.
Public Domain
Earlier this month, we celebrated the latest trove of literary works entering the public domain, including Austrian author Felix Salten’s Bambi, a Life in the Woods. Written in German in 1923 and published in English translation in 1928, this celebrated coming-of-age nature novel, the basis for the popular Disney film, is now free for authors to use in any way they wish. However, it is important to note that translations are considered derivative works which are subject to copyright protection in their own right—while the original German Language text is now in the public domain, the 1928 English translation by Whittaker Chambers will not enter the public domain until 2024, since it was published two years after the original German. Similarly, the 1942 Disney film is also a derivative work with its own term of copyright protection and will not enter the public domain until 2037, including characters unique to the film adaptation like Flower the skunk. For more information about the public domain and derivative works, see our post on the topic from last year.
Translations and Copyright
So, what does all of this mean for authors and the public at large? It means that they can now freely access and download the original German text, but will have to provide their own translation or wait for a non-copyrighted translation in their preferred language if they wish to use the text in a language other than German. However, authors are still free to use the ideas and themes of the textual work, as these types of information are not protected by copyright. This also means that publishers will no longer have to pay the copyright holder when publishing a new translation of Bambi, a Life in the Woods, potentially increasing access to the work. For instance, this year, Jack Zipes has provided the first new available English translation since 1928 entitled The Original Bambi. Now, other translators can also translate the German original into English, or whichever language they choose, without having to obtain permission.
Why is This Important?
Translations of literary works enable these works to reach a wider audience and expose cultural works from different languages to readers. Different translations also lead to different interpretations of a work, and this can add cultural value to the work by situating a work in our time, like a recent new translation of Beowulf beginning with “Bro!” In the case of Bambi, Zipes claims that his new version affords the reader a translation closer to the original German, which many readers may find surprisingly more violent and dark than the original Chambers translation. Zipes states that his knowledge of Austrian German captures the dark and existential nuance of Salten’s language in the original work and that the 1928 translation contained errors that contributed to the “later misinterpretation of the Disney film.” However, at least one critic still prefers the 1928 translation, showing that different translations provide readers with more options to enjoy public domain works. New translations can add something new to the work and contribute to our cultural commons, complicating our understanding of existing literary works. Now that Bambi, a Life in the Woods freely roams the public domain, we hope our readers explore it to find new sources of inspiration.
The following blog post was authored by Becca Lynch, a student clinician with the Samuelson-Glushko Technology Law & Policy Clinicat University of Colorado Boulder under the supervision of Professor Blake Reid, as part of an Authors Alliance student clinic project on library e-book licensing legislation.
Over the past year, various state bills have been proposed that would require publishers to license e-books to public libraries under “reasonable terms,” the most notable of which being the Maryland bill, which passed and was set to take effect on January 1, 2022.
As the pandemic has shown, the importance of public libraries cannot be understated. As a tax-funded institution created solely for public benefit, regulation of e-book licensing terms is important for the sustainability of libraries’ e-book lending.
On December 9, 2021, the Association of American Publishers (“AAP”) announced its filing of a lawsuit attempting to keep the Maryland bill from taking effect, and on January 14, the state of Maryland asked the court to dismiss the lawsuit. As this bill is the only bill of its type currently set to take effect, the outcome of this lawsuit could trigger similar lawsuits against other such proposed bills, such as the one currently pending in Rhode Island. While New York passed a similar bill last year, Governor Kathy Hochul recently vetoed the bill, citing the possibility of preemption as a reason for doing so.
The primary component of AAP’s complaint against the Maryland bill is its supposed preemption. “Preemption” is a legal doctrine which applies to block state laws when those state laws are not compatible with federal law. But, contrary to both AAP’s complaint and the United States Copyright Office’s initial letter on the matter, a conflict preemption analysis (which applies when state and federal laws actually conflict) does not provide a clear answer, nor is the handling of conflict preemption by courts a straightforward matter.
Courts have used a wide range of possible approaches to preemption analysis in the context of federal copyright law, the primary ones being (I) a balancing test from a case called In Re Jacksonwhen the state law is alleged to conflict with U.S. copyright law, (II) deference to certain state market interests, and (III) examination of physical impossibility of compliance with both federal and state regulations. As a result, understanding and predicting the analytical approach a judge may take based on those available is a rather complicated process.
The test from In Re Jackson involves balancing a state’s interests (distinct from the interests of copyright law) against the potential for conflict between the relevant state law and federal copyright law. Under this test, the more substantial the state law interest undergirding the state law, the stronger the case is to allow that right to exist alongside federal copyright law. Moreover, there needs to be additional evidence to show that a claim arising from violation of the state law is more than a simple copyright infringement claim in order for the state law to not be preempted.
Under the second approach, deference to state market interests, courts consider whether there are significant state market interests animating the state law. Courts tend to allow state regulations that are designed to ensure a fair market, while finding that copyright law preempts state laws which force a copyright holder to distribute and license her work against her will.
The third approach is one where courts find that federal copyright law preempts state law in situations where compliance with both state law and federal law is impossible. In this situation, since the state e-book licensing laws do not deprive the publishers of their exclusive right to license e-books, complying with both state law and federal copyright law is not impossible. The publishers retain their exclusive rights and maintain control over the decision to license e-books to the general public. Only upon exercising this right must they abide by the reasonable terms within the state licensing law.
Maryland’s interests motivating its e-book licensing bills is simple, yet compelling: ensuring its citizens have access to culturally and socially significant creative works in the form of e-books. In addition, the law seeks to remedy an inequitable market situation by preventing publishers from abusing their market power to overcharge tax-funded public libraries. These interests are both substantial and distinct from those undergirding copyright law (which include, for example, incentivizing the creation of new creative works). The Maryland state bill would be enforced under state deceptive and unfair trade practice law, and as a result, the elements for bringing a claim under state law would contain much different elements than one under copyright law.
Ultimately, regardless of the analysis used, there is strong evidence that supports a finding that the e-book licensing bills are not preempted by federal copyright law under an implied conflict preemption analysis.
Although this lawsuit is still in its early stages, Authors Alliance will be monitoring its progress and keeping our members apprised of updates in the case.
Last week, Authors Alliance submitted a comment to the U.S. Copyright Office, responding to its new study about establishing a new press publishers’ right in the United States which would require news aggregators to pay licensing fees as part of their aggregation of headlines, ledes, and short phrases of news articles. Our comment, made in the second round of comments on this study, also responded to an initial round of comments from other stakeholders. Authors Alliance opposes a new press publishers’ right because it is contrary to the interests of our members and small press publications and moreover is inconsistent with longstanding principles of copyright law.
A New Press Publishers’ Right Would Not Help Many Authors and Publishers
In our comment, we explained that Authors Alliance does not support the adoption of a new press publishers’ right. As a policy matter, making it more difficult for news aggregators to enhance the availability of news articles means that those articles will likely reach fewer readers. Authors Alliance represents the interests of authors who have among their highest goals seeing their works reach wide audiences, and takes the position that this new press publishers’ right would not serve the interests of these authors.
While some commenters argued that news aggregation has led directly to a decline in author and publisher incomes, other commenters, such as the Copia Institute, publisher of the publication TechDirt, pointed out that news aggregation serves its interests by helping its news articles reach readers. As a small publisher, Copia’s business model depends on news aggregation to see its work make an impact, and making it harder for news aggregators to do this would thus not serve its interests. While larger publications may be able to extract licensing revenue under a new press publishers’ right, smaller publishers lose out on both licensing revenue and the wide audiences they can reach through news aggregation. And authors who publish in press publications are not a monolith: while some authors may prefer to prioritize maximizing licensing revenue from onward uses of their work, other authors, such as many of our members, instead prioritize seeing their works reach broad audiences. Reaching wide audiences can help authors accrue reputational capital and advance their careers, which are some authors’ primary goals. Authors may also themselves aggregate press publications for research and collaboration purposes, and depending on the contours of the proposed right, it could create liability for these authors.
A New Press Publishers Right Would Run Afoul of Copyright Law
To make matters worse, a new press publishers’ right threatens to undermine important exceptions and limitations to copyright, like the free use of uncopyrightable subject matter such facts and ideas, and the doctrine of fair use. Yet several commenters argued that aggregating headlines and ledes should require a license and corresponding payment. This was the case despite the fact that the Copyright Office stated in its Notice of Inquiry that titles and short phrases are not protected by copyright, a longstanding principle in copyright law. In fact, the idea that reusing snippets of copyrighted works for a different purpose than the original—such as to preview news articles from different publications on a given topic—has been affirmed in numerous court cases, notably Authors Guild v. Google. Proponents of a press publishers right attempted to avoid the issue of titles and short phrases not being copyrightable by arguing for a novel “qualitative vs. quantitative” inquiry as to whether these short excerpts are subject to copyright protection. Under such a theory, if a title or short phrase is extremely creative, it should be protected. But there is no basis for such a theory in copyright law, which instead establishes that short phrases and titles are not protected—full stop.
Similarly, proponents of a new press publishers’ right skirted the issue of requiring licensing for excerpts containing predominantly facts and ideas. Facts and ideas are not protected by copyright for reasons of public policy: these types of information are instead treated as “building blocks” of knowledge, free for others to use and build on. Because snippets of news articles tend to be quite fact-heavy, a new press publishers’ right could also undermine this important principle.
Other Arguments Against A Press Publishers’ Right
In our comment, Authors Alliance also explained that a new press publishers’ right could be unconstitutional. If it were to require mandatory licensing for information which lacks the requisite originality for copyright protection, establishing this right could be beyond Congress’ authority. Yet some commenters argued that there should be no originality requirement for protecting headlines and ledes under a new press publishers’ right, which would be an improper expansion of the scope of what copyright protects.
Furthermore, we pointed out that establishing this right could violate U.S. treaty obligations under Article 10 of the Berne Convention. Often referred to as the “fair quotation right,” this provision requires all signatory countries to permit authors “to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose[.]” This means that mandatory licensing for short excerpts could violate this obligation.
Other opponents of the proposed press publishers’ right presented a variety of compelling arguments that it should not be adopted. Many echoed Authors Alliance’s sentiments, and also emphasized the important First Amendment protections for the press which preserve press publishers’ and authors’ right to speak and make editorial decisions about their content. A new press publishers’ right could also stifle innovation and chill journalistic speech, requiring more legal review of headlines and ledes in order for publications to avoid legal liability.
Today, Authors Alliance is thrilled to announce that the Librarian of Congress granted our request for a new exemption to section 1201 of the Digital Millennium Copyright Act (“DMCA”) that will enable text data mining research on e-books and films. Following our petition, testimony, and follow-up meeting with the Copyright Office to discuss the concerns of opponents of the exemption, the Register of Copyrights recommended granting our exemption and the Librarian of Congress agreed to grant it, albeit with some important limitations.
Background
Section 1201 prohibits the circumvention of technical protection measures (“TPMs”) used by rightsholders to control access to their works. In other words, section 1201 prevents individuals from breaking digital locks on copyrighted works, even when they seek to make a fair use of those copyrighted works or engage in other non-infringing activities. But because section 1201’s prohibitions can interfere with fair and socially beneficial uses of copyrighted works, the DMCA also provides for a triennial rulemaking process to grant temporary exemptions to these prohibitions. Authors Alliance has participated in each 1201 rulemaking cycle since our founding, petitioning for exemptions and their renewals to help authors both enjoy their rights and see their creations reach wide audiences. In the latest rulemaking, we submitted a comment petitioning for a new exemption that would allow researchers to bypass TPMs on literary works distributed electronically and films for the purpose of conducting text and data mining (“TDM”) research, joined by the Library Copyright Alliance and the American Association of University Professors. Our petition was accompanied by 14 letters of support from researchers engaging in TDM research on e-books and films who found themselves hampered by 1201’s prohibitions.
TDM refers to automated analytical techniques aimed at analyzing digital text and data in order to generate information that reveals patterns, trends, and correlations in that text or data. TDM has great potential to enable groundbreaking research and contribute to the commons of knowledge. But the prohibition on bypassing TPMs in section 1201 made TDM research on texts and films time consuming and inefficient—and in some cases, impossible—working against the promotion of the progress of knowledge and the useful arts that copyright law is intended to incentivize. Authors Alliance and the other exemption proponents consider TDM research to fall squarely within the ambit of fair use, though the petition’s opponents disagreed with this position.
The Exemption and its Limitations
The new exemption—which will go into effect tomorrow—allows researchers affiliated with academic institutions to circumvent TPMs for the purposes of conducting TDM research on e-books and films. In announcing her recommendation to grant the exemption, Register of Copyrights Shira Perlmutter stated the Copyright Office “recognizes the academic and societal benefits that could result from TDM research and concludes that properly tailored exemptions meet the statutory requirements for adoption.” Because existing alternatives to circumventing TDMs were not adequate to meet the researchers’ needs, the Copyright Office recognized the importance of the exemption for those researchers.
Register Perlmutter’s recommendation was also accompanied by a lengthy discussion of whether TDM research is fair use, resolving the disagreement between the proponents and opponents of the petition to some extent. She stated that TDM research, as described in our petition and with certain limitations, was likely to be a fair use, in large part because it is non-commercial and likely to be transformative. While Authors Alliance is thrilled that our proposed exemption has been granted, enabling socially beneficial TDM research on copyrighted works which was formerly prohibited under 1201, the aforementioned limitations may limit the usability of the exemption for some TDM researchers.
Security Measures
During the hearing and the post-hearing meeting, Authors Alliance participated in lengthy discussions about how the corpora of works should be secured. In the Librarian of Congress’s view, the most important limitation to this exception is a requirement that the academic institution “storing or hosting a corpus of copyrighted works . . . implement either security measures that have been agreed upon by copyright owners and institutions of higher education, or, in the absence of such measures, those measures that the institution uses to keep its own highly confidential information secure.” This seems to represent a compromise position between Authors Alliance’s argument that measures for securing these corpora, while important, should be flexible and tailored to the capabilities of the particular institution and opponents’ argument that the utmost security controls were needed to prevent unauthorized dissemination of the works in the corpora. Authors Alliance had pointed out that prescribing specific security controls, as the exemption’s opponents argued for, could render the exemption unusable for researchers at institutions that were not able to meet these high security standards. Instead, we suggested that the exemption require “reasonable security measures” to secure the corpora. By allowing academic institutions to secure corpora using their own security measures for storing highly confidential information, the recommendation did provide for some flexibility, while still indicating that very strong security controls were needed.
Access to Corpora for Verification Purposes
Register Perlmutter recommended that the researchers should be permitted to “view or listen to the contents of the copyrighted works in the corpus solely for the purpose of verification of the research findings, not for the works’ expressive purposes.” Authors Alliance agreed to this limitation in our post-hearing meeting, pointing out that the requirement that the copyrighted works be lawfully obtained meant that researchers would already have access to the copyrighted works for expressive purposes, and would not need access to the corpora to read or watch the works, but simply to verify their research findings.
Licenses and Ownership
In the recommendation, Register Perlmutter also recommended adding a limitation that “circumvention be permitted only on copies of the copyrighted works that were lawfully acquired and that the institution owns or for which it has a non-time-limited license,” and should not be permitted on works the institution had “rented or borrowed.” This limitation has the potential to complicate the usability of the exemption with regards to TDM research on e-books: because e-books are generally licensed rather than owned, whether the exemption will permit TDM research on a certain e-book will depend on the terms of the license for that e-book.
The Exemption Going Forward
It remains to be seen how the limitations in the exemption will affect researchers’ ability to make use of it. This being said, Authors Alliance views the recommendation as a huge victory for TDM researchers and authors who care about the broad dissemination of their work and contributing to the progress of knowledge. We will continue to update our readers and members as the exemption is implemented and received by the TDM researchers who need it.
Authors Alliance is deeply indebted to the clinical team at the Samuelson Law Technology & Public Policy Clinic at UC Berkeley for their tireless work on our behalf petitioning for this exemption. We applaud their efforts and the dedication of our co-petitioners in making this exemption a reality.
Since we first published this guest post by Authors Alliance member Lois Farfel Stark in August 2018, Authors Alliance has received numerous questions from authors on clearing third-party permissions—an understandably daunting part of the publishing process. Inspired in part by this post’s perennial popularity, we are pleased to announce the upcoming release of a brand new guide on the topic of clearing third-party permissions. Stay tuned for the guide later this month, and if you haven’t already, consider joining Authors Alliance to receive updates about these and other new resources.
Over ten years ago—when I began writing my new book, The Telling Image: Shapes of Changing Times—I knew I wanted to create a book that focused on images. The central topic of the book is how humans make sense of the world by finding a shape, an image, to hold everything together.
The journey from that moment to now has been one of discovery mixed with learning. In order to gather the over 200+ images into the book, I had to teach myself about copyright law—a task that is not easy, even on paper. Your book’s journey may be different, and you may even find yourself needing to consult with a lawyer, depending on the situation.
Copyrights for image use are complex, and copyright duration can be extremely long. The U.S. Copyright Act defines an image as a “work of visual art” which includes painting, drawing, print, sculpture, and photographic images. Other copyrightable pictorial, graphic, and sculptural works noted in the Act include “. . . two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”
Eventually, I included a variety of images in my book, from early blueprints of corporate boardrooms to charts and diagrams used by physicists. Many uses of images require permission from the copyright holder, unless the use falls under an exception to copyright law like fair use or when the work is in the public domain. Uses within the copyright owner’s exclusive rights include reproducing the image in print or online, creating derivative works (new works based on the original), distributing copies of the image (i.e., by publication), or displaying the image in public. Seems pretty straightforward, right? Not so much. Each image in this book ended up having its own acquisition story.
After five years serving as Authors Alliance’s Executive Director, next week is my last week leading the Authors Alliance team. I am thrilled to share that Rachel Brooke, current staff attorney at Authors Alliance, will serve as the organization’s Interim Executive Director.
I couldn’t be more proud of the work Authors Alliance has done since its founding in 2014 to provide an organizational home for authors who write to be read. It has been a privilege to collaborate with the wide range of members, allies, and partners who are working tirelessly to ensure that authors who care about the widespread and long-term availability of their works have a seat at the table in policy debates. In doing so, we have elevated the voices of the community of authors that has otherwise largely been overlooked in national, international, and institutional policymaking, and created a more balanced discourse in the areas where we have intervened.
We have also dedicated ourselves to sharing accurate and approachable guidance to empower authors to make decisions that align with their writing goals. We have built a guide series that provides clarifying information and actionable strategies to help authors make and keep their works available, ensuring that uncertainty does not hamper the sharing of knowledge and creativity.
There are, of course, many opportunities ahead for Authors Alliance to continue to shape law, policy, and practice in ways that align with our members’ interests. I am thrilled that Rachel will lead the organization into this next stage. Rachel’s background as a media attorney and, prior to law school, as a literary agent, make her a superb fit for the role. Rachel’s fresh perspective, ideas, and energy are sure to bring exciting new opportunities for Authors Alliance advocacy and education in the months ahead.
My heartfelt thanks goes to the community of authors, members, advisors, board members, staff, and other allies who support the mission of Authors Alliance and make our work possible. It has been a privilege to work with you.
The Freedom of Information Act (“FOIA”) is a federal statute that allows members of the public to request non-public documents from the federal government. Documents authored by the federal government are considered part of the public domain when it comes to copyright law, and FOIA is similarly premised on the idea that people have a right to know what their government is up to. In last week’s post, we introduced FOIA and explained how authors can benefit from this law. In today’s follow-up post, we will discuss FOIA litigation involving authors in order to offer takeaways for authors interested in using FOIA in the course of their research and writing.
When the government fails to meet its obligations under FOIA, requesters—including authors—can sue the government agency to which they made the request in order to enforce the statute. FOIA litigation, like all lawsuits, can be expensive and time consuming—several of the cases discussed in this post dragged on for years. Consequently, many individual requesters, including authors, lack the resources to pursue FOIA litigation. For this reason, the FOIA request and appeal processes explained in last week’s post are particularly valuable tools for authors gathering information for their upcoming projects. But FOIA litigation provides guidance for the government on the rules and procedures of FOIA, and author-requesters too can take lessons from these decisions to better inform their FOIA requests and expectations going forward.
FOIA Formalities: McDonnell v. United States
In 1985, author Robert McDonnell sent a FOIA request to the FBI regarding a fire that broke out on the Morro Castle Luxury Liner in 1934, about which he and his co-author Frederick Rasmussen hoped to write a book. Strange circumstances surrounded the fire, which claimed more than 130 lives and may have been set by the ship’s radio operator. The FBI conducted an investigation, but many details about it were unknown. The FBI released approximately half of the more than 1,000 pages of responsive records in response to McDonnell’s request, which revealed some new information about the incident, but it withheld many other responsive documents. For three years, the authors negotiated with the agency, sent new requests, and obtained some, but not all, additional responsive documents. Then, in 1998, McDonnell and Rasmussen sued the government in an effort to obtain the withheld pages.
In the lawsuit, a magistrate judge held—and an appeals court subsequently affirmed—that two separate failures to meet FOIA’s formalities and procedural requirements meant that not all aspects of the requests could be litigated. First, the appeals court held that Rasmussen was not a proper party in the case, because his name was not present on any of the requests. FOIA mandates that only the individual(s) making the requests can file a lawsuit to enforce FOIA. While the court acknowledged that McDonnell and Rasmussen were co-authors, it found that this did not excuse Rasmussen’s failure to comply with the requirement. Second, the court found that, with regards to one of the later requests, McDonnell failed to “exhaust his administrative remedies,” by failing to appeal the FBI’s denial of the request before filing a lawsuit. FOIA requires requesters to file an appeal following a rejection before filing suit, and McDonnell’s failure to do so in this case effectively made the relevant request not reviewable by a court. This oversight further demonstrates that the FOIA formalities must be complied with strictly, and moreover shows the potential unfortunate consequences of failing to do so.
Disclosures Behind the Scenes: Stein v. United States Department of Justice
In 2012, Alan Stein, an author and activist from Alaska, sent several FOIA requests to the Department of Commerce. Stein’s request concerned an investigation of a legislative aide who admitted to falsifying fishing records in his previous position as a fishing vessel operator and was subsequently incarcerated after resigning from his legislative aide position. The Department of Commerce failed to provide a “final determination” within 20 business days as required by FOIA, and indeed did not do so for years in some cases. After Stein’s attorney filed a complaint in 2015, the Department of Commerce quickly began “working in good faith” with Stein to release “thousands of pages of documents.” Stein was satisfied with the result but lamented that he had to spent four years waiting for documents that were apparently not exempt under FOIA.
Stein’s case demonstrates that, in some cases, filing a complaint can spur an agency to produce records it has failed to produce in response to requests and appeals. Filing a complaint can lead an agency to begin working with a requester “behind the scenes” where it otherwise may not have done so. While this made things easier for Stein, who did not have to wait for the outcome of court proceedings to get the records he needed, it also demonstrates the unequal footing this practice can place requesters in. Authors who lack the resources to obtain legal counsel to actually file the lawsuit may be left with little or no recourse when an agency refuses to comply with its FOIA obligations. While Stein’s quick behind the scenes resolution meant his legal fees were not as high as he might have anticipated, there was no guarantee of a speedy outcome.
Commerciality and Authorship: Campbell v. United States Department of Justice
In 1988, author James Campbell was working on a biography of renowned author and civil rights leader, James Baldwin. As part of Campbell’s research, he sent a FOIA request to the FBI for any information it held on Baldwin. A year later, Campbell filed suit in an effort to expedite the request, which FOIA allows for when there is an urgency to inform the public about government activity, among other limited circumstances. While a court declined to order the FBI to expedite the request, the FBI did eventually turn over more than 1,000 pages on Baldwin to Campbell. In 1991, Campbell published his biography, which was well-received (a second edition was published in 2021), and was based in part off the FBI records he had finally obtained.
Yet the litigation would continue for another decade, as Campbell tried to obtain more records on Baldwin and sought to recover some of the copying fees the FBI had charged him during the course of their response to the request. While agencies are permitted to charge requesters fees for copying and time incurred searching for the responsive records, a “fee waiver” provision exists in the statute which seeks to ease this burden for certain requesters. When considering a fee waiver request, which Campbell had made, agencies are asked to consider whether disclosure is in the public interest and would contribute to an understanding of government activity, or whether the request was primarily in the requester’s “commercial interest.” The FBI argued that Campbell certainly stood to benefit commercially from the request, holding up his commercially-available published book as evidence. The court found that this position was inconsistent with the spirit of the fee waiver provision, which is intended to help scholars whose research contributes to the public’s understanding of government activity. It added that it would make little sense to require these scholars to forego compensation for their work in order to take advantage of the fee waiver provision, and that the “quasi-commercial nature” of Campbell’s endeavor should not weigh against his ability to obtain a fee waiver.
This case demonstrates the strong protections for works of authorship about matters of public concern, a principle underlying many judicial doctrines. While such protection is far from absolute, it supports liberal applications of the fee waiver provision, underscoring the importance of writing about matters of public concern for the courts and federal agencies.
Last week, the Copyright Office released a report on Copyright and State Sovereign Immunity, concluding its year-long study on the topic. Sovereign immunity is a doctrine that makes states and state entities immune from lawsuits under federal law in some cases. Congress sought to eliminate sovereign immunity in the copyright context in a 1990 federal law, which was overturned by a 2019 Supreme Court decision. In response, Senators Leahy and Tillis asked the Copyright Office to conduct a study to determine whether copyright infringement by state entities is an ongoing problem warranting a new legislative remedy. The report is a culmination of that effort.
Background
State sovereign immunity immunizes states and state entities—like state government agencies, public hospitals, and state universities—from lawsuits under federal law without their consent, with roots in the Eleventh Amendment to the U.S. Constitution. But state sovereign immunity is not absolute, and can be modified or eliminated in some contexts. In 1990, Congress passed the Copyright Remedy Clarification Act (“CRCA”), which sought to eliminate state sovereign immunity with regards to copyright claims, known as abrogation, under the authority of the Intellectual Property Clause of the Constitution.
The validity of the CRCA was recently examined by the Supreme Court in Allen v. Cooper. The case concerned the state of North Carolina’s use of copyrighted images of a pirate ship found off the coast without permission from the photographer rights holder. The Court held that Congress lacked the authority to abrogate sovereign immunity under the Intellectual Property Clause, making the attempt to do so in the CRCA invalid. The Court also noted that Congress could have abrogated state sovereign immunity with regard to copyright claims under its 14th Amendment powers, but that the way it did so with the passage of the CRCA did not meet the requirements of its 14th Amendment powers. Under the 14th Amendment, Congress must enact legislative solutions that are “congruent and proportional” to the problems it seeks to address. The Court held that the record before Congress did not show the widespread, intentional infringement which would justify the total abrogation of sovereign immunity for copyright claims in the CRCA.
In response to the decision in Allen v. Cooper, Senators Leahy and Tillis asked the Copyright Office to investigate the topic of sovereign immunity for Copyright. In June 2020, the Copyright Office issued a notice of inquiry announcing a study to “evaluate the degree to which copyright owners are experiencing infringement by state entities” and the extent to which these infringements are “based on intentional or reckless conduct.” The Copyright Office also asked whether other remedies available to rights holders under state law were adequate to address the problem of infringement by state entities.
The Report
The Copyright Office’s new report is based on public comments, public roundtables, and its own legal research conducted during the course of its year-long study. In addition to reviewing the history of the study and relevant legal background, the report summarizes allegations of state infringement submitted in connection with the study, describes documentation provided by representatives of state entities regarding their policies for preventing and responding to allegations of infringement, and examines the extent to which copyright owners have other legal remedies against state entities if those state entities are immune to an infringement lawsuit. Finally, the Office sets out its recommendations for Congress in light of this study.
With respect to allegations of state infringement, the report reviews a total of 132 cases submitted by commenters which involve copyright infringement disputes brought against state entities, of which about 59% involve specific allegations of intentional infringement. The Office also summarized survey results from a survey distributed by Copyright Alliance, in which 115 of 657 respondents self-reported experiencing infringement by a state or state entity. The Office also summarized critiques of the survey, including its reliance on respondents’ subjective beliefs that infringement had occurred and the fact that it did not account for exceptions or defenses other than sovereign immunity that may have precluded liability. Indeed, a review of the raw survey data submitted by Copyright Alliance after the public roundtable reveals some misunderstandings about the scope of copyright and misplaced responses relating to previous court decisions in Authors Guild v. Google and Authors Guild v. HathiTrust, highlighting the unreliability of these self-reported allegations. Finally, the Office’s report discusses additional comments describing instances of alleged infringement by state entities relating to news content, music, computer programs, photographs and video, and books.
The report then turns to a discussion of state policies for preventing and responding to allegations of infringement, acknowledging that the record developed for the study indicates that many state universities and libraries have developed policies regarding the proper use of copyrighted material (though very little evidence was submitted regarding the policies of other state entities). First, commenters pointed to the Higher Education Opportunity Act (“HEOA”), which requires institutions receiving federal funding take certain measures to discourage copyright infringement. Commenters also highlighted institutional policies designed to prevent or respond to allegations of copyright infringement, educational efforts aimed at faculty, students, and other employees about copyright infringement, and cultural norms and expectations that reduce the likelihood of widespread intentional infringement by state educational institutions.
Copyright Office’s Recommendations
The Office concludes that, although the Office’s study surfaced a number of allegations of state infringement, it is far from certain that the record would be found sufficient to meet the constitutional test for abrogation. The Office acknowledges that few of the allegations that were surfaced in the study have been adjudicated on their merits. The Office further states that case law indicates that violations by states must be sufficiently numerous and serious to constitute a pattern of unconstitutional conduct, and that there is a material risk that a court could find even the “more robust record” of alleged infringement surfaced by this study insufficient to meet constitutional abrogation standards. That said, the Office indicated that, if Congress decides not to proceed with new abrogation legislation, the Office supports considerations of alternative approaches to abrogation to ensure that copyright owners have adequate relief if their copyrights are infringed by state entities.
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Authors Alliance will monitor any Congressional action regarding the abrogation of sovereign immunity in the copyright context, or alternative approaches to potential infringement by state entities, and we will continue to update members and readers as new developments emerge.
In April, we published a post on two major fair use decisions from this year: Google v. Oracleand The Andy Warhol Foundation v. Goldsmith. In the post, we expressed our uncertainty about how the decision in Google, which concerned a specific question related to software,would impact fair use analysis for literary and artistic works. Earlier this month, the Second Circuit answered this question, at least with regards to fair use jurisprudence in that circuit.
The Andy Warhol Foundation v. Goldsmith concerned the question of whether Warhol’s screen prints of Prince, based in part on a photograph taken by Goldsmith, constituted fair use. The court found that the works were not fair use, in large part because it believed that Warhol’s screen prints were not transformative, but instead, the same works as Goldsmith’s photograph, but with a new aesthetic. The court signaled that the screen prints were closer to derivative works based on the original photograph than fair uses of the photograph. In contrast, the Supreme Court in Google v. Oracle did find that Google’s use of Oracle’s APIs in its Android platform was a fair one, in part because the Court found the use to be highly transformative.
After the Google decision was handed down, the Warhol Foundation requested a re-hearing in its case, asking the Second Circuit to consider whether the Google decision would change its fair use determination. The court then issued an amended decision, and for the most part affirmed its earlier ruling, reiterating that the screen prints did not constitute fair use. The court held that the ruling in Google v. Oracle did not have much bearing on determinations about fair use when it comes to literary and artistic works. The court also underscored the Supreme Court’s statement that copyright protection is weaker for functional works—like software—and stronger for literary or artistic works—like Warhol’s screen prints, further making the Google decision inapplicable to its case.
Another small revision in the Warhol court’s amended decision was notable for its bearing on fair use: the original decision stated that derivative works were “specifically excluded” from being considered fair use as a categorical matter, but in the amended decision, the court stated that derivative works may fail to qualify as fair use, walking back its earlier statement. By leaving open the possibility that a derivative work might still be a fair use, the court reinforced the idea that fair use is a context and fact-specific determination, a principle that also animated the decision in the Google case.
For an in-depth discussion of Google v. Oracle and the original decision in The Warhol Foundation v. Goldsmith, see our earlier post.
Authors Alliance, joined by the Library Copyright Alliance and the American Association of University Professors, is petitioning the Copyright Office for a new three-year exemption to the Digital Millennium Copyright Act (“DMCA”) as part of the Copyright Office’s eighth triennial rulemaking process. If granted, our proposed exemption would allow researchers to bypass technical protection measures (“TPMs”) in order to conduct text and data mining (“TDM”) research on literary works that are distributed electronically and motion pictures. Recently, we met with representatives from the U.S. Copyright Office to discuss the proposed exemption, focusing on the circumstances in which access to corpus content is necessary for verifying algorithmic findings and ways to address security concerns without undermining the goal of the exemption.
Access to Corpora for Verification
In response to suggestions from opponents that the exemption, if granted, should ban researchers from accessing text in their corpora, David Bamman, associate professor at the School of Information at UC Berkeley, shared circumstances in which a researcher would need to access text in a corpus to verify research findings. Drawing from his co-authored article The Transformation of Gender in English-Language Fiction, Dr. Bamman used two examples to demonstrate why access to the research corpus is necessary to verify anomalous research findings. First, Dr. Bamman executed code that produced all lines of text in Nathaniel Hawthorne’s The Scarlet Letter that include both female gendered pronouns and capitalized words to investigate an algorithm’s failure to identify any female characters in the novel. Second, Dr. Bamman executed code that produced all lines of text that included the word “legs” to investigate why this was one of the objects most associated with male characters in the research corpus.
As we have previously explained, while researchers do not need this exemption for the purpose of viewing the full text or images of the works that they or their institutions have already obtained lawfully, researchers must be able to verify their research methods and research results. The scale of many research projects would make verification of anomalous research findings without access to the research corpus prohibitively time-consuming. An outright ban on accessing text in the corpus would make many TDM projects impossible because researchers would not be able to interrogate the conclusions reached by the code they had developed. Moreover, the ability to view corpus text or images is consistent with the research environments of both HathiTrust Data Capsules and Google Book Search, and it is consistent with fair use precedent.
Security Measures
As a threshold matter, we shared our view that the approach of existing § 1201 exemptions that require reasonable security measures keyed to particular, identified risks is consistent with the decisions in Google Books and HathiTrust. In both cases, the Second Circuit identified security measures that were reasonable responses to actual risks. This is consistent with past Copyright Office recommendations that identify the risk to be guarded against, but do not prescribe the security controls to guard against it. To this aim, we suggested language to add to the exemption to more specifically define the harms that exemption users must guard against when implementing security controls—dissemination, downloading, and unauthorized access. We also explained that we not object to the inclusion of the requirement that researchers wishing to avail themselves of the exemption consult with their institution’s information technology office. Institutions of higher education are well positioned to provide this kind of advice, and it would ameliorate some of opponents’ concerns.
In addition, we discussed the various specific security controls and standards opponents advocated for in their post-hearing letters. We explained that while we continue to believe that the Copyright Office’s reasonableness approach is the right one, the intended exemption beneficiaries would still be able to avail themselves of the exemption if certain controls are imposed. These include encryption on the server, limiting access to the collection to those with a legitimate and authorized need, deletion of the collection upon conclusion of the applicable research need, and mechanisms to detect and prevent downloading of stored materials. Other security controls proposed by opponents, however, would render the exemption unusable, and we explained our concerns with these proposals to the Office.
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We look forward to working with the Copyright Office to address opponents’ concerns without undermining the purpose of the proposed exemption. The Librarian of Congress is expected to issue a final decision on the proposed exemption in October 2021. We will keep our members and readers apprised of any updates on our proposed exemption as the process moves forward. We’re grateful to law students and faculty from the Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law School for their work supporting our petition for this new exemption.
Over ten years ago—when I began writing my new book, 
