Category Archives: Blog

Authors Alliance Submits Comment to Copyright Office Regarding Ex Parte Communications

Posted April 4, 2023

Yesterday, Authors Alliance submitted a comment to the U.S. Copyright Office in response to a notice of proposed rulemaking asking for feedback from the public on new rules to govern ex parte communications. “Ex parte communications” refer to communications outside the normal, permitted channels of communication—in this case, to communications between organizations or members of the public and Copyright Office staff outside of hearings or other formal proceedings. Ex parte communications with the Copyright Office are important, because they allow stakeholders and the office to work out open questions in rulemakings or other proceedings outside of the formal channels. Authors Alliance relied on our ability to make ex parte communications during the last Section1201 rulemaking cycle (where we obtained our text data mining exemption) in order to clarify certain issues. Now, the Office is proposing establishing formal rules for how these communications can be made, as well as establishing transparency around them. We support this proposal, and shared our thoughts in a comment. You can read our full comment here.

Judge Rules Against Internet Archive on Controlled Digital Lending

Posted March 28, 2023

On Friday, Southern District of New York Judge John Koeltl issued a much-anticipated decision in Hachette Books v. Internet Archive. Unfortunately, as many of our members and allies are aware, the judge ruled against the Internet Archive, finding that its CDL program was not protected by the doctrine of fair use and granting the publishers’ motion for summary judgment. You can read the 47-page decision for yourself here.

In his fair use analysis, Judge Koeltl found that each of the four fair use factors weighed in favor of the publishers, emphasizing above all else his view that IA’s controlled digital lending program was not transformative, an important consideration under the first fair use factor, which considers the purpose and character of the use. This inquiry also involves asking whether the use in question was commercial. To the surprise of many, the decision stated that IA’s use of the publishers’ works was commercial, because the Open Library is part of the IA’s website, which it uses “to attract new members, solicit donations, and bolster its standing in the library community.” The judge found this to be the case in spite of the fact that IA “does not make a monetary profit” from CDL. In other words, the judge held that the indirect, attenuated benefits the Internet Archive (which is, after all, a nonprofit) reaps from operating the Open Library makes its CDL program commercial.

Judge Koeltl gave less attention to the fourth factor in the fair use analysis, “the effect of the use on the potential market for the work,” which is often held up to be of significant importance. One consideration under this factor is whether the use creates a competing substitute with the original work. Unfortunately, on this point too, the court—in our view—missed the mark. This is because the decision does not draw a distinction between CDL scans and ebooks, going so far as to call CDL scans “ebooks” throughout. As we explained in our summary of the proceedings last week, many features of both CDL and ebooks make them both functionally and aesthetically distinct from one another. By glossing over these differences, the judge reached the conclusion that CDL scans are direct substitutes for licensed ebooks.

Authors Alliance is deeply concerned about the ramifications of this decision, which was exceedingly broad in scope, striking a tremendous blow to the CDL model, rather than only IA’s implementation of it. Local libraries across the country practice CDL, and library patrons and authors alike depend on it to read, research, and participate in academic discourse.

As it stands, this decision only applies to Internet Archive and is only about the 127 books on which the publishers based their lawsuit. It does not set a binding precedent for any other library, but if left in place (or worse, if affirmed on appeal), it could cause libraries to avoid digitizing and lending books under a CDL model, which in our view would not serve the interests of many authors. This decision makes it harder for those authors to reach wide audiences: CDL enables many authors to reach more readers than they could otherwise, and authors like our members who write to be read would not be served if fewer readers could access their books.

The decision also hampers efforts to preserve books—aside from IA’s scanning program, there are few if any centralized efforts to preserve books in digital format once their commercial life is over. Without CDL, those books could quite literally disappear, and the knowledge they advance could be lost. IA’s scanning operations do preserve such books, which is one reason we have strongly supported them in this lawsuit. By the same token, if this decision stands, it will also limit authors’ ability to conduct efficient research online. The CDL survey we launched last year revealed that CDL is an effective research tool for authors who need to consult other books as part of their writing process, and in many cases it enables them to access far more works than they could at their local library alone. Authors who rely on CDL in this way would be harmed by this decision, as they could well be forced to undergo a more time-consuming research process, detracting from time that could be spent writing.

The Internet Archive has already indicated that it will be appealing Judge Koeltl’s ruling, and we look forward to supporting those efforts. We will continue to keep our readers and members apprised of updates as this case moves forward.

Judge Hears Oral Arguments in Hachette Book Group v. Internet Archive

Posted March 20, 2023

Earlier today, Judge John Koeltl of the Southern District of New York heard oral arguments in Hachette Book Group v. Internet Archive—a case Authors Alliance has been following since the lawsuit was first filed back in 2020. The case is about—among other things—whether Internet Archive’s controlled digital lending program qualifies as a fair use. Authors Alliance submitted an amicus brief in support of the Internet Archive back in July, arguing that CDL serves the interests of authors who write to be read. IA’s attorney cited to our brief during oral argument, and we are pleased that we were able to magnify the voices of authors who write to be read through its submission. You can learn more about the case and read our brief here.

In the hearing, the judge considered each party’s motion for summary judgment. The parties hotly contested a number of key issues in the case, including whether each side’s experts had properly demonstrated market harm (or lackthereof), what the appropriate market to consider was for purposes of fair use analysis, the commerciality of IA’s use, and what legal cases supported both arguments in favor of and against fair use. Judge Koeltl asked the Internet Archive’s attorney a number of probing questions on these points, grappling with the difficult questions in this case. The judge further implied that there may be open issues of fact in this case, which could indicate the need for additional briefings or hearings.

CDL and Commerciality

The parties disagreed on the commerciality of IA’s use when it produces and makes CDL scans available. The publishers attorney argued that IA’s CDL operations are “intertwined” with its other functions, such as its ownership of the book vendor Better World Books, and further emphasizing its argument that CDL loans result in lost revenue for the publisher—in other words, that the supposed commercial harm to the publishers that results from CDL lending makes the CDL lending itself commercial. The Internet Archive’s attorney answered that IA is a nonprofit organization that does not profit at all from its CDL program. He pointed to the fact that traditional library lending is not commercial in nature and does not provide libraries like IA with commercial benefits.

CDL and Market Effects

The plaintiffs’ attorney began by setting forth plaintiffs’ views on the issue of market harm—the fourth factor in fair use analysis, often cited as one of the most important factors in the inquiry. Plaintiffs discussed what they see as massive financial harm stemming from IA’s CDL program, which they estimated to amount to “millions of dollars in licensing revenues.” Plaintiffs also emphasized that, were CDL “given the green light,” or upheld as a fair use, the plaintiffs would suffer even greater losses. Throughout her argument, plaintiffs’ attorney emphasized the “basic economic principle and common sense is that you cannot compete with free.” In other words, the publishers argue that the ebook library licensing market could collapse altogether if CDL were allowed to continue. Yet this misses the point that CDL is a longstanding and established practice, which has seen adoption and growth in libraries across the country while the ebook licensing market has continued to thrive.

Judge Koeltl, however, pressed the publishers on whether they had shown evidence of actual market harm, i.e. proof that IA’s CDL program had directly harmed their bottom line. In response, plaintiffs criticized the expert evidence offered by IA’s experts to show that no such harm had occurred. This is a difficult question because the party asserting a fair use defense typically has the burden of showing that the use has not harmed the market, but it exceedingly difficult to prove a negative.

The judge also questioned whether CDL actually could represent such a loss: the publishers’ argument rests on the premise that libraries loan out CDL scans in lieu of paying to license ebooks, and were CDL not permitted under the law, IA and other libraries would instead choose to pay licensing fees to lend out ebooks. The judge pointed out that the result might in fact be that libraries would choose not to lend digital copies of works out at all, or would instead lend out physical books, undercutting the lost licensing revenue argument.

IA’s attorney argued that the publishers had not offered empirical evidence of market harm in this case, focusing on the fact that when a library lends out a CDL scan, it does so in lieu of a physical book, “simulating the limitations of physical books.” This is due to CDL’s “owned to loaned” ratio requirement: a library can only loan out the number of CDL scans as it has physical books in its collection, and can only loan these scans out to one patron at a time. When a library lends out a CDL scan, it does so in lieu of loaning the physical book, for which it has already paid. And while the plaintiffs mentioned harm to authors (who are, after all, the people that copyright law is intended to protect) several times during their argument, they did this in a way that linked authors with publishers as parties that are financially invested in a works’ sale—author interests and the finer details of the economics of author income and library lending were absent from the discussion.

The parties also disagreed about which market was the appropriate one to look to when discussing market harm in the context of fair use analysis. The publishers argued, and the judge seemed to assume, that the proper market is the library ebook licensing market. The judge opined that libraries could, instead of using CDL to lend out their books, simply purchase an ebook license. He seemed to view CDL scans and licensed ebooks as one and the same, despite the fact that there are several key differences between these types of loans, both in form and function, as explained in other amicus briefs in the case. Moreover, missing from the argument was the fact that, in many cases, libraries loan out CDL scans because no ebook is available to them: particularly for older books in a publisher’s backlist, or for books that are no longer available commercially, there is in many cases no ebook available, or no ebook available to libraries. Library patrons with print or mobility disabilities in need of digital copies of these kinds of works in order to read them would be greatly harmed if CDL were no longer permitted.

CDL and Transformativeness

The publishers’ attorney started from the premise that CDL as a use was not transformative, explaining that a licensed ebook and a CDL scan served precisely the same function. In response, IA’s attorney in response argued that CDL is a transformative use because it “utilizes technology to achieve the transformative purpose of improving efficiency of delivering content without unreasonably encroaching on the rights of the rightsholder.” He further explained that fair uses are favored when they serve the key purpose of copyright: incentivizing new creation for the public benefit without harming the interests of rightsholders. To illustrate these benefits, he cited to Authors Alliance’s amicus brief, in which we explained the myriad ways that CDL benefits authors and can even incentivize the creation of new works.

Adding to its transformativeness argument, IA explained that, when it comes to speculative or actual market harm, such an effect must be balanced against the public benefit that results from the use. And when it comes to CDL, this public benefit is tremendous: numerous amici, as well as Authors Alliance, explained that CDL serves the interests of library patrons, authors, and the public writ large.

What’s Next?

Now that the judge has heard both sides’ arguments, he will issue a decision in the case. While there is no way of knowing exactly when this will happen, Judge Koeltl is known for issuing decisions fairly quickly, so we may have a decision as soon as later this week. As always, we will keep our members and readers apprised of any developments in this pivotal case as it moves forward.

Copyright Office Issues Opinion Letter on Copyright in AI-Generated Images

Posted March 8, 2023

In late February, the Copyright Office issued a letter revoking a copyright registration it had previously granted artist Kristina Kashtanova for a comic that used images generated using Midjourney, a generative AI program that creates images in response to user prompts. While this may seem minor, or simply another data point in the ongoing fight about copyright protection for AI-generated works, the determination is quite significant: it comes at a moment when AI-generated art has captured public attention, and moreover shows the Copyright Office’s thoughts on the important question of whether an artist who relies on a program like Midjourney can obtain copyright protection for an original compilation of AI-generated works. In today’s post, we explain the Copyright Office letter, contextualize it within the growing debate over AI and copyright, and share our thoughts on what all of this might mean for authors who write to be read.

Copyright and Human Authorship

As technology has advanced to allow the creation of works without the direct involvement of a human, courts have grappled with whether these creations are entitled to copyright protection. In the late 19th century, the Supreme Court established that copyright was intended to protect the products of human labors and creativity, creating the “human authorship” requirement. In an early case on the topic, the Court held that a photograph was copyrightable despite the fact that a camera literally created the image, since photographs were “representatives of original intellectual conceptions of the author.” It cautioned, however, that when it came to creations resulting from processes that were “merely mechanical,” lacking “novelty, invention, or originality” by a human author, such hypothetical works might be beyond the scope of copyright protection.

This principle was tested in the 2010s: in 2011, an Indonesian crested macaque monkey named Naruto seized a photographer’s camera and took hundreds of images of himself. The photographer, David Slater, shared some of these images online, which promptly went viral. Several websites posted these images as well, prompting Slater to assert that he owned the copyright in the images and request their removal. The Wikimedia Foundation, which had uploaded the image to Wikimedia Commons, a repository of public domain and free license content, argued that the image was a part of the public domain due to the lack of a human creator. Several years later, Slater published a book of nature photographs which included Naruto’s selfie. Then, in 2015, the People for the Ethical Treatment of Animals (PETA) filed a lawsuit in the Northern District of California on Naruto’s behalf, asserting that the macaque owned the copyright in the image and requesting damages. The district court judge held that Naruto could not own the copyright in the image due to copyright’s human authorship requirement. However, the judge did indicate that Congress might be free to do away with the human authorship requirement and permit copyright ownership by animals, suggesting that the requirement was not a constitutional one, but indicating that it was beyond the power of the judiciary to decide. The Ninth Circuit Court of Appeals later affirmed the district court’s ruling.

Currently, the Copyright Office is defending a lawsuit in the D.C. district court brought by AI system developer, Dr. Stephen Thaylor, regarding the constitutionality of copyright law’s human authorship requirement. Thaylor argues that the Copyright Act does not forbid treating AI systems as “authors” for the purpose of copyright law, and contends that the human authorship principle is unsupported by contemporary case law. While it seems unlikely that Thaylor will prevail on this argument, the case will at the very least generate new attention about the human authorship requirement and how it fits into creation in the digital age.

The Creativity Requirement and Zarya of the Dawn

Kashtanova’s assertion of copyright ownership in her comic, Zarya of the Dawn, is in many ways similar to the photographer David Slater’s claim that he owned the copyright in Naruto’s selfie. In each case, the Copyright Office indicated that when a work is not the product of human authorship, a human may not claim copyright in that work (the latest compendium of Copyright Office practices lists “a photograph taken by a monkey” as an example of work that is not entitled to copyright protection since it does not meet the human authorship requirement).

Kashtanova’s attorney had argued that Midjourney served “merely as an assistive tool,” and that Kashtanova should be considered the work’s author. But the Office likened Midjourney to a “merely mechanical process” lacking “novelty, invention, or originality” by a human creator, quoting the Supreme Court’s warning about the limits of copyright protection in the 19th century case discussed earlier in this post. And it was not only the human authorship requirement that made Zarya of the Dawn beyond the scope of copyright protection, but also copyright’s creativity requirement: for a work to be copyrightable, it must possess at least a “modicum” of creativity, a very low bar that rarely forecloses copyright protection for works of human authorship.

The Office explained that Midjourney generates images in response to user prompts, “text commands entered in one of Midjourney’s channels.” But these are not “specific instructions” for generating an image, rather input data that Midjourney compares to its training data before generating an image. The Office also argued that these images lack human authorship because the process is “unpredictable” and “not controlled by the user.” In other words, the “creativity” in these images comes not from the human entering prompts, but from the interaction between the prompt and Midjourney’s training data. This makes it different from a tool like a camera over which a user exercises total control—there is little to no unpredictability when we use digital cameras to photograph the world around us, rather all creative choices come from the human using the device.

The Office also noted that this opinion was not necessarily the final world on AI-generated images, as “other [generative] AI offerings” might operate differently, such that the creativity and human authorship requirements could be met. Kashtanova argued that minor edits she had made to the images were sufficiently creative to give her copyright ownership in the work as a whole. While the Office disagreed in this specific case (the before and after images demonstrating the editing were nearly identical), it did leave this possibility intact for future cases. Moreover, the Office granted Kashtanova ownership in the comic’s text, which she alone had written, as well as copyright ownership in the compilation of Midjourney-generated images. Compilations of uncopyrightable subject matter can sometimes be protected by copyright, because both the human authorship and creativity requirements are met when a human selects and arranges the material. The copyright owner does not own a copyright in the material itself, but in the original compilation they have created.

What Does this Mean for Authors?

The Copyright Office’s denial of registration in the Midjourney-generated images has important implications for the public domain and authors’ abilities to use new forms of technology as assistive tools in the creation of their works. But the Office’s action also leaves some open questions about the copyright status of images generated by Midjourney and similar systems. One possibility is—as was asserted by Wikimedia in the case of Naruto’s selfie—these images are a part of the public domain. Were that to be the case, it could be a boon for artists and creators. Recall that once a work is in the public domain, it becomes free for all to use without fear of copyright infringement. The case of the monkey selfie is further instructive here, as the owner of the camera in that case did not prevail on claiming his own copyright in Naruto’s selfie. By the same token, it is unlikely that the creators of Midjourney could claim a copyright in images like those used by Kashtova, despite their role in creating and making available the “assistive tool.”

If AI systems could be used to generate infinite public domain content—whether through text-based systems like ChatGPT or image-generating systems like Midjourney—this would greatly expand public domain content. The public domain can be a boon for creators, as they are free to do anything they wish with this material. On the other hand, some have expressed fear that, should all AI-produced works be considered a part of the public domain, these public domain works could compete with works produced by human authors. It is also important to remember the practical economic realities of systems like Midjourney. Whether or not the Copyright Office and other policymakers determine that AI-generated content is a part of the public domain, the creators of those systems could employ other means to assert ownership or forbid onward uses of the content created by these systems. Contractual override, the employment of so-called “digital locks” like DRM, or other legal and technical mechanisms could conceivably limit authors’ ability to use AI-generated works the way they might use more traditional public domain materials.

The First Copyright Small Claims Court Judgment

Posted March 6, 2023

Authors Alliance members will recall the posts we’ve made over the years about the enactment and implementation of a new copyright small claims court, the “Copyright Claims Board,” housed within the U.S. Copyright Office.

Late last week, the CCB issued its very first judgment. It came in a case brought by photographer David Oppenheimer against an California attorney, David Prutton, who had used an unlicensed copy of one of Oppenheimer’s photos (a picture of the federal courthouse in Oakland) on his solo-practitioner website (h/t to Plagiarism Today, where we first saw reporting about the case, here).

Screenshot of Prutton’s website, showing use of Oppenheimer’s photo of the Federal Courthouse in Oakland (twin buildings on the right).

The case had a head start because it was originally filed in federal district court, where the parties voluntarily agreed to dismiss the federal case and have the case referred to the CCB. You can read the entire history, including all the filings, here. The CCB ruled in favor of Oppenheimer, and awarded the photographer an award of statutory damages of $1,000, significantly less than the $30,000 (the maximum amount available to claimants in CCB proceedings) that Oppenheimer originally sought.

In many ways, this was a pretty easy case for the CCB. Prutton readily admitted that he had used Oppenheimer’s unlicensed photo, in whole, on his website. Though Prutton raised a fair use defense, he didn’t bother to argue any except one of the four fair use factors. Prutton’s sole contention was that the impact on the market was so minimal—and that Oppenheimer had shown no evidence of harm—that Prutton should win on the fourth fair use factor.

The CCB, noting that the fair use factors need to be balanced and weighed together, did its own analysis of all the fair use factors but concluded—rightly, I think—that for the other three fair use factors:

Prutton’s use was not particularly transformative or for a new purpose, weighing against the use;
Oppenheimer’s original photo was creative (certainly enough for copyright protection, though reasonable minds might disagree on the extent of the creativity and therefore how strong this factor should weigh in its favor), weighing against the use;
Prutton has used the whole work, not a small portion of it, weighing against the use.

For the fourth fair use factor, Prutton argued that because Oppenheimer showed essentially no history of licensing revenue from this photograph, along with a history of other litigation that tended to indicate that Oppenheimer’s business was primarily oriented toward generating revenue through litigation, there was no meaningful market harm. The CCB disagreed, essentially concluding that it was Prutton’s job to show a lack of market harm (which they said he did not do), and the burden did not rest on Oppenheimer to show evidence of a market. However, because Oppenheimer didn’t show any actual evidence of financial harm, this also led the CCB when assessing damages to grant an award far below Oppenheimer’s request—his original demand of $30,000 in damages was reduced to just $1,000.

Where the case was a little more interesting was how the CCB addressed Prutton’s defense of “unclean hands,” in which he essentially asks the CCB to excuse his use because Oppenheimer had acted improperly. If you do a quick search for “David Oppenheimer” and “copyright” you will find that Oppenheimer is frequently in court over alleged infringement of rights in his photographs, with fact patterns very similar to the one in this case, including heavy-handed negotiation tactics and aggressive use of litigation. In several of those cases, such as this case in the Western District of North Carolina, courts refused to grant Oppenheimer easy wins—concluding that Oppenheimer’s litigation tactics could reasonably be viewed as so problematic as to block his assertion of rights by the defense of “copyright misuse.”

The CCB dismissed Prutton’s “unclean hands” defense by highlighting how unusual and extreme a plaintiff’s conduct has to be to fall subject to that general defense. The CCB didn’t, however, really assess Prutton’s more substantial “copyright misuse” defense, perhaps because Prutton didn’t raise it as a separate defense. In my view, copyright misuse may well have been a valid defense in this case.

As the Western District of North Carolina explained in a previous case brought by Oppenheimer, “misuse of copyright is a valid affirmative defense where the use of a copyright is contrary to the public policy upon which copyrights are granted. . . . Typically, the defense applies when seeking to avoid anti-competitive behavior, but it can also apply to other scenarios where a copyright owner attempts to extend the copyrights beyond their intended reach. . . . The underlying policy principles behind copyrights extend from the United States Constitution, with the relevant policy here being to promote the ‘useful arts.’” The court in that case concluded that if Oppenheimer’s “purpose in copyrighting the Copyrighted Work was to license it for use when individuals or companies need [his photo] then Plaintiff is likely not misusing his copyrights. Yet, a reasonable jury could find Plaintiff is using copyrights to derive an income from infringement suits and this issue is one of fact that the Court should not decide.”

Lessons Learned

As this is the very first decision of the CCB, I don’t think we should draw sweeping conclusions from it about how the CCB will do its work. But it is interesting to see that this first case wasn’t exactly a suit between legal amateurs—Oppenheimer is a seasoned litigant who has brought many copyright cases, and Prutton is an attorney (albeit not one who specializes in copyright). Both made significant missteps in the presentation of their cases. And so, one observation I think we can make is that while the copyright small claims system is meant to have low barriers to participation, and the CCB seems inclined to go to extra lengths to help parties understand the process and present cogent filings, the CCB is not going to excuse incomplete argumentation. At least in this case, the CCB refused to assume facts or arguments not presented by the parties. That was true both for the plaintiff and defendant: plaintiffs who make damage assertions are going to need to show evidence of actual harm in order to get awards close to their requested amounts. And defendants who raise defenses will need to fully argue them; glossing over three of the four fair use factors is not a winning strategy. Nor does it seem passing references to defenses such as “unclean hands” and “copyright misuse” will work without adequate support.

Book Talk: Athena Unbound by Peter Baldwin, Moderated by Chris Bourg

Posted March 3, 2023

“In Athena Unbound, Peter Baldwin offers an admirably pragmatic yet principled approach to the perennial problem of encouraging both the production and distribution of knowledge.” – Paul Romer, Nobel Laureate and University Professor, NYU

Book Talk: Athena Unbound
March 28 @ 10am PT / 1pm ET
Register now for the virtual event

Read or purchase Athena Unbound from MIT Press. (Pub date: March 28, 2023)

Open access (OA) could one day put the sum of human knowledge at our fingertips. But the goal of allowing everyone to read everything faces fierce resistance. In Athena Unbound, Peter Baldwin offers an up-to-date look at the ideals and history behind OA, and unpacks the controversies that arise when the dream of limitless information slams into entrenched interests in favor of the status quo. In addition to providing a clear analysis of the debates, Baldwin focuses on thorny issues such as copyright and ways to pay for “free” knowledge. He also provides a roadmap that would make OA economically viable and, as a result, advance one of humanity’s age-old ambitions.

Baldwin addresses the arguments in terms of disseminating scientific research, the history of intellectual property and copyright, and the development of the university and research establishment. As he notes, the hard sciences have already created a funding model that increasingly provides open access, but at the cost of crowding out the humanities. Baldwin proposes a new system that would shift costs from consumers to producers and free scholarly knowledge from the paywalls and institutional barriers that keep it from much of the world.

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Rich in detail and free of jargon, Athena Unbound is an essential primer on the state of the global open access movement.

About our speakers

PETER BALDWIN is Professor of History at UCLA, and Global Distinguished Professor at NYU. His recent books are Command and Persuade: Crime, Law, and the State across History (MIT Press); Fighting the First Wave: Why the Coronavirus Was Tackled So Differently across the Globe; and The Copyright Wars: Three Centuries of Trans-Atlantic Battle. He serves on the boards of the New York Public Library, the American Council of Learned Societies, the Wikimedia Endowment, the Central European University, the Danish Institute of Advanced Studies, and as chair of the Board of the Center for Jewish History. His journalistic writings have appeared in the New York Times, the Los Angeles Times, CNN, Newsweek, New Republic, Huffington Post, Der Spiegel, Berliner Zeitung, Publishers Weekly, American Interest, Chronicle of Higher Education, Prospect, American Interest, and Zocalo Public Square.

CHRIS BOURG is the Director of Libraries at Massachusetts Institute of Technology (MIT), where she also has oversight of the MIT Press. She is also the founding director of the Center for Research on Equitable and Open Scholarship (CREOS). Prior to assuming her role at MIT, Chris worked for 12 years in the Stanford University Libraries. Before Stanford, she spent 10 years as an active-duty U.S. Army officer, including three years on the faculty at the United States Military Academy at West Point. She received her BA from Duke University, her MA from the University of Maryland, and her MA and Ph.D. in sociology from Stanford.

Book Talk: Athena Unbound
March 28 @ 10am PT / 1pm ET
Register now for the virtual event

Jack Daniels v. VIP Products and the Freedom to Parody and Comment in the United States

Posted March 2, 2023

This post was written for the Kluwer Copyright Blog, and is based in part on an amicus brief filed last week by the Harvard Cyberlaw Clinic on behalf of Authors Alliance and ComicMix before the United States Supreme Court in Jack Daniels v. VIP Products.

Ordinarily, authors who write parodies look to copyright limitations and exceptions to protect their rights. In the United States, the doctrine of fair use has been held to permit parody in uses ranging from rap music to children’s books. These fair use rights, the courts have said, have their roots in the U.S. Constitution’s First Amendment protections for freedom of speech.

In a recent case before the U.S. Supreme Court, Jack Daniels v. VIP Products, those parody rights are at risk. In a twist, however, it is not copyright law, but rather an expansive view of trademark law, that poses this threat.

The facts of this case are straightforward: Jack Daniels, creator of the famous Tennessee Whiskey, brought the trademark suit to stop VIP Products for production of a dog toy, which it titled “Bad Spaniels,” in the shape of Jack Daniels’ iconic whiskey bottle and label. Jack Daniels asserts that the Bad Spaniels toy infringes on its trademark and dilutes its brand. VIP Products counters that the toy is meant to parody Jack Daniels’ bottle and is protected speech under the U.S. Constitution’s First Amendment.

Jack Daniel’s Whiskey Bottle (left) and VIP Products’ “Bad Spaniels” dog toy (right). From Jack Daniels Properties, Inc. s v. VIP Products, LLC, Case No. 22-148, U.S. Supreme Court, Brief for Petitioner (11 January 2023), page 3, available **here**.

Although dog toys and whiskey bottles seem relatively inconsequential to literature, parody, and creative work, this case could have a dramatic impact on how authors write about, and parody, famous brands.

Trademarks are a cornerstone of our shared cultural vernacular. Popular brands are woven into the fabric of our national identity, recognizable by and meaningful to those from many different backgrounds. Authors often draw on these shared associations in their literary works, sending beloved fictional characters to real colleges, serving them familiar cereals, and outfitting them in well-known clothing labels. Whether to evoke nostalgia or to immerse their readers, authors use trademarks both to simulate reality and to critique it.

While trademark law aims to protect consumers and prevent confusion as to the source of goods or services, it must be enforced in a manner consistent with the speech protections guaranteed by the First Amendment of the U.S. Constitution. The freedom of authors to use trademarks in their works could be stifled by the threat of litigation. Overenforcement of trademark law runs contrary to both the purpose of intellectual property law and the U.S. constitutional legacy of protecting free expression. Protections for parody in other areas of the law, such as copyright’s fair use doctrine, will be undermined by a trademark ruling that allows for expansive enforcement.

If heightened First Amendment protections are not put in place, the threat of costly legal proceedings may cause creators to avoid the use of trademarks in their artistic works. While trademark law does have other mechanisms to protect authors of parody and commentary, such as a showing that an author’s use does not pose a likelihood of confusion, the process for successfully defending a trademark infringement case is remarkably expensive. In 2020, the American Intellectual Property Law Association reported that the median cost of trademark litigation in the U.S. before even going to trial ranged from $150,000 to $588,000. In the American system, litigants ordinarily bear their own costs, and so even an author who successfully defends such a suit would be on the hook for a large amount in legal fees. While litigation is commonplace for large corporations with significant legal resources, even a single lawsuit could be career-ending for an author without the resources to handle it.

If the threat of legal sanction hangs over the heads of writers, their literary characters may no longer use iPhones, eat at McDonald’s, or visit Disneyland. These uses offer meaningful expressive value to authors. Brands are often intentionally selected as cultural signifiers, chosen for the implicit associations they convey to readers. Cory Doctorow’s Down and Out in the Magic Kingdom (a Disney theme park) would have a different meaning if it were instead titled Down and Out in an Amusement Park. Nor is The Devil Wears Luxury Clothing as evocative as The Devil Wears Prada.

Even when trademarks are evoked in literary circumstances that their owners find distasteful, these uses are still expressive and noncommercial, thus worthy of the highest First Amendment protection. Prioritizing the pecuniary interests of trademark owners over the First Amendment rights of creative artists could lead to a catastrophic chilling effect on authors’ speech based on the perceived risk of litigation, whether or not such risk is actualized. This result is both untenable and entirely unnecessary. It is possible to ensure that trademark owners still have access to a wide variety of robust and reasonable remedies in cases of true infringement without creating unnecessary panic in many other circumstances.

The Supreme Court has a clear doctrinal path to avoiding a speech-suppressive environment. In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Second Circuit Court of Appeals struck a balance between the interests of trademark owners and First Amendment speech by crafting a clear and efficient test for infringement with appropriate protections for speech. The Rogers court recognized the mark owner’s interest in preventing confusion while ensuring adequate protection for the vital free speech principles at play, and provided a rule to determine at the outset of litigation–before incurring substantial costs–when expressive works infringe trademark rights. Rogers, in short, provided that in cases of artistic or creative works, trademark infringement should only be considered “where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Ordinarily, the court explained, this rule “will normally not support [the] application of [trademark law] unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

A ruling that substantially adopts a test like that in Rogers would continue to protect the rights of trademark owners, while also ensuring that authors who reference popular brands are protected by providing a clear, consistent and efficient rule to protect authors. A ruling in favor of Jack Daniels, however, could strike fear into the hearts of risk-averse creators, chilling their speech by discouraging them from using certain trademarks in their works altogether. It would undermine the otherwise strong protections that U.S. courts have identified for parodists and other authors in U.S. copyright law, under the doctrine of fair use.

You can read more about our views on the interaction between trademark law and authors’ free expression rights in our amicus brief filed in Jack Daniels v. VIP Products, available here.

Fair Use Week 2023: Looking Back at Google Books Eight Years Later

Posted February 24, 2023

This post is authored by Authors Alliance Senior Staff Attorney, Rachel Brooke.

More recent members and readers may not be aware that Authors Alliance was founded in the wake of Authors Guild v. Google, a class action fair use case in the Second Circuit that was litigated for nearly a decade, and finally resolved in favor of Google in 2015. The case concerned the Google Books project—an initiative launched by Google whereby the company partnered with university libraries to scan books in their collections. These scans would ultimately be made available as a full-text searchable database for the public to search through for particular terms, with short “snippets” displayed accompanying the search results. Users could not, however, view or read the scanned books in their entirety. The Authors Guild, along with several authors, filed a lawsuit against Google alleging that scanning the books and displaying these snippets constituted copyright infringement.

In addition to Authors Guild representing its members in the litigation, its associated plaintiffs brought the case as a class action, claiming to bring the case on behalf of a broad group of authors: “[a]ll persons residing in the United States who hold a United States copyright interest in one or more Books reproduced by Google as part of its Library Project” who were either authors or the authors’ heirs.

But many of these authors did not agree with the Authors Guild’s stance in the case, and felt that the Google Books project served their interests in sharing knowledge, seeing their creations be preserved, and reaching readers interested in their work. A group of authors and scholars came together to share their views with the district court, many of whom would soon become founding members of Authors Alliance. Many of those same authors signed on to amicus briefs before both the district court and Second Circuit explaining why they opposed the litigation and supported Google’s fair use defense. Then, in 2014, Authors Alliance submitted its first amicus brief to the Second Circuit, supporting Google’s ultimately successful fair use defense. The plaintiffs later appealed the Second Circuit’s ruling, asking the Supreme Court to weigh in, but the Court ultimately declined to hear the case, leaving the Second Circuit’s ruling intact.

Nearly a decade later, the effects of Google Books can still be seen in fair use decisions and copyright policy developments involving the challenges of adapting copyright to the digital world. In today’s post, I’ll reflect on how Google Books can be contextualized within today’s fair use landscape and share my thoughts on what the case can tell us about copyright in the digital world.

Google Books and Transformativeness

A major question in Authors Guild v. Google was whether Google’s use of the copyrighted works was “transformative,” a key component of the fair use inquiry. When a use is found to be transformative, this in practice weighs heavily in favor of a finding of fair use. In the case, the court found that Google’s scanning, as well as the search and snippet display functions, were transformative because the service “augments public knowledge by making available information about [the] books without providing the public with a substantial substitute for . . . the original works.” This was because Google Books provided information about the books—such as the author and publisher information—without creating substitutes of the original works. In other words, readers could learn about the books they searched through, but could not read the books in full—to do this, those readers would have to purchase or borrow copies through the normal channels.

Since the doctrine of transformativeness was established in the 1994 landmark Supreme Court case, Campbell v. Acuff-Rose Music, there have been myriad questions about the precise contours of what it means for a use to be transformative. Campbell established that a use is transformative when it endows the secondary work with a “new meaning or message,” but it can be difficult to apply this test in practice, particularly in the context of new or nascent technologies. Google Books tells us that scanning works in order to create a full-text searchable database with limited snippet displays is a transformative use based on its new and different purpose from the purpose of the works themselves. Furthermore, it reinforces the notion that a use is particularly likely to be considered transformative when it serves the underlying purpose of copyright law: incentivizing new creation for the benefit of the public and “enriching public knowledge.” By highlighting that Google contributed to public knowledge about books through its scanning activities and the Google Books search function, the court helped bring fair use for scholarship and research—two key prototypical uses established in the 1976 Copyright Act—into the digital age, setting an important precedent for later cases.

Google Books and Derivative Works

One of the plaintiffs’ arguments in Google Books was that Google’s full-text searchable database constituted a derivative work. One of a copyright holder’s exclusive rights is the right to prepare derivative works—such as adaptations, abridgements, or translations of the original work—and the plaintiffs alleged that this right had been infringed. The court disagreed, finding that Google’s use had a transformative purpose, whereas derivative works tend to involve a transformation in form, such as the adaptation of a novel into a movie or an audiobook. Furthermore, the court explained that derivative works are “those that re-present the protected aspects of the original work, i.e., its expressive content, converted into an altered form[.]” In contrast, the Google Books project provided information about the books and offered a limited “snippet” view, but did not re-present the expressive content: the full text of the books themselves.

The distinction the court drew between transformative fair uses and derivative works in Google Books is an important one, as it can often be a close question whether a work involves a transformative purpose or merely represents the same work in a new form, without enough added to tip the scales towards fair use. And it is a question that continues to arise in fair use cases today: just last year, the Supreme Court agreed to hear Warhol Foundation v. Goldsmith, a case about whether Andy Warhol’s creation of a series of screenprints of the late musical artist Prince which drew from a photograph taken by photographer Lynn Goldsmith qualified as a fair use. We’ve covered this case extensively on our blog over the past few years, and submitted an amicus brief in the case. Our brief argues (among other things) that Warhol’s screen prints involve much more than a transformation in form: they are stylistically and visually distinct from Goldsmith’s photograph, and endow the photograph with a new meaning or message, making the use highly transformative.

As in Google Books, the parties and amici in Goldsmith grapple with the line between transformative uses and the creation of derivative works, an often complicated and fact-sensitive determination. In this context, Google Books serves as a reminder that fair use is not a one-size-fits-all determination. Yet it also provides support for arguments advanced by Authors Alliance and others that simply because a transformation in form exists—in the Google Books case, the transformation from a print book to a scanned copy, and in Goldsmith, the transformation of a black and white photo to a series of colorful screenprints—does not mean that a secondary use cannot be a fair one. Warhol’s use did not merely “re-present the protected aspects of the original work[‘s] . . . expressive content,” but was transformative in the different “purpose, character, expression, meaning, and message” it conveyed.

Google Books and Controlled Digital Lending

The practice of controlled digital lending (“CDL”)—and the arguments in favor of it constituting a fair use—can be traced back in part to the fair use principles established and reinforced in Google Books. As I argue in our amicus brief in Hachette Books v. Internet Archive, a case about—among other things—whether CDL constitutes a fair use, Google Books shows that copying the entirety of a work in the process of making a transformative use of it can be fully consistent with fair use.

Another important suggestion in the Google Books case, made at the district court level, was that the Google Books search function could actually drive book sales: the search results were accompanied by links to purchase the book, and research suggested that this could enhance sales of those books. This is analogous to the effects of library lending: library readers often purchase books by authors they first discovered at the library, an effect which can apply with equal force when the library patron borrows a CDL scan. Indeed, several other amici in Hachette Books argue that the finding that the Google Books search was a fair use lent substantial support for the argument that CDL is a fair use, based on both the factual similarities between the two initiatives and their shared objective of “enriching public knowledge.”

As in Google Books, CDL also helps authors reach readers who could not otherwise access their books, and achieves this through scanning books on library shelves. And also like Google Books, CDL helps solve the problem of 20th century works “disappearing”: the commercial life of a book tends to be much shorter than the term of copyright, so when books under copyright go out of print, they can disappear into obscurity. Scanning these books to preserve them ensures that the knowledge they advance will not be lost.

Google Books and Text Data Mining

Text data mining—the process of using automated techniques aimed at quantitatively analyzing text and other data—is also widely considered to be a fair use, and this determination is similarly built in part on the building blocks established in Google Books. As was the case in Google Books, the results of text data mining research provide information about the works being studied, and cannot in any way serve as substitutes for the content of the works. In fact, one important aspect of the new exemption to DMCA liability for text data mining, which Authors Alliance successfully petitioned for in 2021, is that researchers are not able to use the works in the text data mining corpus for consumptive purposes. And also like Google Books, researchers are able to view the content in a limited manner to verify their findings, analogous to Google Books’s snippet view. The new TDM exemption was a huge win for Authors Alliance members, and something to celebrate for all scholars engaged in this important research. Importantly, the precedent established by Google Books strongly supported its adoption and the Register of Copyright’s suggestion that text data mining was likely to be a fair use.

Looking Forward: Google Books and Artificial Intelligence

In recent years, scholars and researchers have grappled with the implications of copyright protection on AI-generated content and AI models more generally. The holding in Google Books provides some support for companies’ and researchers’ ability to engage in these activities: one important factor in the case was that Google Books did not harm the market for the books at issue in the case, since the books in the database could not serve as substitutes for the books themselves. Similarly, when copyrighted works are used to train AI, the output cannot serve as a substitute for the copyrighted works, and the market for those works is not harmed, even if—like the plaintiffs in Google Books—the copyright holders might prefer that their works not be used in this way. Google Books establishes that simply because copyrighted works are used as “input” in a given model, this does not mean that the outputs constitute infringement. It is also worth noting that the court found Google’s use to be fair despite the fact that it was a use by a commercial, profit-seeking entity. While a commercial use can sometimes tip the scales in favor of finding a use to not be fair, this can be overcome by a socially beneficial, transformative purpose. This could arguably apply with equal force to AI models trained on copyrighted works which contribute to our understanding of the world, despite the fact that commercial entities are often the ones deploying these technologies.

Eight years after it was decided, the legacy of Google Books endures in policy debates and copyright lawsuits that capture the public’s attention. Policymakers and judges would be wise to heed the lessons it teaches about the value of advancing public knowledge through digitization and the use of copyrighted works for new and socially beneficial purposes. As we await policy developments regarding text data mining and wait for decisions in Goldsmith and Hachette Books, it is my hope that this legacy will live on, reminding us all of the vast capabilities of information technology to enrich our understanding of the world and advance the progress of knowledge, which, after all, is what copyright law is all about.

Fair Use Week 2023: How to Evade Fair Use in Two Easy Steps

Posted February 23, 2023

This post is by Dave Hansen and also posted to the Fair Use Week blog here.

Fair use is an essential part of the Copyright Act’s careful balance—on the one hand protecting rightsholders’ interests, while on the other “[permitting and requiring] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” The Supreme Court has explained that fair use is a core part of what makes the Copyright Act compatible with the First Amendment guarantee of free expression. “First Amendment protections are ‘embodied . . . ’ in the ‘latitude for scholarship and comment’ safeguarded by the fair use defense.”

Fair use is what has allowed biographers to quote critically from originals when writing their own works, even when the copyrights are owned by the rich and powerful, as in cases involving L. Ron Hubbard and Howard Hughes. It’s what allows researchers to write and quote from unpublished manuscripts for literary criticism, as in this case about scholarly use of an unpublished work by Marjorie Kinnan Rawlings Baskin. It’s also what has allowed libraries to provide copies of books to blind readers, conduct research across texts, and make preservation copies. It allows reuse of images in support of news and political commentary, supports researchers who use tools like Google Image Search, and allows artists to use source materials to create transformative new works, such as parody.

Two easy steps to evade fair use

Given its importance, it may surprise you to learn that fair use is remarkably easy to evade. Savvy copyright owners do it all the time. It takes just two easy steps.

First, you need to write a contract, specifically a “license” for the use of your work. In it, you dictate the terms on which you provide access to your work. You can impose almost any restrictions you like. Sometimes, contracts will restrict certain classes of uses: “you cannot reproduce this content for commercial use” or “you may download one copy of this work for personal consultation; you cannot reproduce or share any part of this work in whole or in part in any form, or share in any form with the public.”

Other contractual terms guard against specific threats. For example, Disney once won a lawsuit over use of its movie trailers, which Disney would license to websites only if they agreed that the website “may not be derogatory to or critical of the entertainment industry or of [Disney] (and its officers, directors, agents, employees, affiliates, divisions and subsidiaries) or of any motion picture produced or distributed by [Disney].”

The key here is that you can essentially rewrite the rules, and forbid those aspects of fair use that you disapprove of. Want to make sure critics can’t use your words against you? Just say they can’t. Want to make sure libraries don’t make preservation copies without paying you first? Want to make sure that instructors of college classes can only use excerpts of your book—even very small excerpts—if they pay every single time? It’s your prerogative.

Second, you need to make sure that everyone who gains access to your work is bound by your license. This sounds hard, but with online distribution, it’s actually pretty easy.

In the world of print copies, this was difficult because copies had a way of traveling beyond the control of the original purchaser. The “first sale” doctrine meant that buyers of copies could freely transfer those copies to third-party buyers (e.g., someone who buys a book at a used book store, or who borrows a book from a library) or give them away. So, even if you got the original buyer to agree to your terms, those downstream users didn’t have to. But there is no widespread acceptance of a buyer’s “digital first sale.” So, buyers can’t just transfer the copies they purchase to downstream users. Everyone who wants access to the digital copy must agree to the license. All you have to do is make sure that your materials are distributed exclusively on digital platforms that are subject to your terms, and you’re all set.

That’s it. Two easy steps and you’ve practically eliminated fair use. For any use you haven’t already authorized, you can just say no, require them to pay whatever you want, or just refuse to grant access. And if they don’t comply, at a minimum you’ve got at a slam-dunk breach of contract claim.

Is it Seriously That Easy?

Unfortunately, this two-step approach–sometimes known as “contractual override”–reflects the prevailing wisdom and practice of many copyright owners. It is widely used online, by parties ranging from massive corporations such as Amazon or Netflix to small publishers and news outlets. And though the precedent for it isn’t airtight, when it has come up in court, the licensors have mostly prevailed. Because U.S. law so venerates “freedom of contract,” it has been difficult for policymakers or the courts to address the problem of rightsholders forbidding lawful fair uses under the terms of their licenses.

How did we get to this point? This is not a new or unexpected problem. You can look back to 1993, when law professor Jane Ginsburg foresaw this state of affairs just as the possibilities of the internet were coming into view:

“In the digital environment posited here, contract protection may not be the fragile creature presumed in prior intellectual property preemption decisions. If access to works could be obtained only through the information provider (directly or through an authorized online distributor), and if copying could be electronically tracked or prevented, no ‘third parties’ to the contract would exist. When ‘we’re all connected,’ no functional difference may exist between a contract and a property right. At that point, it becomes necessary to consider whether limitations incorporated in the copyright law should be imported to its contractual substitute.”

Numerous others in the legal community soon made similar observations, such as Julie Cohen, Niva Elkin-Koren, and Andrew Shapiro, among others, who also wrote about aspects of this then-new challenge.

How to Protect Fair Use from Contractual Override

A handful of efforts to address this problem have been mounted in Congress. In 2003 and 2005, representative Zoe Lofgren introduced a bill appropriately called the BALANCE Act (“Benefit Authors without Limiting Advancement or Net Consumer Expectations”), which addressed both the unavailability of “first sale” in the digital environment and contractual override of fair use. The proposed legislation provided that “[w]hen a digital work is distributed to the public subject to nonnegotiable license terms, such terms shall not be enforceable under the common laws or statutes of any State to the extent that they restrict or limit any of the limitations on exclusive rights under this title.” The BALANCE Act never passed however, and hasn’t been revisited in Congress since 2005.

Recent actions in other jurisdictions may provide renewed legislative interest and guidance on possible models to adopt. For example, in 2014, the UK passed legislation that limits contractual override of user rights—providing that “to the extent that a term of a contract purports to prevent or restrict the doing of any act which, by virtue of this section, would not infringe copyright, that term is unenforceable.” This language has been applied in the UK to exceptions that allow for making copies for persons with print and other disabilities, research and teaching, and text and data-mining. Similarly, the EU’s recent Copyright in the Digital Single Market Directive contains similar protections for copyright exceptions, as does Singapore’s recent copyright bill. So far, though, there has been no indication of real interest from Congress in the United States.

It’s also possible that states could craft legislation. There has recently been a surge of interest in bills in a number of states aimed at protecting libraries’ ability to license books on reasonable terms (bills that Authors Alliance generally supports). These bills also go beyond what fair use protects—seeking to, for example, ensure that libraries have broad access to ebooks on “reasonable terms,” and addressing problems of major publishers simply refusing to license books to libraries. Maryland was the first state to actually pass such a law, but it was struck down as preempted by federal copyright law in AAP v. Frosh. The court concluded that because federal copyright law dictates the scope of rights governing public distribution of works, it was impermissible for the state of Maryland to interject its own rules about the scope of the publishers’ distribution rights.

It’s possible that state legislation that is more narrowly tailored—e.g., a state law that focused solely on protecting fair use—would not suffer the same fate as the Maryland law. In fact, the reasoning of the Maryland e-lending case would seem to support such a state law, since a state law protecting fair use would be maintaining, rather than altering, the balance of rights as defined by federal law.

Legal Strategies in Court

It’s also possible that the courts could intervene, though so far they have mostly declined to do so. It seems to me there are two or three viable ways for judicial intervention to be effective:

First, Courts could conclude that contracts (created under and governed by state law) are preempted by federal copyright law, which is what defines the scope of copyright’s exclusive rights. The Constitution provides that federal law supersedes conflicting state law, and Congress has provided specific instructions on how such preemption should apply, stating that “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 . . . are governed exclusively” by federal copyright law. Those exclusive rights of copyright owners are explicitly defined as being “subject to” the limitations including fair use, so it would make some sense for courts to view state law expansions of those rights as being in conflict with and therefore preempted by federal copyright law.

However, there are several negative precedents indicating that this approach may not work. Take Bowers v. Baystate, for example, a Federal Circuit case involving two competing computer aided design (CAD) software companies. Bowers contended that Baystate violated the terms of use on its software by reverse-engineering its product in violation of a clause explicitly prohibiting such use. Baystate contended that such reverse engineering was protected by fair use and that contract terms to the contrary should be preempted as inconsistent with federal law. The Federal Circuit, observing that as a general matter “most courts to examine this issue have found that the Copyright Act does not preempt contractual constraints on copyrighted articles,” concluded that “private parties are free to contractually forego the limited ability to reverse engineer a software product under the exemptions of the Copyright Act. . . . [A] state can permit parties to contract away a fair use defense or to agree not to engage in uses of copyrighted material that are permitted by the copyright law, if the contract is freely negotiated.”

Other courts addressing state contract law and other state law limitations on fair use (e.g,. this California right of publicity case) have largely followed the same approach. One notable exception to is Vault Corp. v. Quaid Software, Ltd., in which the Fifth Circuit invalidated a Louisiana law that permitted contracts to prohibit reverse engineering, even though federal law provides a specific exception (Section 117) that allows for such reverse engineering. Although not directly addressing fair use, the court’s holding could apply equally to state law contractual restrictions on fair use. The issue has not directly reached the Supreme Court, though there is a case, Genius v. Google, currently pending on a Petition for Certiorari that asks the Court to weigh in on the broader question of when federal law preempts contracts under state law.

Second, courts could conclude that the state common law (the body of law made up of legal principles established by courts over the years) on contracts does not permit contractual restrictions on fair use. This could come in a few different forms. One option might be for courts to consider more seriously the question of whether a valid contract is actually created in the first place, particularly in situations where users have no meaningful opportunity to negotiate terms and little ability to even understand what restrictions they are agreeing to. For years, following the lead of the Seventh Circuit Court of Appeals in ProCD v. Zeidenberg, courts have been willing to accept that a valid agreement is formed even in situations with “shrinkwrap” or “browsewrap” licenses. But, despite ongoing criticism of this approach by many, the approach has prevailed. Courts might also take more seriously the public policy implications of fair use evasion more directly, by invoking traditional rules for contract interpretation that hold terms unenforceable when they violate public policy—e.g., agreements to commit a crime, or a tort, or restraint of trade. To date, however, I’m unaware of any such cases directly applying these principles to contracts that restrict fair use, though there is a large body of case law and this may merit more research.

Third, the courts could apply existing or new equitable doctrines, such as “copyright misuse” or a yet-to-be-defined right of “fair breach” to protect users from overenforcement of contracts that limit fair use. Professor Jane Ginsburg outlines the potential need for courts to develop their own remedy of “fair breach.” She observes that, as with the current licensing environment online, at some point “it becomes necessary to consider whether limitations incorporated in the copyright law should be imported to its contractual substitute. With respect to libraries and their users, one should inquire whether some kind of fair use exception is appropriate. This might take the form of a judge-made right of ‘fair breach,’ or legislatively imposed mandatory library-user rights.”

This idea of “fair breach” has drawn little attention since Ginsburg first identified its need and coined the term, but it merits further attention. “Fair breach” may have some similarity to the existing doctrine of copyright misuse, which could have some application to contracts that restrict fair use. A judge-made doctrine borrowed from the patent law doctrine of patent misuse, copyright misuse has been mostly applied to situations where copyright owners have attempted to exercise their rights to unfairly stifle competition. The primary question with copyright misuse is “whether the copyright is being used in a manner violative of the public policy embodied in the grant of a copyright.” If copyright misuse is found, the copyright isn’t invalidated, but courts have held that the owners’ copyright cannot be enforced to exclude the harmed party’s use. The Supreme Court has yet to acknowledge the existence of this doctrine, but numerous appellate courts have recognized it over the last thirty years.

A handful of cases suggest that extension of copyright misuse to fair-use limiting contracts could be effective. For example, in Assessment Technologies of Wi, LLC v. Wiredata, the Seventh Circuit Court of Appeals held that Assessment Technologies’ attempt to restrict access to data that was not copyrighted fell within the copyright misuse doctrine’s core focus: “preventing copyright holders from leveraging their limited monopoly to allow them control of areas outside the monopoly.”

Video Pipeline, Inc. v Buena Vista Home Entertainment, Inc., also gives some encouragement. In that case, Video Pipeline brought a declaratory judgment action seeking a judgment that its use of video trailers from Disney and others was not copyright infringement. Among the defenses it cited was copyright misuse on the part of Disney. To support its copyright misuse argument, Video Pipeline pointed to the license term I mentioned at the beginning of this blog post, which conditioned the license on an agreement to not disparage Disney or the entertainment industry. The court ultimately declined to find that those terms constituted copyright misuse, because the contract had a narrow focus and limited application: “we nonetheless cannot conclude on this record that the agreements are likely to interfere with creative expression to such a degree that they affect in any significant way the policy interest in increasing the public store of creative activity. The licensing agreements do not, for instance, interfere with the licensee’s opportunity to express such criticism on other web sites or elsewhere.” However, the court suggested that the outcome could have been different if the restrictions were more far reaching.

Conclusion

Contractual override of fair use poses a real threat to free expression, especially given the increasing limits on distribution of copyrighted works online. Almost all online platforms that distribute copyrighted works impose restrictions that inhibit fair use to some degree. It takes just two easy steps. Thankfully, there are some plausible routes forward for improving the law to protect authors and others who rely on fair use to create new works and share knowledge with the world. There is also some reason for optimism due to renewed interest in the issue among scholars and organizations such as the Association of Research Libraries, which issued a report on contractual override for libraries, and is co-hosting a symposium with Washington College of Law at American University on the subject with perspectives from around the world.

Fair Use Week 2023: Resource Roundup

Posted February 21, 2023

Authors who want to incorporate source materials into their writings with confidence may find themselves faced with more questions than answers. What exactly does fair use mean? What factors do courts consider when evaluating claims of fair use? How does fair use support authors’ research, writing, and publishing goals? Fortunately, help is at hand! This Fair Use/Fair Dealing Week, we’re featuring a selection of resources, briefs, and blog posts to help authors understand and apply fair use.

Fair Use 101

Cover of the Fair Use Guide for Nonfiction Authors

Authors Alliance Guide to Fair Use for Nonfiction Authors: Our guidebook, Fair Use for Nonfiction Authors, covers the basics of fair use, addresses common situations faced by nonfiction authors where fair use may apply, and debunks some common misconceptions about fair use. Download a PDF today.

Authors Alliance Fair Use FAQs: Our Fair Use FAQs cover questions such as:

Can I still claim fair use if I am using copyrighted material that is highly creative?
What if I want to use copyrighted material for commercial purposes?
Does fair use apply to copyrighted material that is unpublished?

Codes of Best Practices in Fair Use: The Center for Media and Social Impact at American University has compiled this collection of Codes of Best Practices in Fair Use for various creative communities, from journalists to librarians to filmmakers.

Fair Use Evaluator Tool: This tool, created by the American Library Association, helps users support and document their assertions of fair use.

Dig Deeper

U.S. Copyright Office Fair Use Index: The U.S. Copyright Office maintains this searchable database of legal opinions and fair use test cases.

Fair Use Amicus Briefs: Authors Alliance submitted several friend of the court briefs on issues related to fair use over the past year. Check out our brief in Hachette Books v. Internet Archive, where we expand on our longtime defense of Controlled Digital Lending as a fair use; our brief in Goldsmith v. Warhol Foundation, where we advocate for a broad yet sensible conception of “transformativeness”; and our brief in Sicre de Fontbrune v. Wofsy, where we explain why fair use is a crucial aspect of U.S. policy and why it should shield authors from the enforcement of foreign copyright judgments where fair use would have protected the use had it occurred in the U.S.

Fair Use and Text Data Mining: Learn about Authors Alliance’s new project, “Text and Data Mining: Defending Fair Use,” intended to support researchers engaging in text and data mining under the recent DMCA exemption for Text Data Mining, generously supported by the Mellon Foundation.

Fair Use and Public Policy: Learn about why we voiced opposition to the SMART Copyright Act of 2022 and the Journalism Competition and Preservation Act—proposed legislation that, if passed, could erode our fair use rights.

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