Category Archives: Blog

Section 512: University and Research Libraries as Rightsholders

Posted July 7, 2020

Authors Alliance is grateful to David Hansen, Associate University Librarian for Research, Collections, and Scholarly Communications at Duke University, for sharing this blog post based on his statement to the Senate Committee on the Judiciary, Subcommittee on Intellectual Property on whether the notice and takedown procedures under Section 512 of the Digital Millennium Copyright Act (DMCA) are working. This statement was originally presented on June 2, 2020.

Hansen’s testimony addressed how universities and research libraries interact with Section 512 as both service providers serving a large number of users and as rightsholders who produce creative copyrighted content. The excerpted portion below addresses the first perspective: that of universities and libraries as rightsholders.

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Promoting the creation and dissemination of knowledge is an important part of what our university and our libraries do. At Duke alone, our faculty and other researchers author more than 10,000 articles every year, along with hundreds of books, reports, video content, software, visual works, learning resources, educational programs, and many other types of materials. For virtually all of this content, our primary aim is to get as many people as possible to read and engage with the ideas we are sharing to help increase our collective understanding of the world around us, and of each other. These works of authorship, more than almost any other, fall at the heart of what our Constitution states is the objective of Copyright Law: “to promote the progress of science and the useful arts.”

In most cases and for most of the published research Duke produces, we aim to disseminate these works with no direct financial return; no royalty. If possible, our authors generally want no financial barrier to stand in the way of engagement with their research, operating under the idea that more and faster progress will be made without those barriers. In many cases, we find ourselves licensing around the controls that copyright law automatically provides. For example, more than ten years ago, Duke Faculty voted to adopt an institutional open access policy that provides for free, widespread distribution of research articles that Duke faculty have authored.

Duke leaves the ultimate decision on how to disseminate scholarship to the individual authors. Many authors post their materials to Duke systems (for example, DukeSpace, our institutional repository). But, many also share through nonprofit repositories such as ArXiv or bioArxiv, as well as commercial sites such as ResearchGate and Academia.edu. Because of the variety of content, and the desire to engage our research with the public, we also share content through more popular sites such as YouTube.

Given our interest in widespread dissemination of ideas, for research and academic work our strong preference is a system that is biased toward keeping content up online unless there is strong evidence that an infringement has occurred. The current notice and takedown system does not always accomplish this goal.

First, for some academic works, the ownership of rights is far from clear. Although authors are the holders of those rights initially, they are often asked to license them away at least in part through publishing contracts that are confusing and vary significantly from journal to journal and which can change with some frequency. As a result, some academic authors are unsure of whether they are legally permitted to share their own work online under the terms of their publishing agreement. Many research articles are also subject to pre-existing licenses that attach automatically upon creation—for example, at Duke under our Open Access policy—which provide that authors and their institutions retain certain rights to share and reuse their work. My experience with takedown requests we receive at Duke is that publishers do not take into account pre-existing open access licenses even though their existence is widely known. In the case of a takedown request for an article an author has posted to an online platform, authors can feel uncertain how to respond since they may be unsure whether they actually have retained the necessary rights to distribute or reuse their own work.

These takedown efforts to remove content posted by authors can be highly disruptive. In our role as a service provider at Duke, we only receive a few such requests each year, but other online hosts of scholarly content have become targets. In 2017 the commercial publisher Elsevier, a Dutch-owned publishing conglomerate, reportedly issued 100,000 takedown notices to ResearchGate. ResearchGate is a for-profit site, but most of the content is submitted by academic authors to share for free with other researchers and the world. Subsequently, Elsevier and one other publisher, the American Chemical Society, sued ResearchGate for copyright infringement, identifying more than 3,000 articles they claimed rights to. At least some of those articles are likely to be covered by preexisting university open access licenses. At present ResearchGate reports that it hosts 150,000 Duke authored articles. Unfortunately, Section 512 currently contains few mechanisms to address these asymmetries of power and information in the notice and takedown process. For most academic authors I work with, including faculty but especially graduate students, responding to a takedown notice is an intimidating and time-consuming process that most will try to avoid if at all possible.

Second, and perhaps the most important thing I can convey, is how important fair use is for research, teaching, and for libraries that support those functions. Most research is highly iterative, building upon the work of others. Often, for scholarly publication that means one must reference earlier work by copying—whether by simple quotation in a literary critique, by copying charts or graphs in a scientific publication, or by reusing images in a work commenting or criticizing art or history. These are all common place examples of fair use that academic authors and teachers rely on every day. Indeed, I have found that I seldom review a scholarly work that does not rely on fair use in some way. While the courts have consistently found that fair use supports these kinds of core scholarly and teaching uses, other provisions of the Copyright Act can make exercising the fair use right challenging. For scholarly authors who want to share their work through online platforms, Section 512 is one of them.

Section 512 does not explicitly address how fair use factors into the notice and takedown process. The Ninth Circuit’s decision in Lenz v. Universal Music Group Corp., 815 F.3d 1145 (9th Cir. 2016) (the “dancing baby” case) was a welcome development, as it mandated that a rightsholder first consider fair use in order to assert the required good faith belief of infringement when making a takedown request. However, in practice we know that in many instances automated content identification systems are the first method of assessment, and they do not handle fair use assertions well.

This is predictable given the fact-intensive balancing that fair use requires. It is an “equitable rule of reason” that requires careful consideration of several factors. For a recent, ironic, example, YouTube’s ContentID system reportedly flagged a video of a panel discussion of a law school copyright conference hosted by NYU’s Engelberg Center on Innovation Law & Policy. It identified multiple claims of infringement. The videos included several short clips of popular songs, which were necessary for the musical experts on the panel (experts from the well known “Blurred Lines” case) to include in order to explain to the audience how to analyze songs for similarity. Although NYU had a strong fair use claim, ContentID had no way of understanding.

While automated systems certainly have their place, it is important to have adequate processes in place to protect those users, such as academic authors, who rely heavily on fair use when sharing their own research with the world.

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To read more about Hansen’s views on how Section 512 works for universities and libraries as service providers and for his suggestions for how Congress should approach changes to Section 512, read Hansen’s full statement here.

The Missing Stakeholder of DMCA 512: Non-Infringing Users

Posted June 30, 2020

Magnifying glass on blue background with words "Focus On: Section 512 Notice & Takedown" — Photo by Markus Winkler on Unsplash

Authors Alliance thanks Professor Casey Fiesler and Corian Zacher for sharing this guest blog post.

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On May 21st, the Copyright Office released a report documenting the results of a study five years in the making. Its goal was to evaluate the current effectiveness of Section 512 of the Digital Millennium Copyright Act, which immunizes internet providers and websites that host user generated content from copyright infringement liability—as long as they provide a system that allows copyright holders to request that infringing content is removed. In practice, Section 512 has enabled websites like YouTube to continue operating without facing excessive legal costs and copyright infringement judgments. In other words, every time you see a “this video is no longer available due to a copyright claim” message, you’re seeing the results of a compromise—because without DMCA 512 takedown procedures, those copyright owners might have just sued YouTube out of existence instead.

One obvious conclusion of the study was that “no potential solution(s) will please everybody” (pg 68). However, the problem is that “everybody” as defined by the Copyright Office study seems to include only two categories of stakeholders: online service providers (OSPs, like YouTube) and large-scale copyright owners like movie studios and record companies. Even in concluding that “the notice-and-takedown system as experienced by parties today is unbalanced” (pg 72) (which we agree is true), nowhere do we see the experiences of another relevant category: content creators who make fair uses of copyrighted content. The Copyright Office virtually ignored these “transformative creators,” along with other kinds of Internet content consumers.

However, these relevant stakeholders are also deeply impacted by the lack of balance in DMCA 512. The fact that platforms like YouTube have entrusted copyright analysis with algorithms rather than human content moderators has resulted in the improper removal of many non-infringing works, particularly those that transform copyrighted content in a way that constitutes fair use—for example, remix videos, or videos that reference movie clips in order to critique a film or educate students through distance learning. The Copyright Office acknowledges that the goal of Section 512 is balancing the needs of all relevant parties, but at the same time, it vastly underestimates the extent that improper takedown notices affect users. The nod to “inaccurate notices” (when non-infringing content receives a takedown request) even focuses on the cost incurred to the OSP—with no acknowledgment of the cost to the non-infringing content creator (pg 148).

However, there is a very real cost to transformative content creators as well, and they should be a relevant stakeholder in policy discussions. Inaccurate takedown notices have a tremendous impact on all creators’ ability to share their work online, and those repeatedly accused of infringing may lose content and accounts as a result. These stakes are particularly heartfelt by small creators, who rely on the reach of platforms to share their content.

In 2017, we collaborated with the Organization for Transformative Works to conduct a survey of fan creators that focused on experiences with and attitudes about copyright, including the DMCA. There were over 2,000 survey respondents, and our qualitative analysis of these answers revealed a number of salient points drawn from real-world experiences with DMCA takedowns. Our conclusion is that between chilling effects and improper takedowns, DMCA 512 procedures have resulted in a great deal of non-infringing transformative content being lost from the internet.

The imbalance here is one of power. Most instances where participants reported that their works were accused of infringing another’s copyright involved fanvids (a type of remix video), generally on YouTube. Participants suggested that YouTube’s application of Section 512 adversely impacts works that constitute fair use because YouTube’s automated system flags content that contains any amount of copyrighted work. After all, if even judges and lawyers reasonably disagree about what constitutes fair use, how could an algorithm make that judgement? Moreover, when a video is taken down because a platform’s automated system flags it, the burden shifts to users to have their work reinstated. Faced with that burden, participants also wrote about how “scary” the process is; even YouTube’s “Copyright School” video suggests that remix video creators should consult a lawyer and emphasizes that they could “get into a lot of trouble” if they file a counter-notice incorrectly. Additionally, fan creators frequently use pseudonyms (as do many content creators) and might be wary of providing their real name on a legal document that would be connected to their account pseudonym, as is required by a counter-notice.

We heard from a number of participants who had their transformative content flagged and decided not to try to file counter-notices, because they were concerned about doing it incorrectly, they were confused by the process, or lacked the time to try to figure it out. However, from the few that did, they were often successful—suggesting that platforms remove content without considering whether the work was a fair use or not, or the work would not have been flagged in the first place. Considering the number of users who simply don’t fight it when their work is taken down, we can reasonably conclude that platforms are frequently removing non-infringing fanworks. Moreover, repeated experiences of takedowns often lead to users abandoning a platform altogether.

Overwhelmingly, the fan creators represented in our survey viewed the lack of balance in the takedown process as stifling their creativity and hindering their ability to share their work. The harm of failure to consider fair use was particularly powerful: Participants whose works were removed explained that they believed that their works constituted fair use, offered examples of uses that fit squarely within fair use by being noncommercial and being used for criticism and parody, and discussed how removal of those works harmed their individual creativity and ability to participate meaningfully in their community.

By assuming that all users are “infringers” or “pirates” and therefore an adversary to the 512 process, the Copyright Office does a disservice to the many content creators who reasonably and legally rely on fair use. Instead, they should be considered a stakeholder along with OSPs and copyright holders, such that their benefits and harms are part of the balance as well.

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Casey Fiesler is an Assistant Professor of Information Science at University of Colorado Boulder, where she studies online communities, governance, and ethics. Her dissertation work for a PhD in human-centered computing (following a law degree) examined the chilling effects of platform design and policy on transformative content creators. She is a member of the OTW legal committee.

Corian Zacher is a May 2020 graduate of the University of Colorado Law School. Her research focuses on technology law and policy.

Authors Alliance Submits Reply Comments to USCO on the Meaning of Publication in the Online Context

Posted June 16, 2020

In March, Authors Alliance submitted comments to the U.S. Copyright Office in response to its request for public input on the meaning of “publication” in the online context. This week, we submitted reply comments to support our position.

In our initial comments, we encouraged the Copyright Office to adopt guidance stating that “publication” occurs when a work is first offered, under the rights-owner’s authority, for viewing online without technological restrictions that prevent downloading or other reuse. This position is supported by the statutory text, the legislative history, the case law, and the policy goals of (1) clear, bright-line guidance and (2) promoting broad use of works by reducing the availability of statutory damages and fee-shifting, which chill use and expression.

Our reply comments explain and expand on the stakes of “forfeiture of rights” under Section 411, a provision of the Copyright Act that provides that a civil action for copyright infringement cannot stand where the plaintiff knowingly included inaccurate information in its copyright application that would have caused the Copyright Office to deny that registration. We explain why this provision and case law underscore the necessity of clear and bright-line guidance, and how the intuitive and unambiguous approach to online publication proposed by Authors Alliance responds to that critical issue. Our comment also explains how a careful examination of the effects of registration errors shows that the stakes are not that high, and most rights can be substantially restored after dismissal due to an invalid registration, with the exception of the already undesirable right to statutory damages.

Authors Alliance thanks the exceptional team at Latham & Watkins for preparing these comments. To read the full comment, click here.

A Daughter’s Quest to Give New Life—and New Covers—to her Father’s Books

Posted June 11, 2020

Covers for the first three of William Melvin Kelley’s republished books,
designed by his daughter Jesi Kelley

Even before The New Yorker article was published that sparked renewed interest in William Melvin Kelley’s books, his daughter Jesi Kelley was trying to find new ways to disseminate his books. Part of her and her father’s efforts stemmed from a lack of responsiveness from traditional publishers. While Mr. Kelley had finished a new manuscript, no one seemed interested in publishing it, or republishing his older works which had fallen out of print. But with a background in entertainment, the arts, and advertising sales, Ms. Kelley had ideas for how to market the books through new platforms, including creating audiobooks and self-publishing. The issue with her ideas, however, was distribution—how to best amplify her father’s voice so that people would know his books existed in the first place.

William Melvin Kelley (photo by William Anderson)

In a prescient manner, William Melvin Kelley told his daughter that he knew republishing his books on a large scale wouldn’t happen in his lifetime. So, when William Melvin Kelley passed away in early 2017, Ms. Kelley focused her energy on getting his books republished as a way to honor her father’s dreams and legacy. The first place to start was determining who had the rights to publishing the books. The Kelleys—Jesi, her sister, and their mother—owned the rights to two of the five books because the rights had reverted when the books fell out of print. One was in the control of an independent publisher. Another, A Different Drummer, was still controlled by Kelley’s original publisher, Doubleday, which had since been bought by Random House. The last book’s rights were “floating in the ether,” as Ms. Kelley puts it, because the family had done a reprint with Howard University Press years before, only for the press to go out of business.

The real turning point in Ms. Kelley’s efforts to republish her father’s books was after The New Yorker published an article on her father, and people started reaching out. Eventually Ms. Kelley chose to work with Random House and William Morris, her father’s old publisher and agent. Random House fit because it was a large publisher, meeting Ms. Kelley’s concern about large-scale marketing, and the publisher already owned the rights to one of the books. Additionally, it was easier for the Kelleys to work with one publisher and have some uniformity across publishing the books, rather than shop each book around to publishers across the world. The Kelleys chose to stay with William Morris, who had been the agency of record, because the company and its agents gained Ms. Kelley’s trust by taking the time to speak with her and answer questions she had, explaining topics such as rights reversion and copyright termination. William Morris also helped Ms. Kelley sort out ownership of the rights to her father’s books.

As Ms. Kelley navigated the publishing world—speaking with agents, publishers, and lawyers—she also turned to the internet for guidance and came upon the Authors Alliance website. According to Ms. Kelley, the Authors Alliance website had the most concise, comprehensive collection of information that pertained to managing authors’ rights. The resources were especially helpful when Ms. Kelley was negotiating the contract with Random House, which was for all five of William Melvin Kelley’s books. Ms. Kelley wanted to retain control over the look of her father’s books, especially the covers.

Ms. Kelley’s dedication to the book covers stemmed from a prior publisher that put a cover on one of her father’s books that he absolutely hated, because he felt as if the cover had nothing to do with the book itself. In fact, the cover was a stock image that had been selected without having read William Melvin Kelley’s book first. Additionally, Ms. Kelley perceives of her father’s books as a series, because he built an entire world in which characters move in and out of the different books. Thus, she wanted the covers to reflect a unifying theme. So when Ms. Kelley negotiated with Random House for control over the books’ covers, she and her family were prepared to walk away from a deal if the publisher did not agree.

Ms. Kelley not only wanted control though; as an artist and graphic designer, she wanted to design the books’ covers too. Ms. Kelley gave a presentation to Random House on three potential cover ideas, which she designed after studying other books jackets she’d seen in the market. Luckily, Ms. Kelley’s vision for her father’s books aligned with Random House’s concerns on marketability, and she has designed the covers for the three books that have been published so far: A Different Drummer, Dem (available June 30, 2020), and A Drop of Patience (available June 30, 2020). She has also designed the covers for the remaining two books, Dancers on the Shore and Dunfords Travels Everywheres, which are expected to be republished in the fall of 2020.

When Ms. Kelley considers her father’s experience with publishing and her own time getting her father’s works republished, she’s especially aware of how nebulous the publishing industry can be. William Melvin Kelley didn’t think about the business of publishing, while for Ms. Kelley it was her entire focus in republishing her father’s books. She did not have to worry about writing the books themselves. She was also able to be more objective about her father’s books, and prioritize what really mattered to her and her family—getting the books back into print with covers that represented the stories. Her advice to writers is to take the time to put on their “marketing hat” and figure out what kind of book they’re writing and who they want the audience to be. For Ms. Kelley, she wants young black men of all backgrounds to read her father’s books—not just literary aficionados.

Authors Alliance is grateful to Diana Buck, Copyright Intern, for this post.

US Copyright Office Issues Report on Section 512

Posted June 3, 2020

Authors Alliance is grateful to Diana Buck, Copyright Intern, for sharing this summary of the US Copyright Office’s recent Report on Section 512, a part of the Digital Millennium Copyright Act (“DMCA”) enacted in 1998 to provide a framework for copyright owners and online service providers (“OSPs”) to address copyright infringement online.

The United States Copyright Office recently released a Report on the operation of Section 512. The Report is the culmination of a five-year study of whether Section 512 is working as originally intended to balance the interests of OSPs and copyright owners.

Section 512 gives OSPs a “safe harbor” from secondary liability for their users’ copyright infringement. In return, OSPs are required to implement certain features to protect copyright holders, most notably “notice and takedown” procedures. Under notice and takedown procedures, copyright owners can get infringing material removed from online sites by sending brief “takedown notices” to OSPs, without the expense and hassle of filing a lawsuit. To be eligible for the safe harbor, upon receiving a takedown notice with the statutorily-required information, the OSP must remove the allegedly infringing material.

In preparing the Report, the Copyright Office sought input from stakeholders. OSPs generally praised Section 512 for allowing them to grow their services and serve the public without facing debilitating lawsuits. Copyright owners generally expressed concern that they couldn’t utilize Section 512 in a meaningful way to address copyright infringement because infringing material reappears across the internet even after it is removed in response to takedown notices. User groups critiqued the notice and takedown regime in a different way, contending users’ interests are not being adequately protected when their content is mistakenly targeted and removed.

The Copyright Office’s Report concludes that the balance has tilted askew, failing to meet the concerns of copyright owners. However, the Copyright Office generally recommends that Congress clarify and revise some of the language of Section 512, rather than make any large changes that would go beyond the original construct of the DMCA. The Copyright Office outlines areas for potential revision, including:

Clarifying what exactly constitutes a “repeat infringer,” and whether allowing OSPs to have unwritten policies for termination of repeat infringers’ access to OSP platforms has Section 512’s desired deterrent effect.

Clarifying the proper knowledge requirements for an OSP to receive safe harbor protection, including delineating a lack of “actual knowledge” of infringing activities from a lack of “red flag knowledge,” which is when an OSP is aware of facts and circumstances that make infringing activity apparent.

Clarifying whether a copyright owner, when submitting a takedown notice, must include a unique URL for every instance of infringement on an OSP’s service.

Considering an alternative dispute resolution model for whether material should be removed and reinstated, instead of requiring that a copyright owner must file a federal lawsuit.

Monitoring the impact of the Ninth Circuit’s decision in Lenz v. Universal Music Corp., and whether it is appropriate for Congress to clarify whether copyright owners who send takedown notices should have to meet an implied good faith requirement that they assessed whether the potentially-infringing use was actually fair use.

Advocacy groups for large content creators, such as the Association of American Publishers (“AAP”) and the Motion Picture Association of America, issued statements that commend the Copyright Office’s report, agreeing with the Report’s conclusion that the DMCA fails to adequately protect creators’ rights.

Academics and organizations critical of the Report argue that it favors the copyright industry in almost every respect, potentially placing new burdens on OSPs and allowing notice senders to abuse Section 512 by using notice and takedown to censor content they do not own or control. Several commentators point out that the Report fails to account for internet users’ interests. Copyright scholar and Authors Alliance board president Pamela Samuelson also criticizes the Report’s stance on the Lenz decision and for chiding OSPs for failing to remove content that the OSPs believe is fair use. Critics express concern that the Report supports terminating internet access for users on the basis of allegations of infringing activity. These critics express relief, at least, that the Report did not go as far as suggesting site-blocking or notice-and-staydown (areas where the Copyright Office instead suggested that additional study was needed).

Whether to make any of the changes suggested in the Report is a legislative decision for Congress. The Senate Judiciary Subcommittee on Intellectual Property is examining the DMCA and has announced plans to draft changes to the law as early as this year. The Copyright Office, in its Report, stated its intention to prepare education materials for copyright owners and OSPs on their rights and obligations under Section 512, including rolling out a new website, copyright.gov/DMCA, for that purpose.

Authors Alliance Statement on Publisher Lawsuit Against Internet Archive

Posted June 2, 2020

Photo of book and Open LIbrary card — Photography courtesy of the Internet Archive

Yesterday, a group of commercial publishers filed suit against the Internet Archive, arguing that making electronic copies of books available through Open Library and the National Emergency Library constitutes copyright infringement. The lawsuit takes aim at the Controlled Digital Lending (“CDL”) model and the Internet Archive’s National Emergency Library.

This suit conflates two distinct approaches to lending works, each with different copyright implications. Regardless of how one feels about—and the legality of—the National Emergency Library (a temporary response to the urgent pandemic crisis), Authors Alliance fully supports Controlled Digital Lending and believes the attempt to challenge it in the courts is without merit.

Under the CDL digitize-and-lend model, libraries make digital copies of scanned books from their collections available to patrons (the hard copy is not available for lending while the digital copy is checked out, and vice versa). A library can only circulate the same number of copies that it owned before digitization. Like physical books, the scanned copies are loaned to one person at a time and are subject to limited check-out periods. The Internet Archive relies on CDL to make many of its scanned books available through the Open Library.

The National Emergency Library expands on the CDL model by eliminating waitlists for books through at least June 30, 2020. The Internet Archive launched the National Emergency Library in March after libraries across the country closed in response to the COVID-19 outbreak, leaving their physical collections inaccessible to patrons. Unlike books made available through CDL, books available through the National Emergency Library are not subject to the “owned-to-loaned” ratio.

Authors Alliance has long been a supporter of the CDL model, which helps authors share their creations with readers, promotes the ongoing progress of knowledge, and advances the public good—objectives that are consistent with the mission of Authors Alliance. Several of our members have spoken out in favor of the model. CDL is particularly beneficial for authors whose works are out of print or otherwise commercially unavailable: In the absence of digitizing and lending these books, many would simply be inaccessible to readers. The CDL model is a boon to the authors of these and other books, allowing them to find new audiences online.

Authors Alliance has not taken a position on the National Emergency Library, but we urge publishers and others to recognize that this is an extraordinary time of emergency and to be flexible about efforts to enable students, scholars, medical professionals, and the shelter-in-place public to read. We applaud the publishers who have made scholarly content freely available to assist with access for the many students, faculty, and researchers now working remotely due to the global pandemic.

Implied Licenses in Copyright Law

Posted May 27, 2020

Authors Alliance is grateful to Jacqui Lipton for this guest post on implied licenses. Her new book, Law and Authors: A Legal Handbook for Writers, is an approachable, reader-friendly resource to help authors navigate the legal landscape of the contemporary publishing industry. Through case studies and hypothetical examples, Law and Authors addresses issues of copyright law, including explanations of fair use and the public domain; trademark and branding concerns for those embarking on a publishing career; laws that impact the ways that authors might use social media and marketing promotions; and privacy and defamation questions that writers may face. Get your copy today from the University of California Press (use discount code 17M6662 for 30% off).

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Authors deal with copyright issues all the time, both in relation to their own, and other people’s, work: for example, if an author wants to use someone else’s photography or graphic to illustrate a point made in a book, or use a line of a poem or song as a chapter epigraph. Usually, a publisher will ask the author to obtain permission for these uses. In the absence of permission, or in the absence of a traditional publisher seeking permission (e.g., in the self-publishing context), the go-to defense for unauthorized use, if a problem arises, is typically fair use.

This blog post is about another defense to copyright infringement that can arise where an author thinks she has permission to use copyrighted material in the absence of a clear contract, based on surrounding facts. Enter the implied license doctrine. While it can be difficult to succeed with this defense, it’s worth knowing about.

Implied licenses in the copyright context are an outgrowth of basic contract law principles where agreements are sometimes implied between two or more people in circumstances where a judge or jury believes that those people would have made a contract if they’d turned their minds to it. The typical example given in law school classrooms involves lawn mowing: Assume you mow your neighbor’s lawn every Sunday for three weeks, and she gives you $20 each time. Then you mow her lawn the next week and she refuses to pay. Do you have a contract? A contract would probably be implied here based on the way you both acted. Your neighbor would likely have to pay you the $20 for the fourth week.

Copyright law has adopted a similar approach in terms of licenses to use a copyright work if it seems like the parties would have created a license under the circumstances. An implied license, if it exists, must, by definition, be non-exclusive because U.S. copyright law requires exclusive licenses to be in writing.

Courts have differed in the tests they use for implying a copyright license. Some courts use a three-step test that largely developed out of situations where the parties had an express agreement in place, but deviated from its terms in practice: for example, where a contract requires invoices to be generated and payments to be made prior to engaging in a licensed use, but the parties have engaged in a course of dealing that allows invoices and payments to post-date uses (e.g., publication) of licensed works.

In these kinds of cases, many courts have asked whether the copyright holder: (1) creates a work at another person’s request; (2) delivers the work to the other person; and, (3) intends the other person to copy and distribute the work. If the answer to all of these questions is “yes”, a license will likely be implied.

For example, in Latimer v Roaring Toyz, 601 F.3d 1224 (2010) a freelance photographer (Latimer) was hired by Kawasaki to photograph some tricked-out Kawasaki motorbikes for promotional materials connected to a bike show. The pictures were later used for promotions in Cycle World magazine articles and on Roaring Toyz’s website. Kawasaki and Roaring Toyz argued that there was an implied license to use the photos in all of these contexts. The court held that there was an implied license for Roaring Toyz to use the photographs for the bike show, but not for any other purposes. (The license had to be implied here because the original contract was with Kawasaki, not Roaring Toyz.)

Applying the three-step test, the court noted that: (1) Latimer took the photos at Kawasaki’s request; and, (2) he delivered the photographs to Kawasaki and Roaring Toyz; (3) for use at the show. This was enough evidence to support an implied license to use the photos at the show. However, the license didn’t cover the additional uses on Roaring Toyz’s websites or in the Cycle World magazine.

Not all courts rely on the three-step test for implied licenses. Some take a much more wholistic view of whether an implied license has been established. In Pelaez v McGraw Hill, 399 F. Supp. 3d 120 (2019), another case involving arguments about unauthorized uses of photography, the court noted that the correct legal test for an implied license is whether the parties conduct, taken as a whole, supports the intent to grant a license. This approach, taken in many cases, is more like the standard common law approach to implying any kind of contractual obligation to unclear facts.

In Pelaez, Judge Wood emphasized the fact that a license cannot be imposed on the basis of the unilateral expectations of one party. It is not enough for a person to subjectively believe there was a license; there must be actual facts from which the court could infer that both parties intended a license, or would have intended a license if they had turned their minds to it. If an author or other creative artist makes it clear, say, on their website that they do not consent to unauthorized use of their material (e.g., many authors say they “do not allow fanfiction”), it’s unlikely a court would imply a license in relation to the relevant works.

Because of the challenges in constructing implied licenses out of often ambiguous facts, if you want to re-purpose someone else’s work in your own manuscript, it’s a better idea to either obtain permission or to see if you raise a good fair use argument. More information on fair use is available here.

Of course, a court can always “get it wrong” when working by implication, which is why it’s always better to specifically say clearly what uses are, and are not, allowed, under a written contract. Even if you post your work online, express license terms are easier to create than ever before. Creative Commons licenses enable authors and others to release work online with clear license terms attached. Stock photography websites, for example, do a very good job of clearly setting out the licensing terms for images released via their services. Terms can include both money and attribution, as well as restrictions on future commercial uses. Further information on Creative Commons licenses is available here.

Jacqui Lipton is the founder of Raven Quill Literary Agency as well as a consultant on business and legal issues for creative artists. She also teaches law and legal writing at the University of Pittsburgh, as well as several online venues. She writes regular columns on legal and business issues for authors for SCBWI, Luna Station Quarterly, Catapult, and Savvy Authors. Her book Law and Authors: A Legal Handbook for Writers is available from University of California Press.

Fagundes & Perzanowski on Abandoning Copyright

Posted May 19, 2020

Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for providing this review of an academic article proposing a legal framework to facilitate copyright abandonment.

In a new article, Abandoning Copyright, Dave Fagundes, Professor of Law at the University of Houston, and Aaron Perzanowski, Professor of Law at Case Western Reserve University, review the doctrine of copyright abandonment and suggest reforms to facilitate copyright abandonment and promote a richer public domain.

Copyright abandonment refers to the voluntary and permanent relinquishment of an owner’s rights in a copyrighted work prior to the expiration of the work’s copyright term. In general, an author abandons her copyright by forming an intent to relinquish her rights and engaging in an overt act reflecting that intent. Abandoned works become part of the public domain, free from copyright and available for anyone to use. Fagundes and Perzanowski propose that copyright law should facilitate the legal and administrative process of abandonment, suggesting that doing so would realign copyright law with the constitutional intent of incentivizing creation to enrich the public.

The authors acknowledge that abandoning copyrights prevents an author from extracting the economic value of a work that is derived from exploiting exclusive rights. In addition, an author who abandons copyright also gives up the ability to prevent uses to which they would object. However, the public welfare is greatly benefited as the work becomes freely available for anyone to access and use. As such, abandonment can encourage new creative production by making more “raw material” available for other creators to use in their own works, whether it be original creation or derivative works (the authors point to examples of multiple movie adaptations based on literary works in the public domain, such as Alice in Wonderland, Peter Pan, The Jungle Book, Sherlock Holmes, King Arthur, and Robin Hood).

Fagundes and Perzanowski criticize the current state of the law surrounding copyright abandonment: The lack of a clear, reliable way to abandon copyright frustrates authors who wish to abandon their copyrights, and the practical effectiveness of abandonment is undermined by the lack of a broadly accessible record of abandoned works. The Copyright Act of 1976 contains no explicit provision on how an author may opt out of copyright law’s grant of economic rights. They also highlight that although the U.S. Copyright Office records notices of abandonment, it does not indicate whether such recordation is legally effective in actually abandoning the copyrights. Finally, they point out that the doctrine of abandonment is ill-defined and courts are inconsistent in their rulings, often mixing abandonment with other doctrines such as forfeiture or waiver. They ultimately conclude that these shortcomings might discourage authors who would otherwise be inclined to abandon their works because the practice appears inaccessible.

In light of the above, Fagundes and Perzanowski propose the following:

Courts should clarify the standard for copyright abandonment and distinguish abandonment from other related doctrines.

Courts should favor clear written and oral statements of intent to abandon and narrowly interpret all other forms of evidence of intent, especially those based on the physical disposition of copies of a work.

Congress should amend the Copyright Act to specifically provide for the power to abandon copyrights and dedicate works to the public domain and to define a standard and associated mechanism for abandonment.

Congress could empower the Copyright Office to define a standard for abandonment and develop administrative mechanisms for evaluating, recording, and publicizing notices of abandonment. This filing process should be free.

The law should clarify the public domain status of works subject to private dedication instruments like Creative Commons’ CC0 license, and a complete and authoritative registry should be developed to search for abandoned works.

Fagundes and Perzanowski also consider strategies to bend the incentives of copyright owners towards abandonment.

The full text of the article can be found here.

Authors Alliance Voices Support for Public Access to Federally Funded Research

Posted May 11, 2020

Authors Alliance submitted a comment to the Office of Science and Technology Policy urging the adoption of a federal policy that would make the results of all federally funded research immediately available for the public to freely access and use. Removing price and permission barriers is consistent with most scientific authors’ wishes; supports learning, teaching, research, and practice; and creates a more hospitable environment for scientific advancement.

Our comment recommends:

That the results of all federally funded research be made immediately available, with a zero-embargo policy. The current 12-month embargo period allows for an unnecessary delay that hinders the progress of knowledge.

That scholarly publications resulting from federally funded research be made publicly available under a Creative Commons Attribution (CC-BY) license. Licensing scholarly publications under a CC-BY license removes permission barriers that could otherwise prevent other researchers and the general public from fully accessing, sharing, and reusing scholarly publications.

That data resulting from federally funded research be made available and dedicated to the public domain using a CC0 license. When data are readily available in the public domain, other researchers and the general public are able to validate, replicate, and build on previous research.

Read the full text of the comment here.

Authors Alliance is grateful to student attorney Kennedy Smith and Professor Blake Reid of the Samuelson-Glushko Technology Law & Policy Clinic (TLPC) at Colorado Law for their assistance drafting this comment.

Federal Court of Appeal Deals Access Copyright Huge Blow as it Overturns York University Copyright Decision

Posted May 4, 2020

We thank Professor Michael Geist for sharing this analysis of the York University v. Access Copyright decision, cross-posted from his website where it was made available under a CC BY 2.5 CA license.

York University Station by wyliepoon https://flic.kr/p/HGWRpp (CC BY-NC-ND 2.0)

The Federal Court of Appeal delivered its long-awaited decision the York University v. Access Copyright case yesterday, setting aside the lower court ruling that I had described as “a complete victory” for Access Copyright. The latest ruling will not leave York University and the education community completely happy given the court’s fair dealing analysis, but winning on the mandatory tariff issue removes both the threat of mandated payments to Access Copyright as well as the possibility of a copyright infringement lawsuit by the copyright collective. That represents an enormous win both for York and for a fair approach to copyright licensing that ensures users have licensing choice.

Access Copyright quickly claimed the decision was a “mixed outcome”, but losing on the mandatory tariff issue eliminates its ability to force the education community to enter into its licence. The copyright collective has spent much of the past decade lobbying the Canadian government to reverse the 2012 copyright reforms that added the education purpose to fair dealing. That approach was rejected by the Government’s copyright review, which opened the door to a further expansion with a “flexible fair dealing” model. But the real story of education and copyright in Canada for the past twenty years has been the string of appellate decisions that have largely unravelled the legal underpinnings of the Access Copyright model. The Supreme Court’s CCH decision brought user rights and an emphasis on fair dealing. The Access Copyright v. Alberta decision ended the claim that there was a meaningful distinction between student copying and teachers’ copying for students. This latest decision addresses the mandatory tariff issue, confirming that educational institutions can opt-out of the Access Copyright licence as appropriate and that any claims of infringement will be left to copyright owners to address, not Access Copyright.

To be clear, the decision does not mean that there is no compensation for authors and publishers nor that their copyrights are unenforceable. Copyright law still grants them exclusive rights over their works subject to users’ rights such as fair dealing. This right includes the ability to pursue infringement claims backed by statutory damages. Rather, users have choice in how they obtain the necessary rights for the works they use. Access Copyright has long claimed there was effectively no choice as its approach was mandatory once copying was captured by the licence. This decision canvasses decades of legislative history to conclusively demonstrate that this was never the case. Instead, the Access Copyright licence – even once certified by the Copyright Board – is an option available to users. However, educational users today have a wide range of alternative options including site licensing, open access materials, transactional licences, and fair dealing. Many institutions now use a combination of these paid and unpaid approach as a better approach.

Where does that leave Access Copyright? The copyright collective must compete in the market by offering a compelling value proposition to potential licensees, who will compare the Access Copyright licence to the other available licensing options. If authors or publishers believe that that licensing still leads to infringement, they – not Access Copyright – are entitled to pursue statutory damages in court.

Read the rest of Professor Geist’s analysis of the case and the court’s discussion of the mandatory tariff and fair dealing issues here.