Category Archives: Blog

Open Access and University IP Policies in the United States

Posted August 18, 2023

Perhaps the most intuitive statement in the whole of the U.S. Copyright Act is this: “Copyright in a work protected under this title vests initially in the author. . . ..” Of course authors are the owners of the copyright in their works.

In practice, however, control over copyrighted works is often more complicated. When it comes to open access scholarly publishing, the story is particularly complicated because the default allocation of rights is often modified by an complex series of employment agreements, institutional open access policies, grant terms, relationships (often not well defined) between co-authors, and of course the publishing agreement between the author and the publisher. Because open access publishing is so dependent on those terms, it’s important to have a clear understanding of who holds what rights and how they can exercise them.

Work for Hire and the “Teacher Exception”

First, it’s important to figure out who owns rights in a work when it’s first created. For most authors, the answer is pretty straightforward. If you’re an independent creator, you as the author generally own all the rights under copyright. If co-authors create a joint work (e.g., co-author an article), they both hold rights and can freely license that work to others, subject to an accounting to each other.

If, however, you work for a company and create a copyrighted work in the scope of your employment (e.g., I’m writing this blog post as part of my work for Authors Alliance) then at least in the United States, the “work for hire” doctrine applies and, the law says, “the employer or other person for whom the work was prepared is considered the author.” For people who aren’t clearly employees, or who are commissioned to make copyrighted works, whether their work is considered “work for hire” can sometimes be complicated, as illustrated in the seminal Supreme Court case CCNV v. Reid, addressing work for hire in the context of a commissioned sculpture.

For employees of colleges or universities who create scholarly works, the situation is a little more complicated because of a judicially developed exception to the work-for-hire doctrine known as the “teacher exception.” In a series of cases in the mid-20th Century, the courts articulated an exception to the general rule that creative works produced within the scope of one’s employment were owned by the employer for teachers or educators. Those cases each have their own peculiar facts, however, and most significantly, they predated the 1976 Copyright Act, which was a major overhaul of U.S. copyright law. Whether the “teacher exception” continues to survive as a judge-made doctrine is highly contested. Despite the massive number of copyrighted works authored by university faculty after the 1976 Act (well over a hundred million scholarly articles alone, not to mention books and other creative works), we have seen very few cases addressing this particular issue.

There are a number of law review articles and books on the subject. Among the best, I think, is Professor Elizabeth Townsend-Gard’s thorough and worthwhile article. She concludes, based on a review of past and modern case law, that the continued survival of the teacher exception is tenuous at best:

“The teacher exception was established under the 1909 act by case law, but because the 1976 act did not incorporate it, the “teacher exception” was subsumed by a work-for-hire doctrine that the Supreme Court’s definition of employment in CCNV v. Reid places teachers’ materials under the scope of employment. Thus the university-employers own their original creative works. No court has decided whether the “teacher exception” survived Reid, but the Seventh Circuit in Weinstein, decided two years before Reid, had already transferred the “teacher exception” from a case-based judge made law to one dictated by university policy.”

University Copyright and IP policies

Whatever the default initial allocation of copyright ownership, authors of all types must also understand how other agreements may modify control and exercise of copyright. These policies can be somewhat difficult to untangle because there actually may be layers of agreements or policies that cross reference each other and are buried deep within institutional policy handbooks.

For academic authors, this collection of agreements typically includes something like an employee handbook or academic policy manual, which will include policies that all university employees must agree to as a condition of employment. Typically, that will include a policy on copyright or intellectual property. Regardless of whether the teacher exception or work-for-hire applies, these agreements can override that default allocation of rights and transfer them, both from the creator to the university, or from university to the creator.

These policies differ significantly in the details, but most university IP policies choose to allocate all or substantially all rights under copyright to individual creators of scholarly works, notwithstanding the potential application of the work for hire doctrine. In other words, even though copyright in faculty scholarly works may initially be held by the university, through university policy those rights are mostly handed over to individual creators. The net effect is that most university IP policies treat faculty as the initial copyright holders even if the law isn’t clear that they actually are.

Some universities, like Duke University, say nothing about “work for hire” in their IP policies but merely “reaffirm[] its traditional commitment to the personal ownership of intellectual property rights in works of the intellect by their individual creators.” Others like Ohio State, are similar, stating that copyright in scholarly works “remains” with their creators, but then also provide that “the university hereby assigns any of its copyrights in such works, insofar as they exist, to their creators,” which can act as a sort of savings clause to address circumstances in which the there may be uncertainty about ownership by individual creators.

Others, like Yale, are a little clearer about their stance on work-for-hire. Yale explains that “The law provides . . . that works created by faculty members in the course of the their teaching and research, and works created by staff members in the course of their jobs, are the property of the University,” but then goes on to recognize that “[i]t is traditional at Yale and other universities, however, for books, articles and other scholarly writings by a faculty member to be deemed the property of the writer . . . . In recognition of that longstanding practice, the University disclaims ownership of works by faculty, staff, postdoctoral fellows and postdoctoral associates and students. . . .” Another example of a university taking a similar approach is the University of Michigan.

Carve outs and open access policies

Every university copyright or IP policy that I’ve seen includes some carve outs from the general rule that copyright will, one way or another, end up being held by individual creators. Almost universally, universities IP policies provide that the university will retain rights sufficient to satisfy grant obligations. Some universities’ IP policies simply provide that, for example, ownership shall be determined by the terms of the grant (see, for example, the University of California system policy). In other cases, however, university IP policy accomplishes compliance with grants simply stating that all intellectual property of any kind (including copyright) created under a grant is owned by the university, full stop. This, therefore, gives the university sufficient authority to satisfy whatever grant obligations it may have. For example, the University of Texas system states that it will not assert ownership of copyright in scholarly works, but that provisio is subject to the limitation that “intellectual property resulting from research supported by a grant or contract with the government (federal and/or state) or an agency thereof is owned by the Board of Regents.” These kinds of broad ownership claw-backs raise some hard questions when it comes to publishing scholarly work. For example, when a UT author personally signs a publication agreement transferring copyright for an article that is the result of grant funding, do they actually hold the rights to make that transfer effective?

For open access, these grant clauses are important because they are the operative terms through which the university complies with funder open access requirements. Sometimes, these licensing clauses lie somewhat dormant, with funders holding but not necessarily exercising the full scope of their rights. For example, for every article or other copyrighted work produced under a federal grant, even prior to the recent OSTP open access announcement, the government already reserved for all works produced under federal grants a broad “royalty-free, nonexclusive and irrevocable right to reproduce, publish, or otherwise use the work for Federal purposes, and to authorize others to do so.”

Some universities also retain a broad, non-exclusive license for themselves to make certain uses of faculty-authored scholarly work, even while providing that the creator owns the copyright. For example, Georgia Tech’s policy provides that individual creators own rights in scholarly works, but Georgia Tech retains a “fully paid up, universe-wide, perpetual, non-exclusive, royalty-free license to use, re-use, distribute, reproduce, display, and make derivative works of all scholarly and creative works for the educational, research, and administrative purposes of [Georgia Tech].” Others such as the University of Maryland are less specific, providing simply that although the individual creator owns rights to their work, “the University reserves the right at all times to exercise copyright in Traditional Scholarly Works as authorized under United States Copyright Law.” Those kinds of broad licenses would seem to give the university discretion to make use of scholarly work, including, I think, for open access uses should the university decide that such uses are desirable.

Finally, a growing number of universities have policies, enacted at the behest of faculty, that specifically provide rights to make faculty scholarship openly available. The “Harvard model” is probably the most common, or at least the most well known. These types of policies allocate a license to the university, to exercise on behalf of the individual creator, with the specific intent of making the work available free of charge. Often these policies will include special limitations (e.g., the university cannot sell access to the article) or allow for faculty to opt-out (often by seeking a waiver).

Pre-existing licenses and publishing agreements

The maze of policies and agreements can matter a great deal for the legal mechanics of effectively publishing an article openly. Of course in the scenario where authors hold rights themselves, they can retain sufficient rights through their publishing contract so they can make their work openly available, typically either via “green open access” by posting their own article to an institutional repository, or by “gold open access” directly from the publisher (though these are sometimes accompanied by a hefty article processing fee). Tools like the SPARC open access addendum are wonderful negotiating tools to ensure authors retain sufficient rights to achieve OA.

That works sometimes, but often publishing contracts come with unacceptably restrictive strings attached. For individual authors publishing with journals and publishers that have great market power, they often have little ability to negotiate for OA terms that they would prefer.

In these situations, a pre-existing license can be a major advantage for an author. For example, for authors who are writing under the umbrella of a Harvard-style open access policy, the negotiating imbalance with journals is leveled, at least in part because the journal knows that the university has a pre-existing OA license and also knows that although those policies often permit waivers, it’s not as easy as just telling the author “no” to claw that license back. The same is true about other forms of university pre-existing licenses that could be used to make a work available openly, such as those general licenses I mention that are retained by Georgia Tech or Maryland. While these kinds of pre-existing licenses are seldom acknowledged in journal publishing agreements, sophisticated publishers with large legal teams are undoubtedly aware of them. Because of that, I think there are strong arguments that their publishing agreements with authors implicitly incorporate them (or, if not, good arguments that a publisher that does not recognize them is intentionally interfering with a pre-existing contractual relationship between author and their university). Funder mandates, made effective through university IP policies, take the scenario a step further and force the issue: either the journal acquiesces or it doesn’t publish the paper at all. There is often no waiver option. Of course there are other pathways that both funders and journals may be willing to accept – many funders are willing to support OA publishing fees, and many journals will happily accept OA license terms for a price.

Conclusion

Although the existing, somewhat messy, maze of institutional IP policies, publishing agreements, and OA policies can seem daunting, understanding their terms is important for authors who want to see their works made openly available. I’ll leave for another day to explore whether it’s a good thing that the rights situation is so complex. In many situations, rights thickets like these can be a real detriment to authors and access to their works. In this case the situation is at least nuanced such that authors are able to leverage pre-existing licenses to avoid negotiating away the bundle of rights they need to see their works made available openly.

Prosecraft, text and data mining, and the law

Posted August 14, 2023

Last week you may have read about a website called prosecraft.io, a site with an index of some 25,000 books that provided a variety of data about the texts (how long, how many adverbs, how much passive voice) along with a chart showing sentiment analysis of the works in its collection and displayed short snippets from the texts themselves, two paragraphs representing the most and least vivid from the text. Overall, it was a somewhat interesting tool, promoted to authors to better understand how their work compares to those of other published works.

The news cycle about prosecraft.io was about the campaign to get its creator Benji Smith to take the site down (he now has) based on allegations of copyright infringement. A Gizmodo story about it generated lots of attention, and it’s been written up extensively, for example here, here, here, and here.

It’s written about enough that I won’t repeat the whole saga here. However, I think a few observations are worth sharing:

1) Don’t get your legal advice from Twitter (or whatever its called)

“Fair Use does not, by any stretch of the imagination, allow you to use an author’s entire copyrighted work without permission as a part of a data training program that feeds into your own ‘AI algorithm.’” – Linda Codega, Gizmodo (a sentiment that was retweeted extensively)

Fair use actually allows quite a few situations where you can copy an entire work, including situations when you can use it as part of a data training program (and calling an algorithm “AI” doesn’t magically transform it into something unlawful). For example, way back in 2002 in Kelly v. Ariba Soft, the 9th Circuit concluded that it was fair use to make full text copies of images found on the internet for the purpose of enabling web image search. Similarly, in AV ex rel Vanderhye v. iParadigms, the 4th Circuit in 2009 concluded that it was fair use to make full text copies of academic papers for use in a plagiarism detection tool.

Most relevant to prosecraft, in Authors Guild v. HathiTrust (2014) and Authors Guild v. Google (2015) the Second Circuit held that Google’s copying of millions of books for purposes of creating a massive search engine of their contents was fair use . Google produced full-text searchable databases of the works, and displayed short snippets containing whatever term the user had searched for (quite similar to prosecraft’s outputs). That functionality also enabled a wide range of computer-aided textual analysis, as the court explained:

The search engine also makes possible new forms of research, known as “text mining” and “data mining.” Google’s “ngrams” research tool draws on the Google Library Project corpus to furnish statistical information to Internet users about the frequency of word and phrase usage over centuries. This tool permits users to discern fluctuations of interest in a particular subject over time and space by showing increases and decreases in the frequency of reference and usage in different periods and different linguistic regions. It also allows researchers to comb over the tens of millions of books Google has scanned in order to examine “word frequencies, syntactic patterns, and thematic markers” and to derive information on how nomenclature, linguistic usage, and literary style have changed over time. Authors Guild, Inc., 954 F.Supp.2d at 287. The district court gave as an example “track[ing] the frequency of references to the United States as a single entity (‘the United States is’) versus references to the United States in the plural (‘the United States are’) and how that usage has changed over time.”

While there are a number of generative AI cases pending (a nice summary of them is here) that I agree raise some additional legal questions beyond those directly answered in Google Books, the kind of textual analysis that prosecraft.io offered seems remarkably similar to the kinds of things that the courts have already said are permissible fair uses.

2) Text and data mining analysis has broad benefits

Not only is text mining fair use, it also yields some amazing insights that truly “promote the progress of Science,” which is what copyright law is all about. Prosecraft offered some pretty basic insights into published books – how long, how many adverbs, and the like. I can understand opinions being split on whether that kind of information is actually helpful for current or aspiring authors. But, text mining can reveal so much more.

In the submission Authors Alliance made to the US Copyright Office three years ago in support of a Section 1201 Exemption permitting text data mining, we explained:

TDM makes it possible to sift through substantial amounts of information to draw groundbreaking conclusions. This is true across disciplines. In medical science, TDM has been used to perform an overview of a mass of coronavirus literature.Researchers have also begun to explore the technique’s promise for extracting clinically actionable information from biomedical publications and clinical notes. Others have assessed its promise for drawing insights from the masses of medical images and associated reports that hospitals accumulate.

In social science, studies have used TDM to analyze job advertisements to identify direct discrimination during the hiring process.⁷ It has also been used to study police officer body-worn camera footage, uncovering that police officers speak less respectfully to Black than to white community members even under similar circumstances.

TDM also shows great promise for drawing insights from literary works and motion pictures. Regarding literature, some 221,597 fiction books were printed in English in 2015 alone, more than a single scholar could read in a lifetime. TDM allows researchers to “‘scale up’ more familiar humanistic approaches and investigate questions of how literary genres evolve, how literary style circulates within and across linguistic contexts, and how patterns of racial discourse in society at large filter down into literary expression.” TDM has been used to “observe trends such as the marked decline in fiction written from a first-person point of view that took place from the mid-late 1700s to the early-mid 1800s, the weakening of gender stereotypes, and the staying power of literary standards over time.” Those who apply TDM to motion pictures view the technique as every bit as promising for their field. Researchers believe the technique will provide insight into the politics of representation in the Network era of American television, into what elements make a movie a Hollywood blockbuster, and into whether it is possible to identify the components that make up a director’s unique visual style [citing numerous letters in support of the TDM exemption from researchers].

3) Text and data mining is not new and it’s not a threat to authors

Text mining of the sort it seemed prosecraft employed isn’t some kind of new phenomenon. Marti Hearst, a professor at UC Berkeley’s iSchool explained the basics in this classic 2003 piece. Scores of computer science students experiment with projects to do almost exactly what prosecraft was producing in their courses each year. Textbooks like Matt Jockers’s Text Analysis with R for Students of Literature have been widely used and adopted all across the U.S. to teach these techniques. Our submissions during our petition for the DMCA exemption for text and data mining back in 2020 included 14 separate letters of support from authors and researchers engaged in text data mining research, and even more researchers are currently working on TDM projects. While fears over generative AI may be justified for some creators (and we are certainly not oblivious to the threat of various forms of economic displacement), it’s important to remember that text data mining on textual works is not the same as generative AI. On the contrary, it is a fair use that enriches and deepens our understanding of literature rather than harming the authors who create it.

Update: Consent Judgment in Hachette v. Internet Archive

Posted August 11, 2023

UPDATE: On Monday, August 14th, Judge Koeltl issued an order on the proposed judgement, which you can read here, and which this blog post has been updated to reflect. In his order, the judge adopted the definition of “Covered Book” suggested by the Internet Archive, limiting the permanent injunction subject to an appeal to only those books published by the four publisher plaintiffs that are available in ebook form.

After months of deadline extensions, there is finally news in Hachette Books v. Internet Archive, the case about whether Controlled Digital Lending is a fair use, which we have been covering since its inception over two years ago, and in which Authors Alliance filed an amicus brief in support of Internet Archive and CDL. On Friday, August 11th, attorneys for the Internet Archive and a group of publishers filed documents in federal court proposing “an appropriate procedure to determine the judgment to be entered in this case,” as Judge John G. Koeltl of the Southern District of New York requested.

In a letter to the court, both parties indicated that they had agreed to a permanent injunction, subject to an appeal by IA, “enjoining the Internet Archive [] from distributing the ‘Covered Books’ in, from or to the United States electronically.” This means that the Internet Archive has agreed to stop distributing within the U.S. the books in its CDL collection which are published by the plaintiff publishers in the case (Hachette Book Group, HarperCollins, Wiley, and Penguin Random House), and are currently available as ebooks from those publishers. The publishers must also send IA a catalog “identifying such commercially available titles (including any updates thereto in the Plaintiffs’ discretion), or other similar form of notification,” and “once 14 days have elapsed since the receipt of such notice[,]” IA will cease distributing CDL versions of these works under the proposed judgment.

Open Questions

Last week’s proposed judgment did leave an open question, which Judge Koeltl was asked to decide before issuing a final judgment: should IA be enjoined from distributing CDL versions of books published by the four publishers where those books are available in any form, or should it only be enjoined from distributing CDL versions of these books that are available as ebooks? This difference may seem subtle, but it’s actually really meaningful.

The publishers asked for a broader definition, whereby any of their published works that remain in print in any form are off the table when it comes to CDL. The publishers explain in a separate letter to the court that they believe that it would be consistent with the judgment to ban the IA from loaning out CDL versions of any of the commercially available books they publish, whatever the format. They argue that it should be up to the publishers whether or not to issue an ebook edition of the work, and that even when they decide not to do so (based on an author’s wishes or other considerations), IA’s digitization and distribution of CDL scans is still infringement.

On the other hand, the Internet Archive is asked the judge to confine the injunction to books published by the four publishers that are available as ebooks, leaving it free to distribute CDL scans of the publishers’ books that are in print, but only available as print and/or audio versions. It argues that to forbid it from lending out CDL versions of books with no ebook edition available would go beyond the matters at issue in the case—the judge did not decide whether it would be a fair use to loan out CDL versions of books only available in print, because none of the works that the publishers based the suit upon were available only as print editions. Furthermore, IA explains that other courts have found that the lack of availability of a competing substitute (in this case, an ebook edition) weighs in favor of fair use under the fourth factor, which considers market competition and market harm.

It seems to me that the latter position is much more sensible. In addition to CDL scans of books only available as physical books not being at issue in the case, the fair use argument for this type of lending is quite different. One of the main thrusts of the judge’s decision in the case was his argument that CDL scans compete with ebooks, since they are similar products, but this logic does not extend to competition between CDL scans and print books. This is because the markets for digital versions of books and analogue versions of books are quite different. Some readers strongly prefer print versions of books, and some turn to electronic editions for reasons of disability, physical distance from libraries or bookstores, or simple preference. While we believe that IA’s CDL program is a fair use, its case is even stronger when it comes to CDL loans of books that are not available electronically.

Then on Monday, August 14th, Judge Koeltl issued an order and final judgment in the case, agreeing with the Internet Archive and limiting the injunction to books published by the four publishers which are available in ebook form. Again, this may seem minor, but I actually see it as a substantial win, at least for now. While even the more limited injunction is a serious blow to IA’s controlled digital lending program, it does allow them to continue to fill a gap in available electronic editions of works. The judge’s primary reasoning was that books not available as ebooks was beyond the scope of what was at issue in the case, but he also mentioned that factor four analysis could have been different were there no ebook edition available.

Limitations of the Proposed Judgment

Importantly, the parties also stipulated that this injunction is subject to an appeal by the Internet Archive. This means that if the Internet Archive appeals the judgment (which it has indicated that it plans to do), and the appeals court overturns Judge Koeltl’s decision, for example by finding that its CDL program is a fair use, IA may be able to resume lending out those CDL versions of books published by the plaintiffs which are also available as ebooks. The agreement also does not mean that IA has to end its CDL program entirely—neither books published by other publishers nor books published by the publisher plaintiffs that are not available as ebooks are covered under the judge’s order.

What’s Next?

The filing represents the first step towards the Internet Archive appealing the court’s judgment. As we’ve said before, Authors Alliance plans to write another amicus brief in support of the Internet Archive’s argument that Controlled Digital Lending is a fair use. Now that the judge has issued his final judgment, IA has 30 days to file a “notice of appeal” with the district court. Then, the case will receive a new docket in the Second Circuit Court of Appeals, and the various calendar and filing processes will begin anew under the rules of that court. We will of course keep our readers apprised of further developments in this case.

Federal Right of Publicity Takes Center Stage in Senate Hearing on AI

Posted July 28, 2023

The Authors Alliance found this write-up by Professor Jennifer Rothman at the University of Pennsylvania useful and wanted to share it with our readers. You can find Professor Rothman’s original post on her website, Rothman’s Roadmap to the Right of Publicity, here.

By Jennifer Rothman

On July 12th, the Senate Judiciary Committee’s Subcommittee on Intellectual Property held its second hearing about artificial intelligence (AI) and intellectual property, this one was to focus expressly on “copyright” law. Although copyright was mentioned many times during the almost two-hour session and written testimony considered whether the use of unlicensed training data was copyright infringement, a surprising amount of the hearing focused not on copyright law, but instead on the right of publicity.

Both senators and witnesses spent significant time advocating for new legislation—a federal right of publicity or a federal anti-impersonation right (what one witness dubbed the FAIR Act). Discussion of such a federal law occupied more of the hearing than predicted and significantly more time than was spent parsing either existing copyright law or suggesting changes to copyright law.

In Senator Christopher Coons’s opening remarks, he suggested that a federal right of publicity should be considered to address the threat of AI to performers. At the start of his comments, Coons played an AI-generated song about AI set to the tune of New York, New York in the vocal style of Frank Sinatra. Notably, Coons highlighted that he had sought and received permission to use both the underlying copyrighted material and Frank Sinatra’s voice.

In addition to Senator Coons, Senators Marsha Blackburn and Amy Klobuchar expressly called for adding a federal right of publicity. Blackburn, a senator from Tennessee, highlighted the importance of name and likeness rights for the recording artists, songwriters, and actors in her state and pointed to the concerns raised by the viral AI-generated song “Heart on My Sleeve”. This song was created by a prompt to produce a song simulating a song created by and sung by Drake and The Weekend. Ultimately, Universal Music Group got platforms, such as Apple Music and Spotify, to take the song down on the basis of copyright infringement claims. Universal alleged that the use infringed Drake and The Weekend’s copyrighted music and sound recordings. The creation (and popularity!) of the song sent shivers through the music industry.

It therefore is no surprise that Jeffrey Harleston, General Counsel for Universal Music Group, advocated both in his oral and written testimony for a federal right of publicity to protect against “confusion, unfair competition[,] market dilution, and damage” to the reputation and career of recording artists if their voices or vocal styles are imitated in generative AI outputs. Karla Ortiz, a concept artist and illustrator, known for her work on Marvel films, also called for a federal right of publicity in her testimony. Her concerns were tied to the use of her name as a prompt to produce outputs trained on her art in her style and that could substitute for hiring her to create new works. Law Professor Matthew Sag supported adoption of a federal right of publicity to address the “hodgepodge” of state laws in the area.

Dana Rao, the Executive Vice President and General Counsel of Adobe, expressed support for a federal anti-impersonation right, which he noted had a catchy acronym—the FAIR Act. His written testimony on behalf of Adobe highlighted its support for such a law and gave the most details of what such a right might look like. Adobe suggested that such an anti-impersonation law would “offer[] artists protection against” direct economic competition of an AI-generated replication of their style and suggested that this law “would provide a right of action to an artist against those that are intentionally and commercially impersonating their work through AI tools. This type of protection would provide a new mechanism for artists to protect their livelihood from people misusing this new technology, without having to rely solely on copyright, and should include statutory damages to alleviate the burden on artists to prove actual damages, directly addressing the unfairness of an artist’s work being used to train an AI model that then generates outputs that displace the original artist.” Adobe was also open to adoption of “a federal right of publicity . . . to help address concerns about AI being used without permission to copy likenesses for commercial benefit.”

Although some of the testimony supporting a federal right of publicity suggested that many states already extend such protection, there was a consensus that a preemptive federal right could provide greater predictability, consistency, and protection. Senator Klobuchar and Universal Music’s Harleston emphasized the value of elevating the right of publicity to a federal “intellectual property” right. Notably, this would have the bonus of clarifying an open question of whether right of publicity claims are exempted from the Communications Decency Act’s § 230 immunity provision for third-party speech conveyed over internet platforms. (See, e.g. Hepp v. Facebook.)

Importantly, Klobuchar noted the overlap between concerns over commercial impersonation and concerns over deepfakes that are used to impersonate politicians and create false and misleading videos and images that pose a grave danger to democracy.

Of course, the proof is in the pudding. No specific legislation has been floated to my knowledge and so I cannot evaluate its effectiveness or pitfalls. Although the senators and witnesses who spoke about the right of publicity were generally supportive, the details of what such a law might look like were vague.

From the right-holders’ (or identity-holders’) perspective the scope of such a right is crucial. Many open questions exist. If preemptive in nature, how would such a statute affect longstanding state law precedents and the appropriation branch of the common law privacy tort that in many states is the primary vehicle for enforcing the right of publicity? When confronted with similar concerns over adopting a new “right of publicity” to replace New York’s longstanding right of privacy statute that protected against the misappropriation of a person’s name, likeness, and voice, New York legislators astutely recognized the danger of unsettling more than 100 years of precedents that had provided (mostly) predictable protection for individuals in the state.

Another key concern is whether these rights will be transferable away from the underlying identity-holders. If they are, then a federal right of publicity will have a limited and potentially negative impact on the very people who are supposedly the central concern driving the proposed law. This very concern is central to the demands of SAG-AFTRA as part of its current strike. The actors’ union wants to limit the ability of studios and producers to record a person’s performance in one context and then use AI and visual effects to create new performances in different contexts. As I have written at length elsewhere, a right of publicity law (whether federal or otherwise) that does not limit transferability will make identity-holders more vulnerable to exploitation rather than protect them. (See, e.g., Jennifer E. Rothman, The Inalienable Right of Publicity, 100 Georgetown L.J. 185 (2012); Jennifer E. Rothman, What Happened to Brooke Shields was Awful. It Could Have Been Worse, Slate, April 2023.)

Professor Matthew Sag rightly noted the importance of allowing ordinary people—not just the famous or commercially successful—to bring claims for publicity violations. This is a position with which I wholeheartedly agree, but Sag, when pressed on remedies, suggested that there should not be statutory damages. Yet, such damages are usually the best and sometimes only way for ordinary individuals to be able to recover damages and to get legal assistance to bring such claims. In fact, what is often billed as California’s statutory right of publicity for the living (Cal. Civ. Code § 3344) was originally passed under the moniker “right of privacy” and was specifically adopted to extend statutory damages to plaintiffs who did not have external commercial value making damage recovery challenging. (See Jennifer E. Rothman, The Right of Publicity: Privacy Reimagined for a Public World (Harvard Univ. Press 2018)). Notably, Dana Rao of Adobe, recognizing this concern, specifically advocated for the adoption of statutory damages.

The free speech and First Amendment concerns raised by the creation of a federal right of publicity will turn on the specific scope and likely exceptions to such a law. Depending on the particulars, it may be that potential defendants stand more to gain by a preemptive federal law than potential plaintiffs do. If there are clear and preemptive exemptions to liability this will be a win for many repeat defendants in right of publicity cases who now have to navigate a wide variety of differing state laws. And if liability is limited to instances in which there is likely confusion as to participation or sponsorship, the right of publicity will be narrowed from its current scope in most states. (See Robert C. Post and Jennifer E. Rothman, The First Amendment and the Right(s) of Publicity, 130 Yale L.J. 86 (2020)).

In short, the focus in this hearing on “AI and Copyright” on the right of publicity instead supports my earlier take that the right of publicity may pose a significant legal roadblock for developers of AI. Separate from legal liability, AI developers should take seriously the ethical concerns of producing outputs that imitate real people in ways that confuse as to their participation in vocal or audiovisual performances, or in photographs.

The appropriation bill that would defund the OSTP open access memo

Posted July 27, 2023

A couple of weeks ago the U.S. House Appropriations Subcommittee on Commerce, Justice, and Science (CJS) released an appropriations bill containing language that would defund efforts to implement a federal, zero-embargo open access policy for federally funded research.

We think this is a fantastically bad idea. One of the most important developments in the movement for open access to scholarship came last year when Dr. Alondra Nelson, Director of the Office of Science and Technology Policy, issued a memorandum mandating that all federal agencies that sponsor research put in place policies to ensure immediate open access to published research, as well as access to research data. The agencies are at various stages of implementing the Nelson memo now, but work is well underway. This appropriations bill specifically targets those implementation efforts and would prevent any federal government expenditures from being used to further them.

For the vast majority of scholarly works, the primary objective of the authors is to share their research as widely as possible. Open access achieves that for authors (if they can only get their publishers to agree). The work is already funded, already paid for. As you might imagine, those opposed to the memo are primarily publishers who have resisted adapting the business model they’ve built of putting a paywall in front of publicly-funded work, largely for profit.

Thankfully, the CJS appropriations bill, one of twelve appropriation bills, is just a first crack at how to fund the government in the coming year. The Senate, of course, will have their say, as will the President. With the current division in Congress, combined with the upcoming recess (Congress will be on recess in August and reconvene in September), the smart bet is that none of these bills will be enacted in time for the federal government’s new fiscal year on October 1. Instead, a continuing resolution–funding the government under the status quo, as Congress frequently does–will likely be enacted as a stop gap until a compromise can be reached later in the year.

It is important, however, that legislators understand that this attempt to defund OA efforts is majorly concerning, especially for authors, universities, and libraries that believe that federally funded research should be widely available on an open access basis. It’s a good moment to speak out. SPARC has put together a helpful issue page on this bill, complete with sample text for how to write to your representative or senator.

As you’ll see if you read the proposed appropriations bill, it is loaded with politics. The relevant OSTP memo language is located amongst other clauses that defund the Biden administration’s efforts to implement diversity initiatives at various agencies, address gun violence, sue states over redistricting, and dozens of other hot-button issues as well. It’s pretty easy for an issue like access to science to get lost in the political shuffle, but we hope with some attention from authors and others, it won’t.

The Anti-Ownership Ebook Economy

Posted July 25, 2023

Earlier this month, the Engelberg Center on Innovation Law and Policy at NYU Law released a groundbreaking new report: The Anti-Ownership Ebook Economy: How Publishers and Platforms Have Reshaped the Way We Read in the Digital Age is a detailed report that traces the history of ebooks and, through a series of interviews with publishers, platforms, librarians, and others, explains how the law and the markets have converged to produce the dysfunction we see today in the ebook marketplace.

The report focuses especially closely on the role of platform companies, such as Amazon, Apple and OverDrive, which now play an enormous role in controlling how readers interact with ebooks. “Just as platforms control our tweets, our updates, and the images that we upload, platforms can also control the books we buy, keeping tabs on how, when, and where we use them, and at times, modifying or even deleting their content at will.”

Last Friday, I spoke with one of the authors, Claire Woodcock, to learn a little bit more about the project and its goals:

Q: What was your motivation to work on this project?

A: My co-authors, Michael Weinberg, Jason Schultz, and Sarah Lamdan had all been working on this for well over a year [before] I joined. I knew Sarah from another story I’d written about an ebook platform that was prioritizing the platforming of disinformation last year, and she had approached me about this project. When I hopped on a call with the three of them, I believe it was Michael who posed the core question of this project: “Why can we not own, but only license ebooks?”

I’ve thought about that question ever since. So my role in joining the project was to help talk to as many people as we could – publishers, librarians, platforms, and other stakeholders to try to understand why not. It seems like a simple question but there are so many convoluted reasons and we wanted to try to distill this down.

Q: Many different people were interviewed for this project. Tell me about how that went.

A: There was actually some hesitation to talk; I think a reason why was almost extreme fear of retaliation. So, it took a while to crack into learning about some of the different areas, especially with some publishers and platforms. I wish there was more of a willingness to engage on the part of some publishers, who would flat out tell me things like they weren’t authorized to talk about their company’s internal practices , or from platforms like OverDrive, who we sent our list of questions over to and never heard from again (until I ran into Steve Potash at the American Library Association’s Annual Conference). I’d have loved to hear more from them directly when I was actively conducting interviews.

Q: I noticed there weren’t many interviews with authors. Can you say why not?

A: Authors weren’t as big of a focus because we realized, particularly in talking with several literary agents, that from a business and legal perspective authors don’t have much of a say in how their books are distributed. Contractually, they aren’t involved in downstream use. I think it would be really interesting to do a follow up with authors to get their perspective on how their books are licensed or sold online.

Q: The report contains a number of conclusions and recommendations. Which among them are your favorite?

A: One of the most striking things I learned, and what stuck out to me the most when I went back and listened to the interviews, is the importance of market consolidation and lack of competition. OverDrive has roughly 95% of the ebook marketplace for libraries (and I know it’s different for academic publishing, for sure). The lack of competition in our society, especially in this area, makes it hard to speak up and speak out when a certain stakeholder has issues with the dominant market players. Because of that, looking at each of the groups of stakeholder types we spoke with, each could point to other groups causing the problem (it reminds me of the spiderman meme) and there are platforms and other publishers, mostly smaller, who want to make this work but the major players are not doing that. It also stuck out that, almost everyone we talked to talks about librarians as partners, but when we talk to the librarians, they say “they think we are partners, but we don’t feel like we have a seat at the table, decisions that impact us are often made without consulting us in a way that is transparent.”

Q: If you could do a follow up study, what additional big questions would you focus on?

A: Lots of people talked about audiobooks. We were focused on ebooks, but the audiobook market is even more concentrated, and lots of people raised the issue that ebooks are only part of the issue. There is a version of this that is happening with audiobooks as well. I also think that the intersections of this market with television, platform streaming, and even other consumer goods like toys and other parts of the market are really interesting. What we’re seeing here, it’s a version of what’s happening in other creative industries.

I also think it would be worth learning more about how libraries and others are working around the current issues. For example, lots of libraries ask for perpetual licenses, since they’re looking at working within the current context and looking at contracts so they can get assurances, for example if something happens to the publishers platform, the library could still get some assurances that even if something happened to the company, the license agreement could still be honored. But are those efforts actually effective? And, given the importance of licensing, it might also be interesting to explore how libraries are resourced to negotiate those agreements – for example, training and staff to negotiate. I think if libraries were better funded they would probably be able to better handle these challenges.

Authors Alliance in Europe: Giving Voice to Authors

Posted July 20, 2023

Authors Alliance and KnowledgeRights21 are pleased to announce the launch of a new project, “Giving Voice to Authors,” through which Authors Alliance and KR21 will focus efforts over the next year on building up support for European authors who write for the public benefit.

Since its founding, Authors Alliance has welcomed members from all over the world, including many of its founding members and advisory board. Over the last several years, we’ve heard increasing calls for support from European authors who care about the public interest and who write primarily to spread knowledge and ideas. They are concerned that their voices are not being heard in some of the most important information policy debates of our age. For example, as the EU has enacted a series of laws such as the Copyright in the Digital Single Market Directive, the debate has been dominated by many of the largest corporate rights holders and others to create the perception that authors uniformly support more expansive copyright and draconian enforcement mechanisms, and that authors care little for the rights of users, libraries, or the public. These positions do a disservice to authors who prioritize seeing their creations and the knowledge they advance to reach as many readers as possible.

Many other civil society organizations across Europe have ably countered these policy positions and have sought to advance access to knowledge in the public interest. But without a countervailing voice on behalf of authors, policy makers can all too easily conclude that most or even all authors favor these maximalist copyright positions. Authors Alliance aims to help give voice to European authors who have a countervailing view.

How you can participate
We’re already hearing from European authors and others asking how they contribute to ensuring that their voices are heard in these important debates. To start:

Join Authors Alliance. Joining as a member of Authors Alliance is a simple but important way to help us speak out on behalf of those authors who share our mission of promoting policies that would make creative works accessible and discoverable. Membership numbers help us better magnify your voices and lend weight to our input in policy debates. You can join for free online at www.authorsalliance.org/join.

Contribute your expertise. Authors Alliance is committed to promoting policy positions based on sound research and expertise. We’ve been fortunate to collaborate in the past with some of the world’s leading experts on copyright, technology, and the creative economy. Likewise, we want to collaborate with leading experts on European policy. This includes direct collaboration on research projects, or in highlighting the results of those projects to a wider audience of authors through blogs, op-eds or other publications, or bringing that research to the forefront in discussions with policymakers.

Collaborate and convene. In the Fall of 2023 and Spring 2024 Authors Alliance plans to host several in-person convenings with European authors, law and policy experts, and members of the broader community of civil society organizations across Europe that support more equitable and open access to information. If you are interested in attending or hosting such a meeting, we would love to hear from you. The easiest way to get in touch is by email: info@authorsalliance.org.

Ninth Circuit Issues Decision in Hunley v. Instagram

Posted July 19, 2023

On Monday, the Ninth Circuit issued a decision in Hunley v. Instagram, a case about whether Instagram (and platforms like it) can be held liable for secondary infringement based on its embedding feature, whereby websites employ code to display an Instagram post on their sites within their own content. We are delighted to announce that the court ruled in favor of Instagram, reinforcing important copyright principles which allow authors and other creators to link to and embed third-party content, enriching their writing in the process.

Our Brief

Authors Alliance signed on to an amicus brief in this case, arguing that Instagram should not be held liable for contributory infringement for its embedding feature. We explained that Instagram was not liable under a precedential legal test established in Perfect 10 v. Amazon, and moreover that a ruling to the contrary could place our ability to link to other online content (which is analogous to embedding in many ways) at risk for legal liability.

Narrowing the Perfect 10 test—which establishes that a website does not infringe when it does not store a copy of the relevant work on its server—would have struck a blow to how we share and engage with online content. Linking to other information allows authors to easily cite to other information without disrupting the flow of their writing. By the same token, it allows internet users to verify information and learn more about topics of interest, all with the click of a button. We are pleased that the court ruled in favor of Instagram, declining to revisit the Perfect 10 test and holding that it foreclosed relief for the photographers that had filed the lawsuit. In so doing, the court has helped maintain a vibrant internet where all can share and engage with knowledge and creative expression.

The Decision

The case concerned a group of photographers whose instagram posts were embedded into content by several media outlets. The photographers then sued Instagram in the Northern District of California, on the theory that by offering the “embedding” feature, it was facilitating copyright infringement of others and therefore was liable. The district court found that Perfect 10 applied to the case, and therefore that Instagram was not liable for infringement for the outlets’ display of the posts.

The Ninth Circuit agreed, and furthermore declined to revisit or narrow the Perfect 10 case for a number of reasons—it rejected the argument that the search engines at issue in the Perfect 10 case itself were somehow different from social media platforms, and affirmed that Perfect 10 was consistent with more recent Supreme Court case law. The court also cited with approval our argument that embedding and in-line linking have paved the way for innovation and creativity online, though did not adopt the justification, reasoning that it is not a court’s job to serve as a policymaker. In applying the Perfect 10 test, the court explained that Instagram did not infringe the photographers’ copyrights, and where there is no direct infringement, there cannot be related secondary infringement. Instagram displayed a copy of the relevant photographs on its platform, which users permit via a license they agree to by using the platform. But it did not facilitate the images’ display elsewhere, because the computer code used by the media platforms that embedded the instagram posts did not make a copy of the posts, but rather formatted and displayed them.

Authorship and Ebook Licensing: Introducing the Library Ebook Pledge

Posted July 12, 2023

Authors rarely have meaningful rights to say how their publisher licenses or distributes their book.

A typical publishing contract will grant the publisher broad discretion to determine the format, price and sublicensing terms under which an author’s book is made available. It can be hard to negotiate for the right to have a say over those terms. Even contracts designed to prioritize authors’ rights, such as the Authors Guild model trade contract, don’t contemplate an author exercising much control over these matters, and leave most publication and distribution details “as Publisher determines.”

In many cases, ceding control can be OK as long as the interests of the publisher and author are tightly aligned. It’s why we recommend authors pay close attention to the mission and practices of their publisher before signing a contract. But even when a publisher purports to share the author’s interests, this could change in the future, and information the publisher provides about itself can be misleading.

Sometimes, it’s hard to see how those interests diverge until it’s too late. For example, recall last year when academic publisher Wiley decided to remove some 1,300 ebooks from online library collections. We quickly found that many authors of those books objected strongly, and joined us in a letter that outlined concerns and expressed dismay that Wiley, an academic publisher that supposedly prioritizes” access to knowledge,” would make such an aggressive and profit-maximizing decision. But under their contracts, those authors had no legal grounds to push back.

Library distribution in particular is an area of concern. Libraries provide an important way for authors to connect with readers, and provide a means of access to their books for many people who might otherwise never read them. Libraries also serve an important democratic function in supporting widespread learning that we all benefit from. We’ve written several times over the years about challenges that libraries face in licensing ebooks, and it’s why we’ve supported model state legislation to address the problem and also why we’ve supported models like controlled digital lending that allow for limited access outside of the licensing model.

In addition to basic economic concerns about gouging libraries on price (in some cases publishers have decided to charge libraries 10x the consumer list price for ebook access), some publishers have imposed a variety of other terms that we find unreasonable. This includes, for example, only offering ebooks to libraries through large bundles of content rather than title-by-title, which forces libraries to buy access to books that aren’t necessarily relevant for their community (a practice which also obfuscates and dilutes per-title sales and consequently author royalties). Or limiting access for use only on platforms controlled by the publisher, which can contain significant compromises for reader privacy. Perhaps the most frustrating is the flat refusal to deal – with some publishers refusing to sell some ebooks to libraries at all, in the hopes of driving some would-be library readers (likely a very small percentage of them) into buying a personal copy.

Introducing the Library Ebook Pledge

What libraries need to do their jobs in the digital environment isn’t all that complicated. For physical books, libraries have been successful in reaching readers because they have had clear rights to purchase, lend, and preserve. Publishers have limited, by contract, libraries’ ability to do those same activities with ebooks, but it doesn’t have to be that way. That’s why we’ve been pleased to work with Knowledge Rights 21 and Library Futures to outline twelve basic principles that represent a reasonable approach to ensuring that libraries can continue to do their jobs online.

We know that many publishers care deeply about the role of libraries in supporting research, education and learning. This Pledge, which can be viewed here, offers a way for those publishers to express their support and commitment to 21st century libraries, so libraries can provide meaningful preservation of and access to ebooks for their readers. We’re encouraged to see some publishers already signing on, and encourage others to do so as well.

We also think this pledge is a valuable tool for authors who care about access to their works. While negotiating for control over distribution can be a challenge, we are hopeful that authors can try to incorporate these principles into their contracts and use this pledge to ask publishers to publicly communicate their intent to license ebooks in ways that will account for the public interest.

Copyright Office Hosts Listening Session on Copyright in AI-Generated Audiovisual Works

Posted June 26, 2023

On May 17, the Copyright Office held a listening session on the topic of copyright issues in AI-generated audiovisual works. You may remember that we’ve covered the other listening sessions convened by the Office on visual arts, musical works, and textual works (in which we also participated). In today’s post, we’ll summarize and discuss the audiovisual works listening session and offer some insights on the conversation.

Participants in the audiovisual works listening session included AI developers in the audiovisual space such as Roblox and Hidden Door; trade groups and professional organizations including the Motion Picture Association, Writers Guild of America West, and National Association of Broadcasters; and individual filmmakers and game developers.

Generative AI Tools in Films and Video Games

As was the case in the music listening session, multiple participants indicated that generative AI is already being used in film production. The representative from the Motion Picture Association (MPA) explained that “innovative studios” are already using generative AI in both the production and post-production processes. As with other creative industries, generative AI tools can support filmmakers by increasing the efficiency of various tasks that are part of the filmmaking process. For example, routine tasks like color correction and blurring or sharpening particular frames are made much simpler and quicker through the use of AI tools. Other participants discussed the ways in which generative AI can help with ideation, overcoming “creativity blocks,” eliminating some of the drudgery of filmmaking, enhancing visual effects, and lowering barriers to entry for would-be filmmakers without the resources of more established players. These examples are analogous to the various ways that generative AI can support authors, which Authors Alliance and others have discussed, like brainstorming, developing characters, and generating ideas for new works.

The representative from the MPA also emphasized the potential for AI tools to “enhance the viewer experience” by making visual effects more dramatic, and in the longer term, possibly enable much deeper experiences like having conversations with fictional characters from films. The representative from Hidden Door—a company that builds “online social role-playing games for groups of people to come together and tell stories together”—similarly spoke of new ways for audiences to engage with creators, such as by creating a sort of fan fiction world with the use of generative AI tools, with contributions from the author, the user, and the generative AI system. And in fact, this can create “new economic opportunities” for authors, who can monetize their content in new and innovative ways.

Video games are similarly already incorporating generative AI. In fact, generative AI’s antecedents, such as “procedural content generation” and “rule-based systems” have been used in video games since their inception.

Centering Human Creators

Throughout the listening session, participants emphasized the role of human filmmakers and game developers in creating works involving AI-generated elements, stating or implying that creators who use generative AI should own copyrights in the works they produce using these tools. The representative from Roblox, an online gaming platform that allows users to program games and play other users’ games, emphasized that AI-generated content is effective and engaging because of the human creativity inherent in “select[ing] the best output” and making other creative decisions. A representative from Inworld AI, a developer platform for AI characters, echoed this idea, explaining that these tools do not exist in isolation, but are productive only when a human uses them and makes creative choices about their use, akin to the use of a simpler tool like a camera or paintbrush.

A concern expressed by several participants—including the Writers Guild of America West, National Broadcasters Association, and Directors Guild—is that works created using generative AI tools could devalue works created by humans without such tools. The idea of markets being “oversaturated” with competing audiovisual works raises the possibility that individual creators could be crowded out. While this is far from certain, it reflects increasing concerns over threats to creators’ economic livelihoods when AI-generated works compete alongside theirs.

Training Data and Fair Use

On the question of whether using copyrighted training materials to train generative AI systems is a fair use, there was disagreement among participants. The representative from the Presentation Guild likened the use of copyrighted training data without permission to “entire works . . . being stolen outright.” They further said that fair use does not allow this type of use due to the commercial nature of the generative AI companies, the creative nature of the works used to train the systems (though it is worth noting that factual works, and others entitled only “thin” copyright protection, are also use to train these tools), and because by “wrest[ing] from the creator ownership and control of their own work[,]” the market value for those works is harmed . This is not, in my view, an accurate statement of how the market effects factor in fair use works, because unauthorized uses that are also fair always wrest some control from the author—this is part of copyright’s balance between an author’s rights and permitting onward fair uses.

The representative from the Writers Guild of America (“WGA”) West—which is currently on strike over, among other things, the role of generative AI in television writing—had some interesting things to say about the use of copyrighted works as training data for generative AI systems. In contract negotiations, WGA had proposed a contract which “would . . . prohibit companies from using material written under the Guild’s agreement to train AI programs for the purpose of creating other derivative and potentially infringing works.” The companies refused to acquiesce, arguing that “the technology is new and they’re not inclined to limit their ability to use this new technology in the future.” The companies’ positions are somewhat similar to those expressed by us and many others—that while generative AI remains in its nascency, it is sensible to allow it to continue to develop before instituting new laws and regulations. But it does show the tension between this idea and creators who feel that their livelihoods may be threatened by generative AI’s potential to create works with less input from human authors.

Other participants, such as the representative from Storyblock, a stock video licensing company, emphasized their belief that creators of the works used to train generative AI tools should be required to consent, and should receive compensation and credit for the use of their works to train these models. The so-called “three C’s” idea has gained traction in recent months. In my view, the use of training data is a fair use, making these requirements unnecessary from a copyright perspective, but it represents an increasingly prevailing view among rightsholders and licensing groups (including the WGA, motivating its ongoing strike in some respects) when it comes to making the use of generative AI tools more ethical.

Adequacy of Registration Guidance

Several participants expressed concerns about the Copyright Office’s recent registration guidance regarding works containing AI-generated materials, and specifically how to draw the line between human-authored and AI-generated works when generative AI tools are used as part of a human’s creative process. The MPA representative explained that the guidance does not account for the subtle ways in which generative AI tools are used as part of the filmmaking process, where it often works as a component of various editing and production tools. The MPA representative argued that using these kinds of tools shouldn’t make parts of films unprotected by copyright or trigger a need to disclose minor uses of such tools in copyright registration applications. The representative from Roblox echoed these concerns, noting that when a video game involves thousands of lines of code, it would be difficult for a developer to disclaim copyright in certain lines of code that were AI-generated.

A game developer and professor expressed her view that in the realm of video games, we are approaching a reality where generative AI is “so integrated into a lot of consumer-grade tools that people are going to find it impossible to be able to disclose AI usage.” If creators or users do not even realize they are using generative AI when they use various creative digital tools, the Office’s requirement that registrant’s disclose their use of generative AI in copyright registration applications will be difficult if not impossible to follow.