Category Archives: Law and Policy

Authors Alliance Supports Model Ebook Legislation

Posted July 7, 2022

Authors Alliance is pleased to add its support to an effort that would restore balance to the ebook market. Last week, Library Futures released a policy statement and model legislation that would help state legislatures resolve a host of challenges that make it difficult for libraries to lend ebooks and ensure their long-term availability.

Why we care: For authors who want to have an enduring impact on the world, having their writings fall into obscurity is a major concern. For print books, libraries have historically played an important role in making sure books did not drop out of circulation. No matter the current state of the market or what is going to make the biggest splash on a publisher’s bottom line (or even whether a book has long gone out of print), libraries make authors’ books available to readers in both the short and long term. Copyright law plays an important role in balancing the level of control that publishers have over copies they sell and the rights that libraries and their readers have to access and use those copies. Current law gives libraries fundamental rights, including the ability to buy copies on the open market, lend copies to users one at a time, and preserve books for the long-term.

For ebooks, publishers have been able to write their own rules for how libraries can use those books. That’s because every ebook that you buy–or that a library acquires –is not actually owned by the purchaser, but licensed by the publisher or ebook distributor. The terms of these licenses are largely dictated by publishers. In recent history, libraries have contended with contracts that severely limit how they can fulfill their mission – contracts that charge libraries multiple times more than what consumers pay, place strict limits on how many times a ebook may be lent out before the library has to pay for it again, place limits on how long the library can have access, limits on how long a user can check out a book, and limits on how researchers can use that book (e.g., limiting text and data mining), among many other limitations that don’t apply in the print world.

These kinds of contractual restrictions make an end run around the traditional market balance that existed in the print world. The end result is that for ebooks, authors are less likely to reach the readers they hope to, especially cutting out readers who rely on libraries for access and don’t have the financial means to purchase ebooks themselves. Restrictions on library preservation activities can also jeopardize long-term availability. While libraries are committed to continuing to pay for the care needed to maintain books long into the future, commercial publishers have no such incentive beyond the window in which a work is commercially viable. That window for commercial viability is short – on average, only 5 years. While some publishers (mostly academic publishers) have been willing to agree to license terms with libraries that provide for long-term availability for ebooks, most others have not, and instead actively frustrate library efforts to ensure long-term access. All of this means that as time goes on, these types of restrictions could make authors’ books harder—if not impossible—to find online.

What the proposed ebooks law does: We wrote last year about a Maryland law passed in 2021 that aimed to force publishers that sold ebooks in the state to also license to libraries on “reasonable terms,” addressing many of licensing problems we note above.

While the bill passed the legislature and became law,it ran into trouble almost immediately. The Association of American Publishers brought a lawsuit to enjoin its enforcement, arguing that because copyright law is the domain of federal law, state legislation governing ebooks is preempted by federal law and therefore unenforceable. Earlier this year, the Federal District Court of Maryland agreed, holding that because the Maryland law required that publishers “shall offer” a license to libraries whenever they offer an ebook to the public, it effectively forced publishers to grant these licenses, conflicting with the copyright holder’s federally granted exclusive right to control public distribution. The court explained, “[f]orcing publishers to forgo offering their copyrighted works to the public in order to avoid the ambit of the Act interferes with their ability to exercise their exclusive right to distribute. Alternatively, forcing publishers to offer to license their works to public libraries also interferes with their exclusive right to distribute.” The decision tracks closely with an opinion that Shira Perlmutter, Register of Copyrights and Director of the U.S. Copyright Office, released in 2021. The Copyright Office drew a sharp distinction between those state laws that purport to regulate the terms of a contract (which she concluded are unlikely to be preempted since they do not interfere with the right to distribute) with state laws that require publishers to grant a license (likely to be preempted). Perlmutter explained that “[b]oth the Third Circuit and the District of Utah have explicitly excluded from permissible state regulations those that “appropriate[] a product protected by the copyright law for commercial exploitation against the copyright owner’s wishes.”

Since Maryland passed its legislation, numerous other states have taken up the same issue, with slight variations on their approach. Given the failure of the Maryland law, how states craft such legislation is clearly important.

Authors Alliance supports the Library Futures policy paper and model legislation because it offers a reasonable, productive, and viable alternative pathway for states to address inequities and unequal bargaining power in the ebook marketplace. Specifically, it proposes an approach that does not demand that publishers license to libraries on certain terms, but instead focuses on the state’s traditional and well accepted role in regulating how its own state contract law will apply, particularly in cases of unequal bargaining power. We encourage states to utilize the framework set out by Library Futures rather than repeating the same framework as the Maryland law.

Authors Alliance Joins Amicus Brief in Vans v. MSCHF, Supporting the First Amendment Rights of Creators

Posted June 27, 2022

On Friday, Authors Alliance was pleased to join on an amicus brief in an important and fast-moving trademark case before the Second Circuit Court of Appeals in Vans, Inc. v. MSCHF Product Studio, Inc. Vans, creator of a variety of well-known skater shoes, alleged that MSCHF (an art collective, based in Brooklyn, pronounced “mischief”) had infringed its rights by “blatantly and unmistakably incorporat[ing] Vans’ iconic trademarks and trade dress” in MSCHF’s own shoe, which MSCHF called the “Wavy Baby.” For its part, MSCHF and the associated artist who designed the shoe (the artist’s stage name is “Tyga”) defended its creation by arguing that its shoes are a parody and an artistic expression of Van’s trademarks, thus protected by the First Amendment. MSCHF, for this project and many others, primarily uses “existing, potent, pieces of culture as [their] building blocks and working medium to create new works.”

Earlier this year, the Eastern District of New York granted a temporary restraining order and preliminary injunction against MSCHF, preventing distribution of the Wavy Baby shoes. The court reasoned that the Wavy Baby shoe was likely to cause consumer confusion and that MSCHF’s First Amendment defense was unlikely to succeed. MSCHF appealed, and the case is currently before the Second Circuit Court of Appeals.

In the past, Authors Alliance hasn’t weighed in on trademark lawsuits like this. But one of the major issues we care about is making sure that authors can freely communicate their ideas and reach broad audiences. We know that our members “write to be read” and hope to see their knowledge and products of their imagination widely disseminated. Often, restrictive interpretations of copyright law can impose a barrier for authors. That’s why we’ve focused on things such as fair use, which gives authors the right to comment, criticize, and create parodies freely, without infringing copyright, even when using or referencing material from other creators, and even when those materials include popular brands and culturally significant materials.

Other laws, such as trademark law, can impose significant barriers for authors as well, and other rights such as the First Amendment can protect authors. Our brief doesn’t take a position on who should win the lawsuit. What we do take a position on is that First Amendment protections in trademark suits be taken seriously; authors and artists rely heavily upon those protections to comment on modern consumer culture. Thus, the brief argues that the Second Circuit should reinforce a clear framework for courts to dispose of unconstitutionally oppressive trademark suits early in the litigation process, as a matter of law. As our amicus brief argues, “[t]rademark law does not give brand owners the right to control depictions of, or comments on, their brands. Nor can it. The First Amendment guarantees artists’ right to depict the world as they see it and to respond in the marketplace of ideas to the inescapable corporate brand messages by which we are bombarded every day, virtually everywhere we look.” Without a clear framework for quick disposition of these suits, our amicus brief argues, “deep-pocketed brand owners can chill artists’ exercise of their First Amendment rights simply by threatening or filing lawsuits that are unlikely to prevail on the merits but that will entail long, costly discovery battles.”

Thanks to the attorneys at Lex Lumina PLLC for drafting this brief, and the visual artists, Mason Rothschild and Alfred Steiner, who joined us as amici curiae.

Authors Alliance Submits Amicus Brief to the Supreme Court in Warhol Foundation v. Goldsmith

Authors Alliance is thrilled to announce that we have submitted an amicus brief to the U.S. Supreme Court in Warhol Foundation v. Goldsmith, a case that the Court will hear this coming October. Our brief was filed in support of the petitioner, the Warhol Foundation, which is asking the Court to reexamine the Second Circuit’s constrained interpretation of what it means for a use to be transformative, a consideration in fair use cases that, when met, weighs heavily in favor of fair use. Authors Alliance has covered this case extensively over the past year, and we think and hope that our voice will be a useful one as the Court considers the scope of fair use in the art world and beyond.

The lawsuit concerns a series of Andy Warhol screen prints and sketches of the late musician Prince, inspired by a photograph taken by photographer Lynn Goldsmith. The images in the case were created after a first image was commissioned by Vanity Fair based on the photograph by Goldsmith, authorized pursuant to separate agreements between Vanity Fair and Goldsmith and Vanity Fair and Warhol. The authorized Warhol image appeared in the magazine in 1984 and included credit for both Goldsmith and Warhol. However, Warhol went on to create fifteen additional works of the image in the same style, which are the subject of the litigation.

After learning of the additional images after Prince’s death, Goldsmith sued the Warhol Foundation for copyright infringement, alleging that the Prince Series infringed her right to prepare derivative works, one of the exclusive rights granted under copyright—in the photograph of Prince. In its decision, the district court found for the Warhol Foundation on fair use grounds, focusing on the transformative nature of Warhol’s prints, which the court stated “transformed Prince from a vulnerable, uncomfortable person” as seen in Goldsmith’s photograph “to an iconic larger-than-life-figure” as depicted in Warhol’s series. Under the traditional “new expression, meaning, or message” test articulated by the Supreme Court in Campbell v. Acuff-Rose and applied across the country for almost three decades, the district court found that the screen prints were transformative. Yet the Second Circuit went on to reverse the district court’s decision, applying a novel standard for transformativeness rather than the Campbell test. The Second Circuit held that since comparing the Goldsmith photograph and the Prince series side by side, they appeared visually similar, Warhol’s use was not transformative.

In our brief, Authors Alliance first argues that the Second Circuit misunderstood the interaction between the fair use doctrine and the derivative work right. One of an author’s rights under copyright is to prepare derivative works, such as translations and movie adaptations. But even when a second creator creates a derivative work, that use might still be allowed under fair use. For example, a literary parody is a classic example of fair use. An author might make a film version of a work that is also a parody. Even though movie adaptations are part of the derivative work right, the parodic character of the film parody could still make the use a fair one.

Second, we argue that the Second Circuit ignored guidance from the Supreme Court about how to tell the difference between an infringing derivative and a derivative that is also a fair use. In addition to failing to apply Campbell’s established “new expression, meaning, or message” test, the Second Circuit treated the “transformativeness” standard as an all-or-nothing inquiry, when numerous court cases show that transformativeness is a matter of degree—a use might be highly transformative or only modestly transformative. The Second Circuit also considered the Prince series as if each image were the same work, rather than assessing the nature of the different images on a work-by-work basis as it has done in other fair use cases involving visual art. We also pointed out that this constrained interpretation of fair use does not serve the objectives of the Copyright Act or the interests of creators.

Finally, Authors Alliance argues in our brief that the Second Circuit’s narrow interpretation of fair use in fact hurts the very creators that copyright is designed to protect. Focusing on nonfiction authors, we explained that the Second Circuit’s decision made it difficult to even discern what test for transformativeness it was applying. We explained how Authors Alliance exists to support authors, and one of the main ways we do this is by creating informative guides to help authors understand the legal aspects of publishing. By presenting a new and vague measure of what it means for a use to be transformative, the Goldsmith decision could make it much harder for us to provide this guidance. It also makes it harder for authors to determine whether their uses are fair, which could lead authors to take a conservative stance on fair use, potentially detracting from their authorship. Because this does not serve the interest of our author members, we are supporting the Warhol Foundation in asking the Court to overturn this decision before it is applied in other contexts, doing serious damage to the fair use doctrine and the authors who rely on it to create new works of authorship.

Authors Alliance will keep our members apprised of any developments in this case. Read our full brief below:

Click to access AuthorsAlliance_WarholFoundationv.Goldsmith_Amicus.pdf

Top Gun and Termination of Transfer

Posted June 10, 2022

Termination of transfer has been in the news lately with a dispute over the release of a sequel to the movie Top Gun, entitled Top Gun Maverick, which as of the date of this blog post is one of the highest grossing movies in the U.S.. A little discussed and somewhat arcane provision of copyright law, termination of transfer is a mechanism that allows authors to formally reclaim rights that were previously handed over to a publisher or another party. Termination of transfer can be a powerful tool for authors who want to reclaim rights, but the termination of transfer statute is complicated, requiring that authors wait at least 35 years to exercise this right and serve notice between two and ten years in advance.

In the Top Gun Maverick dispute, the estate of the author who wrote a magazine article on which the original Top Gun movie was based is suing Paramount Pictures in an effort to stop the film’s release. Paramount had obtained a license for the magazine article, a nonfiction piece entitled “Top Guns,” for the original movie, but did not obtain a license to use the materials for the sequel. “Top Guns” was published in 1983 and is “a character-driven tale of two ambitious Navy fighter pilots” which inspired the original film.

In its complaint, the estate claims that it terminated the transfer of rights in “Top Guns” via the statutory provision, meaning that Paramount would no longer hold rights in the article as of the date of termination. The estate provided notice about the termination in 2018, and alleges that the termination went into effect in 2020. For its part, Paramount claims that Top Gun Maverick was “sufficiently completed” before 2020 when the termination went into effect, as it had originally been planned for release in 2019. On the other hand, the estate has expressed its view that the film was not completed until 2021 based on re-shoots.

The questions in the Top Gun Maverick dispute may be largely technical: what does it mean for a film to be sufficiently completed, and how does this relate to statutory termination of transfer? Paramount has expressed that it has no interest in settling, reflecting its likely belief that it did not need a license from the author of “Top Guns” in order to produce Top Gun Maverick, whether due to the timing of the termination of transfer or for other reasons. Regardless, it is notable to see a major news story and high-profile lawsuit involving termination of transfer. Many have lamented that statutory termination of transfer is rarely used due to its obscurity, context dependence, and how complicated the provision and its requirement are. Authors Alliance is optimistic that this renewed attention to termination of transfer could lead authors and other creators to explore whether termination of transfer might help them reach their dissemination goals, and we encourage our members to consider termination of transfer where appropriate. Once a termination of transfer has been affected, the author who terminated the transfer regains the rights she had previously handed over to her publisher or another party. In the case of the “Top Guns” author’s estate, the estate is now free to license the article to other parties (whatever the result of the current dispute might be).

Authors Alliance has a dedicated resource page on termination of transfer as well as a tool for authors to help them determine when they might be able to effectuate a termination of transfer and a template and guidance on effecting a termination of transfer. We have also published guest blog posts from authors on their experiences with termination of transfer. If you have experience with termination of transfer, please reach out to us at info@authorsalliance.org to share your story and help us bring more attention to this important but underused provision within copyright law.

Fair Use and Literary Parodies

Posted June 3, 2022

“Parody Is Not Infringement” by Joe Gratz is licensed under CC BY-NC 2.0.

Fair use is one of the more dynamic topics in copyright law lately—the Supreme Court has issued decisions or agreed to hear cases in two separate fair use cases that could affect how authors can rely on fair use just within the past year and a half. Fair use is also a topic Authors Alliance discusses a lot on this blog and elsewhere—we care about fair use so much that we wrote a book on it! While our guide focuses on fair use for nonfiction writers, fiction authors can and do rely on fair use to create new creative works of authorship. One of the clearest examples of fair use in the realm of fiction is parody (a topic we previously discussed in our 2020 series on fair use for fiction authors). At the most basic level, a parody is defined as “a literary or musical work in which the style of an author or work is closely imitated for comic effect or in ridicule.” In today’s post, we will contextualize parodies within copyright and offer some thoughts on how law and practice surrounding parody might affect authors of parodies and authors more generally.

Parody at the Supreme Court

The landmark Supreme Court decision that proposed a framework for a use’s “transformativeness” which is still relied upon today, Campbell v. Acuff-Rose Music, was itself a case about parody. In the case, the rap group 2 Live Crew recorded and released a song entitled “Pretty Woman.” The song drew from “Oh, Pretty Woman,” a rock ballad by Roy Orbinson and William Dees which was featured in the film Pretty Woman. After reusing a familiar line from the song, the 2 Live Crew song “degenerates into a play on words, substituting predictable lyrics with shocking ones.” The song “juxtaposes the romantic musings of a man whose fantasy comes true, with degrading taunts, a bawdy demand for sex, and a sigh of relief from paternal responsibility.” The Court interpreted this change “as a comment on the naiveté of the original of an earlier day, as a rejection of its sentiment that ignores the ugliness of street life and the debasement that it signifies.” While many remember Campbell for the concept of transformativeness that it established as part of the test for fair use, it also shows the strong legal protection for parodies.

Parodies and Artistic Judgments

One issue that sometimes arises when an author defends their use of another’s work as a fair use parody is the question of whether it is a parody at all. Courts require more than claims from the author that their work is a parody in order to consider it as such. The question of whether the apparent parody uses the first work for a different purpose, or in a way that is transformative, or merely reuses existing material to unfairly benefit from that creative output, involves some artistic judgment by a court. While courts have, in different ways, resisted being slotted into the role of art critic, some judgment as to a work’s “parodic character” is inevitable.

The recent fair use case, TCA v. McCollum, is an illustrative example of this problem. The case concerned the use of a portion of the comedic routine “Who’s on First,” written by Bud Abbott and Lou Costello, in an original play entitled Hand to God, described as an “irreverent puppet comedy” about “a possessed Christian-ministry [sock] puppet.” While the play was not described as a parody, it did arguably use the comedic routine for comedic effect or ridicule, making it at the very least “parody-like.” In Hand to God, “Who’s on First” takes place as a conversation between the protagonist and Tyrone, a sock puppet worn on the character’s hand. The actor performs both roles, using different voices for the character and the sock puppet. In 2015, a district court found the use of the routine in the play to be “highly transformative,” because “[w]hereas the original Routine involved two actors whose performance falls in the vaudeville genre, Hand to God has only one actor performing the Routine in order to illustrate a larger point.” It explained that “[t]he contrast between [the character’s] seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt.”

But the next year, the Second Circuit reversed the district court’s decision, finding that the use of “Who’s on First?” in Hand to God was not transformative or a fair use. The court argued that neither the playwright or the district court had explained how the use of “Who’s on First?” specifically served the “darkly comedic” aim of the play. The court added that its conclusion was bolstered by the fact that the playwright presented a portion of the routine “almost verbatim,” apparently ignoring the fact that verbatim copying can be fair use in some instances. In the view of the Second Circuit, the use of the routine did not “add something new” to “Who’s on First?” with “new expression, meaning, or message.” It is difficult to square this with the astute observations of the district court regarding the creative use of “Who’s on First” in Hand to God, and begs the question of how much artistic judgments are involved when judges decide whether a work is transformative or parodic in character.

Parody in Practice

While the fair use doctrine provides strong legal protection for parodies, in practice, authors might still be cautious about whether and how they create parodies of literary works. The possibility of facing a lawsuit related to a new book is daunting, even when those lawsuits are entirely unsuccessful. The cost of defending a copyright infringement suit can be very high, and authors are already strapped for time and resources they need to create new works of authorship. This threat of copyright liability can lead some authors and other creators to be cautious about creating parodies. For example, there has recently been news of an upcoming horror film parody of Winnie-the-Pooh involving live action actors, entitled Winnie the Pooh: Blood and Honey. This work arguably fits squarely within the definition of parody, turning Pooh and Piglet from lovable, naive animated characters into gruesome killers portrayed by actors. Yet the filmmaker waited until Winnie-the-Pooh by A.A. Milne entered the public domain before creating the film. Moreover, the filmmaker took additional precautions to avoid antagonizing the Milne estate or Disney, who owns copyrights in the character as presented in Disney’s Winnie-the-Pooh films and movies. The filmmaker made sure to pattern the character designs off the drawings in Milne’s book rather than the Disney TV show or films, and even omitted characters like Tigger who did not appear until Milne’s later The House at Pooh Corner, which has not yet entered the public domain.

Parodies and the law around them are an important topic for authors who care about fair use. Fiction authors may be inspired to create new parodies, and nonfiction authors too can take lessons from the laws around parody as to transformativeness and practical caution, even when the law is on one’s side.

Copyright Term, Disney, and “Steamboat Willie”

Posted May 25, 2022

Authors Alliance thanks our research assistant, Derek Chipman, for researching and authoring this blog post.

Copyright and Disney are in the news again with the recently proposed Copyright Clause Restoration Act, legislation which would reduce the length of copyright protection as 2024, when the iconic character Mickey Mouse will enter the public domain, approaches. The bill, proposed by Senator Josh Hawley, would reduce the term of new copyrights to 56 years from its current duration—the life of the work’s author plus an additional 70 years for most works—and would apply this change retroactively to entertainment companies with over $150 billion in market capitalization (currently around 70 companies). Senator Hawley has specifically targeted Disney with his bill as according to his website and statements to the press. This blog post will provide a brief history of Disney’s relation to copyright term extensions and the public domain to contextualize the latest copyright term debate.

The first short cartoon featuring Mickey Mouse, “Steamboat Willie,” was released on November 18, 1928, becoming a hit and launching Walt Disney Studio on its path to becoming an industry juggernaut. While not the first cartoon to use sound, “Steamboat Willie” was exceptionally creative with its music and sound effects, premiering only a year after Al Jolson’s The Jazz Singer. “Steamboat Willie” took three months to complete with an estimated budget of $4,986 and was an immediate hit with audiences following its premiere in New York.

At the time of Mickey’s debut, copyright law protected a work for up to 56 years under the Copyright Act of 1908. Under this law, copyright protection was for an initial term of 28 years, with an option to renew for another 28 years, meaning that the cartoon short would have entered the public domain no later than 1984. However, in 1976, Congress passed a new Copyright Act which extended the term of copyright for a period of 50 years after the death of the author with a maximum of 75 years for pre-existing works, pushing Steamboat Willie’s entry into the public domain until 2003. Then, in 1998, the Sonny Bono Copyright Term Extension Act was passed, extending the copyright term once again and keeping “Steam Boat Willie” from entering the public domain until January 1, 2024, almost 96 years after its debut. Disney lobbied heavily for the 1976 extension and the 1998 extension. In fact, the 1998 extension became derisively known as the “Mickey Mouse Protection Act” due to Disney’s heavy lobbying. With a public more interested in copyright law, it seems unlikely that Disney will successfully push for another extension.

Why did Disney push for these extensions? Copyright allows Disney to control access to these original cartoons and designs. Once it has entered the public domain, “Steam Boat Willie” will be free for the public to use in new works and distribute as they see fit. However, it is important to note that later designs of the characters would still be copyrighted until their terms end. It is also important to note that while the copyright protections for the characters would end, trademark protections on the character still exist (for a rundown on the differences between trademark and copyright, check out 2020 our blog post on the topic).

“Steamboat Willie” entering the public domain will enrich and benefit the public at large as authors and creators create derivative works and new imaginings of the work. Disney itself makes various use of public domain works in some of its most popular films: Frozen and The Little Mermaid are based on Hans Christian Andersen stories from the late 19^th century, The Lion King is a reimagining of Shakespeare’s Hamlet, and numerous others are based on folktales and myths. Incredibly, “Steamboat Willie” itself made use of the public domain: one of the film’s songs was set to the tune of “Turkey in the Straw,” which was already in the public domain at the time. Disney’s reliance on the public domain and simultaneous efforts to expand the scope of copyright protection are remarkable, demonstrating how the public domain can be a potent tool for creators while the long scope of copyright protection can be a strong limitation on add-on creation.

While the latest Copyright Extension bill may in reality have more to do with topics outside of copyright, shortening the length of copyright protection could positively impact cultural exchange by allowing culturally iconic and historically important works and characters like Mickey Mouse to enter the public domain sooner than nearly a century after their debut. While the bill is unlikely to pass, having been criticized by some as inaccurate and potentially unconstitutional, its introduction is itself notable, and has the potential to bring attention to the need for carefully considering the limits of copyright protection.

Authors Alliance Signs onto Letter Opposing the Pro Codes Act

Authors Alliance is grateful to our Research Assistant, Derek Chipman, for researching the Pro Codes Act and authoring this blog post.

On April 21, Authors Alliannce joined 15 other organizations to express strong opposition to the Protecting and Enhancing Public Access to Codes Act, known as the Pro Codes Act. If passed, the Act would allow private organizations to assert a copyright interest in an “original work of authorship” that is “adopted or incorporated by reference, in full or in part, into any Federal, State or municipal law or regulation” so long as the work is provided “at no monetary cost for viewing by the public in electronic form on a publicly accessible website.” As this post will explain, Authors Alliance opposes this bill, as it limits access and dissemination of laws and regulations that are necessary and even vital for a functioning democracy and robust free speech protections.

Co-sponsored by Representatives Ted Deutch and Darrell Issa, the Pro Codes Act would codify copyright protection for voluntary standards or “codes” incorporated into law by reference. These voluntary standards are initially written by industry experts, government officials, and organizations known as standards development organizations (“SDOs”). According to the General Aviation Manufacturers Association (an SDO itself), SDOs “provide industries with a neutral forum to exchange expertise and set standards.” The National Fire Protection Association (“NFPA”), another SDO, states that SDOs provide “hundreds of technical, industry and scientific standards to the federal government each year[,]” and that “government use of these standards decreases the burden of regulation and the costs of enforcement by conforming regulatory requirements to voluntary, user accepted standards.” The NFPA also asserts that it holds a copyright in its standards and fund its activities through the sale of their standards publications.

These standards are often quite lengthy, such as the Society of Automotive Engineers’s Motor Vehicle Dimensions standards, which is over 78 pages in length but is incorporated by reference into 49 CFR § 571.3, saving the legislature the need to write the entire document into the legislation. Standards incorporated into federal law must be made available to the public, however the only requirement currently is that a hard copy must be deposited into the National Archives, with electronic copies from the Archives being made available at the discretion of the SDO. The Pro Codes Act would officially establish that these incorporated standards are copyrightable, but must be made available on a publicly accessible website. Representative Deutch characterizes the bill as protecting public access and a “win for transparency and public safety.” Representative Issa likewise stated that the bill would “promote transparency in standard setting, and ensure the public can access the rules they are being asked to follow.” SDOs have expressed strong support for the bill, while our co-signers on the letter opposing it largely consist of organizations dedicated to open access and government transparency.

While the sponsors of the bill promote it as a step forward for transparency and access, it could be problematic for both. As David Halperin, Counsel of PublicResurce.Org, explains, this act could allow SDOs as well as other private parties that publish text “later incorporated into a law could use copyright law to block people from reciting or distributing the text . . . so long as they offer that text on a website somewhere.” While it may seem that the bill improves access by requiring the SDOs to post their codes online, it could actually limit access by giving a copyright interest to the SDOs and allowing them control over access. EFF astutely characterizes the proposed bill as a “Wolf in Sheep’s clothing” that could allow SDOs to assert a monopoly over their standards and codes via paywalls and restrictive licensing, likening this outcome to allowing them to “put up tollbooths in front of huge swaths of U.S. Law.” EFF also points out that the mandate that the SDOs make the codes publicly accessible is unnecessary, as the non-profit PublicResource.Org is already making these codes and standards available without burdensome restrictions. PublicResource.Org is a non-profit that promotes access to government records and documents by making them freely available online, and was a co-signer in the letter opposing the Act. As noted earlier, the NFPA and other SDOs claim they have a copyright in their standards even if incorporated into public law. With this theory in mind, certain SDOs launched a lawsuit against PublicResource.Org under a Copyright infringement claim, but a recent district court decision ruled the majority of its sharing was fair use.

The proposed bill could increase litigation for non-profits, but some have postulated the bill may be unconstitutional, given the Supreme Court’s ruling in Georgia v. Public Resource. Authors Alliance has previously covered this case, but importantly, the court held that “no one can own the law” under the government edicts doctrine, regardless of whether the material itself carried the force of law. Importantly, the court stated if “every citizen is presumed to know the law[,]” then “all should have free access to its contents.” The codes and standards incorporated by reference are vital to understanding the laws citizens are subject to and are a critical piece of the laws themselves. Without being able to access and disseminate these codes like regular legal codes, free speech is stifled, and the public could be unable to discuss critical pieces of legislation. As stated in the letter, giving an authorship interest to private entities for public laws would give these private actors the ability to control access via paywalls, demands of personal information, and to control the very format they are presented in, raising accessibility issues. Promoting the free exchange of ideas and fostering public discourse is key to a heathy democracy and society, and allowing private actors to control how critical pieces of public law are viewed and disseminated works against this.

Laws and legislation belong in the public domain, and strong access allows codes and standards that affect everyday life to be dispersed more rapidly and widely. By removing barriers to access, these standards could be more easily understood and studied by the public and even improved upon through the free exchange of knowledge. Requiring only that the text of codes incorporated by reference into public are made available on a website does not promote transparency if what is given in exchange is a monopoly power that curtails the copying and dissemination of that information.

Authors Alliance will be monitoring the progress of the Pro Codes Act and will keep our readers appraised of any new developments.

Authors Alliance Joins Day of Action Against SMART Copyright Act of 2022

Posted April 25, 2022

Authors Alliance Thanks our research assistant, Derek Chipman, for authoring this blog post.

Today, April 25th, various stakeholders have come together to oppose the SMART Copyright Act of 2022 and as part of the Electronic Frontier Foundation’s (EFF) and Fight for the Future’s day of action for voicing opposition to the SMART Copyright Act. As part of this day of action, this blog post surveys the opposition to the SMART Copyright Act voiced by numerous organizations.

The SMART Copyright Act would empower the Copyright Office to designate standardized protection measures (STMs) which would be required for digital platforms and service providers to implement to monitor and prevent uploads of infringing content. These STMs may be effectively selected by the content industry and could have a disastrous effect on the internet by restricting free speech through mandating upload filters, forcing digital platforms to adopt them at their own expense. Authors Alliance has previously voiced our opposition to the bill as well as signed on to a letter in opposition with thirty-one other organizations and individuals. Other organizations too have criticized the SMART Copyright Act as inconsistent with free expression and sound information policy online.

Start-up and pro-entrepreneurship organization Engine recently detailed the potential costs of the bill that are adverse to newly formed start-ups, such as the burden of increased litigation due to ambiguous new terms, the complexity of navigating a “complex patchwork of different required technologies,” the cost of endless triennial rulemakings, as well as the error-prone nature of upload filters. The EFF has highlighted these issues as well, calling the legislation an “unmitigated disaster” and giving examples of how current automated upload filters implemented by YouTube, Facebook, and Twitch have led to numerous false positives and unclear policy communication. These issues are given more detail in the EFF’s submitted comment during the Copyright Office’s public consultation on Technical Measures held earlier this year. Similarly, TechDirt writes that a separate letter from internet companies such as Patreon, Etsy, Cloudflare, Pinterest and Reddit urged a shift in focus to “pro-innovation proposals that expand opportunities for us and our users” after raising concerns about costly litigation over using the right technologies, navigating ambiguous terms, and the effects of filters on its users non-infringing posts.

Other opposing voices include the Wikimedia Foundation, which has concerns that the SMART Act “puts too much faith in artificial intelligence and automated tools as the only solution to infringement,” and that these tools are often flawed and generate false positives. Moreover, the tools tend not to be open source or freely available, which is burdensome for small companies and non-profits. Re: Create believes the bill is not only a waste of resources, but that filtering mandates are outside the scope of U.S. copyright law. The Library Copyright Alliance wrote in its own letter in opposition, where it also criticized the burdensome framework of the proposed triennial rulemaking and argued that the bill would burden free speech “replaces the notice-and-takedown regime . . . with a notice-and-stay-down regime.” Public Knowledge’s policy counsel Nicholas Garcia stated that SMART “threatens the vibrant, open, and innovative internet in the name of intellectual property protection” and will “force digital platforms and websites to implement technical measures that monitor all content that users upload[.]”

Now that Congress is back in session, we join our voices with these other organizations in calling on our representatives to not support this flawed proposal. Authors Alliance will continue to monitor the SMART Copyright Act of 2022 and keep our readers apprised of any further updates.

Call to Action: Please Share Your Feedback on Controlled Digital Lending!

Posted April 18, 2022

From “Controlled Digital Lending Explained”

Since this post was first published in February 2021, Authors Alliance has continued to collect stories from authors about their experiences with and views on CDL. Please help us to better advocate for your interests and amplify your voices by sharing your thoughts about CDL today!

Authors Alliance is continuing to gather feedback from authors about Controlled Digital Lending (“CDL”) in order to strengthen our advocacy work and better represent your interests. Several of our members have already shared their views on how CDL helps authors and researchers, and we are now asking you to add your voice by completing this short form.

Click here to share your feedback on CDL!

Under the CDL digitize-and-lend model, libraries make digital copies of scanned books from their collections available to patrons, subject to limitations. Like physical books, the scanned copies are loaned to one person at a time and are subject to limited check-out periods. In addition, the hard copy is not available for lending while the digital copy is checked out, and vice versa. In short, a library can only circulate the number of copies that it owned before digitization. Here’s a helpful video explainer of how CDL works.

Authors Alliance supports CDL because the practice is not only backed by a good faith interpretation of fair use, it 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 and the purposes of copyright law. 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.

In June 2020, a group of commercial publishers filed suit against the Internet Archive, arguing in part that making electronic copies of books available using CDL through Open Library constitutes copyright infringement. Authors Alliance supports CDL and believes the attempt to challenge it in the courts is without merit. We look forward to hearing your thoughts.

Judge Ketanji Brown Jackson on Copyright

Posted April 13, 2022

“Official portrait of Judge Ketanji Brown Jackson” by H2rty is licensed under CC BY-SA 4.0.

Last week, Judge (soon to be Justice) Ketanji Brown Jackson was confirmed as the newest member of the Supreme Court. Many Americans have have found much to celebrate in Judge Jackson’s confirmation: she is the first Black woman to serve on our nation’s highest court, and her diverse experience as a judge and attorney make her highly qualified for the position in the eyes of many. But how will the Court be affected by Judge Jackson’s views on copyright? Longtime readers may recall that Authors Alliance published a rundown of Justice Barrett’s copyright jurisprudence after her confirmation to the Court in late 2020. In today’s post, we will survey Judge Jackson’s record on copyright to give a preview of how her views might affect the Court’s copyright jurisprudence going forward.

It is worth mentioning that Justice Breyer, whom Judge Jackson will be replacing on the Court, has long been known as the Justice most focused on intellectual property and copyright, and the most liberal Justice on these subjects. Justice Breyer has authored powerful dissents, such as in Eldred v. Ashcroft, where argued that a lengthy extension of copyright duration did not serve the public interest, and majority opinions such as the more recent Google v. Oracle, in which the Court applied a broad interpretation of fair use to software. All of this indicates that Justice Breyer will leave big shoes to fill, making an exploration of Judge Jackson’s copyright jurisprudence more important than ever for authors who care about seeing their works reach broad audiences.

While Judge Jackson once clerked for Justice Breyer, her judicial record on copyright law is fairly thin. This is perhaps not surprising considering that a bulk of copyright cases are filed in either the Second Circuit (which includes New York) or the Ninth Circuit (which includes California), whereas Justice Jackson has spent the last decade as a judge in the D.C. Circuit and later the U.S. Court of Appeals for the D.C. Circuit.

Copyright Questions in Confirmation Hearing

Most recently, Judge Jackson was faced with questions about her record and views on copyright during her confirmation hearings. Senator Thom Tillis asked Judge Jackson a number of written questions related to copyright law (among other things), including her opinion on the proper balancing of the four fair use factors. Judge Jackson answered that, in her view, the fourth fair use factor—the effect of the use upon the potential market for the copyrighted work—was most important in fair use analysis, citing Supreme Court precedent in Harper & Row v. Nation Enterprises. It is notable that Judge Jackson did not discuss factor 1—the purpose and character of the use, including whether it is considered “transformative”—as this factor is conventionally held up alongside factor four as the two most important parts of the fair use inquiry.

The transformativeness doctrine has become incredibly important in recent years, protecting uses such as full-text searchable scans of works in Authors Guild v. Google and reuse of software code in Google v. Oracle. Judge Jackson’s lack of emphasis on transformativeness in her comments related to fair use could indicate that she might give less weight to transformativeness than the market effects of a particular use. In the next term, the Supreme Court will hear Warhol Foundation v. Goldsmith, a fair use case that turned on transformativeness in the lower courts, and Judge Jackson’s deemphasis on transformativeness could foreshadow an inclination on her part to decide the case on other grounds.

Speaking to the copyright decisions she had made in her capacity as a federal judge, Judge Jackson pointed to the two cases discussed below in her written responses to Senator Tillis’s questions.

Alliance of Artists & Recording Companies v. General Motors

In 2016, the Alliance of Artists and Recording Companies, a nonprofit organization dedicated to collecting royalties under a provision of copyright law known as the Audio Home Recording Act (“AHRA”), filed a lawsuit against General Motors for failing to comply with the statute by installing recording devices in car dashboards without paying royalties for any recordings made. In the case, Judge Jackson considered whether the recording devices installed by GM constituted “digital audio recording devices” under the AHRA. The case was essentially one of statutory interpretation, a method by which judges examine the language and context of a statute to determine whether and how it applies to the case at hand.

One challenge present in this case was the fact that the AHRA was passed in 1992, prior to the advent of advanced in-vehicle audio recording devices. Judge Jackson was thus tasked with determining whether the statute should cover a technology that did not exist when the statute was enacted. Over the course of two years and three separate rulings, Judge Jackson ultimately determined that GM’s dashboard recording devices did not qualify as “digital audio recording devices” under the AHRA. In short, this was because the AHRA was directed at music recording, whereas GM’s devices copied and stored a plethora of data, including computer programs and voice recordings in addition to music. Because the statute did not apply to GM’s activities, Judge Jackson ultimately dismissed the case. In the case, Judge Jackson demonstrated an ability to apply a technical and perhaps arcane aspect of copyright law, indicating a willingness to dive into these important issues.

Buchanan v. Sony Music Entertainment

In 2020, Judge Jackson issued a decision in Buchanan v. Sony, which concerned allegations of copyright infringement in music. In the case, Moreh Buchanan alleged that Sony had improperly taken the “plot, theme, story line, characters, cast, scenes, etc.” for the Fast and Furious film franchise from four songs he claimed to have submitted to Sony between 1992 and 1997. Judge Jackson found for Sony in the case for a number of reasons: Buchanan had failed to register his copyrights in the songs, which is a condition for being able to sue to enforce those rights in court; Buchanan had failed to prove that Sony had access to his recordings; and Buchanan had failed to allege that the his songs and the films were “substantially similar,” which is also needed to support an infringement claim. In her decision, Judge Jackson showed her understanding of the requirements of an infringement claim and the importance of these elements, whatever the facts of the case. The litigant had made allegations that read as fairly bizarre, such as suggesting that his lyric, “I’m on the freeway zooming fast” was the basis for the Fast and Furious films. Nonetheless, Judge Jackson engaged with the claim and carefully laid out the legal justifications for dismissing it.

While Judge Jackson’s record on copyright may be thin, the copyright opinions she did author show her understanding and willingness to engage with copyright issues. Authors Alliance will keep our readers appraised of any copyright developments on the Supreme Court as Judge Jackson joins the bench next term.