In December 2018, Authors Alliance submitted a brief to the Canadian Committee on Industry, Science and Technology in response to a request for public comment. The committee was tasked by Parliament with reviewing Canada’s copyright statutes and issuing a report with recommendations for action and further consideration. Our brief urged the retention of reversionary rights in Canada’s Copyright Act and recommended amendments to the provision to enhance the utility of reversionary rights.
Earlier this month, the Committee on Industry, Science and Technology released its Statutory Review of the Copyright Act. Our brief was cited in the report, and we were pleased to see that the report includes recommendations to expand fair dealing and reversionary rights, which benefit creators who wish to make fair use or to regain rights to their previously published works.
Professor Michael Geist of the University of Ottawa prepared an analysis of the report’s recommendation on fair dealing in a post on his blog (made available under a Creative Commons license), which we have re-posted below. For a deeper dive into the future of the Canadian Copyright Act, we recommend Geist’s summary of the full report.
The long-awaited Canadian copyright review report features numerous good recommendations, many of which were rejections of industry lobbying: a rejection of new restrictions on fair dealing for education, rejection of Bell’s FairPlay site blocking initiative, and rejection of limits on safe harbours in response to the so-called “value gap.” Yet the most notable recommendation is the committee’s support for fair dealing for the digital age by expanding its scope and ensuring that it applies equally in the analog and digital worlds.
there is a need to fix fair dealing by ensuring that it is not hamstrung in the digital environment. The Canadian test for fairness is consistent with those found in other countries, but there are barriers that exist for fair dealing in the digital world that are not found in the analog one. The most obvious example are Canada’s digital lock rules, which exceed the requirements at international law in the WIPO Internet treaties. As many warned five years ago, Canada has created a system that allows for unnecessarily restrictive limits on digital fair dealing. There is a need to fix this problem by establishing an exception within the anti-circumvention rules to allow for circumvention for any lawful purpose.Moreover, the fair dealing purposes should be expanded, ideally by adopting a “such as” approach to its list of enumerated purposes that would ensure the law remains relevant in the face of new innovation. Alternatively, given Canada’s prioritization of artificial intelligence, there is a need for a fair dealing exception for text and data mining similar to that found in many other countries.
The copyright review addresses all three issues. First, the committee
recommended adding much needed flexibility by allowing circumvention
for purposes otherwise permitted under the Copyright Act:
However, it agrees that the circumvention of TPMs should be allowed for non-infringing purposes, especially given the fact that the Nintendo case provided such a broad interpretation of TPMs. In other words, while anti-circumvention rules should support the use of TPMs to enable the remuneration of rights-holders and prevent copyright infringement, they should generally not prevent someone from committing an act otherwise authorized under the Act.
This change will help ensure that fair dealing rights are treated in an equivalent manner in both the analog and digital worlds.
We are grateful to Authors Alliance’s Copyright Research Assistant Kerry Maeve Sheehan for this analysis of the 2019 CASE Act.
The Copyright Alternative in Small Claims Enforcement Act (CASE Act) is back in Congress, and it still has serious problems.
On May 1st, Rep. Doug Collins (R-GA) and Rep. Hakeem Jeffries (D-NY) introduced the latest version of the Copyright Alternative in Small Claims Enforcement Act (CASE Act). Like its predecessor bills in 2016 and 2017, the 2019 CASE Act would establish a copyright small claims tribunal within the United States Copyright Office with the authority to hear and decide some copyright infringement claims.
The bill has a laudable goal: reducing barriers to copyright
enforcement for those with limited financial resources by providing a faster
and cheaper avenue to remedies. For many independent authors, creators, and
users of copyrighted content, copyright litigation in federal court is not
worth the candle; the high cost of litigation keeps many independent authors
and creators from enforcing their copyrights. A well-designed copyright small
claims process could fix this but, unfortunately, the deeply flawed CASE Act
isn’t that. While failing to limit the tribunal’s scope to the types of claims
and claimants that it’s best suited to and allowing recovery of excessive damages,
the small claims process as set out in the CASE Act would also cause harm to
many legitimate users of copyrighted works, including authors, educators, and
other creators.
The CASE Act’s small
claims process isn’t limited to the problems a small claims court is
well-positioned to address.
The CASE Act’s small
claims tribunal isn’t limited to those independent authors and creators who
need it most.
The copyright
holders who most need, and would most benefit, from a small claims process are
those independent authors and creators who can’t afford to press their claims
in federal court. Unfortunately, instead of limiting the small claims process to
those independent copyright holders that really need access to this kind of
forum to enforce their copyrights, the CASE Act opens the door widely,
welcoming in large corporations, corporate assignees, and entities that buy up
others’ copyright claims and profit from litigation.
We’ve already seen how copyright trolls and big content
companies have sometimes abused the federal court system to raise questionable
infringement accusations and threaten those accused with high statutory damages.
By not limiting enforcement through the small claims process to individual
creators, the CASE Act makes it even easier for these entities to get quick
default judgments and disproportionately high damages awards. Absent enough
protections for accused infringers and reasonable limits on damages, the CASE
Act would invite more abusive litigation tactics by copyright trolls and
opportunistic claimants while cluttering up the docket with cases that should
be resolved elsewhere.
The CASE Act’s small claims
tribunal’s jurisdiction is far too broad.
Some areas of copyright law are just too complicated, fact specific, and unsettled to be decided by a small claims process. The CASE Act tribunal’s accelerated process and limited discovery mean that it’s really only equipped to handle simple, straightforward infringement claims in settled areas of law. But the CASE Act doesn’t draw the line there. Instead, the tribunal has expansive authority to hear all types of copyright infringement claims including those that involve highly complex issues and uncertain areas of law. These complicated cases belong in a federal court with the expertise and resources to more competently address all the factual and legal issues involved. Leaving these cases with the small claims tribunal hurts both those authors trying to enforce their copyrights and those trying to defend their rights to use copyrighted works, as the tribunal won’t be able to adequately resolve the issues involved.
While the
CASE Act does include a provision allowing the tribunal to dismiss a claim or
defense if the tribunal decides it’s not suitable, without a clear limitation
on the tribunal’s jurisdiction, it’s hard to see how it would make consistent
decisions to do so.
The CASE Act would create new opportunities for abusive litigation
tactics.
The CASE Act’s “default
judgment mill” favors sophisticated actors over independent authors and
creators.
The CASE Act’s opt-out provision doesn’t provide independent authors (whether claimants or defendants) enough protection. Under the CASE Act, if someone accused of infringement fails to opt-out of the small claims process within 60 days of receiving notice of the claim, the small claims tribunal can enter a default judgment in favor of the claimant and award her damages. This judgment can then be enforced by the claimant in federal court. While this opt-out procedure is supposed to provide some protection for the accused, there’s a strong likelihood that authors, educators, and small creators without sophisticated legal knowledge or representation may not fully understand the implications and may ignore the notice – ending up on the hook for substantial damages awards without a meaningful opportunity to appeal. This quick and easy way to obtain default judgments is likely to create a “default judgment mill,” where big content companies and copyright trolls can churn out a mass of default judgments and high damages awards against unsophisticated individuals.
The CASE Act’s statutory damages framework invites abuse.
There may be a role for a reasonably statutory small framework in a small claims tribunal when damages from infringement are difficult or impossible to prove. However, while substantially lower than the statutory damages available in federal court, the CASE Act’s statutory damages are still excessively high and are available in all cases. Under the CASE Act, claimants who timely registered their works can request up to $15,000 per work infringed, with a total limit of $30,000 per proceeding. Those who failed to timely register their works can request up to $7,500 per work infringed, with a limit of $15,000 per proceeding. As copyright law experts have pointed out, in federal court, the availability of excessive statutory damages has made it easy for unscrupulous plaintiffs to intimidate and extract settlements from individuals accused of infringement. Faced with the risk of a high statutory award, many defendants opt to settle, even when they have a valid defense. And without standards to guide those awards, copyright litigation is an unpredictable venture. With lower barriers for plaintiffs and a disproportionate statutory damages framework, the CASE Act could make these problems even worse.
As concerned scholarshave noted, The CASE Act’s statutory damages framework won’t just harm defendants, though. It will also create an incentive for sophisticated or well-resourced defendants to strategically opt out of the small claims process when they think the claimant won’t be able to pursue her claim in federal court. This would undermine the CASE Act’s core objective, returning independent authors and creators to today’s unsatisfactory status quo.
Would the CASE Act tribunal be a fair one?
The CASE Act’s
limitations on appeal make it unduly difficult for parties to get meaningful
independent review of tribunal decisions.
Independent judicial review is essential to ensuring that
any tribunal operates fairly and arrives at the correct result. The CASE Act,
however, narrowly restricts the ability of either party to seek review of the
tribunal’s decisions in federal court. Under the CASE Act, parties can ask the
tribunal to reconsider a determination, and, with an additional fee, parties
can ask the Register to review the tribunal’s refusal to reconsider on abuse of
discretion grounds. Independent review by a court is only available in on the
grounds of “fraud, corruption, misrepresentation, or other misconduct,” or if
the tribunal exceeded its authority or failed to render a final decision.
Default judgments are only reviewable on grounds of excusable neglect. By
restricting the grounds for appeal, the CASE Act would leave erroneous tribunal
decisions essentially unreviewable and unjustly wronged parties with no where
to turn for relief.
The Copyright Office probably isn’t the right place for a copyright small
claims court.
A tribunal within the copyright office, designed to serve copyright claimants, and with officers selected and recommended by the Register of Copyrights may end up friendlier towards copyright claimants, and less receptive to arguments that a contested use is legitimate or qualifies as fair use. In concert with the limitations on appeal of tribunal decisions, this could create a forum inclined to issue more favorable judgments for big content companies and other copyright claimants, and in the process, harm those authors, educators, and creators defending their right to use copyrighted works.
Authors Alliance founder and law professor Pamela Samuelson points out that placing the tribunal within the Copyright Office could also run afoul of the United States Constitution. The United States Supreme Court has repeatedly stated that infringement claims belong in the federal courts. Placing some copyright infringement claims in an administrative forum may be unconstitutional under Supreme Court precedent.
Authors Deserve Better
Than the CASE Act.
Independent authors and creators should have access to a low cost way to enforce their copyrights and vindicate their right to use others’ copyrighted works. We support a fair, unbiased small claims process that doesn’t invite abuse and wreak havoc on copyright law. If Congress is serious about fixing Copyright’s small claims problem, it needs to do better than the CASE Act. It can start by listening to the numerous educators, scholars, librarians, technologists, lawyers, and public interest policy experts who’ve all pointed out the Act’s problems. If you want to learn more about the CASE Act, check out this paper by Authors Alliance founder Pamela Samuelson and Kathy Hashimoto, and this one by law professor Ben Depoorter.
We thank Jason Mazzone, the Albert E. Jenner, Jr. Professor of Law at the University of Illinois at Urbana-Champaign, for contributing this guest post.
Copyfraud—false claims of copyright in public domain works—is a persistent problem. False copyright notices appear on modern reprints of Shakespeare’s plays, Beethoven’s piano scores, greeting card versions of Monet’s Water Lilies, and even the U.S. Constitution. Archives claim blanket copyright in everything in their collections. Vendors of microfilmed versions of historical newspapers assert copyright ownership.
These false copyright claims, which are often accompanied by
threatened litigation for reproducing a work without the “owner’s” permission,
result in users seeking licenses and paying fees to reproduce works that are
free for everyone to use. Copyfraud also interferes with lawful distribution of
public domain works.
Increasingly, computer bots are responsible. When Scribd users posted the recent Mueller report—a federal government document that cannot be copyrighted by anyone—the website’s filters flagged the report as copyrighted and took it down.
There are few available remedies for copyfraud. The
Copyright Act provides for no civil penalty for falsely claiming ownership of
public domain materials. There is also no remedy under the Copyright Act for
individuals who wrongly refrain from legal copying or who make payment for permission
to copy something they are in fact entitled to use for free. While falsely
claiming copyright is technically a criminal offense under the Copyright Act,
prosecutions are extremely rare.
A class action lawsuit filed in federal court in Washington now targets Getty Images for selling licenses to images that are in the public domain. The lawsuit alleges that Getty falsely asserts copyrights in public domain images and misleads consumers into believing they must purchase a license from Getty before making use of the images—and that Getty threatens legal action against unauthorized uses of the images it makes available in its database. The lawsuit against Getty asserts claims based on wire fraud under the federal RICO statute and violations of state consumer protection law.
This is new territory and at this early stage of the case it
is difficult to assess the likelihood the lawsuit will succeed. Getty is likely
to assert that it simply collects images and makes them conveniently available
in high-resolution versions and in so doing it does not violate any law. At a
minimum, in order to demonstrate fraud, the plaintiffs will need to demonstrate
that Getty intentionally misled them into believing it owned copyrights in
images and that as a result the plaintiffs paid out an unnecessary copyright
licensing fee. Even so, the court might find that there is no legal remedy
because Congress did not provide for one in the Copyright Act itself.
I first wrote about copyfraud more than a decade ago in an article published in the NYU Law Review and then in a book, Copyfraud And Other Abuses of Intellectual Property Law (Stanford University Press, 2011). Since then, awareness of the problem has grown. Remedying copyfraud, however, remains a challenge. The lawsuit against Getty might help clarify when existing law provides tools for protecting the public domain. More likely, however, is that the outcome of the case will shed further light on the need for comprehensive reform if copyright is to be kept within its proper limits.
“Author from BL Harley 4425, f. 133” by Guillaume de Lorris and Jean de Meun is licensed under PDM 1.0
In March 2017, Authors Alliance submitted comments in response to the U.S. Copyright Office’s study of moral rights. We voiced our support for creators’ rights to integrity and attribution (subject to limitations and exceptions that protect downstream creative reuse), and our belief that these non-economic authorial rights should be formally recognized in U.S. copyright law—as they are in many other countries. We also encouraged the Copyright Office to consider recognizing other non-economic author rights, namely, the right to revive one’s work if it is no longer available commercially and the right to revise one’s work over time.
Last week, the Copyright Office released a report, Authors, Attribution, and Integrity: Examining Moral Rights in the United States, which provides a review of the U.S. moral rights landscape and recommendations for enhancing existing moral rights protections. The Copyright Office identifies three principles that guide its analysis of a U.S. moral rights framework: respecting foundational principles of U.S. law (including the First Amendment, fair use, and limited copyright terms), appreciating the importance creators place on their attribution and integrity interests, and recognizing and respecting the diversity among industry sectors and different types of works.
Based on these principles, the Office concludes there is no need for the creation of a blanket moral rights statute at this time. Instead, the Office recommends that Congress should consider legislation targeted at specific areas, including amending the Lanham Act and the Visual Artists Rights Act (VARA) to better protect attribution and integrity interests, expanding recourse for removal or alteration of copyright management information, and adopting a federal right of publicity law. These recommendations are detailed in the Office’s report.
Although we are disappointed that the Office declined to recommend that Congress consider new statutory moral rights legislation at this time, Authors Alliance commends the Office for recognizing that attribution and integrity provide meaningful incentives to authors to create new works and that the value to authors of reputational enhancement by virtue of public dissemination of their works is meaningful to authors.
Authors Alliance will continue to speak out for the right of authors to be acknowledged as creators of their works. As we wrote in our founding Principles and Proposals for Copyright Reform, attribution serves not only the interests of authors, but also the reading public’s interest in knowing whose works they are consuming and society’s interest in an accurate record of the intellectual heritage of humankind.
April 23 is World Book and Copyright Day, an annual event organized by UNESCO to promote reading, publishing, and copyright around the world. In that spirit, we’ve compiled this list of resources on the topic of accessibility.
Earlier this month, the WIPO Standing Committee on Copyright and Related Rights (SCCR) held its 38th Session in Geneva. (Although we didn’t attend this session, Authors Alliance has traveled to previous sessions of the SCCR to advocate for reasonable limitations and exceptions to copyright for educational and research purposes.)
One item under consideration at the most recent meeting was the Revised Scoping Study on Access to Copyright Protected Works by Persons with Disabilities. The report, prepared by Professors Caroline Ncube of the University of Cape Town and Blake Reid of the University of Colorado, was based on this 2017 WIPO fact-finding study. It defines various categories of disabilities in order to better identify which formats qualify as accessible for different types of users and analyzes the copyright laws of the 191 WIPO member states in the context of copyright exceptions for persons with disabilities.
In addition to co-authoring the WIPO/SCCR report, Professor Reid also has a new article on Internet Architecture and Disability (forthcoming in the Indiana Law Journal). As the abstract states, “[t]he prevailing doctrinal approach to Internet accessibility seeks to treat websites as metaphorical ‘places’ subject to Title III of the ADA, which requires places of public accommodations to be accessible to people with disabilities. While this place-centric approach to Title III has succeeded to a significant degree in making websites accessible over the last two decades, large swaths of the Internet—more broadly construed to include Internet technologies beyond websites—remain inaccessible to millions of people with a variety of disabilities.”
Also available in pre-print format is the Book Industry Study Group (BISG) Guide to Accessible Publishing (currently in draft for public pre-publication review). This major reference work is a newly updated and greatly expanded edition of the previous 2016 version and contains a comprehensive guide to creating accessible content, a glossary, and a series of “cheat sheets” that break down topics into user-friendly summaries. As the Introduction states, “Maybe someday we’ll be able to stop describing publications as ‘accessible,’ because it will be taken for granted. It’s hoped that this Guide helps us get there.”
Last but by no means least, the International Federation of Library Associations and Institutions (IFLA) has released “Getting Started With the Marrakesh Treaty: A Guide for Librarians.” As we’ve written previously, the treaty creates a set of mandatory limitations and exceptions for the benefit of blind, visually impaired, and otherwise print disabled readers. It requires that contracting states enact copyright exceptions that allow books and other creative works to be made available in accessible formats, such as braille and audiobooks, and to allow for the import and export of such materials. Now that over 50 countries around the world (including the United States) have acceded to the Marrakesh Treaty, the IFLA guide—available in five languages—provides hands-on guidance on international copyright issues to libraries to facilitate availability of materials according to the requirements of the treaty.
In our Spotlight on Book Publication Contracts series, we are shining the light on the ways that authors can negotiate for publication contract terms that help them make and keep their books available in the ways they want. This series is based on the information, strategies, and success stories in our guide to Understanding and Negotiating Publication Contracts. Be sure to check out the online or print version of our guide for more details on these and other strategies to help you meet your creative and pragmatic goals.
In previous posts, we have featured ways authors can shape their publication contracts to retain some control over their rights and ways authors can have a say in how their works will be presented to the world. But rights management and design decisions may not be the only thing on your mind in a book deal. In this installment of our Spotlight on Publication Contracts, we’re focusing on ways that you can shape your contract to help secure fair compensation for your work. Contract terms governing advances and royalties are two key ways that your contract determines what money will flow to you.
Advances
Advances are payments for book deals that are credited against all or some part of your future earnings. An author’s advance is influenced by many factors, including the potential market size for the book, whether the author is a new or established writer, the book’s timeliness and competition, and a publisher’s calculation of risk and reward.
A perennial question for authors is “How big should my advance be?”. Unfortunately, there aren’t any hard-and-fast rules about the size of an advance. Sometimes, it makes sense to negotiate for the biggest advance possible. Because an advance is a credit against your royalties, if your publisher pays you a big advance, it has an incentive to market your book aggressively so that it sells enough copies to recoup this payment.
Success Story: An author interviewed for Authors Alliance’s guide to Understanding and Negotiating Book Publication Contracts wanted his book to be affordable and to be widely distributed, and he knew marketing would be important. Not being familiar with the publishing business, he hired an agent. The author and his agent pushed for a large advance in exchange for a modest cut in his royalty percentages. This way, the publisher would have the biggest financial incentive to market his book, as it stood to make more money once the author recouped. Further, the author agreed to use half his advance to hire an independent publicist to promote his book. This made it easier for his publisher to agree to a large advance as this increased the likelihood that the author’s book would be financially successful.
On the other hand, it’s possible that you may not receive an advance at all. While advances are typical in trade publishing, they are uncommon for scholarly works published by university presses. And, in certain circumstances, you might not want to take an advance. For example, your publisher may offer you a higher royalty percentage if you don’t take an advance, which could result in you earning more money over the long term if your book is successful. Or, you might be able to use a low (or no) advance as a bargaining chip to get better terms in another part of the contract.
Whatever the size of the advance you settle on, it’s important that you pay attention to how and when your advance will be paid and how your advance will be recouped. For more on advances, see pages 182-194 of Understanding and Negotiating Book Publication Contracts.
Royalties
Royalties are the amount of money that authors get from the sales of their books, usually expressed as a percentage. There are three main types of royalties:
royalties based on the book’s published price (also called the “list price,” the “cover price,” or the “manufacturer’s suggested retail price”);
royalties based on the publisher’s net income from sales of the book (also called “price received” or “sales proceeds”); and
royalties based on the publisher’s net profit.
To calculate your royalties under any of these systems, you’ll need to know both the percentage you will be receiving and the price from which that percentage is taken. It is very important to understand your royalty structure because it can make a huge difference in your future bank statements. For a detailed explanation of each royalty type, see pages 198-205 of Understanding and Negotiating Book Publication Contracts.
Success Story: Sergio Troncoso, an author of short stories, essays, and novels, as well as a savvy negotiator, pushed for his royalties to be a percentage of the list price, reasoning that this would likely be the more lucrative option. His publisher was initially resistant, but after a few rounds of back and forth, Sergio’s patience and perseverance paid off. His publisher agreed to a compromise: Rather than getting the published price (list) royalty he had asked for, he would receive a higher percentage of the net profit royalty than was originally offered.
Your royalties can also be influenced by escalation clauses, small reprinting provisions, reserves on returns, deep discount provisions, and remaindered books. For more on these topics, see pages 206-213 of Understanding and Negotiating Book Publication Contracts.
For creators who want their works to be widely shared and enjoyed, terminating transfers of copyright are a powerful option for getting works back out in front of audiences. Authors Alliance has long been a proponent of giving authors statutory rights to terminate transfers of copyright (often called “reversionary” or “termination of transfer” laws). Among other benefits, these rights give creators the ability to give new life to works that have outlived their commercial lives but are nonetheless historically and culturally valuable.
A new study of reversion laws by Joshua Yuvaraj and Rebecca Giblin found that 56% of the 193 countries examined have author-protective laws that allow authors to get their rights back from publishers if certain conditions are met. Yuvaraj and Giblin categorized the reversionary laws they identified based on their triggering circumstances: 1) a set period of time (from, for example, the date of the publication agreement or the author’s death), 2) a work’s out of print status, 3) the publisher’s active use of the work, and 4) other situations (such as if the publisher goes bankrupt).
Yuvaraj and Giblin will continue to examine these reversionary laws in more detail, but initially suggest that laws that allow authors to reclaim rights in the event that rights are not being exploited or if there are no/low sales of their works would help authors’ ongoing interests in their works while protecting publishers’ commercial interests. Read more about Yuvaraj and Giblin’s findings here.
Authors interested in learning more about reversionary laws around the world can explore the beta version of the Creative Commons Rights Back Resource. We encourage experts to contribute to the resource to help expand the database of country-specific laws.
Authors interested in learning more about terminating transfers under U.S. law can visit the Authors Alliance/Creative Commons Termination of Transfer tool at rightsback.org and the Authors Alliance Termination of Transfer resources page. If you are not eligible to exercise a statutory right to terminate a transfer of copyright, you may want to explore options for getting rights back by exercising contractual provisions or through negotiation.
Authors Alliance members and allies know that we are champions of the opportunities presented by the digital age to generate new audiences and new sources of income for authors by helping connect books with readers. When we weighed in with an amicus brief in the Google Books case, we supported the position of authors who wanted their books to be discoverable through full-text searchable databases such as Google Book Search. We shared how Book Search helps readers to discover works, increasing the chance that books will find new audiences and markets as well as promoting the intellectual legacies of authors who wrote them.
New empirical research by Abhishek Nagaraj, Assistant Professor at UC Berkeley-Haas, and Imke Reimers, Assistant Professor of Economics at Northeastern, supports these arguments. Using data from Harvard libraries, the NPD (formerly Nielsen) BookScan database, and the Bowker BooksInPrint database, Nagaraj and Reimers investigated the effect of the Google Books project’s digitization of pre-1923 books from Harvard University’s libraries on demand for physical works. In Digitization and the Demand for Physical Works: Evidence from the Google Books Project, Nagaraj and Reimers present their findings, concluding:
Digitization hurt loans within Harvard but increased sales of physical editions by about 35%, especially for less popular works. Rather than cannibalizing demand, digitization might benefit copyright holders through increased discovery of less popular works.
Nagaraj and Reimers’ research contributes important empirical evidence to debates about the effect of digitization on the market for works. As the authors suggest, instead of serving as a market replacement, the availability of digitized copies may increase demand for print versions, especially for less popular and out-of-print works.
We’d like to thank co-authors Kyle K. Courtney and David R. Hansen for permission to re-post the following article, which originally appeared on the Copyright at Harvard Library blog on March 1, 2019.
One of the beautiful things about fair
use is how it can soften the copyright act, which is in many ways
highly structured and rigid, to provide flexibility for new, innovative
technology.
To understand how, it’s worth appreciating the structure of the Copyright Act. If you look at the table of contents of Chapter 1 of the Act (“Subject Matter and Scope of Copyright”), you see the first several sections define basic terms such as copyrightable subject matter. Included in that first half of the chapter is Section 106, which defines the exclusive rights held by rights holders: the right to control copying, the creation of derivative works, public distribution, public performance, and display. In the bottom half of the Act, Sections 108 to 122 provide for a wide variety of limitations and exceptions to those owners’ exclusive rights. These exceptions are largely for the benefit of users and the public, including specific exceptions to help libraries, teachers, blind and print-disabled users, non-commercial broadcast TV stations, and so on.
One particularly innovative system developed to enhance access to works is “controlled digital lending” (“CDL”):
CDL enables a library
to circulate a digitized title in place of a physical one in a
controlled manner. Under this approach, a library may only loan
simultaneously the number of copies that it has legitimately acquired,
usually through purchase or donation….[I]t could only circulate the same
number of copies that it owned before digitization. Essentially, CDL
must maintain an “owned to loaned” ratio. Circulation in any format is
controlled so that only one user can use any given copy at a time, for a
limited time. Further, CDL systems generally employ appropriate
technical measures to prevent users from retaining a permanent copy or
distributing additional copies.
While the courts have yet to weigh in
directly on the CDL concept, we now have some guidance from a case in
the Second Circuit Court of Appeals, Capitol Records, LLC v. ReDigi Inc. This case is about the development of an online
marketplace created by ReDigi, which facilitated the sale of “used” mp3
music files. Capitol Records sued ReDigi, alleging that ReDigi
infringed its exclusive rights to reproduction and distribution when it
attempted to use a particular transfer method to sell the used mp3s.
The Court of Appeals upheld a lower
court ruling that the doctrine of first sale is only an exception to the
public distribution right and, therefore, does not protect digital
lending because, in that process, new copies of a work are always made.
The court also rejected ReDigi’s fair use assertion. It found that the
use was commercial in nature, was considered non-transformative, and
replicated works exactly and precisely; simply put, they created mirror
image copies of existing digital files. Further, though the libraries
associations in their briefs
had raised the issue of a nexus of connection between fair use and
specific copyright exceptions, such as Section 109 and 108, as an
extension of Congressional policy that should influence the fair use
analysis, the court did not discuss that argument.
That the court ruled ReDigi, a
commercial enterprise, had interfered with the market for
iTunes-licensed mp3s and their effort was not a transformative fair use,
comes as no surprise to most lawyers and copyright scholars.
However, the decision, written by the
creator of the modern transformative fair use doctrine, Judge Pierre
Laval, contains several important lessons for CDL.
Transformative Use
First, the case raises a significant
question as to whether CDL of digitized books may be “transformative” in
nature. In the decision, examining the first factor, Judge Leval
explains that a use can be transformative when it “utilizes technology
to achieve the transformative purpose of improving delivery of content
without unreasonably encroaching on the commercial entitlements of the
rights holder.” For physical books, especially those that are difficult
to obtain, this application of “transformative use” has a direct
correlation to the core application of CDL.
Further, this quote interprets another critical technology and fair use case from the U.S. Supreme Court, Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), famously called the “Betamax case.” Since its decision in 1984, the Sony ruling helped establish and foster the creation of new and vital technology, from personal computers and iPods to sampling machines and TiVo. This Sony quote was most recently used in another Second Circuit case, Fox News Network, LLC v. TVEyes, where the same court laid out this particular reading of Sony. So, ReDigi here is drawing upon the precedent of two important transformative fair use cases to make its point. Under this transformative use definition, CDL should be determined to be transformative by the courts, especially if the commercial rights of the rights holder are not unreasonably encroached.
Therefore, while the court found
ReDigi’s use to not be transformative, the Second Circuit opened the
door for continued technological development, especially for
non-commercial transformative uses under the first factor, like CDL. In
fact, according to several scholars (Michelle Wu, Kevin Smith, Aaron Perzanowski), this creates a much stronger argument that CDL would be ruled a transformative fair use by a court.
Market Harm
The Second Circuit held that the
ReDigi system caused market harm under the fourth factor of the fair use
statute. Again, this is not a surprise to the copyright world. The
court found that the service provider had no actual control of the
objects being sold and that it “made reproductions of Plaintiffs’ works
for the purpose of resale in competition with the Plaintiffs’ market for
the sale of their sound recordings.”
What does this mean for CDL’s analysis
under the fourth factor? Here, again, based on the language of the
ReDigi decision, CDL looks pretty different. The ReDigi resales were
exact, bit-for-bit replicas of the original sold in direct competition
with “new” mp3s online through other marketplaces, such as iTunes. The
substitutionary effect was clear, especially since the mp3 format is the
operative market experiencing harm. For digitized copies of print books
used for CDL, the substitutionary effect is far less clear. With most
20th-century books—the books that we feel are the best candidates for
CDL—the market to date has been exclusively print. For those books, some
new evidence from the Google Books digitization project suggests
that digitization may in fact act as a complementary good, allowing
digital discovery to encourage new interest in long-neglected works.
CDL doesn’t compete with a recognized
market. When a library legally acquires an item, it has the right, under
the first sale doctrine, to continue to use that work unimpeded by any
further permission or fees of the copyright holder. CDL’s digitized copy
replaces the legitimately acquired copy, not an unpurchased copy in the
marketplace. To the extent there is a “market harm,” it’s one that is
already built into the transaction and built into copyright law: libraries are already legally permitted to circulate and loan their materials. The CDL “own-to-loan ratio” ensures that the market harm for the digital is the exact same as circulating the original item.
Again, the language of the ReDigi
court should be examined closely. The court distinguishes
substitutionary markets from those that are complementary and natural
extensions of the use inherent with purchasing the original: “to the
extent a reproduction was made solely for cloud storage of the user’s
music on ReDigi’s server, and not to facilitate resale, the reproduction
would likely be fair use just as the copying at issue in Sony was fair
use.” Reading this language through the lens of CDL, a modern
reproduction service, such as CDL, that further enhances the owner’s use
of materials that were purchased under first sale or owned under other
authorized means would also qualify as a fair use.
All in all, the ReDigi case most certainly does not settle the CDL issue; if anything, the specific language of the court emphasizes the potential for more non-commercial transformative uses like CDL.
David Hansen is the Associate University
Librarian for Research, Collections & Scholarly Communications at
Duke University Libraries. Before coming to Duke he was a Clinical
Assistant Professor and Faculty Research Librarian at UNC School of Law.
And before that, he was a fellow at UC Berkeley Law in its Digital
Library Copyright Project.
Kyle K. Courtney is Copyright Advisor and Program Manager at
Harvard Library’s Office for Scholarly Communication (OSC). Before
joining the OSC, Kyle managed the Faculty Research And Scholarly Support
Services department at Harvard Law School Library.
Today, the U.S. Supreme Court resolved the question of what the Copyright Act means when it says that a work must be registered prior to filing an infringement lawsuit, holding that the Register of Copyrights must act on the application for registration before a copyright owner can file an infringement action.
Under the Copyright Act, an infringement action cannot be brought until “registration of the copyright claim has been made” (or, alternatively, registration of the claim has been refused by the Copyright Office). As we wrote in an earlier post on this case, the essential question presented in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC was whether a copyright owner may commence an infringement suit after delivering the proper deposit, application, and fee to the Copyright Office, but before the Register of Copyrights has acted on the application for registration.
In the Fourth Estate case, the Eleventh Circuit explained that in its view “[t]he Copyright Act defines registration as a process that requires action by both the copyright owner and the Copyright Office.” The Supreme Court affirmed this approach, concluding that “registration… has been made” not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.
