Category Archives: News

Update: Consent Judgment in Hachette v. Internet Archive

Posted August 11, 2023

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

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

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

Open Questions

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

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

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

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

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

Limitations of the Proposed Judgment

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

What’s Next?

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

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

Posted July 28, 2023

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

By Jennifer Rothman

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The appropriation bill that would defund the OSTP open access memo

Posted July 27, 2023

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

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

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

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

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

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

Ninth Circuit Issues Decision in Hunley v. Instagram

Posted July 19, 2023

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

Our Brief

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

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

The Decision

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

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

Authorship and Ebook Licensing: Introducing the Library Ebook Pledge

Posted July 12, 2023

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

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

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

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

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

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

Introducing the Library Ebook Pledge

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

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

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

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

Posted June 26, 2023

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

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

Generative AI Tools in Films and Video Games

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

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

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

Centering Human Creators

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

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

Training Data and Fair Use

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

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

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

Adequacy of Registration Guidance

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

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

The JCPA, Again

Posted June 15, 2023

For those of you following along, you’ve seen the numerous posts we’ve made about the Journalism Competition and Preservation Act, e.g., here, here, and here. The bill, which neither supports competition nor preservation of journalism, does have a really compelling story. Its apparent goal is to bolster local newsrooms and journalists by making it easier for them to negotiate with companies like Google or Meta (which links to news content), adding revenue to help aid in their operations.

Today’s update is that the JCPA is a little closer to becoming law, with the Senate Judiciary Committee voting to move the bill forward on a 14-7 vote. We again joined a group of more than two dozen civil society organizations in opposing the bill in this letter led by Public Knowledge. We also joined a large group of organizations opposing a very similar bill that was introduced earlier this year in California, with similar aims.

While the bill has some wonderful goals, it seems destined to fail at achieving them, while doing real damage to the broader online information ecosystem. As we’ve detailed before, the JCPA seems to create a pseudo-copyright regime in which platforms would have to pay for linking to news, which is a radical change in how the internet functions. It also includes provisions that would effectively force social media platforms to carry certain news outlet coverage, even when a platform disagrees with the views that those news outlets express, thus undermining Section 230 protections for platforms that want to remove false or misleading content from their websites.

For the actual competition issues, the bill has also been contorted so that its aims–competition and support for small news outlets–have been co-opted by the biggest commercial publishers. For example, the bill’s supporters say it doesn’t benefit the biggest news outlets, but its cap of 1,500 employees would exclude a grand total of *3* of the largest newspapers in the US, while the JCPA’s minimum threshold of $100,000 in revenue would leave out the smallest, most vulnerable newsrooms. Further, that numerical cap also doesn’t apply to broadcasters at all, which means it actually favors companies like News Corp., Sinclair, iHeartRadio, and NBCU.

The Senate Judiciary Committee markup earlier today (you can watch the recording here) was relatively tame, but it was clear that there was very little agreement about what the bill would actually accomplish, or what its unintended consequences might be. The recurring theme throughout was that something must be done to protect and support journalism and that it is unfair that big tech companies are reaping incredible profits while small news publishers are getting very little of the financial pie and are struggling to survive. While we agree with both of these propositions, unfortunately, the JCPA seems uniquely ineffective at fixing the problem.

Supreme Court Announces Decision in Jack Daniel’s v. VIP Products

Posted June 8, 2023

Today, the Supreme Court handed down a decision in Jack Daniel’s v. VIP Products, a trademark case about the right to parody popular brands, for which Authors Alliance submitted an amicus brief, supported by the Harvard Cyberlaw clinic. In a unanimous decision, the Court vacated and remanded the Ninth Circuit’s decision, overturning the decision asking the lower courts to re-hear the case with a new, albeit it very narrow, principle announced by the Court: special First Amendment review is not appropriate in cases where one brand’s trademark is used in another, even when used as a parody. In addition to the majority opinion delivered by Justice Kagan, there were two concurring opinions by Justice Sotomayor and Justice Gorsuch, each joined by other justices.

Case Background

The case concerns a dog toy that parodies Jack Daniel’s famous Tennessee Whiskey bottle, using some of the familiar features from the bottle, and bearing the label “Bad Spaniels.” After discovering the dog toy, Jack Daniel’s requested that VIP cease selling the toys. VIP Products refused, then proceeded to file a trademark suit, asking for a declaratory judgment that its toy “neither infringed nor diluted Jack Daniel’s trademarks.” Jack Daniel’s then countersued to enforce its trademark, arguing that the Bad Spaniels toy infringed its trademark and diluted its brand. We became interested in the case because of its implications for creators of all sorts (beyond companies making humorous parody products).

As we explain in our amicus brief, authors rely on their ability to use popular brands in their works. For example, fiction authors might send their characters to real-life colleges and universities, set scenes where characters dine at real-life restaurant chains, and use other cultural touchstones to enrich their works and ultimately, to express themselves. While the case is about trademark, the First Amendment looms large in the background. A creator’s right to parody brands, stories, and other cultural objects is an important part of our First Amendment rights, and is particularly important for authors.

Trademark law is about protecting consumers from being confused as to the source of the goods and services they purchase. But it is important that trademark law be enforced consistent with the First Amendment and its guarantees of free expression. And importantly, trademark litigation is hugely expensive, often involving costly consumer surveys and multiple rounds of hearings and appeals. We are concerned that even the threat of litigation could create a chilling effect on authors, who might sensibly decide not to use popular brands in their works based on the possibility of being sued.

In our brief, we suggested that the Court implement a framework like the one established by the Second Circuit in Rogers v. Grimaldi, “a threshold test . . . designed to protect First Amendment interests in the trademark context.” Under Rogers, in cases of creative expressive works, trademark infringement should only come into play “where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” It establishes that trademark law should only be applied where the use “has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [second work] explicitly misleads as to the source or the content of the work.”

The Supreme Court’s Decision

In today’s decision, the Court held that “[w]hen an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” Without directly taking a position on the viability of the Rogers test, the Court found that, in this circumstance, where it believed that VIP Products used Jack Daniel’s trademarks for “source identifiers,” the test was inapplicable. It held that the Rogers test is not appropriate when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark.” The fact that the dog toy had “expressive content” did not disturb this conclusion.

Describing Rogers as a noncommercial exclusion, the Court said that VIP’s use was commercial, as it was on a dog toy available for sale (i.e. a commercial product). Further supporting this conclusion, the Court pointed to the fact that VIP Products had registered a trademark in “Bad Spaniels.” It found that the Ninth Circuit’s interpretation of the “noncommercial use exception” was overly broad, noting that the Rogers case itself concerned a film, an expressive work entitled to the highest First Amendment protection, and vacating the lower court’s decision.

The Court instead directed the lower court to consider a different inquiry, whether consumers will be confused as to whether Bad Spaniels is associated with Jack Daniel’s, rather than focusing on the expressive elements of the Bad Spaniels toy. But the Court also explained that “a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion.” In other words, the fact that the Bad Spaniels toy is (at least in our view) a clear parody of Jack Daniel’s may make it more likely that consumers are not confused into thinking that Jack Daniel’s is associated with the toy. In her concurrence, Justice Sotomayor underscored this point by cautioning lower courts against relying too heavily on survey evidence when deciding whether consumers are confused “in the context of parodies and potentially other uses implicating First Amendment concerns.” In so doing, Justice Sotomayor emphasized the importance of parody as a form of First Amendment expression.

The Court’s decision is quite narrow. It does not disapprove of the Rogers test in other contexts, such as when a trademark is used in an expressive work, and as such, it is unlikely to have a large impact on authors using brands and marks in their books and other creative expression. Lower courts across the country that do use the Rogers test may continue to do so under VIP Products.However, Justice Gorsuch’s concurrence does express some skepticism about the Rogers test and its applications, cautioning lower courts to handle the test with care. However, as a concurrence, this opinion has much less precedential effect than the majority’s.

Remaining Questions

All of this being said, the Court does not explain why First Amendment scrutiny should not apply in this case, but merely reiterates that Rogers as a doctrine is and has always been “cabined,” with “the Rogers test [applying] only to cases involving ‘non-trademark uses[.]’” The Court relies on that history and precedent rather than explaining the reasoning. Nor does the Court discuss the relevance of the commercial/noncommercial use distinction when it comes to the role of the First Amendment in trademark law. In our view, the Bad Spaniels toy did contain some highly expressive elements and functioned as a parody, so this omission is significant. And it may create some confusion for closer cases—at one point, Justice Kagan explains that “the likelihood-of-confusion inquiry does enough work to account for the interest in free expression,” “except, potentially, in rare situations.” We are left to wonder what those are. She further notes that the Court’s narrow decision “does not decide how far the ‘noncommercial use exclusion’ goes.” This may leave lower courts without sufficient guidance as to the reach of the noncommercial use exclusion from trademark liability and what “rare situations” merit application of the Rogers test to commercial or quasi-commercial uses.

Read your open access publishing agreements, or: how you might accidentally give Elsevier or Wiley the exclusive right to profit from your OA article

Posted June 5, 2023

Reading publishing agreements–even for short academic articles–can be extremely time consuming. For many academic publishers, you’ll find an array of information about your rights and obligations as an author, often spread across multiple websites and guides, in addition to the publishing contract itself. It’s tempting to just assume that these terms are standard and reasonable. For open access publications, I’ve unfortunately found this attitude to be especially prevalent because authors tend to think that by publishing on an OA basis, the only contract terms that really matter are those of the Creative Commons license they choose for their article.

That can be a dangerous strategy. Elsevier and Wiley OA publishing agreements, which have long-standing issues along these lines as noted here, here, here, and here, highlight the problem really well.

Those publishing agreements do provide what many authors want in OA publishing–free online access and broad reuse rights to users. But, if authors select the wrong option, they are also giving away their own residual rights while granting Elsevier or Wiley the exclusive right to commercially exploit their work. That includes the right for those publishers to exclude the author herself from making or authorizing even the most basic of commercial uses, such as posting the article to a for-profit repository like Researchgate or even SSRN. This is not a result I think most authors intend, but it’s hard to spot the problem unless you read these publication agreements carefully.

Let’s dig into the agreements to understand what’s going on.

CC License Restrictions and Some Thoughts on Why Authors Choose Them

First, a quick primer on open access licensing (you can read a longer introduction and overview of open access in our dedicated guide on the topic). Just about every major academic publisher now offers some option to make your scholarly article available open access. I won’t get into the debate about what exactly constitutes “open access.” I think its sufficient to say that for most authors, “open access” means at minimum free online access to the work combined with some grant of permissive reuse rights to readers. While there are some exceptions, Creative Commons licenses have emerged as the defacto default legal infrastructure through which those reuse rights are granted.

Creative Commons licenses give rightsholders a number of options to exercise control over their work even while freely distributing it. The most common and basic CC license, CC-BY, does so by allowing basically all types of reuse (copying, commercial distribution, creation of derivative works) on the condition that the reuser appropriately attribute the original work. Creative Commons also has other licenses that limit downstream reuse in a few ways. Two of the most common for scholarly works are CC-BY-NC, and CC-BY-NC-ND, which respectively limit reuse to non-commercial uses (non-commercial or “NC”) and limit reuses to disallow distribution of derivative works (no derivatives or “ND”). Creative Commons also offers a CC-BY-ND license, which permits commercial uses but not the distribution of derivative works, but this is a less popular option. OpenAlex (an awesome research tool from OurResearch) indicates that there are some 5.5+ million scholarly works (mostly articles and similar) published under CC-BY-NC and CC-BY-NC-ND licenses.

In my experience, authors select these more restrictive licenses for a few reasons. Typically, authors will select a non-derivatives (ND) license because they’re concerned about some downstream user modifying their work and creating a new work that misrepresents the original or that is just of poor quality (think of a bad translation). For those authors, they want a say in how their work is built upon to create new derivatives. I’ve found this to be especially important to authors of controversial works that could be recast or adapted in ways that don’t include appropriate context.

For authors selecting the non-commericial (NC) license restriction, the reasons are more varied, but I typically hear authors express concern about others profiting without their consent, especially from those who are attuned to the problems of large corporate interests who may seek to republish their work for a profit without the author’s input.

The Elsevier and Wiley OA Publishing Agreements

I have never had an author say that they selected a CC-BY-NC or CC-BY-NC-ND license because they wanted to be sure that only their large, multinational commercial publisher could profit from their article, to the exclusion of everyone else including the author herself. Yet, if you read these agreements closely, that’s exactly what some publishers’ agreements do.

Let’s start with Elsevier. It’s agreement is at least somewhat upfront about what’s going on. Elsevier’s sample CC-BY-NC publishing agreement states in the first paragraph that the author grants Elsevier “an exclusive publishing and distribution license in the manuscript identified above . . . in print, electronic and all other media (whether now known or later developed), in any form, in all languages, throughout the world, for the full term of copyright, and the right to license others to do the same[.]”

The key word in that license grant is the word “exclusive,” which means that Elsevier has the right to exclude everyone else (including the author) from using the article, except as agreed through the CC-BY-NC-ND license. In case there was any doubt, Elsevier makes clear on the same page that “I understand that the license of publishing rights I have granted to the Journal gives the Journal the exclusive right to make or sub-license commercial use.” The agreement does include a narrow carve out for authors to engage in some narrow categories of reuse that may go beyond the CC-BY-NC-ND license (e.g., lengthen the article to book form), but they are a far cry from the rights the author would otherwise have had he or she retained copyright and granted Elsvier a simple non-exclusive license to publish the article.

The Wiley journal agreement ultimately accomplishes a similar result, though in my opinion it is a bit more misleading. First, authors will find Wiley’s OA sample publishing agreements through a page that advertises “Retain copyright with a Creative Commons license.” It states, innocently, that “with Creative Commons licenses, the author retains copyright and the public is allowed to reuse the content. You grant Wiley a license to publish the article and to identify as the original publisher.”

If you read the sample Wiley agreements for publishing under a CC-BY-NC or CC-BY-NC-ND license, you will in fact find that the agreements do in fact provide that “The Contributor . . . retains all proprietary rights, such as copyright and patent rights in any process, procedure or article of manufacture described in the Contribution.”

This sounds great! The problem comes if you keep reading the rest of the agreement. Later in the agreement, you will find that while the author “retains copyright,” that copyright is reduced to a shell of itself. You’ll see that Wiley (which actually refers to itself as the “Owner,” to set the tone) has the author agree to grant “to the Owner [Wiley], during the full term of the Contributor’s copyright and any extensions or renewals, an exclusive license of all rights of copyright in and to the Contribution that the Contributor does not grant under the CC-BY-NC-ND license.” So, if the author’s intent is to retain control over commercial reuse or derivative works, think again.

Like Elsevier, Wiley does grant back some slivers of those rights to authors. For example, the right to make a translation as long as you only post it to your personal website, or the right to reuse the article in a collection published by a scholarly society (but, it definitely can’t be in any work with outside commercial sponsorship; Wiley seems particularly concerned with volumes sponsored by pharmaceutical companies, which they specifically target in the agreement).

A few tips for reading your OA publishing agreement

Read (and negotiate) your publishing agreement! Clearly, reading your agreements is important. For OA agreements, you should specifically look for language that either transfers copyright to the publisher or language that grants the publisher a broad exclusive license. If it does contain such a grant or license, think about what rights you might need that go beyond the rights granted to the general public under the CC license that you chose. The best publishing agreements are simple and straightforward, granting the publisher a license to publish and otherwise leaving all rights with the author. There are lots of good examples–e.g., this is one of my favorites, from Emory and the University of Michigan for long-form scholarship. And for more tips on understanding and negotiating your publishing agreement, check out our dedicated guide on the topic.

Don’t buy the website sales pitch. If there is a conflict between what the publisher says on its website and what the contract says, the contract will absolutely control. Be careful about any assurances that exist outside the four corners of your contract. More than once I’ve found authors ask editors via email about reuses that go beyond the agreement. Typically, editors are happy to assure authors that they can do reasonable things with their own articles, but unfortunately, the standard publishing agreements are far less reasonable than most editors. Where the editors’ assurance and publishing agreements conflict, once again the terms of the publishing agreement will prevail.

Watch for contract language about retaining rights. Don’t be fooled into thinking that you’ll retain significant rights in your work by the sleight of hand that says you “retain copyright,” or that you will have “copyright in your name.” If a publisher is obtaining a license of exclusive rights from you, that means the publisher can exclude you and everyone else from making use of those rights unless the agreement contains an explicit grant back of rights to engage in those activities. This is actually very common in non-OA publishing agreements, but as the Elsevier and Wiley agreements illustrate, you need to watch out for it in OA publishing agreements as well.

Copyright Office Holds Listening Session on Copyright Issues in AI-Generated Music and Sound Recordings

Posted June 2, 2023

*Photo by* Possessed Photography on Unsplash

Earlier this week, the Copyright Office convened a listening session on the topic of copyright issues in AI-generated music and sound recordings, the fourth in its listening session series on copyright issues in different types of AI-generated creative works. Authors Alliance participated in the first listening session on AI-generated textual works, and we wrote about the second listening session on AI-generated images here. The AI-generated music listening session participants included music industry trade organizations like the Recording Industry Association of America, Songwriters of North America, and the National Music Publishers’ Association; generative AI music companies like Boomy, Tuney, and Infinite Album; music labels like the Universal Music Group and Wixen; and individual musicians, artists, and songwriters. Streaming service Spotify and collective-licensing group SoundExchange also participated.

Generative AI Tools in the Music Industry

Many listening session participants discussed the fact that some musical artists, such as Radiohead and Brian Eno, have been using generative AI tools as part of their work for decades. For those creators, generative AI music is nothing new, but rather an expansion of existing tools and techniques. What is new is the ease with which ordinary internet users without musical training can assemble songs using AI tools—programs like Boomy enable users to generate melodies and musical compositions, with options to overlay voices or add other sounds. Some participants sought to distinguish generative tools from so-called “assistive tools,” with the latter being more established for professional and amateur musicians.

Where some established artists themselves have long relied on assistive AI tools to create their works, AI-generated music has lowered barriers to entry for music creation significantly. Some take the view that this is a good thing, enabling more creation by more people who could not otherwise produce music. Others protest that those with musical talent and training are being harmed by the influx of new participants in music creation, as these types of songs flood the market. In my view, it’s important to remember that the purpose of copyright, furthering the progress of science and the useful arts, is served when more people can generate creative works, including music. Yet AI-generated music may already be at or past the point where it can be indistinguishable from works created by human artists without the use of these tools, at least to some listeners. It may be the case that, as at least one participant suggested, audio generated works are somehow different from AI-generated textual works such that they may require different forms of regulation.

Right of Publicity and Name, Image, and Likeness

Although the topic of the listening session was federal copyright law, several participants discussed artists’ rights in both their identities and voices—aspects of the “right of publicity” or the related name, image, and likeness (“NIL”) doctrine. These rights are creatures of state law, rather than federal law, and allow individuals, particularly celebrities, to control what uses various aspects of their identities may be put to. In one well-known right of publicity case, Ford used a Bette Midler “sound alike” for a car commercial, which was found to violate her right of publicity. That case and others like it have popularized the idea that the right of publicity can cover voice. This is a particularly salient issue within the context of AI-generated music due to the rise of “soundalikes” or “voice cloning” songs that have garnered substantial popularity and controversy, such as the recent Drake soundalike, “Heart on My Sleeve.” Some worry that listeners could believe they are listening to the named musical artist when in fact they are listening to an imitation, potentially harming the market for that artist’s work.

The representative from the Music Artists Coalition argued that the hodge podge of state laws governing the right of publicity could be one reason why soundalikes have proliferated: different states have different levels of protection, and the lack of unified guidance on how these types of songs are governed under the law can create uncertainty as to how they will be regulated. And the representative from Controlla argued that copyright protection should be expanded to cover voice or identity rights. In my view, expanding the scope of copyright in this way is neither reasonable nor necessary as a matter of policy (and furthermore, would be a matter for Congress, and not the Copyright Office, to address), but it does show the breadth of the soundalike problem for the music industry.

Copyrightability of AI-Generated Songs

Several listening session participants argued for intellectual property rights in AI-generated songs, and others argued that the law should continue to center human creators. The Copyright Office’s recent guidance regarding copyright in AI-generated works suggests that the Office does not believe that there is any copyright in the AI-generated materials due to the lack of human authorship, but human selection, editing, and compilation can be protected. The representatives from companies with AI-generating tools expressed a need for some form of copyright protection for the songs these programs produce, explaining that they cannot be effectively commercialized if they are not protected. In my view, this can be accomplished through protection for the songs as compilations of uncopyrightable materials or as original works, owing to human input and editing. Yet, as many listening session participants across these sessions have argued, the Copyright Office registration guidance does not make clear precisely how much human input or editing is needed to render an AI-generated work a protectable original work of authorship.

Licensing or Fair Use of AI Training Data

In contrast to the view taken by many during the AI-generated text listening session, none of the participants in this listening session argued outright that training generative AI programs on in-copyright musical works was fair use. Instead, much of the discussion focused on the need for a licensing scheme for audio materials used to train generative AI audio programs. Unlike the situations with many text and image-based generative AI programs, the representatives from generative AI music programs expressed an interest and willingness to enter into licensing agreements with music labels or artists. In fact, there is some evidence that licensing conversations are already taking place.

The lack of fair use arguments during this listening session may be due to the particular participants, industry norms, or the “safety” of expressing this view in the context of the music industry. But regardless, it provides an interesting contrast to views around training data text-generating programs like ChatGPT, which many (including Authors Alliance) have argued are fair uses. This is particularly remarkable since at least some of these programs, in our view, use the audio data they are trained on for a highly transformative purpose. Infinite Album, for example, allows users to generate “infinite music” to accompany video games. The music reacts to events in the video game—becoming more joyful and upbeat for victories, or sad for defeats—and can even work interactively for those streaming their games, where those watching the stream can temporarily influence the music. This seems like precisely the sort of “new and different purpose” that fair use contemplates, and similarly like a service that is unlikely to compete directly with individual songs and records.

Generative AI and Warhol Foundation v. Goldsmith

Many listening session participants discussed the interactions between how AI-generated music should be regulated under copyright law and the recent Supreme Court fair use decision in Warhol Foundation v. Goldsmith (you can read our coverage of that decision here), which also considered whether a particular use which could have been licensed was fair use. And some participants argued that the decision in Goldsmith makes it clear that training generative AI models (i.e., the input stage) is not a fair use under the law. It is not clear precisely how the decision will impact the fair use doctrine going forward, particularly as it applies to generative AI, and I think it is a stretch to call it a death knell for the argument that training generative AI models is a fair use. However, the Court did put a striking emphasis on the commerciality of the use in that case, deemphasizing the transformativeness inquiry somewhat. This could impact the fair use inquiry in the context of generative AI programs, as these programs tend overwhelmingly to be commercial, and the outputs they create can and are being used for commercial purposes.