Category Archives: News

The First Copyright Small Claims Court Judgment

Posted March 6, 2023

Authors Alliance members will recall the posts we’ve made over the years about the enactment and implementation of a new copyright small claims court, the “Copyright Claims Board,” housed within the U.S. Copyright Office.

Late last week, the CCB issued its very first judgment. It came in a case brought by photographer David Oppenheimer against an California attorney, David Prutton, who had used an unlicensed copy of one of Oppenheimer’s photos (a picture of the federal courthouse in Oakland) on his solo-practitioner website (h/t to Plagiarism Today, where we first saw reporting about the case, here).

Screenshot of Prutton’s website, showing use of Oppenheimer’s photo of the Federal Courthouse in Oakland (twin buildings on the right).

The case had a head start because it was originally filed in federal district court, where the parties voluntarily agreed to dismiss the federal case and have the case referred to the CCB. You can read the entire history, including all the filings, here. The CCB ruled in favor of Oppenheimer, and awarded the photographer an award of statutory damages of $1,000, significantly less than the $30,000 (the maximum amount available to claimants in CCB proceedings) that Oppenheimer originally sought.

In many ways, this was a pretty easy case for the CCB. Prutton readily admitted that he had used Oppenheimer’s unlicensed photo, in whole, on his website. Though Prutton raised a fair use defense, he didn’t bother to argue any except one of the four fair use factors. Prutton’s sole contention was that the impact on the market was so minimal—and that Oppenheimer had shown no evidence of harm—that Prutton should win on the fourth fair use factor.

The CCB, noting that the fair use factors need to be balanced and weighed together, did its own analysis of all the fair use factors but concluded—rightly, I think—that for the other three fair use factors:

Prutton’s use was not particularly transformative or for a new purpose, weighing against the use;
Oppenheimer’s original photo was creative (certainly enough for copyright protection, though reasonable minds might disagree on the extent of the creativity and therefore how strong this factor should weigh in its favor), weighing against the use;
Prutton has used the whole work, not a small portion of it, weighing against the use.

For the fourth fair use factor, Prutton argued that because Oppenheimer showed essentially no history of licensing revenue from this photograph, along with a history of other litigation that tended to indicate that Oppenheimer’s business was primarily oriented toward generating revenue through litigation, there was no meaningful market harm. The CCB disagreed, essentially concluding that it was Prutton’s job to show a lack of market harm (which they said he did not do), and the burden did not rest on Oppenheimer to show evidence of a market. However, because Oppenheimer didn’t show any actual evidence of financial harm, this also led the CCB when assessing damages to grant an award far below Oppenheimer’s request—his original demand of $30,000 in damages was reduced to just $1,000.

Where the case was a little more interesting was how the CCB addressed Prutton’s defense of “unclean hands,” in which he essentially asks the CCB to excuse his use because Oppenheimer had acted improperly. If you do a quick search for “David Oppenheimer” and “copyright” you will find that Oppenheimer is frequently in court over alleged infringement of rights in his photographs, with fact patterns very similar to the one in this case, including heavy-handed negotiation tactics and aggressive use of litigation. In several of those cases, such as this case in the Western District of North Carolina, courts refused to grant Oppenheimer easy wins—concluding that Oppenheimer’s litigation tactics could reasonably be viewed as so problematic as to block his assertion of rights by the defense of “copyright misuse.”

The CCB dismissed Prutton’s “unclean hands” defense by highlighting how unusual and extreme a plaintiff’s conduct has to be to fall subject to that general defense. The CCB didn’t, however, really assess Prutton’s more substantial “copyright misuse” defense, perhaps because Prutton didn’t raise it as a separate defense. In my view, copyright misuse may well have been a valid defense in this case.

As the Western District of North Carolina explained in a previous case brought by Oppenheimer, “misuse of copyright is a valid affirmative defense where the use of a copyright is contrary to the public policy upon which copyrights are granted. . . . Typically, the defense applies when seeking to avoid anti-competitive behavior, but it can also apply to other scenarios where a copyright owner attempts to extend the copyrights beyond their intended reach. . . . The underlying policy principles behind copyrights extend from the United States Constitution, with the relevant policy here being to promote the ‘useful arts.’” The court in that case concluded that if Oppenheimer’s “purpose in copyrighting the Copyrighted Work was to license it for use when individuals or companies need [his photo] then Plaintiff is likely not misusing his copyrights. Yet, a reasonable jury could find Plaintiff is using copyrights to derive an income from infringement suits and this issue is one of fact that the Court should not decide.”

Lessons Learned

As this is the very first decision of the CCB, I don’t think we should draw sweeping conclusions from it about how the CCB will do its work. But it is interesting to see that this first case wasn’t exactly a suit between legal amateurs—Oppenheimer is a seasoned litigant who has brought many copyright cases, and Prutton is an attorney (albeit not one who specializes in copyright). Both made significant missteps in the presentation of their cases. And so, one observation I think we can make is that while the copyright small claims system is meant to have low barriers to participation, and the CCB seems inclined to go to extra lengths to help parties understand the process and present cogent filings, the CCB is not going to excuse incomplete argumentation. At least in this case, the CCB refused to assume facts or arguments not presented by the parties. That was true both for the plaintiff and defendant: plaintiffs who make damage assertions are going to need to show evidence of actual harm in order to get awards close to their requested amounts. And defendants who raise defenses will need to fully argue them; glossing over three of the four fair use factors is not a winning strategy. Nor does it seem passing references to defenses such as “unclean hands” and “copyright misuse” will work without adequate support.

Book Talk: Athena Unbound by Peter Baldwin, Moderated by Chris Bourg

Posted March 3, 2023

“In Athena Unbound, Peter Baldwin offers an admirably pragmatic yet principled approach to the perennial problem of encouraging both the production and distribution of knowledge.” – Paul Romer, Nobel Laureate and University Professor, NYU

Book Talk: Athena Unbound
March 28 @ 10am PT / 1pm ET
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Read or purchase Athena Unbound from MIT Press. (Pub date: March 28, 2023)

Open access (OA) could one day put the sum of human knowledge at our fingertips. But the goal of allowing everyone to read everything faces fierce resistance. In Athena Unbound, Peter Baldwin offers an up-to-date look at the ideals and history behind OA, and unpacks the controversies that arise when the dream of limitless information slams into entrenched interests in favor of the status quo. In addition to providing a clear analysis of the debates, Baldwin focuses on thorny issues such as copyright and ways to pay for “free” knowledge. He also provides a roadmap that would make OA economically viable and, as a result, advance one of humanity’s age-old ambitions.

Baldwin addresses the arguments in terms of disseminating scientific research, the history of intellectual property and copyright, and the development of the university and research establishment. As he notes, the hard sciences have already created a funding model that increasingly provides open access, but at the cost of crowding out the humanities. Baldwin proposes a new system that would shift costs from consumers to producers and free scholarly knowledge from the paywalls and institutional barriers that keep it from much of the world.

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Rich in detail and free of jargon, Athena Unbound is an essential primer on the state of the global open access movement.

About our speakers

PETER BALDWIN is Professor of History at UCLA, and Global Distinguished Professor at NYU. His recent books are Command and Persuade: Crime, Law, and the State across History (MIT Press); Fighting the First Wave: Why the Coronavirus Was Tackled So Differently across the Globe; and The Copyright Wars: Three Centuries of Trans-Atlantic Battle. He serves on the boards of the New York Public Library, the American Council of Learned Societies, the Wikimedia Endowment, the Central European University, the Danish Institute of Advanced Studies, and as chair of the Board of the Center for Jewish History. His journalistic writings have appeared in the New York Times, the Los Angeles Times, CNN, Newsweek, New Republic, Huffington Post, Der Spiegel, Berliner Zeitung, Publishers Weekly, American Interest, Chronicle of Higher Education, Prospect, American Interest, and Zocalo Public Square.

CHRIS BOURG is the Director of Libraries at Massachusetts Institute of Technology (MIT), where she also has oversight of the MIT Press. She is also the founding director of the Center for Research on Equitable and Open Scholarship (CREOS). Prior to assuming her role at MIT, Chris worked for 12 years in the Stanford University Libraries. Before Stanford, she spent 10 years as an active-duty U.S. Army officer, including three years on the faculty at the United States Military Academy at West Point. She received her BA from Duke University, her MA from the University of Maryland, and her MA and Ph.D. in sociology from Stanford.

Book Talk: Athena Unbound
March 28 @ 10am PT / 1pm ET
Register now for the virtual event

Jack Daniels v. VIP Products and the Freedom to Parody and Comment in the United States

Posted March 2, 2023

This post was written for the Kluwer Copyright Blog, and is based in part on an amicus brief filed last week by the Harvard Cyberlaw Clinic on behalf of Authors Alliance and ComicMix before the United States Supreme Court in Jack Daniels v. VIP Products.

Ordinarily, authors who write parodies look to copyright limitations and exceptions to protect their rights. In the United States, the doctrine of fair use has been held to permit parody in uses ranging from rap music to children’s books. These fair use rights, the courts have said, have their roots in the U.S. Constitution’s First Amendment protections for freedom of speech.

In a recent case before the U.S. Supreme Court, Jack Daniels v. VIP Products, those parody rights are at risk. In a twist, however, it is not copyright law, but rather an expansive view of trademark law, that poses this threat.

The facts of this case are straightforward: Jack Daniels, creator of the famous Tennessee Whiskey, brought the trademark suit to stop VIP Products for production of a dog toy, which it titled “Bad Spaniels,” in the shape of Jack Daniels’ iconic whiskey bottle and label. Jack Daniels asserts that the Bad Spaniels toy infringes on its trademark and dilutes its brand. VIP Products counters that the toy is meant to parody Jack Daniels’ bottle and is protected speech under the U.S. Constitution’s First Amendment.

Jack Daniel’s Whiskey Bottle (left) and VIP Products’ “Bad Spaniels” dog toy (right). From Jack Daniels Properties, Inc. s v. VIP Products, LLC, Case No. 22-148, U.S. Supreme Court, Brief for Petitioner (11 January 2023), page 3, available **here**.

Although dog toys and whiskey bottles seem relatively inconsequential to literature, parody, and creative work, this case could have a dramatic impact on how authors write about, and parody, famous brands.

Trademarks are a cornerstone of our shared cultural vernacular. Popular brands are woven into the fabric of our national identity, recognizable by and meaningful to those from many different backgrounds. Authors often draw on these shared associations in their literary works, sending beloved fictional characters to real colleges, serving them familiar cereals, and outfitting them in well-known clothing labels. Whether to evoke nostalgia or to immerse their readers, authors use trademarks both to simulate reality and to critique it.

While trademark law aims to protect consumers and prevent confusion as to the source of goods or services, it must be enforced in a manner consistent with the speech protections guaranteed by the First Amendment of the U.S. Constitution. The freedom of authors to use trademarks in their works could be stifled by the threat of litigation. Overenforcement of trademark law runs contrary to both the purpose of intellectual property law and the U.S. constitutional legacy of protecting free expression. Protections for parody in other areas of the law, such as copyright’s fair use doctrine, will be undermined by a trademark ruling that allows for expansive enforcement.

If heightened First Amendment protections are not put in place, the threat of costly legal proceedings may cause creators to avoid the use of trademarks in their artistic works. While trademark law does have other mechanisms to protect authors of parody and commentary, such as a showing that an author’s use does not pose a likelihood of confusion, the process for successfully defending a trademark infringement case is remarkably expensive. In 2020, the American Intellectual Property Law Association reported that the median cost of trademark litigation in the U.S. before even going to trial ranged from $150,000 to $588,000. In the American system, litigants ordinarily bear their own costs, and so even an author who successfully defends such a suit would be on the hook for a large amount in legal fees. While litigation is commonplace for large corporations with significant legal resources, even a single lawsuit could be career-ending for an author without the resources to handle it.

If the threat of legal sanction hangs over the heads of writers, their literary characters may no longer use iPhones, eat at McDonald’s, or visit Disneyland. These uses offer meaningful expressive value to authors. Brands are often intentionally selected as cultural signifiers, chosen for the implicit associations they convey to readers. Cory Doctorow’s Down and Out in the Magic Kingdom (a Disney theme park) would have a different meaning if it were instead titled Down and Out in an Amusement Park. Nor is The Devil Wears Luxury Clothing as evocative as The Devil Wears Prada.

Even when trademarks are evoked in literary circumstances that their owners find distasteful, these uses are still expressive and noncommercial, thus worthy of the highest First Amendment protection. Prioritizing the pecuniary interests of trademark owners over the First Amendment rights of creative artists could lead to a catastrophic chilling effect on authors’ speech based on the perceived risk of litigation, whether or not such risk is actualized. This result is both untenable and entirely unnecessary. It is possible to ensure that trademark owners still have access to a wide variety of robust and reasonable remedies in cases of true infringement without creating unnecessary panic in many other circumstances.

The Supreme Court has a clear doctrinal path to avoiding a speech-suppressive environment. In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Second Circuit Court of Appeals struck a balance between the interests of trademark owners and First Amendment speech by crafting a clear and efficient test for infringement with appropriate protections for speech. The Rogers court recognized the mark owner’s interest in preventing confusion while ensuring adequate protection for the vital free speech principles at play, and provided a rule to determine at the outset of litigation–before incurring substantial costs–when expressive works infringe trademark rights. Rogers, in short, provided that in cases of artistic or creative works, trademark infringement should only be considered “where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Ordinarily, the court explained, this rule “will normally not support [the] application of [trademark law] unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

A ruling that substantially adopts a test like that in Rogers would continue to protect the rights of trademark owners, while also ensuring that authors who reference popular brands are protected by providing a clear, consistent and efficient rule to protect authors. A ruling in favor of Jack Daniels, however, could strike fear into the hearts of risk-averse creators, chilling their speech by discouraging them from using certain trademarks in their works altogether. It would undermine the otherwise strong protections that U.S. courts have identified for parodists and other authors in U.S. copyright law, under the doctrine of fair use.

You can read more about our views on the interaction between trademark law and authors’ free expression rights in our amicus brief filed in Jack Daniels v. VIP Products, available here.

Fair Use Week 2023: Looking Back at Google Books Eight Years Later

Posted February 24, 2023

This post is authored by Authors Alliance Senior Staff Attorney, Rachel Brooke.

More recent members and readers may not be aware that Authors Alliance was founded in the wake of Authors Guild v. Google, a class action fair use case in the Second Circuit that was litigated for nearly a decade, and finally resolved in favor of Google in 2015. The case concerned the Google Books project—an initiative launched by Google whereby the company partnered with university libraries to scan books in their collections. These scans would ultimately be made available as a full-text searchable database for the public to search through for particular terms, with short “snippets” displayed accompanying the search results. Users could not, however, view or read the scanned books in their entirety. The Authors Guild, along with several authors, filed a lawsuit against Google alleging that scanning the books and displaying these snippets constituted copyright infringement.

In addition to Authors Guild representing its members in the litigation, its associated plaintiffs brought the case as a class action, claiming to bring the case on behalf of a broad group of authors: “[a]ll persons residing in the United States who hold a United States copyright interest in one or more Books reproduced by Google as part of its Library Project” who were either authors or the authors’ heirs.

But many of these authors did not agree with the Authors Guild’s stance in the case, and felt that the Google Books project served their interests in sharing knowledge, seeing their creations be preserved, and reaching readers interested in their work. A group of authors and scholars came together to share their views with the district court, many of whom would soon become founding members of Authors Alliance. Many of those same authors signed on to amicus briefs before both the district court and Second Circuit explaining why they opposed the litigation and supported Google’s fair use defense. Then, in 2014, Authors Alliance submitted its first amicus brief to the Second Circuit, supporting Google’s ultimately successful fair use defense. The plaintiffs later appealed the Second Circuit’s ruling, asking the Supreme Court to weigh in, but the Court ultimately declined to hear the case, leaving the Second Circuit’s ruling intact.

Nearly a decade later, the effects of Google Books can still be seen in fair use decisions and copyright policy developments involving the challenges of adapting copyright to the digital world. In today’s post, I’ll reflect on how Google Books can be contextualized within today’s fair use landscape and share my thoughts on what the case can tell us about copyright in the digital world.

Google Books and Transformativeness

A major question in Authors Guild v. Google was whether Google’s use of the copyrighted works was “transformative,” a key component of the fair use inquiry. When a use is found to be transformative, this in practice weighs heavily in favor of a finding of fair use. In the case, the court found that Google’s scanning, as well as the search and snippet display functions, were transformative because the service “augments public knowledge by making available information about [the] books without providing the public with a substantial substitute for . . . the original works.” This was because Google Books provided information about the books—such as the author and publisher information—without creating substitutes of the original works. In other words, readers could learn about the books they searched through, but could not read the books in full—to do this, those readers would have to purchase or borrow copies through the normal channels.

Since the doctrine of transformativeness was established in the 1994 landmark Supreme Court case, Campbell v. Acuff-Rose Music, there have been myriad questions about the precise contours of what it means for a use to be transformative. Campbell established that a use is transformative when it endows the secondary work with a “new meaning or message,” but it can be difficult to apply this test in practice, particularly in the context of new or nascent technologies. Google Books tells us that scanning works in order to create a full-text searchable database with limited snippet displays is a transformative use based on its new and different purpose from the purpose of the works themselves. Furthermore, it reinforces the notion that a use is particularly likely to be considered transformative when it serves the underlying purpose of copyright law: incentivizing new creation for the benefit of the public and “enriching public knowledge.” By highlighting that Google contributed to public knowledge about books through its scanning activities and the Google Books search function, the court helped bring fair use for scholarship and research—two key prototypical uses established in the 1976 Copyright Act—into the digital age, setting an important precedent for later cases.

Google Books and Derivative Works

One of the plaintiffs’ arguments in Google Books was that Google’s full-text searchable database constituted a derivative work. One of a copyright holder’s exclusive rights is the right to prepare derivative works—such as adaptations, abridgements, or translations of the original work—and the plaintiffs alleged that this right had been infringed. The court disagreed, finding that Google’s use had a transformative purpose, whereas derivative works tend to involve a transformation in form, such as the adaptation of a novel into a movie or an audiobook. Furthermore, the court explained that derivative works are “those that re-present the protected aspects of the original work, i.e., its expressive content, converted into an altered form[.]” In contrast, the Google Books project provided information about the books and offered a limited “snippet” view, but did not re-present the expressive content: the full text of the books themselves.

The distinction the court drew between transformative fair uses and derivative works in Google Books is an important one, as it can often be a close question whether a work involves a transformative purpose or merely represents the same work in a new form, without enough added to tip the scales towards fair use. And it is a question that continues to arise in fair use cases today: just last year, the Supreme Court agreed to hear Warhol Foundation v. Goldsmith, a case about whether Andy Warhol’s creation of a series of screenprints of the late musical artist Prince which drew from a photograph taken by photographer Lynn Goldsmith qualified as a fair use. We’ve covered this case extensively on our blog over the past few years, and submitted an amicus brief in the case. Our brief argues (among other things) that Warhol’s screen prints involve much more than a transformation in form: they are stylistically and visually distinct from Goldsmith’s photograph, and endow the photograph with a new meaning or message, making the use highly transformative.

As in Google Books, the parties and amici in Goldsmith grapple with the line between transformative uses and the creation of derivative works, an often complicated and fact-sensitive determination. In this context, Google Books serves as a reminder that fair use is not a one-size-fits-all determination. Yet it also provides support for arguments advanced by Authors Alliance and others that simply because a transformation in form exists—in the Google Books case, the transformation from a print book to a scanned copy, and in Goldsmith, the transformation of a black and white photo to a series of colorful screenprints—does not mean that a secondary use cannot be a fair one. Warhol’s use did not merely “re-present the protected aspects of the original work[‘s] . . . expressive content,” but was transformative in the different “purpose, character, expression, meaning, and message” it conveyed.

Google Books and Controlled Digital Lending

The practice of controlled digital lending (“CDL”)—and the arguments in favor of it constituting a fair use—can be traced back in part to the fair use principles established and reinforced in Google Books. As I argue in our amicus brief in Hachette Books v. Internet Archive, a case about—among other things—whether CDL constitutes a fair use, Google Books shows that copying the entirety of a work in the process of making a transformative use of it can be fully consistent with fair use.

Another important suggestion in the Google Books case, made at the district court level, was that the Google Books search function could actually drive book sales: the search results were accompanied by links to purchase the book, and research suggested that this could enhance sales of those books. This is analogous to the effects of library lending: library readers often purchase books by authors they first discovered at the library, an effect which can apply with equal force when the library patron borrows a CDL scan. Indeed, several other amici in Hachette Books argue that the finding that the Google Books search was a fair use lent substantial support for the argument that CDL is a fair use, based on both the factual similarities between the two initiatives and their shared objective of “enriching public knowledge.”

As in Google Books, CDL also helps authors reach readers who could not otherwise access their books, and achieves this through scanning books on library shelves. And also like Google Books, CDL helps solve the problem of 20th century works “disappearing”: the commercial life of a book tends to be much shorter than the term of copyright, so when books under copyright go out of print, they can disappear into obscurity. Scanning these books to preserve them ensures that the knowledge they advance will not be lost.

Google Books and Text Data Mining

Text data mining—the process of using automated techniques aimed at quantitatively analyzing text and other data—is also widely considered to be a fair use, and this determination is similarly built in part on the building blocks established in Google Books. As was the case in Google Books, the results of text data mining research provide information about the works being studied, and cannot in any way serve as substitutes for the content of the works. In fact, one important aspect of the new exemption to DMCA liability for text data mining, which Authors Alliance successfully petitioned for in 2021, is that researchers are not able to use the works in the text data mining corpus for consumptive purposes. And also like Google Books, researchers are able to view the content in a limited manner to verify their findings, analogous to Google Books’s snippet view. The new TDM exemption was a huge win for Authors Alliance members, and something to celebrate for all scholars engaged in this important research. Importantly, the precedent established by Google Books strongly supported its adoption and the Register of Copyright’s suggestion that text data mining was likely to be a fair use.

Looking Forward: Google Books and Artificial Intelligence

In recent years, scholars and researchers have grappled with the implications of copyright protection on AI-generated content and AI models more generally. The holding in Google Books provides some support for companies’ and researchers’ ability to engage in these activities: one important factor in the case was that Google Books did not harm the market for the books at issue in the case, since the books in the database could not serve as substitutes for the books themselves. Similarly, when copyrighted works are used to train AI, the output cannot serve as a substitute for the copyrighted works, and the market for those works is not harmed, even if—like the plaintiffs in Google Books—the copyright holders might prefer that their works not be used in this way. Google Books establishes that simply because copyrighted works are used as “input” in a given model, this does not mean that the outputs constitute infringement. It is also worth noting that the court found Google’s use to be fair despite the fact that it was a use by a commercial, profit-seeking entity. While a commercial use can sometimes tip the scales in favor of finding a use to not be fair, this can be overcome by a socially beneficial, transformative purpose. This could arguably apply with equal force to AI models trained on copyrighted works which contribute to our understanding of the world, despite the fact that commercial entities are often the ones deploying these technologies.

Eight years after it was decided, the legacy of Google Books endures in policy debates and copyright lawsuits that capture the public’s attention. Policymakers and judges would be wise to heed the lessons it teaches about the value of advancing public knowledge through digitization and the use of copyrighted works for new and socially beneficial purposes. As we await policy developments regarding text data mining and wait for decisions in Goldsmith and Hachette Books, it is my hope that this legacy will live on, reminding us all of the vast capabilities of information technology to enrich our understanding of the world and advance the progress of knowledge, which, after all, is what copyright law is all about.

Fair Use Week 2023: How to Evade Fair Use in Two Easy Steps

Posted February 23, 2023

This post is by Dave Hansen and also posted to the Fair Use Week blog here.

Fair use is an essential part of the Copyright Act’s careful balance—on the one hand protecting rightsholders’ interests, while on the other “[permitting and requiring] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” The Supreme Court has explained that fair use is a core part of what makes the Copyright Act compatible with the First Amendment guarantee of free expression. “First Amendment protections are ‘embodied . . . ’ in the ‘latitude for scholarship and comment’ safeguarded by the fair use defense.”

Fair use is what has allowed biographers to quote critically from originals when writing their own works, even when the copyrights are owned by the rich and powerful, as in cases involving L. Ron Hubbard and Howard Hughes. It’s what allows researchers to write and quote from unpublished manuscripts for literary criticism, as in this case about scholarly use of an unpublished work by Marjorie Kinnan Rawlings Baskin. It’s also what has allowed libraries to provide copies of books to blind readers, conduct research across texts, and make preservation copies. It allows reuse of images in support of news and political commentary, supports researchers who use tools like Google Image Search, and allows artists to use source materials to create transformative new works, such as parody.

Two easy steps to evade fair use

Given its importance, it may surprise you to learn that fair use is remarkably easy to evade. Savvy copyright owners do it all the time. It takes just two easy steps.

First, you need to write a contract, specifically a “license” for the use of your work. In it, you dictate the terms on which you provide access to your work. You can impose almost any restrictions you like. Sometimes, contracts will restrict certain classes of uses: “you cannot reproduce this content for commercial use” or “you may download one copy of this work for personal consultation; you cannot reproduce or share any part of this work in whole or in part in any form, or share in any form with the public.”

Other contractual terms guard against specific threats. For example, Disney once won a lawsuit over use of its movie trailers, which Disney would license to websites only if they agreed that the website “may not be derogatory to or critical of the entertainment industry or of [Disney] (and its officers, directors, agents, employees, affiliates, divisions and subsidiaries) or of any motion picture produced or distributed by [Disney].”

The key here is that you can essentially rewrite the rules, and forbid those aspects of fair use that you disapprove of. Want to make sure critics can’t use your words against you? Just say they can’t. Want to make sure libraries don’t make preservation copies without paying you first? Want to make sure that instructors of college classes can only use excerpts of your book—even very small excerpts—if they pay every single time? It’s your prerogative.

Second, you need to make sure that everyone who gains access to your work is bound by your license. This sounds hard, but with online distribution, it’s actually pretty easy.

In the world of print copies, this was difficult because copies had a way of traveling beyond the control of the original purchaser. The “first sale” doctrine meant that buyers of copies could freely transfer those copies to third-party buyers (e.g., someone who buys a book at a used book store, or who borrows a book from a library) or give them away. So, even if you got the original buyer to agree to your terms, those downstream users didn’t have to. But there is no widespread acceptance of a buyer’s “digital first sale.” So, buyers can’t just transfer the copies they purchase to downstream users. Everyone who wants access to the digital copy must agree to the license. All you have to do is make sure that your materials are distributed exclusively on digital platforms that are subject to your terms, and you’re all set.

That’s it. Two easy steps and you’ve practically eliminated fair use. For any use you haven’t already authorized, you can just say no, require them to pay whatever you want, or just refuse to grant access. And if they don’t comply, at a minimum you’ve got at a slam-dunk breach of contract claim.

Is it Seriously That Easy?

Unfortunately, this two-step approach–sometimes known as “contractual override”–reflects the prevailing wisdom and practice of many copyright owners. It is widely used online, by parties ranging from massive corporations such as Amazon or Netflix to small publishers and news outlets. And though the precedent for it isn’t airtight, when it has come up in court, the licensors have mostly prevailed. Because U.S. law so venerates “freedom of contract,” it has been difficult for policymakers or the courts to address the problem of rightsholders forbidding lawful fair uses under the terms of their licenses.

How did we get to this point? This is not a new or unexpected problem. You can look back to 1993, when law professor Jane Ginsburg foresaw this state of affairs just as the possibilities of the internet were coming into view:

“In the digital environment posited here, contract protection may not be the fragile creature presumed in prior intellectual property preemption decisions. If access to works could be obtained only through the information provider (directly or through an authorized online distributor), and if copying could be electronically tracked or prevented, no ‘third parties’ to the contract would exist. When ‘we’re all connected,’ no functional difference may exist between a contract and a property right. At that point, it becomes necessary to consider whether limitations incorporated in the copyright law should be imported to its contractual substitute.”

Numerous others in the legal community soon made similar observations, such as Julie Cohen, Niva Elkin-Koren, and Andrew Shapiro, among others, who also wrote about aspects of this then-new challenge.

How to Protect Fair Use from Contractual Override

A handful of efforts to address this problem have been mounted in Congress. In 2003 and 2005, representative Zoe Lofgren introduced a bill appropriately called the BALANCE Act (“Benefit Authors without Limiting Advancement or Net Consumer Expectations”), which addressed both the unavailability of “first sale” in the digital environment and contractual override of fair use. The proposed legislation provided that “[w]hen a digital work is distributed to the public subject to nonnegotiable license terms, such terms shall not be enforceable under the common laws or statutes of any State to the extent that they restrict or limit any of the limitations on exclusive rights under this title.” The BALANCE Act never passed however, and hasn’t been revisited in Congress since 2005.

Recent actions in other jurisdictions may provide renewed legislative interest and guidance on possible models to adopt. For example, in 2014, the UK passed legislation that limits contractual override of user rights—providing that “to the extent that a term of a contract purports to prevent or restrict the doing of any act which, by virtue of this section, would not infringe copyright, that term is unenforceable.” This language has been applied in the UK to exceptions that allow for making copies for persons with print and other disabilities, research and teaching, and text and data-mining. Similarly, the EU’s recent Copyright in the Digital Single Market Directive contains similar protections for copyright exceptions, as does Singapore’s recent copyright bill. So far, though, there has been no indication of real interest from Congress in the United States.

It’s also possible that states could craft legislation. There has recently been a surge of interest in bills in a number of states aimed at protecting libraries’ ability to license books on reasonable terms (bills that Authors Alliance generally supports). These bills also go beyond what fair use protects—seeking to, for example, ensure that libraries have broad access to ebooks on “reasonable terms,” and addressing problems of major publishers simply refusing to license books to libraries. Maryland was the first state to actually pass such a law, but it was struck down as preempted by federal copyright law in AAP v. Frosh. The court concluded that because federal copyright law dictates the scope of rights governing public distribution of works, it was impermissible for the state of Maryland to interject its own rules about the scope of the publishers’ distribution rights.

It’s possible that state legislation that is more narrowly tailored—e.g., a state law that focused solely on protecting fair use—would not suffer the same fate as the Maryland law. In fact, the reasoning of the Maryland e-lending case would seem to support such a state law, since a state law protecting fair use would be maintaining, rather than altering, the balance of rights as defined by federal law.

Legal Strategies in Court

It’s also possible that the courts could intervene, though so far they have mostly declined to do so. It seems to me there are two or three viable ways for judicial intervention to be effective:

First, Courts could conclude that contracts (created under and governed by state law) are preempted by federal copyright law, which is what defines the scope of copyright’s exclusive rights. The Constitution provides that federal law supersedes conflicting state law, and Congress has provided specific instructions on how such preemption should apply, stating that “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 . . . are governed exclusively” by federal copyright law. Those exclusive rights of copyright owners are explicitly defined as being “subject to” the limitations including fair use, so it would make some sense for courts to view state law expansions of those rights as being in conflict with and therefore preempted by federal copyright law.

However, there are several negative precedents indicating that this approach may not work. Take Bowers v. Baystate, for example, a Federal Circuit case involving two competing computer aided design (CAD) software companies. Bowers contended that Baystate violated the terms of use on its software by reverse-engineering its product in violation of a clause explicitly prohibiting such use. Baystate contended that such reverse engineering was protected by fair use and that contract terms to the contrary should be preempted as inconsistent with federal law. The Federal Circuit, observing that as a general matter “most courts to examine this issue have found that the Copyright Act does not preempt contractual constraints on copyrighted articles,” concluded that “private parties are free to contractually forego the limited ability to reverse engineer a software product under the exemptions of the Copyright Act. . . . [A] state can permit parties to contract away a fair use defense or to agree not to engage in uses of copyrighted material that are permitted by the copyright law, if the contract is freely negotiated.”

Other courts addressing state contract law and other state law limitations on fair use (e.g,. this California right of publicity case) have largely followed the same approach. One notable exception to is Vault Corp. v. Quaid Software, Ltd., in which the Fifth Circuit invalidated a Louisiana law that permitted contracts to prohibit reverse engineering, even though federal law provides a specific exception (Section 117) that allows for such reverse engineering. Although not directly addressing fair use, the court’s holding could apply equally to state law contractual restrictions on fair use. The issue has not directly reached the Supreme Court, though there is a case, Genius v. Google, currently pending on a Petition for Certiorari that asks the Court to weigh in on the broader question of when federal law preempts contracts under state law.

Second, courts could conclude that the state common law (the body of law made up of legal principles established by courts over the years) on contracts does not permit contractual restrictions on fair use. This could come in a few different forms. One option might be for courts to consider more seriously the question of whether a valid contract is actually created in the first place, particularly in situations where users have no meaningful opportunity to negotiate terms and little ability to even understand what restrictions they are agreeing to. For years, following the lead of the Seventh Circuit Court of Appeals in ProCD v. Zeidenberg, courts have been willing to accept that a valid agreement is formed even in situations with “shrinkwrap” or “browsewrap” licenses. But, despite ongoing criticism of this approach by many, the approach has prevailed. Courts might also take more seriously the public policy implications of fair use evasion more directly, by invoking traditional rules for contract interpretation that hold terms unenforceable when they violate public policy—e.g., agreements to commit a crime, or a tort, or restraint of trade. To date, however, I’m unaware of any such cases directly applying these principles to contracts that restrict fair use, though there is a large body of case law and this may merit more research.

Third, the courts could apply existing or new equitable doctrines, such as “copyright misuse” or a yet-to-be-defined right of “fair breach” to protect users from overenforcement of contracts that limit fair use. Professor Jane Ginsburg outlines the potential need for courts to develop their own remedy of “fair breach.” She observes that, as with the current licensing environment online, at some point “it becomes necessary to consider whether limitations incorporated in the copyright law should be imported to its contractual substitute. With respect to libraries and their users, one should inquire whether some kind of fair use exception is appropriate. This might take the form of a judge-made right of ‘fair breach,’ or legislatively imposed mandatory library-user rights.”

This idea of “fair breach” has drawn little attention since Ginsburg first identified its need and coined the term, but it merits further attention. “Fair breach” may have some similarity to the existing doctrine of copyright misuse, which could have some application to contracts that restrict fair use. A judge-made doctrine borrowed from the patent law doctrine of patent misuse, copyright misuse has been mostly applied to situations where copyright owners have attempted to exercise their rights to unfairly stifle competition. The primary question with copyright misuse is “whether the copyright is being used in a manner violative of the public policy embodied in the grant of a copyright.” If copyright misuse is found, the copyright isn’t invalidated, but courts have held that the owners’ copyright cannot be enforced to exclude the harmed party’s use. The Supreme Court has yet to acknowledge the existence of this doctrine, but numerous appellate courts have recognized it over the last thirty years.

A handful of cases suggest that extension of copyright misuse to fair-use limiting contracts could be effective. For example, in Assessment Technologies of Wi, LLC v. Wiredata, the Seventh Circuit Court of Appeals held that Assessment Technologies’ attempt to restrict access to data that was not copyrighted fell within the copyright misuse doctrine’s core focus: “preventing copyright holders from leveraging their limited monopoly to allow them control of areas outside the monopoly.”

Video Pipeline, Inc. v Buena Vista Home Entertainment, Inc., also gives some encouragement. In that case, Video Pipeline brought a declaratory judgment action seeking a judgment that its use of video trailers from Disney and others was not copyright infringement. Among the defenses it cited was copyright misuse on the part of Disney. To support its copyright misuse argument, Video Pipeline pointed to the license term I mentioned at the beginning of this blog post, which conditioned the license on an agreement to not disparage Disney or the entertainment industry. The court ultimately declined to find that those terms constituted copyright misuse, because the contract had a narrow focus and limited application: “we nonetheless cannot conclude on this record that the agreements are likely to interfere with creative expression to such a degree that they affect in any significant way the policy interest in increasing the public store of creative activity. The licensing agreements do not, for instance, interfere with the licensee’s opportunity to express such criticism on other web sites or elsewhere.” However, the court suggested that the outcome could have been different if the restrictions were more far reaching.

Conclusion

Contractual override of fair use poses a real threat to free expression, especially given the increasing limits on distribution of copyrighted works online. Almost all online platforms that distribute copyrighted works impose restrictions that inhibit fair use to some degree. It takes just two easy steps. Thankfully, there are some plausible routes forward for improving the law to protect authors and others who rely on fair use to create new works and share knowledge with the world. There is also some reason for optimism due to renewed interest in the issue among scholars and organizations such as the Association of Research Libraries, which issued a report on contractual override for libraries, and is co-hosting a symposium with Washington College of Law at American University on the subject with perspectives from around the world.

Fair Use Week 2023: Resource Roundup

Posted February 21, 2023

Authors who want to incorporate source materials into their writings with confidence may find themselves faced with more questions than answers. What exactly does fair use mean? What factors do courts consider when evaluating claims of fair use? How does fair use support authors’ research, writing, and publishing goals? Fortunately, help is at hand! This Fair Use/Fair Dealing Week, we’re featuring a selection of resources, briefs, and blog posts to help authors understand and apply fair use.

Fair Use 101

Cover of the Fair Use Guide for Nonfiction Authors

Authors Alliance Guide to Fair Use for Nonfiction Authors: Our guidebook, Fair Use for Nonfiction Authors, covers the basics of fair use, addresses common situations faced by nonfiction authors where fair use may apply, and debunks some common misconceptions about fair use. Download a PDF today.

Authors Alliance Fair Use FAQs: Our Fair Use FAQs cover questions such as:

Can I still claim fair use if I am using copyrighted material that is highly creative?
What if I want to use copyrighted material for commercial purposes?
Does fair use apply to copyrighted material that is unpublished?

Codes of Best Practices in Fair Use: The Center for Media and Social Impact at American University has compiled this collection of Codes of Best Practices in Fair Use for various creative communities, from journalists to librarians to filmmakers.

Fair Use Evaluator Tool: This tool, created by the American Library Association, helps users support and document their assertions of fair use.

Dig Deeper

U.S. Copyright Office Fair Use Index: The U.S. Copyright Office maintains this searchable database of legal opinions and fair use test cases.

Fair Use Amicus Briefs: Authors Alliance submitted several friend of the court briefs on issues related to fair use over the past year. Check out our brief in Hachette Books v. Internet Archive, where we expand on our longtime defense of Controlled Digital Lending as a fair use; our brief in Goldsmith v. Warhol Foundation, where we advocate for a broad yet sensible conception of “transformativeness”; and our brief in Sicre de Fontbrune v. Wofsy, where we explain why fair use is a crucial aspect of U.S. policy and why it should shield authors from the enforcement of foreign copyright judgments where fair use would have protected the use had it occurred in the U.S.

Fair Use and Text Data Mining: Learn about Authors Alliance’s new project, “Text and Data Mining: Defending Fair Use,” intended to support researchers engaging in text and data mining under the recent DMCA exemption for Text Data Mining, generously supported by the Mellon Foundation.

Fair Use and Public Policy: Learn about why we voiced opposition to the SMART Copyright Act of 2022 and the Journalism Competition and Preservation Act—proposed legislation that, if passed, could erode our fair use rights.

Book Talk: History, Disrupted

Posted February 7, 2023

Join journalist CLAIRE WOODCOCK and author JASON STEINHAUER for a discussion about how social media & the web have changed the past.

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The Internet has changed the past. Social media, Wikipedia, mobile networks, and the viral and visual nature of the Web have filled the public sphere with historical information and misinformation, changing what we know about our history. This is the first book to chronicle how and why it matters.

Purchase *History, Disrupted* from Better World Books.

From Facebook, Twitter and Instagram to artificial intelligence, machine learning and algorithms, history has been widely communicated and fiercely contested across the social Web as battles over the 1619 Project, the Trump presidency, Confederate monuments and history textbooks have exploded into public view. How does history intersect with today’s most pressing debates? How does history contribute to online debates about misinformation, disinformation, journalism, tribalism, activism, democracy, politics and identity?

In the midst of growing political division around the world, this information is critical to an engaged citizenry. As we collectively grapple with the effects of technology and its capacity to destabilize our societies, scholars, educators and the general public should be aware of how the Web and social media shape what we know about ourselves – and crucially, about our past.

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JASON STEINHAUER is a Global Fellow at the Wilson Center in the USA. He is the founder and host of History Club on Clubhouse with more than 100,000 followers, and was the Founding Director of the Lepage Center for History in the Public Interest at Villanova University, USA, from 2017 – 2020. A public historian with over twenty years of experience in major cultural and historical institutions in the US, Steinhauer is the Founder of the History Communication Institute and the creator of the field of History Communication, which examines how history gets communicated on the World Wide Web. He has written for CNN, TIME, The Washington Post, Poynter, Inside Higher Ed, the Philadelphia Inquirer and the Foreign Policy Research Institute (where he is a Senior Fellow). He has also delivered lectures overseas on behalf of the US Department of State, created a history podcast for the John W. Kluge Center at the Library of Congress, and appeared on C-SPAN’s American History TV.

CLAIRE WOODCOCK is an independent journalist based in Colorado. Her work has appeared in Motherboard Vice, NPR, Literary Hub, Aspen Public Radio, Boulder Weekly and many other publications. Her current work focuses on the politics of information in libraries. Woodcock graduated with a B.A. in English Literature from the University of New York at Fredonia in 2015 and is currently an M.A. candidate in the Media & Public Engagement program at CU Boulder. Woodcock is also a Digital Ownership Fellow with NYU Law’s Engelberg Center on Innovation Policy and Law, researching the digital book marketplace.

BOOK TALK: History, Disrupted
March 9 @ 10am PT / 1pm ET
Register now for the virtual discussion

Authors Alliance Signs on to Amicus Brief in Gonzalez v. Google

Posted January 20, 2023

Yesterday, Authors Alliance joined a diverse group of creators of online content on an amicus brief in Gonzalez v. Google, a case before the Supreme Court. The case is about Section 230 of the Communications Decency Act and whether it protects curated recommendations by platforms. Section 230 protects online service providers from legal liability for content generated by users, and is considered by many to be essential for a vibrant and diverse internet. By shielding platforms from liability for speech their users make on these platforms, Section 230 enables the free flow of ideas and expression online, including speech on controversial topics. This is consistent with First Amendment values and the functioning of the internet as we know it.

The case concerns ISIS recruitment videos posted on YouTube, which the petitioner alleges were recommended by the platform. Gonzalez argues that Section 230 should not shield Google from liability, and that it aided in ISIS recruitment by recommending these videos to users. Google, on the other hand, contends that Section 230 shields it from liability for recommendations made on the platform, including the recommendations at issue in the case.

Our brief makes three principal arguments. First, it argues that Congress intended Section 230 to foster a free Internet where diverse and independent expression thrives. We explain that 230 was meant to facilitate free expression online, which is precisely what it continues to do.

Second, our brief argues that platform recommendations contribute to the flourishing of free expression, creativity, and innovation online. Authors like our members are served by platform recommendations and curation: for authors whose works may not appeal to a general audience, platform recommendations enable readers interested in a particular topic or type of work to discover them. In this way, platform recommendation can serve authors’ interests in seeing their works reach broad and diverse audiences. This is particularly important for authors just starting out in their careers who have not yet found an audience, and platform recommendations can and do help these authors grow their audiences.

Finally, we argue that altering Section 230’s protections for recommendations could have dire consequences for current and future creators—including authors— and could chill the free flow of ideas online. If platforms were to be held liable for content created by users, we believe they would be inclined to take a more conservative approach, moderating content to avoid the threat of a lawsuit or other legal action. This could reasonably lead platforms to avoid hosting content on controversial topics or content by new and emerging creators whose views are unknown. An author’s ability to write freely, including on controversial topics, is essential for a vibrant democratic discourse. And if platforms were reluctant to recommend content by new creators, who may be seen as less “safe,” dominant and established creators could be entrenched, doing a disservice to less established creators. Were platforms to censor certain writings or ideas to avoid lawsuits, the internet would become less free, less vibrant, and more sanitized—doing a disservice to all of us.

Authors Alliance thanks Keker, Van Nest & Peters LLP for their invaluable support and contributions to this brief, as well as our fellow amici for sharing their stories.

Public Domain Day 2023: Welcoming Works from 1927 to the Public Domain

Posted January 5, 2023

*Montage courtesy of the* Center for the Public Domain

Literary aficionados and copyright buffs alike have something to celebrate as we welcome 2023: A new batch of literary works published in 1927 entered the public domain on January 1st, when the copyrights in those works expired. The public domain refers to the commons of creative expression that is not protected by copyright. When a work enters the public domain, anyone may do anything they want with that work, including activities that were formerly the “exclusive right” of the copyright holder like copying, sharing, translating, or adapting the work.

Some of the more recognizable books entering the public domain this year include:

Virginia Woolf’s To the Lighthouse
William Faulkner’s Mosquitoes
Agatha Christie’s The Big Four
Edith Wharton’s Twilight Sleep
Herbert Asbury’s The Gangs of New York (the original 1927 publication)
Franklin W. Dixon’s (a pseudonym) The Tower Treasure (the first Hardy Boys book)

Literary works can be a part of the public domain for reasons other than the expiration of copyright—such as when a work is created by the government—but copyright expiration is the major way that literary works become a part of the public domain. Copyright owners of works first published in the United States in 1927 needed to renew that work’s copyright in order to extend the original 28-year copyright term. Initially, the renewal term also lasted for 28 years, but over time the renewal term was extended to give the copyright holder an additional 67 years of copyright protection, for a total term of 95 years. This means that works that were first published in the United States in 1927—provided they were published with a copyright notice, were properly registered, and had their copyright renewed—were protected through the end of 2022.

Once in the public domain, works can be made freely available online. Organizations that have digitized text of these books, like Internet Archive, Google Books, and HathiTrust, can now open up unrestricted access to the full text of these works. HathiTrust alone has opened up full access to more than 40,000 titles originally published in 1927. This increased access provides richer historical context for scholarly research and opportunities for students to supplement and deepen their understanding of assigned texts. And authors who care about the long-term availability of their works may also have reason to look forward to their works eventually entering the public domain: A 2013 study found that in most cases, public domain works are actually more available to readers than all but the most recently published works.

What’s more, public domain works can be adapted into new works of authorship, or “derivative works,” including by adapting printed books into audio books or by adapting classic books into interactive forms like video games. And the public domain provides opportunities to freely translate works to enrich our understanding of those works and help fill the gap in works available to readers in their native language.

Announcing the “Text and Data Mining: Demonstrating Fair Use” Project

Posted December 22, 2022

We’re very pleased to announce a new project for 2023, “Text and Data Mining: Demonstrating Fair Use,” which is generously supported by the Mellon Foundation. The project will focus on lowering and overcoming legal barriers for researchers who seek to exercise their fair use rights, specifically within the context of text data mining (“TDM”) research under current regulatory exemptions.

Fair use is one of the primary legal doctrines that allow researchers to copy, transform, and analyze modern creative works—almost all of which are protected by copyright—for research, educational, and scholarly purposes. Unfortunately, in practice, not everyone is able to use this powerful right. Researchers today face the challenge that fair use is often overridden by a complex web of copyright-adjacent laws. One major culprit is Section 1201 of the Digital Millennium Copyright Act (“DMCA”), which imposes significant liability for users of copyrighted works who circumvent technical protection measures (e.g., content scramble for DVDs), unless those users comply with a series of specific exemptions to Section 1201. These exemptions are lengthy and complex, as is the process to petition for their adoption or renewal, which recurs every three years.

Text data mining is a prime example of work that demonstrates the power of fair use, as it allows researchers to discover and share new insights about how modern language and culture reflect on important issues ranging from our understanding of science to how we think about gender, race, and national identity. Authors Alliance has worked extensively on supporting TDM work in the past, including by successfully petitioning the Copyright Office for a DMCA exemption to allow researchers to break digital locks on films and literary works distributed electronically for TDM research purposes, and this project builds on those previous efforts.

The Text Data Mining: Demonstrating Fair Use project has two goals in 2023:

1) To help a broader and more diverse group of researchers understand their fair use rights and their rights under the existing TDM exemption through one-on-one consultations, creating educational materials, and hosting workshops and other trainings; and

2) To collect and document examples of how researchers are using the current TDM exemption, with the aim of illustrating how the TDM exemption can be applied and highlighting its limitations so that policymakers can improve it in the future.

We’ll be working closely with TDM researchers across the United States, as well organizations such as the Association for Computers and the Humanities, and will be actively exploring opportunities to work with others. If you have an interest in this project, we would love to hear from you!

About The Andrew W. Mellon Foundation

The Andrew W. Mellon Foundation is the nation’s largest supporter of the arts and humanities. Since 1969, the Foundation has been guided by its core belief that the humanities and arts are essential to human understanding. The Foundation believes that the arts and humanities are where we express our complex humanity, and that everyone deserves the beauty, transcendence, and freedom that can be found there. Through our grants, we seek to build just communities enriched by meaning and empowered by critical thinking, where ideas and imagination can thrive. Learn more at mellon.org.