Category: Infringement & Litigation (page 1 of 2)

Debunking Top Copyright Myths – Part One

The first myth we’re debunking is one of the most common:  If it doesn’t have a copyright symbol (©), then there’s no copyright protection, right?

How did this particular misconception start?  To answer that, we’re going to have to take a trip in the copyright time machine, back to 1909 [1].  That was the year Congress made its second major update to the copyright law of the United States (the first was in 1831 [2], when Congress granted copyright protection to musical compositions and extended the original copyright term for a protected work from 14 years to 28 years).  Under the 1909 Act, cleverly entitled “Copyright Act of 1909”, there were a couple of hoops that creators had to jump through before their works were protected by copyright.

The first hoop that creators had to jump through was publication.  In 1909, publication was usually required before a work was protected by copyright [3].  So before a work could be protected by copyright, there had to be “copies… reproduced for sale or distribution”. [4]  The second hoop was that, in addition to a work being published, it also had to include an appropriate notice of copyright:

[T]he notice of copyright required by [the 1909 Copyright Act] shall consist either of the word “Copyright” or the abbreviation “Copr.”, accompanied by the name of the copyright [proprietor], and if the work be a printed literary, musical, or dramatic work, the notice shall include also the year in which the copyright was secured by publication.  In the case, however, of copies of works specified in subsections (f) to (k), inclusive of section five of this Act, the notice may consist of the letter C [enclosed] within a circle, thus: ©, accompanied by the initials, monogram, mark, or symbol of the copyright proprietor: Provided, That on some accessible portion of such copies or of the margin, back, permanent base, or pedestal, or of the substance on which such copies shall be mounted, his name shall appear.” [5]

Basically, you had to have a conforming notice of copyright in or on your published work before it would receive copyright protection.  In 1909, the United States  expected certain formalities of rights holders in order to receive copyright protection.  This notion, that copyright protection wasn’t something you could just hand out to anyone, held on for decades and reappeared in the next major revision of U.S. copyright law.

Let’s jump back in the copyright time machine and fast forward to 1976, when the also creatively named “Copyright Act of 1976” was signed into law.  The 1976 Act superseded and replaced the 1909 Act, becoming the new statutory sheriff in the town of copyright.  When it was first enacted, the Copyright Act of 1976 also required that published works include a copyright notice before they could be granted copyright protection [6].  The language of the requirement had changed a bit, but it still required the word copyright, or an abbreviation like “Copr.” or “©”, the year of first publication, and the name of the copyright owner [7].  With some exceptions, works that did not contain a proper copyright notice were not protected works, and fell into the public domain.  Those requirements might have lasted into the distant future, if not for this pesky little thing called the rest of the world. The United States had to come into the fold of the rest of the world at some point.

Let’s jump back in the copyright time machine and head to March 1, 1989.  That was the date The Berne Convention Implementation Act of 1988 took effect [8] in the United States.  The Berne Convention for the Protection of Literary and Artistic works[9] (better known as the Berne Convention) is an international copyright agreement with 171 member parties (including the United States[10].  The Berne Convention first came into effect in Berne, Switzerland, in 1886.  Originally a treaty between eight nations (Spain, Great Britain, France, Haiti, Liberia, Switzerland, Tunisia, and Germany), 22 years later the number of signatories had almost doubled.  Today, nearly every country in the world is a member party of the Berne Convention (171 countries out of 206(ish) total [11]).  Despite the trending popularity of the Berne Convention, the United States refused for over 200 years to sign on to the agreement.  This was in large part because becoming a member party would require rather substantial changes to the copyright law of the United States.  In particular, it would require that copyright law in the United States “not be subject to any formality” [12].  In effect, the Berne Convention forbids the United States from requiring any formalities – such as registration with the Copyright Office or publication with notice – before granting a creator copyright protection for their work.

Once The Berne Convention Implementation Act of 1988 took effect, copyright protection in the United States became automatic.  Gone was the requirement that a copyright notice be affixed to a work.  Gone was any requirement that a work be registered with the Copyright Office.  Current copyright law in the United States provides that copyright protection attaches instantly and automatically to “original works of authorship fixed in any tangible medium of expression” [13].

What does this mean?  For one thing, if you’re still reading this it means you have incredible staying power when it comes to muddling through somewhat dry information about the history of copyright in the United States!

It also means that all types of materials, even if they have no copyright notices on them, are protected by United States copyright law.  That, in turn, means that your use of content without either permission from the creator or an appropriate exception to copyright protection would be copyright infringement.

At this point, I know what you’re thinking.  “Well if we don’t need to follow any formalities to be protected by copyright, then why do we have a Copyright Office at all?”

That may not be exactly what you were thinking, but just play along.

While copyright protection requires neither registration nor notice, there are some benefits to both.  If a copyright owner does want to sue someone for copyright infringement, they may not do so in federal court unless their copyright is registered.  And if a work does include a copyright notice, it prevents mischievous copyright infringers from claiming that their infringement was innocent, meaning that they didn’t know the work was copyrighted.

Speaking of which, we invite you to read the other post in our series – The Myth of the Innocent Infringer.

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Please leave a comment telling us about your experiences with this copyright myth!

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By Marley C. Nelson, Rights Management Specialist at the Copyright Resources Center, The Ohio State University Libraries

 

 

[1] Copyright Act of 1909, 17 U.S.C. §1 (1909).  Accessible at http://www.copyright.gov/history/1909act.pdf.

[2] Copyright Act of 1831, 17 U.S.C. §1 (1831).  Accessible at http://www.copyrighthistory.org/cam/tools/request/showRepresentation?id=representation_us_1831.

[3] Copyright Act of 1909, 17 U.S.C. §1 (1909).

[4] Copyright Act of 1909, 17 U.S.C. §62 (1909).

[5] Copyright Act of 1909, 17 U.S.C. §18 (1909).

[6] Copyright Act of 1976, 17 U.S.C. §401 (1976).

[7] Copyright Act of 1976, 17 U.S.C. §§401-406 (1976).

[8] The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853.  Accessible at http://uscode.house.gov/statutes/pl/100/568.pdf.

[9] The Berne Convention for the Protection of Literary and Artistic Works, opened for signature 9 September 1886, 1161 UNTS 30 (entered into force 5 December 1887).  Accessible at http://www.wipo.int/treaties/en/text.jsp?file_id=283698.

[10] See Copyright Office Circular 38a. (38A.0416), page 8.  Accessible at http://www.copyright.gov/circs/circ38a.pdf.

[11] See https://en.wikipedia.org/wiki/List_of_sovereign_states, or https://www.cia.gov/library/publications/the-world-factbook/index.html.

[12] Article 5(1) of the Berne Convention. Accessible at http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P109_16834.

[13] 17 U.S.C. §102(a).

Copyright Roundup, Part II

In Copyright Roundup Part I we discussed the fair use of an “aesthetically displeasing” photograph, copyright protection for cheerleading uniforms, and copyright ownership for non-human authors. In this post we will discuss the latest development in the Google Books litigation, fair use considerations in issuing DMCA takedown notices, and the public domain status of Happy Birthday to You.

Another fair use win for Google in most recent Google Books lawsuit.

Many of our readers are familiar with the Google Books litigation which began in 2005 when a number of publishers and the Authors Guild brought separate lawsuits against Google for Google’s Library Project.[1]  As part of the project, Google partners with research libraries to digitize works in the participating libraries’ collections. Digital scans of books are indexed and added to Google Books, providing the public with the ability to do full-text searches of terms within the books. Users can use the full-text search function in Google Books to determine how many times a particular term appears in any book within the Google Book collection. Absent an agreement with the copyright owner, Google does not provide the full scans to the public. Users can, however, see snippets of text containing the searched-for terms. Additionally, Google provides a digital copy of the scanned book back to the submitting library.

On October 16, 2015, the Second Circuit affirmed the lower court’s decision, holding Google’s digitization activities to be a transformative fair use. In analyzing the fair use factors, the court identified Google’s new purpose in providing otherwise unavailable information about the books, allowing users to identify works that include (and do not include) terms of interest. The court also found the snippet view to add important value to the search function, providing users with the context necessary to determine if the book fell within their scope of interest. While Google is a for-profit company, the Google Books project is provided as a free service without advertising. The court found Google’s ultimate profit motivation was not enough to deny a fair use finding in light of other factors, including its transformative purpose in using the works.

The court held that use of the entire work was reasonably appropriate to achieve the transformative purpose of enabling a full-text search function. For the snippet view feature, Google had a blacklisting process in place to permanently block about 22% of a book’s text from snippet view. In addition, researchers for Authors Guild were only able to access an aggregate of 16% of a text. The fragmented and scattered nature of the snippets results in an insubstantial amount of the work being displayed.

The court held the search and snippet view functions did not serve as a competing substitute for the original works. While snippet view may cause some loss of sales it did not rise to the level of meaningful or significant effect upon the potential market or value of the copyrighted work required to tilt the fourth factor in favor of the Authors Guild.

Finally, the court held that providing library partners with the digital copies of the works in their own collections was not infringing. Whether the libraries would then use the copies for infringing purposes was mere speculation and insufficient to place Google as a contributory infringer.

Why does it matter?

Despite ongoing litigation, Google continued their partnerships with libraries to digitize works in library collections, meaning they faced huge potential costs in damages. Consequently, this decision was a big fair use for Google, partnering libraries, and the public who use Google Books.

In his opinion, Judge Leval emphasized the goal of copyright to expand public knowledge and understanding, making the public, rather than the individual author or creator of a work, the primary beneficiary of copyright. Google’s activities served this goal. Public knowledge was augmented by making available information about the scanned books without serving as a substantial substitute for the copyrighted works.

The Authors Guild has indicated their intention to appeal the ruling but it will be up to the U.S. Supreme Court to decide whether they will hear the case.

Continue reading

Copyright Roundup, Part I

The past few months have seen a number of interesting trials and developments in copyright law. We are providing a two-part Copyright Roundup to summarize those cases you may have missed and to let you know why they are important. In part I, we discuss embarrassing photos, cheerleading uniforms, and monkey selfies.

Blogger’s use of “aesthetically displeasing” photograph of Miami Heat investor still a fair use.

We first covered the facts in the Katz v. Chevaldina case in our blog post, “Copyright as an Instrument for Censorship?”, noting that Mr. Katz had filed an appeal of the district court’s finding that defendant Irina Chevaldina was entitled to summary judgement based on a fair use defense. On September 17, 2015, the 11th Circuit released their opinion, affirming the lower court’s decision. Analyzing the purpose and character of use, the court found every use of the Mr. Katz photo to be primarily educational, rather than commercial (educating others about the nefariousness of Mr. Katz) and use of the photo to be transformative (Chevaldina used the photo to ridicule and satirize Mr. Katz’s character). When considering the nature of the copyrighted work, the court found the previously published photo to be primarily a factual work (the photo was a candid shot and the court found no evidence to establish that the photographer attempted to “convey ideas, emotions, or influence Katz’s expression or pose”.[1] Finally, the use of the photo would not materially impair Katz’s incentive to publish the work—because Katz obtained ownership to prevent publication, there was no market for the original work.

Why does it matter? Katz’s conduct in initiating this lawsuit raised some big questions about the role of copyright law in censoring speech. In this case, Katz’s attempt to use copyright law as a shield against unwanted criticism ended up helping to strengthen Chevaldina’s fair use defense. The court’s central question under the fourth fair use factor was whether Chevaldina’s use of the photo would cause substantial economic harm that would impair Katz’s incentive to publish the photo. By obtaining the copyright in the photo and initiating a lawsuit to prevent publication of the photo, however, Katz demonstrated his desire to stop any use of and access to the photograph. The court held that Chevaldina’s use of the photo did not impair Katz’s incentive to publish the photo because Katz had no incentive to publish the photo and the likelihood of Katz changing his mind was “incredibly remote.”

The court also had an interesting analysis of the factual nature of the photograph. For a thoughtful discussion of this point, read Kevin Smith’s post, “Photography, Fair Use and Free Speech.”

Copyright protection for cheerleading uniforms: Varsity Brands v. Star Athletica

Varsity Spirit Corporation and Varsity Spirit Fashions and Supplies, Inc. (Varsity) designs and manufactures cheerleading apparel and accessories, having received copyright registrations for many of their design sketches. These designs included different combinations and arrangements of stripes, zigzags, chevron, and color blocks. The question on appeal was whether these elements were needed to make a cheerleading uniform or whether the design elements could exist separately from the uniform.

On August 19, 2015, the Sixth Circuit reversed the district court’s decision that Varsity’s designs were not physically or conceptually separable from the utilitarian function of the cheerleading uniform, holding that the graphic designs on Varsity’s cheerleading uniforms were separate and therefore copyrightable. The Court distinguished Varsity’s design from dress designs, which typically do not receive copyright protection.

Why does it matter? U.S. copyright does not protect useful articles. Useful articles are articles that have a utilitarian function beyond portraying the appearance of the article or conveying information. To the extent that a work includes a useful function, copyright will only protect those original elements of the work that can be independently separated from the useful function of the work.

Prior to this case, the Sixth Circuit (binding authority for Ohio’s federal district courts) had not adopted an approach for determining separability. After reviewing the approaches taken by other circuits, the Sixth Circuit decided to adopt a hybrid approach to determine if a particular design is a copyrightable pictorial, graphic, or sculptural work. To make this determination, the following questions must be asked:

  1. Is the design a pictorial, graphic, or sculptural work?
  2. If yes, is it a design of a useful article?
  3. If the design is of a useful article, what are the utilitarian aspects of the useful article?
  4. Can the viewer of the design identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article?
  5. Finally, can the pictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?

In answering these questions, the court identified a utilitarian function of a cheerleading uniform to “cover the body, wick away moisture, and withstand the rigors of athletic movements.”[2] The court found that the top and skirt of the uniform could still be identified as a cheerleading uniform even without stripes, chevrons, color blocks, or zigzags. Finally, the interchangeability of the designs indicates the graphic features can exist separately and independently from the utilitarian features of the uniform.

Can a monkey own a copyright?

The “Monkey Selfie” case has taken an additional twist with a new lawsuit brought on behalf of Naruto, the crested macaque. The monkey selfie case began in 2011 when photographer David Slater took a trip to Indonesia and left his camera unattended. A monkey (Naruto) used the camera to take a number of photos of himself grinning into the camera. One self-portrait was reproduced in publications around the world, eventually being added to Wikimedia Commons under the presumption that the work was in the public domain.[3] This prompted Mr. Slater to issue several DMCA takedown notices.

In 2014, Mr. Slater published a book containing copies of the Monkey Selfies, continuing to assert himself as copyright owner of the photographs. Later that year, the Copyright Office revised the Compendium of U.S. Copyright Office Practices, to clarify that the U.S. Copyright Office would not register works produced by animals, including, for example, “a photograph taken by a monkey.”[4]

On September 21, 2015, PETA filed a copyright lawsuit on behalf of Naruto against Mr. Slater, alleging that Mr. Slater falsely claimed to be the author of the photographs and made unauthorized copies of the works for commercial purposes. The lawsuit seeks an order to permit PETA to administer and protect Naruto’s rights in the photographs, declaring Naruto the author and copyright owner of the works.

Why does it matter? U.S. copyright law does not specify human authorship, though the U.S. Copyright Office has provided guidance on the issue through the Compendium of U.S. Copyright Office Practices. This case raises a number of interesting questions around how we define, or should define, “author.” If non-human authors are recognized as eligible copyright owners, should lines be drawn? Should the law, for example, provide exclusive rights to machines? And if the author can’t communicate their preferences, should we allow someone to speak on their behalf?

***

We will continue our Copyright Roundup in part two, where we will look at some important fair use developments in the Google Books lawsuit and Stephanie Lenz’s “dancing baby” case against Universal Music and answer the question, “is Happy Birthday to You finally in the public domain?”

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By Maria Scheid, Rights Management Specialist at the Copyright Resources Center, The Ohio State University Libraries

 

[1] Katz v. Chevaldina, No. 14-14525 (11th Cir. 2015).

[2] Varsity Brands, Inc. v. Star Athletica, LLC, No. 14-5237 (6th Cir. 2015).

[3] Wikimedia Commons refused to remove the photograph on the basis that Mr. Slater was not the author of the work. Without a human author, Wikimedia Commons argued, the work may not be protected by copyright.

[4] U.S. Copyright Office, Compendium of the U.S. Copyright Office Practices (3d ed. 2014) § 313.2.

Copyright as an Instrument for Censorship?

Copyright protects the intellectual property of creators—more specifically it protects original works of authorship that are fixed in a tangible medium of expression. Copyright owners have a bundle of exclusive rights in their protected works and they may exercise these rights to control who and under what conditions their work may be used or reused. In copyright law, the rights of copyright owners have often intersected with the rights of others regarding copyright as well as other legally protected rights, including trademark, right of publicity, and right of privacy. Recently, some issues have arisen over the intersection of copyright enforcement and censorship, in which subjects and/or rights holders of publicly available copyrighted works have sought to remove access to the works.

These issues have become seemingly more common with the emergence of the takedown procedure set forth in the Digital Millennium Copyright Act (DMCA). The DMCA provides a takedown process that allows rights holders to request the removal of their copyrighted materials that have been uploaded by users and hosted by online service providers such as YouTube, WordPress, or Tumblr. In the past month alone, Google has received DMCA takedown notices from 5,596 copyright owners requesting the removal of 39,829,891 URLS.[1]

The DMCA takedown process makes removal of copyrighted material expeditious, and in many cases automatic (e.g., YouTube’s Content ID system), but when does the removal of infringing content align with the purpose of copyright law to “promote the Progress of Science and useful Arts,”[2] and when does it cross the line into the realm of censorship?[3] Here are some recent examples to consider:

  1. “Ugly” photograph. In Katz v. Chevaldina,[4] a photograph was taken of businessman Raanan Katz, in which Mr. Katz can be seen with his tongue sticking out of his mouth. The photograph was described as “ugly” and “candid and embarrassing” by Mr. Katz. The photo was first published in an Israeli newspaper accompanying a favorable article discussing Mr. Katz’s potential ownership interest in an Israeli basketball team, before being republished several times by Irina Chevaldina on her blogs. The republished photos were sometimes accompanied by critical remarks or included in mocking cartoons. Following a request from Mr. Katz, the Israeli photographer who took the photo assigned his copyright to Mr. Katz free of any charge (Mr. Katz testified he had obtained the assignment “[b]ecause I wanted to stop this atrocity”). Following the assignment, Mr. Katz asked Ms. Chevaldina to remove the photos from her blogs. When Ms. Chevaldina refused, Mr. Katz filed a suit for copyright infringement. On balance, the district court found Ms. Chevaldina’s use of the photo to constitute a fair use, protecting her from liability. An appeal has been made to the Eleventh Circuit.
  1. Propaganda film. In 2011, Cindy Lee Garcia agreed to perform a minor role for Desert Warrior, an action thriller set in Arabia. Without her knowledge or consent, Ms. Garcia’s performance was then used in the creation of Innocence of Muslims, an anti-Islam propaganda video. Following the upload of the video to YouTube, Ms. Garcia received death threats for her involvement in the film. Ms. Garcia filed numerous DMCA takedown notices with Google, all of which were resisted, before seeking legal action to remove the video based on the claim that the posting of the video infringed her copyright in her individual performance. In May 2015, the Ninth Circuit affirmed an earlier decision by the district court and held that Ms. Garcia lacked a copyright interest in her 5-second performance, stating that “a weak copyright claim cannot justify censorship in the guise of authorship.”[5]
  1. “Unauthorized” blog post. In 2013, student journalist Oliver Hotham reached out to Straight Pride UK, asking if he could send some questions for more information on the organization. The questions and corresponding answers were posted to Mr. Hotham’s WordPress blog and included comments from Nick Steiner, Straight Pride UK’s press officer, urging individuals to come out as straight and speaking of the need to raise awareness of heterosexuality and traditional lifestyles and relationships. On the same day the post was made, Mr. Hotham received a DMCA takedown notice. Mr. Hotham refused to remove the material from his blog and filed a counter-claim. Following legal action, Automattic, the company responsible for operating WordPress.com, was granted a motion for default judgement on their claim against Mr. Steiner for misrepresentation in filing a DMCA notice (17 USC 512(f)). [6] Automattic was awarded $25,084 in damages.
  1. Revenge porn. The emergence of revenge porn has also raised some questions around the role of copyright in removing online content. Typical revenge porn cases involve the nonconsensual public distribution of sexually explicit photos or videos, often released by a victim’s ex-partner. A majority of these videos and images are taken by the victims themselves.[7] While some states have passed revenge law legislation or currently have laws in place broad enough to encompass revenge porn, many states leave victims with fewer legal options. Victims of revenge porn have pursued tort claims, including harassment, stalking, and invasion of privacy, but because most uploaded photos are taken by the victim themselves, a claim of copyright infringement has been suggested as an attractive option to facilitate the takedown of the material.

In situations where copyright is asserted to censor in order to achieve a positive societal result, is it enough that the ends justify the means? Or should these issues be viewed solely through the lens of the purpose of copyright law; to promote the progress of science and the useful arts? These types of issues will continue to arise as courts are asked to define the line between allowing copyright owners to exercise their legal rights and allowing copyright owners to use their legal interests to censor otherwise lawful conduct.

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By Maria Scheid, Rights Management Specialist at the Copyright Resources Center, The Ohio State University Libraries

[1] Google Transparency Report. Requests to remove content: Due to copyright. Available at: https://www.google.com/transparencyreport/removals/copyright/ (last updated July 8, 2015).

[2] U.S. Constitution, Art. 1, Sec. 8, cl. 8.

[3] Compare the emphasis the European Union places on privacy versus the United States’ emphasis on the public’s right to know. In 2014, the Court of Justice for the European Union ruled that under the 1995 Data Protection Directive, individuals have a right to be forgotten under certain circumstances. Individuals may exercise this right by asking search engines (including U.S. search engines with a branch or subsidiary in an EU Member State) to remove inaccurate, inadequate, irrelevant, or excessive personal information. The court ruled, however, that the right to be forgotten would be balanced against the freedom of the media and the freedom of expression. Individuals have since exercised this right to be forgotten, requesting Google to remove links to revenge porn. See The Economist (Oct. 4, 2014). The right to be forgotten: Drawing the line. Retrieved from http://www.economist.com/news/international/21621804-google-grapples-consequences-controversial-ruling-boundary-between.

[4] Katz v. Chevaldina, 12-22211-CIV-KING/MCALILEY, 2014 U.S. Dist. LEXIS 88085 (S.D. Fla. 2014).

[5] Cindy Lee Garcia v. Google, Inc., D.C. No. 2:12-cv-08315-MWF-VBK (9th Cir. 2015) (en banc).

[6] Automattic, Inc., et. Al., v. Nick Steiner, 2014 U.S. Dist. LEXIS 182295 (N.D. Cal., Oct. 6, 2014).

[7] Cyber Civil Rights Initiative (Sept. 10, 2013). Proposed CA Bill Would Fail to Protect up to 80% of Revenge Porn Victims [Press release]. Retrieved from http://www.cybercivilrights.org/press_releases.

 

Judge Chin grants summary judgment in Authors Guild v Google case.

Summary judgment was granted in favor of Google in the Authors Guild v. Google case. This case has been in litigation since 2005. There have been several attempts at settlement to no avail. Judge Denny Chin outlines his thoughts on Google’s reliance on Fair Use and granted a motion for summary judgment (which means the case has been dismissed) in Google’s favor!  The Authors Guild may still appeal the decision, but for now let’s enjoy this victory! Please read the attached decision. Look for more posts soon.

Many Thanks to Peter Hirtle for sending out the decision!

Authors Guild v Google – Summary Judgment Decision

The First Sale Doctrine and the Sale of Digital Goods in Light of Kirtsaeng and ReDigi, Inc.

Under the first sale doctrine (17 U.S.C. § 109) an owner of a particular lawfully made physical copy or phonorecord of a copyrighted work can generally lend, resell, or dispose of the item without permission from the copyright holder.* The first sale doctrine doesn’t mean that you can reproduce the work, create derivative works, or publicly perform the work, but it does mean that you can resell that textbook you bought on  Amazon or sell your old DVDs or CDs to a used bookstore or through eBay. Two recent decisions have attempted to clarify the scope of the first sale doctrine: Kirtsaeng v. John Wiley & Sons, Inc. and Capitol Records, LLC v. ReDigi, Inc.

In the Kirtsaeng case, Supap Kirtsaeng purchased foreign editions of textbooks in Thailand, shipped them to the United States, and then resold the books for profit.  The Supreme Court held that the first sale doctrine would apply in this case, as the doctrine extends to copies of a copyrighted work lawfully made abroad.

Previously, we discussed the importance of this ruling for libraries. It is important to note, the Court’s decision in Kirtsaeng is limited to the sale of tangible or physical items. In our advancing technological world, questions remain in how far the first sale doctrine extends to the sale of digital goods. In other words, can a consumer resell songs purchased on iTunes or eBooks they have downloaded to their Kindle?

Traditionally the purchase of digital goods has operated under a license agreement, meaning that consumers do not own the works they purchase. Without lawful ownership of the goods, a consumer does not have the right to resell that good. But recently, some companies have devised a way to resell digital goods. In these instances, the seller of the digital good loses their access to the content once another individual has bought the good. A recent case, Capitol Records, LLC v. ReDigi, Inc., has given us a preliminary look into how courts may handle this digital goods question.

ReDigi is a cloud service that allows users to resell pre-owned digital music files, in the same way a person may sell an old textbook through Amazon’s Marketplace or an old CD through a used record store. Once ReDigi has verified that the digital file is legally eligible for resale (meaning that the user purchased the song legitimately from iTunes), the digital file is pulled from the user’s computer onto ReDigi’s cloud server. From there other users may purchase and download the “used” music file.

Capitol Records brought suit against ReDigi on the grounds of copyright infringement. The United States District Court for the Southern District of New York held that ReDigi’s website infringed Capitol Record’s rights of reproduction and distribution, and that the distribution of the digital music files was not covered by the first sale doctrine. The court reasoned that the process of creating a copy of the work on ReDigi’s cloud server was an unauthorized reproduction (the first sale doctrine applies only to lawfully made copies that are distributed, not reproduced) and that because an additional copy was made for the server, users did not distribute or sell the particular copy that they had originally purchased.

Lawyers for ReDigi have indicated that they plan to appeal, and it is unclear how many other courts will adopt the reasoning of the United States District Court for the Southern District of New York.

For future cases involving digital goods, it is possible that a court may draw a distinction between digital goods and physical goods for purposes of the first sale doctrine, given the differences between the two. Digital copies can be copied and resold an infinite amount of times, and they can be resold in the exact same condition as an original purchase. In other words, it is not the same situation of buying a used (and worn) copy of a work; it is as if you are buying the work brand new. And because the copy is essentially the same, the market for the original good may suffer due to consumers wishing to purchase cheaper “used” goods instead of identical “new” goods.

A court may also distinguish between digital and physical goods based on how the sale occurs, as the district court did in ReDigi. With physical goods you have a physical transfer or distribution. With digital goods, an exact digital copy is made of the work, which can be considered an unlawful reproduction of the work rather than a sale. Any subsequent distribution would be of the (unlawfully reproduced) copy of the particular copy the user was looking to sell. As mentioned above, an individual cannot use the first sale doctrine as a shield to reproduce a copyrighted work without the copyright owner’s permission or to sell any other copy besides the particular lawfully made copy. So, for example, an individual could sell their digital music files by selling the iPod or hard drive on which those files were stored, but could not make copies of those songs and then sell those copies (which is how the court determined the technology worked in the ReDigi case).

On the other hand, the Supreme Court’s decision in Kirtsaeng is particularly important because it reaffirms the basic notion that one has physical ownership of the things that you buy. A court may hold this broad rationale to be equally applicable to digital goods, meaning consumers should be able to resell their digital goods under the protection of the first sale doctrine. In this sense we are simply talking about the digital equivalent of selling an old book or CD, as the original owner of the digital file no longer retains access to the work after selling it, and any incidental copies made in the process may be covered under a fair use defense.

As consumption of digital goods increases and companies pursue secondary market opportunities for digital goods (Amazon has secured a patent for a digital resale marketplace for objects such as ebooks and apps), the scope of the first sale doctrine must become better defined. Whether this will be done through the courts, or Congress, is yet to be determined.

* There is a special exception for sound recordings of musical works and computer programs. Under § 109, owners of these copies of works cannot rent, lease, or lend the work, unless it is being done by a nonprofit library or nonprofit educational institution. There are also exceptions to this exception, which can be found in § 109(b).

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Maria Scheid is a legal intern at the Copyright Resources Center at OSU Libraries and is currently a student at The Ohio State University Moritz College of Law.

Recent Supreme Court decision has impact on America’s libraries.

On March 19, 2013, the U.S. Supreme Court handed down a decision that could have had a number of disastrous outcomes for libraries.

Kirtsaeng v. Wiley involved a graduate student from Thailand named Supap Kirtsaeng who bought cheap textbooks abroad and resold them in the U.S. John Wiley and Sons sued Kirtsaeng for copyright infringement, claiming that he did not have the right to import and then resell these cheaper copies that they created specifically for sale in markets that cannot afford the higher prices of the American market. Kirtsaeng argued that he was protected under Section 109 of the Copyright Act, known as the First Sale Doctrine.

The principle of first sale states that if you have acquired a lawfully made copy of a copyrighted work then you can dispose of that copy however you want. You can lend it to a friend, resell it, donate it to the library, or even throw it in the trash. It is first sale that allows libraries to lend the materials in their collections without having to ask for or pay rights holders for permission.

In the Kirtsaeng case, the question came down to whether or not first sale applies to copies of works that are made by the rights owner but are produced outside of the U.S. Wiley and two lower courts claimed that it does not. Fortunately for libraries, the Supreme Court reversed the lower courts’ decisions in a 6-3 ruling that states that first sale does apply to any legally made copy of a work, regardless of where it was made.

How does the decision affect libraries? Let’s consider a number of ways this decision could have hurt OSU Libraries, and other academic and research libraries, if the Supreme Court had upheld the lower court decisions. First, OSU Libraries has a number of foreign language collections, including Chinese, East European and Slavic Studies, and Japanese. Many of the works in these collections were originally published in foreign countries. If first sale does not apply to these works, OSU Libraries would have to make a tough decision. Do we try to get permission from all of the rights holders or do we stop allowing access to the collections? Trying to track down all rights owners could be impossible and impractical, especially for older works whose creators may be deceased and whose heirs may be unknown. Additionally, the potential cost of licensing permission from hundreds, or maybe thousands, of rights owners would be cost prohibitive. Ultimately OSU Libraries would have to deny access to a large number of works in order to avoid copyright infringement.

While foreign language collections are the most obvious group of foreign made works in the library, OSUL and other libraries also collect a large number of English language materials that are actually made abroad. Jonathan Band and Jonathan Gerafi recently reported that a majority of general publishers, academic publishers and record labels are owned by foreign companies. Many of their works are made in Europe. If the Supreme Court ruled that the first sale doctrine did not apply to works made abroad, this would mean that even many of the English language works in the OSU Libraries’ collections could not be legally shared without permission from the copyright owners. Compounding this problem is the fact that most American companies now outsource the actual printing of books or making of CDs and DVDs to countries where labor costs are much cheaper. It would be almost impossible for a library to know where a work was actually created. All of this would have been highly detrimental to libraries.

The Supreme Court was aware of the potential impact to libraries when making its ruling. The Library Copyright Alliance (LCA) submitted an amicus brief to the Supreme Court that spelled out all of these potential problems if first sale doesn’t apply to foreign made copies. Justice Breyer, who wrote the Court’s majority opinion in this case, specifically referenced the LCA’s brief as a factor in the decision.

The decision in this case is great for libraries. It means that we can continue to pursue our primary function of providing access to the information that we hold in our collections. Libraries have worked under the belief that all works that we collect, whether made in the U.S. or abroad, can be legally shared with our patrons. This decision reinforces that interpretation of the law.

For more analysis of the case, please read Kenneth Crews’ blog. For a more in depth look at how the case affects libraries, and the future possible reactions from publishers and Congress, read the issue brief released by the Library Copyright Alliance.

Georgia State, A Brief Overview

Georgia State, In Brief:
Almost a year after the trial ended in Cambridge University Press, et al v. Becker, et al (more commonly referred to as the Georgia State case), we have received a judgment from Federal Judge Orinda Evans. The issue at stake was the placement of materials, still under copyright, on Georgia State University’s (GSU) e-reserves/course management system. The Plaintiffs, included Cambridge, Oxford University Press and Sage Publications, brought suit alleging copyright infringement and Georgia State responded that the use was fair under United States Copyright Law. The case experienced many twists and turns, but a decision finally came out on May 11, 2012.

Judge Evans’ 350 page decision shows a painstakingly thorough analysis. I do not want to rehash any of the insights provided in very well written entries that have appeared online over the last week or so – please see the ARL’s Issue Brief by Brandon Butler, and blogs by Kevin Smith and James Grimmelman. What I would like to do is talk about the highlights/interesting findings and to try to answer the “ok, now what?” questions.

Interesting findings for Libraries:

  • Judge Evans found GSU’s 2009 Copyright Policy to be a good faith effort to comply with U.S. Copyright law. She did reveal come criticism in the lack of stated allowable percentages that complied with the Fair Use standard.
  • Of the 74 instances of alleged infringement submitted for review, Judge Evans only found infringement in 5 (or 6% of cases were found to be infringing uses).
  • Under her application of Fair Use, she found that:

On Factors 1 and 2 (purpose and character of the use and the nature of the copyrighted work), libraries will prevail almost every time

On Factor 3 (amount and substantiality of the portion used)- she stated libraries will prevail if “where a book is not divided into chapters or contains fewer than ten chapters, unpaid copying of no more than 10% of the pages in the book is permissible…” (P.88). If the book is over ten chapters then no more than one chapter is permissible. On Repeated use- the court rejected the notion that professors cannot use the same unlicensed material from semester to semester.

On Factor 4 (effect on use on the potential market)- this factor favors content producers, but if no reasonably priced or readily available version (exactly what is being assigned) exists libraries can prevail/their ability to rely on fair use increases

  • De Minimus determination – The court did not review any alleged infringement instances where it was shown that no student had opened or viewed the material. Essentially arguing that since the material was not viewed, there was no real infringement.

What does this all mean?

I’ve been asked, several times, “what, if anything, does this mean for us?” “Do we need to change anything/everything?” “Should we change our policies?”

For universities not in the 11th Circuit, where this decision came down, the ruling can be found to be persuasive but not binding for other jurisdictions. Additionally, it’s important to note that this case may be appealed. Both the plaintiffs and the defendants may present reasons to appeal the decision. The publishers may determine that they have grounds for appeal based on what they may consider erroneous legal rationale used by the Judge Evans. For GSU, the judge found infringement in five cases, so they may consider appealing to argue the point that the uses were fair in those cases as well.

There are many positive things for libraries to take away from the decision. However, as others have pointed out, Judge Evans’ suggested percentage/on chapter provision may cause more harm than good, with the creation of an artificial delineation to an area that has operated without concrete boundaries.

Regarding the question of what libraries should do now, it would be a good idea to review current policy and procedures in regards to copyright law and fair use. While a complete overhaul may not be in order, it may be a good idea to tweak and refine some policies and procedures. It will also be a good idea to conduct seminars and presentations for faculty, staff and students on copyright basics and what fair use means for them as users and creators of scholarly work.

Is there a concrete victory for libraries in this case? Arguably yes. But many issues remain that will have to be navigated, negotiated and re-negotiated. These negotiations will have to happen between and among libraries, faculty, and publishers. It remains to be seen whether or not easier days are ahead.

Some of the Copyright News That’s Fit to Print

Several people here at Ohio State have asked me what’s going on with a few copyright issues and cases that have been in the news recently.  Some of you who follow the library press and social media closely may know all about these situations, but others may be not watch for this news as closely.

Georgia State Litigation

Cambridge v. Patton, the copyright litigation that most know as the Georgia State case, began in 2008 when Cambridge University Press, Oxford University Press, and Sage Publications sued administrators at Georgia State University.  The plaintiffs alleged copyright infringement with regard to reproductions in electronic reserves and the university’s course management system.  The trial concluded recently and all the parties are waiting for a verdict.

One of the aspects of the case that has generated the most interest lately is the plaintiffs’ proposed injunction.  This injunction would require Georgia State to implement stringent controls on every faculty and staff member’s use of copyrighted materials and submit to monitoring to show that there is compliance. For a round up of various points of view on the impact and merits of the case, see the Chronicle’s What’s at Stake in the Georgia State Copyright Case.

Google Book Search Settlement

In March, a judge rejected a proposed settlement of the class action lawsuit that publishers and authors brought against Google for the digitization and display of books as part of the Google Book Search project.  Since the rejection, the parties have been attempting to reach an alternative settlement with an opt-in arrangement.  Most recently, they appeared before a judge and asked for more time.  There is another status conference on July 19.

In the Meantime…

…After a lengthy process to try to identify and contact each book’s rights holder, the University of Michigan will start making digitized copies of orphan works available to members of the UM community.   Orphan works are works that are still in copyright, but the rights holder is now unknown or unavailable.

YouTube Changes Its Copyright Policy

YouTube has changed its copyright policy.  It has kept its “three strikes and you’re out” rule for copyright violations, but they may soften the policy when the infringer has a subsequent history of good behavior, has completed a quiz on copyright, and has watched YouTube’s copyright education video.

The video is troubling, particularly because the main character is a pirate with a hook for a right hand and a skull and crossbones hat.  In addition, the video portrays fair use as a complicated and ominous doctrine which almost crushes the main character beneath its weight.

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