Patent Office Director Michelle Lee resigns — Unexpected news this week, as Undersecretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office Michelle Lee tendered her resignation effective immediately. No reason has been given for the decision. In her place, U.S. Secretary of Commerce Wilbur Ross has named PTO Associate Solicitor Joseph Matal as Acting Director.

Don’t let the perfect be the enemy of the good on Copyright Office reform — Kristian Stout explains, “In any event, it seems perfectly sensible to address the Register selection process before tackling the other issues, which may require more detailed discussions of policy and cost. And with the Copyright Office currently lacking a permanent Register and discussions underway about finding a new one, addressing any changes Congress deems necessary in the selection process seems like the most pressing issue, if they are to be resolved prior to the next pick being made.”

Disney, VidAngel Weigh Family-Friendly Filtering Against Copyright Protection in the 9th Circuit — On Thursday, a Ninth Circuit panel heard oral arguments in Disney v VidAngel, a case involving an unlicensed on-demand streaming service’s defenses. This past December, a District Court rejected those defenses and granted the plaintiff film studios’ motion for a preliminary injunction.

Copyright Office Launches Online Database of Review Board Decisions — After the Copyright Office rejects an application to register a copyright, the claimant has an opportunity to appeal the decision. Now, the Office has made the written decisions of those reviews publicly available on its web site for the first time.

Afghanistan considers copyright treaty after Mason legal clinic advocates for filmmaker — “When Stephanie Semler volunteered to work for the Arts and Entertainment Advocacy Clinic at George Mason University’s Antonin Scalia Law School, she had no way of knowing that she would be attempting to encourage a country to join a major international treaty. Semler prepared the groundwork for an effort to encourage the government of Afghanistan to join the Berne Convention, a global copyright agreement created in 1887. Thanks to her legal research and the determined diligence of the client, Virginia-based filmmaker Shabnam Humphrey, it could happen.”

Stranger Things VFX Supervisor on Making Monster Mayhem — “What made Stranger Things possible was also the skill and commitment of the effects team. The Duffer Brothers relied on as many practical effects as they could to make the main monster, the demogorgon, and the parallel universe it inhabits, the Upside Down. Yet what the brothers found was their visual effects team, led by supervisor Marc Kolbe, could let them dream bigger than they initially imagined.”

Spotify Settles Class Action Lawsuits Filed By David Lowery and Melissa Ferrick With $43.4 Million Fund — Rob Levine reports on the settlement between the songwriters and the popular music streaming service over allegations that it had not licensed mechanical rights for compositions. Says Levine, “Beyond past and future compensation, the settlement agreement outlines a process by which Spotify and the class counsel ‘will work collaboratively to improve the gathering and collecting of information about composition owners to help ensure those owners are paid their royalties in the future,’ according to the plaintiffs’ motion.”

Miranda Mulholland lays bare the reality for creators in the digital age at the Economic Club of Canada — “On May 24, Miranda Mulholland became the first musician to deliver a keynote address to the Economic Club of Canada. Her speech, titled ‘Redefining Success in a Digital Marketplace,’ drew on her years of experience as a musician, label owner and entrepreneur to shed light on the reality artists face in the digital age. In her speech, she also identified actions that government, the music industry and music fans can take to help bring balance to the world in which creators live.”

Copyright Office Releases an Updated Draft of the Compendium of U.S. Copyright Office Practices, Third Edition — The Compendium is the Copyright Office’s administrative manual and provides attorneys, copyright owners, and creators a comprehensive guide to registering their works. This week, the Copyright Office released a draft of an updated version that clarifies a number of policies and takes into account recently changed Office regulations.

Speech by Vice-President Ansip at the “Meet the Authors” conference — “Investments made by creators, artists, performers and creative industries should be properly recognised and rewarded. It is not right for the revenues that flow from their work to end up disproportionately with a few large players who may not themselves be involved in content creation – but who do make money off the back of it. Otherwise, we risk a situation where there is less creation, less diversity and less quality. Why? Because there would be less incentive for creators to invest in producing creative content in the first place.”

Instagram DMCA case over removal of copyright notice moves forward — Evan Brown reports on a recent decision in Gattoni v Tibi, an interesting case currently in the Southern District Court of New York. There, the court dismissed a claim for copyright infringement, holding that a registration certificate is required before filing suit, rather than just an application to register (an issue that the Second Circuit has not weighed in on yet but that has split other Circuit Courts). However, the court did not dismiss a claim for unauthorized removal of Copyright Management Information, allowing that claim to proceed.

BASCA Chair Crispin Hunt: ‘Rules Won’t Break the Internet, They’ll Mend It’ — “YouTube and Facebook were squarely in the sights of Crispin Hunt, chairman of the British Academy of Songwriters, Composers and Authors (BASCA), as he delivered the opening address at yesterday’s Ivor Novello Awards in London.”

The Copyright Office is on a Rulemaking Roll — Copyright Office General Counsel Sy Damle gives a rundown on the rulemaking efforts of the Office—seven final rules and six proposed rules so far this fiscal year. As Damle explains, the rulemaking is part of “a years-long effort by the Copyright Office to establish more efficient business processes, and helps set the stage for our continued goal of Office modernization.”

Moving the U.S. Copyright Office Into the Digital Age — …but updated rules only lay the groundwork for Copyright Office modernization. The Global Intellectual Property Center looks at recent legislative efforts to ensure that the Office has the necessary autonomy over its IT, budget, and staffing to bring its services into the 21st century.

Time for the truth to interfere with the copyright battle in Australia — Kate Haddock, of the Australian Copyright Council, responds to recent claims by Wikipedia that the online encyclopedia cannot legally operate in Australia under its current copyright law.

Heeding Criticism from Many Corners, ALI Pulls Liability Insurance Restatement Before Membership Vote — Glenn Lammi of the Washington Legal Foundation writes, ” If ALI believes that an area of law should evolve in a direction different from what courts in the US have been applying, it commissions a “Principles Project,” which is explicitly aspirational, rather than a summation—along the lines of a glorified law review article. Restatements, on the other hand, are meant to simply restate. With projects like the Restatement of the Law, Copyright (which we criticized in a 2015 WLF Legal Pulse post) and now the liability insurance Restatement, the organization has been blurring the line between restating and revising.”

Broadcasters Settle Copyright Dispute With FilmOn — Thus bringing to an end the dispute over whether services retransmitting broadcast television over the internet can avoid negotiating with broadcasters and instead take advantage of the Copyright Act’s §111 cable compulsory license. The settlement means the pending appeals in the DC and 7th Circuits are dismissed. In both circuits, the lower courts had held in favor of the broadcasters. The Ninth Circuit earlier this year reversed a lower court decision that held in favor of FilmOn. Add to that the Second Circuit’s 2012 WPIX v ivi decision holding the same, and you have as close to a clean sweep as you might get.

ReDigi, Key Digital ‘First Sale’ Case, Heating up on Appeal — ReDigi is back on the menu, with amicus briefs in support of Capitol Records being filed last Friday. Here, PublishersWeekly takes a look at the arguments advanced by Association of American Publishers. Law360 covers a joint brief from RIAA and MPAA. My organization also filed a brief.

The (First) Register of Copyrights and the Drafting of the 1909 Copyright Act — More historical goodness from Zvi Rosen, tracing the immediate active role that the first Register of Copyrights, Thorvald Solberg, took in making a mark on copyright law.

How the internet financially kills musicians and other artists — Over at Washington Post, New America Fellow Emily Parker reviews Jonathan Taplin’s new book, Move Fast and Break Things. She writes, “Many hoped that the Internet would have a democratizing and decentralizing effect. Instead, Taplin argues, power became concentrated in a small number of digital giants, such as Amazon, Facebook and Google. This ‘winner take all’ scenario also applies to artists. People may be consuming more content than ever, but most creators aren’t reaping the gains.”

The two kinds of title pages — Did you ever notice that many books have two title pages? Here’s why.

NO, Kodi Users Are Not Risking Ten Years in Prison — Torrentfreak dives into some fact-checking over a provision in the UK’s new Digital Economy Bill. “To fall foul of the new law a user would need to communicate a copyrighted work to the public. In piracy terms that means ‘uploading’ and people streaming content via Kodi do nothing of the sort. The Digital Economy Act offers no remedy to deal with users streaming content – period – but let’s not allow the facts to get in the way of a click-inducing headline.”

In Defense of an Inclusive IP Conversation — CPIP’s Kevin Madigan discusses the recent Robert Merges article responding to Mark Lemley’s “Faith-based IP” article. Madigan writes, “Merges points out that by relegating all non-empirical theories into a single, derogatory category, and raising his preferred empirical/utilitarian theory to a ‘true path to enlightenment’ status, Lemley commits the fatal error of promoting an exclusive approach to scholarly discourse. Lemley’s argument has roots in the works of Oliver Wendell Holmes and Richard Posner, who dismissed non-empirical foundations as incapable of being influenced by reason. But Merges repeats that he is ‘not rejecting empirical evidence of all kinds, but expressing honest doubts about the adequacy of the available evidence,’ and that Lemley’s mischaracterization of this skepticism is ‘more in the way of propaganda than scholarship.'”

The Latest “Twist” for the “Dancing Baby”: It’s Broke…But Don’t Fix It! — Stephen Carlisle writes, “The latest twist in the never ending saga of the “Dancing Baby” case hit the dance floor on May 5, 2017. On that date, the U.S. Solicitor General responded to the Supreme Court of the United States’ request last October for guidance on whether it should take up the case of Lenz v. Universal Music Group…. The brief itself is a bit of a shock. It contends that not only did the 9th Circuit get it wrong, but everybody got it wrong. On top of that, not only did everyone get it spectacularly wrong, but the SCOTUS should not fix it by taking up the case.” Also check out David Newhoff’s take on the brief at Illusion of More.

The MP3 Is Officially Dead, According To Its Creators — NPR has an interesting look at the compressed audio format, which played a starring role in the early days of online piracy, but has since been overtaken by more advanced formats. “And it’s not just that more efficient and complete ways of storing music have been developed. There was a deeper problem. The engineers who developed the MP3 were working with incomplete information about how our brains process sonic information, and so the MP3 itself was working on false assumptions about how holistically we hear.”

The Intellectual Property Treaty Landscape in Africa, 1885 to 2015 — “This paper maps the 130-year history of the global international IP treaty landscape governing the protection of, and access to, knowledge in Africa. Our approach looks to the past and present in order to build a rich context for policymakers looking to the future. This approach offers a preliminary overview of the opportunities for IP policy innovation in each country, and the continent as a whole.”

The United States is somewhat of an outlier among nations in that the US Copyright Office is located within the Library of Congress. In many countries, the agency charged with copyright governance is located within a cultural agency, while others place it within a unified intellectual property agency.

This uncommon arrangement has been brought into focus recently with the passing of H.R. 1695, the Register of Copyrights Selection and Accountability Act, in the House on April 26 by a vote of 378-48 (an identical bill, S. 1010, was introduced in the Senate May 2). The bill would make the head of the Copyright Office, currently appointed solely by the Librarian of Congress, appointed by the President with the Advice and Consent of the Senate. House Judiciary Committee Chairman Goodlatte described it as the first step toward overall modernization of the Copyright Office and is being considered separately given the current lack of a permanent Register. 1A little over four years ago, then Register of Copyrights Maria Pallante testified to Congress about the need for a wholesale review of the Copyright Act. As part of that review, she said “evolving the Copyright Office should be a major goal of the next great copyright act. In short, it is difficult to see how a 21st century copyright law could function well without a 21st century agency.” Pallante expanded on her thoughts during the annual Meyer Lecture later that year, giving a talk on the Next Generation Copyright Office: What it and What it Means. The public record developed considerably since then, with Congress turning its attention to it several times. The House Judiciary Committee devoted an entire hearing to the Copyright Office’s functions and resources in February 2015 and most of the hearing on the Register’s Perspective on Copyright Review in April that same year, but it was also discussed by the House IP Subcommittee in September 2014, the House Administration Committee in December 2015, and budget hearings in the House and Senate Legislative Branch Appropriations Subcommittees in early 2015. Representatives Marino (R-PA) and Chu (D-CA) introduced a discussion draft of the Copyright Office for the Digital Economy Act (CODE Act) in June 2015. The bill provided for Copyright Office autonomy over its IT, staff, and budget, and included elevating the Register to a Presidential appointee confirmed by the Senate. The bill was formally introduced in the 114th Congress in December 2015 and reintroduced in the 115th Congress this past February. House Judiciary Committee Chairman Goodlatte and Ranking Member Conyers released a policy proposal on Copyright Office modernization in December 2016 for public comment. The proposal outlined an approach similar to the one taken in the CODE Act, including making the Register a Presidential Appointee. The Senate Judiciary Committee indicated that it was also working on draft legislation to address Copyright Office modernization.

In support of the bill, many have referred to the Copyright Office’s location within the Library of Congress as an accident of history. But I wanted to look more closely at the process that led to the present situation and see what, if any, conclusions we could draw as to Congress’s motivation regarding this historical accident.

Legislative History

As recounted elsewhere, the Office’s creation within the Library of Congress is the result of efforts by former Librarian Ainsworth Spofford beginning in the 1870s to centralize copyright deposits within the Library—the idea was to use these deposit copies, required under the current copyright act to perfect title to copyright, to build the Library’s collections for free. He got his wishes, but the plan worked a little too well. Within two years, Spofford was raising concerns about the “large amount of clerical labor” involved in maintaining the copyright department and how quickly the deposits were taking up the available space for the Library.3Annual Report of the Librarian of Congress, year ended December 1, 1872, pp. 6-7.

A big part of the problem was lack of space—the Library at that time was housed in the US Capitol building, which was starting to burst at its seams. Congress approved construction of a new building to house the Library in 1886, which would take eleven years to complete. As the construction of the building, which is today named the Thomas Jefferson Building, neared completion, it appears that Congress became sufficiently interested in reassessing the issue of Library management.

In anticipation of the new building, Congress instructed Spofford to report on the complete reorganization of the Library. Spofford provided a special report in response on December 3, 1895 to the Committee on the Library. In it, Spofford called for “The appointment of a suitably qualified register of copyrights, who should be a bonded officer, to have charge of the entire business of copyrights and of the clerical force employed therein.”

Beginning shortly afterward, a number of bills focusing on the “business of copyrights” were introduced. Vermont Senator Justin Morrill introduced S. 425 on December 5, 1895,228 Cong. Rec. 41 (Dec. 5, 1895). and Alabama Representative John Bankhead introduced H.R. 1243 five days later.428 Cong. Rec. 134 (Dec. 10, 1895). Both bills would create a Register of Copyrights to be appointed by the Joint Committee on the Library, a Congressional committee made of both Representatives and Senators that supervised the operation of the Library.

Rep. William Treloar, a one-term Missouri representative and songwriter, introduced his own bill February 13, 1896 with marked similarities to H.R. 1695. His bill, H.R. 5976, would have, among other things, created the position of “commissioner of copyrights, to be appointed by the President and confirmed by the Senate, who shall, under the supervision of the Joint Committee on the Library, perform all the duties relating to copyrights which have heretofore by law been imposed upon the Library of Congress.”

Morrill’s bill was reported by the Committee on the Library on February 20, 1896.528 Cong. Rec. 1959. The House of Representatives Committee on Patents held a hearing March 19 that included discussion of Treloar’s bill, but the bill would not move any further forward.

Morrill’s bill would, however. S. 425 was reported by the Committee on the Library on February 20, 1896.628 Cong. Rec. 1959. On May 8 that year, the bill was brought up on the floor of the Senate. It was passed over because, as Senator Cockrell said, “It will lead to discussion.”728 Cong. Rec. 4695.

It would indeed.

Robust discussion began when the bill was attached to a conference report on an omnibus appropriations bill (H.R. 9643) regarding the constitutionality of the Register’s appointment by a Congressional committee.8See 29 Cong. Rec. 316 (Dec. 19, 1896) (remarks of Mr. Quigg). The discussion continued when, on May 21, 1896, the Senate took up the conference report.9See 28 Cong. Rec. 5496-5507 (May 21, 1896). The bill and its Constitutional issues were discussed again in the House at the end of December right before the Christmas recess, but without resolving the issue.1029 Cong. Rec. 314-319 (Dec. 19, 1896).

Something changed over the recess. On January 20, 1897, an amendment was offered in the Senate by the Appropriations Committee that would make the Librarian a Presidential appointee with the authority to appoint the Register of Copyrights. The Senate agreed to the amendment.1129 Cong. Rec. 975 (Jan. 20, 1897).

A conference report was agreed to by the Senate on February 15,12See 29 Cong. Rec. 1832-33. and the House two days later.13See 29 Cong. Rec. 1945-47 (Feb. 17, 1897). After another two days, the appropriations bill was enacted into law.14Act of February 19, 1897, 54th Cong., 2d Sess., 29 Stat. 545.

A look at the discussions surrounding this legislative process reveals a number of conclusions.

The distinct missions of the Library and Copyright Office

First, the general sense of those most directly involved in creating the Copyright Office was that its function was distinct from the Library of Congress and its placement within was merely a matter of happenstance. This view was expressed (perhaps surprisingly) by the man responsible for bringing “the copyright business” within the Library in the first place—Spofford.

In his special report to Congress discussed above, Spofford noted that “The Librarian is charged by law with two wholly distinct functions—one as Librarian of Congress, the other as register of copyrights.” After describing in detail these functions, Spofford reported:

Six months ago he suggested to the accounting officers of the Treasury Department his purpose to urge upon the attention of Congress the importance of separating the functions of register of copyrights from those of the Librarian of Congress, with a view to promptitude and efficiency of service. The same recommendation is made in the annual report of the Auditor, and is enforced by many considerations of much weight. The appointment of a suitably qualified register of copyrights, who should be a bonded officer, to have charge of the entire business of copyrights and of the clerical force employed therein, would relieve the Librarian of an immense bureau of detail, and enable him to devote his energies to the tasks immediately belonging to Library interests.

Spofford wanted nothing to do with the copyright business. Congressional records reveal that in 1896, “Mr. Spofford told the joint committee that he had repeatedly asked to be relieved from the control of this copyright business. It interfered with his duties as a librarian. He urged the joint committee in drawing up its bill to see to it that the Librarian was relieved from all copyright duties.”1529 Cong. Rec. 385 (Dec. 21, 1896) (remarks of Mr. Cummings).

Spofford also appeared to support a Presidentially appointed Register of Copyrights, such as the one proposed by Treloar in his bill. The House of Representatives Committee on Patents held a hearing on the bill March 19. Appearing before the Committee was Alexander Browne, on behalf of the Music Publishers’ Association of the United States. Browne noted that the proposed commissioner of copyrights was supported by Spofford. 16Treloar himself noted in a letter after introduction of the bill that the “creation and maintenance of a Copyright Department…has the approval of…the Librarian of Congress.” Letter from Representative William M. Treloar, to J.N. Johnson, Esq., Sec’y, Am. Copyright League (Feb. 20, 1896), as quoted in Zvi Rosen, “The Twilight of the Opera Pirates: A Prehistory of the Right of Public Performance for Musical Compositions,” 24 Cardozo Arts & Entertainment Law Journal, 1157, 1180 (2007). He remarked,

Mr. Treloar’s bill begins with a proposed enactment, represented in the title and the first seven sections, of a separate department, under the charge of a Commissioner of Copyrights. I was very glad to hear Mr. Spofford favor that. We know the difficulties that Mr. Spofford has labored under for many years; and all I need say on that subject is that my clients, all of them, heartily indorse that measure and the form in which it is presented.

The bill advanced no further, largely because of opposition to other substantive provisions in the bill unrelated to the Copyright Office.17See Rosen, above. One contemporary account noted these controversies but said of the Copyright Office proposal just that it would “be dealt with more effectively in a separate bill.” Scientific American, “A New Copyright Bill“, pg 179 (March 21, 1896).

Senate Committee on Patents Chairman Platt made the same point during Congressional proceedings, saying,

This man [the register of copyrights], too, is pretty far removed from the Library. It is only by a very thin, elastic, and well-stretched cord that he is connected with the Library at all. The duties of this person regarding copyrights are taken entirely away from the Librarian, and so far as he is register of copyrights, he has no connection with the Library. 1828 Cong. Rec. 5496-97.

Constitutional Questions

Far and away the biggest debate over the formation of the Copyright Office had to do with Constitutional questions arising over who could appoint the register of copyrights (though these discussions ran parallel with similar discussions over appointment of the Librarian of Congress).

The disagreement hinged primarily on the characterization of the register. Supporters of appointment by the Joint Committee argued that the Library was a Congressional body, and Congress absolutely had the authority to select and appoint its own employees and officers. Opponents of that process argued that a register of copyrights would be a legal or executive official, meaning appointment was dictated by the Constitution’s Appointments Clause. 19U.S. Constitution, Article 2, Section 2 states the President “shall nominate, and by and with the advice and consent of the Senate, shall appoint ambassadors, other public ministers and consuls, judges of the Supreme Court, and all other officers of the United States, whose appointments are not herein otherwise provided for, and which shall be established by law: but the Congress may by law vest the appointment of such inferior officers, as they think proper, in the President alone, in the courts of law, or in the heads of departments.”

New York representative Lemuel Quigg, active in many of these discussions on the House floor, was perhaps not exaggerating when he remarked, “During the last four months I have had the question addressed to me, I think, a little over ten thousand times as to who had the power to make appointments in the Library.” 2030 Cong. Rec. 1945.

Interestingly, the American Library Association reported on the Constitutional debate in its publication, The Library Journal, and said

[Appointment of the register by the Joint Committee on the Library] was finally declared unconstitutional. But as neither house could bring themselves to abdicate the control of copyright, which had come under their control solely through its being jumbled into the duties of the librarian of Congress, and as no motion prevailed to put the appointment where it properly belongs, in the hands of the President, the register of copyrights was finally dropped altogether.

Senator Platt said on the Senate floor, “It is of the highest importance that the person who has charge of copyright matters shall be an officer of the Government.”2128 Cong. Rec. 5496. This is the view that prevailed.

Delaware Senator George Gray gave a compelling argument in favor of this approach on the Senate floor:

This officer which this provision of law seeks to create and appoint is an officer who has nothing to do, so far as this function is concerned, with the administration of the duties of either House or of both Houses jointly. He does not perform any functions necessary to the organization of the House, to its convenience, or to its proper duties. We have created an office here in order to fulfill an intent of the Constitution, to provide for the protection of authors and inventors.

***

The issuance of a copyright has no more to do with the establishment of a library or the convenience of either House of Congress than the issuance of a patent—not a particle. The mere fact that the copyright law requires two copies of each copyrighted publication to be deposited with the Librarian can not confer the appointing power. 2228 Cong. Rec. 5502-5503.

Conclusion

One hundred and twenty years later, the Copyright Office still resides as a department within the Library of Congress, and the Register of Copyrights is still appointed by the Librarian. And while a lot has changed since then—technology has advanced rapidly, copyright law has grown more complex, and the core copyright industries today contribute over $1.2 trillion to U.S. GDP—as Congress reconsiders the organization and structure of the Copyright Office, some of the same questions that arose in 1897 are being asked today.

References   [ + ]

1. A little over four years ago, then Register of Copyrights Maria Pallante testified to Congress about the need for a wholesale review of the Copyright Act. As part of that review, she said “evolving the Copyright Office should be a major goal of the next great copyright act. In short, it is difficult to see how a 21st century copyright law could function well without a 21st century agency.” Pallante expanded on her thoughts during the annual Meyer Lecture later that year, giving a talk on the Next Generation Copyright Office: What it and What it Means. The public record developed considerably since then, with Congress turning its attention to it several times. The House Judiciary Committee devoted an entire hearing to the Copyright Office’s functions and resources in February 2015 and most of the hearing on the Register’s Perspective on Copyright Review in April that same year, but it was also discussed by the House IP Subcommittee in September 2014, the House Administration Committee in December 2015, and budget hearings in the House and Senate Legislative Branch Appropriations Subcommittees in early 2015. Representatives Marino (R-PA) and Chu (D-CA) introduced a discussion draft of the Copyright Office for the Digital Economy Act (CODE Act) in June 2015. The bill provided for Copyright Office autonomy over its IT, staff, and budget, and included elevating the Register to a Presidential appointee confirmed by the Senate. The bill was formally introduced in the 114th Congress in December 2015 and reintroduced in the 115th Congress this past February. House Judiciary Committee Chairman Goodlatte and Ranking Member Conyers released a policy proposal on Copyright Office modernization in December 2016 for public comment. The proposal outlined an approach similar to the one taken in the CODE Act, including making the Register a Presidential Appointee. The Senate Judiciary Committee indicated that it was also working on draft legislation to address Copyright Office modernization.
2. 28 Cong. Rec. 41 (Dec. 5, 1895).
3. Annual Report of the Librarian of Congress, year ended December 1, 1872, pp. 6-7.
4. 28 Cong. Rec. 134 (Dec. 10, 1895).
5. 28 Cong. Rec. 1959.
6. 28 Cong. Rec. 1959.
7. 28 Cong. Rec. 4695.
8. See 29 Cong. Rec. 316 (Dec. 19, 1896) (remarks of Mr. Quigg).
9. See 28 Cong. Rec. 5496-5507 (May 21, 1896).
10. 29 Cong. Rec. 314-319 (Dec. 19, 1896).
11. 29 Cong. Rec. 975 (Jan. 20, 1897).
12. See 29 Cong. Rec. 1832-33.
13. See 29 Cong. Rec. 1945-47 (Feb. 17, 1897).
14. Act of February 19, 1897, 54th Cong., 2d Sess., 29 Stat. 545.
15. 29 Cong. Rec. 385 (Dec. 21, 1896) (remarks of Mr. Cummings).
16. Treloar himself noted in a letter after introduction of the bill that the “creation and maintenance of a Copyright Department…has the approval of…the Librarian of Congress.” Letter from Representative William M. Treloar, to J.N. Johnson, Esq., Sec’y, Am. Copyright League (Feb. 20, 1896), as quoted in Zvi Rosen, “The Twilight of the Opera Pirates: A Prehistory of the Right of Public Performance for Musical Compositions,” 24 Cardozo Arts & Entertainment Law Journal, 1157, 1180 (2007).
17. See Rosen, above. One contemporary account noted these controversies but said of the Copyright Office proposal just that it would “be dealt with more effectively in a separate bill.” Scientific American, “A New Copyright Bill“, pg 179 (March 21, 1896).
18. 28 Cong. Rec. 5496-97.
19. U.S. Constitution, Article 2, Section 2 states the President “shall nominate, and by and with the advice and consent of the Senate, shall appoint ambassadors, other public ministers and consuls, judges of the Supreme Court, and all other officers of the United States, whose appointments are not herein otherwise provided for, and which shall be established by law: but the Congress may by law vest the appointment of such inferior officers, as they think proper, in the President alone, in the courts of law, or in the heads of departments.”
20. 30 Cong. Rec. 1945.
21. 28 Cong. Rec. 5496.
22. 28 Cong. Rec. 5502-5503.

Grassley, Feinstein, Leahy, Hatch Call for Quick Action in the Senate on Legislation to Provide Selection Process for Register of Copyrights — A bipartisan group of Senators this week introduced companian legislation to HR 1695, which passed the House last week 378-48. The bill would make the Register a Presidential appointee subject to Senate confirmation and is seen as the first step toward broader Copyright Office modernization efforts.

New CPIP Policy Brief: Open-Access Mandates and the Seductively False Promise of “Free” — A number of federal agencies require authors and publishers of scholarly articles using federally-funded data to make those articles available for free. In this brief published this week, it is argued that such open-access mandates raise serious legal, policy, and economic concerns and contradict basic principles of copyright law.

Merges on Utilitarian Justifications for IP — IP scholar Robert Merges responds to Mark Lemley’s 2015 paper Faith-based Intellectual Property, which argued that adherents of deontological justifications for intellectual property cannot take part in a true scholarly exchange.

Are rules incompatible with the web? Let’s hope not: A response to Tim Wu — Geoffrey Manne and Neil Turkewitz weigh in on a proposal to include Encrypted Media Extensions as part of the World Wide Web Consortium’s standards. The proposal would enable browsers to display DRM-protected media without the need for third-party plugins.

House Overwhelmingly Passes Bipartisan Legislation on Selection Process for Copyright Register — The big news this week was the passage of HR 1695 in the House by a broad and bipartisan vote of 378-48. The bill, which would make the Register of Copyrights a Presidential Appointee subject to Senate confirmation and limit the office’s term to ten years, is part of broader Copyright Office modernization efforts that began over four years ago. This bill was introduced separately given the current lack of a permanent Register.

The Copyright Office’s Amicus Brief from Mazer v. Stein — Zvi Rosen this week uploaded the full brief, along with appendices, from the classic 1954 case on copyright protection and useful articles. Also goes to show how long the Copyright Office has been considered the expert agency on interpreting the Copyright Act.

Is It Time to Break Up Google? — Jon Taplin has a new book out, Move Fast and Break Things, and he pens this NY Times op-ed laying out his basic premise: in just a few short months, a small set of internet platforms like Google, Facebook, and Amazon have become the largest companies in the world, and their success has come at the expense of the creative industries, privacy, and even democratic values.

Selling Piracy-Configured Media Players is Illegal, EU Court Rules — Stand-alone media devices that provide access to film and television content are becoming increasingly popular, but the downside is that many are being sold pre-configured with third-party addons that allow one-click access to infringing content. Andy at Torrentfreak reports, “In a long and complex ruling, the ECJ said that a media player with pre-installed addons, accessed through structured menus, grants users ‘direct access to the protected works published without the permission of the copyright owners’ and ‘must be regarded as an act of communication to the public.'”

“Consumer Advocates” Oppose Web Standard That Would Improve Privacy and Convenience — Daniel Castro writes about the fight over the standard, called encrypted media extensions (EME), which would allow encrypted media to be played in web browsers without plugins.

How Google Eats a Business Whole — “‘I didn’t understand the benefit to us,’ he said. ‘It’s a big ask. Like, ‘hey, let us tap into the most valuable thing that you have, that has taken years to create and we’ve spent literally millions of dollars, and just give it to us for free so we can display it.’ At the end of it, we just said ‘look, we’re not comfortable with this.’…But then they went ahead and took the data anyway.'”

Nicolle Galyon’s Journey From ‘Voice’ Contestant to Hit Songwriter, Producer, Creative Rights Advocate —  “She has made several trips to Washington, D.C., in conjunction with the Nashville Songwriters Association International to meet with lawmakers, something Galyon says is ‘so important.’ ‘When [lawmakers] hear that a songwriter wrote a song, that means one thing to them. When they [meet] that girl from Kansas who wrote songs for 10 years before she had a song on the radio and who has a family to support, that connects [with] them.'”

Copyright Office Modernization Through an Artist’s Lens — “Some critics of the legislation have suggested that elevating the Register is an attempt to ‘give more power to Hollywood’—something we in the visual arts community find puzzling. Without a doubt, the Copyright Office’s technological shortcomings affect visual artists far more than movie studios and record labels. For instance, Variety reported that 563 movies were released in 2014 by the entire movie industry, which is a relatively small number of copyrights to register for an entire year. By contrast, a single photographer can take over 500 photos in one shoot, and may create as many as 50,000 individual photographs per year.”

Why Google Book Search Got Lost — “The Google Books program was widely misunderstood. (So was our lawsuit. I think it’s fair to say that the Guild never managed to communicate well the issues at stake.) Google didn’t intend—initially at least—to serve as a vast Internet library. It aimed to improve its search engine—and beyond that, it aimed to gain complete possession of the invaluable corpus represented by the world’s literary legacy. It did that, remember, without buying a single book. We authors, for our part, didn’t object to Google’s creating of a search index. In itself, search had obvious benefits for everyone, readers and writers alike. We objected to Google’s seizing without permission the full texts of copyrighted books for profit-making purposes not limited to indexing and never, in fact, fully disclosed. These books are enormously valuable to anyone working on algorithmic translation and machine learning. If the company has let the public-facing side of Google Books slide, perhaps it’s because that was never the top priority.”

Disabling Access to Large-Scale Pirate Sites (Site Blocking)—It Works! — “….these blocks caused a 90% drop in visits to the blocked sites (leading to)… a 22% decrease in total piracy for all users affected by the blocks…. We also found that these blocks caused a 6% increase in visits to paid legal streaming sites like Netflix and a 10% increase in videos viewed on legal ad-supported streaming sites….”

The Reason Why YouTube Pays Artists So Little — “The key here is that YouTube is primarily a user generated service. If a label was to refuse a license to to the company, its songs would still appear thanks to user uploads. The label can ask for a take down, but as soon as that happens, another one, or 10, pop up. This puts YouTube in a strong position to low-ball on any licensing agreement.”

On Friday, April 7, 2017, the Ninth Circuit published its opinion in Mavrix Photographs v LiveJournal, a potentially significant decision touching on a number of provisions in Section 512 of the Copyright Act, which was passed as part of the Digital Millennium Copyright Act in 1998 (DMCA) and provides safe harbors for online service providers against claims of copyright infringement under certain circumstances.

The court reversed the district court’s ruling that LiveJournal qualified for the safe harbor, and while some of its holdings are positive for copyright owners—who have long advocated that the DMCA safe harbors have failed to fulfill Congress’s goal of cooperation between service providers and copyright owners in detecting and deterring online infringement—other parts of the decision may create perverse incentives for service providers to do less to prevent infringement on their sites.

I want to focus in particular on the Ninth Circuit’s suggestion that LiveJournal’s use of a technological tool to automatically block posts from certain sources may be a factor that determines whether the service had “the right and ability to control infringements”, and, consequently, whether it would be disqualified from protection under §512’s safe harbor. I think courts should resist this suggestion, as it is contrary to the text and purpose of the statute, and could disincentivise service providers from employing tools that are critical for detecting and deterring infringement.

The Case

But first, a bit of background. LiveJournal is perhaps one of the earliest social media networks, and anyone of a certain age will deny ever having posted a personal blog there. The site features a number of “communities”, and at issue here is a community called “Oh No They Didn’t!” (ONTD), which is focused on providing celebrity gossip. Community members submit photos, videos, links, and other media concerning up-to-date celebrity news. Originally, like other LiveJournal communities, posts were moderated by volunteers, but as the community became one of the most popular on LiveJournal, the company took a more active role in curating posts to attract and maximize advertising revenue. At the time of the complaint, LiveJournal employed a full-time community leader, who oversaw a team of volunteer moderators charged with screening and approving user submissions.

Mavrix Photographs is a photo agency specializing in photos of celebrities, which it licenses to celebrity magazines. It alleges that between 2010 and 2014, twenty of its photos were posted on ONTD without authorization, and it sued LiveJournal for copyright infringement. LiveJournal asserted it was immune from liability under the §512 safe harbor and moved for summary judgment, which the district court granted. Mavrix appealed to the Ninth Circuit.

Section 512(c) shields service providers from liability “for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider”, and the bulk of the Ninth Circuit’s decision hinged upon whether, given the volunteer moderators’ role in screening and approving the content, that content was stored on LiveJournal “at the direction of a user.” 1The court concluded that agency law governs whether such volunteer moderators are acting on behalf of LiveJournal and remanded for the factfinder to determine the ultimate question. But even if the content is stored at the direction of a user, and LiveJournal meets this threshold requirement for safe harbor protection, §512 outlines other requirements a service provider must meet. Two in particular were in dispute, and the Ninth Circuit addressed each of those in its opinion “to provide guidance to the district court” on remand.

“Right and ability to control” and technological tools

I want to focus here on one of those two in particular—the requirement expressed in § 512(c)(1)(B), which provides that a service provider cannot qualify for the safe harbor if it “receive[s] a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity.”

This “right and ability to control”, as the Ninth Circuit observed, “involves ‘something more than the ability to remove or block access to materials posted on a service provider’s website.’”

The service provider does “something more” when it exerts “high levels of control over activities of users.” The service provider exerts “high levels of control,” for example, when it, “prescreens sites, gives them extensive advice, prohibits the proliferation of identical sites,” provides “detailed instructions regard[ing] issues of layout, appearance, and content,” and ensures “that celebrity images do not oversaturate the content.”

The Ninth Circuit went on to explain:

LiveJournal’s rules instruct users on the substance and infringement of their posts. The moderators screen for content and other guidelines such as infringement. Nearly two-thirds of submitted posts are rejected, including on substantive grounds. ONTD maintains a list of sources that have complained about infringement from which users should not submit posts. LiveJournal went so far as to use a tool to automatically block any posts from one source. In determining whether LiveJournal had the right and ability to control infringements, the fact finder must assess whether LiveJournal’s extensive review process, infringement list, and blocker tool constituted high levels of control to show “something more.”

Among the facts that the Ninth Circuit indicated could count as “something more” under the “right and ability to control” prong, it is the inclusion of the last one—the use of automated blocking technology—that is especially problematic for creators and copyright owners. Given the scale of online infringement, technological tools that can block, filter, or identify infringing materials are critical to addressing online piracy. Many major platforms already incorporate automated tools to minimize infringement. And a number of creators and copyright owners have urged greater adoption of such tools, recognizing that efforts to enforce copyright online are greatly ineffective in their absence.

But if the Ninth Circuit is correct, and the implementation of automated technology to block potentially infringing material can kick a service provider out of the safe harbor, it would create a powerful disincentive for the adoption of such tools. Service providers would likely decline to adopt them altogether rather than running the risk of losing safe harbor protection and being exposed to liability.

While the Ninth Circuit is correct on the law, I think its suggestion that blocking technologies give rise to “something more” under the “right and ability to control” test is contrary to the text and purpose of §512. And I get there by using the same reasoning that led to the “something more” standard in the first place.

Something more

The phrase “something more” is not found in the statute—rather, its genesis comes from case law. As the Central District Court of California explained in 2001:

[T]he “right and ability to control” the infringing activity, as the concept is used in the DMCA, cannot simply mean the ability of a service provider to remove or block access to materials posted on its website or stored in its system. To hold otherwise would defeat the purpose of the DMCA and render the statute internally inconsistent. The DMCA specifically requires a service provider to remove or block access to materials posted on its system when it receives notice of claimed infringement. The DMCA also provides that the limitations on liability only apply to a service provider that has “adopted and reasonably implemented … a policy that provides for the termination in appropriate circumstances of [users] of the service provider’s system or network who are repeat infringers.” Congress could not have intended for courts to hold that a service provider loses immunity under the safe harbor provision of the DMCA because it engages in acts that are specifically required by the DMCA. 2Hendrickson v. eBay, 165 F. Supp. 2d 1082, 1093-94 – Dist. Court, CD California 2001.

The same is true when it comes to implementation of technological tools for blocking or filtering content. Section 512(i)(1)(B) provides that the limitations on liability only apply to a service provider that “accommodates and does not interfere with standard technical measures”, which are technical measures used “to identify or protect copyrighted works.” Assuming for the sake of this argument that LiveJournal’s blocking tool otherwise qualified as a standard technical measure under the statute, 3It doesn’t, for reasons unrelated to this argument. Under §512(i)(2), standard technical measures “(A) have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process; (B) are available to any person on reasonable and nondiscriminatory terms; and (C) do not impose substantial costs on service providers or substantial burdens on their systems or networks.” I’m not aware of any technical measure that was developed pursuant to the process laid out in the statute. it would render the statute internally inconsistent to say that a service provider would lose immunity by employing a blocking tool that is specifically required by the statute.

This interpretation is also consistent with the overall purpose of §512. Congress drafted §512 with the intent to provide incentives for service providers and copyright owners to detect and deter online infringement. 4S. Rep. No. 105-190 at 20 (1998). It would run contrary to this intent if service providers were discouraged from employing automated tools that do just that to preserve their safe harbors.

Conclusion

Courts should, instead of looking at steps taken to prevent infringing activity, focus on facts that show the ability to control infringing activity. That’s not to say that under no circumstances is the use of automated technology disqualifying—a service provider might tout its use of filtering or blocking tools merely as a pretense while continuing to facilitate and profit off infringement. But courts could also, as the Ninth Circuit noted here in a footnote, find right and ability to control if the facts show a service provider intentionally induced infringement. Similarly, as the MPAA argued in its amicus brief, if the facts show that a service provider actively reviews and prescreens each user submission for the purpose of curating likely infringing content intended to draw visitors to the site, then it necessarily exercises higher levels of control over activities of users that would kick the service provider out of the safe harbors under this prong.

References   [ + ]

1. The court concluded that agency law governs whether such volunteer moderators are acting on behalf of LiveJournal and remanded for the factfinder to determine the ultimate question.
2. Hendrickson v. eBay, 165 F. Supp. 2d 1082, 1093-94 – Dist. Court, CD California 2001.
3. It doesn’t, for reasons unrelated to this argument. Under §512(i)(2), standard technical measures “(A) have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process; (B) are available to any person on reasonable and nondiscriminatory terms; and (C) do not impose substantial costs on service providers or substantial burdens on their systems or networks.” I’m not aware of any technical measure that was developed pursuant to the process laid out in the statute.
4. S. Rep. No. 105-190 at 20 (1998).