A relatively unknown copyright infringement case is starting to attract more attention.

In October 2010, self-described “gay ethnic adult company” Flava Works sued Marques Rondale Gunter, who owns and operates myVidster, a “social video bookmarking” site for copyright and trademark infringement. Now the case is in front of the Seventh Circuit, and it has attracted amicus briefs from heavyweights like the MPAA, Google and Facebook, and perennial amici Public Knowledge and the EFF.

While the appeal raises several important issues, it is one in particular that has attracted much of the attention online. Can embedding a video infringe on copyright?

Flava Works in the Lower Court

Last May, the Northern District Court of Illinois ruled on Gunter’s motion to dismiss the complaint. The court dismissed all the claims except the contributory copyright infringement claim. It found that Flava Works had plead sufficient knowledge. Said the court, “The knowledge element for contributory copyright infringement is met in those cases where a party has been notified of specific infringing uses of its technology and fails to act to prevent future such infringing uses, or willfully blinds itself to such infringing uses.” myVidster’s receipt of multiple DMCA takedown notices involving the same files and users triggered a duty for it to take steps to prevent future infringing uses.

Later that summer, the Illinois court granted Flava Works request for a preliminary injunction against Gunter, concluding that it was likely to succeed on the merits of its claim of contributory copyright infringement.1 Notably, it rejected Gunter’s contention that the site was protected by the DMCA’s safe harbor. It primarily based this decision on the site’s lack of a repeat infringer policy — one of the prerequisites for safe harbor protection — and this decision seemed an easy one. Said the court, “It is difficult for us to understand how defendants can argue with a straight face that they have adopted and reasonably implemented a ‘repeat infringer’ policy.”

Gunter moved for a reconsideration of the preliminary injunction, which the court denied. The court explained, “The vast majority of myVidster users have not created backup copies of videos on the site, but have directed myVidster to “embed” video clips on the site through the posting/bookmarking process. It is this action, to which defendants also refer as “inline linking,” that is the focus of the instant motion to reconsider.” Gunter argued that the Ninth Circuit’s holding in Perfect 10 v. Amazon should compel a different result.

In Perfect 10, the Court was faced with the question of whether Google’s image search, which used in-line linking to display full-size images from other sites in its results, directly infringed the plaintiff’s display right. After interpreting the Copyright Act’s language, the Ninth Circuit adopted what the District Court called the “server test” — infringement of the display right is only possible when the image resides on the web site’s own servers, not when the image is only displayed in-line but resides on another web site’s computers.

Flava Works disagreed with Perfect 10:

We decline to apply Perfect 10 to this case. The Ninth Circuit’s decision is not binding on this court; moreover, it is highly fact-specific and distinguishable. Defendants assert that the cases involve “essentially the same technology.” Both cases may involve inline linking, but the processes are quite different. The relevant comparison is between the conduct of Google and the conduct of myVidster’s users, not between Google and myVidster. In response to a search query, Google’s image search engine uses an automated process to display search results through inline linking. In contrast, myVidster’s users do not employ any sort of automation to determine which videos they bookmark; rather, they personally select and submit videos for inline linking/embedding on myVidster. (And many of those hand-picked videos are infringing.) Google’s use of inline linking is neutral to the content of the images; that of myVidster’s users is not.

To the extent that Perfect 10 can be read to stand for the proposition that inline linking can never cause a display of images or videos that would give rise to a claim of direct copyright infringement, we respectfully disagree. In our view, a website’s servers need not actually store a copy of a work in order to “display” it. The fact that the majority of the videos displayed on myVidster reside on a third-party server does not mean that myVidster users are not causing a “display” to be made by bookmarking those videos. The display of a video on myVidster can be initiated by going to a myVidster URL and clicking “play”; that is the point of bookmarking videos on myVidster—a user can navigate to a collection of myVidster videos and does not have to go to each separate source site to view them.

Gunter persisted and appealed Flava Works to the Seventh Circuit.

Can Embedding Infringe Copyright?

One of the major issues in the appeal — and the one that has attracted the attention of Google, Facebook, and the MPAA — is whether embedding videos violates a copyright owner’s public performance right. Secondary liability requires direct infringement, and the parties dispute the lower court’s conclusion that myVidster’s users, who add such embedded links to the myVidster site, are direct infringers.

Gunter, and amici Facebook and Google, urge the Seventh Circuit to adopt the Ninth Circuit’s “server test.” As noted above, the Ninth Circuit interpreted the Copyright Act to limit liability for public display of a copyrighted work to only those online users who actually copy the work onto their own server.

Flava Works, joined by the MPAA as amicus, argue in support of the lower court’s decision.

Gunter is facing an uphill battle here. As the lower court noted, the Ninth Circuit’s decision isn’t binding on the Seventh. And while the “server test” has been received favorably by some academics and service providers, it has apparently not been endorsed by any other court outside the Circuit. And, the “server test” is not found in the text of the Copyright Act or suggested by the legislative history.

There’s another problem for Gunter. Perfect 10 dealt solely with the public display right in copyright, while here the court is dealing with both the right to publicly display and publicly perform a work. The Ninth Circuit’s adoption of the “server test” was premised on the language of the Copyright Act’s definition for “display”:

To “display” a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.

The court seized on the definition’s inclusion of the word “copy” to support its conclusion. However, the Act’s definition of “performance” doesn’t refer to copies:

To perform or display a work “publicly” means—

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

On a side note, this definition makes sense. When a theater performs a dramatic play, or a band performs a musical composition, it doesn’t generally have a “copy” of the work, but such a performance is still within the exclusive rights of the copyright owner.

But more to the point, even if the Ninth Circuit’s “server test” were adopted by the Seventh Circuit, it doesn’t follow, from the language of the definitions, that it should be applicable to the public performance right.

It’s my opinion that embedding a video can be considered a public performance (I’ve touched on this issue before in relation to last summer’s Commercial Felony Streaming Act). In fact, I was somewhat surprised in researching to discover that the issue doesn’t seem to have come in front of a court until now. But others have concluded the same — here’s an article from 2007 quoting This Week in Law’s Denise Howell saying as much.

And, despite some of the hyperbole2 that has resulted from Flava Work’s position on embedded links, I don’t believe a decision affirming the lower court would result in much of a change for occasional users of embedded links — like, say, bloggers or forum operators. These users have always had the benefit of the DMCA safe harbors for any unintentional infringement that might stem from embedding a video, as well as the fair use defense in appropriate circumstances.

Is Linking ever Infringement?

Part of the negative response to this case seems to stem from an idea that linking can never give rise to liability for infringement — this is, in fact, one of the arguments Google and Facebook make in their joint amicus brief.3 But such a bright line rule has never existed.

Congress certainly hasn’t held this view. In the legislative history for the DMCA, you can find evidence that Congress believed linking can, in some cases, be infringing. The House Commerce Committee explained that the “red flag” knowledge standard in the bill was intended “to exclude from the safe harbor sophisticated ‘‘pirate’’ directories—which refer Internet users to other selected Internet sites where pirate software, books, movies, and music can be downloaded or transmitted.” And the safe harbor for information location services itself (17 USC § 512(d)) expressly shields service providers against liability “for infringement of copyright by reason of the provider referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link.”

And, despite its legal arguments, Google itself recognizes that linking can infringe copyright. In its AdWords copyright policy, Google states that “Software or sites that enable streaming, copying, or downloading of movies, music, television programs, games, or software” are not allowed — and such sites include “Link aggregation sites primarily aimed at enabling the download or streaming of music, movies, or other media.”

Footnotes

  1. Note that the District Court followed the traditional standard for copyright infringement injunctions, where a likelihood of success on the merits creates a presumption in favor of an injunction. This is in contrast to the Second and Ninth Circuits, which extended the Supreme Court’s holding in eBay v. MercExchange that no such presumption exists for patent injunctions to copyright infringement cases. Gunter has appealed this point along with the others discussed here, and while it is an interesting and important issue, it is beyond the scope of today’s article. []
  2. According to the site linked above: “If the MPAA is successful and the decision is upheld, this could have far reaching, and dire, consequences for Internet users of all stripes; the ruling would seem to include even the idea of linking back to the host-site instead of embedding, essentially rendering a critical part of online culture illegal. It would, much like ACTA, accomplish a large part of what SOPA and PIPA sought to do without actually requiring the pesky consent of the governed that otherwise is at the heart of American law.” []
  3. The court and parties to this case use the term “linking” to refer both to hyperlinking — where a web site’s text can be clicked to go to another web site — and embedded linking — where an image or video on another server is displayed as though it is part of a web site. Under the hood, both are acheived in much the same way, though each offers a different type of experience to the user. []

No sympathy for the creative class — There is a lot of overlap between debate over copyright issues and debate about art and culture itself, especially the existence of a professional creative class within a society. This is an interesting article from Salon by Scott Timberg that explores the latter. Says Timberg, “Our image of the creative class comes from a strange mix of sources, among them faux-populist politics, changing values, technological rewiring, and the media’s relationship to culture – as well as good old-fashioned American anti-intellectualism.”

IMAGiNE BitTorrent Piracy Group Indicted, Face Years In Prison — Following an investigation by ICE, four US individuals have been indicted for allegedly being part of a piracy group. All four are scheduled to be arraigned May 9.

GEMA v YouTube continued — Last week, a German court found YouTube liable for infringement by its users. Monika at the 1709 Blog offers some thoughts on the decision. ” I fully agree that the services mentioned might not have been developed if they had had to comply with the standards set by the Hamburg judges in GEMA v YouTube. However, I am pretty sure many industries would never have developed if they had had to comply with today’s health and safety standards, but that does not necessarily mean that current health and safety standards should be abolished.”

Google Says “It’s Our Web”–and they bought it fair and square — Google has already spent $5 million lobbying this year. What does this mean for creators, and what does this mean for the future of the web? Chris Castle takes a look at these questions.

A Sergey update: we misunderstood him — Dominic Young follows up on the Google founder’s interview with the Guardian earlier this month. “In truth, unfair advantages lead to unfair outcomes. Google is a massive and mind-bogglingly rich company, run by some of the most mind-bogglingly rich young scamps in the world, and the largest and most powerful aggregator of content and data ever seen. It has become so by exploiting content created by others. Even if this has by-and-large been done with tacit or “implied” permission, the idea that it doesn’t require permission in law or in reality, has never been true.”

Pirate Politician Says Party ‘Rising as Fast as Nazis’ — Straight from the “you can’t make this stuff up” department.

‘Just Shut Them Down, Man’ — Also from Der Spiegel is this engrossing debate between German pop star Jan Delay and German Pirate Party member Christopher Lauer about copyright. The entire thing is worth a read; I especially like this quote from Delay: “To be honest, I got you on most of the points we’ve discussed so far. I don’t mean to be nasty, but apart from the copyright issue the whole Pirate Party thing is like someone going round saying, ‘Hey! We’re a party that wants free chocolate for everyone.’ A few non-voters might say, ‘Cool! Free chocolate! That’s the sort of politics I can relate to.’ But do you guys really have any solutions? Do you even know what you’re talking about? I believe you when you say you understand computers. But that’s about it.”

A Short History of Intellectual Property’ in Relation to Copyright — Justin Hughes traces the development of the term “intellectual property” in this scholarly paper. Copyright skeptics are quick to embrace a bumper-sticker version of history to make any point, such as the idea that this term is relatively recent. But as Hughes discovers, the truth is far more nuanced. An interesting read.

How Not To  Fix Copyright – My Response to William Patry — Here’s a great piece on William Patry’s latest book. William Patry offers a response in the comments.

Halestorm — Finally, I want to send some Pennsylvania love to an area band. Halestorm dropped their latest album earlier this month. If you like modern rock with a touch of glam, fronted by a fiery female singer, check them out. Their tune “Here’s to Us” was featured on an episode of Glee earlier this year. Go PA!

Last week, I noted the server problems this site was having. They extended into this week, making the site slow to load or unresponsive, but things seem to be back to normal now. Sorry for the inconvenience!

Kirtsaeng v. John Wiley & Sons — This week, the Supreme Court agreed to hear a case involving copyright’s first sale doctrine and grey market goods. SCOTUSBlog has more info on the case; also check out Andrew Berger’s analysis of the 2nd Circuit’s decision on that case when it was released last August.

Hulu Plus subscriptions hits 2 million, accelerates revenue — The online TV site continues to quietly chug ahead, with over two million paid subscribers. And if you haven’t already, check out the Hulu exclusive series Battleground, a very smart, well-scripted mockumentary that takes a behind the scenes look at a political campaign (available on regular Hulu, not just Hulu Plus).

The internet wants to be open, but some internets are more open than others — Google’s Sergey Brin had some interesting things to say this week. Dominic Young takes a look at Brin’s remarks in the Guardian where he complains about having to follow the law like the rest of us chumps, and how Google’s inability to crawl Facebook and Apple threatens innovation. “Is is really true that because data in apps is not crawlable it is ‘lost’?” asks Young. “I use apps all the time, and the data appears to be available to me.”

I Am the Girl with the Dragon Tattoo and Other Copycats Litter Amazon— The author of “I am the Girl with the Dragon Tattoo” published 10,000 books on Amazon, according to this article. “What’s worse is that Amazon has actually been helping these books come into fruition. All of the copycat books that Fortune found were made through CreateSpace, a division of Amazon that allows authors to create and self-publish their books.”

Supporting copyright is not the same as opposing freedom of speech — Helienne Lindvall reports on her participation in a debate over the ACTA. “I understand why many people would sign an online petition against Acta if they’ve been told it’s a threat to freedom of speech and privacy. I would have done the same if I hadn’t read through the actual agreement. And if I didn’t think counterfeit trade in any way impacted on me, it would be even easier to for me to say no without bothering to read it. Maybe that is why so many of the opponents of Acta have never seen a proposal for copyright enforcement that they wouldn’t say no to. But what we’re doing is the cultural equivalent of overfishing the lake.”

RapidShare Publishes Anti-Piracy Manifesto for Cyberlockers — The Swiss cyberlocker took a positive step this week by releasing a paper on “Responsible Practices for Cloud Storage Services.” The paper suggests several steps that cyberlockers can take to actively promote legitimate uses and discourage illegitimate uses of their services, “balancing the needs for safe, reliable, and private storage and communications with respect for intellectual property and the public interest inreasonable enforcement.”

In his four-part video, Everything is a Remix, filmmaker Kirby Ferguson makes a familiar argument:

Copy, transform and combine. It’s who we are, it’s how we live, and of course, it’s how we create. Our new ideas evolve from the old ones.

But our system of law doesn’t acknowledge the derivative nature of creativity. Instead, ideas are regarded as property, as unique and original lots with distinct boundaries.

I say familiar because if you’ve paid any attention to copyright issues in the last decade or so, you’re bound to have heard a variation on the claim. Other videos like Copyright Criminals take the same approach. Lawrence Lessig has written several books on the topic, and entire organizations like Creative Commons have been created to address and advance this claim.1

This idea that copyright law hinders creativity is one of several ideas central to what could be called “free culture,” and it has fueled a great deal of criticism of current copyright law and opposition to enforcement efforts. Free culture scholarship has held sway in legal literature —  with many of its ideas cited by IP academics outside the free culture sphere — and enjoyed very little criticism until very recently.

In Remix Without Romance, UC Davis professor of law Thomas W. Joo provides a comprehensive and convincing critique of free culture scholarship.

Remix Without Romance

A highly recommended read. The abstract says:

A dominant argument in intellectual property scholarship asserts that technologies such as digital copying empower individuals to participate in the making of culture. Such participation involves individuals appropriating cultural material, “remixing” it with other elements, and “recoding” it by assigning it alternative meanings. By enabling more people to participate in culture, remixing and recoding supposedly enhance “semiotic democracy” and mitigate the dominance of the media industry. The same theorists who make this argument also tend to assert that copyright law is in need of significant reform because it inhibits recoding and thus stifles semiotic democracy.

This Article challenges the empirical assertion that law inhibits recoding—but it also questions the normative assumption that recoding is presumptively good for semiotic democracy. This Article focuses on a specific type of recoding: musical sampling (that is, the recoding of music through digital copying and other means). Sampling, particularly in hip-hop music, is frequently cited as a paradigmatic example of recoding that has been inhibited by intellectual property law. The legal history of sampling, however, suggests otherwise. Commentators have misread important judicial opinions about sampling and misunderstood the business practices of the music industry. At least in the sampling context, law has not prevented the reallocation of recoding rights by contract.

While markets have been able to reallocate sampling rights, however, such transactions do not necessarily advance semiotic democracy, because market failures afflict the marketplace of ideas. In the cultural context, as in the political and economic contexts, formally equal opportunity to participate does not result in equality of influence, and can in fact exacerbate power imbalances. For example, legal and technological innovations (such as digital copying and the Internet) can enable cultural underdogs to recode the messages of media conglomerates and other dominant cultural institutions. But those same innovations also allow dominant institutions to appropriate from the underdog—and dominant institutions can then use their influence to “drown out” those independent voices with recoded meanings. Moreover, recoding by its nature involves the incorporation and repetition of dominant cultural messages. Such repetition can propagate and reinforce dominant messages, resulting in the cooptation of recoding, regardless of the recoder’s intent. In short, recoding is not clearly conducive to semiotic democracy. Rather, it is full of internal contradictions that make its relationship to semiotic democracy an ambivalent one.

In short, Joo makes two claims.

First, many of the factual claims made by free culture advocates are incorrect. This is important. Amongst copyright skeptics, many question statistics about the economic benefits of copyright or effects of piracy and calls for more empirical evidence in copyright policy are common. Yet, as Joo demonstrates, many free culture arguments lack such empirical evidence. They may sound attractive, and they are repeated often, but do not hold up under closer scrutiny. In the article, Joo focuses specifically on musical sampling to demonstrate the differences between the facts on the ground and the narrative advanced by free culture scholars.

Second, Joo refutes the normative free culture claims that weakening copyright rules would increase participatory culture. He finds little reason to believe that “semiotic democracy” would be enhanced, and media dominance in culture would be reduced, if the law was reformed to better allow remixing and recoding.

I want to look at the first of these claims today.

Did Copyright Law Kill Sampling?

Thomas Joo focuses on “sampling”, especially sampling in hip-hop, because it is emblematic of the type of artistic practice free culture scholars focus on, and sampling has received so much attention from legal academics. Joo notes, “The hip-hop era has coincided with the digital age, and hiphop has become closely identified with recoding and particularly digital remixing. Indeed, the term ‘remix,’ which today is often used to refer to recoding practices in general, derives from pop music, where it has been used for decades to refer more narrowly to re-edited versions of records in hip-hop, disco, and other genres.”

The prevailing view is that sampling developed as an artistic practice in early hip-hop by flying under the radar of copyright law. Then, as a result of a series of lawsuits beginning in the 1990s, the legal landscape radically shifted. Sampling was declared copyright infringement and largely died out because of the cost of incorporating previously recorded music into new songs.

The prevailing view is wrong, according to Joo. “The narrative of a battle between copyright and hip-hop is an overdramatized myth that ignores the actual history of the interaction between law and musical recoding.”

Joo blames this myth on free culture scholars “thinking like a lawyer, not like an artist.” They overemphasise the effect of law on artistic practices: legal doctrines lag behind artistic innovation, which limits their “role to settling disputes over the proceeds from established practices.”

Joo marshals impressive research and analysis to support his claims. He begins by providing examples of “sampling” that pre-date hip-hop — and examples of recording artists getting and paying for permission to use such samples. The emergence of hip-hop in the late 1970s into the music industry did not change this.

Both turntablism and rap music made the transition from live performance to records, and the existing business practice of paying for permission to appropriate was, quietly and unremarkably, extended to hiphop records. Indeed, the practice dates to the very first commercially successful hip-hop record—yet it did not prevent hip-hop from becoming a dominant artistic and commercial force in popular music.

Infringement lawsuits involving sampling began to appear in the early 90s. The most frequently cited sampling cases, however, have been misinterpreted, and their effect exaggerated. Chief among these are Grand Upright Music v. Warner Bros. Records, (considered the first “sampling” lawsuit to go to court) and Bridgeport Music v. Dimension Films.

Joo on Grand Upright:

Copyright scholars are in general agreement that a 1991 opinion, Grand Upright Music v. Warner Bros. Records, suddenly and radically changed the legal status of sampling by declaring that sampling without copyright permission constitutes infringement. This general understanding is, in fact, a gross misconception of the opinion. Grand Upright did not even present the question of whether unlicensed sampling would constitute infringement, because the defendants conceded that it would. Indeed, the historical record, including the court records in Grand Upright itself, shows that the hip-hop community, from its earliest days, generally understood and respected the obligation to obtain and pay for permission to use samples in commercial recordings.

This “gross misconception” of the law and business practices surrounding sampling extends to Bridgeport, a 2004 Sixth Circuit decision that you’ll find in just about any discussion on copyright law and sampling since.

Joo points out that “Bridgeport is the decision of only one circuit, and not one that is especially influential with respect to copyright law,” and even so, the opinion appears  “to have been consistent with existing industry practices—practices under which sampling flourished. By the late 1980’s, it was well-established practice in the music industry to seek copyright permission both for lengthy, recognizable samples and for briefer, slice and-dice samples.”

Legal scholars often state that albums in the earlier years of hip-hop that made heavy use of sampling — the Beastie Boy’s Pauls Boutique and early Public Enemy albums are frequently used as examples — couldn’t be made today today because of copyright law. Joo argues that this is simply incorrect. These albums were made, after all, at a time when legal rules and business practices concerning samples were similar to today — not to mention that samples on many of those albums were cleared and licensed. The shift away from sample-heavy styles of music is more reflective of a shift in musical tastes than a shift in the law.

Joo’s takeaway: “As a historical matter … copyright law has not prevented the development of sampling.”

The Mythology of Free Culture

Remix Without Romance is a fascinating read for anyone interested in the issues discussed above. And it’s tremendously useful for its empirical contributions to copyright doctrine.

In my opinion, it is also an important work for critiquing free culture (and other copyright skepticism) scholarship. The “exaggerations” (to use Joo’s term) in such scholarship are not isolated to digital sampling — it is concerning how many similar claims are made in this area. In a way, large portions of free culture and other opposition to copyright have been built upon mythology. The effects of this scholarship aren’t limited to academia; free culture has become very popular online and in the general public, where these specious claims morph into talking points against copyright in toto.

Footnotes

  1. See Remix and Free Culture by Lessig. See also Siva Vaidhyanathan, Copyrights and Copywrongs: The Rise of Intellectual Property and How It Threatens Creativity; James Boyle, The Public Domain: Enclosing the Commons of the Mind. []

In this series, I’ve been looking at the historical record to attempt to explain why the idea that there is tension between copyright law and the First Amendment took so long to appear — it was nearly two centuries after the Copyright Act of 1790 and the Bill of Rights were passed that the first legal journal articles appeared raising the question, and it wouldn’t be until 2003, in Eldred v. Ashcroft, that the US Supreme Court confronted the issue directly. (Read Part 1, Part 2, Part 3, and Part 4).

The point of this examination is not to advance any arguments about these claims, but rather to add to the debate. As the Court noted in Eldred, “a page of history is worth a volume of logic.” It’s not as if no one was concerned with free speech before the 1960s.

Today, I want to look at copyright law’s distinction between ideas and expression. The doctrine was present in the early days of copyright, and the modern day view that it serves as a First Amendment accommodation seems consistent with historical views on the scope of the freedom of speech and the press.

The Idea Expression Distinction as a First Amendment Accommodation

The idea that copyright’s distinction between idea and expression can serve to resolve any tension with the First Amendment was first articulated by Melville Nimmer in 1970.1 To Nimmer, distinguishing between idea and expression to protect free speech interests in copyright cases served as a “definitional balance” — a methodology developed largely by Nimmer.2

The Supreme Court endorsed Nimmer’s view in Harper & Row Publishers v. Nation Enterprises. In the 1985 case, it said, “The Second Circuit noted, correctly, that copyright’s idea/expression dichotomy “strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression.” Eldred v. Ashcroft enshrined the doctrine as US law in 2003, calling the idea/expression distinction one of copyright law’s “built-in First Amendment accommodations.”

Nimmer premised the idea of the idea/expression distinction as a First Amendment accommodation on logic, but does it have any historical support? Because there is so little in the historical record of the relationship between copyright law and freedom of speech, it shouldn’t be surprising that there is no express evidence that anyone thought in Nimmer’s terms before his article. However, I think there is implicit evidence that, had the question been put to pre-20th century legal thinkers, they would likely accept Nimmer’s definitional balance.

Freedom of Speech and Freedom of Opinion

You can write books about the development of the freedom of speech, but for this discussion, it’s helpful to describe one of the dominant progressions of the concept during the 18th century.

The right to freedom of speech owes much of its existence to the liberty of the press. The liberty of the press resulted from the expiration of England’s Licensing Act in 1694. In the following decades, it was widely understood that government had no right to license the press; but what else the liberty of the press encompassed would be the subject of debate throughout the 18th century.

William Blackstone describes the conservative view in his Commentaries on the Laws of England:

The liberty of the press is indeed essential to the nature of a free state: but this consists in laying no previous restraints upon publications, and not in freedom from censure for criminal matter when published. Every freeman has an undoubted right to lay what sentiments he pleases before the public: to forbid this, is to destroy the freedom of the press: but if he publishes what is improper, mischievous, or illegal, he must take the consequence of his own temerity. To subject the press to the restrictive power of a licenser, as was formerly done, both before and since the revolution, is to subject all freedom of sentiment to the prejudices of one man, and make him the arbitrary and infallible judge of all controverted points in learning, religion, and government. But to punish (as the law does at present) any dangerous or offensive writings, which, when published, shall on a fair and impartial trial be adjudged of a pernicious tendency, is necessary for the preservation of peace and good order, of government and religion, the only solid foundations of civil liberty. Thus the will of individuals is still left free; the abuse only of that free will is the object of legal punishment. Neither is any restraint hereby laid upon freedom of thought or enquiry: liberty of private sentiment is still left; the disseminating, or making public, of bad sentiments, destructive of the ends of society, is the crime which society corrects.

A 2002 paper by Jeremy Ofseyer is particularly illuminating as one way to understand the backdrop of the 18th century experience that eventually led to the First Amendment. Ofseyer says:

England, like many other countries, had long enforced orthodoxy in matters of opinion. It did so in order to save the souls of heretics and out of fear that heterodoxy frays the social fabric and invites anarchy. According to this intolerant view, unorthodox opinions are not only false and offensive, but also inherently dangerous because they undermine established institutions and norms. Blackstone catalogued two main categories of opinion bans: offenses against God and religion and offenses against crown or government.3

Ofseyer notes that American liberal thinkers of the time, particularly Thomas Jefferson and James Madison, sharply disagreed with this view of the law as Blackstone described it:

Diversity of opinion is … the healthy product of freedom of thought and speech: “In every country where man is free to think and to speak, differences of opinion will arise from difference of perception, and the imperfection of reason  … .” For these reasons, Jefferson concluded that “the opinions of men are not the object of civil government, nor under its jurisdiction.”

According to Madison, there is a fundamental human property right to one’s “opinions and the free communication of them.” From this distinct, property-based premise, along with other premises akin to Jefferson’s, he reached the same conclusion: “Opinions are not the objects of legislation.”

Jefferson and Madison’s views were obviously not unanimously held at the time — before the 18th century was out, the U.S. Congress would pass the Alien and Sedition Acts, making it a crime to print or utter “any false, scandalous and malicious writing or writings against the government of the United States.” The Acts were very controversial at the time, and much of the debate was between proponents of the Blackstonian conception of the freedom of the press which permitted regulation of opinions and the liberal view that freedom of the press immunized liability for opinions.4

The Idea-Expression Distinction in Copyright’s Early Days

One of the fundamental doctrines of copyright law, the idea-expression distinction limits copyright protection to the specific expression of a creator, leaving the ideas embodied in that expression free for all to use. The 1879 Supreme Court case Baker v. Selden is often cited as the earliest articulation of the idea expression distinction, but that is not exactly true.

The earliest discussions on the nature of copyright included a distinction between ideas — which remain free to the public — and expression — which is susceptible to protection by copyright. Discussions like these began in earnest after the passage of the Statute of Anne in England in 1710, and, though these same discussions continue to this day, toward the end of the 18th century, “all the essential elements of modern Anglo-American copyright law were in place.”5

These essential elements include the idea-express distinction. Wrote English author and churchman William Warburton in 1762:

[H]e who obtaineth my copy may appropriate my stock of ideas, and, by opposing my sentiments, may give birth to a new doctrine or he may coincide with my notions, and, by employing different illustrations, may place my doctrine in another point of view : and either case he acquireth an exclusive title to his copy, without invading my property.6

Noted English jurist William Blackstone wrote of the doctrine in 1766. Blackstone used the term “sentiment” for “ideas” and “language” for “expression”.

Now the identity of a literary composition consists intirely in the sentiment and the language; the same conceptions, cloathed in the same words, must necessarily be the same composition: and whatever method be taken of conveying that composition to the ear or the eye of another, by recital, by writing, or by printing, in any number of copies or at any period of time, it is always the identical work of the author which is so conveyed; and no other man can have a right to convey or transfer it without his consent, either tacitly or expressly given.7

English lawyer Francis Hargrave wrote in his seminal treatise An Argument in Defence of Literary Property (1774), “the use of ideas and knowledge is as common as it would be, if the right of printing was not appropriated.”

In Germany, philosopher Johann Gottlieb Fichte published Proof of the Illegality of Reprinting in 1793, which made a distinction between the material aspect of a book and the ideational aspect:

This ideational aspect is in turn divisible into a material aspect, the content of the book, the ideas it presents; and the form of these ideas, the way in which, the combination in which, the phrasing and wording in which they are presented.

…[T]he content of the book … can be the common property of many, and in such a manner that each can possess it entirely, clearly ceases upon the publication of a book to be the exclusive property of its first proprietor (if indeed it was so prior to publication, which is not always the case with some books nowadays), but does continue to be his property in common with many others. What, on the other hand, can absolutely never be appropriated by anyone else, because this is physically impossible, is the form of the ideas, the combination in which, and the signs through which they are presented.

It is clear that by the time the United States became independent of England and formed its own government, a distinction between ideas and expression was established in copyright law.

Freedom of Ideas, Protection of Expression

The distinction between ideas and expression in copyright law was recognized early on. At the same time, freedom of speech and the press was seen as vital to the protection of opinion and the dissemination of ideas and facts. The notion that the idea/expression distinction ensures copyright law’s compatibility with the First Amendment’s prohibition on laws infringing free speech would thus appear wholly consistent with historical conceptions of these freedoms and the law. Copyright does not bar the “free communication of” ideas, nor does it punish anyone for disseminating “bad sentiments.”

We can turn to James Madison for indirect evidence of this consistency. Madison, after all, proposed that the federal Congress should have the power to secure copyrights during the Constitutional Convention. Years before that, he sat on the Continental Congress committee that encouraged the States to pass their own copyright legislation and penned Virginia’s subsequently passed copyright act. Few of the Founding Fathers could claim more responsibility for Congress’s authority to make copyright law.

James Madison also was the first to introduce a Bill of Rights to amend the Constitution, although he had originally opposed the idea. What’s interesting is the language he chose regarding the freedom of speech. Madison’s amendment that would eventually become part of the First Amendment said, “The people shall not be deprived or abridged of their right to speak, to write, or to publish their sentiments” (emphasis added).

Note that this is the same language used by William Blackstone when he described copyright, saying the “identity of a literary composition consists intirely in the sentiment and the language.”

William Blackstone was one of the most influential legal scholars to the Founding Fathers, Madison included.8 And its possible the same language was a conscious choice. Bilder notes that Madison’s life showed a devotion to “the problem of language.” “He copied cases in which the presence of one word mattered.” His legal notes reveal questions that fascinated Madison, like “What did particular words mean?”

Madison cared about perspicuity. In one sense, he was not unusual in this regard, for perspicuity occupied the minds of late eighteenth-century rhetoricians. The word reappears in letters written during the Philadelphia Convention and his later correspondence. In Federalist 37, Madison famously wrote, “Perspicuity therefore requires not only that the ideas should be distinctly formed, but that they should be expressed by words distinctly and exclusively appropriated to them.”

This isn’t definitive evidence, of course. But it does support the idea that, had Madison and other Founding Fathers been confronted with the question of whether copyright law conflicts with the First Amendment, they would have accepted the Supreme Court’s holding that the First Amendment is accomodated by copyright law’s idea/expression distinction.

Footnotes

  1. Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 UCLA Law Review 1180. []
  2. Norman T. Deutsch, Professor Nimmer Meets Professor Schauer (and others): An Analysis of “Definitional Balancing” as a Methodology for Determining the “Visible Boundaries of the First Amendment”, 39 Akron Law Review 483, 484 (2006). []
  3. Speech or Opinion? Two Objects of First Amendment Immunity, 2 Utah Law Review 843, 869-70. []
  4. Compare Henry Lee, Report of the Minority on the Virginia Resolutions and James Madison, Virginia Resolutions. []
  5. Mark Rose, Authors and Owners: The Invention of Copyright (1993). []
  6. An enquiry into the nature and origin of literary property. []
  7. Commentaries 2:406. []
  8. Mary Sarah Bilder, James Madison, Law Student and Demi-Lawyer, 28 Law and History Review 389, 399 (2010). []

My apologies to readers of this site this week. On Tuesday, my webhost began experiencing hardware issues that took Copyhype (and many other sites) offline. The site was up again by Wednesday, but since then, there have been lingering issues that have resulted in the site loading slow or timing out. Hopefully things will be back to normal soon!

In the meantime, don’t forget that you can Subscribe to Copyhype by Email or through RSS to make sure you never miss a post.

Meet The New Boss, Worse Than The Old Boss? — David Lowery (Cracker, Camper van Beethoven) expands on a talk he gave at this winter’s SF Music Tech Summit. A fascinating and illuminating discussion; be sure to also check out part 2, part 3, part 4, and part 5.

Grooveshark: Trolling The Sea Of Artists To Make A Buck? — Jeff Price of Tunecore has some strong words about the music streaming site that brags about not being licensed. “Grooveshark is a fish rotting from the head down. The people running it are immoral and could care less about who and/or what they hurt as long as they make money.”

Canard du Jour: Do you still have your personality after Google makes a copy? — Copyright and privacy are more closely linked than appearance suggests. The trouble is that arguments advanced to weaken copyright can also be used to weaken privacy rights — and, as Chris Castle explains, that’s fine by Google.

The Nimble Empire: In Defense of Cable (via John August) — On why the evolution of cable will be amazing and what critics get wrong. “Really, what the pro-piracy arguments come down to — at least in the United States, where most content is pretty ready available (a few exceptions aside) — is ‘this is legally available, but not at a price I am willing to pay,’ and/or ‘this is legally available, but not for a time that I am willing to wait.’ Or rather — ‘I insist that you immediately provide your content at a price and on a device or devices of my choosing.’ This is a newly emerging and oddly curious expectation towards media.”

The film tax credit works, and Western Pennsylvania is a winner (via The Mentally InFirm)— The Pittsburgh Post-Gazette reports on the positive effect that film and television production has on the Pennsylvania economy and how PA’s film tax credit has helped spur that production. The Post-Gazette notes, “Since the program’s inception, nearly $242.5 million in state tax credits have been approved and/or awarded to film production companies, which has resulted in estimated total economic activity of $1.8 billion and the creation and sustaining of almost 14,500 jobs statewide.”

Other Ways to Think About the Copyright Debate — At the Music Think Tank, Simon Tam asks, “Do we, as a society, value our artists and the arts as a whole? Do we appreciate them enough to support them so that the arts can continue to grow and that artistic expressions of ideas can be protected? Or do we believe that all artistic works should be free, no matter the cost, even if that cost includes the actual content creators themselves?”

The CCI and the Copyright Conspiracy — “What gets my attention is the rhetoric that consumers are owed better representation in the CCI than they’re currently receiving.  Of course consumers should advocate and argue for their interests, but why would they be owed representation in a private coalition, regulating a privately operated network?  Advocates like the Electronic Frontier Foundation argue that under-representation leads to the real problem of a lack of due process to consumers when the CCI cuts off their Internet access in the face of a copyright infringement allegation.  If your ISP restricts or cuts off your Internet access, how has it violated your ‘due process?’  How does it owe you “due process” in the first place?”

Q&A: Attorney Paul Smith of Jenner & Block Deciphers YouTube Appeal Decision — Paul Smith, the attorney from Jenner & Block who represented Viacom in its appeal against YouTube, discusses last week’s decision by the Second Circuit.

The 3 Types of Copyright Conversations — Jonathan Bailey labels these the ethical, legal, and practical arguments, and notes how quickly and easily they become conflated. “Copyright, piracy, Web freedom, privacy, etc. are all emotionally-charged topics but they are also absolutely critical to the future of the Web and our culture as a whole. It’s worth taking the time to get these conversations right.”

Art and Democracy: The NEA, Kickstarter, and Creativity in America — A fascinating comparison of arts funding by the National Endowment of the Arts and Kickstarter. “Right now, it’s not clear that Kickstarter is doing much more than offering a streamlined process for donations that would probably have happened anyway.”

On Thursday, the Second Circuit Court of Appeals decided Viacom v. YouTube (PDF of decision).

The decision has spurred a range of reactions, with both sides publicly claiming a sort of victory; others have stated the decision “is a bummer for Google and the UGC community“, is “mostly good (for the internet and innovation)“, is a win for Viacom, or is a mixed victory.

Regardless, the opinion is sure to be an important decision in the DMCA pantheon for years to come. The influential Second Circuit has interpreted many DMCA safe harbor provisions that affect both online service providers and copyright holders.

In 2007, Viacom sued YouTube for copyright infringement because of unauthorized public performance, display, and reproduction of their works on the video site. A couple of months later, a number of other plaintiffs, including various film studios, television networks, music publishers, and sports leagues filed suit against YouTube with similar claims. These plaintiffs also sought class action certification.

The District Court combined the two suits as related, and in 2010 ruled entirely in favor of YouTube on combined motions for summary judgment.1 The Second Circuit’s decision is a result of both groups of plaintiffs appealing that decision.

Under the Digital Millennium Copyright Act of 1998 (the DMCA), online service providers are immune from monetary liability for copyright infringment as a result of certain activities — the most notable, and the one at issue in Viacom, is the safe harbor for “Information Residing on Systems or Networks At Direction of Users.”2

The DMCA lays out requirements for service providers to qualify for this safe harbor, several of which are germane here. I’ll look at each of them in turn and how they were affected by Thursday’s decision.

Knowledge

First, to be protected by the DMCA, a service provider must not have “actual knowledge that the material or an activity using the material on the system or network is infringing” or “is not aware of facts or circumstances from which infringing activity is apparent.” On this point, the parties disputed over whether this means “a general awareness that there are infringements” on a service — likely indisputable in this case — or rather “actual or constructive knowledge of specific and identifiable infringements of individual items.” On this point, the District Court adopted the latter interpretation, in favor of YouTube.

On appeal, the Second Circuit agreed with the District Court’s interpretation of the DMCA’s knowledge provision but vacated the summary judgment since there was evidence that YouTube may have had knowledge of specific infringing clips. It also held that the District Court failed to examine whether YouTube had been willfully blind to specific infringing clips.

This is perhaps the key issue in the case, especially since the second knowledge prong — awareness of facts or circumstances from which infringing activity is apparent (commonly referred to as “red flag” knowledge) — has largely been written out by courts.3 I don’t believe, in fact, that any court has yet to find that a service provider isn’t protected by the DMCA because of “red flag” knowledge.4

The Second Circuit was mindful of this but focused on the language of the statute to render the first knowledge prong as incorporating an “subjective” standard while the red flag prong reflects an “objective” standard. “Both provisions do independent work, and both apply only to specific instances of infringement.”5

Though the “red flag” prong seems all but superflous in practice, on remand, Viacom and the putative class plaintiffs should argue that it triggers a duty to investigate further. That is, when a service provider becomes aware of facts or circumstances that make infringing activity apparent, it must take affirmative steps to determine the legality of the activity. The Second Circuit didn’t address this issue, but the Ninth Circuit has held the opposite:

Perfect 10 alleges that CCBill and CWIE were aware of a number of “red flags” that signaled apparent infringement. Because CWIE and CCBill provided services to “illegal.net” and “stolencelebritypics.com,” Perfect 10 argues that they must have been aware of apparent infringing activity. We disagree. When a website traffics in pictures that are titillating by nature, describing photographs as “illegal” or “stolen” may be an attempt to increase their salacious appeal, rather than an admission that the photographs are actually illegal or stolen. We do not place the burden of determining whether photographs are actually illegal on a service provider.

This can’t be correct. In many other situations, the law places a burden on a party to inquire into the actual nature of something when the facts and circumstances make it apparent.6 And this burden-shifting doesn’t contradict the DMCA’s “no monitoring” provision, which only states that safe harbor protection doesn’t require “affirmatively seeking facts indicating infringing activity” (emphasis added) — this duty to investigate would only arise after those facts were known by the service provider.

Willful Blindness

The Second Circuit held that knowledge under the storage safe harbor includes “willful blindness.” Under the common law, consciously avoiding the confirmation of a fact that one is aware is highly probable is a type of knowledge.7 As the court notes, this doctrine is well-established in copyright law in general, but this is the first time the Second Circuit has faced the issue of whether willful blindness is applicable to the DMCA.

It is, though the court limits its application because safe harbor protection in the DMCA cannot be conditioned on affirmative monitoring by a service provider. So on remand, the District Court will need to determine whether YouTube “made a deliberate effort to avoid guilty knowledge”, in addition to the factual questions of whether YouTube has actual or apparent knowledge of infringing clips on its site.

Right and Ability to Control

Second, a service provider is only immune from liability when it “does not receive 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.” The Court rejected Viacom’s argument that YouTube doesn’t meet this requirement, stating that this “control” provision, like the knowledge provision above, requires “item-specific” knowledge of any infringing activity because “the provider must know of the particular case before he can control it.”

The Circuit reversed the District Court on its interpretation that the “control” provision of the DMCA requires item-specific knowledge — suggesting only vaguely that this question must be determined on a case-by-case basis — and remanded for further fact-finding on YouTube’s right and ability to control and financial benefit.8

But here’s where the court makes what could become a very important statement about the DMCA in the future, and one that hasn’t gotten a lot of attention in much of the initial analyses of the case I’ve read so far. While explaining what sorts of things could lead to a finding that a service provider has a right and ability to control that negates safe harbor protection, the Second Circuit said that inducement of copyright liability might rise to the level of control the DMCA speaks of.

Since the Supreme Court articulated the inducement theory of copyright liability in MGM v. Grokster, many have wondered whether the DMCA safe harbor shields service providers who induce users to infringe on copyright. Some cases have held that the DMCA safe harbors and inducement liability are “inherently contradictory”. In UMG, the Ninth Circuit, without any discussion about the interplay between the two, held the defendant protected by the DMCA against all liability, including a claim of inducement. Similarly, the District Court here granted summary judgment in favor of YouTube for inducement without any explanation.

As far as I know, this marks the first time a Circuit Court has incorporated inducement of copyright as a bar to DMCA safe harbor protection. Its placement in the “control” prong seems to make logical sense, too.

The Scope of ‘By Reason of Storage’

Finally, and this is more of a definitional requirement, immunity only extends to “infringement of copyright by reason of the storage at the direction of a user.” Viacom had argued that several of YouTube’s activities concerning uploaded videos do not fall within the scope of this definition, but again, the District Court rejected this argument.

While the Circuit affirmed that YouTube’s replication, playback, and related video functions were protected by the user storage safe harbor, it recognized that YouTube’s syndication of videos to third parties might fall outside the scope of the safe harbor but hesitated to make a definitive ruling on the point since the record didn’t reveal whether any of the clips involved in the lawsuit had actually been syndicated.

About a year ago, I wrote on this point, noting that chances were slim that Viacom would succeed on this argument, so it is somewhat notable that the Second Circuit recognized at least the existence of an outer boundary to what service providers can do with material uploaded by users while remaining protected by the DMCA safe harbor. It’s still concerning that the Circuit so easily found the other YouTube functions remained within the scope of the safe harbor, in large part because their functionality is “fully automated” — you can program just about anything to be “fully automated.” This interpretation seems to give service providers a “heads I win, tails you lose” position over content creators: one can make a fully-fledged content platform that relies on user-uploaded content that places no liability for copyright infringement since the only responsibility a provider has is to respond to individual takedown notices (pulling in enormous ad revenues), and then seek mercy because it’s too difficult to effectively address infringement due to the sheer amount of data being uploaded.

What’s Next?

For the parties involved, the Second Circuit’s decision is a mixed result on the law. YouTube won on some of its arguments, Viacom and the putative class plaintiffs one on some of theirs. But if the case continues back at the lower court, YouTube will likely ultimately be the loser.

The cardinal sin of Judge Stanton’s original decision wasn’t that he interpreted the DMCA so much in favor of YouTube, but that even under such a narrow interpretation, there was evidence that YouTube could be held liable.

It’s premature to say whether this case could be appealed to the Supreme Court, though that’s always a possibility — and the timing of this decision with the Ninth Circuit’s UMG decision on many of the same points can only add to the speculation.

On a broader note, as attorney Jacqueline Charlesworth points out in a relevant article, “A basic tenet of our law is that one should not encourage others to break it.”

In the adolescence of the Internet, we are seeing complex business models that may combine Grokster-like purpose with other, ostensibly benign functionalities. Services seeking to capitalize on the draw of infringing goods may exhibit superficial respect for copyright concerns—by implementing a takedown program, for instance—yet rest secure in the knowledge that their users will continue to supply the content on which they depend in limitless quantities.

… Courts must resist the invitation to oversimplify reality by arbitrarily dividing the Internet world into “true pirates” and everyone else. Not every pirate is holed up in a garage, has a name ending in “-ster” or spells “wares” with a “z.” Some dress in expensive clothing and have MBAs. Courts need to sort through the facts without prejudging them, and beware pirates in disguise.

There is plenty of evidence that the DMCA has faltered in its 14 year tenure at discouraging bad behavior — witness Megaupload and Grooveshark as recent examples. It remains to be seen whether the Second Circuit’s decision will alleviate building business models around infringement that are shielded by the DMCA safe harbors — which benefit only the service providers— or reach the balance originally intended by the DMCA — benefitting innovative tech companies, content creators, and the general public.

 

Footnotes

  1. The motion for class action certification was subsequently dismissed as moot. []
  2. 17 USC § 512(c). []
  3. See Perfect 10 v. CCBill, “Because CWIE and CCBill provided services to ‘illegal.net’ and ‘stolencelebritypics.com,’ Perfect 10 argues that they must have been aware of apparent infringing activity. We disagree.” []
  4. Greg Jansen, Whose Burden is it Anyway? Addressing the Needs of Content Owners in DMCA Safe Harbors, 62 Federal Communications Law Journal 153, 163 (2010), “To date, no OSP has failed the stringent red-flag test”. []
  5. I’ll note that Congress wasn’t thinking in these terms. In fact, the House Commerce Committe Report on the DMCA said, “The ‘red flag’ test has both a subjective and an objective element. In determining whether the service provider was aware of a ‘red flag,’ the subjective awareness of the service provider of the facts or circumstances in question must be determined. However, in deciding whether those facts or circumstances constitute a ‘red flag’—in other words, whether infringing activity would have been apparent to a reasonable person operating under the same or similar circumstances— an objective standard should be used.” []
  6. For example, in federal securities law: Dodds v. Cigna Securities, “when the circumstances would suggest to an investor of ordinary intelligence the probability that she has been defrauded, a duty of inquiry arises, and knowledge will be imputed to the investor who does not make such an inquiry”; fraud: Higgins v. Crouse, “[W]here the circumstances are such as to suggest to a person of ordinary intelligence the probability that he has been defrauded, a duty of inquiry arises, and if he omits that inquiry when it would have developed the truth, and shuts his eyes to the facts which call for investigation, knowledge of the fraud will be imputed to him”; apparent agency: Whitney v. Citibank, “[A]bsent awareness of facts indicating that a partner is acting beyond his real or apparent authority, a third party is not obligated to investigate the matter further or search for some limitation on that partner’s authority”; statute of limitations: Kronisch v. US, “[E]ven if plaintiff’s awareness of his injury and its cause … could only be characterized as a mere “hunch” or “suspicion,” plaintiff would still have been under a duty to diligently investigate his claim.” []
  7. Global-Tech Appliances v. SEB, 131 S.Ct. 2060, 68-69 (2011). []
  8. This presents one of the places the Second Circuit diverges from the Ninth Circuit’s holding in the highly similar UMG Recordings v. Shelter Capital Partners. There the court held that the right and ability to control does require “control over specific infringing activity the provider knows about.” []

While laws that protect intellectual property remain strong and enforcement efforts continue, technology has tipped the balance away from the interests of most creators and artists. The ease of distribution of copyrighted content has helped create a generation of people who believe that all content should be free. The notion that artists and creators, and even the big companies that finance, produce and deliver their  creations, don’t have the right to own and control their distribution, simply cannot be.

Jill Lesser, newly appointed Executive Director of the Center for Copyright Information.

Second Circuit Reverses YouTube Decision: DMCA Safe Harbor Might Not Apply — The Second Circuit reached a decision in what will likely become one of the seminal DMCA cases from now on. I’ll have some thoughts on the decision next week.

Robert Levine and Brett Danaher at CMW — A great couple of videos from Canadian Music Week. Free Ride author Rob Levine speaks on the issues he addresses in his book, while economics professor Brett Danaher presents in layman’s terms his recent report that showed an increase in iTunes sales in France after HADOPI was introduced.

Center for Copyright Information Announces Three Major Steps Towards Implementation — The organization in charge of administering the voluntary agreement between ISPs and major content companies to address piracy announced this week it has named its executive director and advisory board, as well as retaining the American Arbitration Association to manage and train the program’s neutral reviewers. The advisory board includes members of the CDT and Public Knowledge — but not the EFF, and they are not amused.

Behind the music: Estonia makes its mark on the musical map — Helienne Lindvall reports on last week’s Tallinn Music Week in Estonia. The three day festival combined raucous rock and roll with reminders of the country’s past as part of the Soviet Union and an eye toward a society that respects and remunerates creators. Lindvall quotes Estonian minister of culture Rain Lang as asking, “Why is it telecoms feel human value can be questioned, but technology can’t?”

Frequently Asked Questions Relating to Copyright (FAQ) — The Copyright Alliance has assembled a helpful guide for artists and creators to learn more about copyright and licensing.

Forget Hollywood — U.S. startups are in dire need of copyright protection — An interesting perspective from Wei Lien Dang at Venture Beat, though artists and creators should find the points raised familiar, such as “Consumer choice should be about actually having to decide between two different options, not two of the same exact thing” and “Clones have the luxury of only having to focus on scaling quickly; innovators have to worry about both product development and scaling their business, making it more difficult for them to enter new markets as quickly as clones.”

Disruptions: Top 10 Lists Lead to Less Choice on the Web — We were told the internet would democratize media and lengthen the long tail. Nick Bilton at the NY Times argues that the opposite could be happening. “Not only are we in a popularity contest. We are in a popularity contest in a hall of mirrors.”

Discussions about copyright sometimes set up a dichotomy between technology and creativity. But is the gap between the two really so great?

Historian Maury Klein notes that the introduction of the word “technology” in its modern sense comes as early as 1829, when Jacob Bigelaw published his book Elements of Technology. Bigelaw defined the term as “the application of the sciences to the useful arts.”

In 1855, George Wilson, Regius Professor of Technology at the University of Edinburgh and first Director of the Industrial Museum of Scotland, gave an inaugural lecture at the University of Edinburgh for its new technology chair. Below is an excerpt from his lecture, What is Technology?

What’s interesting is how he sets up the distinction between technology and the creative arts as a matter of definition. The two fields otherwise have very many similarities and share many of the same purposes. The distinction, thus, is more a matter of semantics than anything else.

Thus far, the meaning of the word Technology is not far to seek, but it must be taken with two important qualifications, to which I now request our attention. The one of these is, that Technology includes only Utilitarian Arts: the other, that it includes only certain of these.

It is by a quite conventional limitation, that the word art, τέχνης, (technes), denoted by the first dissyllable of Technology, is held to signify Useful, Utilitarian, Economic, or Industrial Art, for the Useless Arts, such as Legerdemain, or the Art of Conjuring, are eminently technical, and still more so are the worse than Useless Arts, such as cheating at cards, and other sorts of dishonest gambling.

Nor is the limitation less conventional which excludes the Fine Arts from the domain of Technology; for no Arts call for more skilful workmen than Painting, Sculpture, and Music, and none are more technical in their modes of procedure. Far less are the Fine Arts excluded, because they are regarded as useless or hurtful. The Technologist avoids them for exactly the opposite reason. Poetry, Painting, Sculpture, Music, and the Sister Arts, are in the highest degree useful, inasmuch as they minister to the wants of the noblest parts of our nature; but in so ministering they excite such emotions of pleasure, or its inseparable correlative, pain, that the sense of their usefulness is lost in the delight, or awe, or anguish, which they occasion. So much is this the case, that while men thank each other for the gift of bread when they are hungry, or of water when they are thirsty, or of a light to guide them in the dark, they return no thanks for a sweet song, or a great picture, or a noble statue; not that they are unthankful for these, but that the duty of thanksgiving is forgotten in the pleasure of enjoying, or the strangely fascinating pain of trembling before a work of creative genius.

And the artist himself, singularly enough, in a multitude of cases, makes no complaint at this thanklessness, and counts it no compliment to his work to call it useful. The end of Æsthetic or Fine Art, he will tell you, is the realisation of beauty, not utility; as if the latter were rather an accidental or unavoidable and unfortunate accompaniment of the former, than the welcome inseparable shadow which attends it, as the morning and evening twilight, tempering his brightness, go before and after the sun. But such a description of the aim of his labours, though natural to the Artist, is unjust to his Art. The true object of Æsthetic or Fine Art is not Beauty, but Utility, through or by means of Beauty.

It may be that the Poet, the Painter, the Sculptor, the Musician, often think only of the emotional delight which their works will awaken in the hearts of their brethren. But these works, in the very act of delighting, serve those whom they delight. It is surely as useful a thing, on occasion, to fill the eager ear with music, or the longing eye with the glories of form and colour, or the aching heart with thoughts of joy, as it is to fill the hungry stomach with food, or to clothe the naked body.

Today’s guest post comes from Devlin Hartline, a J.D. candidate at Loyola University New Orleans College of Law with an expected graduation date of May, 2012. His primary interests are in copyright, internet, and constitutional law. He lives with his wife and two young sons in Metairie, Louisiana. You can follow him on Twitter: @devlinhartline.

Introduction

Apparently, Google thinks it should be above the law. It hasn’t explicitly said so, of course, but that’s my takeaway from its protest of the Stop Online Piracy Act (SOPA) and the PROTECT IP Act this past January. Specifically, Google thinks that it should be allowed to list rogue sites in its search results without any court having the power to order it to stop. Google’s position strikes me as self-contradictory. On the one hand it says that Congress is “trying to do the right thing by going after pirates and counterfeiters.” On the other hand it says that search engines shouldn’t “be forced to delete entire websites from their search results.” What Google glosses over is the fact that search engines like itself are part of the problem—search engines drive traffic to rogue sites by listing them in their search results. This is why courts already order search engines to delist rogue sites.

The day before the protests, Google provided a written statement to the Huffington Post announcing that it’d be joining the grumblers: “we oppose these bills because there are smart, targeted ways to shut down foreign rogue websites without asking American companies to censor the Internet.” Sure enough, the next day Google blacked-out the logo on its home page. When users clicked on the self-censored insignia, they were taken to an information page, “End Piracy, Not Liberty.” From there, a tab led to another page, “More about SOPA and PIPA,” where Google sketched out the reasons behind its opposition. Google’s three main gripes with the bills can be boiled down thusly: (1) it’s censorship, (2) it’ll hurt innovation, and (3) it’s futile. Noticeably absent from this explanation is any acknowledgement that search engines meaningfully contribute to online infringement.

I can’t help but feel cynical. The same Google that unilaterally delisted over 11 million websites from its search results because they were too “spammy and low-quality” thinks it’s wrong that a court should order it to delist even one single site that has been determined to be dedicated to infringement. The same Google that forfeited $500 million to the United States government after it got caught assisting foreign pharmacies in importing illegal drugs thinks it’s OK to assist foreign rogue sites in the commission of online piracy. If Google really thinks that preventing piracy is such a good thing, then why does it want to help rogue sites out by linking to them? As with many things, I think the answer is money—it costs real money to comply with a court order to delist a rogue site. The question is whether any of this should actually be Google’s problem. I think that clearly the answer is, “yes.”

“I Come From Cyberspace”

In his iconic “A Declaration of the Independence of Cyberspace,” Grateful Dead lyricist, EFF cofounder, and cyberlibertarian John Perry Barlow threw down the gauntlet on behalf of cyberspace:

Governments of the Industrial World, you weary giants of flesh and steel, I come from Cyberspace, the new home of Mind. On behalf of the future, I ask you of the past to leave us alone. You are not welcome among us. You have no sovereignty where we gather. . . . I declare the global social space we are building to be naturally independent of the tyrannies you seek to impose on us. You have no moral right to rule us nor do you possess any methods of enforcement we have true reason to fear. . . . Cyberspace does not lie within your borders. . . . Ours is a world that is both everywhere and nowhere, but it is not where bodies live.

Barlow’s quaint and utopian, if not anarchic, vision of cyberspace as existing somewhere untouchable by the “Governments of the Industrial World” never was. Nor would it ever come to be. In fact, in an ironic twist of fate, the “would-be Cyber-Jefferson” Barlow delivered his Declaration on the same day that President Clinton signed the internet-regulating Communications Decency Act into law.1 While cyberspace as a metaphorical place does not lie within any actual borders (and what metaphor ever does?), the same cannot be said for the people that make cyberspace possible—the so-called intermediaries. According to Black’s Law Dictionary (9th ed. 2009), an “intermediary” is “a mediator or go-between; a third-party negotiator.” An intermediary, then, is just a middleman. Cyberspace may be “everywhere and nowhere,” but the intermediaries all dwell in this world of “flesh and steel,” anything but “independent of the tyrannies.”

For netizens, cyberspace’s intermediaries take on familiar forms such as internet service providers, payment processors, content hosts, search engines, and advertising networks. Use of intermediaries in mass communications is nothing new; yesterday’s switchboard is today’s network switch. Without intermediaries, mass communication platforms such as the internet wouldn’t exist. The internet, after all, is just a global network of interconnected intermediaries who host, transport, and organize our data. And given their “essential role in facilitating online communication, intermediaries often are capable of exercising authority over wrongdoers who are otherwise unreachable” for a variety of reasons.2 Instead of circumventing the middlemen, the digital revolution has simply replaced one set of intermediaries with another. The internet’s decentralized structure has, by design, engendered the proliferation of a new set of intermediaries.

There’s no doubt that intermediaries like Google make infringement on the internet possible, for without the intermediaries there’d be no internet to infringe on in the first place. The difficult question then is which intermediaries, if any, should be held responsible for the infringement they help make possible. Should a search engine like Google be liable for infringement that takes place on the rogue sites it links to in its search results?

Common Law Secondary Liability

Copyright infringement is a tort, or a civil wrong. The Copyright Act, in § 106, provides that “the owner of copyright . . . has the exclusive rights to do and to authorize” certain enumerated acts, including making copies, preparing derivative works, and distributing copies. § 501(a) of the Act provides that “[a]nyone who violates any of the exclusive rights of the copyright owner . . . is an infringer of the copyright.” Thus, only the copyright owner has the right, say, to make copies or to authorize the making of copies, and anyone else who does so is liable for infringement.

Direct copyright infringement occurs when someone, called the primary or direct infringer, is held liable for their own infringing acts. If I unlawfully make copies of your copyrighted work, I’m a primary infringer. Indirect copyright infringement, on the other hand, occurs when someone else, called the secondary or indirect infringer, is held liable as well. If someone else unlawfully authorizes me to make copies of your copyrighted work and I do so, I’m a primary infringer and the party that gave me authorization is a secondary infringer. Even though that other party didn’t personally make the copy (only I did), the law holds them responsible because they played a significant part in my unlawful copying.

The idea of placing liability on someone other than the primary infringer is what’s referred to as secondary liability in copyright law. It’s called other things too, like intermediary liability, indirect liability, third-party liability, or derivative liability. Whatever it’s called, the basic notion is the same: If someone else helps me to infringe, by, say, inciting or facilitating my infringement, then that someone else will be liable for my infringement since they helped to bring it about. The idea of holding responsible those who help others commit unlawful acts is not unique to copyright law. Perhaps more familiar are the similar concepts of accomplice or accessory liabilities in criminal law. If I help you plan a robbery or act as your lookout while you rob a bank, I’m liable because I helped you commit your crime. By making it unlawful to help others commit unlawful acts, we deter people from doing so.

The Copyright Act itself does not expressly provide for secondary liability for infringement. Nonetheless, the Supreme Court has noted that the “absence of such express language in the copyright statute does not preclude the imposition of liability for copyright infringements on certain parties who have not themselves engaged in the infringing activity.”3 Indeed, secondary liability concepts in copyright law have been developed over time through judge-made, common law. “Courts have long recognized . . . that one may be held liable for the infringing acts of another.”4 Two distinct branches of secondary liability have been developed: “vicarious liability (grounded in the tort concept of respondeat superior) and contributory infringement (founded on the tort concept of enterprise liability).”5

While it’s true that the Copyright Act doesn’t explicitly refer to secondary liability in so many words, § 106’s grant of the exclusive right “to authorize” in fact indicates Congress’s endorsement of court-developed contributory liability principles. The relevant House Report explains: “Use of the phrase ‘to authorize’ is intended to avoid any questions as to the liability of contributory infringers.”6 This comes as no surprise, since, as the Supreme Court noted over a century ago, contributory liability is a principle “recognized in every part of the law.”7 The Second Circuit’s formulation of contributory liability is oft-quoted: “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.”8 Thus, liability for contributory infringement turns on two elements: (1) knowledge, and (2) inducement, causation, or material contribution. So where does Google’s search engine fall within this rubric?

Google’s Secondary Liability

Conveniently enough, the Ninth Circuit addressed this very point at length in Perfect 10 v. Amazon.com.9 There, plaintiff Perfect 10 argued that defendant Google was secondarily liable for infringement occurring on third-party websites because Google provided links to these sites in its search results. The circuit court started its analysis by noting that contributory liability is examined in light of the “rules of fault-based liability derived from the common law,” a principle of which is that intent may be imputed: “Tort law ordinarily imputes to an actor the intention to cause the natural and probable consequences of his conduct.”10 Thus, since its intent to encourage direct infringement may be imputed, an actor (like Google) may be liable for contributory infringement if it knowingly takes actions (like linking) that are substantially certain to result in direct infringement by others.

The court of appeals then looked to two cases, Napster11 and Netcom,12 for the application of these principles in cyberspace. In Napster, the Ninth Circuit stated that “if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.”13 Similarly, the district court in Netcom held that if an internet service provider knows or has reason to know that material on its system is infringing and fails to remove it, then it is liable for contributory infringement since its failure constitutes substantial participation in the resulting infringement.14 Both cases stand for the proposition that a “service provider’s knowing failure to prevent infringing actions” can be the “basis for imposing contributory liability” since intent to cause the natural result of its conduct may be imputed.15

The Ninth Circuit noted that a central theme of Napster and Netcom is the fact that online services have the ability to drastically amplify the effects of infringing activities. As the Supreme Court noted in Grokster,16 when a service enables individuals to commit infringement on a large scale, the argument for imposing indirect liability on that service is particularly powerful. The court of appeals observed that when a service is used widely to infringe, it is simply not possible for a copyright owner to enforce its rights against all of the direct infringers. Sometimes “the only practical alternative” is “to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement.”17 Accordingly, the circuit court held that “a computer system operator can be held contributorily liable if it has actual knowledge that specific infringing material is available using its system and can take simple measures to prevent further damage to copyrighted works yet continues to provide access to infringing works.”18

The Ninth Circuit then turned its sights on Google: “There is no dispute that Google substantially assists websites to distribute their infringing copies to a worldwide market and assists a worldwide audience of users to access infringing materials.”19 Thus, the court of appeals held that Google could be liable as a contributory infringer if it: (1) knew that infringing materials were available using its search engine, (2) could take simple measures to remove the links, and (3) failed to do so.

The Ninth Circuit’s opinion comports with the DMCA safe harbor provisions. Under § 512(d) of the Copyright Act, a search engine such as Google is significantly shielded from liability for infringement that occurs via links it provides so long as the links are quickly removed or disabled when the search engine becomes aware that they lead to infringing material or activity. Thus, the DMCA seeks to encourage the delisting of rogue sites from search results by giving search engines safe harbor if they remove links when presented with proper takedown notices (which are deemed as a matter of law to impart knowledge of infringement). This embodies Congress’s judgment that it’s generally a bad thing for search engines to provide links to rogue sites. According to both Congress and the courts, search engines that knowingly link to rogue sites are opening themselves up to secondary liability for the infringement they help bring about. And given that “Google is ranked #1 in the world” according to Alexa’s traffic rankings, its contribution to the problem of online infringement is all the more impossible to deny.

Censorship, Innovation, And Futility

When the argument is properly framed as whether Google should be allowed to substantially assist worldwide infringement via its search engine, its counterarguments about censorship, innovation, and futility fall apart. Google complains that “search engines could be forced to delete entire websites from their search results.” There’s no doubt that under some broad definition of the word, a court ordering Google to delist a rogue site is censorship. But so what? All law enforcement efforts are censorship on some level. The whole point is to censor—that is, to stop—the party that’s unjustifiably causing harm. Google can be forced to “delete entire websites” from its search results because those links are significantly contributing to whatever infringing material or activity they point to. What’s being censored is Google’s excessive role in the problem of online piracy. If Google really thinks that pursuing piracy is a lofty goal, you’d think it’d want to remove its own links to these rogue sites.

Google’s complaint about innovation is equally vapid. It starts with the curious assertion that “internet companies would have to monitor everything users link to or upload or face the risk of time-consuming litigation.” This is simply not so. It is fundamental to secondary liability doctrine that intermediaries “do not take on an affirmative duty to act or to prevent tortious or illegal conduct, but only a duty not to facilitate known wrongdoing.”20 Google has no duty to monitor the links it provides in its search results, and nothing in the Stop Online Piracy Act or the PROTECT IP Act would establish such a duty—in fact both bills explicitly say there’s no affirmative duty to monitor. Google also points to letters from internet companies, venture capitalists, and entrepreneurs making vague arguments about how the bills would stifle innovation generally. But innovators like Google are not exempt from the law, and it’s hard to see how complying with court orders is unduly burdensome for a company like Google that already has such mechanisms in place. Google’s service creates a harm to innocent third parties that is significant enough to warrant holding it responsible for that harm. It’s disingenuous for Google to complain about the cost of eliminating a harm that Google itself is creating.

Google’s final argument is that “SOPA and PIPA won’t even work” since rogue sites will just relocate. Instead, it argues that “Congress should consider alternatives like the OPEN Act” that take a follow-the-money approach. This argument is clearly self-serving. All of the bills (SOPA, PROTECT IP Act, and OPEN Act) target the money supplies of rogue sites. If targeting the money supply is by itself effective, then why does adding the requirement that search engines also delist rogue sites suddenly make the whole thing not work? That makes no sense. Google’s support of the OPEN Act is better explained by the fact that the Act contains no provisions dictating that search engines must delist rogue sites. In other words, the OPEN Act doesn’t make Google responsible for the harm that it chooses to create (and, I assume, to profit from). How very convenient. Google’s complaint here is not about the futility of the bills—it’s about Google’s bottom line. And that’s what all of this hoopla has been about all along, if you ask me.

Follow me on Twitter: @devlinhartline

Footnotes

  1. Alex Kozinski & Josh Goldfoot, A Declaration of the Dependence of Cyberspace, 32 Colum. J.L. & Arts 365 (2009). []
  2. David S. Ardia, Free Speech Savior or Shield for Scoundrels: An Empirical Study of Intermediary Immunity Under Section 230 of the Communications Decency Act, 43 Loy. L.A. L. Rev. 373, 378-79 (2010). []
  3. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 434 (1984). []
  4. Demetriades v. Kaufmann, 690 F.Supp. 289, 292 (S.D.N.Y. 1988). []
  5. Id. (internal quotation marks omitted). []
  6. H.R. Rep. No. 94-1478 at 61; the House Report also endorses common law vicarious infringement, id. at 159-60 (“a person who violates any of the exclusive rights of the copyright owner is an infringer, including persons who can be considered related or vicarious infringers. . . . The committee has decided that no justification exists for changing the existing law . . . .”). []
  7. Kalem Co. v. Harper Bros., 222 U.S. 55, 63 (1911). []
  8. Gershwin Pub. Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). []
  9. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007). []
  10. Id. at 1171 (internal quotations and citations omitted). []
  11. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). []
  12. Religious Tech. Ctr. v. Netcom On-Line Commc’n Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995). []
  13. Perfect 10, 508 F.3d at 1171 (internal quotations omitted). []
  14. Id. at 1171-72. []
  15. Id. at 1172. []
  16. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). []
  17. Perfect 10, 508 F.3d at 1172. []
  18. Id. (internal quotations and citations omitted). []
  19. Id. []
  20. David S. Ardia, Free Speech Savior or Shield for Scoundrels: An Empirical Study of Intermediary Immunity Under Section 230 of the Communications Decency Act, 43 Loy. L.A. L. Rev. 373, 505 (2010). []