Obama’s intellectual property chief steps down — A sincere thank you and best wishes to Victoria Espinel, who, it was announced this week, is stepping down from her post as Intellectual Property Enforcement Coordinator. Espinel was the first IPEC, appointed late 2009. Her office released a Joint Strategic Plan in June, detailing its work and goals over the next three years.

The ‘Breaking Bad’ example for why illegal downloading must stop — One of the many ways copyright benefits the public: “Since production began in 2007, “Breaking Bad” has spent an estimated $60 million to $70 million on goods, services and wages for crew members in New Mexico — not counting wages paid to actors, writers and directors.” The same holds true for any other television show or film being made. (And no Breaking Bad spoilers please, I’m still catching up on Netfilx!)

“Open Source” Doesn’t Mean There’s Not a License — Open source and other copyleft licenses are often thought of as alternatives to copyright, but they rely upon copyright to exist. Particularly, the noneconomic control that copyright provides to creators; it’s just that in the case of open source, the control is targeted at such things as limiting commercial use or requiring downstream modifications to be released to the public under similar license terms.

Tun-Jen Chiang: Rehabilitating the Property Theory of Copyright’s First Amendment Exemption — “A continuing controversy in copyright law is the exemption of copyright from First Amendment scrutiny. The Supreme Court has justified the exemption based on history and the intentions of the Framers, but this explanation is unpersuasive on the historical facts. There is an alternative explanation: copyright is property, and private property is generally exempt from scrutiny under standard First Amendment doctrine.”

The Night Eric Schmidt Joked About Killing Newspapers — “I said to him, ‘It’s going to be on your tombstone: “I killed newspapers.”‘ And he said, ‘No, I love newspapers.’ And I said, ‘But you’re taking all of our money!’ And he said, like a good CEO, ‘It’s our money now.’”

Cross-posted on the Law Theories blog.

As a follow-up to my last post about why copyright is a right and fair use is a privilege, I wanted to respond to some of the issues brought up by people on the ‘net about what I had written. Let me start by saying that I understand that, normatively, some are upset by the very notion that copyright is a full-fledged right while fair use is relegated to being merely a privilege. A right sounds so much more important than a privilege, and it makes fair use sound like some second-class citizen to call it the latter. I think some people dismissed my post completely just based on its title—the reasoning didn’t matter since the conclusions weren’t what those people wanted to hear. I think such closed-mindedness is unfortunate and counterproductive, and if we don’t stop to understand what others are saying—even when we don’t like it—we’re doomed forever to talk past each other.

One person brushed off my post as arguing semantics and meaningless labels, but I think that the feedback I got from both sides of the debate shows that labels matter significantly to people. Besides, why would a person bother to reach out and say that my labels are unimportant unless that person thinks that labels are actually important? Labels matter. For example, I don’t think that Mike Masnick refers to copyright as a “monopoly privilege” because he thinks labels don’t matter. I think he specifically chooses both of those words because of the negative connotations associated with each. There’s nothing wrong with caring about labels, of course, though I do fault those such as Masnick who appear to do so opportunistically and only for rhetorical effect. When discussing legal terms of art, I prefer precision over perception. I don’t get the sense that Masnick feels the same way.

This passage from Professor Tom Bell exemplifies such thinking:

Nonetheless, for right or wrong, copyright represents an exception to the general rule that we can freely speak the truth. It thus won’t do to call copyright simply a “property right.” We should at least append the qualifying phrase, “and an anti-property right,” because copyright’s power comes at the expense of our rights in our pens, presses, and throats. Should we also call copyright an anti-person right? It endures only at cost to our liberties, after all. At any rate, copyright hardly deserves the honorable title, “property”; we would do far better to call it “privilege.”1

Deciding whether something is a privilege based on our own subjective view as to whether the thing is “honorable” strikes me as an imprecise and inconsistent way to classify things. What makes more sense is a system that objectively classifies things, such as Hohfeld’s fundamental jural relations. Those who claim that copyright is a privilege and fair use is a right seem to be basing that view on nothing more than their gut feeling about the relative importance of each. The normative view that fair use shouldn’t be called a privilege because it’s just too important, I think, is based on the erroneous supposition that privileges are somehow less important than rights. Legally speaking, that’s not necessarily the case. This is demonstrated by the fact that a fair user’s privilege trumps a copyright owner’s right.

In fact, many of the “rights” that we hold most dear, guaranteed by the Bill of Rights, are not even rights in the Hohfeldian sense. The “Bill of Rights” should more accurately be called the “Bill of Privileges and Immunities.”2 Some faulted me for not mentioning the First Amendment in my post, but the fact that fair use is imbued with constitutional significance doesn’t change the fact that it’s a privilege. Moreover, I think that people are under the common misperception that the First Amendment creates Hohfeldian rights. It doesn’t. The First Amendment tells Congress that it can’t make any laws abridging the freedom of speech. In Hohfeldian terms, this creates in the government a disability and in us an immunity from laws that abridge our freedom of speech.3

One person expressed concern over the last sentence of my post where I said: “A rightholder, or anyone else for that matter, can make the exercise of a would-be fair user’s privilege as easy or as difficult as he likes—even impossible if he so wishes.” I think the point is rather obvious, but I’ll give an example. If I write a novel on my typewriter, I can take that manuscript and lock it up in my safe. Another has the privilege of making fair use of my novel, even if that privilege is somewhat diminished as the novel in unpublished, but that privilege doesn’t arm the privilege-holder with any sort of legally enforceable claim against me that I make the novel available to him so he can exercise his privilege. I can lock it up forever or loan it to everyone else in the world but him without any liability since I am under no duty of noninterference with respect to the would-be fair user.

This is not to say that the constitutional underpinnings of fair use are unimportant. They are. The immunities granted to us by the First Amendment have significant repercussions when it comes to the privileges we have, such as fair use, vis-à-vis the rights granted to copyright owners. As unnatural as it may seem to the uninitiated, an immunity, or even a privilege for that matter, can be a much more powerful weapon than a right. Great rewards await those who can get past the labels to examine the substances beneath, and to that end, in this post I’ll explain how the First Amendment implications of fair use operate doctrinally.

Ad Hoc Balancing vs. Definitional Balancing

The interaction of copyright law and the First Amendment is a favorite subject of mine, and I’d like to take a step back and discuss the Supreme Court’s current approach to the subject. It’s helpful to start with how First Amendment challenges to speech restrictions work generally. The First Amendment provides that “Congress shall make no law . . . abridging the freedom of speech . . . .” Surely that means that all speech is protected, right? The answer, it turns out, is that not all speech is treated the same way, and, despite the minority view held by some absolutists, the First Amendment does not protect all speech. The tricky part is figuring out whether a particular instance of speech is protected or not.

Take, for example, the Sherman Act, which makes illegal agreements in restraint of trade.4 How should a court proceed if a defendant claims that the agreement he made with his codefendant is speech protected by the First Amendment, even if it’s in restraint of trade? The answer, as is so often the case in the law, is that the competing interests have to be balanced; the nonspeech interests have to be weighed against the speech interests. But where to do this balancing? The Supreme Court has identified certain types of speech that require a court to do a balancing of interests based on the particular facts of the case before the court. For other types of speech, the Court has found that no such balancing is necessary since the weighing of interests has already been done when the statute making that speech unlawful was promulgated. The former approach is referred to as ad hoc balancing, while the latter approach is referred to as categorical or definitional balancing.

Staying with the context of antitrust law, take the example of FTC v. SCTLA.5 There, a group of lawyers who represented indigent criminal defendants in Washington, D.C., agreed that they would not accept any new cases unless and until their fees were increased. The lawyers got their fee increase, but the FTC filed a complaint against them alleging that their group boycott was in violation of the antitrust laws. The lawyers argued that their concerted action was expression protected by the First Amendment. The Court of Appeals for the District of Columbia Circuit agreed, finding that such boycotts were significantly expressive such that an ad hoc balancing of the competing interests presented in the particular case was necessary. The Supreme Court reversed, ruling instead that such boycotts were categorically unlawful:

In sum, there is thus nothing unique about the “expressive component” of respondents’ boycott. A rule that requires courts to apply the antitrust laws “prudently and with sensitivity” whenever an economic boycott has an “expressive component” would create a gaping hole in the fabric of those laws. Respondents’ boycott thus has no special characteristics meriting an exemption from the per se rules of antitrust law.6

Thus, the Supreme Court found that the antitrust laws at issue were balanced against countervailing First Amendment values at the definitional level, and this in turn meant that there was no need to do an ad hoc balancing of the competing interests, taking into account the particular defendants’ interests, as the Court of Appeals had done.

When analyzing a content-based restriction, which limits speech because of the idea or viewpoint conveyed, the Supreme Court has developed a two-tiered approach, separating low-value speech from high-value speech. A court first has to determine if the speech in question occupies a subordinate position in the spectrum of First Amendment values such that it is classified as low-value speech. If so, then that speech receives little or no First Amendment protection. As the Court famously noted over seventy years ago:

There are certain well-defined and narrowly limited classes of speech, the prevention and punishment of which have never been thought to raise any Constitutional problem. These include the lewd and obscene, the profane, the libelous, and the insulting or “fighting” words—those which by their very utterance inflict injury or tend to incite an immediate breach of the peace. It has been well observed that such utterances are no essential part of any exposition of ideas, and are of such slight social value as a step to truth that any benefit that may be derived from them is clearly outweighed by the social interest in order and morality.7

Over the years, the Court has added many other types of speech that are classified as low-value, such as express incitement, false statements of fact, commercial advertising, and child pornography. With low-value speech, the Court’s approach is that of definitional balancing where the weighing of competing interests is done at the rulemaking level. Rather than do an ad hoc balancing of a particular defendant’s free speech interests, the Court instead looks at the class of speech at issue as a whole to determine whether it is protected by the First Amendment or not. Take, for example, obscenity, where the Court has established a three-part test for determining whether speech is obscene.8 So long as a law regulating obscenity tracks the Court’s test, a First Amendment challenge of that law will necessarily fail—the First Amendment values have already been balanced by the Court at the definitional level.

The advantage of this definitional balancing is that courts down the road need only to apply the rule without doing any sort of ad hoc balancing based on the facts peculiar to the particular defendant before the court. It’s much easier to apply a general test than it is to consider the free speech interests of any given defendant. If the speech at issue does not fall into any of the classes of low-value speech, then it is high-value speech that receives significant First Amendment protection via an ad hoc balancing of the competing interests. A content-based restriction of high-value speech is analyzed under the rubric of strict scrutiny: The law at issue will be presumed unconstitutional, and it will only be upheld if it is “necessary to serve a compelling state interest and is narrowly drawn to achieve that end.”9

The Supreme Court has also created a framework for analyzing a content-neutral restriction, which regulates speech without reference to its content. The primary example of a content-neutral regulation is a time, place, or manner restriction. For example, a law that regulates the maximum volume of amplified music permissible at a city-owned band shell is content-neutral since, though it regulates speech, it does so without regard to the ideas or viewpoints being expressed. A content-neutral regulation is analyzed under the rubric of intermediate scrutiny: For the law at issue to be upheld, it “must be narrowly tailored to serve the government’s legitimate, content-neutral interests,” though “it need not be the least restrictive or least intrusive means of doing so.”10 This too is an ad hoc balancing of competing interests.

Thus, the Supreme Court’s approach to analyzing the constitutionality of a law that affects speech begins with classifying the law as being either content-neutral or content-based. If it’s content-neutral, then the ad hoc balancing of intermediate scrutiny is applied to it to determine whether the speech is protected by the First Amendment or not. If the speech interests outweigh the nonspeech interests, then it’s protected, and if the nonspeech interests outweigh the speech interests, then it’s not. If the law in question is content-based, the determination has to first be made as to whether the speech is classified as low-value speech or high-value speech. If it’s low-value speech, then the balancing has already been done definitionally at the rulemaking level, and if it’s high-value speech, then the ad hoc balancing of strict scrutiny is applied. I’m greatly simplifying things here, but these are the broad strokes.

Nimmer and the Definitional Balancing of Copyright

So how does copyright law fit into this framework? Professor Melville Nimmer published a seminal journal article in 1970 asking just that question.11 The answer, in Nimmer’s opinion, lay in definitional balancing. Professor Neil Netanel, whose recent law review article I recommended in last week’s Friday’s Endnotes on Copyhype, explains Nimmer’s definitional balancing approach:

Nimmer argued that the tension between copyright and the First Amendment can be satisfactorily resolved, even if it cannot be eliminated. His proffered solution was a method for balancing speech and non-speech interests that he labeled “definitional balancing.” *** As Nimmer described that methodological approach, a court considering whether a given law unconstitutionally abridges speech weighs the non-speech interests that the law aims to serve against the speech interests that the law burdens. Based on that assessment, the court then propounds generally applicable rules governing which types of speech may give rise to liability under the law in question and which must enjoy a First Amendment privilege.12

Nimmer had published a law review article about definitional balancing in 1968,13 focusing on the then-recent Supreme Court opinion in New York Times v. Sullivan where the Court applied definitional balancing to defamation law.14 While we may take the idea of definitional balancing for granted now, at the time Nimmer was writing his articles it was a relatively novel approach to First Amendment jurisprudence. Nimmer’s view that definitional balancing could be applied to copyright law was certainly ahead of its time. Nimmer located the definitional balancing internally to copyright law within the idea/expression dichotomy, the fair use doctrine, and the constitutional fiat that the copyright term be for a limited time. In Nimmer’s view, there was no need to do an ad hoc balancing when analyzing a First Amendment challenge to a copyright law because these internal doctrines already balanced First Amendment values at the definitional level.

Nimmer’s definitional balancing approach to copyright was first adopted by the Supreme Court in its 1985 opinion in Harper & Row.15 The issue there was whether the defendant’s use of a few hundred words from an unpublished manuscript of President Ford’s memoirs was fair use. In the Court’s opinion, the Second Circuit below had correctly noted “that copyright’s idea/expression dichotomy strikes a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression. No author may copyright his ideas or the facts he narrates.”16 The Court rejected the defendant’s argument that since the purported fair use involved a matter of great public concern, the traditional fair use test was inappropriate to balance the competing interests:

In view of the First Amendment protections already embodied in the Copyright Act’s distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use, we see no warrant for expanding the doctrine of fair use to create what amounts to a public figure exception to copyright. Whether verbatim copying from a public figure’s manuscript in a given case is or is not fair must be judged according to the traditional equities of fair use.17

Thus, the Supreme Court declined the invitation to apply an ad hoc balancing to the facts of the case at hand, instead finding that the Copyright Act and the First Amendment were balanced at the definitional level through the idea/expression dichotomy and the fair use doctrine. The Court thus imbued these two doctrines with constitutional significance, and it created a dividing line between speech that is protected by the First Amendment and speech that is not. Speech that is fair use or that appropriates only facts is protected by the First Amendment, while speech that appropriates expression but which is not fair use is not.

But the Court’s adoption of definitional balancing in Harper & Row did not stop many commentators from felling many trees while suggesting that ad hoc balancing was the better approach to weighing free speech interests against those sought to be promoted by copyright. For example, Professors Mark Lemley and Eugene Volokh argued that copyright is “a form of content-based, government-imposed speech restriction. The mere fact that the restriction is denominated a ‘property right’ should not exempt it from conventional First Amendment scrutiny.”18 Since in their view copyright is a content-based restriction, that scrutiny to be applied would therefore be strict. Similarly, Professor Neil Netanel has argued that “under the category approach that has developed since the Nimmer article was published, copyright law constitutes content-neutral speech regulation that should be subject to heightened, but not strict, scrutiny.”19 Netanel would place copyright “within a subcategory of content-neutral speech restriction that courts have subjected to considerably more rigorous scrutiny.”20

The Supreme Court has declined to follow the suggestion made by commentators that ad hoc balancing is the proper way to approach First Amendment challenges to copyright laws, and it has instead continued down the path of definitional balancing first adopted in Harper & Row. The two most recent opinions where the Court has discussed this are Eldred v. Ashcroft in 2003 and Golan v. Holder in 2012.21 I wrote about the First Amendment implications of these two opinions in a prior post.

In Eldred v. Ashcroft, the Court analyzed a First Amendment challenge of the Copyright Term Extension Act (“CTEA”), which extended by 20 years the copyright terms of future and existing works. The petitioners had argued that the CTEA was a content-neutral regulation warranting the ad hoc balancing of intermediate scrutiny. The Supreme Court disagreed: “We reject petitioners’ plea for imposition of uncommonly strict scrutiny on a copyright scheme that incorporates its own speech-protective purposes and safeguards.”22 The Court reiterated its statement from Harper & Row that the “idea/expression dichotomy strikes a definitional balance between the First Amendment and the Copyright Act,” and it again cited the fair use doctrine as providing “considerable latitude for scholarship and comment.”23 In summation, the Court wholeheartedly adopted Nimmer’s definitional balancing:

The First Amendment securely protects the freedom to make—or decline to make—one’s own speech; it bears less heavily when speakers assert the right to make other people’s speeches. To the extent such assertions raise First Amendment concerns, copyright’s built-in free speech safeguards are generally adequate to address them. We recognize that the D. C. Circuit spoke too broadly when it declared copyrights “categorically immune from challenges under the First Amendment.” But when, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary.24

I, and others, have dubbed this the “traditional contours” test. The Court is saying that so long as a copyright statute does not disturb the traditional contours, i.e., the idea/expression dichotomy and the fair use doctrine, then that statute will not be subjected to any sort of ad hoc balancing through the mechanism of heightened First Amendment scrutiny. Instead, the statute is already balanced at the definitional level via the internal safeguards of the traditional contours. Despite being a straightforward statement of the law, the traditional contours test was wildly misconstrued in the commentary, and a flurry of scholarly writing came out wondering what was within the traditional contours and what was without. The view was that if something could be identified as being outside of the traditional contours, then that would trigger heightened scrutiny and its concomitant ad hoc balancing.

Such thinking led to a First Amendment challenge to Section 514 of the Uruguay Round Agreements Act in Golan v. Holder. Section 514 granted copyright protection to foreign works that had previously been in the public domain in the United States. Petitioners argued that pulling works out of the public domain transgressed the traditional contours and thus required the application of heightened scrutiny to Section 514. The Supreme Court rejected the argument:

Given the “speech-protective purposes and safeguards” embraced by copyright law, we concluded in Eldred that there was no call for the heightened review petitioners sought in that case. We reach the same conclusion here. Section 514 leaves undisturbed the “idea/expression” distinction and the “fair use” defense.25

The Court made clear in Golan what it thought it had made clear in Eldred, namely, that the traditional contours only include the idea/expression dichotomy and the fair use doctrine. And since these traditional contours balance the First Amendment with the Copyright Act at the definitional level, no ad hoc balancing through the application of heightened scrutiny is necessary. Thus, the Court’s current approach to a First Amendment challenge to a copyright law is to look at whether the law in question has altered the traditional contours of the idea/expression dichotomy and the fair use doctrine. If not, then the law passes constitutional muster without the need to do any ad hoc balancing, and if so, then ad hoc balancing is to be applied.

Netanel and the DMCA Anticircumvention Provisions

Not surprisingly, since the Court reiterated its statement of the traditional contours test in Golan, commentators have started constructing their arguments to work within that framework. One example is in the recent law review article by Professor Neil Netanel that I mentioned above. In the article, Netanel’s reading of the traditional contours test comports with my own:

Golan strongly suggests that it is by virtue of the idea/expression dichotomy and fair use privilege that copyright law not only is immune from First Amendment scrutiny but also comports with First Amendment requirements. Following Golan, Congress may apparently extend and expand copyright law as it wishes, without giving rise to First Amendment scrutiny, so long as it leaves the idea/expression dichotomy and fair use defense “undisturbed.” But if a Copyright Act amendment were to eliminate, eviscerate, or otherwise disturb the idea/expression dichotomy or fair use defense, the amendment should be stricken down as failing to pass First Amendment muster . . . .26

Netanel qualifies this last statement by noting that such a statute, which alters the traditional contours, wouldn’t necessarily be struck down since “Congress might enact some alternative provision that adequately accommodates constitutional protections of free speech” in the same way the traditional contours do.27 But under the traditional contours test, a statute that alters the idea/expression dichotomy or the fair use doctrine would certainly be subjected to ad hoc balancing under the imposition of heightened First Amendment scrutiny.

Netanel identifies the DMCA anticircumvention provisions as altering the traditional contours since courts have interpreted them to “make no exception for circumventing access controls or hybrid technological-protection measures when needed to engage in fair use.”28 Instead, Netanel notes, courts read the DMCA “to preserve fair use only as a defense to a claim for traditional copyright infringement.”29 As an example of this, Netanel cites the Second Circuit opinion in Universal v. Corley where the court of appeals held that there is no fair use defense to a DMCA violation.30 The Second Circuit there had also stated that fair use is not required by the First Amendment, and Netanel faults the court of appeals for this: “After Golan and Eldred, that statement is no longer good law. As those rulings make clear, the availability of the fair use defense is a necessary condition for copyright law to survive a First Amendment challenge.”31

Netanel is overstating the traditional contours test. The test merely states that the existence of the traditional contours is sufficient to avoid the need for ad hoc balancing. If either of the traditional contours is altered, then a court is to engage in ad hoc balancing via the application of heightened scrutiny. But the traditional contours test does not say, as Netanel suggests, that the existence of both traditional contours is necessary to survive this ad hoc balancing. A statute could alter fair use yet still survive the subsequent application of heightened scrutiny. Thus, Netanel’s suggestion that “the availability of the fair use defense is a necessary condition for copyright law to survive a First Amendment challenge” is mistaken.

Netanel also takes issue with the Second Circuit’s statement in Corley that fair use “has never been held to be a guarantee of access to copyrighted material in order to copy it by the fair user’s preferred technique or in the format of the original.”32 “This argument raises a fascinating question,” Netanel posits, that even if “fair use secures a given speaker’s right to copy copyrighted material for a particular use, does that necessarily mean that the speaker is entitled to make a direct digital copy?”33 After stating that the case law offers no satisfactory answer, Netanel claims that “in light of Golan and other cases, the more plausible argument is that there must be a fair use defense to the DMCA anticircumvention prohibition, lest the DMCA run afoul of the First Amendment.”34

In support of this conclusion, Netanel cites a report from the Register of Copyrights which argues that effective fair use may not be possible without perfect digital copies. Moreover, Netanel cites a line of cases where it was held that foreclosing a particular medium of expression burdens free expression and gives rise to heightened First Amendment scrutiny. To this, Netanel argues that anything restrictive of a person’s use of a given technology for the communication of protected speech can give rise to heightened scrutiny as well. Netanel concludes that “the DMCA’s prohibition of the use of circumvention technology needed to engage in effective, constitutionally protected fair use would seem to run afoul of the First Amendment. . . . Under Golan’s definitional balancing approach, fair use copying should enjoy an absolute privilege against liability under the DMCA.”35

I think Netanel’s arguments miss the mark. First of all, the fair use defense codified in Section 107 by its terms applies only to prima facie violations of the rights granted to copyright owners in Section 106: “Notwithstanding the provisions of sections 106 . . . the fair use of a copyrighted work . . . is not an infringement of copyright.”36 The reason courts don’t apply fair use to infringements of other rights, such as the anticircumvention rights granted by the DMCA, is because the violation of those rights is not copyright infringement. Despite fair use not being a defense to a DMCA violation, Netanel is trying to make it one by cleverly sneaking it in the back door. He does this by playing the First Amendment trump card and claiming that the DMCA anticircumvention provisions have altered the traditional contours such that ad hoc balancing is necessary under the test articulated in Eldred and Golan.

The problem with this line of reasoning, I think, is that the DMCA has done no such thing. The traditional contours have not been affected, and fair use is still a perfect defense to a claim of copyright infringement. Part of the problem with Netanel’s approach is that he’s treating fair use as right, as demonstrated by his framing the question he’s trying to answer by presupposing that “fair use secures a given speaker’s right to copy copyrighted material for a particular use.” It does no such thing. As I mentioned at the outset of this post, just because fair use has a constitutional dimension, that doesn’t mean that it’s magically transformed from a privilege into a right in the Hohfeldian sense. It’s still a privilege that negates the duty one would otherwise have not to copy, and it creates in the copyright owner the correlative no-right, that is, the lack of a legally enforceable claim against another should he so copy.

Just because our exercise of the fair use privilege is protected by the First Amendment, that doesn’t mean we can violate the rights of others while making fair use of a given work. For example, think of my manuscript sitting in my locked safe. That the First Amendment protects another’s privilege to make fair use of it doesn’t negate his duty not to break into my safe. Fair use might relieve him of liability for my copyright claim should I sue him for copyright infringement, but it’s certainly not going to excuse him from liability for the tort and crime of breaking into my safe in the first place. The same can be said of the DMCA anticircumvention provisions. Fair use might absolve a person of liability for copyright infringement if he violates my anticircumvention rights and makes fair use of my work, but it’s not going to make his violation of the DMCA anticircumvention provisions disappear. The ends don’t erase the means.

Netanel is absolutely correct to argue that fair use is (or at least can be) speech protected by the First Amendment. The Supreme Court has made that clear in Harper & Row, Eldred, and Golan. I say “can be” because not all fair use is constitutionally protected speech. For example, the Supreme Court’s decision in Sony finding that certain time-shifting was fair use did not turn on application of the First Amendment.37 But just because fair use is speech protected by the First Amendment, it nonetheless remains only a privilege. And as a mere privilege, there is no duty of noninterference in others. A fair user has no legally enforceable claim against those that stand in his way as he attempts to make fair use of a given work. The First Amendment provides the fair user with only a shield, not a sword, and a fair user has but a privilege, not a right.

But this does not mean that a copyright law cannot be or should not be subjected to heightened First Amendment scrutiny, and the funny thing is, I actually agree with Netanel that ad hoc balancing should be applied to the DMCA anticircumvention provisions. I arrive at that conclusion by a different pathway. As I mentioned in my prior post about Eldred and Golan, I think that the Supreme Court has only applied the traditional contours test to statutes, such as the CTEA or Section 514 mentioned above, that define the scope of substantive copyright rights granted by Section 106. This makes sense because the traditional contours, i.e., the idea/expression dichotomy and the fair use doctrine, definitionally balance substantive copyright rights (such as the reproduction right) with countervailing First Amendment values. But when a statute doesn’t define the scope of the substantive copyrights rights—as the DMCA anticircumvention provisions do not—then it makes no sense to say that the statute is definitionally balanced by using reasoning that has been applied only to substantive copyright rights.

Thus, I think Netanel’s intuition that the DMCA anticircumvention provisions need to be subjected to ad hoc balancing is correct. This is so because the definitional balancing applied to substantive copyright rights, such as the reproduction right or the distribution right, tells us nothing about whether other rights, such as the anticircumvention rights, are balanced. Perhaps they are, or perhaps they are not. I also agree with Netanel that some flavor of intermediate scrutiny is appropriate since the DMCA anticircumvention provisions create only content-neutral restrictions. But there’s no need to frame the argument by saying that the DMCA anticircumvention provisions alter the traditional contours for the simple reason that the traditional contours test doesn’t apply to the rights created by the DMCA anticircumvention provisions since those rights are not substantive copyright rights. Like Netanel, I’ll pass for now on doing the actual analysis of whether the DMCA anticircumvention provisions pass the ad hoc balancing of heightened scrutiny, choosing instead to reflect on what the proper test should be for its own sake.

Follow me on Twitter: @devlinhartline


  1. Tom W. Bell, Intellectual Privilege: A Libertarian View of Copyright 110-11 (2010). []
  2. See, e.g., Jay S. Bybee, Taking Liberties With the First Amendment: Congress, Section 5, and the Religious Freedom Restoration Act, 48 Vand. L. Rev. 1539, 1552 (1995) (“[W]e should observe that the Bill of Rights is not a bill of rights in any Hohfeldian sense, in any sense that people have claims enforceable against the government. Amendments Two through Eight are written as privileges and immunities, while the First Amendment is a disability.”); Scott R. Bauries, State Constitutions and Individual Rights: Conceptual Convergence in School Finance Litigation, 18 Geo. Mason L. Rev. 301, 316 (2011) (“Nearly all of the rules we cling to as ‘rights’ against legislation under the U.S. Constitution are really immunities, and many of the ‘negative duties’ we recognize are actually disabilities, because the legal relationships set up in the U.S. Constitution are overwhelmingly secondary rules.”). []
  3. See, e.g., Bybee, 48 Vand. L. Rev. at 1556 (“The First Amendment is a subject-matter disability . . . . [I]t puts a category of laws beyond the competence of Congress. The disability is so complete that Congress is expressly forbidden to enact . . . laws abridging . . . freedom of speech and press . . . . The First Amendment is a rule about rules.”); Restatement (First) of Property § 4 (1936) (“An immunity, as the word is used in this Restatement, is a freedom on the part of one person against having a given legal relation altered by a given act or omission to act on the part of another person.”). []
  4. See 15 U.S.C.S. § 1 (Lexis 2013) (“Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is hereby declared to be illegal.”). []
  5. FTC v. Superior Court Trial Lawyers Ass’n, 493 U.S. 411 (1990). []
  6. Id. at 431-32. []
  7. Chaplinsky v. New Hampshire, 315 U.S. 568, 571-72 (1942). []
  8. See Miller v. California, 413 U.S. 15, 24 (1973). []
  9. Arkansas Writers’ Project, Inc. v. Ragland, 481 U.S. 221, 231 (1987); see also United States v. Playboy Entm’t Group, 529 U.S. 803, 813 (2000) (“If a statute regulates speech based on its content, it must be narrowly tailored to promote a compelling Government interest. . . . If a less restrictive alternative would serve the Government’s purpose, the legislature must use that alternative.”). []
  10. Ward v. Rock Against Racism, 491 U.S. 781, 798-99 (1989). []
  11. See Melville B. Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 UCLA L. Rev. 1180 (1970). []
  12. Neil Weinstock Netanel, First Amendment Constraints on Copyright After Golan v. Holder, 60 UCLA L. Rev. 1082 ( 2013) [hereinafter “Netanel”]. []
  13. Melville B. Nimmer, The Right to Speak from Times to Time: First Amendment Theory Applied to Libel and Misapplied to Privacy, 56 Cal. L. Rev. 935 (1968). []
  14. See New York Times Co. v. Sullivan, 376 U.S. 254 (1964). []
  15. See Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985). []
  16. Id. at 556 (internal quotations and brackets omitted). []
  17. Id at 560. []
  18. Mark A. Lemley and Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property Cases, 48 Duke L.J. 147, 206 (1998). []
  19. Neil Weinstock Netanel, Locating Copyright Within the First Amendment Skein, 54 Stan. L. Rev. 1, 54 (2001). []
  20. Id. at 55. []
  21. See Eldred v. Ashcroft, 537 U.S. 186 (2003); Golan v. Holder, 132 S.Ct. 873 (2012). []
  22. Id. at 218-19. []
  23. Id. at 219-20 (internal quotations omitted). []
  24. Id. at 221 (internal citations omitted). []
  25. Golan, 132 S.Ct. at 890-91 (internal citations omitted). []
  26. Netanel, 60 UCLA L. Rev. at 1102. []
  27. Id. []
  28. Id. at 1114. []
  29. Id. at 1115. []
  30. See Universal City Studios v. Corley, 273 F.3d 429 (2d Cir. 2001). []
  31. Netanel, 60 UCLA L. Rev. at 1115. []
  32. Corley, 273 F.3d at 459. []
  33. Netanel, 60 UCLA L. Rev. at 1116. []
  34. Id. []
  35. Id. at 1118. []
  36. 17 U.S.C.S. § 107 (Lexis 2013); I leave aside the application of Section 107 to Section 106A. []
  37. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984). []

A number of interesting and potentially important fair use decisions have been released by courts in the past several months. I had originally planned on discussing all in one fell swoop, but as I started writing about the first of these decisions, Cariou v. Prince, released last April, the article started getting a bit long, so I’ll save discussion of other recent fair use decisions for later.

Fair Use and Transformativeness

As many readers know, fair use is a central concept in U.S. copyright law, and is recognized in the Copyright Act at 17 U.S.C. § 107. The doctrine was originally developed by courts as a rule of reason to allow privileged use of copyrighted works under certain circumstances.1 As stated in § 107, those circumstances can include “criticism, comment, news reporting, teaching…, scholarship, or research.” Whether a use is fair or unfair also generally requires a look at four factors: (1) the purpose and character of the use, (2) the nature of the work being used, (3) the amount and substantiality of the portion used, and (4) the effect of the use on the potential market of the original work.

In 1990, Judge Pierre Leval, formerly a federal judge in the Second Circuit Court of Appeals, wrote Toward a Fair Use Standard, which has since become highly influential in shaping the fair use inquiry into one that focuses primarily on “transformativeness.” Judge Leval wrote:

The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test; in Justice Story’s words, it would merely “supersede the objects” of the original. If, on the other hand, the secondary use adds value to the original–if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings– this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.

Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses.

The existence of any identifiable transformative objective does not, however, guarantee success in claiming fair use. The transformative justification must overcome factors favoring the copyright owner. A biographer or critic of a writer may contend that unlimited quotation enriches the portrait or justifies the criticism. The creator of a derivative work based on the original creation of another may claim absolute entitlement because of the transformation. Nonetheless, extensive takings may impinge on creative incentives. And the secondary user’s claim under the first factor is weakened to the extent that her takings exceed the asserted justification. The justification will likely be outweighed if the takings are excessive and other factors favor the copyright owner.

The Supreme Court would adopt Leval’s transformative framing in Campbell v. Acuff-Rose Music, 510 US 569 (1994), and it has continued to serve as a jumping off point for discussions of fair use by courts and commentators since, including the Second Circuit in Cariou.

Cariou v. Prince

Cariou began with the use, without permission, of a set of photographs by appropriation artist Richard Prince. The photos at issue come from a 2000 book Yes Rasta, and were taken by Patrick Cariou over the course of six years as he lived and worked among Jamaican Rastafari. Prince happened across the book and began using dozens of them to create new works by, for example, pasting other pictures on top or painting colored “lozenges” over certain portions. Boom. Art.

Cariou sued, and the district court rejected Prince’s fair use defense, specifically his argument that using copyrighted works as “raw ingredients” to create new works is per se fair use. To the contrary, said the court, fair use requires some form of transformative comment on the original work — “all of the precedent this Court can identify imposes a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works.” The precedent is also consistent with the language of the fair use provision in the Copyright Act itself. As the district court noted, “the illustrative fair uses listed in the preamble to § 107 — ‘criticism, comment, news reporting, teaching [...], scholarship, [and] research’ — all have at their core a focus on the original works or their historical context.” A work which merely “transforms” an existing work, with nothing more, is a derivative work, the creation of which is exclusive to the copyright owner of the existing work.2

The transformative inquiry fell under the district court’s analysis of the first fair use factor; the court also found that the commerciality of Prince’s use and his bad faith — Prince had neither sought permission nor licensing from Cariou — meant the first prong weighed heavily against fair use. Prince did not fare better under the other fair use factors: Cariou’s photos were highly creative, Prince copied substantially more of Cariou’s photos than necessary (including, in some cases, the entire work), and his secondary use unfairly damaged the original market for Cariou’s photos.

The Second Circuit reversed the district court’s decision, pulling what one commentator called “a complete about-face from traditional transformative use analyses.” It rejected the requirement that the first factor requires some sort of connection to the original work. Said the court, “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.” Instead, it is enough that the new work merely “alter the original with ‘new expression, meaning, or message.’”

The Second Circuit also rejected the district court’s holding on the fourth factor, the effect of the new use on the potential market of the original work. Richard Prince sells his works for millions of dollars to people like “Tom Brady… Gisele Bundchen… Robert DeNiro, Angelina Jolie, and Brad Pitt,” remarked the court, while Cariou has sold prints of his photos primarily to family members and acquaintances.

Mitigating the effect of the second prong of the fair use inquiry, and dialing back the district court’s emphasis on the “amount and substantiality” that Prince used, the Second Circuit held that 25 of Prince’s works that used Cariou’s photos were fair use. It remanded five photographs to the district court for further inquiry, deciding that they presented too close a question of fair use on the test it used. This last act drew a dissent from Judge Wallace, who wrote that once the Second Circuit stated its new legal test for transformative uses, it should have sent all thirty photos back to the district court to determine if the uses were ultimately fair. Said Wallace, “Certainly we are not merely to use our personal art views to make the new legal application to the facts of this case.”

Altering Campbell v. Acuff-Rose with “new meaning”

Regardless of your feelings about whether the outcome of the Second Circuit’s new test is good or bad, it must be noted that it directly contradicts Supreme Court precedent — ironically, the same precedent the Circuit uses to justify its holding. In Campbell v. Acuff-Rose Music (mentioned earlier), the Supreme Court did not hold, as the Second Circuit said it did, that it is sufficient under the first fair use factor for a new work to merely “alter the original with ‘new expression, meaning, or message.’” Instead, the Court said — in holding that parody has transformative value — “the heart of any parodist’s claim to quote from existing material[] is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works” (emphasis added). The Court continued:

If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

The above passage makes it clear that the Second Circuit disregarded the Supreme Court’s direction on transformativeness. That Prince was using Cariou’s photos as raw materials to “avoid the drudgery in working up something fresh” rather than building upon them seems readily apparent, especially given Prince’s own testimony during the trial that he “‘do[es]n’t really have a message,’ that he was not ‘trying to create anything with a new meaning or a new message,’ and that he ‘do[es]n’t have any . . . interest in [Cariou's] original intent.’”

Note that Campbell‘s definition of transformativeness isn’t an aesthetic judgment — there is nothing wrong with using existing works as raw materials in creating new works, and appropriation art is no less capable of respect or meaning than original works; it’s just that permission or licensing is required to use the existing work.3

The Second Circuit did not just ignore Supreme Court precedent on the major point of transformativeness, it also ignored it when it looked at the third fair use factor, which considers the amount and substantiality of the original work taken. Citing to the Supreme Court’s Campbell decision, the Second Circuit said, “the law does not require that the secondary artist may take no more than is necessary.” To the contrary, the Campbell absolutely said this. The caveat being that, because of the nature of parody, this “no more than necessary” taking may include a substantial portion or the “heart” of the work — “the parody must be able to ‘conjure up’ at least enough of that original to make the object of its critical wit recognizable.”

But the requirement that the secondary artist take no more than necessary is still there. As the Court went on to say (and consistent with the requirement that a transformative use have a focus on the original work to be fair), “Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song’s overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original.” The Supreme Court agreed that the copying of lyrics was fair precisely because “no more was taken than necessary.” But, it should be pointed out, it remanded to the lower court to determine whether 2 Live Crew’s copying of the bass riff in the original work was excessive. According to a contemporaneous article on the decision in the Memphis Commercial Appeal, the two parties settled after the Supreme Court ruling, with both parties agreeing to a license.

Toward a Fair Use Standard?

At its core, fair use is a necessary aspect of copyright, playing a critical role in maintaining the right’s proportionality and public benefit. The Copyright Office wrote in its 1958 copyright law revision study on fair use:

It has often been stated that a certain degree of latitude for the users of copyrighted works is indispensable for the “Progress of Science and Useful Arts.” Particularly in the case of scholarly works, step-by-step progress depends on a certain amount of borrowing, quotation and comment.4

The Second Circuit’s decision in Cariou, aside from ignoring Supreme Court precedent, loses sight of that purpose. One observer remarked:

Regardless of how little is necessary to transform a work into something new, though, the purpose of copyright law and the very incentive it gives to originators to create would be lost if another entity could take a whole work, add a mustache, sell it as the entity’s own, and evade copyright infringement.5

Fair use should be called upon when requiring permission would impede the progress of the useful arts. Cariou flips this long-standing principle on its head by simply asking whether unlicensed use would promote the progress of the arts. It’s a subtle yet fundamental distinction.

In June, the Second Circuit denied Cariou’s petition to rehear the case. It remains to be seen whether Cariou will try to take his case to the Supreme Court, which would put the issue of fair use — and transformativeness — in front of the Court for the first time in almost thirty years. Getting to the Supreme Court, of course, is always a long shot, so it may be that the Second Circuit’s decision will remain the law.


  1. See H.R. REP. NO. 94-1476, at 65 (1976). []
  2. 17 U.S.C. § 106(2). []
  3. Indeed, Laura Gilbert of The Art Newspaper has reported that since the 1960s, most well-known appropriation artists (including Andy Warhol) have been in the practice of licensing the underlying works they rely on. See also Thomas W. Joo, Remix Without Romance, 44 Connecticut Law Review 415 (2011), who explains that licensing of digital samples has been the prevalent industry practice in the music business for decades. []
  4. Alan Latman, Fair Use of Copyrighted Works, Copyright Office, Copyright Law Revision Study No. 14, pg. 7. []
  5. Jennifer Gilbert-Eggleston, Cariou v. Prince: Painter or Prince of Thieves? 11 U. Denv. Sports & Ent. Law J. 117, 124 (2011). See also Zehra Abdi, Morris v. Guetta: Are Appropriation Artists Getting A Free Pass by the Second Circuit?, CDAS Blog (May 28, 2013): “the Second Circuit has expanded the meaning of transformative use in the area of appropriation art so greatly that it essentially gives one artist permission to use even a substantial body of another artist’s work as in Cariou, merely for convenience.” []

Terry Hart is on vacation, so I have the great pleasure of presenting this week’s Endnotes.

First Amendment Constraints on Copyright After Golan v. Holder – Professor Neil Netanel has a fascinating look at the intersection of copyright law and the First Amendment in the wake of the Supreme Court’s opinion in Golan v. Holder. Back in 2001, Netanel argued that First Amendment challenges to copyright laws should be analyzed under the content-neutral rubric of intermediate scrutiny. The Supreme Court twice since then has rejected that approach, instead adopting Melville Nimmer’s view that copyright law internally balances First Amendment values. Working within that framework, Netanel now launches a new challenge of the DMCA anti-circumvention provisions and the now-defunct SOPA provisions for intermediary liability. Even if you disagree with Netanel’s conclusions (as I do), it’s a well-argued and thought-provoking article that I think is a must-read for all copyright geeks.

Copyright: The Inverted Human Period – Reflecting on the recent copyright revision hearings, Faza at the Cynical Musician looks into why copyright is important for the entire nation and not just for individual rightholders. Faza starts with the copyright granted to a songwriter and then traces the value stemming therefrom: “What we get in the end is an inverted human pyramid: a vast, tree-like structure of innumerable jobs being created, all resting on the back of our original songwriter and her songs. Take her away and the whole edifice collapses. *** It should be clear that even those who are most vocal against copyrights – tech companies who’d like to be in the content distribution biz without the content acquisition costs and their supporters – would lose out big time if the content were taken away. So whence the blindness?” Kudos to Faza who regularly turns out thoughtful and insightful pieces such as this.

Appeals Court Denies Jack Kirby Estate’s Bid to Overturn Marvel Copyright Ruling – Eriq Gardner at Hollywood, Esq. brings us the latest news in the copyright battle between the heirs of legendary comic book artist Jack Kirby and comic book publisher Marvel Comics. The Second Circuit affirmed in part the district court’s rejection of the heirs’ attempt to terminate under Section 304 certain copyright assignments made by their father. The termination rights turned on whether the works at issue were “works made for hire,” and the opinion is an interesting one as it shows the difficulty courts face in making that determination when the facts cut both ways. Ultimately, the court of appeals held that, even though Kirby was a freelancer with much independence, he nevertheless worked so closely and continuously with Marvel that the latter was the copyright owner ab initio under the work-for-hire doctrine.

Are Implied Licenses Enforceable? – At Forbes, Oliver Herzfeld looks at a district court opinion analyzing the enforceability of implied licenses. The dispute in that case turned on the fact-specific inquiry as to whether a sports arena had been granted an implied license to use a photographer’s photos on its Facebook page. Based on the lessons derived from the opinion, Herzfeld warns that “licensors would be well advised to (i) avoid engaging in casual communications or conduct that may imply a consent to actions or omissions on the part of licensees that exceed or contradict the terms of the parties’ license agreements, (ii) maintain a disciplined license agreement amendment process to document and memorialize all license agreement changes in signed writings, and (iii) include provisions in all license agreements reserving all rights not expressly granted to the licensees therein and explicitly disclaiming that any course of conduct on the licensor’s part will constitute a consent to, or waiver of, any term or provision of the license agreements.”

Comcast Developing Anti-Piracy Alternative to ‘Six Strikes’ (Exclusive) – Andrew Wallenstein at Variety has the news that Comcast is working on a plan to convert illicit file-swappers into paying customers. The system would work in real-time by presenting an infringer with a pop-up providing links to legal sources for the material being infringed. Wallenstein posits that this “reflects an alternate philosophy regarding copyright infringement, one that sees the illegal activity less as a crime that requires punishment and more as lead generation to a consumer whose behavior is borne out of inadequate legitimate digital content options.”

Academic Senate approves open access policy – The University of California has announced that future research articles by its faculty will be made available to the public at no cost: “The policy covers more than 8,000 UC faculty at all 10 campuses of the University of California, and as many as 40,000 publications a year. It follows more than 175 other universities who have adopted similar so-called ‘green’ open access policies. By granting a license to the University of California prior to any contractual arrangement with publishers, faculty members can now make their research widely and publicly available, re-use it for various purposes, or modify it for future research publications.”

Charge of Copyright Infringement in PTO Prior Art Disclosure Suffers Another Blow – Tony Dutra at Bloomberg BNA discusses a setback for the publisher plaintiffs in one of their many ongoing lawsuits against patent law firms that copy technical journal articles as part of the prior art submission process at the USPTO. The magistrate judge, after finding that all four fair use factors weighed in the defendants’ favor, issued a report recommending that the district court side with the patent law firm defendants. In the magistrate judge’s opinion, the defendants’ “use of the Articles facilitates the complete disclosure required in the patent-application process, assisting patent examiners in determining whether applications for patent protection should be granted, and, consequently, fulfilling the very same purpose of promoting science and the arts that the Copyright Act was intended to accomplish.”

Cross-posted on the Law Theories blog.

One often hears the argument from copyright opponents that copyright is a privilege and not a right. Rick Falkvinge says that copyright is a “government-granted market-distorting privilege” that limits the property rights of others. Stephan Kinsella argues that copyrights are “grants of monopoly privilege by the state” that allow its holder to petition the courts for redress. Mike Masnick claims that it’s “hogwash” not to recognize that copyright is a “monopoly privilege.” Crosbie Fitch believes that copyright grants authors “unethical privileges” over others.

Many claim as well that fair use is a right and not a privilege. Patricia Aufderheide and Peter Jaszi argue that Shepard Fairey had the “fair use right” to make his famous Obama poster. The late Professor L. Ray Patterson claimed that the “statutory right of fair use” is often ignored.1 Professor Lawrence Lessig laments that “[y]ou either pay a lawyer to defend your fair use rights or pay a lawyer to track down permissions so you don’t have to rely upon fair use rights.” The list goes on.

The baseline, so the argument goes, is that we have the right to do whatever we want with our property, including the right to make copies. Copyright changes this by giving authors the privilege to prevent us from copying. Thus, copyright takes away my right to copy by granting an author the privilege to stop me. Moreover, the argument continues, despite the privilege given to authors, we have the right to make fair use of a work. This line of reasoning, to borrow Masnick’s term, is “hogwash.”

In this post, I’ll explain why copyright opponents have it exactly backwards when they claim that copyright is a privilege and fair use is a right. At the outset, I note that these terms can have various, nontechnical meanings that possibly overlap. For example, Black’s Law Dictionary defines “right” to mean, inter alia, a “privilege,” and it defines “privilege” to mean, inter alia, a “right.”2 But copyright opponents are not using these terms interchangeably; they are using them in contradistinction to each other. In other words, they are saying that right and privilege are mutually exclusive terms. It’s this technical usage of these terms that I’ll address.

Bell’s “Intellectual Privilege”

Perhaps the biggest proponent of the copyright-as-privilege claim is Professor Tom Bell. In his book entitled Intellectual Privilege (draft available here), Bell makes the argument that “copyright more closely resembles a privilege—a special statutory benefit—than it does a right, general in nature and grounded in common law, deserving the title of ‘property.’”3 He claims that “calling copyright a ‘privilege’ follows legal and popular usage, past and present.”4 In support of this broad assertion, Bell cites the 6th edition of Black’s Law Dictionary in a footnote. He conspicuously doesn’t quote the actual text from Black’s in that footnote, perhaps because it in fact defines copyright as a “right.” Black’s provides:

Copyright. The right of literary property as recognized and sanctioned by positive law. An intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he is invested, for a specified period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them.5

Black’s isn’t saying that copyright is a privilege in contrast to a right. Instead, the dictionary merely reflects the fact that, as discussed below, a rightholder has the privilege to exercise the right that he holds. What makes it a right is that he has a legally enforceable claim against another who copies without permission. As we’ll see, copyright owners, just like all rightholders, have both rights and privileges.

Bell notes that both courts and commentators “have often described copyright as a legal privilege.”6 In support, he cites Eldred v. Ashcroft where Justice Stevens in dissent refers to “copyright privileges,” Sony v. Universal where Justice Stevens writing for the majority refers to the “copyright privilege,” and Watson v. Buck where Justice Black writing for a unanimous Court refers to “copyright privileges.”7 No doubt there are many other such references in the case law and commentary. But are those references really making the point that copyright is a privilege and not a right? Not at all.

Justice Stevens in Eldred also refers to copyright as granting “exclusive rights” and “federal rights.”8 Similarly, in Sony, Justice Stevens frames the question presented as whether “the rights conferred upon respondents by the Copyright Act” have been violated, and then he goes on to discuss the “exclusive rights” granted by copyright at length.9 And in Watson, Justice Black refers to copyrights as “property rights.”10 Bell’s argument that these Justices considered copyrights to be privileges as opposed to rights is severely undercut by the fact that the very same Justices in the very same opinions also called them rights.

Bell argues that “copyright represents a statutory exception to our common law rights.”11 It is only with the introduction of copyright, he contends, that our “natural and common law rights” to copy are limited.12 Thus, according to Bell, the rule is that we may copy, and the exception is copyright. In this way, he continues, copyright is not a right, but rather it is “an anti-property right” that limits what we can do with our property.13 Bell’s theory is that this copyright exception gives to authors a privilege that relieves them of the duty they would otherwise have to allow others to copy their works.

Bell ponders whether his version of privilege comports with “Wesley Hohfeld’s influential one,”14 referencing the late Professor Hohfeld whose well-known law review article discussing the difference between rights and privileges has been extremely influential in legal thinking since its publication one century ago.15 Erroneously, Bell concludes that he is being “more true to Hohfeld’s project” than those who consider copyright to be a right.16 To understand how Bell is turning Hohfeld on his head and confusing the difference between a right and a privilege in the Hohfeldian sense, we have to take a step back and look at Hohfeld’s fundamental “jural relations.”

Hohfeld’s “Jural Relations”

Laymen typically use the word “property” to refer to a thing with respect to which legal relations between persons exist. Lawyers, on the other hand, generally use the word “property” to refer to the legal relations that exist between persons with respect to a thing. The aforementioned Professor Hohfeld developed an analytical framework for discussing these legal relations—or as he called them, “jural relations.” Hohfeld identified eight fundamental jural relations: right, privilege, power, immunity, duty, no-right, liability, and disability. With these building blocks, we can precisely define the legal relations that exist between persons with respect to a given thing.

Hohfeld’s system of jural relations has been very popular amongst jurists over the last century. For example, the savants at the American Law Institute adopted Hohfeld’s system in the Restatement (First) of Property, first published in 1936. A quick search on Westlaw shows that Hohfeld’s original 1913 paper and his follow-up 1917 paper together have been cited over a thousand times in the case law and commentary.17 For a great explanation of Hohfeld’s system of jural relations, I recommend this primer from the Chicago-Kent College of Law.

Hohfeld arranged the jural relations into different pairs, called “jural correlatives.” Each pair of jural correlatives looks at a given jural relation from opposing points of view. For example, if O and P have a jural relation between them, we can look at that jural relation either from O’s point of view or from P’s point of view. These jural correlatives arise together, meaning that the existence of one necessarily implies the existence of the other. Hohfeld’s jural correlatives for rights and privileges are: rightduty and privilegeno-right. Thus, as between O and P, if O has a right, then P has a duty, and if O has a privilege, then P has a no-right.

A right is “a legally enforceable claim of one person against another, that the other shall do a given act or shall not do a given act.”18 The person against whom the right exists has the correlative duty, which is the legally enforceable obligation on the part of the duty-holder to do or not to do the given act. For example, if O has the right to exclude P from entering his land, then P has the correlative duty not to enter O’s land. If P violates his duty and enters O’s land, O then has a legally enforceable claim against P, and O can summon the power of the state to prevent P from entering his land.

A privilege is “a legal freedom on the part of one person as against another to do a given act or a legal freedom not to do a given act.”19 The person against whom the privilege exists has the correlative no-right, which is the absence of a legally enforceable claim against the privilege-holder to do or not do the given act. For example, if O has the privilege to enter P’s land, then P has the no-right to exclude O from his land. If O exercises this privilege and enter P’s land, P then has no legally enforceable claim against O, and P cannot summon the power of the state to prevent O from entering his land.

It should also be noted that not only can a rightholder prevent another from doing or not doing a given act, but he himself has the privilege of doing or not doing the given act. Thus, a rightholder holds both a right and a privilege. For example, if O has the right to exclude P from entering his land, O then also has the privilege of entering his own land. As Hohfeld explains:

[I]f X has a right against Y that he shall stay off the former’s land, the correlative (and equivalent) is that Y is under a duty toward X to stay off the place. *** [W]hereas X has a right or claim that Y, the other man, should stay off the land, he himself has the privilege of entering on the land; or, in equivalent words, X does not have a duty to stay off.20

While the person against whom a right exists has a duty of noninterference with respect to the rightholder,21 the person against whom a privilege exists does not have such a duty with respect to the privilege-holder. Thus, if O grants to P the privilege of entering his land, O then has no duty of noninterference towards P, and O may interfere with P’s attempts to exercise his privilege of entering O’s land.

Hohfeld colorfully illustrates the point:

A. B. C. and D, being the owners of the salad, might say to X: “Eat the salad, if you can; you have our license to do so, but we don’t agree not to interfere with you.” In such a case the privileges exist, so that if X succeeds in eating the salad, he has violated no rights of any of the parties. But it is equally clear that if A had succeeded in holding so fast to the dish that X couldn’t eat the contents, no right of X would have been violated.22

And as one commentator explains:

If X’s privilege of entering the land, in relation to Y, consists only in X being under no duty to Y not to enter the land, this means solely that X is not in breach of a duty to Y if he enters the land; nothing is implied by this to prevent Y making it impossible to enter the land—by using threats or violence, by building walls, constructing moats filled with piranha fish . . . .23

The takeaway from this is that a right gives the rightholder a legally enforceable claim against another that he shall do or not do a given act, and the person against whom the right exists has the correlative duty to do or not do the given act. A privilege, on the other hand, negates a duty to do or not do a given act that the duty-holder would otherwise have, relieving him of the liability that he would have for doing or not doing the given act but for the privilege. While the person against whom the privilege exists has the correlative no-right, that is, the absence of a legally enforceable claim against the privilege-holder for doing or not doing the given act, there is no duty of noninterference with respect to the privilege-holder, and the no-right-holder may interfere with the privilege-holder’s attempts to exercise his privilege.

Why Copyright is a Right

Professor Bell cleverly frames things to arrive at his conclusion that copyright is a privilege and not a right. The baseline, as Bell correctly notes, is that in the absence of copyright everyone would be able to copy as they please, and it is only with the introduction of copyright that this baseline changes. Bell then erroneously claims that this ability to copy as one pleases in the absence of copyright is a right. Thus, according to Bell, in the absence of copyright, O has the right to copy P’s work, and P has the correlative duty to permit O to copy his work. Copyright changes this, Bell continues, by granting P a privilege which negates his duty to permit O to copy his work.

It’s simple to dispense with Bell’s claim that copyright is a privilege. It is true that, absent copyright, people can freely copy a given work. The fault in Bell’s argument is in equating this ability to copy freely in the absence of copyright with a right. If it were a right, then others would be under the correlative duty to permit the rightholder to copy a given work, and the rightholder would have a legally enforceable claim against those that breach this duty. But clearly no such duty exists. What cause of action would this supposed rightholder have against another who interferes with his attempt to copy a given work? No such cause of action exists since no one has a duty to permit another to copy a given work.

Nor does copyright grant a copyright owner a privilege. If copyright were merely a privilege, then that would relieve the copyright owner of the duty that he otherwise would have to permit another to copy his work—but again, there is no such duty to permit another to copy his work. Moreover, a privilege does not give its holder a legally enforceable claim against another who does or does not do a given act. Whence does Bell think a copyright owner’s claim against another who copies his work arises if the owner has merely a privilege? Without a right to exclude another from copying his work, there is no legally enforceable claim against another who so copies. And if a copyright owner is merely a privilege-holder, whence does Bell think the duty arises in another not to copy the copyright owner’s work? Without a right, there is no such correlative duty. Yet clearly such a duty does exist.

Two examples demonstrate the point. Take, for instance, Professor Hohfeld’s journal article from 1913 that I linked to on the University of Texas (“UT”) server. Being a century old, Hohfeld’s article is in the public domain, and it is therefore not protected by copyright. According to Bell, being that there is no copyright protection for the article, O has the right to copy this article, and others, including UT, have the duty to refrain from interfering with O as he exercises his right. Thus, according to Bell, UT has the duty to permit O to copy the article. If UT were to password-protect access to the article, thereby interfering with O’s exercise of his right to copy it, O would have a legally enforceable claim against UT for breaching its duty of noninterference with respect to O’s right to copy the article. Obviously there is no such duty on UT’s part, and UT can grant access to the article to everyone in the world except for O if it so chooses without facing any liability.

Take another example, but this time with the work in question being under copyright. Say I write an original manuscript by hand on paper. By virtue of the work being fixed in a tangible medium, I am automatically granted a copyright in the work by the Copyright Act. Bell’s view is that this copyright has only granted me a privilege which relieves me of the duty I would otherwise have to respect another’s right to copy my work as he pleases. But what accounts for the fact that I have a legally enforceable claim against another who copies my work? And what accounts for the duty that another has to not copy my work? If copyright merely grants me a privilege, then there would be no such duty on the part of another to not copy my work, and I would have no legally enforceable claim against another that copies my work. Clearly copyright has given me something more than a mere privilege.

Thus, Professor Bell is mistaken to claim that his view of copyright-as-privilege is true to Professor Hohfeld’s explication of the fundamental jural relations. The proper way to view this is see that, as the Constitution and the Copyright Act acknowledge, copyrights are grants of exclusive rights.24 Copyrights are rights because they give the rightholder a legally enforceable claim against another who copies his work, and they create in another the correlative duty to not copy the copyright owner’s work.

Why Fair Use is a Privilege

Along these same lines, it’s clear that fair use is a privilege and not a right. If fair use were a right, then the fair user would have a legally enforceable claim against another that he should do or not do a given act. The other would then owe the fair user the correlative duty to do or not do the given act, and he would have a duty of noninterference with respect to the fair user. But fair users have no such claim and are owed no such duty. Fair use instead is merely a privilege. It permits the fair user to do an act—copying—that but for the privilege would give rise to liability. The privilege negates the duty the fair user would otherwise have with respect to the copyright owner, and the copyright owner has the correlative no-right, that is, the absence of a legally enforceable claim to hold the fair user liable for his copying. That fair use is a privilege accounts for the fact that it operates as an affirmative defense and not as an affirmative right.25

Thus, if O is the author of a work, O has certain exclusive rights in that work which give him a legally enforceable claim against P should P copy the work. P, in turn, owes O the correlative duty to not copy the work, and if P breaches this duty, he can then be held liable by O for the infringement. But not all copying by P infringes O’s exclusive rights. P has the privilege of making fair use of O’s work, and this privilege negates the duty to not copy O’s work that P would otherwise have. This privilege on P’s part creates the correlative no-right on O’s part which negates O’s legally enforceable claim against P. But for P’s privilege, O could hold P liable for the copying, but P’s fair use privilege arms P with a perfect defense to a claim of infringement.

As a mere privilege-holder, a fair user has no legally enforceable claim against another that he should do or not do a given act—only a rightholder has such a claim. Moreover, as a mere privilege-holder, a fair user is owed no duty of noninterference by another as he attempts to exercise his privilege. Thus, others may interfere with the would-be fair user’s attempts to make fair use of a given work. That it is not impermissible for the would-be fair user to make fair use of a given work is not the same as being guaranteed that he may do so. This is demonstrated in the passage from Hohfeld quoted above about the salad—I may grant you a license to eat my salad, which would absolve you of any liability should you do so, but your privilege to eat my salad does not come with any guarantees that I will make the salad available to you. “Not impermissible does not equate to guaranteed.”26

That a fair user has no legally enforceable claim, i.e., a right, to make fair use of a given work is demonstrated in the Second Circuit’s opinion in Universal v. Corley.27 There, the appellants argued that the DMCA anti-circumvention provisions interfered with their alleged constitutional right to make fair use of a DVD. The court of appeals rejected the argument: “We know of no authority for the proposition that fair use, as protected by the Copyright Act, much less the Constitution, guarantees copying by the optimum method or in the identical format of the original. . . . Fair use has never been held to be a guarantee of access to copyrighted material in order to copy it by the fair user’s preferred technique or in the format of the original.”28 I think the answer is much simpler than that. Since fair use is merely a privilege, the fair user is owed no duty of noninterference by others. A rightholder, or anyone else for that matter, can make the exercise of a would-be fair user’s privilege as easy or as difficult as he likes—even impossible if he so wishes.

Follow me on Twitter: @devlinhartline


  1. L. Ray Patterson, Copyright in the New Millennium: Resolving Conflict between Property Rights and Political Rights, 62 Ohio St. L.J. 703, 704-05 (2001). []
  2. See Black’s Law Dictionary (9th ed. 2009). []
  3. Tom W. Bell, Intellectual Privilege: A Libertarian View of Copyright 108 (2010) [hereinafter “Bell”]. []
  4. Id. []
  5. Black’s Law Dictionary (6th ed. 1990) (emphasis added). []
  6. Bell at 110. []
  7. See Eldred v. Ashcroft, 537 U.S. 186, 233 (2003) (Stevens, J., dissenting); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 421 (1984); Watson v. Buck, 313 U.S. 387, 404 (1941). []
  8. See Eldred, 537 U.S. at 223, 231-32, and 241 (Stevens, J., dissenting). []
  9. See Sony, 464 U.S. at 420, 433, 436, and 447. []
  10. See Watson, 313 U.S. at 404. []
  11. Bell at 110. []
  12. Id. []
  13. Id. at 110-11 (emphasis in original). []
  14. Id. []
  15. See Wesley Newcomb Hohfeld, Some Fundamental Legal Conceptions As Applied in Judicial Reasoning, 23 Yale L.J. 16 (1913) [hereinafter “Hohfeld”]. []
  16. Bell at 113. []
  17. See Hohfeld; Wesley Newcomb Hohfeld, Fundamental Legal Conceptions as Applied in Judicial Reasoning, 26 Yale L.J. 710 (1917). []
  18. Restatement (First) of Property § 1 (1936); see also Black’s Law Dictionary (9th ed. 2009) (A “right” is a “legally enforceable claim that another will do or will not do a given act; a recognized and protected interest the violation of which is a wrong.”). []
  19. Id. at § 2; see also Black’s Law Dictionary (9th ed. 2009) (“A privilege grants someone the legal freedom to do or not to do a given act. It immunizes conduct that, under ordinary circumstances, would subject the actor to liability.”). []
  20. Hohfeld at 32 (emphasis in original). []
  21. See, e.g., O’Brien v. Leidinger, 452 F.Supp. 720, 726 (E.D. Va. 1978) (“Whenever there exists a right in any person, there also exists a correlative duty in some other person or persons not to abridge or interfere with the exercise of that right.”). []
  22. Hohfeld at 35 []
  23. Andrew Halpin, Rights and Law: Analysis and Theory 35 (1997). []
  24. See, e.g., U.S. Const. art. I, § 8, cl. 8 (West 2013) (Congress has the power “[t]o promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their . . . Writings . . . .”) (emphasis added); 17 U.S.C.A. § 106 (West 2013) (copyright grants “the owner of a copyright . . . the exclusive rights to do and to authorize” certain listed activities such as to make or to distribute copies) (emphasis added); (17 U.S.C.A. § 107 (West 2013) (fair use is one of the “[l]imitations on exclusive rights” of authors.) (emphasis added). []
  25. See, e.g., Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 561 (1985) (“The drafters resisted pressures from special interest groups to create presumptive categories of fair use, but structured the provision as an affirmative defense requiring a case-by-case analysis.”); H.R. Rep. 102-836, *3 (“Fair use is an affirmative defense, and as such is relevant only after a copyright owner has made out a prima facie case of infringement.”); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994) (“Since fair use is an affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets.”). []
  26. David R. Johnstone, Debunking Fair Use Rights and Copyduty Under U.S. Copyright Law, 52 J. Copyright Soc’y U.S.A. 345, 369-70 (2005) (internal quotations omitted). []
  27. Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001). []
  28. Id. at 459. []

Control is Fundamental to Copyright Theory — Devlin Hartline continues a discussion began last week when some criticized the assertion, made during Thursday’s copyright review hearing, that copyright is about control. Says Hartline, “All property law involves determining how much control to give to rightholders, and copyright is no exception. Copyright law presents its own unique considerations, no doubt, and the task of Congress is difficult as it determines where to strike the balance that it deems proper between the competing sets of claims as to what is best for the public good. But when considering where to strike this balance, it should be remembered that what is good for authors is often also good for the public.”

Department of Commerce releases report on Copyright Policy, Creativity, and Innovation in the Digital Economy — I have a summary of the Department of Commerce Internet Policy Task Force’s Green Paper, released on Wednesday, over at Idea/Expression. “The purpose of the Green Paper is to review the development of copyright policy as it has responded to new technologies in recent decades, assess the current challenges facing copyright law, and provide a set of recommendations to address some of those challenges,” and will likely play an important role in copyright policy discussions going forward.

Getting Creative With the G.D.P. — “We have undervalued creativity and research,” notes the New York Times, as it reports on a significant change to how the G.D.P. is calculated. The Bureau of Economic Analysis will now give greater economic weight to a variety of creative works and intellectual property, to better reflect the value they generate for the economy. The change, which will be applied retroactively as well, will boost the size of the G.D.P. by tens of billions of dollars.

Steal a Little: Piracy & the Economy — More goodness from David Newhoff, who rebuts a recent assertion that we shouldn’t worry about infringement because the money not spent on creative works can be spent on other things. Well, sure, but that could be said about anything.

8 Takeaways from today’s IP Subcommittee Hearing — Chris Castle gives a good rundown of some of the highlights of Thursday’s hearing on technology and innovation in front of the House Judiciary Committee Subcommittee on Courts, Intellectual Property, and the Internet.

Why Telling Artists To Stop Selling Music & Just Make Money Through Live Shows Is Ridiculous — “Giving away all your music for free and trying to make your living via other revenue streams can be a valid approach. Except that I don’t know of any musicians actually doing that. The ones who do make all their music available for free are also selling it and some are doing just fine without touring at all. As a one size fits all solution, it still seems to be the fantasy mostly of people in the tech world, which is weird because one size fits all doesn’t work in their world either.”

Claeys on Aerial Trespass — Lawrence Lessig began his book Free Culture with the story of how commercial airflight was initially hampered by overly restrictive property rules; landowners had dominion over airspace above their land, creating nearly insurmountable obstacles to creating flight patterns. The implication being that this is analogous to the development of the internet and intellectual property. Now take a guess about how inaccurate the aerial trespass fable is.

Innovation in America: The Role of Copyrights — Yesterday, the House Judiciary Committee Subcommittee on Courts, Intellectual Property, and the Internet held its latest hearing in its ongoing review of copyright law. The hearing page includes links to the written testimony of each witness as well as video of the hearing (you have to skip ahead to about the 27:30 mark before things actually start). The hearing, which focused on how copyright and creative industries drive innovation, was unfortunately cut short because of an earlier-than-anticipated floor vote.

Literary Property: Copyright’s Constitutional History and Its Meaning for Today [PDF] — An absolutely fantastic and thorough look at the role of Noah Webster and James Madison in establishing copyright law at the very beginnings of the United States. As authors Randolph May and Seth Cooper of the Free State Foundation note in their intro, “Recognizing copyright in the fundamental law of the land conveys its importance as a means of promoting progress in science and useful arts, as well as in commerce. And by recognizing an individual’s rights to the fruits of his or her labor, copyright not only promotes progress and commerce, but also secures a space for individual entrepreneurship free from government control or taking.”

Need for Copyright Protection Hits Home — Prop maker and first time author Eric Hart says, “The book is not a commodity that’s interchangeable with other books out there – nor did it appear magically one day. Its publication was not inevitable. I had to work to get it written. So is it unreasonable to ask that my work is protected and that protection is respected?”

Ad Networks Adopt Notice and Takedown for Ads on Pirate Sites — Bill Rosenblatt takes a look at the cooperative agreement between several large internet advertising agreements announced earlier this month. Discussed are some of the agreement’s major shortcomings — not included are the ad networks causing the most trouble, for example (and, I would add, the agreement ignores completely other major players in the online advertising ecosystem such as ad exchanges). Rosenblatt also offers several recommendations that could make the agreement more effective.

Google’s Impact on Journalism — “The ways in which Google uses its dominance in search to monetize, by corralling and aggregating (without permission) the content of others, is a story that is long in telling.  But a common feature, as stated in a White Paper submitted to the FTC in 2011 by The Media Institute, is that Google’s ‘main search page biases Google News results over results of news organizations and other publishers.’”

David Lowery’s uphill fight against commodification — “His particular bugaboos: advertiser-supported piracy, the culture of free content and streaming services that pay a fraction of a penny per song played. In some circles, that makes Lowery a reality-denying crank caught on the wrong side of history. . . But he’s more like an entrepreneur trying to take his goods to market on his own terms, and he’s frustrated by the many forces aligned to prevent that from happening. And he’s not anti-Internet. He’s anti-One-Size-Fits-Allnet.”

Cross-posted on the Law Theories blog.

In an issue of first impression at the appellate court level, the Fourth Circuit last week held that a clickwrap agreement could satisfy Section 204(a)’s requirement that “[a] transfer of copyright ownership” be “in writing and signed by the owner of the rights conveyed . . . .”1 The opinion is available on the court’s website, and I have uploaded a copy to Scribd.2

The court of appeals held that, in light of the E-SIGN Act,3 if a website’s terms of use stipulate that ownership of the copyright in a photograph is transferred to the website operator when a website user uploads a photograph to the website, then a website user who clicks “yes” to agree to the terms of use and then uploads a photograph to the website has thereby transferred ownership of the copyright in the photograph to the website operator. The unanimous appellate panel held that the acts of clicking “yes” and uploading the photograph serve to fulfill Section 204(a)’s requirement that the transfer of copyright ownership be memorialized in a signed writing.

Section 204(a)’s Writing Requirement

Section 204(a)’s writing requirement is like a statute of frauds in that it serves “the usual evidentiary and cautionary functions of all statutes of frauds,” but it also performs “the additional purpose of describing the bounds of intangible rights that cannot be seen or felt.”4 The requirement of a signed writing “is not only designed to protect people against false claims of oral agreements,” but it also serves “to make the ownership of property rights in intellectual property clear and definite, so that such property will be readily marketable.”5 Section 204(a) ensures that in transactions involving the “transfer of the in rem exclusive rights created by copyright law,” there are “clear chains of title and clear delineation of the open-ended subdivisions of exclusive rights permitted under the 1976 Act.”6 In other words, the signed writing contemplated by Section 204(a) is “copyright’s equivalent of a deed.”7

Chief Judge Alex Kozinski colorfully explains the purpose of the writing requirement:

Common sense tells us that agreements should routinely be put in writing. This simple practice prevents misunderstandings by spelling out the terms of a deal in black and white, forces parties to clarify their thinking and consider problems that could potentially arise, and encourages them to take their promises seriously because it’s harder to backtrack on a written contract than on an oral one.

Copyright law dovetails nicely with common sense by requiring that a transfer of copyright ownership be in writing. Section 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price. Most importantly, section 204 enhances predictability and certainty of copyright ownership—Congress’ paramount goal when it revised the Act in 1976. Rather than look to the courts every time they disagree as to whether a particular use of the work violates their mutual understanding, parties need only look to the writing that sets out their respective rights.

Section 204′s writing requirement is not unduly burdensome; it necessitates neither protracted negotiations nor substantial expense. The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn’t have to be the Magna Charta; a one-line pro forma statement will do.8

By its terms, Section 204(a) applies to “[a] transfer of copyright ownership.” Section 101, in turn, tells us that such a transfer includes “an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright . . . .”9 Thus, the writing requirement applies to assignments, exclusive licenses, or any other transfer of copyright ownership such as a mortgage, pledge, or encumbrance.

The question arises whether electronic communications such as emails can fulfill Section 204(a)’s writing requirement. One district court, analyzing a series of emails in which the details of an exclusive license were negotiated, held that there was no signed writing:

Plaintiff has not provided this Court with evidence of a signed writing granting him an exclusive license to market the sound recordings. Instead, Plaintiff argues that the parties’ exchange of e-mails evidences the agreement. The exchange of e-mails, however, does not satisfy the statutory requirement of a written instrument signed by the Defendants. Thus, Defendants could not have transferred ownership of the sound recordings to Plaintiff through an exclusive license.10

So how did the Fourth Circuit arrive at its conclusion that merely accepting a website’s terms of use and uploading a photograph to the website can result in the necessary signed writing under Section 204(a)? The key lies in the E-SIGN Act, a federal law which, generally speaking, “mandates that no signature be denied legal effect simply because it is in electronic form.”11 But is assenting to a website’s terms of use wherein a website user agrees to transfer his ownership in a copyright to the website operator really the same thing as signing an agreement to transfer the copyright?

The District Court Proceedings

The underlying dispute in this case is between two competing real estate listing businesses, Metropolitan Regional Information Systems, Inc. (“MRIS”) and American Home Realty Network, Inc. (“AHRN”). Plaintiff MRIS, located in Maryland, maintains a database of property listings to which real estate brokers and agents subscribe. These subscribers upload their listings to the MRIS database, and they agree via acceptance of the website’s terms of use to assign ownership of the copyrights in whatever photographs they upload to MRIS. Defendant AHRN, located in California, operates a nationwide real estate search engine. MRIS alleges that AHRN displayed real estate listings that contained copyrighted photographs from the MRIS database, and it filed suit claiming direct and indirect copyright infringement by AHRN.

In the district court, defendant AHRN moved to dismiss the complaint for failure to state a claim, arguing that plaintiff MRIS did not own the copyrights in the photographs sued upon since the assignments between it and its subscribers were not memorialized in a signed writing as mandated by Section 204(a). Citing the E-SIGN Act, the district court disagreed.12

The E-SIGN Act provides:

Notwithstanding any statute, regulation, or other rule of law . . . with respect to any transaction in or affecting interstate or foreign commerce—

(1) a signature, contract, or other record relating to such transaction may not be denied legal effect, validity, or enforceability solely because it is in electronic form; and

(2) a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation.13

“Electronic signature,” in turn, is defined by the Act as “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.”14

The assignment of the copyrights in the photographs is governed by the terms of use on the MRIS website, the relevant section of which provides:

All images submitted to the MRIS Service become the exclusive property of Metropolitan Regional Information Systems, Inc. (MRIS). By submitting an image, you hereby irrevocably assign (and agree to assign) to MRIS, free and clear of any restrictions or encumbrances, all of your rights, title and interest in and to the image submitted. This assignment includes, without limitation, all worldwide copyrights in and to the image, and the right to sue for past and future infringement.15

The district court held that the “TOU constitutes credible evidence that MRIS’s users intended to assign their copyrights to MRIS through the electronic submissions of photographs, which would satisfy the relevant provisions of ESIGN.” Having determined that the writing requirement was fulfilled, the district court then granted plaintiff MRIS’s motion for a preliminary injunction, finding that it had a likelihood of success on the merits since it “appears to have obtained these copyrights by assignment when the photographs were uploaded to the MRIS Database by subscribers.”16

AHRN subsequently filed a motion to reconsider the preliminary injunction order that had been entered against it, again challenging the validity of the copyright transfers between MRIS’s subscribers and MRIS. Siding with MRIS, the district court reiterated its earlier holding that “the TOU and the subscribers’ electronic submissions of photographs, properly considered an ‘electronic signature’ under E–SIGN, evidence the parties’ full and complete agreement to transfer the copyrights MRIS seeks to enforce in this case.”17 Thus, the district court found that, even though MRIS’s subscribers only indicated their assent to MRIS’s terms of use insofar as the copyright assignments were concerned, this assent also indicated an “intent to sign the record” under the E-SIGN Act. But is assenting to the terms of a contract the same thing as intending to sign the contract?

The Fourth Circuit Opinion

On appeal, the reasoning of the Fourth Circuit’s opinion tracks that of the district court below.18 The court begins by noting that Section 204(a)’s writing requirement is different from a statute of frauds in that, “[r]ather than serving an evidentiary function and making otherwise valid agreements unenforceable, under § 204(a) a transfer of copyright is simply not valid without a writing.”19 Furthermore, continues the court, “a qualifying writing under Section 204(a) need not contain an elaborate explanation nor any particular magic words, but must simply show an agreement to transfer copyright.”20

Before proceeding to the merits of the copyright transfers at issue, the court of appeals cites Second and Ninth Circuit precedent discussing the impropriety of allowing third parties to challenge the validity of a copyright transfer where there is no dispute between the assignor and assignee. Recall that here MRIS’s subscribers assigned their copyrights to MRIS, and the only party challenging those assignments is AHRN—as far as we know, both MRIS and its subscribers believe the transfers to be valid. The court notes that MRIS did not raise the argument that AHRN could not attack its assignments indirectly, and then it proceeds to analyze AHRN’s attack on the merits. One wonders how the court would have reacted had MRIS actually made the argument that it is improper for a third party to challenge the validity of a copyright assignment that is not doubted by either the assignor or assignee.

The court of appeals then goes on to cite the relevant provisions of the E-SIGN Act, notably the definition of “electronic signature” mentioned above which includes “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.” The court reasons that since Section 7001(b) of the E-SIGN Act seeks to “limit, alter, or otherwise affect” any statutory “requirement that contracts or other records be written, signed, or in nonelectronic form,” and since “Section 204(a) requires transfers to be ‘written’ and ‘signed,’” it follows “that Congress intended the provisions of the E–Sign Act to ‘limit, alter, or otherwise affect’ Section 204(a).”21 Moreover, the court continues, copyright transfers do not fall into any of the enumerated exceptions to the E-SIGN Act found in Section 7003.

The appellate panel cites with approval the only other case it can find that applies the E-SIGN Act to Section 204(a),22 noting that the district court there “reasoned that allowing the transfer of copyright ownership via e-mail pursuant to the E–Sign Act accorded with, rather than conflicted with,” the purpose of the writing requirement.23 Additionally, the court of appeals looks to another context, the Federal Arbitration Act, where the E-SIGN Act has been applied to find a “written provision” to exist in an email or a website’s terms of use.24 Strangely, the court of appeals does not explain how the cases it cites, which found a written document to exist in the electronic context, apply to the situation which is present here, which mandates a signed and written document. The court of appeals notes that invalidating the copyright transfers here “would thwart the clear congressional intent embodied in the E–Sign Act,” and it thus holds “that an electronic agreement may effect a valid transfer of copyright interests under Section 204 of the Copyright Act.”

Craigslist and Beyond

The issue of whether assent to a website’s terms of use could fulfill Section 204(a)’s writing requirement became relevant in a recent dispute involving Craigslist. Back in July of 2012, Craigslist sued 3Taps, PadMapper, and others for copyright infringement.25 Like MRIS, Craigslist claimed to have exclusive rights to user-generated content on account of its terms of use which users accepted via a clickwrap agreement, and it alleged that the defendants were infringing its copyrights by unlawfully scraping, copying, and distributing this copyrighted content. In an order this past April denying in part the defendants’ motion to dismiss, the district court found that Craigslist did in fact have an exclusive license to certain user-generated content—despite there being no signed writing memorializing the transfer.

The district court started its analysis by noting that “the primary issue for the user-created individual posts is whether Craigslist has acquired a sufficient license or ownership interest to assert the copyright.”26 The court then states that “[t]ransferring an exclusive license requires a writing,” and it quotes Section 204(a) as providing that “[a] transfer of copyright ownership . . . is not valid unless . . . in writing.”27 Remarkably, the district court completely ignores the statute’s requirement that the writing be “signed” by the copyright owner. Having read the requirement of a signed writing out of the statute, the court goes on to find that the terms of use agreed to by Craigslist’s users fulfill the writing requirement of Section 204(a) and grant to Craigslist an exclusive license to certain user-generated content. One would hope that this mistake is corrected by the district court down the road.

I bring up the court’s error in Craigslist to highlight what I think to be the error in the district court’s and the Fourth Circuit’s reasoning in construing the terms of use agreed to by MRIS’s subscribers here—the courts are reading out of Section 204(a) the requirement that the writing be “signed.” The E-SIGN Act defines an “electronic signature” to include “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.”28 The “parties’ intent is crucial.”29 Both the district court and the Fourth Circuit have conflated the intent to agree to a website’s terms of use with the intent to indicate that agreement by signing a writing. In the context of agreeing to a website’s terms of use, all signings indicate assent thereto, but not all assents take the form of a signing.

In other words, by clicking “yes” and agreeing to the terms of use, a user has clearly assented to the terms of use, but I find it a stretch to say that the user has intended to sign his name to that effect—not without more. While the result certainly comports with the policy rationale behind Section 204(a)’s writing requirement, it does not fit with the clear import of the statutory text. The simple solution, to me, seems to be for websites to have a box where a user can input his digital signature signaling his assent to the transfer. Another possibility would be to have the terms of use state that by clicking “yes,” the website user is assenting to the terms of use and affixing his electronic signature.30 That would clearly fulfill the requirement of a signed writing under the Copyright Act and the E-SIGN Act. That said, it will be interesting to see how other courts deal with this relatively novel legal issue when presented with it.

Follow me on Twitter: @devlinhartline


  1. 17 U.S.C.A. § 204(a) (West 2013) (“A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”). []
  2. For some reason, Scribd sometimes changes the font and makes documents difficult to read. When this happens, I have found that downloading the file and opening it up, rather than reading it from within the Scribd website, fixes the formatting issues. []
  3. See Electronic Signatures in Global and National Commerce Act, Pub. L. 106-229, 114 Stat. 464; codified at 15 U.S.C. §§ 7001-31. []
  4. Christopher M. Newman, A License Is Not A “Contract Not to Sue”: Disentangling Property and Contract in the Law of Copyright Licenses, 98 Iowa L. Rev. 1101, 1140 n.167 (2013) (internal quotations and citations omitted). []
  5. Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 412 (7th Cir. 1992) (discussing Section 101’s requirement of a signed writing in the context of a work made for hire). []
  6. Newman, 98 Iowa L. Rev. at 1140. []
  7. Id. []
  8. Effects Associates, Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990) (internal citations and quotations omitted; paragraph break added). []
  9. 17 U.S.C.A. § 101 (West 2013) (“A ‘transfer of copyright ownership’ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.”). []
  10. Ballas v. Tedesco, 41 F.Supp.2d 531, 541 (D.N.J. 1999); this opinion predates the E-SIGN Act, which went into effect on October 1, 2000. []
  11. 3-10 Nimmer on Copyright § 10.03[A][1]. []
  12. See Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 888 F.Supp.2d 691 (D. Md. 2012), modified on clarification, 904 F.Supp.2d 530 (D. Md. 2012). []
  13. 15 U.S.C.A. § 7001(a) (West 2013). []
  14. 15 U.S.C.A. § 7006(5) (West 2013). []
  15. Metro. Reg’l Info. Sys., Inc., 888 F.Supp.2d at 708. []
  16. Id. at 710. []
  17. Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 904 F.Supp.2d 530, 539 (D. Md. 2012). []
  18. See Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., Case No. 12-2102, 2013 WL 3722365 (4th Cir. July 17, 2013). []
  19. Id. at *8 (internal citations and quotations omitted). []
  20. Id. (internal citations and quotations omitted). []
  21. Id. at *9. []
  22. See Vergara Hermosilla v. Coca-Cola Co., Case No. 10-21418, 2011 WL 744098 (S.D. Fla. Feb. 23, 2011), aff’d sub nom., Hermosilla v. Coca-Cola Co., 446 F.App’x 201 (11th Cir. 2011). []
  23. Metro. Reg’l Info. Sys., Inc., 2013 WL 3722365 at *9. []
  24. See 9 U.S.C. § 2. []
  25. See Craigslist Inc. v. 3Taps Inc., Complaint, Case No. 12-03816, 2012 WL 3011009 (N.D. Cal. July 20, 2012). []
  26. Craigslist Inc. v. 3Taps Inc., Order Granting in Part and Denying in Part Motions to Dismiss, Case No. 12-03816, 2013 WL 1819999, *6 (N.D. Cal. Apr. 30, 2013). []
  27. Id. at *7 (internal quotations omitted; ellipses in original.). []
  28. 15 U.S.C.A. § 7006(5) (West 2013) (emphasis added). []
  29. Pepco Energy Servs., Inc. v. Geiringer, Case No. 07-04809, 2010 WL 318284, *2 (E.D.N.Y. Jan. 21, 2010) (unpublished opinion). []
  30. See Berry v. Webloyalty.com, Inc., Case No. 10-01358, 2011 WL 1375665, *7 (S.D. Cal. Apr. 11, 2011), opinion vacated and remanded on other grounds, Case No. 11-55764, 2013 WL 1767718 (9th Cir. Apr. 25, 2013). []

Will People On the Internet Ever Stop Stealing Each Other’s Shit? — “As more and more people get used to the idea that we’re all content creators, they’ll care more and more about developing both norms of conduct and technological solutions that help curtail content theft—that allow content to be easily accessed and shared, but with proper attribution and perhaps with a system for generating revenue under certain circumstances.”

Thom Yorke Vs Spotify: Why Doesn’t Spotify Speak Out Against Ad Funded Piracy? — The Trichordist notes, “it’s also important to remember that despite our disagreements over the revenue distribution models of Spotify and Pandora these are legal and licensed services… One of the primary reasons Spotify pays so little is because so many more pay nothing at all.”

Will Cariou v. Prince case be heard by the US Supreme Court? — The Second Circuit denied a petition for rehearing in the trailblazing case for transformative fair use. Cariou’s lawyer has indicated he would next file an appeal with the Supreme Court. The Court has not weighed in on the fair use doctrine in nearly twenty years.

Aereo heading to the US Supreme Court? — Recent developments in the Aereo/Aereokiller line of cases also nudge the issue a little bit closer to the Supreme Court.

Jonathan Swift once wrote that satire is a mirror “wherein beholders do generally discern everybody’s face but their own.” To be successful, satire must be subtle.

So it’s disappointing to see Techdirt, the long-running satire of copyright skepticism, forget this lesson.

Yesterday, the site ran a story on HBO’s Latest DMCA Abuse: Issues Takedown To Google Over Popular VLC Media Player. The joke here is that copyright skeptics ignore the vast scale of legitimate copyright claims to focus on the handful of errors and outliers in order to make a blunt “copyright bad” argument. That this sort of thing is the problem with the DMCA, not the tens of thousands of bad faith sites that use the law as a shield to profit off the works of others. But in trying to lampoon this viewpoint, Techdirt overplays its hand.

The story here involves a DMCA notice sent to Google on behalf of HBO. Included in the notice is one link to a page ostensibly offering a legitimate copy of the open source video program VLC rather than an infringing copy of an HBO work. But a quick look at the notice reveals hundreds of other links that do lead to infringing HBO works — nearly 1,600 in total. Assuming the VLC link accurately describes the files content, that’s an accuracy rate of over 99.9% in the entire notice. Yet Techdirt claims it shows the DMCA agent “isn’t being very careful.” 99.9% accuracy, described by Techdirt as “incredibly sloppy.”

Anyone with half a mind would quickly recognize that no one who was serious would make such a claim. Even those in on the joke would have a hard time maintaining a willful suspension of disbelief.

It’s a shame too, because ordinarily, Techdirt’s satire is very effective. Its construction of an entirely incoherent First Amendment doctrine is masterful. The running gag where minor points are consistently contradicted — for example, “the Librarian of Congress, which you might notice is a part of the legislative branch, not the executive branch” vs. “the Librarian of Congress (who technically is a part of the executive branch, working for the President)” — rewards close readers. Here’s hoping Techdirt finds its groove again.

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