Contrary to the impression that some—many, in fact—information technocrats would like to convey, the new world of information technology is simply not one of bits, bytes, and pixels that have somehow been born in some new, big-bang theory of intellectual creation and are floating around in the atmosphere until captured by the magical machine and delivered in some magical fashion to some public. Intellectual creativity, in the broad sense—encompassing both original authors as well as producers; and publishers’ coordination, packaging and rational distribution—remains the domain of human actors. Respect for their efforts, labors, investment, and assurance that they will continue, is the historical role of our intellectual property laws. The new technologies may well call for new ways to ensure that copyright continues to serve this function, but the humanity of the creative process must not be lost in awe of the devices.

Jon Baumgarten, 1986.1Joint Hearing on the Impact of Technological Change on the Legal System for the Protection of Intellectual Property, S. Jud. Subcomm. on Patents, Copyrights, and Trademarks & H. Jud. Subcomm. on Courts, Civil Liberties, and the Admin. of Justice, pp. 52-53 (April 16, 1986).

The one copyright issue everyone should agree on — “The Copyright Office was first established in 1897 as primarily a ministerial entity.  Over time it has steadily acquired responsibilities and today is a crucial independent policy advisor to all three branches of the government and provides important guidance on copyright matters to the public. It is inconceivable that had all these responsibilities been envisioned at the time of its creation the Office would have been structured as it is now – without the political accountability and transparency leadership by a Presidential Appointee confirmed by the Senate would provide, and without independent control over its resources and planning.”

Surveillance-based manipulation: How Facebook or Google could tilt elections — “Psychological manipulation—based both on personal information and control of the underlying systems—will get better and better. Even worse, it will become so good that we won’t know we’re being manipulated.”

Nearly Half of YouTube’s Top Channels Are Music-Related… — As Paul Resnikoff notes, much of YouTube’s value derives from professionally created content rather than user-generated content.

References   [ + ]

1. Joint Hearing on the Impact of Technological Change on the Legal System for the Protection of Intellectual Property, S. Jud. Subcomm. on Patents, Copyrights, and Trademarks & H. Jud. Subcomm. on Courts, Civil Liberties, and the Admin. of Justice, pp. 52-53 (April 16, 1986).

Two hearings today will look at the current state of the US Copyright Office—one in front of the House Judiciary Committee on the Office’s functions and resources, and a budget hearing by the House Appropriations Legislative Branch Subcommittee looking at the Architect of the Capitol and the Library of Congress (The Copyright Office is a department within the Library of Congress). Besides the registration of copyrights and recordation of copyright transfers and assignments—and be sure to check out the Office’s report on Technical Upgrades to Registration and Recordation released earlier this month—the Copyright Office is more broadly responsible for copyright policy and education. However, it is currently underfunded, understaffed, and faces structural and technological impediments to its mission. The witnesses at the Judiciary Committee hearing will discuss the challenges under the status quo in more detail and offer suggestions for improvement, ranging from increasing the resources and autonomy of the Office to establishing the Copyright Office as an independent agency.

The Copyright Office has evolved tremendously since it was first created 118 years ago, and I think it’s commendable that its role and status, along with its functions and resources, are being fully examined.

Centralizing Copyright

When the delegates of the Constitutional Convention in 1787 drafted the plan for a federal government, they forewent a legislature with general, indefinite powers, such as the States enjoyed, for one that had authority only according to an enumerated list of under 20 powers. One of these powers was securing the property rights of authors at the federal level because, as James Madison would explain in the Federalist Papers, “the States cannot separately make effectual provisions for” this protection. 1Federalist 43.

For nearly a century afterward, Congress played a relatively hands-off role in copyright policy. It occasionally held hearings and amended the copyright laws, but otherwise remained passive. Copyright law did require registration, but this function was administered by federal district courts.

Copyright registration certificate for Walt Whitman's "Leaves of Grass."

Copyright registration certificate for Walt Whitman, “Leaves of Grass”, 1855.

That began to change in 1870, when Congress centralized copyright registration and deposit functions within the Library of Congress. 2Act of July 8, 1870, §§85-111, 41st Cong., 2d Sess., 16 Stat. 198, 212-16. Then Librarian Ainsworth Spofford was a staunch advocate of using copyright deposit as a means of building the Library’s collections; he lobbied heavily for bringing copyright functions entirely within the Library’s purview, saying,

Under the present system, although this National Library is entitled by law to a copy of every work for which a copyright is taken out, it does not receive, in point of fact, more than four-fifths of such publications.

The transfer of the Copyright business proposed would concentrate and simplify the business, and this is a cardinal point…. Let the whole business… be placed in the charge of one single responsible officer, and an infinitude of expense, trouble, and insecurity would be saved to the proprietors of Copyrights and to the legal profession. 3John Y. Cole, Of Copyright, Men & a National Library, The Quarterly Journal of the Library of Congress, Vol. 28, April 1971. See also A Visit to the Library of Congress.

But Spofford underestimated the amount of work that would go into administering copyright registrations. Before the end of the century, Congress created (through an appropriations bill) a Copyright Office as a separate agency within the Library, headed by a Register of Copyrights. 4Act of February 19, 1897, 54th Cong., 2d Sess., 29 Stat. 545.

The Copyright Office Grows

The Copyright Office’s importance quickly grew. The first Register, Thorvald Solberg, proved ambitious, and established the Office as a legislative and policy expert, writing recommendations and drafting legislative proposals that would eventually become the Copyright Act of 1909. 5Abe Goldman, The History of USA Copyright Law Revision from 1901 to 1954, Copyright Law Revision Study No. 1, pp. 1-3 (1955). Thorvald Solberg recommendation for copyright law revision.

The Office played an even more critical role during the 1955-1976 copyright law revision effort in producing the current Copyright Act. As Bob Brauneis explains in his testimony, the legislative process

began with a series of 34 studies prepared by the Copyright Office over a five-year period addressing every corner of copyright law and of the economics of the copyright industries. Building on the insights of those studies, Register of Copyrights Abraham Kaminstein prepared in 1961 a comprehensive “Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law.” Register Kaminstein then held a series of public meetings with copyright stakeholders to discuss the recommendations of that report, and gathered written comments as well. Having gathered that input, the Copyright Office then issued a “Preliminary Draft for Revised U.S. Copyright Law” in late 1962, and in 1963 held a series of public meetings discussing sections of that draft in detail. That led to the first bill introduced in Congress in 1964, which was used as the basis for another series of public meetings held by the Copyright Office. Finally, after a second bill was introduced in 1965, Congress itself began to hold hearings on the proposed legislation.

Since the Copyright Act of 1976, the Copyright Office has played a central role in copyright law and policy: advising Congress and the Executive Branch; providing guidance to courts, copyright practitioners, and the general public; and administering copyright registrations, recordations, and deposits. It has also taken on new substantive roles, such as recommending exceptions for the circumvention of technical measures under 17 USC § 1201. And copyright policy has increasingly been addressed at an international level in venues such as WIPO and the WTO, expanding the scope of the Copyright Office’s work.

A Look at the Copyright Office

In recent decades, there have been a number of looks at the structure of the Copyright Office and administration of the copyright system. (Although it’s worth noting that Benjamin Kaplan suggested a regulatory commission with power to “adapt the statute to changing realities” when “congressional responses are apt to be late or inadequate” in his 1967 work, An Unhurried View of Copyright.)

In 1986, the Congressional Office of Technical Assessment (OTA) released a report on “Intellectual Property in an Age of Electronics and Information,” which sought to examine “the impact of recent and anticipated advances in communication and information technologies on the intellectual property system.” Among the report’s recommendations were institutional changes, ranging from intermediate changes—increasing research, coordination, regulatory, or adjudicatory functions of existing agencies, for example—to the creation of a new intellectual property agency. A joint Congressional committee held a hearing on the report on April 16, 1986, but no further legislative action resulted.

On February 16, 1993, Rep. William Hughes introduced H.R.897, the Copyright Reform Act of 1993. Among other things, the proposed bill would have made the Register of Copyrights a Presidential Appointee. This would have allowed the Register to make rules rather than requiring rules to be adopted by the Library of Congress. The Librarian of Congress, James Billington (who still serves in that capacity), opposed this move. He said in Congressional testimony,

At a time when publishing and communication are experiencing technological breakthroughs, it is particularly critical that the interests of the Library, the Copyright Office, and their constituents, be treated as mutual and complementary. The Library must be able to work hand in hand with the Copyright Office to ensure the continued collection, preservation, and protection of published and unpublished materials, including the new electronic information media that are making an increasingly important contribution to the nation’s intellectual heritage. 6Statement of James Billington, Hearings on H.R. 897: Copyright Reform Act of 1993, pg. 191, before the House Judiciary Comm. Subcomm. on Intellectual Property and Judicial Administration, 103rd Congress (March 4, 1993).

Hughes encouraged Billington to study further the effects his bill would have on the Library’s functions, and in response, Billington created an Advisory Committee on Copyright Registration and Deposit (ACCORD) to analyze these issues. Although the 20 member Committee (which included current Register of Copyrights Maria Pallante, then serving as Executive Director of the National Writers Union) did not examine the institutional changes contained within the Copyright Reform Act, it did look at registration and deposit issues.

The report of the ACCORD co-chairs presciently observed

As the communications revolution gathers momentum and the information superhighway is in its early stages, a comprehensive and reliable copyright database, available freely to the general public, is an enormous asset for a number of purposes. These matters were addressed during the ACCORD deliberations and by the individual authors of the working papers prepared for ACCORD discussions. There was consensus among ACCORD members that information obtained through registration-information bearing on authorship/dates of creation and publication, the ownership and duration of copyright, and the like can be extremely valuable not only for business transactions such as transferring rights, and obtaining permissions or licenses, but also for resolving legal disputes, providing biographical information, and so forth.

The Senate subsequently held a hearing on its companion bill, but while the legislation passed the House, it did not go any further. The issues raised by the report, however, did not disappear.

In 1996, Senator Orrin Hatch introduced an omnibus patent act which would have established a single government corporation to formulate policy and administer all forms of intellectual property: patent, trademark, and copyright. During a hearing on the bill, Hatch explained the motivation behind the change. First, he said, “The locus of copyright policymaking has shifted to the executive branch primarily because the international dimension of copyright has become dominant,” so the Copyright Office needs to be in the executive branch if it is to continue to play a leading role in policymaking. Second, Hatch noted the potential for increased rulemaking authority for the Copyright Office in the digital age—”For example, it has been suggested that the Copyright Office might administer a system of virtual magistrates for fair use and Internet access provider liability.” Increased executive powers, said Hatch, would cause problems given the Office’s current “anomalous position in the legislative branch.” Finally, Hatch said, the shift would “free the Copyright Office from the lengthy and cumbersome hiring practices of the Library of Congress.”

Register of Copyrights Marybeth Peters sharply criticized the proposal during her testimony, calling it “hasty and radical” and spoke on a number of issues such a change would raise. The move “first and foremost” would require a “fivefold increase” in registration fees, leading, consequently, to a decrease in registrations and Library of Congress deposits. Second, the move has “the potential to politicize copyright policy.” Under the Library of Congress, said Peters, the Copyright Office is not “influenced by political agendas or subject to interagency clearance.” Third, the combination of copyright with patent and trademark raises “conceptual concerns” because of fundamental differences between the two. Copyright has strong cultural, educational, and expressive policies not present in patent and trademark, and “These values may be slighted if copyright policy is wholly determined by an entity dedicated to the furtherance of commerce.”

Peters concluded by raising questions concerning the need for change and potential consequences, and said

Answering all of these questions requires consultation with the affected communities to determine their needs and to weigh their perspectives. That process has not taken place. There has been no open, public debate of the issues involved. Neither the Copyright Office nor members of the private sector participated in formulating these proposals. No representative of the author, copyright owner, or copyright user communities were given the opportunity to testify today and no further hearings are scheduled.

William Patry testified in support of the bill on a following panel, calling the current placement of the Copyright Office in the legislative branch a “historic anomaly” and arguing that if the agency is to engage in executive functions, it should reside in the executive branch. But overwhelmingly the sentiment from participants in the hearing was against the move. Statements from other copyright groups almost universally agreed with Peters’ assessment. The bill did not make it out of committee nor reemerge during later Congressional sessions.

A New Great Copyright Agency?

The challenges facing the Copyright Office only continue to grow as technology advances and copyright policy becomes more central to society. As I noted in 2015 in Copyright Law and Policy, Register Pallante has said “Evolving the Copyright Office should be a major goal of the next great copyright act.” She elaborated on the staffing, funding, and technological challenges of the Office in a 2013 lecture and a 2014 House IP Subcommittee oversight hearing.

The House Judiciary Committee hearing today will focus not only on those challenges but also look at potential solutions. These include increasing the Copyright Office’s administrative authority, shifting it to the Department of Commerce, or creating a freestanding, independent agency outside the Library of Congress. Though there is no clear consensus yet on which avenue to take, the witnesses are in remarkable agreement about the critical role the Office plays, the need to modernize it, and the deficiencies in the status quo. The benefits of modernizing the Office would be shared by authors, users, and the general public. That means that Congress is presented with a rare opportunity to take a bold step in improving the law that would not likely be divisive—something presently rare in the world of copyright.

References   [ + ]

1. Federalist 43.
2. Act of July 8, 1870, §§85-111, 41st Cong., 2d Sess., 16 Stat. 198, 212-16.
3. John Y. Cole, Of Copyright, Men & a National Library, The Quarterly Journal of the Library of Congress, Vol. 28, April 1971. See also A Visit to the Library of Congress.
4. Act of February 19, 1897, 54th Cong., 2d Sess., 29 Stat. 545.
5. Abe Goldman, The History of USA Copyright Law Revision from 1901 to 1954, Copyright Law Revision Study No. 1, pp. 1-3 (1955).
6. Statement of James Billington, Hearings on H.R. 897: Copyright Reform Act of 1993, pg. 191, before the House Judiciary Comm. Subcomm. on Intellectual Property and Judicial Administration, 103rd Congress (March 4, 1993).

On January 12, photographer Michael Kienitz asked the Supreme Court to review the Seventh Circuit’s decision in Kienitz v. Sconnie Nation. Sconnie Nation waived its brief, though the Media Institute filed an amicus brief in support of Kienitz.

The issue is fair use, specifically whether the Seventh Circuit split with the Second Circuit on the application of the “transformative use” test with its decision.

Kienitz takes place in the town of Madison, Wisconsin, where, several years ago, the Mayor sought to shut down an annual block party. Sconnie Nation, a novelty t-shirt maker, printed up a handful of t-shirts with a photo of the mayor and the phrase “Sorry for partying.” The photo was originally taken by Kienitz, a journalist and conflict photographer, and used without permission. Kienitz sued Sconnie Nation for copyright infringement.

Sconnie Nation asserted fair use, and the district court agreed, granting summary judgment in favor of the defendant.

On appeal, the Seventh Circuit affirmed the lower court’s judgment but criticized its reasoning. Specifically, it took aim at the court’s reliance on the “transformative use” test, saying, “That’s not one of the statutory factors, though the Supreme Court mentioned it in Campbell v. Acuff-Rose Music.” It observed that the Second Circuit has embraced this test, most recently in its decision in Cariou v. Prince, where it “concluded that ‘transformative use’ is enough to bring a modified copy within the scope of §107.” Writing for the Seventh Circuit, Judge Easterbrook said,

We’re skeptical of Cariou‘s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107 but also could override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2). Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).

The court nevertheless found the use fair, saying the t-shirts have not “reduced the demand for the original work.”

While Cariou’s approach to transformative use has been criticized before, 1See, e.g., Patricia Cohen, Photographers Band Together to Protect Work in ‘Fair Use’ Cases, New York Times, Feb. 21, 2014. Kienitz represents the first Circuit Court decision to do so.

Recall, Cariou involved the unauthorized appropriation of photographs of working-class photographer Patrick Cariou by celebrity artist Richard Prince. 2Cariou v. Prince, 714 F. 3d 694 (2d. Cir. 2013). The Second Circuit held that 25 of Prince’s paintings were fair use, despite “Prince’s deposition testimony 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.'” The court said that “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.” The Supreme Court subsequently denied to review the Cariou decision.

I think Cariou was wrongly decided. But whether or not Kienitz represents a good vehicle for Supreme Court review, I think the occasion does provide a good place to reiterate the importance of necessity to fair use.

Judge Easterbrook raises this point, though it is ultimately of no help to Kienitz. Easterbrook observes:

[D]efendants did not need to use the copyrighted work. They wanted to mock the Mayor, not to comment on Kienitz’s skills as a photographer or his artistry in producing this particular photograph. There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many non-copyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors. (Many copyright owners would block all parodies, for example, and the administrative costs of finding and obtaining consent from copyright holders would frustrate many academic uses.)

Fair Use and Necessity

I’m not the first to describe fair use in terms of necessity. Alan Latman, going all the way back to his seminal 1958 study on fair use as part of the Copyright Law Revision process leading to the current Act, wrote:

Practical necessity is at times the rationale of fair use. Thus article 10 of the law of Argentina requires that an excerpt be “indispensable” to the purpose of the later work. The modus operandi of certain fields requires that the rights of each author yield to a step-by-­step progress. This consideration is often linked to the constitutional support for fair use as an indispensable tool in the promotion of “science.” Practical necessity and constitutional desirability are strongest in the area of scholarly works.

Similarly, in reviews of a work, a certain amount of reconstruction is often necessary; and in burlesque, the user must be permitted to accomplish the “recalling or conjuring up of the original.” Of more questionable necessity is the use of an earlier work in the preparation of a compilation. However, extensive use of earlier works as guides and checks appears to be common in this type of work which, although perhaps not achieving the intellectual aims inherent in the constitutional objective of copyright, does produce useful publications. 3Alan Latman, Fair Use of Copyrighted Works, pp 30-31, Copyright Law Revision Study No. 14, US Copyright Office (1958).

More recently, David Fagundes ruminates on the idea in a 2011 post, South Park & a Necessity Theory of Fair Use’s Parody/Satire Distinction:

Parody/satire may not track well onto the idea of transformativeness, but I do think it tracks well onto the idea of necessity.  Necessity is a familiar defense to property torts.  In the context of trespass, for example, emergency can entitle yachters stranded on a stormy lake to tie up at a stranger’s dock without permission, on the theory that avoiding the loss of their lives is more important than respecting the owner’s negative liberty (remember Ploof v. Putnam?).

And there are others who have looked at the idea of necessity in fair use, either favorably 4E.g., David Lange & Jessica Lange Anderson, Copyright, Fair Use and Transformative Critical Appropriation (working paper) (2011) (arguing that “fair use must be understood to make deliberate room for transformative appropriation of copyrighted work whenever the appropriation and transformation are necessary steps toward the realization of significant social criticism”). or critically. 5E.g., John Tehrenian, Infringement Nation: Copyright 2.0 and You, p. 41 (Oxford Univ. Press 2011) (“The Supreme Court’s distinction between satire and parody in the application of the fair use test is ultimately unsatisfying. Such a formulation reduces fair use to a test about necessity. Thus, where use is necessary to produce a form of speech (parody), it will be reluctantly tolerated as fair. But, where use is unnecessary to produce a form of speech (satire), it will not be tolerated. Such a conceptualization of fair use is highly propertized, allowing borrowing only when conditions require it. Such a view casts fair use as a privilege, not a right—a stark contrast to the former view of copyright itself as a privilege rather than a natural right. Under a utilitarian vision of copyright, progress in the arts rather than a necessity calculus should drive the fair use doctrine. As a consequence, there is no inherent reason why satire should be subject to different fair use rights than parody.”)

Fair Use Justifications

Necessity derives from the justifications for fair use.

The earliest justification for fair use is grounded in the goals of copyright law itself. That is, “that a certain degree of latitude for the users of copyrighted works is indispensable for the ‘Progress of Science and useful Arts.’” 6Alan Latman, Fair Use of Copyrighted Works, pg 7, Copyright Law Revision Study No. 14, US Copyright Office (1958); accord Campbell v. Acuff-Rose Music, 510 US 569, 575 (1994) (“From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . . .’”

In one of the earliest law review articles on fair use, Judge Yankwich concludes:

[T]he earnest scholar and student, be he reviewer, critic or scientist in the same field, should have reasonable access to the work of others, lest we put—in the words of Lord Ellenborough—“manacles upon science.” On the whole, the law of “fair use,” as evolved by the courts, is a wise synthesis of conflicting rights which, while safeguarding the author, avoids injury to the progress of ideas which would flow from an undue “manacling” of others in the reasonable use of copyrighted material.7Leon R. Yankwich, What is Fair Use? 22 Univ. of Chicago Law Review 203, 215 (1954).

More recently, fair use has also been justified on free speech grounds. The Supreme Court has said on several occasions that fair use is one of copyright’s “built-in First Amendment accommodations”; it, along with doctrines like the idea-expression dichotomy, is “generally adequate” to address “First Amendment concerns.” 8Eldred v. Ashcroft, 537 US 186, 219 (2003). In Eldred v. Ashcroft, the Court said fair use “allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances.” When the expression itself is essential to a further purpose, such as news reporting or commentary, then fair use may allow copying. When it’s not essential, fair use should not apply, as the Supreme Court said in Harper & Row v. Nation Enterprises, where it held the unauthorized, verbatim copying of 300 words from an unpublished manuscript was not fair use:

Nor do respondents assert any actual necessity for circumventing the copyright scheme with respect to the types of works and users at issue here. Where an author and publisher have invested extensive resources in creating an original work and are poised to release it to the public, no legitimate aim is served by pre-empting the right of first publication. The fact that the words the author has chosen to clothe his narrative may of themselves be “newsworthy” is not an independent justification for unauthorized copying of the author’s expression prior to publication. To paraphrase another recent Second Circuit decision:

“[Respondent] possessed an unfettered right to use any factual information revealed in [the memoirs] for the purpose of enlightening its audience, but it can claim no need to ‘bodily appropriate’ [Mr. Ford’s] ‘expression’ of that information by utilizing portions of the actual [manuscript]. The public interest in the free flow of information is assured by the law’s refusal to recognize a valid copyright in facts. The fair use doctrine is not a license for corporate theft, empowering a court to ignore a copyright whenever it determines the underlying work contains material of possible public importance.” [Emphasis added.] 9Harper & Row v. Nation Enterprises, 471 US 539, 557-58 (1985).

Taken together, these justifications suggest that throughout the history of fair use, there has been this idea that some overriding purpose is required to privilege a use that would otherwise be infringing. And the use of the original work must be necessary to the new work.

Campbell v. Acuff-Rose

This is precisely what the Supreme Court held in Campbell v. Acuff-Rose. In Campbell, the publishers of “Oh Pretty Woman,” written and recorded by Roy Orbison and William Dees, sued 2 Live Crew after it released “Pretty Woman,” a take-off on the Orbison classic that incorporated numerous elements from the song, including the famous bass riff, and added ribald rap lyrics. The district court had found the 2 Live Crew song to be a parody of the Orbison song, and the case made it to the Supreme Court on the issue of fair use.

This was the first time the Court would weigh in on whether parody may be fair use. It held that it could, saying, “Like less ostensibly humorous forms of criticism, it can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.” In doing so, it drew a sharp distinction between parody and satire, defining the former as a work that comments on an existing work through mimicry while the latter copies for a non-related purpose.

For the purposes of copyright law, the nub of the definitions, and 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. 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 Court went on to point out that this distinction hinges on necessity.

Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing. [Emphasis added.]

The necessity requirement makes sense in light of the underlying justifications of fair use. If copying of expression is necessary for some speech purpose, fair use may excuse it so that copyright protection does not overextend and impinge on free speech interests.

When, however, copying expression is not necessary to a new work, there is no free speech issue, since the copyright owner cannot prevent others from communicating the facts and ideas conveyed by her work.

This distinction is illustrated in the Ninth Circuit’s 2012 Monge v. Maya Magazines decision. 10688 F. 3d 1164. Maya, a gossip magazine, had published photos taken of a clandestine wedding of a young pop singer, one who maintained being single as part of her image. Maya argued fair use, characterizing the publication as news reporting and claiming, in part, that its “publication transformed the photos from their original purpose—images of a wedding night—into newsworthy evidence of a clandestine marriage.” It relied on the First Circuit’s decision in Núñez v. Caribbean Int’l News Corp. as support.

In Núñez, a newspaper had reprinted, without authorization, risqué photographs that had surfaced of a Miss Universe winner. The discovery of the photographs had sparked an inquiry into whether the model was fit to retain the Miss Universe title. The court disagreed that Núñez supported Maya’s fair use argument.

Although Núñez also involved news reporting, the similarities end there. The controversy there was whether the salacious photos themselves were befitting a “Miss Universe Puerto Rico,” and whether she should retain her title. In contrast, the controversy here has little to do with photos; instead, the photos here depict the couple’s clandestine wedding. The photos were not even necessary to prove that controverted fact—the marriage certificate, which is a matter of public record, may have sufficed to inform the public that the couple kept their marriage a secret for two years. [Emphasis added.]

Similarly, some use of expression may be necessary for commentary, criticism, quotation, or parody—all purposes that further the underlying goal of copyright in advancing art, science, and knowledge. Here, it bears repeating that, as a general rule, the protection of copyright will serve the purposes of copyright. When the original work is fungible to the new work—when there are alternative sources of raw materials for the second creator to draw upon—then the creation of the new work is not blocked. 11Credit to Jasmine Abdel-khalik, from whom I got the idea of “fungibility.” The second creator can “work[] up something fresh”, 12Joseph Fishman explains how this furthers copyright’s purpose in his forthcoming article, Creating Around Copyright. turn to the public domain for material, or find a work with more favorable licensing terms. 13In fact, entire industries providing stock photos, footage, and music have grown up to meet this demand. Copyright’s purpose is to create a commercial market for creative works, and these outcomes are consistent with a functioning marketplace. When fair use privileges uses of original works that are not necessary to the creation of new works, it undermines this market, and, consequently, undermines copyright.

Toward a Fair Use Standard

Focusing on the necessity of the original work to the new use also puts the other factors into sharper focus. Take, for example, the third factor, which looks at “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” If there is no connection between the original and new works, what standard guides courts in weighing this factor? How much use of a work is “fair” when it is not necessary to a new work? In this case, the inquiry becomes redundant with a substantial similarity analysis.

But when there is a connection between new and original works, courts have a standard to guide analysis of the third factor. Campbell provides a clear application of this principle in the context of parody.

Parody’s humor, or in any event its comment, necessarily springs from recognizable allusion to its object through distorted imitation. Its art lies in the tension between a known original and its parodic twin. When parody takes aim at a particular original work, the parody must be able to “conjure up” at least enough of that original to make the object of its critical wit recognizable. What makes for this recognition is quotation of the original’s most distinctive or memorable features, which the parodist can be sure the audience will know. 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. But using some characteristic features cannot be avoided.

In fact, it’s often forgotten that the Supreme Court did not hold that 2 Live Crew’s use was fair. It instead remanded to the district court to determine fair use, and in its discussion, it continues to be clear that a necessity requirement underlies fair use.

Suffice it to say here that, as to the lyrics, we think the Court of Appeals correctly suggested that “no more was taken than necessary,” but just for that reason, we fail to see how the copying can be excessive in relation to its parodic purpose, even if the portion taken is the original’s “heart.” As to the music, we express no opinion whether repetition of the bass riff is excessive copying, and we remand to permit evaluation of the amount taken, in light of the song’s parodic purpose and character, its transformative elements, and considerations of the potential for market substitution sketched more fully below.

The two parties settled following the Supreme Court decision, agreeing to a license.

In recent decades, fair use has categorically expanded to include the copying of entire works for new purposes rather than new works—for example, time-shifting, 14Sony Corp. of America v Universal City Studios, 464 U.S. 417 (1984). mass digitization, 15Authors Guild v. Hathitrust, 755 F.3d 87 (2nd Cir. 2014). or image search. 16Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir. 2003). In these situations, necessity may not play the same role, if it plays one at all. But in its historical application—as a privilege for the incorporation of expression from an existing work into a new work—courts should look at necessity. Whether necessity is an essential element of fair use is a separate question, but at the very least, it should play a key role in any fair use inquiry to ensure that the doctrine remains consistent with copyright’s ultimate goals.

References   [ + ]

1. See, e.g., Patricia Cohen, Photographers Band Together to Protect Work in ‘Fair Use’ Cases, New York Times, Feb. 21, 2014.
2. Cariou v. Prince, 714 F. 3d 694 (2d. Cir. 2013).
3. Alan Latman, Fair Use of Copyrighted Works, pp 30-31, Copyright Law Revision Study No. 14, US Copyright Office (1958).
4. E.g., David Lange & Jessica Lange Anderson, Copyright, Fair Use and Transformative Critical Appropriation (working paper) (2011) (arguing that “fair use must be understood to make deliberate room for transformative appropriation of copyrighted work whenever the appropriation and transformation are necessary steps toward the realization of significant social criticism”).
5. E.g., John Tehrenian, Infringement Nation: Copyright 2.0 and You, p. 41 (Oxford Univ. Press 2011) (“The Supreme Court’s distinction between satire and parody in the application of the fair use test is ultimately unsatisfying. Such a formulation reduces fair use to a test about necessity. Thus, where use is necessary to produce a form of speech (parody), it will be reluctantly tolerated as fair. But, where use is unnecessary to produce a form of speech (satire), it will not be tolerated. Such a conceptualization of fair use is highly propertized, allowing borrowing only when conditions require it. Such a view casts fair use as a privilege, not a right—a stark contrast to the former view of copyright itself as a privilege rather than a natural right. Under a utilitarian vision of copyright, progress in the arts rather than a necessity calculus should drive the fair use doctrine. As a consequence, there is no inherent reason why satire should be subject to different fair use rights than parody.”)
6. Alan Latman, Fair Use of Copyrighted Works, pg 7, Copyright Law Revision Study No. 14, US Copyright Office (1958); accord Campbell v. Acuff-Rose Music, 510 US 569, 575 (1994) (“From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . . .’”
7. Leon R. Yankwich, What is Fair Use? 22 Univ. of Chicago Law Review 203, 215 (1954).
8. Eldred v. Ashcroft, 537 US 186, 219 (2003).
9. Harper & Row v. Nation Enterprises, 471 US 539, 557-58 (1985).
10. 688 F. 3d 1164.
11. Credit to Jasmine Abdel-khalik, from whom I got the idea of “fungibility.”
12. Joseph Fishman explains how this furthers copyright’s purpose in his forthcoming article, Creating Around Copyright.
13. In fact, entire industries providing stock photos, footage, and music have grown up to meet this demand.
14. Sony Corp. of America v Universal City Studios, 464 U.S. 417 (1984).
15. Authors Guild v. Hathitrust, 755 F.3d 87 (2nd Cir. 2014).
16. Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir. 2003).

Loew’s Inc v CBS, 131 F.Supp. 165 (SD Cali 1955) held that a Jack Benny parody of the film Gaslight was not fair use. Here the court responds to defendants’ contention that “such a decision would be a frontal attack on freedom in our democracy”:

… we confess we have difficulty in visualizing the loss of that freedom if Benny’s activities are curtailed by this decision. Instead, the decision reaffirms a principle inherent in the democratic way of life — the right to own and enjoy one’s own private property without fear of appropriation by another. The concept of private ownership of literary property is equally entitled to protection and is more in danger in this proceeding than are our other freedoms.

The US Copyright Office: Its Functions and Resources — On Thursday, the House Judiciary Committee is holding its first copyright review hearing of 2015, looking this time at the primary agency for administering copyright law and registration and developing copyright policy. However, the Office currently faces funding and staffing shortages, as well as structural challenges to the important role it plays. And yesterday, the Copyright Office Special Projects Team released a report on Technological Upgrades to Registration and Recordation, which analyzes many of these issues in more detail.

YouTube makes a move against brand-sponsored videos — The media platform has amended its policies so that, according to Digiday, “Video overlays of sponsor logos and product branding are no longer allowed — unless the sponsor pays Google to advertise on that channel.”

Some Presidents’ Day words about copyrights from George Washington — “At best, Article IV [of England’s Statute of Anne] reflected profound distrust of private markets. At worst, it was a veiled means of censorship that strongly discouraged the creation and publication of any works that might offend the sensibilities of Royal officials, academics, or leading clerics of the Established Anglican Church. Washington, Madison and the other Members of the First Congress were well aware of Article IV of the Statute of Anne. Yet they rejected it entirely: the federal Copyright Act of 1790 contained no analog of Article IV. Indeed, it did not authorize any compulsory licensing. Consequently, while the US Copyright Act of 1790 was not the first general, national copyright law, it was the first truly market-based general, national copyright law.”

Cravath Partners Spearhead New Copyright Program at Columbia Law — A great profile of a new pro bono clinic for copyright plaintiffs in New York City, led by Cravath, Swain & Moore partners David Marriott and David Kappos. For more info, see here.

C.D. Howe: Copyright Board undercompensating artists and depriving rights holders of royalties — From Canada: “Yesterday, the C.D. Howe Institute released a report, The Value of Copyrights in Recorded Music: Terrestrial Radio and Beyond. The report, written by Prof. Marcel Boyer, Professor Emeritus of Economics, Université de Montréal, concluded that the value of recorded music is about 2.5 times greater than the level of copyright royalties certified by the Copyright Board. He estimates that in 2012, this would have meant that royalty payments should have been about $440 million compared to the estimated $178 million.”

Grammys, Love, Angst, Striving, Synergy, Creativity & Copyright — “By ensuring that artists, musicians, songwriters and other creators enjoy the fruits of their glorious labors — most of which are spent in arduous hours of striving  before their works see the light of day and the love of their fans — we invest wisely in the cultural wealth that makes living worthwhile.”

LOTR’s One Ring explainer — “What’s interesting about hearing of The Ring in this focused way is how it becomes a part of Tolkien’s criticism of technology. The Ring does what every mighty bit of tech can do to its owner/user: makes them feel powerful and righteous. Look what we can do with this thing! So much! So much good! We are good therefore whatever we do with this will be good! The contemporary idea of the tech startup is arguably the most seductive and powerful technology of the present moment, the One Ring of our times.”

Searching for answers from Google about Google — This Tuesday, a federal judge is set to rule on Google’s unusual and aggressive move begging a federal court to block a state attorney general from investigating whether the $368 billion company has violated state consumer protection laws. The Dead Kennedys’ East Bay Ray writes, “The only way we’re going to learn about what Google is doing is through legal challenges like that of AG Hood… I worry that if Google can block a state’s top law enforcement officer from even asking questions, then who is there to stand up and search for the answers we clearly should be seeking?”

This weekend, Fifty Shades of Grey opens in theaters. The family-friendly tale of young love is based on a series of best-selling novels by British author E.L. James. Jonathan Band, a lobbyist for the Computer and Communications Industry Association (CCIA), yesterday posted an article about the film on CCIA’s Project Disco blog. In it, Band makes the extraordinary claim that “fair use is to blame—or thank—for the existence of the Fifty Shades franchise.”

Band correctly notes that James “originally wrote the trilogy as fan fiction of Stephanie Meyer’s popular Twilight series… At some point the popularity of the story must have convinced James of its potential commercial value, so she eliminated the vampires and the potentially infringing references to Twilight characters and plotline.” The series was indeed subsequently published, and indeed became commercially valuable. Band says, “Over 100 million copies of the novels have been sold, the first novel of the series has been on the New York Times bestseller list for 140 weeks, and the novels have been translated into 51 languages.” And soon, the film version will be playing in theaters worldwide.

So how, according to Band, does fair use play a role here? See if you can follow along. First, Band makes the erroneous legal assertion that “Fan fiction is a quintessential fair use.” There are no such categorical rules in fair use; it requires balancing multiple factors on a case-by-case basis. 117 USC § 107 provides in part that “In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include — (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” Second, he makes the questionable presumption that any fanfic author’s fair use of a copyrighted work automatically privileges any third-party site’s hosting and distribution of that work online, thus shielding the site that James first uploaded her story to. Finally, by sharing her fanfic stories on a site devoted to Twilight fan fiction, Band speculates that “James almost certainly would have received constructive comments from other fans of ‘Twific’ (Twilight fan fiction) recommending stylistic changes and plot twists, and urging her to continue writing.”

That is why fair use was essential to 50 Shades. Because who’s ever heard of a non-fanfic based writer community?

Idea Expression

But what’s really curious about the example that Band chooses is that it serves as a perfect example of how, contrary to persistent claims by copyright critics, copyright does not stifle creativity.

James was inspired by Stephanie Meyer’s work and admittedly copied it. Yet, with a bit of additional creativity, she was able to produce her own work that is clearly not infringing. This is thanks to the foundational—yet underappreciated—distinction between idea and expression in copyright law.

As the First Circuit has explained, “[I]n most contexts, there is no need to ‘build’ upon other people’s expression, for the ideas conveyed by that expression can be conveyed by someone else without copying the first author’s expression.” 2Lotus Development Corp. v. Borland Intern., Inc., 49 F. 3d 807, 818 (1st Circuit 1995). This distinction mediates between the need for a commons of ideas that all authors can draw upon freely and the exclusive rights that facilitate the commercialization of expressive works. 3See, e.g., Stan J. Liebowitz & Stephen Margolis, Seventeen Famous Economists Weigh in on Copyright: The Role of Theory, Empirics, and Network Effects [PDF], 18 Harvard Journal of Law & Technology 435, 453 (2004) (“Copyright protects expression, not ideas. Many economists have seen It’s a Wonderful Life, the Jimmy Stewart movie classic, and have read The Choice, Russell Roberts’ treatment of free trade. Although Roberts uses the plot device of a man who must return to earth to earn his angel’s wings, his book does not infringe the movie’s copyright. Though clearly an important creative element of the movie, the plot device is not protected by copyright… Artists do indeed draw on old themes, and they are allowed to do so. On the other hand, they are not allowed to incorporate details of copyrighted works. So the economists are correct in that copyright does raise artists’ costs—copyright forces artists to do some work themselves. However, since only specific expressions are protected, extensive parts of the culture are not, as it is sometimes claimed walled off from creative re-use.”). The fact that all works are built on existing works while the vast majority of works do not infringe on other works proves the centrality and effectiveness of the idea expression distinction.

Perhaps it is the case that the operation of the idea expression distinction is so fundamental to copyright that it becomes easy to ignore. As copyright law professor Jessica Litman has observed, “The concept that portions of works protected by copyright are owned by no one and are available for any member of the public to use is such a fundamental one that it receives attention only when something seems to have gone awry.” 4Jessica Litman, Public Domain, 39 Emory L.J. 965, 977 (1990). And perhaps the line between idea and expression, as Landes and Posner observe, is “often hazy.” 5William M. Landes and Richard A. Posner, An Economic Analysis of Copyright Law 18 J. Leg. Stud. 325, 349 (1989). Nevertheless, the vast majority of works both build upon existing works yet do not infringe upon existing works. This is due primarily to the idea expression distinction. 6Accord Jane Ginsburg, Authors and Users in Copyright, 45 J. Copyright Soc’y USA 1, 5 (1997) (“The fair use doctrine … and the idea/expression dichotomy … relieve most of the tension that exclusive rights for first authors may cause when confronted with the creative demands of second authors.”).

To Boldly Go Where No One Has Gone Before

A good example of the idea expression distinction in action can be found in the development of the original Star Trek television series. In The Making of Star Trek, Gene Roddenberry notes some of the ideas that influenced his concept, including, “A. E. van Vogt’s tales of the spaceship Space Beagle, Eric Frank Russell’s Marathon series of stories, and the film Forbidden Planet (1956).” 7Whitfield, Stephen PE; Roddenberry, Gene (1968). The Making of Star Trek. New York: Ballantine Books. ISBN 0-345-31554-5. OCLC 23859. When Roddenberry first pitched the show, he described it as a “’Wagon Train’ concept”, referring to the popular Western television show that ran from 1957-65. The captain of the Enterprise was described as “A space-age Captain Horatio[] Hornblower,” an allusion to the protagonist of a series of novels by author C. S. Forester.

Roddenberry created Star Trek by copying from these—and undoubtedly other—sources. Yet no one would consider such copying actionable under copyright law. Roddenberry, like all creators, copied, rearranged, and combined ideas from multiple sources. He didn’t, however, need to copy material expression from any existing works.

This is how the distinction between idea and expression, on a day-to-day basis, works. It mediates between protection of creative works and recognition that any creative work necessarily borrows from other creative works. It allows remedies against misappropriation while allowing creative appropriation. It gives creators and courts a rough guide for distinguishing between property and the public domain. 8Accord Warner Bros. v. American Broadcasting Companies, 720 F. 2d 231, 240 (2nd Cir. 1983) (“Though imprecise, [the idea-expression dichotomy] remains a useful analytic tool for separating infringing from non-infringing works”). The result is billions of dollars in economic activity creating and disseminating creative works with a trivial amount of litigation involving an idea/expression issue.

Progress of Science

Not only does copyright facilitate the dissemination and reuse of ideas, but its restraints on expression may also be beneficial to the public and culture. In Creating Around Copyright, Joseph Fishman writes that, as cognitive psychology, management studies, and art history has all shown, creativity requires restraints. Certain types of constraints, including those inherent in copyright law, are generative. Fishman talks specifically about the derivative work right, which is “is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” 917 USC § 101.

Without a derivative work right, we may get more homogenization. That’s damaging if the name of the game is creativity. The wider the range of undiscovered appropriate solutions to a problem, the more audiences may miss out when problem solvers become locked in to a single solution. And if audiences value a multiplicity of solutions separately from the content of those solutions, the cost of that lock-in becomes exacerbated. The expressive arts, where appropriateness is often extremely ill-defined and where we desire new works even though there’s nothing wrong with the old ones, check both of those boxes. To the extent that the derivative work right stimulates create-around effort, it furthers—not frustrates—copyright’s constitutional goal of “stimulat[ing] artistic creativity for the general public good.” Thus, although the current derivative works system constrains more broadly than a hypothetical blocking copyrights system, it may also constrain more wisely.

James’ original story, when it was still a “fanfic” of Twilight, would more than likely be considered a derivative work of that series. Yet James was able to “create around” Meyer’s original expressive elements to create a work that builds upon an existing work in a noninfringing way. And she did not need to rely on fair use to do so.

References   [ + ]

1. 17 USC § 107 provides in part that “In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include — (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”
2. Lotus Development Corp. v. Borland Intern., Inc., 49 F. 3d 807, 818 (1st Circuit 1995).
3. See, e.g., Stan J. Liebowitz & Stephen Margolis, Seventeen Famous Economists Weigh in on Copyright: The Role of Theory, Empirics, and Network Effects [PDF], 18 Harvard Journal of Law & Technology 435, 453 (2004) (“Copyright protects expression, not ideas. Many economists have seen It’s a Wonderful Life, the Jimmy Stewart movie classic, and have read The Choice, Russell Roberts’ treatment of free trade. Although Roberts uses the plot device of a man who must return to earth to earn his angel’s wings, his book does not infringe the movie’s copyright. Though clearly an important creative element of the movie, the plot device is not protected by copyright… Artists do indeed draw on old themes, and they are allowed to do so. On the other hand, they are not allowed to incorporate details of copyrighted works. So the economists are correct in that copyright does raise artists’ costs—copyright forces artists to do some work themselves. However, since only specific expressions are protected, extensive parts of the culture are not, as it is sometimes claimed walled off from creative re-use.”).
4. Jessica Litman, Public Domain, 39 Emory L.J. 965, 977 (1990).
5. William M. Landes and Richard A. Posner, An Economic Analysis of Copyright Law 18 J. Leg. Stud. 325, 349 (1989).
6. Accord Jane Ginsburg, Authors and Users in Copyright, 45 J. Copyright Soc’y USA 1, 5 (1997) (“The fair use doctrine … and the idea/expression dichotomy … relieve most of the tension that exclusive rights for first authors may cause when confronted with the creative demands of second authors.”).
7. Whitfield, Stephen PE; Roddenberry, Gene (1968). The Making of Star Trek. New York: Ballantine Books. ISBN 0-345-31554-5. OCLC 23859.
8. Accord Warner Bros. v. American Broadcasting Companies, 720 F. 2d 231, 240 (2nd Cir. 1983) (“Though imprecise, [the idea-expression dichotomy] remains a useful analytic tool for separating infringing from non-infringing works”).
9. 17 USC § 101.

Music Licensing Study — Yesterday, the Copyright Office released a comprehensive, 245 page report examining the music licensing landscape in the US and offering a set of nearly 30 recommendations that should more fairly compensate creators, make the licensing process more efficient, provide market participants with “access to authoritative data to identify and license sound recordings and musical works”, and provide rightsholders with greater transparency of payment and usage information. (And it cites to Copyhype, pg. 52, n.246.)

Intellectual property and trade: Moving in the right direction — “Last Friday, Senator Orrin Hatch, the new chairman of the Senate Finance Committee, spoke at AEI about his approach to trade legislation in 2015. The chairman’s remarks foster hope that Congress will make positive steps on trade policy and international intellectual property rights in the coming year.”

CPIP Supports Guidelines for the Protection of Fundamental IP Rights — This week, the Center for Protection of Intellectual Property, along with over 60 other organizations and individuals, published a letter affirming the protection of IP rights. The letter noted that the “Founding Fathers understood that by protecting the proprietary rights of artists, authors, entrepreneurs, innovators, and inventors, they were promoting the greater public welfare. The continued protection of these fundamental rights is essential to American innovation and competitiveness.”

Media Institute Files Brief in U.S. Supreme Court Supporting Stronger Copyright Protections for Photographers — A cert petition filed by the photographer in Kienitz v. Sconnie Nation has attracted its first amicus brief, from the Media Institute. The Institute argues the Supreme Court should take the case to, in part, reaffirm “the fundamental distinction between parody and satire.”

My Amazon bestseller made me nothing — “This past summer, my novel, ‘Broken Piano for President,’ shot to the top of the best-seller lists for a week. After Jack Daniel’s sent me a ridiculously polite cease and desist letter, the story went viral and was featured in places like Forbes, Time magazine and NPR’s Weekend Edition. The New Yorker wrote one whole, entire, punctuated-and-everything sentence about me! My book was the No. 6 bestselling title in America for a while, right behind all the different ’50 Shades of Grey’ and ‘Gone Girl.’ It was selling more copies than ‘Hunger Games’ and ‘Bossypants.’ So, I can sort of see why people thought I was going to start wearing monogrammed silk pajamas and smoking a pipe.”

Nigam: Can Google end investigation before it starts? — “Google’s motion to shut down Attorney General Hood’s effort to ask questions in the public interest goes before the judge in the next month. His ruling could set a precedent for consumers and corporations around America. We could see a whole new class of company that is, quite simply, too big to scrutinize.” Google’s motion has, however, garnered support from a number of organizations. Of this support, the Trichordist points out in Bring Out Your Shills: Google’s Shill Mill Attacking Mississippi Attorney General Jim Hood for Having the Audacity to Investigate Google, “the two amicus briefs filed in support of Google’s attempt to stop a criminal investigation were filed solely by organizations that receives funding from Google both directly and indirectly and in some cases has received that funding for many years.”

On January 12th, the Supreme Court called for the views of the US Solicitor General (SG) on a cert petition filed by Google in a case involving Oracle’s Java software platform. SCOTUSBlog has a wonderful background on calls for the Solicitor General (CVSG)—but, while the Supreme Court often follows the recommendation of the SG on whether or not to hear a case, in intellectual property cases it tends to listen to what it has to say and then chart its own path.

This case involves Google’s admitted literal copying of 7,000 lines of verbatim software code, as well as the nonliteral copying of the structure, sequence, and organization of Oracle’s Java API packages. Despite Google’s arguments, last May, the Federal Circuit held that these elements are indeed copyrightable, and remanded to the district court for further proceedings on Google’s fair use defense to the lower court’s finding of infringement. (For more background on the case, see my previous posts, Fed Circuit hears Oracle v Google arguments and Federal Circuit releases decision in Oracle v Google.) Yet, rather than seeking en banc review or waiting for a district court decision on fair use, Google took the rather unusual step of appealing straight to the Supreme Court for review.

The Supreme Court only hears a small percentage of cases it is asked to review, and at the petition stage, the focus is not typically on the merits of the case, but rather whether there is some factor making it worth Supreme Court review. In its opening brief, Google argues primarily that the Supreme Court should review the Federal Circuit decision because “it presents a longstanding, widely-recognized split in the courts of appeals.” It claims these courts “are in disarray about the application of Section 102(b) to software.”

In fact, there is no disarray. Google cites few Circuit Court decisions from the past three decades to support its claim of a deep split, and in addition, the most recent case Google cites for this proposition is from 1997—18 years ago.

If there is any such disarray in the courts regarding copyright protection for software, the software industry hasn’t noticed. As the Software and Information Industry Association reports, “From 1997 to 2012, software industry production grew from $149 billion to $425 billion,” outpacing the rest of the economy.1Robert J. Shapiro, The U.S. Software Industry as an Engine for Economic Growth and Employment, Sonecon (Sept. 2014).

A closer look at the cases cited by Google reveals that this purported split is largely illusory.

For starters, the four cases Google cites in its discussion on the split all stand for the same general propositions. Each Circuit agrees that infringement can arise from copying of either literal or nonliteral elements of software.2Mitel, Inc. v. Iqtel, Inc., 124 F. 3d 1366, 1373 (10th Cir. 1997); Lotus Development Corp. v. Borland Intern., Inc., 49 F. 3d 807, 814 (1st Cir. 1995); Computer Associates Intern., Inc. v. Altai, Inc., 982 F. 2d 693, 702-03 (2nd Cir. 1992); Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 1237 (3d Cir. 1986). They agree that copyright only protects expression, not ideas,3Mitel at 1371; Altai at 703; Whelan at 1234. and that copyright protection may exclude expression if it is purely functional/utilitarian, is considered scènes à faire, or is the only way to express an idea (the merger doctrine).4Mitel at 1374-76; Altai at 707-10 (describing scenes a faire in the context of computer software as “elements dictated by external factors”); Whelan at 1235-37.

The Federal Circuit’s decision is consistent with these decisions.

Google’s circuit split argument relies heavily on the First Circuit’s Lotus decision. Google’s argument, however, is misplaced, as Lotus is easily distinguishable on its facts from the Oracle case. First, Google verbatim copied 7,000 lines of admittedly original and creative source code, while the defendant in Lotus did not copy any code at all. Second, both parties, the district court, and the Federal Circuit all agree that Oracle’s complex declaring code and its organization is creative, but the evidence in Lotus established that the commands at issue were not. Third, the Federal Circuit found that “while the court in Lotus found the commands at issue were ‘essential to operating’ the system, it is undisputed that—other than perhaps as to the three core packages—Google did not need to copy the structure, sequence, and organization of the Java API packages to write programs in the Java language.”

Google’s “deep circuit split” simply does not exist on closer inspection. If there is any split, it hasn’t resulted in any noticeable difference in outcomes, and certainly hasn’t thrown the software industry in disarray. A circuit split implies that courts are employing contradictory tests—coming to opposite conclusions when presented with similar sets of facts. That is not the case here. Certainly one can see some variation in outcomes when one looks at decisions involving different underlying facts—but that would seem an unavoidable result when looking at the metaphysical boundary between idea and expression.

What’s more, Google’s other main argument—that issues of interoperability should factor into a copyrightability analysis—is both incorrect and further reason for the Supreme Court to deny review. As the Federal Circuit correctly observed, “Google’s interoperability arguments are only relevant, if at all, to fair use.” A doctrine that privileges a reasonable amount of copying for socially beneficial uses that don’t supersede a copyright owner’s interest is perfectly suited for dealing with interoperability. However, Google has appealed before any fair use determination could be made, making this case a poor vehicle for Supreme Court review regardless of any split.

Perhaps even more importantly, the Federal Circuit made clear that, as a factual matter, Android is not interoperable with Java—programs written for Android will not run on Java, and vice-versa. Google documents and witnesses admitted this during the district court trial. Indeed, Google purposefully designed Android in such a way as to fragment Java and ensure that programs written in the Android flavor of Java cannot run on any other operating system, circumventing Java’s goal of “write once, run anywhere.”

References   [ + ]

1. Robert J. Shapiro, The U.S. Software Industry as an Engine for Economic Growth and Employment, Sonecon (Sept. 2014).
2. Mitel, Inc. v. Iqtel, Inc., 124 F. 3d 1366, 1373 (10th Cir. 1997); Lotus Development Corp. v. Borland Intern., Inc., 49 F. 3d 807, 814 (1st Cir. 1995); Computer Associates Intern., Inc. v. Altai, Inc., 982 F. 2d 693, 702-03 (2nd Cir. 1992); Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 1237 (3d Cir. 1986).
3. Mitel at 1371; Altai at 703; Whelan at 1234.
4. Mitel at 1374-76; Altai at 707-10 (describing scenes a faire in the context of computer software as “elements dictated by external factors”); Whelan at 1235-37.

“Sponsored” by my husband: Why it’s a problem that writers never talk about where their money comes from — Few authors would admit to creating solely for the money, but many would agree that getting money does enable further creativity. Here, writer Ann Bauer says, “I do have a huge advantage over the writer who is living paycheck to paycheck, or lonely and isolated, or dealing with a medical condition, or working a full-time job. How can I be so sure? Because I used to be poor, overworked and overwhelmed. And I produced zero books during that time.”

Anti-Piracy Group Sides With Miss AG Against Google — “The International Anti-Counterfeiting Coalition this week asked a federal judge to deny Google’s request for an injunction that would prohibit Hood from enforcing a subpoena for documents from the company. ‘There is no reason why the Mississippi Attorney General should not be able to investigate reasonable concerns that unlawful conduct is occurring in connection with Google’s (or any other online company’s) services, advertisements, and statements,’ the organization argues in a proposed friend-of-the-court brief filed on Thursday with U.S. District Court Judge Henry Wingate in Jackson.” A hearing is set for February 13th.

Zoe Keating’s Experience Shows Us Why YouTube’ Attitudes To Its Creators Must Change — Mark Mulligan makes a number of good points here regarding this week’s back and forth between musician Keating and YouTube. Among them: “Content ID is not an added value service YouTube provides to content owners, it is the obligation of a responsible partner designed to help content creators protect their intellectual property. YouTube implemented Content ID in response to rights owners, labels in particular, who were unhappy about their content being uploaded by users without their permission. YouTube’s willingness to use Content ID as a contractual lever betrays a blatant disregard for copyright.”

[LORD CHANCELLOR:] As to what has been said by Mr. Attorney General of the [Statute of Anne] being a monopoly, and therefore ought to receive a strict construction, I am quite of a different opinion, and that it ought to receive a liberal construction, for it is very far from being a monopoly, as it is intended to secure the property of books in the authors themselves, or the purchasers of the copy, as some recompense for their pains and labour in such works as may be of use to the learned world.

Gyles v. Wilcox, 2 Atk. 141 (1740)

Online infringement hurts: interviews with Australian creators — Australian professor Melissa de Zwart writes, “What became very clear from the interviews was that our Australian creative people are under financial pressure. This is affecting their capacity to create. Many have to supplement their creative work, such as songwriting, with other jobs, such as teaching. While many joked that even if they didn’t receive any money they would still go on creating, those who had been in the industry longest made it clear that significant personal investment was required to do so. The question we have to ask is, do we want to foster an Australian creative industry and provide a fair reward to those who work in the industry – or are we prepared to sacrifice our culture for cheap downloads?”

The Cathedral of Computation — A great piece on the tendency for the computational aspect of new innovations to overshadow the very ordinary processes that go into making those innovations; e.g., Google Maps relies just as much on people driving cars as it does on software. “This attitude blinds us in two ways. First, it allows us to chalk up any kind of computational social change as pre-determined and inevitable. It gives us an excuse not to intervene in the social shifts wrought by big corporations like Google or Facebook or their kindred, to see their outcomes as beyond our influence. Second, it makes us forget that particular computational systems are abstractions, caricatures of the world, one perspective among many. The first error turns computers into gods, the second treats their outputs as scripture.”

CJEU says exhaustion only applies to the tangible medium of a work (so no such thing as a digital exhaustion?) — Eleonora Rosati writes, “Of course this case was not about digital exhaustion. However, by suggesting that exhaustion under Article 4 of the InfoSoc Directive only applies to the tangible support of a work, the Court appeared to imply that there is no such thing as a general digital exhaustion under EU copyright. In other words: the decision in UsedSoft was possible only because of the lex specialis nature of the Software Directive.”

We’re being stigmatized by ‘big data’ scores we don’t even know about — Soon, if you want a good job, a good education, or access to good credit, you’ll need to conform your speech and behavior to what “bosses, banks, or insurers” deem appropriate.

One of the more unfortunate outcomes to emerge over the past decade from copyright skeptics is criticism of the Martin Luther King, Jr. estate, and their maintenance of his copyrighted books and speeches—his legal property—that they inherited from him.

In 2005, for example, digital activists Downhill Battle (many of whom would later form activist group Fight for the Future) protested copyright law by posting civil rights documentary “Eyes on the Prize” online without permission. The film was unavailable on television or home video at the time because the original licenses for some of the material did not extend to those uses (the documentary has since become available again).

More recently, during the SOPA debate in January 2012, Vice took the opportunity to tie that bill and the copyright status of King’s legacy together. It called King’s “I Have a Dream Speech” “the rhetorical equivalent of a national treasure or a national park,” decrying the fact that it is protected by copyright and asking “What would King have made of all this, and of SOPA?”

Since then, it seems no opportunity has been wasted to delegitimize the King estate for political points. A year later, Vice was back to report on the one year anniversary of the defeat of SOPA and another online protest by Fight for the Future. This time, the group sought to upload a video of King’s “I Have a Dream” speech to YouTube. The group wrote that “Had SOPA and PIPA passed last year… you could have gone to jail for sharing this video.” Vice wrote that this protest “Echo[ed] the civil disobedience of King.”

On the fiftieth anniversary of King’s “I Have a Dream” speech (August 2013), a new round of articles appeared, making the same complaints that, yes, you could license the speech, or buy a copy on DVD (the Atlantic noted that, at the time, Amazon currently had a copy for $13.41), but shouldn’t it be free?

Most recently, the issue has come to the forefront again with the release of the film Selma, a narrative of the 1965 march from Selma to Montgomery. Like any film adaptation—whether based on fictional or nonfictional source material—creative liberties must be taken. In the case of Selma, these included paraphrasing some of King’s speeches.

A Washington Post article on the film explains:

Working with an original script by Paul Webb, [director Ava] DuVernay carefully paraphrased King’s oratory, so that the words [actor David] Oyelowo speaks in the film have King’s cadence and meaning, even when they’re not literal.

The reason is simple: “We never even asked” for the rights to King’s speeches, said DuVernay during a recent visit to Washington. “Because we knew those rights are already gone, they’re with Spielberg, and secondly we found a way to do it where we didn’t have to ask for permission, because with those rights came a certain collaboration.”

The result is a fascinating portrait that both eerily captures King, but also feels just a tick off from impersonation. Oyelowo doesn’t physically resemble the civil rights leader, nor does his voice possess quite the ringing timbre most people associate with one of the greatest orators of the 20th century. But the filmmakers’ decision to eschew mimicry liberates “Selma” from being mere hagiographic waxwork, or a series of speeches and set pieces, and allows it to be an authentic drama with fully realized, grounded characters.

But despite the fact that the above shows the filmmakers never sought rights to the speeches, didn’t want them, and made a film that didn’t suffer as a result, copyright critics took the opportunity to complain that copyright law “forced” the filmmakers to paraphrase the speeches. GigaOm reporter Jeff John Roberts opined that this is “because the King family aggressively enforces copyright at all turns, unleashing lawyers in the direction of anyone who seeks to use the civil rights icon’s speeches or images without permission.” Roberts argued that “the root issue here is entirely about money, and the King estate wants as much as it can get” and concludes that the deeper problem is that “copyright protection lasts for far, far too long.”

In honor of Martin Luther King, Jr. Day, I want to point out several reasons why these efforts to begrudge the legacy King left his family are misguided. While I’ve yet to find any King remarks directly about copyright—I’m certainly not claiming to speak for him or his family—I think two things are clear.

King and Copyright

First, King attached importance to his literary property by actively administering and enforcing his copyrights during his life.

In a November 20, 1964 letter, King’s literary agent, the notable Joan Daves, wrote King regarding a number of copyright matters, including preparations to ensure the copyright in his Nobel Prize lecture was secured. Daves concluded, “I hope that neither you or your office will find cumbersome my insistence that your writings and your speeches be protected properly by copyright. I am sure there will come a time when we will all be very glad of having organized these matters and of your having control over the further use of your works.”

King apparently agreed, as other correspondence shows that Daves actively licensed King’s work around the world, administered royalties, and fielded permission requests for reprints and translations. This correspondence shows a careful balancing of King’s various interests. For example, one letter denies a request to reprint King’s letter from the Birmingham Jail in a French book because, as Daves explains, “The letter in question will form a very important part in a forthcoming book by Dr. King and we feel that we cannot distract from its impact by allowing it to be published elsewhere before a French edition appears.” Another one grants permission to translate and publish a Marahati edition of Why We Can’t Wait “without a fee” after a request from Dr. Moray explaining how social problems in India were similar to the American problems King addressed.

And King was not shy in asserting his rights when they had been infringed. The copyright in King’s “I Have a Dream” speech, delivered August 28, 1963 at the Lincoln Memorial, was registered little over a month later on September 30. And only a few days later (October 4th), King filed a lawsuit against 20th Century Fox Record Corporation and Mister Maestro, Inc. for selling records of the speech without King’s consent. 1King v. Mister Maestro, Inc., 224 F. Supp. 101 (SDNY 1963). The District Court granted a preliminary injunction in December after concluding, “There are thus no principles which prevent relief to plaintiff from what seems the unfair and unjust use by defendants of his speech and his voice.” 2Id. at 108.

Publication of King’s work is what helped disseminate his ideas and benefit the public, but the ability to control and benefit from that publication is what allowed him to continue his work until he was brutally killed in April 1968 (and what allows his family to continue that work today).

From Civil Rights to International Human Rights

Second, the ability of someone to benefit from their labor, as King did through copyright, is consistent with his views on economic justice and individual dignity.

On the Fourth of July, 1965, King delivered an address to the Ebenezer Baptist Church called “The American Dream.” He begins by noting the spirit “of the founding fathers of our nation,” who created a system of government distinct from “any totalitarian system in the world” by saying “that each of us has certain basic rights that are neither derived from or conferred by the state.” The Declaration of Independence, said King, is a “profound, eloquent, and unequivocal” expression of “the dignity and the worth of human personality.” He adds, “The American dream reminds us, and we should think about it anew on this Independence Day, that every man is an heir of the legacy of dignity and worth.”

However, continued King, “We are challenged more than ever before to respect the dignity and the worth of all human personality.” This universal recognition of the equal dignity of all human personality is what, said King, made segregation and racism morally wrong. But, he would go on to say, it also meant that economic inequality and poverty must be addressed. “This is why we must join the war against poverty,” said King, “and believe in the dignity of all work.”

The “spirit of the founding fathers” that King speaks of was reflected in copyright discussions during the founding period. When the Continental Congress recommended in 1783 that the States pass laws securing copyright of authors, it did so after a committee consisting of James Madison, Hugh Williamson, and Ralph Izard were “persuaded that nothing is more properly a man’s own than the fruit of his study.” 324 Journals of the Continental Congress 326. And some states, such as Massachusetts, explicitly noted in their subsequent copyright acts that the “legal security of the fruits of [a person’s] study and industry … is one of the natural rights of all men.” 4Massachusetts Copyright Statute, Massachusetts (1783), Primary Sources on Copyright (1450-1900), eds L. Bently & M. Kretschmer, jQuery("#footnote_plugin_tooltip_5691_4").tooltip({ tip: "#footnote_plugin_tooltip_text_5691_4", tipClass: "footnote_tooltip", effect: "fade", fadeOutSpeed: 100, predelay: 400, position: "top right", relative: true, offset: [10, 10] }); ']);" >www.copyrighthistory.org.))

Just as the experiences in the American colonies under British rule led to the Declaration of Independence, the experiences of the free world during the second World War led to an international declaration of rights.

Following World War II, the United Nations was formed to promote international cooperation, and in 1948, it drafted the Universal Declaration of Human Rights (UDHR), the first global expression of human rights. Among its articles is one that states, “Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.”

This provision generated some debate during the drafting process, in part because it encompassed moral rights in addition to economic rights. 5Peter K. Yu, Reconceptualizing Intellectual Property Interests in a Human Rights Framework, 40 University of California, Davis 1039, 1054 (2007). During one of the final rounds of drafting, French, Mexican, and Cuban delegates reintroduced the above language for inclusion in the declaration. 6Meeting records also note, “While it accepted the principle which they expressed, the United States delegation thought that they would be out of place in the declaration, more especially since they dealt with a specific aspect of the rights of property already covered by article 15.” Meeting records summarize the Mexican delegate as arguing:

The Committee had already recognized the rights of the wage earner, the family, the mother and the child; if it did not wish there to be a serious omission in the text it was drawing up it must now proclaim the rights of the individual as an intellectual worker, scientist, or writer; in other words, the rights of aIl those who contributed to the progress and well-being of humanity.

***

If the United Nations decided to include such a provision in the Declaration of Human Rights, it would be proclaiming to the world, with all the weight of its moral authority, its consciousness of the necessity of protecting all forms of work, manual as well as intellectual, and of safeguarding intellectual production on an equal basis with material property.

This language was eventually adopted by the Committee and included in the Declaration.

I note this not only because of the parallels in principles between the supporters of intellectual worker protections and King, but because King actively worked and inspired those who worked on seeing such principles recognized at the international level.

Calling King an “international human rights leader,” Henry J. Richardson has written that King “fused the discourses of civil rights and human rights” and “borrowed directly from international human rights law doctrine” in his speeches. 7Henry J. Richardson, Dr. Martin Luther King, Jr. as an International Human Rights Leader, 52 Villanova Law Review, 471 (2007). And toward the end of his too-short life, “King had expanded his human rights leadership by moving, in concrete ways, to emphasize economic rights as human rights.”

Roger Alford at Opinio Juris has written that King’s work directly inspired those who struggled to achieve the same goals of racial and political equality at the international level. He notes that by 1964, membership in the UN had grown to 115 members, with 75% coming from the developing world. These delegates “were greatly influenced by Martin Luther King’s struggle against racial discrimination within the United States,” and worked to implement the UDHR into treaties. Alford writes, “The immediate result was the 1965 International Convention on the Elimination of All Forms of Racial Discrimination (CERD)” and “The success of CERD broke the stalemate that had prevented completion of the work on the other major human rights covenants,” including the International Covenant on Economic and Social Rights (ICESR).

Article 15 of the ICESR implements the UDHR’s provision on intellectual property by requiring State Parties to recognize the right of everyone “To benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.”

On this day, we honor and celebrate the tremendous legacy that Dr. Martin Luther King, Jr. left. King’s legacy hopefully inspires us all. But his work is not like “a national park” in the sense that it was bought and maintained by the public; indeed, it came about through great personal sacrifice, and King paid the ultimate price for his work when he was assassinated. It seems a bit presumptuous to say the public has a greater claim to this work than King’s own family, and it seems odd to say that the more lasting and important one’s work is, the less legal protection it should receive. More importantly, it seems better to focus on the content of the message King left us rather than the cost of his DVD.

References   [ + ]

1. King v. Mister Maestro, Inc., 224 F. Supp. 101 (SDNY 1963).
2. Id. at 108.
3. 24 Journals of the Continental Congress 326.
4. Massachusetts Copyright Statute, Massachusetts (1783), Primary Sources on Copyright (1450-1900), eds L. Bently & M. Kretschmer, 5. Peter K. Yu, Reconceptualizing Intellectual Property Interests in a Human Rights Framework, 40 University of California, Davis 1039, 1054 (2007).
6. Meeting records also note, “While it accepted the principle which they expressed, the United States delegation thought that they would be out of place in the declaration, more especially since they dealt with a specific aspect of the rights of property already covered by article 15.”
7. Henry J. Richardson, Dr. Martin Luther King, Jr. as an International Human Rights Leader, 52 Villanova Law Review, 471 (2007).