ACTA: Thought for FUD, wrap up

By , September 20, 2010.

Four weeks ago, I began a walk through the proposed Anti-Counterfeiting Trade Agreement, a plurilateral trade agreement currently in negotiations that has sparked a great deal of Fear, Uncertainty, and Doubt (FUD) online. Using the official draft text of the agreement released last April, I laid out each provision of the ACTA and compared it to provisions in US law that corresponded. You can see the previous entries in this series here:

The goal of this exercise was two-fold. First, I have not seen a similar examination of each provision of the ACTA. I have seen concerns that it will result in changes to existing US law. I thought a side-by-side comparison of provisions from both would be helpful in this regard.

More importantly, many of the more wild concerns seem to stem from those who simply did not understand the scope of the agreement nor understood the scope of existing copyright law. If you don’t know what is in the ACTA, it’s easy to buy into the FUD surrounding it. Even if you’ve read through the proposed provisions (either in the officially released draft text that I worked off of or one of the many leaked texts), it’s still easy to accept the scary stories being told if you can’t put it into the context of existing law. In other words, it’s easier to buy into apocalyptic tales that the ACTA will implement radical changes to the law if you aren’t aware that its provisions mirror already existing law.

What general observations can we make after looking at this side-by-side comparison? First, as far as copyright law goes, nothing in the ACTA jumps out that would require changes to US law. Second, the language of the treaty comports with Ambassador Ron Kirk’s responses in his letter to Senator Ron Wyden about concerns with the flexibility of the treaty and its effect on fundamental rights and civil liberties. Few, if any, of the provisions “require” a Party to enforce copyrights in a set way, while recognition of due process and privacy are reiterated in many provisions.

Limitations

This comparison of proposed ACTA provisions with corresponding US copyright law is only that. It does not show what, if any, differences exist between the ACTA and existing patent or trademark law, which will likely be covered under the agreement. It does not show how the laws of any country besides the US compare to the ACTA provisions. It also does not make any judgment about existing US law.

I also at no point implied that “ACTA will change US law” is the only criticism aimed at the proposed agreement. Certainly, as with any proposal of any sort – whether a trade agreement, legislation, policy directive, etc. – criticisms will exist. Indeed, one criticism is that it is too much like US law; the ACTA is an attempt by the US to “export” its framework of copyright law to other nations. Critics also label those negotiating the treaty as engaged in “policy laundering.” There are concerns that the treaty will “lock in” certain aspects of copyright law that should remain flexible to respond to rapidly changing technologies. You can find plenty of sites exploring these criticisms, so I’ll refrain from saying anything more about them, but I did want to take a quick look at one of the most common criticisms about the ACTA: the lack of transparency in the negotiating process.

Transparency

A bit about “transparency.” One of the biggest complaints about the agreement have concerned a supposed lack of transparency over the negotiating process. The proposed treaty is nearly always characterized as “secret.” It’s difficult seeing how this charge of “secrecy” holds up; the United States Trade Representative has an entire page devoted to the ACTA, with various documents available, including the draft text of the treaty that I have been working off of during this series of articles. As several commentators have pointed out, the USTR has made other information available to those outside the negotiating process – subject to a rather standard nondisclosure agreement – including Public Knowledge, Google, and the Center for Democracy and Technology.

Placing aside the hyperbolic criticism of the treaty’s “secrecy,” the question remains whether the negotiating process is sufficiently “transparent.” We accept that transparency plays an important role in democratic institutions. Noted philosopher and “patriarch of utilitarianism” Jeremy Bentham wrote, “Publicity should help constrain the members of the assembly to perform their duty; secure the confidence of the people; enable the assembly and the governors to know the wishes of the governed; enable the electors to act from knowledge; and generate the amusement that by itself increases the happiness of the people.” 1“Of Publicity,” Public Culture (1791/1994). We want to know the language of bills introduced in Congress, how our representatives have voted in the past, how our tax dollars are being spent; knowing these things helps us on election day and keeps government officials in line.

Treaty negotiations, however, are a different kind of creature then the types of political transactions Bentham is referring to and what we generally want information about. Indeed, it has long been customary for trade negotiators to refrain from disclosing every proposal or early draft to the public, and the ACTA negotiators have simply acted in the same fashion. When you’re negotiating complex issues among a diverse group of parties, confidentiality allows a more free exchange of ideas and facilitates negotiation and compromise. The Founding Fathers recognized these benefits when they chose to draft the Constitution in private.

The “wrong” kind of transparency during treaty negotiations can be more detrimental than beneficial. Insisting on keeping the doors open at every stage of the process accomplishes little more than crippling the process. Those who are opposed to the entire process insist on this kind of transparency as a tactic – they want the negotiation process to fail. As stated above, the transparency of the ACTA negotiations is on par with other agreements; the draft text and other documents are publicly available. I doubt any level of transparency will satisfy the “secret treaty” critics, and I doubt any will say when negotiations are finished, “Well, I agree with the goals and provisions of the treaty, I just wish you would have kept us more in the loop.”

References

References
↑1 “Of Publicity,” Public Culture (1791/1994).

Copyright and the Constitution

By , September 17, 2010.

Happy Constitution Day!

Today marks the very date—223 years ago—the US Constitution was ratified. Since 2004, this date has officially been known as Constitution Day, and has been set aside to encourage education about the framework of law that serves as the foundation for US government.1The more cynical among us would say instead that any educational institution receiving federal funds is required to provide educational programming on the Constitution on this day.

US copyright (and patent) law stems from the Constitution. Article 1, Section 8 reads, in part:

The Congress shall have power …

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

To celebrate the occasion, let’s take a look at how this clause made it into the Constitution on September 17, 1787.

Writing the Constitution

We’ll begin with a look at the drafting of the Constitution as a whole. We probably recall from high school the general story of what lead to the drafting of the Constitution.2I apologize, as my retelling of this general story is also primarily based on what I recall from high school (and Wikipedia). The United States of America, having successfully secured independence from England, were operating under the Articles of Confederation. Some founders—including George Washington, Alexander Hamilton, and James Madison – felt the centralized government established by the Articles was inadequate to address the many challenges facing the new nation. In September 1786, delegates from five of the states met to discuss ways to remedy the defects in the federal government, resulting in the recommendation for a broader convention, to be held in Philadelphia the following May. But while the Philadelphia Convention began under the premise of revising the Articles, its purpose quickly became the creation of an entirely new form of government for the thirteen states.

“Quickly” is the operative word for a lot of the work done at the Convention. Looking at the timeline of the Constitution’s drafting, I’m astonished at how fast a group with many diverse interests were able to achieve a result with such a broad purpose. The purpose was not simply to address the mundane concerns of interstate squabbles and foreign trade, but to come as close as possible to an ideal form of republican government. The delegates looked at Greek, Roman, Renaissance, and Enlightenment philosophers as well as the experiences of English government and the thirteen state governments to craft a new framework. The result was, according to historian Forrest McDonald, “a new form of government, unprecedented under the sun. Every previous national authority either had been centralized or else had been a confederation of sovereign states. The new American system was neither one nor the other; it was a mixture of both.” It is also a system that, for all its criticisms, is still chugging away 223 years later.

The Convention kicked off May 14, 1787.3Though due to the difficulties of travelling at the time, a quorom wasn’t present until May 25. On June 23, a Committee on Detail was established to draft a document that incorporated the various plans and proposals from the Convention. The Committee presented the first draft of the Constitution to the Convention on August 6. On September 8, a Committee on Style was created to incorporate changes brought up by delegates after discussing the first draft and revise the text of the Constitution. This Committee presented the final draft to the Convention on September 12, who ratified and signed it on September 17. And that’s how you make an America.

The Copyright Clause

Now that we have a general idea of how the Constitution was drafted for context, let’s see how the copyright clause became a part of the Constitution. The historical record presents some challenges to this task. The Convention was held in secret, and most of our knowledge of its proceedings come from the official Convention journal of secretary William Jackson as well as a private journal kept by Madison. From those sources, we see that the first draft of the Constitution did not include the copyright clause. A number of proposals for additional Congressional powers were made following the first draft. These proposals and other pending issues were referred to a Committee of Eleven, which revised them and submitted final versions to the delegates for approval. Among the recommendations of the Committee was granting to Congress copyright power, a recommendation that was unanimously agreed to by the delegates without debate. The recommendation matched exactly the language in the final draft of the Constitution.

In the discussion above and below, I’m drawing largely on the tremendous work done by law professor Dotan Oliar. Oliar has carefully examined historical records to piece together the story of the Constitution’s copyright clause. I highly recommend his publications Making Sense of the Intellectual Property Clause: Promotion of Progress as a Limitation on Congress’s Intellectual Property Power and The (Constitutional) Convention on IP: A New Reading for all the details of what I’m summarizing here.

Oliar traces the Committee of Eleven’s proposed copyright clause back to eight separate proposals for additional Congressional powers made by both Madison and South Carolina governor Charles Pinckney on August 18.4Making Sense of the Intellectual Property Clause: Promotion of Progress as a Limitation on Congress’s Intellectual Property Power, pp 1805-10. They proposed that Congress have the power –

  • to secure to inventors of useful machines and implements the benefits thereof for a limited time
  • to grant patents for useful inventions
  • to secure to literary authors their copyrights for a limited time
  • to secure to authors exclusive rights for a certain time
  • to establish a university
  • to establish seminaries for the promotion of literature and the arts and sciences
  • to encourage by proper premiums and provisions the advancement of useful knowledge and discoveries
  • to establish public institutions, rewards and immunities for the promotion of agriculture, commerce, trades, and manufactures

At first glance, some of these proposals seem to have little to do with the power that was eventually adopted. However, Oliar convincingly argues that these proposals best explain the clause’s “ends-mean” structure. The “ends” of the clause is the promotion of “the progress of the useful arts and sciences.” The “means” by which this end is achieved is the “securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” None of the proposals above combine both the specific end and mean of the final clause. Instead, they form a pool of various ends and means that were considered by the Committee, which rejected some means—universities and premiums, for example – in favor of exclusive rights in writings and discoveries and combined the ends. Because the historical record is largely silent on how the Committee settled on its final language, we cannot know for sure what role these eight proposals played, but Oliar presents a reasonable hypothesis.

Motivation for Including the Clause

Similar to the lack of record regarding the textual origins of the clause, the historical record regarding the motivation for including the clause is scant. Perhaps it was included to reflect the idea that, as Convention delegate James Wilson suggested, the primary objective of government is the “cultivation and improvement of the human mind.” More likely, it reflected what was by then a well-established practice. The laws and traditions of the young United States stemmed primarily from England. English government was in the business of granting copyright since the Statute of Anne in 1710, and many of the individual colonies continued this practice.

The only mention of the clause in the Federalist Papers—a series of articles written by Hamilton, Madison, and John Jay advocating the ratification of the Constitution—comes in Federalist No. 43. There, Madison writes:

The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress.

This suggests that there was little debate over the granting of copyright itself. More important to Madison was the fact that the federal government alone should hold this power, rather than the individual states.

Whatever the origins, this clause in Article 1, Section 8, of the Constitution provides the foundation for all US copyright law today. Debate over its meaning and intent, its scope and its structure, continues today, 223 years after it was written.

References

References
↑1 The more cynical among us would say instead that any educational institution receiving federal funds is required to provide educational programming on the Constitution on this day.
↑2 I apologize, as my retelling of this general story is also primarily based on what I recall from high school (and Wikipedia).
↑3 Though due to the difficulties of travelling at the time, a quorom wasn’t present until May 25.
↑4 Making Sense of the Intellectual Property Clause: Promotion of Progress as a Limitation on Congress’s Intellectual Property Power, pp 1805-10.

Marybeth Peters to Retire as Register of Copyrights

By , September 15, 2010.

On September 13, 2010, the Library of Congress released the following:

Register of Copyrights Marybeth Peters has announced her intention to retire effective December 31, 2010. Ms. Peters has served as Register of Copyrights since August 7, 1994, a tenure longer than any other Register with the exception of Thorvald Solberg, the first Register. Her exemplary service to the nation began in the Library of Congress in October 1965, and she began working in the Copyright Office in 1966. During her 45-year career, she has held positions at all levels in the Office including acting general counsel, policy planning advisor, chief of the Examining Division, chief of the Information and Reference Division, attorney-advisor, and music examiner. She also served as a consultant on copyright law to the World Intellectual Property Organization in Geneva (1989-1990). For further information, go to the Copyright Office website. The Library of Congress has posted a vacancy announcement for the position of Register of Copyrights. Interested parties are invited to apply. For further information, go to the Library of Congress website.

I would like to extend my thanks to Marybeth Peters for her exemplary service as this nation’s 11th Register of Copyrights. Marybeth Peters presided over the US Copyright Office during a period of significant changes not only in technology and communications, but in the role of the Office itself.

When Peters assumed her post, Friends had yet to premiere. More importantly, the internet was still on the outskirts of public awareness. In a 1993 article, the New York Times covered the introduction of the Mosaic web browser – “the first ‘killer app’ of network computing”, credited elsewhere as popularizing the world wide web. Only 994 .com domains were registered at the beginning of 1994, growing to 3,712 by the end of the year. 1http://www.vb.com/domain-timeline.htm Since then, we’ve seen the introduction of internet services like Google, YouTube, Napster, iTunes, and Hulu. It’s fascinating to see how much the technological landscape has changed during Peters’ time as Register. Consider this: in the last round of DMCA exemption proceedings that went into effect this past July, her Office recommended an exemption for circumventing protection on DVDs for certain educational and noncommercial uses. When she took office, DVDs had not yet been invented. 2According to Wikipedia, the specification for DVDs was finalized December 1995 and introduced to the market in November 1996.

Peters saw – and played varying roles shaping – changes in United States copyright law to address these rapid technological advances: the Digital Performance Right in Sound Recordings Act of 1995, the Digital Millennium Copyright Act of 1998 (DMCA), the Copyright Term Extension Act of 1998, and the PRO-IP Act (2008), to give a few notable examples. Internationally, she was there to see the inception of the World Trade Organization and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), considered “the most important multilateral instrument for the globalization of intellectual property laws.” It should not be surprising, then, that the nature of the Copyright Office itself also changed significantly while Peters was at the helm.

The US Copyright Office

Despite the increasingly public discourse on copyright law, the role of the executive agency 3Despite some lingering doubts, the Copyright Office is indeed an executive agency. I have the proof, let me show you it. that is the Copyright Office is still somewhat mysterious. The United States Copyright Office was formed in 1897 as a department within the Library of Congress. Historically, the Office’s duties have been limited – accepting and recording copyright registrations. It should be noted that the Office’s duty here is ministerial. Its granting or denial of registrations is not determinative of what precisely is protected by copyright, but rather whether the work fulfills the minimum requirements for protection – is it proper subject matter as defined by the Copyright Act, is the form properly filled out, did the check accompanying the application clear, etc.

The Copyright Office does play an important advisory role to Congress, other executive departments, international bodies, and foreign governments regarding copyright law and policy. It played a pivotal part in the efforts which lead to the 1909 and 1976 Copyright Acts. Congress often relies on the Office to prepare studies on specific areas involving copyright or contribute testimony at Congressional hearings.

But until recently, the Copyright Office had almost no role in directly administering substantive copyright law and policy. 4For a detailed look at the institutional evolution of copyright law administration, check out Joseph P. Liu, Regulatory Copyright, 83 North Carolina Law Review 87 (2004). This changed with the passage of the DMCA, which gave the Office the authority to conduct triennial rulemaking procedures to determine exceptions to the anti-circumvention provisions of 17 USC § 1201. For the first time in its history, the Office had substantive rule-making authority. As the issues presented in copyright law become more complex, it’s not hard to imagine that Congress will rely on the Copyright Office to administer that law more.

What’s Next

Whoever the next Register of Copyrights will be, he or she is guaranteed to preside over an office with an increasingly expanded role. Peters’ term coincided with the federal government placing increased priority on enforcing intellectual property rights. Undoubtedly, this trend will continue during the next Register’s term, and I think it’s fair to say the Copyright Office itself will continue to see a growing role in administering copyright law and policy. 5Another plug for my paper, Copyright Reform Step Zero, where I argue that Congress should, in fact, delegate the bulk of administering copyright law to the Copyright Office. The scope of international copyright law will continue to expand; the final draft of the Anti-counterfeiting Trade Agreement is expected to be completed by the end of this year, with the acceptance and implementation by the US likely to be a major issue during the first couple years of the new Register.

I certainly have no inside information about likely candidates for the next Register of Copyrights, and I have yet to come across any predictions. Still, I’d like to hazard some guesses based on historical practice. Most previous Registers have come from within the Copyright Office itself. The very first Register, Thorvald Solberg, had played an active role in the copyright functions of the Library of Congress prior to being tapped by Librarian John Russell Young to head up the newly created department. Since then, only four of the fourteen Registers and Acting Registers – Clement Lincoln Bouvé, Sam Bass Warner, David L. Ladd, and Ralph Oman - had not worked within the Copyright Office before being appointed (though it should be noted that even those four have had some experience in the federal government).

If we look at the chart showing the Organization of the US Copyright Office, we can see several candidates for the position if selection follows the historical pattern: David O. Carson, Maria Pallante, and Nanette Petruzelli (who spearheaded the change from separate registration forms for different subject matter to a consolidated form) are all “next in line” in the hierarchy. All seem fine candidates, all have a combination of public and private experience and actively involved in copyright policy outside their work at the Copyright Office. I expect we’ll hear more details about the next United States Register of Copyrights very shortly.

References

References
↑1 http://www.vb.com/domain-timeline.htm
↑2 According to Wikipedia, the specification for DVDs was finalized December 1995 and introduced to the market in November 1996.
↑3 Despite some lingering doubts, the Copyright Office is indeed an executive agency. I have the proof, let me show you it.
↑4 For a detailed look at the institutional evolution of copyright law administration, check out Joseph P. Liu, Regulatory Copyright, 83 North Carolina Law Review 87 (2004).
↑5 Another plug for my paper, Copyright Reform Step Zero, where I argue that Congress should, in fact, delegate the bulk of administering copyright law to the Copyright Office.

Righthaven, Wronghaven

By , September 13, 2010.

H/T to Eric E. Johnson at Blog Law Blog for providing in-depth coverage of the Righthaven lawsuits and Jonathan Bailey at PlagiarismToday for his thoughts on this subject.

Righthaven continues to file new lawsuits, seemingly unabated, adding seven new complaints to the dockets last week. That brings the total number of lawsuits up to 124 as of the writing of this article, according to site Righthavenlawsuits.com.

For those not familiar with Righthaven, it’s a private company engaged by the Las Vegas Review-Journal to protect its news content online. Righthaven’s strategy involves searching online for sites where Review-Journal articles have been republished, buying the copyright to those articles, and then filing an infringement suit against the site. This campaign against infringement began earlier this year, coinciding with an editorial by Review-Journal publisher Sherman Frederick, who announced point-blank (about copyright infringement): “We’re not taking it anymore.”

Those sued so far include everyone from a “cat blogger” and a real estate agent, to both right-wing and left-wing forums, the Nevada Democratic Party, NORML, and most recently, and perhaps most bizarrely, Nevada Senate candidate Sharron Angle – a candidate the newspaper is expected to endorse. 1A former managing editor of the Review-Journal imagines the endorsement would say something like, “We think she’s a thief, but we like her a lot.”

Competitor Las Vegas Sun has committed to reporting developments in the Righthaven lawsuit story; their site provides numerous articles on the unfolding events. In addition, you can find a large amount of court filings from the various Righthaven suits at Scribd.

Opposition to the lawsuits is growing, not only from interest groups and the general public, but also from the defendants themselves. Some are responding to the complaints with allegations that Righthaven is misusing the legal system. In fact, I don’t even think it’s particularly noteworthy to register your opposition to Righthaven’s campaign, as public opinion appears almost universally critical. What is noteworthy is pointing out the conflation between criticism of Righthaven’s methods and criticism of copyright law in general.

My take on these lawsuits echoes what many others have noted. The complaints themselves have merit. While there are some issues which can be addressed, particularly fair use, the case for copyright infringement is pretty cut and dry.

The problem is the Review-Journal’s approach it has taken. It is using litigation as a way to make money, 2There have been some reports of the amount Righthaven has already collected from settlements, but it’s difficult to see how suing one’s sources – and advertising agencies – is a good business model. and the lawsuits border on vexatious. The way it skips over resolving cases of infringement privately and heads straight to filing a lawsuit undermines the strong public policy for using the legal system as a last resort.

I cannot stress enough that criticism of Righthaven is about its litigation methods, not about the validity of copyright laws and enforcing those laws. If you replace “copyright infringement” with some other cause of action, the criticisms mentioned above would remain the same. Unfortunately, opponents of effective copyright enforcement are more than happy to use the Righthaven lawsuits as yet another example of content industries run amok. This only adds to the challenges of all other content owners who are trying to address dealing with infringement in a digital world.

Safe havens and Fair Use

Let’s take a quick look at the copyright issues raised by these lawsuits. As I said, in many cases they are cut and dry. The Review Journal, as the copyright owner, has the exclusive right to reproduce and distribute its content (and the right to assign its copyright to parties like Righthaven, though the way it is exercising this right raises other questions that I’ll address later). Anyone who reproduces its content without authorization is infringing. As a strict liability tort, it doesn’t matter what the infringer’s intent was in reproducing the content, nor whether the infringer profited from the infringement. Of course, the alleged infringer must have taken more than an insubstantial portion of the original work to be liable. This seems to be the case in most of the Righthaven lawsuits. Sharron Angle, for example, reproduced two individual articles in their entirety on her site.

One defense often mentioned in connection with these lawsuits is the safe harbor provided by the Digital Millennium Copyright Act (DMCA). The law protects online service providers from liability for infringement, providing the famed notice-and-takedown procedure where a content owner can request infringing material removed without resorting to the courts as Righthaven has done. I think the applicability of the DMCA is limited in these cases, however. The DMCA safe harbors only protect service providers from secondary liability – liability for users posting content to forums or BBS’s. It doesn’t apply to direct infringement, and a number of the lawsuits were filed against owners of personal sites and blogs who posted the content themselves. Qualifying for the safe harbors also requires following certain procedures – registering a DMCA agent with the US Copyright Office and posting contact information with the site’s DMCA policies on the site 3Check out this site for pointing out this important information for UGC site operators.  – and it appears that Righthaven has been pretty careful about targeting only those sites that don’t follow these provisions.

The defense that is more likely to come into play with these lawsuits is fair use. The doctrine of fair use allows for certain uses of copyrighted material without the permission of the copyright owner. Courts typically 4Close to 60% of the time, as noted by Baron Beebe in his extraordinary article, An Empirical Study of US Copyright Fair Use Opinions, 1978-2005, 156 Univ of Penn Law Review 549 (2008).  use the four factors from 17 USC § 107 to determine whether a particular use is fair: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educa-tional purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in rela-tion 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. Fair use is highly fact-specific, and it’s up to each individual defendant to raise the defense, so it’s difficult to make any generalizations about what role it will play in these lawsuits. You can see, though, that the noncommercial nature of many of the uses in these cases may favor a finding of fair use, though this may be negated where an entire article was reproduced and where no additional commentary or criticism was added to the republication.

Despite some of the limitations on a fair use defense under the traditional four factor test, Eric Johnson makes a strong argument that fair use should protect the right to republish news articles that a person is the subject of. He writes:

The free-speech, communicative, and democratic values that protect the right of newspapers to report and publish should also protect the right of persons who are subject to the scrutiny of the press to republish that material.

I would add that the practice of reprinting articles about oneself or one’s organization is a fairly well-established practice. Many routinely reprint news articles in press packets and internal newsletters. Many of the fair use opinions dealing with reproducing news content involve commercial press clipping services, where the purely commercial nature of these enterprises typically defeats a finding of fair use. When you consider that the reprinting here is done by the subjects of the articles themselves rather than commercial enterprises, and combine it with the fact that the Review-Journal already provides a multitude of options for sharing content 5The site provides numerous RSS feeds, as well as providing options to email, print, or share on 19 different social networking sites each article. it is conceivable that some defendants may succeed with a fair use defense.

It’s Not Copyright at Issue

But however interesting the copyright issues raised in these lawsuits are, they do not explain the almost instinctual aversion most have to Righthaven’s behavior. In theory, it seems odd to criticize Righthaven; if, for the sake of argument, the claims are meritorious, why would anyone speak out against their right to pursue those claims in court?

In a broad sense, the reaction to Righthaven can be compared to the reaction when an overzealous municipality shuts down a kid’s lemonade stand because the tiny tots failed to get the proper vending licenses, as an Oregon city did last month, or a California city did last year. It sparks our conscience whenever anyone, no matter how right, goes nuclear against a relatively minor infraction.

But the problems with Righthaven’s approach go deeper than just shocking sensibilities. They approach the territory of upending ancient notions of how a legal system should work. One hint at how old these notions are comes from some of the answers to Righthaven complaints. We see concepts like “barratry” and “champerty” coming back in style.

In addition to these defenses, the method of Righthaven’s pursuit of lawsuits has been attacked, with some calling them “ambush” style lawsuits. Most lawsuits begin with the aggrieved party contacting a would-be defendant, typically through a cease and desist letter. It is only after the parties fail to come to a satisfactory conclusion that the dispute is taken to the courts. Righthaven skips over this step entirely, going straight to filing suit. One group reported that its first notice that it was in trouble came from “a Google alert indicating a court document had been filed, followed by an e-mail of inquiry from a reporter for the Las Vegas Sun.”

Whether these criticisms of Righthaven’s legal strategy rise to legally recognized defenses remains to be seen. 6The doctrine of champerty is often described as ‘vestigial’, see Paul Bond, Making Champerty Work: An Invitation to State Action, 150 Univ of Penn Law Review 1297 (2002). But regardless of whether Righthaven can do what it’s doing, most disagree with Righthaven that it should do what it’s doing.

Going to court is a last resort. This isn’t just good advice, it’s a cornerstone of western law – an assertion that finds support not only in secular thought, but also Judaism and Christianity. 7See Max Radin, Maintenance by Champerty, 24 Cali Law Review 48 (1935). Litigation is costly and time-consuming, and most of the time, that’s ok. The costs encourage individuals to settle disputes themselves without getting the government involved. Righthaven flips the default on this view by pursuing litigation as a business and skipping the whole “let’s work this out” step.

We certainly don’t want to close the courts off to those with meritorious claims. But most of us believe that there should be some, well, justice in the justice system. Rules against using the legal system as a sword to vexate others or profit from lawsuits have been in place for a long, long time to prevent extortion and ensure that the legal system operates fairly for all of us. 8For more information on the history of champerty and maintenance, as well as discussion on the various public policies the doctrines protect, check out Ari Dobner, Litigation for Sale, 144 Univ of Penn 1529 (1996), and Radin.

The Danger to Content Owners

The gravest danger to content owners and creators not caught in Righthaven’s cross-hairs is that these lawsuits will make their efforts to protect content more difficult. Those opposed to all attempts to maintain the incentive copyright provides are quick to lump Righthaven’s litigation-as-a-business-model in with all efforts by those who recognize that unabated piracy damages the incentive to disseminate new works. It’s doubtful anyone can say anything to change their minds, but it bears repeating that criticism of these lawsuits doesn’t implicate copyright law as much as Righthaven’s strategy.

Is there any lesson content owners can learn from Righthaven? The RIAA litigation demonstrated that lawsuits are cumbersome and costly as a shield against piracy. The Righthaven litigation demonstrates the dangers of using lawsuits as a sword against piracy. In my opinion, this is enough evidence to shift the focus away from the courts as a tool for managing piracy. Content owners and consumers alike would benefit from an alternative approach, whether it involves placing more responsibility on ISPs and service providers for policing infringement, or whether it involves revisiting some of the numerous proposals for addressing online piracy that have been advanced in the past.

References

References
↑1 A former managing editor of the Review-Journal imagines the endorsement would say something like, “We think she’s a thief, but we like her a lot.”
↑2 There have been some reports of the amount Righthaven has already collected from settlements, but it’s difficult to see how suing one’s sources – and advertising agencies – is a good business model.
↑3 Check out this site for pointing out this important information for UGC site operators.
↑4 Close to 60% of the time, as noted by Baron Beebe in his extraordinary article, An Empirical Study of US Copyright Fair Use Opinions, 1978-2005, 156 Univ of Penn Law Review 549 (2008).
↑5 The site provides numerous RSS feeds, as well as providing options to email, print, or share on 19 different social networking sites each article.
↑6 The doctrine of champerty is often described as ‘vestigial’, see Paul Bond, Making Champerty Work: An Invitation to State Action, 150 Univ of Penn Law Review 1297 (2002).
↑7 See Max Radin, Maintenance by Champerty, 24 Cali Law Review 48 (1935).
↑8 For more information on the history of champerty and maintenance, as well as discussion on the various public policies the doctrines protect, check out Ari Dobner, Litigation for Sale, 144 Univ of Penn 1529 (1996), and Radin.

ACTA: Thought for FUD, Part 4

By , September 09, 2010.

The general consensus is that the Anti-Counterfeiting Trade Agreement (ACTA) 1I’ve been referring to the treaty in its acronym form as “the ACTA” rather than just “ACTA.” Maybe it’s just me, but while the former is technically correct, it still sounds weird to say. is on track to be completed by the end of this year. Once completed, the treaty would still need to be implemented by each party through its own legislative process – a process that could easily take several years. If the past is any indication, we can expect plenty of Fear, Uncertainty, and Doubt over the treaty until then.

If you’re just joining us, be sure to check out ACTA: Thought for FUD, parts one, two, and three. If not, read on for part four of this series, where I’m comparing the provisions of the ACTA to existing US law to counter some of the FUD over what this treaty will do.

The FUD toward this section of the ACTA departs from the pattern it follows in the previous sections. Here, the fear is not based on a misunderstanding of existing US law; instead, the fear is that this section follows US law too closely. The provisions here – the majority of which had been passed as part of the Digital Millennium Copyright Act of 1998 (DMCA) 2Which itself was passed largely to implement WIPO treaties – which themselves were largely a result of the US’s National Information Infrastructure Initiative – which itself was turtles all the way down. have caused a great deal of consternation since they became a part of US law, and the complaint is that the US is attempting to “export” these much-derided laws to the rest of the world.

Since I’ve limited these articles so far to a side-by-side comparison between the ACTA provisions and US law, I won’t get into any substantive discussion of these criticisms, but I did want to point out one such criticism since it came out just this week.

On Monday, Boing Boing posted Latest leaked draft of secret copyright treaty: US trying to cram DRM rules down the world’s throats, illustrating precisely the criticism I noted above.

The article frames the state of the current law through a complete mischaracterization. The author states:

In the US version, breaking DRM is always illegal, even if you’re not committing any copyright violation — so breaking the DRM on your iPad to install software you bought from someone who hasn’t gone through the Apple approval process is illegal, even though the transaction involves no illicit copying.

But, the claim that under US law “breaking DRM is always illegal – even if you’re not committing any copyright violation” is followed in the very next sentence by links to a court case and regulations where breaking DRM is not illegal when there is no copyright violation!

The original characterization of laws regarding DRM is wrong. The “evidence” presented only shows the way laws typically work. Congress passes a new law. Someone brings a lawsuit based on an interpretation of the law outside of its scope. A court determines the interpretation is outside the scope of the law – based on the text of the statute Congress passed and any relevant legislative history of the law. The court denies the person’s claim. The only way you can call this an “erosion” of the law is if you claim that Congress and supporters of the law secretly wanted it to mean the same as the interpretation advanced by these unsuccessful lawsuit filers.

The idea that the law has been “eroded” by regulators is even more silly. The DMCA included a provision that charges the Librarian of Congress, through the Register of Copyrights, to examine and pass exemptions to the DMCA anti-circumvention provisions every three years. The Copyright Office completed the latest round of these proceedings just this past June. It’s difficult to see how such a provision built into a law counts as erosion of the law.

But enough about that. Let’s take a look at Section 4 of the ACTA.

Section 4: Special Measures Related to Technological Enforcement of Intellectual Property in the Digital Environment

Proposed ACTA Provision Corresponding US Law
ARTICLE 2.18 ENFORCEMENT PROCEDURES IN THE DIGITAL ENVIRONMENT

1. Each Party shall ensure that enforcement procedures, to the extent set forth in the civil and criminal enforcement sections of this Agreement, are available under its law so as to permit effective action against an act of copyright infringement which takes place in the digital environment, including expeditious remedies to prevent infringement and remedies which constitute a deterrent to further infringement.
2. Those measures, procedures and remedies shall also be fair and proportionate.
3. Without prejudice to the rights, limitations, exceptions, or defenses to copyright infringement available under its law, including with respect to the issue of exhaustion of rights, each Party shall provide for civil remedies as well as limitations, exceptions, or defenses with respect to the application of such remedies, are available in its legal system in cases of third party liability *

* For greater certainty, the Parties understand that third party liability means liability for any person who authorizes for a direct financial benefit, induces through or by conduct directed to promoting infringement, or knowingly and materially aids any act of copyright or related rights infringement by another. Further, the Parties also understand that the application of third party liability may include consideration of exceptions or limitations to exclusive rights that are confined to certain special cases that do not conflict with a normal exploitation of the work, performance or phonogram, and do not unreasonably prejudice the legitimate interests of the right holder, including fair use, fair dealing, or their equivalents. At least one delegation opposes this footnote.

 Metro-Goldwyn-Mayer Studios v. Grokster, 545 US 913, 930 (2005)

One infringes contributorily by intentionally inducing or encouraging direct infringement, … and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it … Although “[t]he Copyright Act does not expressly render anyone liable for infringement committed by another,” … these doctrines of secondary liability emerged from common law principles and are well established in the law.

I’ve discussed third party liability in detail previously on this site. This section begins with a provision establishing that Parties to the treaty recognize third party liability; I’ve included a footnote found in the text for clarity. Third party liability in copyright infringement is largely a creature of common law, so I’ve included language from the Supreme Court’s most recent third party infringement liability case, where the court restates the relevant principles.

Option 1
3. Each Party recognizes that some persons use the services of third parties, including online service providers, for engaging in copyright infringement. Each Party also recognizes that legal uncertainty with respect to application of copyright, limitations, exceptions, and defenses in the digital environment may present barriers to the economic growth of, and opportunities in, electronic commerce. Accordingly, in order to facilitate the continued development of an industry engaged in providing information services online while also ensuring that measures to take adequate and effective action against copyright or related rights infringement are available and reasonable each Party shall:
(a) provide limitations on the scope of civil remedies available against an
online service provider for infringing activities that occur by
(i) automatic technical processes, and
(ii) the actions of the provider’s users that are not directed or initiated by that provider and when the provider does not select the material, and
(iii) the provider referring or linking users to an online location,
when, in cases of subparagraphs (ii) and (iii) the provider does not have actual knowledge of the infringement and is not aware of facts or circumstances from which infringing activity is apparent; and
Option 2
Each Party recognizes that some persons use the services of third parties, including online service providers, for engaging in intellectual property rights infringements.
(a) In this respect, each Party shall provide limitation on the scope of civil remedies available against an on-line service provider for infringing activities that occur by
(i) automatic technical processes, or
(ii) the actions of the provider´s users that are not initiated nor modified by that provided and when the provider does not select the material or
(iii) the storage of information provided by the recipient of the service or at the request of the recipient of the service,
when exercising the activities as stipulated in paragraph 3(a)(ii) and/or (iii) the online service providers act expeditiously, in accordance with applicable law, to remove or disable access to infringing material or infringing activity upon obtaining actual knowledge of the infringement
the information at the initial source has been removed or disabled.

Option 1
(b) condition the application of the provisions of subparagraph (a) on meeting the following requirements:
(i) an online service provider adopting and reasonably implementing a policy to address the unauthorized storage or transmission of materials protected by copyright or related rights; and
(ii) an online service provider expeditiously removing or disabling access to material or alleged infringement, upon receipt of legally sufficient notice of alleged infringement, and in the absence of a legally sufficient response from the relevant subscriber of the online service provider indicating that the notice was the result of mistake or misidentification.
except that the provisions of (ii) shall not be applied to the extent that the online service provider is acting solely as a conduit for transmissions through its system or network.
Option 2:
Paragraph 3(a) shall not affect the possibility for a judicial or administrative authority, in accordance with the Parties legal system, requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility of the parties establishing procedures governing the removal or disabling of access to information
The Parties shall not impose a general monitoring requirement on providers when acting in accordance with this paragraph 3.

3. Each Party shall enable right holders, who have given effective notification to an online service provider of materials that they claim with valid reasons to be infringing their copyright or related rights, to expeditiously obtain from that provider information on the identity of the relevant subscriber.

3. Each Party shall promote the development of mutually supportive relationships between online service providers and right holders to deal effectively with patent, industrial design, trademark and copyright or related rights infringement which takes place by means of the Internet, including the encouragement of establishing guidelines for the actions which should be taken.

 17 USC § 512. Limitations on liability relating to material online

(a) Transitory Digital Network Communications.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the provider’s transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections, if—
(1) the transmission of the material was initiated by or at the direction of a person other than the service provider;
(2) the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider;
(3) the service provider does not select the recipients of the material except as an automatic response to the request of another person;
(4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, or provision of connections; and
(5) the material is transmitted through the system or network without modification of its content.

(b) System Caching.—
(1) Limitation on liability.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider in a case in which—
(A) the material is made available online by a person other than the service provider;
(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person; and
(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A),
if the conditions set forth in paragraph (2) are met.

[…]

(c) Information Residing on Systems or Networks At Direction of Users.—
(1) In general.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—
(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

(2) Designated agent.— The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
(A) the name, address, phone number, and electronic mail address of the agent.
(B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

[…]

(d) Information Location Tools.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the provider referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link, if the service provider—
(1)(A) does not have actual knowledge that the material or activity is infringing;
(B) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(C) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(3) upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity, except that, for purposes of this paragraph, the information described in subsection (c)(3)(A)(iii) shall be identification of the reference or link, to material or activity claimed to be infringing, that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate that reference or link.

This provision largely mirrors the DMCA chapter on internet safe harbors. I’ve edited out large portions of the statute for space.

4.59 In order to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors, the right holder of any copyright or related rights or owner of an exclusive license in connection with the exercise of their rights and that restrict unauthorized acts in respect of their works, or other subject matters specified under Article 14 of the TRIPS Agreement, each Party shall provide for civil remedies, or criminal penalties in appropriate cases of willful conduct , that apply to:
(a) the unauthorized circumvention of an effective technological measure that controls access to a protected work, performance, or phonogram; and
(b) the manufacture, importation, or circulation of a technology, service, device, product, component, or part thereof, that is: marketed or primarily designed or produced for the purpose of circumventing an effective technological measure; or that has only a limited commercially insignificant purpose or use other than circumventing an effective technological measure.

5. Each Party shall provide adequate legal protection against a violation of a measure implementing paragraph (4), independent of any infringement of copyright or related rights.

Option 1
Further, each Party may adopt exceptions and limitations to measures implementing paragraph 4 so long as they do not significantly impair the adequacy of legal protection of those measures or the effectiveness of legal remedies for violations of those measures.

Option 2
5. Each Party may provide for measures which would safeguard the benefit of certain exceptions and limitations to copyright and related rights, in accordance with its legislation.

 17 USC § 1201. Circumvention of copyright protection systems

(a) Violations Regarding Circumvention of Technological Measures.—
(1)(A) No person shall circumvent a technological measure that effectively controls access to a work protected under this title. The prohibition contained in the preceding sentence shall take effect at the end of the 2-year period beginning on the date of the enactment of this chapter.

[…]

(2) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or
(C) is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.

Also part of the DMCA, this provision creates separate liability for circumventing or manufacturing tools to circumvent technological protection measures.

6. Each Party shall provide adequate and effective legal remedies to protect electronic rights management information, each Party shall provide for civil remedies, or criminal penalties in appropriate cases of willful conduct, that apply to any person performing any of the following acts knowing or with respect to civil remedies having reasonable grounds to know that it will induce, enable, facilitate, or conceal an infringement of any copyright or related right:
(a) to remove or alter any electronic right management information. The obligations in paragraphs (4) and (5) are without prejudice to the rights, limitations, exceptions, or defenses to copyright or related rights infringement. Further, paragraph (4) does not imply any obligation to require that the design of, or the design and selection of parts and components for, a consumer electronics, telecommunications, or computing product provide for a response to any particular technological measure, so long as the product does not otherwise violate any measures implementing paragraph (4).
(b) to distribute, import for distribution, broadcast, communicate, or make available to the public copies of works, knowing that electronic rights management information has been removed or altered without authority.
6.2 Each Party may adopt limitations or exceptions to the requirements of subparagraphs (a) and (b).

 17 USC § 1202. Integrity of copyright management information

(a) False Copyright Management Information.— No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement—
(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.
(b) Removal or Alteration of Copyright Management Information.— No person shall, without the authority of the copyright owner or the law—
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law,
knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

This is yet another part of the DMCA. There is not much to say about this provision – it hasn’t received a lot of attention in academic literature and there are very few published court opinions applying it. 3But check out IQ Group v. Wiesner Pub, 409 F.Supp.2d 587 (NJDC 2006) for a detailed discussion of the provision’s history and meaning.

That actually takes care of the bulk of the substantive provisions of the ACTA. Next week, I’ll take a brief look at the remaining chapters, and then wrap up what lessons we can learn from this comparison, as well as make a few general observations about some of the other major criticisms of the treaty.

References

References
↑1 I’ve been referring to the treaty in its acronym form as “the ACTA” rather than just “ACTA.” Maybe it’s just me, but while the former is technically correct, it still sounds weird to say.
↑2 Which itself was passed largely to implement WIPO treaties – which themselves were largely a result of the US’s National Information Infrastructure Initiative – which itself was turtles all the way down.
↑3 But check out IQ Group v. Wiesner Pub, 409 F.Supp.2d 587 (NJDC 2006) for a detailed discussion of the provision’s history and meaning.

Is Copyright Infringement Theft?

By , September 07, 2010.

Is copyright infringement theft?

This question pops up often in online discussions, and nearly always sparks heated debate. You can see a recent example in the comments section of Obama administration: ‘Piracy is flat, unadulterated theft’ on Ars Technica. Many, many other examples abound online.

But I’m not going to answer that question today.

The biggest problem with this question is that – and this is going to sound very much like lawyerspeak – the answer depends on what the meaning of the word “theft” is. 1Cue obligatory Clinton jokes. Don’t dismiss such an answer right away. When I was in law school, I took a course taught by a judge in the nearby county court. He had been sitting for decades – well-qualified to teach about how the law worked in the real world. On more than one case, this judge would be in the middle of pointing out some minor point on correct use of terminology when he would pause and say, “I know this sounds like semantics. But the law is semantics – that’s what lawyers do: argue over words.”

The classic example of the relationship between the law and language is a hypothetical problem: “No Vehicles in the Park.” The hypo begins with a seemingly simple sign that reads “No vehicles in the park” and then asks what situations are prohibited by the rule and why. Bicycles? Park maintenance trucks? Ambulances on the way to the hospital? Wheelchairs? A war memorial consisting of a parked tank? It’s not enough to figure out what you think the result of each situation should be. In a democratic society, lawmakers and judges must ensure that laws are consistently applied, understandable, and fair. 2For a more in-depth look at law and language, check out Stanford Encyclopedia of Philosophy: Law and Language.

The argument over applying terms like “theft” to copyright infringement is not, however, about whether the comparison is legally appropriate, but about the similarities between the two in the colloquial sense of the word. This is where the opponents of the word begin to falter – attempting to prove their point by using the legal definition of the word to trump the colloquial definition. In other words, the argument goes, since the legal meaning of theft differs from the legal meaning of copyright infringement, any comparison between the two is invalid. By itself, this argument is barely worth refuting, but it has unfortunately been bolstered by the misuse of language from an otherwise inconsequential Supreme Court decision. This type of quote-mining from case law is prevalent in many debates – sort of a cross between an appeal to authority and contextomy – a practice that merits further discussion. If we want to learn what the law means, it sometimes help to understand common errors in understanding the law.

You’re in a Helicopter

I suspect a large part of the intensity over the use of “theft” to describe copyright infringement is based simply on linguistic peevery. The use of the word rubs some people the wrong way, and they have developed a strong objection to its use. Like language police, they immediately jump on anyone who dares to draw a comparison between the two concepts. Once the word is spoken, it won’t be long until you hear the legal argument. “Theft has a specific legal meaning, copyright infringement has a different legal meaning, thus copyright infringement is not theft.” This argument reminds of this old joke:

A helicopter was flying around above Seattle when an electrical malfunction disabled all of the aircraft’s electronic navigation and communications equipment. Due to the clouds and haze, the pilot could not determine the helicopter’s position and course to fly to the airport. The pilot saw a tall building, flew toward it, circled, drew a handwritten sign, and held it in the helicopter’s window. The pilot’s sign said “WHERE AM I?” in large letters. People in the tall building quickly responded to the aircraft, drew a large sign and held it in a building window. Their sign read: “YOU ARE IN A HELICOPTER.” The pilot smiled, waved, looked at her map, determined the course to steer to SEATAC airport, and landed safely. After they were on the ground, the co-pilot asked the pilot how the “YOU ARE IN A HELICOPTER” sign helped determine their position. The pilot responded “I knew that had to be the Microsoft building because, like their technical support, online help and product documentation, the response they gave me was technically correct, but completely useless.”

It’s technically correct that “copyright infringement” and “theft” have distinct legal meanings, but so what? The idea that the legal distinction between the two terms forecloses any colloquial comparison is invalid. “Theft” in the legal sense has always meant something far narrower than “theft” in the everyday sense. In early English common law, for example, the crime of theft only included the taking of another’s property by force or by stealth. It didn’t include the taking of property by deception or trick, and it also didn’t include the taking of property by someone in whom the property was entrusted. While today we would have no problem saying a delivery truck driver engaged in “theft” if he kept a package instead of delivering it, earlier courts had to jump through several hoops before reaching the same conclusion. 3See A History of the Criminal Law of England, Sir James Fitzjames Stephen, Volume 3 [Google incorrectly titles the book “Volume 2”](1883).

Dowling v. United States: Misusing Case Law

Despite the obvious shortcomings of this line of reasoning, it was given extra legs after the 1985 Supreme Court case Dowling v. United States. Paul Dowling ran a lucrative, interstate business selling bootleg recordings of Elvis Presley. Once caught, the federal government prosecuted him under the National Stolen Property Act, which made it a federal crime to transport stolen merchandise across state lines. The Supreme Court reversed his conviction on the grounds that the Act did not extend to items which infringed copyright.

This holding was like manna from heaven to the “copyright infringement is not theft” crowd. In particular, they point to the following language from the syllabus of the opinion: 4It’s worth pointing out that the syllabus of a legal opinion is not legal authority. For an interesting behind-the-scene’s look at the Supreme Court reporter of decisions who prepare the syllabuses, check out The Supreme Court’s Man of Many Words.

The phonorecords in question were not “stolen, converted or taken by fraud” for purposes of [section] 2314. The section’s language clearly contemplates a physical identity between the items unlawfully obtained and those eventually transported, and hence some prior physical taking of the subject goods. Since the statutorily defined property rights of a copyright holder have a character distinct from the possessory interest of the owner of simple “goods, wares, [or] merchandise,” interference with copyright does not easily equate with theft, conversion, or fraud. The infringer of a copyright does not assume physical control over the copyright nor wholly deprive its owner of its use. Infringement implicates a more complex set of property interests than does run-of-the-mill theft, conversion, or fraud.

If you make it into the actual opinion, however, you’ll find that the Court is careful to note the distinction between the legal and colloquial meanings of words:

While one may colloquially link infringement with some general notion of wrongful appropriation, infringement plainly implicates a more complex set of property interests than does run-of-the-mill theft, conversion, or fraud. As a result, it fits but awkwardly with the language Congress chose — “stolen, converted or taken by fraud” — to describe the sorts of goods whose interstate shipment § 2314 makes criminal. 5473 US 217-218

I mentioned earlier that mischaracterizing language from case law to bolster an argument is common. Our common law system is partially to blame for this pitfall, since cases create binding precedent that shape the law. However, it’s important to remember that the only thing binding from a court opinion is the holding. The reasoning a court uses is helpful in seeing how it arrived at the holding, and much of the dicta may be persuasive and useful to shaping one’s argument.  The danger is taking this language – anything besides the specific, narrow holding – as a binding conclusion to any argument. 6Other cases have similarly been distorted to “prove” certain arguments: Flora v. United States, 362 US 145 (Income tax is voluntary); Church of the Holy Trinity v. United States, 143 US 457 (US is a Christian nation); Interstate Commerce Commission v. Brimson, 154 US 447 (Census is unconstitutional). It’s not like the Dowling court made a broad pronouncement that “Henceforth, no one may describe copyright infringement as ‘theft.'” Or as one forum commenter said, “The comments are to long and it’s becoming a chore. I’ll just quote Dowling v. United States, a 1985 case regarding copyright infringement.”

The holding of Dowling was indeed narrow:

By virtue of the explicit constitutional grant, Congress has the unquestioned authority to penalize directly the distribution of goods that infringe copyright, whether or not those goods affect interstate commerce. Given that power, it is implausible to suppose that Congress intended to combat the problem of copyright infringement by the circuitous route hypothesized by the Government. 7473 US 220-221.

In other words, the federal government cannot prosecute an alleged copyright infringer under the National Stolen Property Act. 8The dissent in the case argues that the federal government can. It points out that the majority cites differences between the rights of copyright owners and other property owners as well as the differences between interference in those rights but fails to explain why those differences are relevant to the statute. It notes that other courts have interepreted “stolen, converted or taken by fraud” broadly enough to encompass intangible property. Finally, and most persuasively, it notes that Congress explicitly provided that penalties under the statue “shall be in addition to any other provisions” of the Copyright Act.  Curiously, those who point to the language of Dowling as incontrovertible proof that copyright infringement shouldn’t be called theft manage to miss a later Supreme Court case that says the opposite. Justice Breyer states in his concurrence to MGM v. Grokster:

No one disputes that “reward to the author or artist serves to induce release to the public of the products of his creative genius.” United States v. Paramount Pictures, Inc., 334 U. S. 131, 158 (1948). And deliberate unlawful copying is no less an unlawful taking of property than garden-variety theft. 9545 US 913, 961 (2005) (Breyer concurring).

The lesson, if any, is to pay attention when someone quotes case law. It’s easy to find language that appears to support just about any proposition; the challenge is recognizing the common fallacies that arise from the use of such language.

Does it even matter? Yes, it does. Or does it?

Hopefully, this reliance on Dowling in the debate over copyright infringement and theft can be put to a rest. That still leaves the question of whether or not the comparison is appropriate in the colloquial sense. I doubt that debate will ever be resolved.

Quibbling over the use of words like “theft” stems from the larger debate about whether “intellectual property” should be considered “property.” People have been arguing over that point since – at the least – the first copyright law was written down in 1709. To some, the issue has great consequences. In Moral Panics and the Copyright Wars, noted copyright scholar William Patry writes:

No side in the Copyright Wars can claim semantic purity or sole virtue … One way we got where we are is through the misuse of language, specifically metaphors that characterize the nature of copyright as property and that characterize those who use copyright works without permission as thieves or parasites. When a court or legislature is faced with a copyright dispute, there is more than one way to frame that dispute. There is, after all, no Platonic copyright against which we can match the ideal form of copyright. Instead, the outcome is determined by reference to the contesting legal, economic, and social forces. Those forces in turn are defined and understood in terms of the conceptual frameworks employed. 10Pp. 14-15, Oxford University Press (2009).

Patry sees the use of metaphors like “theft” as an effort by content industries to push for self-serving copyright laws to “preserve their old business model of controlling consumers.” 11Pg. 22.

But there are others who see this argument as largely academic. Law professor Stuart P. Green notes:

Whether something will be regarded as “property” is nothing more, and nothing less, than a conclusion of law. As Stephen Carter has put it, “the term does not refer to any object or to any necessary set of legal rights that always inheres in a property relationship. Instead, the term refers to a bundle of rights that define, singly or collectively, the relationship of an individual to a resource.” Hence, simply because some resource is considered “property” for purposes of, say, mail fraud, copyright, or constitutional law, does not necessarily mean that it will be regarded as property for purposes of theft law, and vice versa. 12Plagiarism, Norms, and the Limits of Theft Law: Some Observations on the Use of Criminal Sanctions in Enforcing Intellectual Property Rights, 54 Hastings Law Journal 168, 208-209 (2002).

Finally, there are those who think even the academic debate over terminology is pointless. In an online debate with Patry, noted copyright attorney Ben Sheffner had this to say:

I just have a hard time getting too worked up about what label we attach to copyright. And I suspect most non-philosophers agree. Consider this thought experiment: Go to a studio head and say, “I’ve got a deal for you. I’ll give you your copyright wish list: repeal first sale, make Justice Ginsburg’s concurrence in Grokster the controlling opinion, delete Cablevision, Perfect 10 v. Amazon (and a few other Perfect 10 cases while we’re at it) from the law books, and codify a “making available” right. But here’s the catch: From now on, you are forever forbidden from referring to copyright as ‘property,’ and must instead call it a ‘set of social relationships.'” Or go to a copyright skeptic, and say, “I’ve got a deal for you. I’ll give you your copyright wish list: reduce the term of copyright back to 14 years, expand fair use, eliminate the derivative works right, and repeal the anti-circumvention provisions of the DMCA. But there’s the catch: From now on, you must refer to copyright as property; no more of this ‘set of social relationships’ mumbo-jumbo.” I’m confident both the studio head and the copyright skeptic would take those deals in a heartbeat. Ultimately, it’s the substance, not the label, that matters.

I tend to agree with Sheffner. The debate over the labels we give to copyright is interesting in an academic sense but largely meaningless in the real world. Creators often use words like “theft” to reflect how they feel about acts of infringement. Shifting the focus from the colloquial meaning of the word to the legal meaning accomplishes little more than arguing for the sake of argument, while misusing language from case law only forecloses a fuller understanding of the law.

References

References
↑1 Cue obligatory Clinton jokes.
↑2 For a more in-depth look at law and language, check out Stanford Encyclopedia of Philosophy: Law and Language.
↑3 See A History of the Criminal Law of England, Sir James Fitzjames Stephen, Volume 3 [Google incorrectly titles the book “Volume 2”](1883).
↑4 It’s worth pointing out that the syllabus of a legal opinion is not legal authority. For an interesting behind-the-scene’s look at the Supreme Court reporter of decisions who prepare the syllabuses, check out The Supreme Court’s Man of Many Words.
↑5 473 US 217-218
↑6 Other cases have similarly been distorted to “prove” certain arguments: Flora v. United States, 362 US 145 (Income tax is voluntary); Church of the Holy Trinity v. United States, 143 US 457 (US is a Christian nation); Interstate Commerce Commission v. Brimson, 154 US 447 (Census is unconstitutional).
↑7 473 US 220-221.
↑8 The dissent in the case argues that the federal government can. It points out that the majority cites differences between the rights of copyright owners and other property owners as well as the differences between interference in those rights but fails to explain why those differences are relevant to the statute. It notes that other courts have interepreted “stolen, converted or taken by fraud” broadly enough to encompass intangible property. Finally, and most persuasively, it notes that Congress explicitly provided that penalties under the statue “shall be in addition to any other provisions” of the Copyright Act.
↑9 545 US 913, 961 (2005) (Breyer concurring).
↑10 Pp. 14-15, Oxford University Press (2009).
↑11 Pg. 22.
↑12 Plagiarism, Norms, and the Limits of Theft Law: Some Observations on the Use of Criminal Sanctions in Enforcing Intellectual Property Rights, 54 Hastings Law Journal 168, 208-209 (2002).

ACTA: Thought for FUD, Part 3

By , September 03, 2010.

Continuing with a look at the proposed Anti-Counterfeiting Trade Agreement (check out Part 1 and Part 2), we now turn to Section 3: Criminal Enforcement. It’s hard to say which section of the ACTA has sparked the most controversy, but this section is a good candidate. People are concerned whenever changes in the scope of criminal law and liability are discussed.

As well they should be.

While criminal and civil law operate in much the same way, the implications of classifying a wrong as criminal rather than civil are vast. The effects of a criminal conviction on a person are far more substantial than being held liable in a civil court. The conviction becomes part of one’s criminal record, and the penalties are often harsher, especially since the possibility of imprisonment is available in criminal cases. Criminal courts are under a significantly greater duty to “get it right” when it comes to prosecuting crimes.

When it comes to classifying wrongs as either criminal or civil, we still today largely follow the principle that William Blackstone described in the 1700s.

WRONGS are divisible into two sorts or species; private wrongs, and public wrongs. The former are an infringement or privation of the private or civil rights belonging to individuals, considered as individuals; and are thereupon frequently termed civil injuries: the latter are a breach and violation of public rights and duties, which affect the whole community, considered as a community; and are distinguished by the harsher appellation of crimes and misdemeanors. 13 William Blackstone, Commentaries 2, available online at http://avalon.law.yale.edu/18th_century/blackstone_bk3ch1.asp.

Criminal copyright infringement – especially the type of internet piracy prevalent today – gives rise to a particular problem in recognition by people as a public wrong. Piracy often doesn’t entail the types of egregious conduct associated with criminal behavior: for example, violence, fraud, or deceit. It can be difficult to see how the harms extend beyond the specific copyright owner. So it is only natural that the public is wary when the subject of criminal copyright infringement comes up. 2Much of the discussion of the nature and history of criminal copyright infringement in the US was informed by I. Trotter Hardy’s excellent article Criminal Copyright Infringement, available at the William & Mary Law School Scholarship Repository.

With that said, criticism of the criminal enforcement section in the ACTA still contains a fair deal of FUD. “Your kids could go to jail for noncommercial file sharing!” says Boing Boing. As with the previous sections, much of the FUD comes from not knowing what is in the ACTA provisions and what is currently US law.

Criminal Copyright Infringement in the US

Criminal penalties have been a part of copyright law in the US since 1897. Over the decades that followed, the scope and penalties of criminal copyright infringement have increased several times. In 1997, in an effort to address internet piracy, Congress passed the NET Act, which amended the definition of “commercial advantage or financial gain” to include large-scale noncommercial infringement.

What’s notable about the NET Act, and missing from cries of file sharing kids being locked up, is what didn’t happen since the law was passed. Our jails are not overflowing with torrent users. While enforcement of IP crimes has slowly been increasing by the US government, prosecution of all IP crimes – which includes “trafficking of goods with counterfeit trademarks or brands (such as clothing and consumer electronics), software piracy, the distribution of bootleg musical recordings and movies, selling company trade secrets, and derivative copyright violations of intercepting cable/satellite broadcasts” – still represents less than 1% of total crimes prosecuted. 3Bureau of Justice Statistics, Intellectual Property Theft (2004). Most of the other ACTA negotiating party countries have had similar laws for nearly as long as the US. Fears of a pirate prison planet based on provisions which mirror laws that have been on the book for over a decade and haven’t resulted in locking up kids for file sharing are overstated.

One last thing to keep in mind: while it’s important that criminal laws are carefully crafted to only address actual, egregious public harms and imperative that constitutional and legal protections of alleged criminals are upheld, reality and practicality play just as much a role in keeping abuse of criminal provisions in check. Agencies which investigate and prosecute IP crimes have budgets, as well as far more common and harmful crimes to look at. Evidence must be gathered, and each element of the crime must be proven beyond a reasonable doubt – a burden that tends to weed out less certain cases and less culpable parties. David Goldstone, of the Computer Crime and Intellectual Property Section of the Department of Justice, explains other factors that may make US Attorneys less likely to prosecute IP crimes.

Let’s take a look now at Section 3 of the ACTA.

Section 3: Criminal Enforcement

Proposed ACTA Provision Corresponding US Law
ARTICLE 2.14: CRIMINAL OFFENSES

1. Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright or related rights piracy on a commercial scale. Willful copyright or related rights piracy on a commercial scale includes:

(a) significant willful copyright or related rights infringements that have no direct or indirect motivation of financial gain; and
(b) willful copyright or related rights infringements for purposes of commercial advantage or financial gain.

 17 USC § 506. Criminal offenses

(a) Criminal Infringement.—
(1) In general.— Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18, if the infringement was committed—

(A) for purposes of commercial advantage or private financial gain;
(B) by the reproduction or distribution, including by electronic means, during any 180–day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000; or
(C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution.

3. Each Party shall provide for criminal procedures and penalties to be applied in accordance with its laws and regulations, against any person who, without authorization of the holder of copyright in a motion picture or other audiovisual work, knowingly uses an audiovisual recording device to transmit or make a copy of the motion picture or other audiovisual work, or any part thereof, from a performance of the motion picture or other audiovisual work in a motion picture exhibition facility open to the public.

 17 USC § 506. Criminal offenses

(a) Criminal Infringement.—

[…]

(3) Definition.— In this subsection, the term “work being prepared for commercial distribution” means—

[…]

(B) a motion picture, if, at the time of unauthorized distribution, the motion picture—
(i) has been made available for viewing in a motion picture exhibition facility; and
(ii) has not been made available in copies for sale to the general public in the United States in a format intended to permit viewing outside a motion picture exhibition facility.

A separate provision specifically focused on “pre-release” infringement is relatively recent in the US, having been added in 2005 as part of the Artists’ Rights and Theft Prevention Act. Eric Goldman explains that before the Act, it was difficult to make a case against infringers of pre-released works because, in theory, pre-release works do not have any market value.
ARTICLE 2.15: CRIMINAL LIABILITY AND PENALTIES

1. Liability of Legal Persons
(a) Each Party shall adopt such measures as may be necessary, consistent with its legal principles, to establish the liability of legal persons for the offences referred to in Article 2.14.
(b) Subject to the legal principles of the Party, the liability of legal persons may be criminal or non-criminal.
(c) Such liability shall be without prejudice to the criminal liability of the natural persons who have committed the criminal offences.

2. Inciting, Aiding and Abetting
The provisions of this section shall apply to aiding and abetting the offences referred to in Article 2.14.

 US Code Title 18, Federal Rules of Criminal Procedure

18 USC § 2. Principals

(a) Whoever commits an offense against the United States or aids, abets, counsels, commands, induces or procures its commission, is punishable as a principal.

Liability of criminal defendants in US law is established primarily through common law. Title 18 of the US Code and the separately promulgated Federal Rules of Criminal Procedure also have provisions relating to establishing liability. 18 USC § 2 establishes that the same principles apply to those indirectly liable for infringement.
3. Penalties and Sanctions

(a) For the crimes referred to in Article 2.14, each Party shall provide effective, proportionate and dissuasive penalties that include imprisonment and monetary fines sufficiently high to provide a deterrent to future acts of infringement, with a view to removing the monetary incentive of the infringer.
(b) For legal persons held liable under Article 2.15.1, each Party shall provide for effective, proportionate and dissuasive sanctions, including monetary sanctions.

 18 USC § 2319. Criminal infringement of a copyright

(a) Any person who violates section 506 (a) (relating to criminal offenses) of title 17 shall be punished as provided in subsections (b), (c), and (d) and such penalties shall be in addition to any other provisions of title 17 or any other law.

[Subsections specifying specific penalties edited for space. You can read them here.]
ARTICLE 2.16. SEIZURE, FORFEITURE/CONFISCATION AND DESTRUCTION

1. Seizure
(a) In case of an offence referred to in Article 2.14, each Party shall provide that its competent authorities shall have the authority to order the seizure of suspected counterfeit trademark goods or pirated copyright goods, any related materials and implements used in the commission of the alleged offence, documentary evidence relevant to the alleged offence and any assets derived from, or obtained directly or indirectly through the infringing activity.
(b) Each Party shall, if a prerequisite for such an order, according to its national law, is the identification of the items, ensure that the order need not determine the items that are subject to seizure in more detail than necessary to allow their identification for the purpose of the seizure.

2. Forfeiture/Confiscation and Destruction
(a) For the offences referred to in Article 2.14, each Party shall provide that its competent authorities shall have the authority to order confiscation/forfeiture or destruction where appropriate of all counterfeit trademark goods or pirated copyright goods, of materials and implements predominantly used in the creation of counterfeit trademark goods or pirated copyright goods, and of the assets derived from, or obtained directly or indirectly, through the infringing activity.
(b) Each Party shall provide that its competent authorities shall have the authority to ensure that the counterfeit trademark goods and pirated copyright goods that have been confiscated/forfeited under this subparagraph shall, if not destroyed, be disposed of outside the channels of commerce, in such a manner as to avoid any harm caused to the right holder.
(c) Each Party shall further ensure that confiscation/forfeiture and destruction under this subparagraph shall occur without compensation of any kind to the defendant.
(d) Each Party may provide that its judicial authorities have the authority to order the confiscation/forfeiture of assets the value of which corresponds to that of such assets derived from or obtained directly or indirectly through the infringing activity.

 18 USC § 2323. Forfeiture, destruction, and restitution

(a) Civil Forfeiture.—
(1) Property subject to forfeiture.— The following property is subject to forfeiture to the United States Government:
(A) Any article, the making or trafficking of which is, prohibited under section 506 of title 17, or section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90, of this title.
(B) Any property used, or intended to be used, in any manner or part to commit or facilitate the commission of an offense referred to in subparagraph (A).
(C) Any property constituting or derived from any proceeds obtained directly or indirectly as a result of the commission of an offense referred to in subparagraph (A).

(2) Procedures.— The provisions of chapter 46 relating to civil forfeitures shall extend to any seizure or civil forfeiture under this section. For seizures made under this section, the court shall enter an appropriate protective order with respect to discovery and use of any records or information that has been seized. The protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used. At the conclusion of the forfeiture proceedings, unless otherwise requested by an agency of the United States, the court shall order that any property forfeited under paragraph (1) be destroyed, or otherwise disposed of according to law.

(b) Criminal Forfeiture.—
(1) Property subject to forfeiture.— The court, in imposing sentence on a person convicted of an offense under section 506 of title 17, or section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90, of this title, shall order, in addition to any other sentence imposed, that the person forfeit to the United States Government any property subject to forfeiture under subsection (a) for that offense.

(2) Procedures.—
(A) In general.— The forfeiture of property under paragraph (1), including any seizure and disposition of the property and any related judicial or administrative proceeding, shall be governed by the procedures set forth in section 413 of the Comprehensive Drug Abuse Prevention and Control Act of 1970 (21 U.S.C. 853), other than subsection (d) of that section.
(B) Destruction.— At the conclusion of the forfeiture proceedings, the court, unless otherwise requested by an agency of the United States shall order that any—
(i) forfeited article or component of an article bearing or consisting of a counterfeit mark be destroyed or otherwise disposed of according to law; and
(ii) infringing items or other property described in subsection (a)(1)(A) and forfeited under paragraph (1) of this subsection be destroyed or otherwise disposed of according to law.

(c) Restitution.— When a person is convicted of an offense under section 506 of title 17 or section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90, of this title, the court, pursuant to sections 3556, 3663A, and 3664 of this title, shall order the person to pay restitution to any victim of the offense as an offense against property referred to in section 3663A (c)(1)(A)(ii) of this title.
ARTICLE 2.17: EX OFFICIO CRIMINAL ENFORCEMENT

Each Party shall provide that its competent authorities may act upon their own initiative to initiate investigation or legal action with respect to the criminal offenses described in Article 2.14.

 28 USC § 547. Duties

Except as otherwise provided by law, each United States attorney, within his district, shall—
(1) prosecute for all offenses against the United States

Ultimately, it is the US attorneys who prosecute criminal copyright infringement cases. A broad array of federal agencies, however, are charged with investigating intellectual property offenses, including the FBI and ICE.
ARTICLE 2.X. RIGHTS OF THE DEFENDANT AND THIRD PARTIES

Each Party shall ensure that the rights of the defendants and third parties shall be duly protected and guaranteed.

US Constitution, Fourth, Fifth, Sixth, and Eighth Amendments; US Code Title 18, Federal Rules of Criminal Procedure

This section may seem obvious, but since the rights of criminal defendants are enshrined in the Constitution, we often don’t give much thought to them. As with criminal liability, additional rules and procedures protecting the rights of criminal defendants can be found in the US Code and Federal Rules of Criminal Procedure. Other nations recognize the rights of criminal defendants through their own written constitutions (which may have been enacted some time after the nation was founded), implied constitutions, or statute.

References

References
↑1 3 William Blackstone, Commentaries 2, available online at http://avalon.law.yale.edu/18th_century/blackstone_bk3ch1.asp.
↑2 Much of the discussion of the nature and history of criminal copyright infringement in the US was informed by I. Trotter Hardy’s excellent article Criminal Copyright Infringement, available at the William & Mary Law School Scholarship Repository.
↑3 Bureau of Justice Statistics, Intellectual Property Theft (2004).

On top of Spaghetti: Copyright’s Complexity

By , September 01, 2010.

Earlier this month, this picture 1Note: the image is meant to illustrate the UK music industry, which is largely similar to the US industry but does have some differences. made the rounds online:

The response to this diagram was typically something like, “Look at how complex the music industry is!” – and nothing more. I suppose the conclusion to be drawn is that complexity, in and of itself, is bad.

But if you diagrammed any industry, you’d likely end up with a picture just as complex. How bout the food industry? You have your farms and raw material suppliers, processors and plants, grocery stores and restaurants, institutional food service providers, plus distributors, shipping providers, warehouses, etc. All industries have some degree of complexity to them, especially if you show each link in every chain. Most participants in an industry, however, do not have to concern themselves with keeping track of the larger picture; even in the graphic above, you’ll notice that most hubs have only one or two connections to other hubs.

The world is complex, and the idea that complexity by itself is bad is a silly one. There are problems which arise in complex systems, but scratching your head at a diagram of the system is not one of them. Clarity is certainly a goal for participants within an industry, but that does not mean that one unfamiliar with a particular industry can pick up a working understanding of the entire system by glancing at a diagram like the one above. Simple systems carry risks as well. We have antitrust laws to ensure that industries do not become controlled by too few participants.

Instead of leaving things at that, I thought we could take a closer look at some specific characteristics of the music industry that make it complex.

Double Your Pleasure

Copyrights form the foundation of the music industry. Copyright law itself is complex, and the music industry has the added bonus of dealing with not one, but two separate and independent copyrights. Songs (musical works) are protected by copyright, as are recordings of songs (sound recordings, or phonorecords). In my experience, understanding this distinction is one of the steepest parts of the music industry’s learning curve. Traditionally, songs are represented by notes and lyrics on paper. A sound recording incorporates a song but is independently protected by copyright itself, though that copyright doesn’t incorporate the copyright of the underlying song. So, think about the song “Twist and Shout” and how it was recorded by the Isley Brothers and the Beatles. In this example, there are three copyrights: the song, the Isley Brothers recording of it, and the Beatles recording of it. 2Hypothetically speaking. The reality may be different since US federal copyright law did not recognize sound recordings as copyrightable subject matter until 1972, though some states and the UK did before then. The owner of the copyright on a sound recording and the underlying song may or may not be the same. In the music industry, record labels generally own the copyrights to the sound recordings while music publishers generally own the copyrights to the songs.

Once you grasp the concept of the two copyrights involved, you’re faced with another twist. A copyright is not a single right, it is a set of several rights: the right to reproduce, distribute, and prepare derivative works (I’ll get to public performance rights in a moment). And wouldn’t you know, each one of these rights can be licensed, transferred, or sold individually. Not too bad? Let’s throw in the right to public performance. The copyright in musical works includes a right to public performance. The copyright in sound recordings does not; however, it does include a public performance right by digital audio transmission.

In other words, each track on a CD has two separate copyrights involved, with two slightly different sets of rights attached to each copyright. Now that we know that we are starting with an inherently complex foundation, let’s take a brief look at how additional complexity in the music industry has evolved.

Adapting to Changes

With the introduction of every new technology, Congress, courts, and the music industry struggled at times to figure out what role copyright law played. It’s important to keep in mind that the words used to describe the exclusive rights in copyright – “reproduce”, “distribute”, “public performance” – are legal terms of art. Their meanings do not necessarily follow logic, and one can’t necessarily deduce whether a particular use is a reproduction, a distribution, a public performance, or some combination by opening up a dictionary. Instead, the meanings of the terms evolve constantly through statute and common law, guided as much by practical considerations as by legal formalism. 3Nimmer on Copyright discusses this issue in its introduction: “An even more fundamental problem, with ramifications for both judge-made rules and legislation, is that words are often used in the copyright context with special meaning, at variance from their more typical usages, and may even be used in disparate contexts in the copyright realm itself with different meanings.” The result is that the relationships between different parties in the music industry as represented in the image above are not always intuitive.

The rise of the administrative state over the past century increased government regulation in many areas, including copyright law. Specific exceptions to each right have been added over the decades. And, since the early 1900’s, Congress has increasingly regulated content industries directly through compulsory licenses – government set rates for certain specified uses. The administration of these compulsory licenses was often delegated to new or existing parties either by law or through industry practices. Several lines on the image above exist solely because of this regulation.

As with any industry, the music industry has grown more compartmentalized, with intermediaries specializing in individual roles within the complex system. One example of this division of labor is the formation of performing rights organizations (PROs) – groups which grant the right to publicly perform the songs of thousands of songwriters and music publishers to radio stations, tv networks, bars and restaurants. In a way, while intermediaries like PROs add another hub in the music industry, they reduce complexity overall; without them, each individual songwriter/publisher would need to form a relationship with each individual performance outlet.

Lessons to Learn

Certainly, the music industry and copyright law are complex – a result stemming from numerous factors. But mere complexity is not a defect. Looking at this image and saying, “Ha ha, it looks like spaghetti,” provides no insight. Comparing the current Copyright Act to the Tax Code 4Joseph P. Liu, Regulatory Copyright, 83 North Carolina Law Review 87, 88 (2004). begs the question: the less words, the better the law. Instead, we should look at the music industry and copyright law independent of their complexity. Is the current music industry sustainable? Is copyright law effective in fulfilling its purpose? These are far better questions then, “At what point do people say it’s time to scrap this mess and start from scratch?”

The complexity of the music industry does raise a valid point, though. Does a complex system like this create barriers to new players to join the game? The chart above was originally created by a company named Pure to announce its launch of a new streaming music service. It was used to illustrate the challenges the company faced in creating the service. The company’s CEO claimed it took three hours for someone to explain the chart to him, lamenting that “There were times along the way I almost gave up.” The conclusion often reached is that if companies like Pure – who “start from a fundamental position that we respect copyright” – give up when faced with untangling the web of copyright law, then services that don’t respect copyright will take their place. The law is firmly on content industy’s side, and enforcement efforts are increasing, but at the same time, lawmakers and the music industry must continue to look at ways to reduce the negative impacts of copyright’s complexity. 5Shameless plug: I propose one such way in my recent paper, Copyright Reform Step Zero.

References

References
↑1 Note: the image is meant to illustrate the UK music industry, which is largely similar to the US industry but does have some differences.
↑2 Hypothetically speaking. The reality may be different since US federal copyright law did not recognize sound recordings as copyrightable subject matter until 1972, though some states and the UK did before then.
↑3 Nimmer on Copyright discusses this issue in its introduction: “An even more fundamental problem, with ramifications for both judge-made rules and legislation, is that words are often used in the copyright context with special meaning, at variance from their more typical usages, and may even be used in disparate contexts in the copyright realm itself with different meanings.”
↑4 Joseph P. Liu, Regulatory Copyright, 83 North Carolina Law Review 87, 88 (2004).
↑5 Shameless plug: I propose one such way in my recent paper, Copyright Reform Step Zero.

That My Baby

By , August 30, 2010.

Check out this amazing video:

[youtube]http://www.youtube.com/watch?v=N1KfJHFWlhQ[/youtube]

Impressive, right? I mean, it’s no “Star Wars according to a 3 year old” 1Or “kittens inspired by kittens“. , but if you check out the stats, you’ll see it has gotten over one million views. Why all the fuss?

Lenz v. Universal Music Group

Stephanie Lenz, the mother of the child in the video, uploaded the clip to YouTube in February 2007. Several months later, Universal Music Group (UMG) sent a flurry of DMCA notices to YouTube requiring the site to remove videos that included unauthorized uses of Prince songs, including Lenz’s video (Prince’s “Let’s Go Crazy” was playing on the radio and caught by Lenz while she filmed). Lenz responded to the notice with a counter-notice to request the video be put back online. YouTube restored the video. Then, Lenz sued UMG for sending the original DMCA notice, claiming that it was sent in bad faith.

Lenz became somewhat of an internet folk hero: the innocent mother who just wanted to show her dancing baby to the world standing up to the big, bad music conglomerates. In the comments, Lenz is called a “hero” and a “legend,” while Prince is called a “scum bag,” a “miser”, and a “selfish, cold-hearted, insensitive, bitter and ugly jerk.” I can’t tell what UMG and the RIAA are called, since most of those names are censored.

But the story’s popularity has gone beyond YouTube and made it into academic literature. A HeinOnline search reveals close to 150 mentions of the video in legal journals. Many notable copyright scholars have devoted a considerable amount of time to the video. Lawrence Lessig, in his book Remix, devotes the first five pages of the introduction to telling the story of this video. He calls it “a perfect YouTube moment” and “a bit of shared culture.” Later in the book, he describes the video as “amateur creativity.” William Patry mentions the video several times in his latest, Moral Panics and the Copyright Wars, as well. On page 98, in a section titled “The Myths of Economic Freedom and Market Fundamentalism,” Patry notes that it is economic freedom which allowed Prince to “sanctimoniously demand” that YouTube remove this video. On page 169, he again uses the takedown of this video as an example of “suppression of free speech and creativity” under the DMCA.

Public interests groups have also joined in the fun. Lenz was aided in her lawsuit by the Electronic Frontier Foundation, which described the case as part of its “ongoing work to protect online free speech.”

Wow.

Threats to freedom of speech and creativity are paramount. But when your claim is that they are threatened by a law passed twelve years ago and the removal of this video is the best example you have as proof, the discussion gets a little silly.

This is a video of a baby. Cute? Maybe. Harmless? Yes. But heroic? A “bit of shared culture” whose removal amounts to “suppression of free speech and creativity?”

Luckily, our society has survived the brief time when Lenz’s video was not available to the world. But does this episode only highlight the DMCA’s sword of Damocles hanging over free speech and creativity? Or is it just another example of the cries of internet freedom fighters that the sky is falling as content industries adapt to technological changes? I think it’s the latter: despite the elevation of this dancing baby video to a cause célèbre, our freedom to speak is not threatened, and any “burden” the DMCA places on users uploading content is almost illusory.

The DMCA and Freedom of Speech

The Digital Millennium Copyright Act of 1998 (DMCA) was made up of several major sections, including the Online Copyright Infringement Liability Limitation Act (OCILLA), which established safe harbors for online service providers that protect them from copyright infringement liability. I briefly discussed these DMCA safe harbors in Viacom Appeals Lawsuit Against YouTube. For more information, check out the Wikipedia entry on OCILLA and Chilling Effect’s comprehensive FAQ About DMCA. To recap, the DMCA shields online service providers from secondary copyright liability if they remove material when requested by a copyright owner through a DMCA takedown notice. The user who originally uploaded the material may send a counter-notification to restore the content if they believe the takedown notice was sent in error.

This “notice-and-takedown” procedure was at the heart of Lenz’s case against UMG and has been widely criticized by copyright scholars, legal academics, and bloggers. Partially, the criticism stems from a perceived threat to our freedom of speech:

The DMCA flips the defaults on speech. Where ordinarily speech remains available until someone files and wins a lawsuit or settlement against it, the DMCA forces a speaker to take action to re-assert the lawfulness of his speech, in the form of a counter-notification, or if he wants uninterrupted speech, a lawsuit. It is precisely this mechanism by which the chilling effect operates to censor. 2Wendy Seltzer, Free Speech Unmoored in Copyright’s Safe Harbor: Chilling Effects of the DMCA on the First Amendment, pp. 7-8 (March, 2010).

Copyright laws occupy a unique position in the free speech landscape. On the one hand, they are without a doubt a categorical restriction on one’s right to speak – you cannot communicate someone else’s expression without permission. On the other hand, copyright is often considered the “engine of free expression” – the exclusive rights it grants provide incentives to authors to create and disseminate new ideas and expression. 3Harper & Row v. Nation Enterprises, 471 US 539 (1985). Mindful of this inherent paradox, courts have consistently rejected First Amendment defenses to copyright laws. 4L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 Vanderbilt Law Review 1, 3 (1987). Instead, they typically subscribe to the view that copyright law has “built-in First Amendment accommodations” – namely, the idea-expression continuum and fair use. 5Eldred v. Ashcroft, 537 US 186, 219 (2003). Criticism of the DMCA often does not recognize this different approach to freedom of speech in the copyright context, nor does it consider the free expression rights of copyright owners.

A DMCA notice applies only to the specific site it is targeted at. While “the right to upload videos to YouTube” may some day be recognized as a fundamental right, for now most people  likely realize that there are numerous ways to get your message out on the internet. Yet free speech critics of the DMCA takedown procedure seem to be unaware of these alternatives. One author even went so far as to claim that perhaps presidential candidates would have the resources to share a video elsewhere, but “most individuals would not have alternatives” if their video was removed from YouTube. 6Seltzer, supra.

YouTube may be the most popular video hosting site, but it is far from the only one out there. Here is a list of over 300 video sharing sites like YouTube. Not enough? Wikipedia has a list of video hosting sites with over a dozen more not on the first list. You don’t even have to limit yourself to video-only sites since there are many companies which offer shareable file-hosting. Here’s one list with over 30 such services– many free. Worst comes to worst, you can set up your own site and host your own content. It may cost a couple bucks a month, but does that rise to an unconstitutional restriction on free speech? Is it a violation of the First Amendment to require you to pay to host and distribute your own content just because companies exist that offer to do that for free?

Wanting the Baby and the Bath Water

The burden DMCA takedown notices place on users like Lenz often accompanies free speech criticism.

Shouldn’t we be just as worried about the completely innocent individual hit with a DMCA takedown and the process they need to go through to get their legal content back online? Given how massive the damage awards can be for simple (even incidental or accidental) copyright infringement, the fact that there is barely any real punishment for bogus copyright claims seems incredibly one-sided and unfair. 7TechDirt, Should Copyright Holders Pay for Bogus DMCA Takedowns?

Leaving aside worrying about the tragedy someone faces when they can’t have their video hosted on another person’s site for free, this type of criticism misses a key aspect of the DMCA: it does not affect the liability of the user. Complying with the takedown procedures of the DMCA only shields the service provider from secondary liability. If a user uploads copyrighted content without permission, that user has directly infringed a copyright. The DMCA does not stop the content owner from suing the user directly. A content owner can still sue the user for copyright infringement after sending a DMCA notice even after the content is taken down by the service provider since the infringing act has already been completed. The owner can even sue the user without sending a DMCA notice – it is only the service provider who receives a safe harbor from liability.

The reason content owners don’t routinely sue users is based on practical considerations – primarily the cost of lawsuits. In a way, the DMCA protects users. It gives content owners a more efficient alternative to managing piracy that doesn’t require mass lawsuits on users. Without the DMCA, a user uploading copyrighted content would still be faced with the same liability.

So how about those users, like Lenz, whose content was not infringing but removed anyway? Well, the DMCA provides a counternotice procedure for users to respond to situations where a notice was mistakenly sent – notice that requires little more than your name, identification of what was removed, a statement affirming a good faith belief that it was removed by mistake, and a signature. 817 USC § 512(g)(3). In Lenz’s case against UMG, the court also held that content owners must determine if a specific use is fair before sending a DMCA notice while allowing a user to recover damages, attorney fees, and court costs if a particular notice was sent in bad faith rather than by mistake. This seems to me a fair balance. The same procedural burden is placed on content owners to protect their copyrights from thousands of infringing uses among multiple sites as it is on the rare user like Lenz whose content was removed from a free, third-party site by mistake or bad faith.

But this, it seems, is still not enough for some critics of the DMCA takedown procedure. After the court awarded Lenz attorney’s costs in her case, one critic responded:

Compare this, of course, with the statutory damages given to those who infringe on copyrights — starting at $750 for sharing a single item and going way up from there. How is that equitable? 9TechDirt, Damages Possible, But Limited, For Bogus DMCA Takedowns.

Again, this misconstrues key aspects of the Lenz case and the DMCA. Damages are available to users who receive “bogus” takedown notices – it’s just that in Lenz’s case, there were no damages (only attorney fees and costs). While it may be difficult to come up with examples of a user who would suffer a cognizable loss as a result of their content being wrongfully taken down from a third-party site, I’d imagine that type of situation is rare. No matter to critics though, as it seems they want the baby and the bath water. They’re arguing not that the burden of responding to takedown notices is too high, but that there should be no burden at all. It’s too much trouble for the one Lenz who may have a fair use argument out of thousands of YouTube user users who do upload infringing material to say “on the contrary, my use is fair.”

One Final Note

I realize the story revolving around the “Let’s Go Crazy” video has largely run it’s course, but I think it remains relevant today. The case has become enshrined in copyright criticism as a seminal example of “attacks” on freedom of speech and creativity by the hands of the big, bad content industries. For a while it occupied center stage in the copyright debates, which struck me as odd, considering what it is: a low-quality video of a stranger’s baby dancing. But as I came to realize, the use of this video as a launching pad for copyright criticism typifies much of the imbalance between creators and users that is present both online and in academic scholarship – how do we protect the “heroic” Lenz’s from those who wish to destroy free speech?

Perhaps those one million people who have seen the video have benefited. Perhaps our society and culture have been enriched by this display of amateur creativity, and the progress of art and knowledge has been promoted. However, before fully embracing this line of thinking, we should ask who else benefits from it. Who benefits from the idea that user-generated content, which drives traffic to a site, should have stronger protections from removal. Who benefits from the idea that other sites are not an adequate alternative to YouTube? And who benefits from placing less burdens on users to stand behind whatever they upload, less burdens on the sites to police what is uploaded, and more of a burden on the content owners?

References

References
↑1 Or “kittens inspired by kittens“.
↑2 Wendy Seltzer, Free Speech Unmoored in Copyright’s Safe Harbor: Chilling Effects of the DMCA on the First Amendment, pp. 7-8 (March, 2010).
↑3 Harper & Row v. Nation Enterprises, 471 US 539 (1985).
↑4 L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 Vanderbilt Law Review 1, 3 (1987).
↑5 Eldred v. Ashcroft, 537 US 186, 219 (2003).
↑6 Seltzer, supra.
↑7 TechDirt, Should Copyright Holders Pay for Bogus DMCA Takedowns?
↑8 17 USC § 512(g)(3).
↑9 TechDirt, Damages Possible, But Limited, For Bogus DMCA Takedowns.

ACTA: Thought for FUD, Part 2

By , August 27, 2010.

This is the second installment of a point-by-point look at the proposed Anti-Counterfeiting Trade Agreement. Check out ACTA: Thought for FUD, Part 1 for more details and a comparison of Section 1 of ACTA (civil enforcement) to existing US law.

I’d like to reiterate that the purpose of this is to get a better grasp on what is in the ACTA, since there is a large amount of FUD being circulated online. The comparison to existing US law is only meant to put the scope of the treaty in context. Whether the existing law is good or bad is another discussion entirely, and the same is true about whether or not including similar provisions in an international treaty is good or bad. Indeed, in some situations, US negotiators are actually opposed to specific proposals that would mirror existing US law. 1For example, the provision allowing Parties to seize infringing goods at the border.

Comparing this section to US law is challenging for several reasons. First, I’m not as familiar with border enforcement of copyrighted works as I am with other areas of copyright law. Second, intellectual property border measures are governed by a framework involving international treaties (most notably TRIPS); chapters 6 (domestic security), 17 (copyrights), and 19 (customs duties) of the US Code; and numerous regulatory provisions. Within such an interconnected regulatory framework like this, it can be difficult to pinpoint one specific statute or regulation.

Section 2: Border Measures

The Consolidated Text Prepared for Public Release begins section 2 by laying out the scope of the border measures:

ARTICLE 2.X: SCOPE OF THE BORDER MEASURES

1. This section sets out the conditions for action by the competent authorities when goods are suspected of infringing intellectual property rights, within the meaning of this agreement, when they are imported, exported, in-transit or in other situations where the goods are under customs supervision.

2. For the purposes of this section, “goods infringing an intellectual property right” means goods infringing any of the intellectual property rights covered by TRIPS. However, Parties may decide to exclude from the scope of this section, certain rights other than trade marks, copyrights and GIs when not protected exclusively by copyright and trade mark systems and protected by sui generis systems.

3. Parties shall provide for the provisions related to border measures to be applied at least in cases of trade mark counterfeiting and copyright piracy. Parties may provide for such provisions to be applied in other cases of infringement of intellectual property rights.

Now, let’s take a look at the individual provisions.

ACTA Provision Corresponding US Law
ARTICLE 2.X: DE MINIMIS PROVISION

Parties may exclude from the application of this Section small quantities of goods of a non-commercial nature contained in travelers’ personal luggage or sent in small consignments.

 19 USC § 1321. Administrative exemptions

(a) Disregard of minor discrepancies in collection of taxes and duties; admission of articles free of duty or tax; limit on amount of exemption
The Secretary of the Treasury, in order to avoid expense and inconvenience to the Government disproportionate to the amount of revenue that would otherwise be collected, is authorized, under such regulations as he shall prescribe, to—
[…]
(2) admit articles free of duty and of any tax imposed on or by reason of importation, but the aggregate fair retail value in the country of shipment of articles imported by one person on one day and exempted from the payment of duty shall not exceed an amount specified by the Secretary by regulation, but not less than—
(A) $100 in the case of articles sent as bona fide gifts from persons in foreign countries to persons in the United States ($200 in the case of articles sent as bona fide gifts from persons in the Virgin Islands, Guam, and American Samoa), or
(B) $200 in the case of articles accompanying, and for the personal or household use of, persons arriving in the United States […] or
(C) $200 in any other case.

17 USC § 602: Infringing importation or exportation of copies or photocopiers

(3) Exceptions.— This subsection does not apply to—
[…]
(B) importation or exportation, for the private use of the importer or exporter and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States or departing from the United States with respect to copies or phonorecords forming part of such person’s personal baggage;
(3) Exceptions.— This subsection does not apply to—
[…]
(B) importation or exportation, for the private use of the importer or exporter and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States or departing from the United States with respect to copies or phonorecords forming part of such person’s personal baggage

One of the biggest fears when people heard “intellectual property” and “border measures” was that Customs officials would begin searching iPods for pirated materials.
ARTICLE 2.X: PROVISION OF INFORMATION FROM THE RIGHT HOLDER

Each Party shall permit the competent authorities to request a right holder to supply relevant information to assist the competent authorities in taking border measures provided for under this Section. Each Party may also allow a right holder to supply relevant information to the competent authorities.

 19 CFR § 133.32. Application to record copyright.

An application to record a copyright to secure customs protection against the importation of infringing copies or phonorecords shall be in writing addressed to the IPR & Restricted Merchandise Branch, U.S. Customs and Border Protection, 1300 Pennsylvania Avenue, Washington, DC 20229, and shall include the following information:
(a) The name and complete address of the copyright owner or owners;
(b) If the applicant is a person claiming actual or potential injury by reason of actual or contemplated importations of copies or phonorecords of the eligible work, a statement setting forth the circumstances of such actual or potential injury;
(c) The country of manufacture of genuine copies or phonorecords of the protected work;
(d) The name and principal address of any foreign person or business entity authorized or licensed to use the protected work, and a statement as to the exclusive rights authorized;
(e) The foreign title of the work, if different from the U.S. title; and
(f) In the case of an application to record a copyright in a sound recording, a statement setting forth the name(s) of the performing artist(s), and any other identifying names appearing on the surface of reproduction of the sound recording, or its label or container.
ARTICLE 2.6: APPLICATION BY RIGHT HOLDER

Option 1
1. Each Party shall provide procedures for import and in-transit shipments and may provide procedures for export shipments, by which right holders may request the competent authorities to suspend release 24 of suspected counterfeit trademark goods and suspected pirated copyright goods into free circulation.

Option 2
1. Each Party shall provide procedures by which right holders may request the competent authorities to suspend the release of goods suspected of infringing intellectual property rights.
2. The competent authorities shall require a right holder requesting the procedures described in paragraph 1 to provide adequate evidence to satisfy themselves that, under the laws of the Party providing the procedures, there is prima facie an infringement of the right holder’s intellectual property right and to supply sufficient information that may reasonably be expected to be within the right holder’s knowledge to make the suspected infringing goods reasonably recognizable by the competent authorities. The requirement to provide sufficient information shall not unreasonably deter recourse to the procedures described in paragraph 1.
3. Each Party shall provide for applications to suspend the release of suspected infringing goods that apply to all goods under customs control in its territory and remain applicable to multiple shipments. Each Party may provide that, at the request of the right holder, the application to suspend the release of goods may apply to selected points of entry and exit under customs control. These applications for suspension shall remain applicable for a period of not less than one year from the date of application, or the period of protection of the relevant intellectual property rights under the laws of the Party providing border measures under this Section, whichever is shorter. Each Party may permit a right holder to specify that an application to suspend remain applicable for a period of less than one year.
4. The competent authorities shall inform the applicant within a reasonable period whether they have accepted the application. Where the competent authorities have accepted the application, they shall also make known to the applicant the period of validity of the application.
5. Each Party may provide, where the applicant has abused the process, or where there is due cause, that an application may be denied, suspended, or voided.

 17 USC § 603. Importation prohibitions: Enforcement and disposition of excluded articles

(a) The Secretary of the Treasury and the United States Postal Service shall separately or jointly make regulations for the enforcement of the provisions of this title prohibiting importation.
(b) These regulations may require, as a condition for the exclusion of articles under section 602—
(1) that the person seeking exclusion obtain a court order enjoining importation of the articles; or
(2) that the person seeking exclusion furnish proof, of a specified nature and in accordance with prescribed procedures, that the copyright in which such person claims an interest is valid and that the importation would violate the prohibition in section 602; the person seeking exclusion may also be required to post a surety bond for any injury that may result if the detention or exclusion of the articles proves to be unjustified.
(c) Articles imported in violation of the importation prohibitions of this title are subject to seizure and forfeiture in the same manner as property imported in violation of the customs revenue laws. Forfeited articles shall be destroyed as directed by the Secretary of the Treasury or the court, as the case may be.
ARTICLE 2.7: EX-OFFICIO ACTION

Option 1
1. Each Party may provide that its customs authorities may act upon their own initiative, to suspend the release of suspected counterfeit trademark goods or suspected pirated copyright goods with respect to imported, exported, or in-transit goods including suspected counterfeit trademark goods or suspected pirated copyright goods admitted to, withdrawn from, or located in free trade zones.

Option 2
1. Each Party shall provide that its competent authorities may act upon their own initiative, to suspend the release of goods suspected of infringing an intellectual property right.
2. Each Party may also provide that its customs authorities may act, upon their own initiative, to suspend the release of goods suspected of infringing other intellectual property rights

 19 CFR § 133.42. Infringing copies or phonorecords.

(a) Definition. Infringing copies or phonorecords are “piratical” articles, i.e., copies or phonorecords which are unlawfully made (without the authorization of the copyright owner).
(b) Importation prohibited. The importation of infringing copies or phonorecords of works copyrighted in the U.S. is prohibited by Customs. The importation of lawfully made copies is not a Customs violation.
(c) Seizure and forfeiture. The port director shall seize any imported article which he determines is an infringing copy or phonorecord of a copyrighted work protected by Customs. The port director also shall seize an imported article if the importer does not deny a representation that the article is an infringing copy or phonorecord as provided in §133.43(a). In either case, the port director also shall institute forfeiture proceedings in accordance with part 162 of this chapter. Lawfully made copies are not subject to seizure and forfeiture by Customs.
ARTICLE 2.9: SECURITY OR EQUIVALENT ASSURANCE

Each Party shall provide that its competent authorities shall have the authority to require a right holder requesting procedures described under Article 2.6 to provide a reasonable security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. Each Party shall provide that such security or equivalent assurance shall not unreasonably deter recourse to these procedures. Each Party may provide that such security may be in the form of a bond conditioned to hold the defendant harmless from any loss or damage resulting from any suspension of the release of the goods in the event the competent authorities determine that the good is not a counterfeit trademark good or a pirated copyright good. Only in exceptional circumstances or pursuant to a judicial order may a Party permit a defendant to post a bond or other security to obtain possession of suspected counterfeit trademark goods or suspected pirated copyright goods.

 19 CFR § 133.43. Procedure on suspicion of infringing copies.

(b) Notice to copyright owner. If the importer of suspected infringing copies or phonorecords files a denial as provided in paragraph (a) of this section, the port director shall furnish to the copyright owner the following information, if available, within 30 days, excluding weekends and holidays, of the receipt of the importer’s denial:
[…]
(6) Notice that the imported article will be released to the importer unless, within 30 days from the date of the notice, the copyright owner files with the port director:
[…]
(ii) A bond, in the form and amount specified by the port director, conditioned to hold the importer or owner of the imported article harmless from any loss or damage resulting from Customs detention in the event the Commissioner or his designee determines that the article is not an infringing copy prohibited importation under section 602 of the Copyright Act of 1976 (17 U.S.C. 602) (See part 113 of this chapter).
ARTICLE 2.10: DETERMINATION AS TO INFRINGEMENT

Each Party shall adopt or maintain a procedure by which competent authorities may determine, within a reasonable period of time after the initiation of the procedures described under Article 2.X or 2.X, whether the suspected infringing goods infringe an intellectual property right.

 19 CFR § 133.43. Procedure on suspicion of infringing copies.

(a) Notice to the importer. If the port director has any reason to believe that an imported article may be an infringing copy or phonorecord of a recorded copyrighted work, he shall withhold delivery, notify the importer of his action, and advise him that if the facts so warrant he may file a statement denying that the article is in fact an infringing copy and alleging that the detention of the article will result in a material depreciation of its value, or a loss or damage to him. The port director also shall advise the importer that in the absence of receipt within 30 days of a denial by the importer that the article constitutes an infringing copy or phonorecord, it shall be considered to be such a copy and shall be subject to seizure and forfeiture.
ARTICLE 2.11: REMEDIES

1. Each Party shall provide its competent authorities with the authority to order the destruction of goods following a determination under Article 2.10 that the goods are infringing. In cases where such goods are not destroyed, each Party shall ensure such goods are disposed of outside the channels of commerce in such a manner as to avoid any harm to the right holder.
2. In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit the release of goods into the channels of commerce.
3. Each Party may provide its competent authorities with the authority to impose administrative penalties following a determination under Article 2.10 that the goods are infringing.

 19 CFR § 133.43. Procedure on suspicion of infringing copies.

(a) Notice to the importer. If the port director has any reason to believe that an imported article may be an infringing copy or phonorecord of a recorded copyrighted work, he shall withhold delivery, notify the importer of his action, and advise him that if the facts so warrant he may file a statement denying that the article is in fact an infringing copy and alleging that the detention of the article will result in a material depreciation of its value, or a loss or damage to him. The port director also shall advise the importer that in the absence of receipt within 30 days of a denial by the importer that the article constitutes an infringing copy or phonorecord, it shall be considered to be such a copy and shall be subject to seizure and forfeiture.
ARTICLE 2.12: FEES

1. Each Party shall provide that any application fee, storage fee, or destruction fee to be assessed by competent authorities in connection with procedures described in this Section shall not be used to unreasonably deter recourse to these procedures.

Fees for registering with Customs are set by regulation. While I couldn’t find any explicit provision governing the reasonableness of fees, the US Customs and Border Protection agency generally considers what burden fees have when setting them. See, for example, Notice and request for comments on Agency Information Collection Activities: Regulations Relating to Recordation and Enforcement of Trademarks and Copyrights.
ARTICLE 2.13: DISCLOSURE OF INFORMATION

Without prejudice to a Party’s laws pertaining to the privacy or confidentiality of information:
(a) Each Party may authorize its competent authorities to provide right holders with information about specific shipments of goods, including the description and quantity, to assist in the detection of infringing goods;
(b) Each Party may authorize its competent authorities to provide right holders with information about goods including, but not limited to, the description and quantity of the goods and the name and address of the consignor, importer, exporter or consignee, and, if known, the country of origin and name and address of the manufacturer of the goods to assist in the determination under Article 2.10 of whether goods infringe rights covered by this Section;
(c) Unless a Party has granted authority under subparagraph (b), at least in the case of imported goods, where competent authorities have seized or, in the alternative, made a determination under Article 2.10 that goods infringe rights covered by the section, each Party shall authorize its competent authorities to provide right holders within 30 days of seizure or determination, with information about goods including, but not limited to, the description and quantity of the goods and the name and address of the consignor, importer, exporter, or consignee, and, if known, the country of origin and name and address of the manufacturer of the goods.

 19 CFR § 133.43. Procedure on suspicion of infringing copies.

(a) Notice to the importer. If the port director has any reason to believe that an imported article may be an infringing copy or phonorecord of a recorded copyrighted work, he shall withhold delivery, notify the importer of his action, and advise him that if the facts so warrant he may file a statement denying that the article is in fact an infringing copy and alleging that the detention of the article will result in a material depreciation of its value, or a loss or damage to him. The port director also shall advise the importer that in the absence of receipt within 30 days of a denial by the importer that the article constitutes an infringing copy or phonorecord, it shall be considered to be such a copy and shall be subject to seizure and forfeiture.
(b) Notice to copyright owner. If the importer of suspected infringing copies or phonorecords files a denial as provided in paragraph (a) of this section, the port director shall furnish to the copyright owner the following information, if available, within 30 days, excluding weekends and holidays, of the receipt of the importer’s denial:
(1) The date of importation;
(2) The port of entry;
(3) A description of the merchandise;
(4) The quantity involved;
(5) The country of origin of the merchandise; and
(6) Notice that the imported article will be released to the importer unless, within 30 days from the date of the notice, the copyright owner files with the port director:
(i) A written demand for the exclusion from entry of the detained imported article; and
(ii) A bond, in the form and amount specified by the port director, conditioned to hold the importer or owner of the imported article harmless from any loss or damage resulting from Customs detention in the event the Commissioner or his designee determines that the article is not an infringing copy prohibited importation under section 602 of the Copyright Act of 1976 (17 U.S.C. 602) (See part 113 of this chapter).
(c) Samples available to the copyright owner. At any time following presentation of the merchandise for Customs examination, but prior to seizure, Customs may provide a sample of the suspect merchandise to the owner of the copyright for examination or testing to assist in determining whether the article imported is a piratical copy. To obtain a sample under this section, the copyright owner must furnish Customs a bond in the form and amount specified by the port director, conditioned to hold the United States, its officers and employees, and the importer or owner of the imported article harmless from any loss or damage resulting from the furnishing of a sample by Customs to the copyright owner. Customs may demand the return of the sample at any time. The owner must return the sample to Customs upon demand or at the conclusion of the examination or testing. In the event that the sample is damaged, destroyed, or lost while in the possession of the copyright owner, the owner shall, in lieu of return of the sample, certify to Customs that: “The sample described as [insert description] provided pursuant to 19 CFR 133.43(c) was (damaged/destroyed/lost) during examination or testing for copyright infringement.
Article 2.X: LIABILITY OF THE COMPETENT AUTHORITIES

1. With respect to the border measures covered by this Section, each Party shall provide measures concerning the liability of competent authorities in the execution of their duties.

Option 1
2. The acceptance of an application on its own shall not entitle the right-holder to compensation in the event that goods infringing an intellectual property right are not detected by a customs office and are released or no action is taken to detain them.

Option 2
2. Each Party may limit remedies sought by a right holder or other persons against a Party’s competent authorities as a result of mere acceptance of an application under Article 2.6, where the competent authorities release, or fail to detect, detain, or take action against or in connection with, goods that may infringe IPR covered by this Section.
3. The competent authorities shall not be liable towards the persons involved in the situations referred to in Article 2.6 for damages suffered by them as a result of the authority’s intervention, except where provided for by the law of the Party in which the application is made or in which the loss or damage is incurred.

 19 USC § 1513. Customs officer’s immunity

No customs officer shall be liable in any way to any person for or on account of—
(1) any ruling or decision regarding the appraisement or the classification of any imported merchandise or regarding the duties, fees, and taxes charged thereon,
(2) the collection of any dues, charges, duties, fees, and taxes on or on account of any imported merchandise, or
(3) any other matter or thing as to which any person might under this chapter be entitled to protest or appeal from the decision of such officer.

Generally, federal government officials are not liable for actions arising out of their duties unless Congress has provided an exception by law. I was unable to find any such exception for failure to detect infringing goods by US customs officials. I’ve included the above provision which seems most on point. Other nations may not follow the doctrine of sovereign immunity, so this provision would ensure that customs officials are exempted from liability in these cases. 2India, for example, has regulations that mirror the proposed ACTA provision.

Next week, we’ll take a look at Section 3: Criminal Enforcement.

References

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