Tag: fair use

Categories
Copyright

Publishers v. Audible: An Army of Red Herrings

a gavel lying on a desk in front of booksAudible has now filed its response to the publishers’ request for a preliminary injunction—twice. It filed the exact same brief to argue that it shouldn’t be preliminarily enjoined (Dkt. 34) and to argue that the complaint should be dismissed for failure to state a claim (Dkt. 41). Unfortunately for Audible, the repetition of fallacious arguments doesn’t make them true. You may have heard that a group of geese is a “gaggle” and that a group of crows is a “murder.” Groups of animals are often known by somewhat peculiar collective nouns. Perhaps less well-known is that a group of herrings—those foraging fish that favor shallow, temperate seas—is called an “army.” Audible’s response includes so many irrelevant distractions that it can accurately be described as an army of red herrings.

Audible argues that this should be a contract dispute, not a copyright case, and that Captions is nevertheless fair use—no matter who is doing the copying. Indeed, the one thing that Audible apparently wants to avoid discussing in detail is the one thing that I find interesting in this case, namely, who directly causes the various prima facie infringements of the publishers’ rights to occur. Audible’s response makes clear that it would rather jump straight to the fair use analysis without first analyzing exactly who is causing what to occur. But that fair use analysis only makes sense if we know who is doing the copying. The factors would be applied differently to Amazon, Audible, or its users, and Audible’s response elides such distinctions even though they are crucial.

In my last post about this case, I discussed how Audible was likely to cite cases such as Sony and Cablevision in arguing that it doesn’t make the copy, the user does, and that’s fair use. Remarkably, Audible does suggest that the user makes the copy, but it relegates this claim to the preliminary, factual background section of the brief—it’s not actually part of its main argument section. But this does give us some idea of what Audible will argue once it’s forced to clarify its theory of the case. Perhaps most interesting of all, Audible explains how the third-party Amazon Transcribe feature operates within Captions, and it’s less favorable to Audible than I had originally suggested.

Audible explicitly states that “a listener generates Audible Captions.” So that tells us who Audible thinks is doing the copying—and it’s not Audible. There are no citations to any case law, and there’s no explanation of why it’s the user doing the copying. Just the ipse dixit that it’s so. Audible then explains that the transcriptions are not, as I suggested in my last post, simply done in real time via Amazon Transcribe. That may be true in part, but the entire audiobook file is also sent to Amazon where it is converted into text and then sent back to the user. And that entire transcription is then stored on the user’s device, albeit in an encrypted file. Moreover, once one user requests a transcription, a cached copy of the file is then stored for 90 days on the server, and any subsequent user requesting a transcription of the same work in that time frame will get the cached copy—not a new transcription.

This business with the cached copy opens up another can of copyright worms, one that Audible presumably is not looking forward to discussing. Not only is there a full copy of the text on the user’s device, but there’s also another copy on the server. And there’s no doubt that both copies are fixed since there’s no argument that they exist for a mere transitory duration. Furthermore, the fact that the same source copy is being sent to different users destroys any claim under Cablevision that Audible might make that these are not public distributions. The Second Circuit there held that the transmissions weren’t public since there was a unique source copy that was used for each transmission to an individual user. While I don’t see how that holding survives Aereo, the cached copy here takes that argument off of the table.

Audible spills much ink arguing that Captions is not a replacement for the text of the underlying book since the experience with the same text of the transcription is different. For example, unlike an e-book, Captions displays at most 20 words at a time that is synchronized to the audio. And this “audio-first experience” has different punctuation, there are no page numbers, and the user can only scroll through the text by first scrolling through the audio. Of course, it’s true that there are differences between the user experience with Captions and an e-book, but these differences are irrelevant to the publishers’ prima facie copyright claims. Just because the user experiences the work differently doesn’t mean that there hasn’t been all sorts of actionable copying enabling that experience. These differences may be relevant to fair use, but not one of them matters for determining who is doing what.

After throwing its users under the bus by claiming that they make the copies with Captions, Audible sidesteps any actual analysis of that issue by arguing instead that the publishers failed to properly plead their copyright claims. The crux of Audible’s argument is that, since it has license agreements with the publishers to sell and produce audiobooks, the publishers have waived their right to sue for copyright infringement to the extent Audible’s conduct is licensed. Audible then argues that the burden is on the publishers to plead the licenses and conduct that exceeds their scope (or a violation of their conditions precedent) in order to state a copyright claim. And since the publishers didn’t plead any reason why the licenses wouldn’t permit Audible’s copying of the audiobooks, Audible argues that the case against it should be dismissed.

Audible correctly states the law, but not its application here. When the existence of a license is not in question, the copyright owner bears the burden of proving that the alleged infringer exceeded its scope or breached its condition. And Audible is certainly correct in arguing that it is a “licensed, paying user of the audiobooks from and for which it created Audible Captions.” Audible has licenses for the audiobooks, and the publishers didn’t plead them. The fallacy of this argument, however, is that the publishers’ copyright claims are not directed to those audiobook licenses—or even to those audiobooks. The publishers only claim infringement of the underlying works, that is, the literary works from which the sound recordings of the audiobooks are derived. Audible is probably violating various rights in the audiobooks as well, but the publishers have not brought those claims.

That the publishers are suing over the original books, and not the derivative audiobooks, is clear from the face of the complaint. The publishers charge Audible with “unlawfully creating derivative works of, reproducing, distributing, and publicly displaying unauthorized copies of the Works,” and the works identified are the registered, literary works of which the publishers are legal or beneficial owners. The complaint explicitly alleges that “Audible did not seek a license for the creation and provision of the transcriptions provided to consumers” and that “it has only been authorized to deliver the work in audiobook format.” If Audible turned an audiobook into a movie, the publishers would not have to plead that Audible thus exceeded the scope of its license for the simple reason that there was no such license to create the derivative movie in the first place.

The fact that the allegedly infringing transcriptions have as their source the licensed audiobooks doesn’t matter; what matters is that the transcriptions violate the publishers’ rights in the underlying literary works. For the bulk of audiobooks at issue that Audible didn’t create, i.e., the ones that were provided by the publishers or third parties, Audible had no license to create derivative works of any kind. And for the few audiobooks that Audible itself may have created under license—though Audible noticeably doesn’t claim to have a license to create derivatives of any of the specific works-in-suit—it only had a license to create the derivative sound recordings embodied in the audiobooks. Audible’s hand-waving about licenses is easily dismissed because, quite simply, there was never any license to create the derivative literary works over which it is being sued.

Despite the army of red herrings summoned to obfuscate its theory of exactly who is doing the copying in this case, the burden falls squarely on Audible to establish the existence of any license that may justify its actions. And the fact that Audible failed to mention any such license speaks volumes. Audible instead jumps straight to fair use, making the incredible claim that providing the text of the audiobook is somehow completely different than providing the text of the underlying book itself because the former allows users to “understand and engage with the audiobook they purchased.” I’ll leave the absurdity of Audible’s fair use argument for another day, but for now I’d like the court to sort out the preliminary issue of who is doing what. And that appears to be a conversation that Audible would rather not have.

Categories
Copyright

Audible’s Planned Caption Service is Not Fair Use

a shelf full of booksLate last month, a group of publishers filed a complaint against Audible in the Southern District of New York asking the court to enjoin the audiobook distributor’s launch of a new audio-to-text transcription service. Although Audible has yet to file a response, a statement from the company—a subsidiary of Amazon since 2008—hints at a fair use defense based on the service’s supposed educational purpose. Unfortunately for Audible, its unauthorized reproduction, distribution, adaptation, and display of the publishers’ copyright-protected works is unlikely to survive a sound fair use analysis.

New Captioning Feature Infringes Publishers’ Rights

Audible is the world’s largest distributor of digital audiobooks and “spoken-word entertainment,” making available to its subscribers hundreds of thousands of audio programs based on works licensed from publishers, broadcasters, entertainers, individual authors, and other copyright owners. For subscribers who want a cross-format experience where they can simultaneously read and listen to the text, Audible already offers a feature called Immersion Reading. Touted as an educational tool that can help with reading comprehension, Immersion Reading is made possible by Audible securing licenses for both the audio recording and text of the work—and subscribers are required to purchase both an audiobook and a Kindle edition ebook.

In July of 2019, Audible announced it would be adding an “Audible Captions” feature to its mobile app. The service utilizes Amazon’s transcription technology to provide Audible subscribers with text for a select number of works in Audible’s audio program catalog. When listening to a predetermined “caption-ready” work, a subscriber would have the ability to activate the transcription technology, which then generates and distributes text to the subscriber’s device in a matter of milliseconds while the audio continues to play.

As the publishers’ complaint explains, the Audible Captions service converts the publishers’ works into unauthorized and often error-ridden “new” digital books and then distributes them to its customers without permission. Unlike its Immersion Reading service, Audible has not secured a license to copy, repurpose, distribute, or display this text and has no intention of compensating publishers for this cross-format use that would compete directly with and devalue existing physical books and ebooks. Accordingly, the publishers’ complaint alleges direct, contributory, and vicarious infringement and asks the court to enjoin Audible from reproducing, adapting, distributing, or displaying the publishers’ works.

Fair Use Defense Falls Flat

While Audible’s response will likely include a variety of defenses (for an in-depth look into what Audible might argue on the merits of the publishers’ prima facie infringement case, see Devlin Hartline’s recent post), public statements by the company have focused on the purported educational purpose of the captioning service, setting the stage for a fair use affirmative defense. Despite lofty claims of the educational objectives of its service, Audible Captions would clearly serve entertainment purposes as well, profiting Audible while undermining the legitimate and existing market for ebooks and other cross-platform services.  A closer look at the four fair use factors reveals Audible’s tenuous position.

1. Purpose and Character of the Use

 

The first factor—and the factor that is most relevant to Audible’s statements on educational intentions—involves determining the purpose of the unauthorized use. Section 107 of the Copyright Act provides a non-exclusive list of a few traditional uses—news reporting, comment, criticism, teaching, research, and scholarship—that will usually tip the scales in favor of the alleged infringer. However, the language is clear that determining “whether such use is of a commercial nature or is for nonprofit educational purposes” is integral to a proper factor-one analysis.

In its press release response to the publishers’ complaint, Audible describes its captioning service as a “free initiative” and a “free, new technology.” But it’s critical to understand—especially in the age of pervasive and organized digital infringement—that offering something to a customer for free that may have an educational function does not mean the activity is nonprofit. Indeed, the online platforms and services we use free of charge on a daily basis distribute massive amounts of content that could be deemed educational, all the while raking in profits through ad revenue and data collection. While Audible’s business model is not the same as the social media and search engine giants that rule cyberspace, it is a commercial business that makes money from the sale of audiobooks and subscriptions, and it’s attempting to justify infringement with a familiar fair use refrain.

If Audible Captions is allowed to launch, Audible would no longer have to secure cross-format licenses for its existing Immersion Reading service. It would essentially replace its own product—more on this later—with a version designed to allow it to skirt licensing requirements and profit at the expense of publishers and other copyright owners. Providing an audio-to-text feature without having to compensate copyright owners would establish a clear commercial advantage for Audible, and this type of misappropriation is not what fair use is meant to protect.

It’s also important to note that, at a time when courts are citing transformative fair use to excuse more and more instances of misappropriation, Audible Captions does not transform the underlying work and serves no transformative purpose. Audible is reproducing the text of a literary work for the purpose of reading—whether for education or for entertainment—and that is the exact purpose of the underlying works of authorship. As the Second Circuit stated in Authors Guild v. Hathitrust, “a transformative work is one that serves a new and different function from the original work and is not a substitute for it.” There’s nothing new or different about Audible Caption’s output.

2. Nature of the Copyrighted Work

 

The second factor asks whether the underlying work is a fact-heavy informational work or a work of creative expression and entertainment, giving more fair use leniency to the former since there is a greater need to disseminate factual works. In the case of Audible Captions, most (if not all) of the books Audible lists in its promotional materials are literary works of fiction. Despite a few older titles that have fallen into the public domain, most of the books whose text would be made available through Audible Captions are copyright-protected works of creative expression. This factor weighs clearly against a fair use determination.

3. Amount and Substantiality of the Portion Used

 

Like the second factor in this case, this consideration is not complex and weighs quite clearly against a fair use finding. Audible Captions reproduces the entire text of the underlying work. While it may only display a certain amount of text on the screen of a device at a time, subscribers have the ability to pause, rewind, and otherwise jump to any part of the works which will then be transcribed and delivered to their device.

Some early commentators on the Audible Captions technology have used the word “snippet” to describe what subscribers are able to access. This is probably an attempt to liken the service to the Google Books project, which displayed limited amounts of text to a user and was found to be fair use. But Google Books never allowed users to read a work in its entirety, which is exactly what Audible’s service does.

4. Effect of the Use on the Potential Market or Value of the Underlying Work

 

Notwithstanding arguments about the educational and altruistic purpose of its service, Audible cannot survive a sensible analysis of the fourth factor for one very simple reason: their own Immersion Reading service proves that a legitimate market for cross-format use already exists and will be harmed by a free alternative. As mentioned earlier, Immersion Reading depends on Audible licensing both the audiobook and text from publishers, and the launch of Audible Captions represents a way for the company to provide a similar—yet poorer quality—product to its costumer without taking a license.

In the seminal fair use case Sony v. Universal, the Supreme Court discusses the fourth factor and asserts that in order for a noncommercial use to be disqualified as fair, there must be a showing that the use would be harmful and adversely affect the potential market for the copyrighted work. Justice Stevens explains:

Actual present harm need not be shown; such a requirement would leave the copyright holder with no defense against predictable damage. Nor is it necessary to show with certainty that future harm will result. What is necessary is a showing by a preponderance of the evidence that some meaningful likelihood of future harm exists.

And so even in the unlikely event that a court were to find Audible’s service to be a noncommercial use, an existing market for the publishers’ works and the licenses already entered into for the Immersion Reading service surely satisfy the test for future harm.

Furthermore, ebooks and other cross-format offerings are readily available from authors and publishers, and massive amounts of research, time, and money go into creating the best user experience. Not only would Audible Captions strip copyright owners and creators of deserved revenue, but it would deprive them of the ability to control the look and feel of their works in the digital word. Audible Captions would undermine this already vibrant digital book market by offering an inferior substitute outside of the creative control of those who actually care about its presentation and consumption.

With a readily available substitute—even an inferior one—legitimate ebooks and other cross-format services will be devalued and fewer resources will be reinvested in their development. Publishers will lose, authors will lose, and perhaps most importantly, consumers and the public will lose if this market is compromised.

Conclusion

Despite talk of “a mission that transcends financial success,” it is crucial to recognize that Audible (and ultimately Amazon) is the only one that will benefit from the introduction of the Audible Captions service. If serving those in need of literacy tools was the true objective, more attention should be paid to developing technology that doesn’t generate erroneous and confusing text. At a time when the boundaries of fair use seem to be spreading in every direction, the unauthorized for-profit appropriation of entire works of creative expression cannot be part of the expansion.

Categories
Copyright

Arts & Entertainment Advocacy Clinic Students File Amicus Brief in Brammer v. Violent Hues

a gavel lying on a desk in front of booksBy Rachelle Mortimer & Grant Ossler*

The Arts & Entertainment Advocacy Clinic at Antonin Scalia Law School recently filed an amicus brief in the Brammer v. Violent Hues case that is on appeal in the Fourth Circuit. The Clinic provides a unique opportunity for students interested in intellectual property and entertainment law. Each semester, students participating in the Clinic are able to gain practical experience working with clients and industry professionals on various projects related to copyright law and policy.

One organization that the Clinic often works with is Washington Area Lawyers for the Arts (WALA), which helps to provide legal services for local artists through volunteer attorneys who take on cases pro bono or at a reduced rate. By working with WALA to hold legal intake Clinics and take on pro bono cases, Clinic students are able to understand how copyright law affects individual artists. It is this understanding that led the Clinic to file the amicus brief in order to protect the rights of artists and prevent a dangerous expansion of the fair use defense to infringement.

Working with local attorneys from Protorae Law, students from the Clinic drafted portions of the amicus brief to explain how the U.S. District Court for the Eastern District of Virginia eviscerated the meaning and analysis of fair use under the Copyright Act.

Case Background

In 2016, the owner of defendant Violent Hues found a photograph online, copied it, cropped it, and posted it on a website that his organization created for its annual film festival. The photo in question was first posted to the photographer’s personal website, as well as to several online image-sharing websites. Violent Hues created the website to guide festival goers and provide information about the local area for filmmakers and festival attendees.

The owner of Violent Hues claimed he did not see a copyright notice on the photo when he used it, believing the photo was “a publicly available photograph.” Plaintiff Russell Brammer sent a demand letter, and upon receipt of the letter, Violent Hues removed the photo from its website. Brammer brought suit against Violent Hues claiming two causes of action: (1) copyright infringement under 17 U.S.C. § 504(b), and (2) removal and alteration of copyright management information under 17 U.S.C. § 1202.

District Court Decision

Brammer did not respond to arguments regarding count two, therefore the district court considered that claim abandoned. The district court granted summary judgment in favor of Violent Hues on count one, deeming the use of the photo was fair use per the Copyright Act. Fair use is codified in the Copyright Act and guides us through four factors of consideration when conducting an analysis to determine whether a use is a fair use. These factors are:

(1) The purpose and character of the use, including whether such use is of a commercial nature …; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C.§ 107.

Unfortunately, the district court eviscerated any meaning to fair use under copyright law. In its examination of purpose and character, the district court determined Violent Hues’ use was “transformative in function and purpose” because Violent Hues’ use of the photo was informational: “to provide festival attendees with information regarding the local area.” The district court distinguished this from Brammer’s use, which was “promotional and expressive.” Additionally, the district court determined the use was non-commercial because the photo was not used for advertising or to generate revenue. Regrettably, this is as far as the transformative analysis went.

In the district court’s analysis of the second factor, fair use weighed in favor of Violent Hues again because the photo was factual in nature and “fair use is more likely to be found in factual works than in fictional works.” The district court acknowledged that Brammer incorporated creative elements in his photo (e.g., lighting and shutter speed), but ultimately held that because it was a “factual depiction of a real-world location,” it was purely factual content. The district court determined this without regard to creativity, though. The photo itself is a time-lapse photo of the Adams Morgan neighborhood of Washington, D.C.

In examining the third factor of fair use, the district court determined that Violent Hues did not use any more of the photo than was necessary, and therefore this factor substantiality weighed in favor of Violent Hues. Keep in mind, though, that the photo in question was merely cropped.

Lastly, the district court concluded that because there was no evidence that Violent Hues’ use had any effect on the potential market for the photo, the fourth factor also weighed in favor of Violent Hues. To support its decision, the district court stated: “The Court’s task is to determine whether the defendant’s use of the plaintiff’s works would materially impair the marketability of the works and whether it would act as a market substitute.” The district court arrived at this decision despite Brammer testifying he had been compensated for the photo six times—two times after Violent Hues’ infringement.

And thus, we have summary judgment for Violent Hues under a non-comprehensive fair use analysis.

Amicus Brief Summary and Commentary

The purpose of the Clinic’s amicus brief is to assist the court with regard to a proper, comprehensive fair use analysis, and to prevent the possible harm that an overly broad interpretation of the fair use defense could bring.

In examining the first factor of fair use, “purpose and character”, the district court unfortunately dedicated approximately two sentences to the analysis of why Violent Hues’ use was transformative in “function and purpose.” The district court simply stated that because the use was “informational,” and not “expressive” like Brammer’s use, the use was thus transformative. The proper examination requires looking at whether the new use adds something new “with a further purpose or different character.” As Judge Leval stated in his seminal article, Toward a Fair Use Standard, a different purpose or character, constituting a transformative use, is one that “alter[s] the first with new expression, meaning, or message,” and “employs the quoted matter in a different manner or for a different purpose from the original, thus transforming it.”

The district court failed to understand that Violent Hues’ use merely superseded Brammer’s. Violent Hues cropped the top and bottom of Brammer’s photo then posted it to its website with the purpose of showing the Adams Morgan neighborhood. A “wholesale taking” of the heart of the work, without adding additional value or meaning, is not transformative. The erroneous conclusion reached on this first factor destroys any meaning to transformative use and effectively erodes the exclusive rights held by copyright owners. To further illustrate this point, if the district court’s analysis is upheld, an author who writes a book regarding his life as president and his controversial pardon of a former political figure would have no recourse against a film producer who takes the author’s content verbatim and makes it into a movie. Why? Because the book is merely “informational,” while the film is “expressive” and thus transformative in function and purpose.

The district court’s opinion also addressed the role of “good faith” in a fair use defense and concluded that Violent Hues had acted in good faith when it found Brammer’s photo online because a copyright notice was not attached. This is not the law. Copyright protection under U.S. law is automatic from the moment of creation and notice need not be affixed to the published work for that protection to adhere. The good faith of alleged infringers is not frequently considered in fair use cases because “good faith” is not a statutory factor in the fair use analysis, and this has led to a lack of clear precedent on this point.

We proposed in our brief that if an alleged infringer acts in good faith, the court should neither weigh this factor for or against a finding of fair use. However, if an alleged infringer is shown to have acted in bad faith, using an artist’s work with the purpose of usurping the exclusive rights under 17 U.S.C. § 106, it should be weighed against a finding of fair use. Good faith should not weigh in favor of fair use because the purpose of the fair use defense is to protect First Amendment rights and allow limited uses of copyrighted works. On the other hand, bad faith should be weighed against a finding of fair use because trying to usurp an artist’s rights or using a work without paying for it does not align with the important purposes of the fair use defense.

Violent Hues did not act in good faith, but it also did not act in bad faith. Thus, the good faith factor should not have been considered at all in this case. A copyright notice is not required for a photograph to be protected. If the court allows Violent Hues’ lack of education on copyright law to be considered good faith, this would encourage internet users to remain ignorant of copyright law and infringe upon works more frequently. For these reasons, we asked the Fourth Circuit to clarify the role of the good faith factor in a fair use analysis.

The other factor our amicus brief addressed was the second factor of the fair use analysis. Digging into this factor, we asked that the court to clarify the analytical framework for evaluating the nature of the copyrighted work. In clarifying this framework, parties and other courts will be better able to determine when factual elements of copyrighted works are outweighed by the creative elements of such works. Brammer’s photo, specifically, is an appropriate vehicle for this since it combines creative and factual elements. Our brief articulates that a court can borrow from more familiar concepts of trademark’s nominative fair use and the defense of necessity to the tort of trespass on real property (noting that the prevailing theory of copyright is a property). Such theories provide for a defense on the basis of “necessity.”

In this analysis of necessity, one would believe that content in the factual lexicon would lean strongly toward a finding of fair use for the alleged infringer. However, where the use of the copyrighted work is not necessary to convey the same factual content, the motivation behind copyright law should be preserved—rewarding and protecting creativity. Brammer’s photo was a time-lapse photo of the Adams Morgan neighborhood; it was creative and depicted a factual setting. However, the mere fact that an original, creative work is factual does not imply that others may freely copy it.

The district court improperly analyzed this second factor in light of Violent Hues’ use of the photo, and not the intended use of the content creator, giving greater weight to the fact that the photo depicted a real-world location. We argued that this analysis “sanctions abuse of the fair use defense to appropriate copyrighted material so long as the user can claim that a factual element within the whole was the reason for their unauthorized appropriation.” The appropriate analysis centers on the concept of protecting creative elements while simultaneously not limiting the public’s use of facts. In the case at hand, Violent Hues’ use of Brammer’s photo to convey factual information about Adams Morgan was unnecessary because to convey the same message, and arguably in a more factual manner, Violent Hues could have driven to Adams Morgan to take its own snapshot of the neighborhood.

Finally, the district court’s determination that prior publication weighs in favor of a fair use is erroneous. As Patry on Fair Use provides: “The fact that a work is published does not mean that the scope of fair use is broader.” To state that publishing a copyrighted work broadens the scope of fair use renders the exclusive rights afforded to copyright owners null. Such a holding undermines the “special reward” of copyright protection and discourages creation of works—in stark contrast to the affirmative statements on copyright in the U.S. Constitution. Publication should be viewed as neutral until it can be considered under the fourth factor of the fair use analysis, wherein a court examines the impact of the alleged infringing use on the market for the copyrighted work. The district court’s simplistic approach to its analysis allows for parties to undermine the core purposes of copyright protection and, again, eviscerates a proper fair use analysis.

It is our hope that our amicus brief will help guide the Fourth Circuit as it assesses the extent of the fair use doctrine in the digital age. We are especially thankful to Antigone Peyton and David Johnson of Protorae Law, Terrica Carrington of the Copyright Alliance, and Professor Sandra Aistars of the Arts & Entertainment Advocacy Clinic for the opportunity to work on this important issue. To read our amicus brief, please click here.

*Rachelle Mortimer and Grant Ossler are students at Antonin Scalia Law School, where they study under Professor Sandra Aistars in the Arts & Entertainment Advocacy Clinic.

Categories
Copyright Uncategorized

CPIP’s Sandra Aistars & Scalia Law Alumnae Urge Federal Circuit to Protect Creators and Rein In Fair Use in Oracle v. Google

U.S. Capitol buildingOn February 17, 2017, CPIP Senior Scholar Sandra Aistars filed an amicus brief in Oracle v. Google, a copyright case currently before the Federal Circuit. Prof. Aistars worked in conjunction with Scalia Law alumnae Antigone Peyton and Jennifer Aktins of Cloudigy Law and third-year law student Rebecca Cusey to file the brief on behalf of 13 intellectual property scholars, including CPIP’s Matthew Barblan, Devlin Hartline, Sean O’Connor, Eric Priest, and Mark Schultz.

The amici urge the Federal Circuit to find that Google’s for-profit, verbatim copying of thousands of lines of Oracle’s copyrighted code was not fair use. They note that an overly broad application of the fair use defense “threatens the fundamental protections of copyright law,” and they argue that “the application of fair use in this case must be faithful to the underlying purposes of both copyright law and the fair use defense.” The amici point out that there would be “significant negative ramifications for all authors” if the Federal Circuit were to excuse Google’s copying of Oracle’s creative work for the purpose “of creating a competing commercial product.”

The amici conclude: “Expanding the fair use defense to excuse appropriation of software code for commercial gain will harm both creators and the public, as creators will have less incentive to develop new software. The public will not be well-served by policy that slows down the creative advancement of software. Nor will the public be well-served by an application of fair use that will gut copyright protection for other creative works by excusing a purely commercial copying of a creative work that harms the market for the original or its derivatives.”

To read the amicus brief, please click here.

Categories
Copyright

Shaping Fair Use to Promote Fair Markets

skyline with U.S. Capitol buildingHow does fair use policy in copyright law affect markets for the production and distribution of creative works? As we come to the end of Fair Use Week, it’s a good time to highlight a report by the Phoenix Center for Advanced Legal and Economic Public Policy Studies, titled “Fair Use in the Digital Age,” that offers interesting insights into how we can optimize fair use to promote fair markets. The report takes aim at stakeholders in the entertainment and media sectors who call for weaker copyright protections at a time when the creative industries are already being undercut by spiraling digital piracy that shows no signs of abating. The report creates an economic model that opens new vistas for economically sound fair use policy in high-production-cost creative industries. And its application would help judges and lawmakers approach fair use questions in a consistent and empirically sound manner, free from the rhetoric that swirls around much of today’s fair use debates.

The concept of “fair use” in the U.S. carves out exceptions and limitations to copyright’s exclusive property rights by allowing copyrighted works to be used in certain circumstances without permission or compensation. Some other countries—like Australia and New Zealand—have an analogous carve-out in the concept of “fair dealing.” U.S. copyright law sets out four factors that must be analyzed on a case-by-case basis to determine whether a particular use constitutes a fair use. In “fair dealing” countries, specific uses that are permitted are enumerated by statute. In theory, both fair use and fair dealing are subject to statutory construction and judicial interpretation, and can be given wide or narrow berth. In practice, though, proponents of the U.S. version argue that fair use offers greater “flexibility” to allow the use of copyrighted works without permission or compensation.

“Fair Use in the Digital Age” constructs an economic model of exceptions and limitations to copyright under fair use that focuses on the goal of incentivizing the creation of new works. The objective behind the report is to determine an “optimal” level of fair use (or fair dealing) – i.e., a level in which some appropriation can occur without significantly impairing the rights and returns of copyright owners. The report finds that “optimal” fair use should be more constrained when: (i) the cost of the original work is high; (ii) the size of the market for the original work is small; (iii) piracy and other forms of leakages—which reduce the market potential for the original work—are large; (iii) the cost of distributing secondary works is lower; (iv) small amounts of transformation matter a lot to consumers; and (vi) the fixed cost of producing  secondary works is smaller.

The report seeks to “analyz[e] fair use formally and rationally.” In so doing, it concludes that “much of the advocacy for broader exceptions in copyright law is misguided.” The report argues forcefully that the characteristics of digital technologies that fair use advocates look to when calling for expanded “flexibility” actually suggest that we should be reducing exceptions and limitations to copyright. This holds particularly true in smaller markets, which tend to have high rates of copyright misappropriation and higher enforcement costs. While calling for further research on the matter, the report marks a noteworthy step in analyzing fair use rationally and carefully, and offers a clear and reasonable economic model for keeping fair use well-determined, well-designed, and fair.

Categories
Copyright

Oracle v. Google: Expansive Fair Use Harms Creators

The following post comes from Rebecca Cusey, a third-year law student at Antonin Scalia Law School, George Mason University, and a movie critic at The Federalist.

Rebecca CuseyBy Rebecca Cusey

The fair use doctrine has expanded far beyond its purpose, according to an amicus brief filed this past Friday on behalf of 13 law professors in Oracle v. Google, a copyright case currently before the Federal Circuit. Scalia Law alumnae Antigone Peyton and Jennifer Aktins of Cloudigy Law worked in conjunction with CPIP Senior Scholar Sandra Aistars to file the brief, and I had the pleasure of helping them draft it.

While there are several related decisions for the court to make, the primary issue before the Federal Circuit is whether Google’s use of Oracle’s software code, known as an API, is excused by the fair use defense. This case is long and complex, as would be expected from two software giants battling over the use of important code. Phones don’t run themselves, after all, and there’s a huge, lucrative market.

In 2014, the Federal Circuit held that Oracle’s API code was copyrightable because it contained protectable, original expression. The court reasoned that the software code resembled a taxonomy instead of a system or method of operation, which would be unprotectable. The issue of functionality versus creativity was addressed, and the court found that the creative code in question was not precluded from copyright protection even though it was also functional.

The Federal Circuit remanded the case to the district court on the issue of whether the use of the API code was excused by the fair use defense. A jury found in May of 2016 that fair use did indeed excuse Google’s use of the protected code in its phones. Oracle now appeals this fair use finding to the Federal Circuit.

The amicus brief argues that the fair use defense does not cover Google’s use of the software code. The fair use doctrine was intended to balance the rights of creators to profit from and control their work with the public interest to be derived from critique, scholarship, and parody. In this case, there is no critique. Rather, Google seeks to sell a product using code it could have licensed but did not.

It matters, as all intellectual property matters, because the more we allow the fair use defense to expand and take money off of the table for creators, the more it destroys their incentive for creating original content in the first place. Why would a person or a company invest time, effort, and money in writing a song, developing a drug, or coding a program if someone else could simply take that song, drug, or code and sell it as their own? Fair use doesn’t excuse that, nor should it.

Although software code is complex and difficult to understand for the average person, there are no special rules in this area of copyright law, nor should there be. Just as copying a portion of a song and inserting it into one’s own song can be infringement, so too can taking a portion of code and selling it as part of one’s own product. Just as it takes creativity to use words to create a book, so too it takes creativity to create new and exciting code.

It may be obtuse to many people, but coding is a highly creative endeavor that brings astonishing and exciting products to market, products that have shaped and improved the world around us. It is in the interest of everyone, both software coders and society at large, that the incentive created by copyright to produce such advancement remains strong.

Categories
Copyright Uncategorized

Second Circuit Brings Some Sanity Back to Transformative Fair Use

the word "inspiration" typed on a typewriterThe Second Circuit handed down an opinion in TCA Television v. McCollum earlier this week holding that a play’s inclusion of Abbott and Costello’s famous “Who’s on First?” routine was not transformative fair use. Given how expansive transformativeness has become lately, especially in the Second Circuit, the opinion is somewhat surprising. What’s more, it’s not clear that the appellate court even needed to reach the fair use issue since it held for the defendants on the alternate ground of lack of ownership. If anything, it appears that this particular panel of judges went out of its way to push back on—and bring some much-needed sanity to—transformative fair use doctrine in the Second Circuit.

The play at issue, “Hand to God,” features an introverted boy named Jason who communicates through his alter ego sock puppet named Tyrone. In order to impress a girl, Jason and Tyrone perform over one minute of the “Who’s on First?” routine, with Jason as Abbott and Tyrone as Costello. The plaintiffs, including Abbott and Costello’s heirs, sent the defendants, producers and author of the play, a cease and desist letter. When the defendants refused to remove the scene from the play, the plaintiffs sued for copyright infringement. On the first fair use factor, which looks at the “purpose and character of the use,” the district court held that Jason/Tyrone’s almost-verbatim recitation of the heart of the “Who’s on First?” routine was “highly transformative”—so transformative that it was “determinative” of fair use.

The standard for transformativeness, which comes from the Supreme Court’s opinion in Campbell v. Acuff-Rose, looks at “whether the new work merely ‘supersede[s] the objects’ of the original creation” or whether it “instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[.]” The district court held that “Hand to God” used “Who’s on First?” for a different—and thus transformative—purpose, namely, to proffer a “darkly comedic critique of the social norms governing a small town in the Bible Belt.” While Abbott and Costello’s routine was standard vaudevillian fare, the district court reasoned that the play used it for a more dramatic purpose.

The Second Circuit rejected the district court’s conclusion, pointing out that “the critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different from that for which it was created.” In other words, it’s not enough for “Hand to God” to have a different purpose than “Who’s on First?” The issue is whether “Hand to God” used “Who’s on First?” for a different purpose than Abbott and Costello used the routine. The Second Circuit held that it did not: “The Play may convey a dark critique of society, but it does not transform Abbott and Costello’s Routine so that it conveys that message.”

The disagreement between the district court and the Second Circuit is subtle, yet important. The lower court determined that having Jason/Tyrone recite the “Who’s on First?” routine was transformative because it gave the audience a glimpse into Jason’s psyche. Whereas Jason is seemingly kind and soft-spoken on the surface, it becomes clear through his sock puppet persona Tyrone that there’s much murkiness beneath. And to the extent that Jason/Tyrone’s recitation of “Who’s on First?” is comedic, the district court thought that the “audience laughs at Jason’s lies, not, as the Plaintiffs claim, simply the words of the Routine itself.”

By contrast, the Second Circuit held that this “reasoning is flawed in that what it identifies are the general artistic and critical purpose and character of the Play.” Moreover, the district court failed to identify how the “defendants’ extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants’ use.” The Second Circuit’s approach here recognizes that fair use is premised upon necessity, that is, there needs to be a justification for copying the specific original work. In this case, the point of having Jason/Tyrone recite “Who’s on First?” was to demonstrate that Jason was lying when he later claimed to have written it. But that could have been accomplished by using any recognizable work.

As the Second Circuit noted, “the particular subject of the lie—the Routine—appears irrelevant to that purpose.” And as such, the defendants’ use of “Who’s on First?” had “no bearing on the original work” and lacked the required “justification to qualify for a fair use defense.” This reasoning sounds very close to requiring the copyist to comment upon the original, a principle that, for better or worse, was rejected by the Second Circuit in Cariou v. Prince. Indeed, the appellate panel here mentioned Cariou, noting that, “although commentary frequently constitutes fair use, it is not essential that a new creative work comment on an incorporated copyrighted work to be transformative.” Nevertheless, the Second Circuit easily distinguished Cariou since there the artist at least changed the original work.

The Second Circuit’s opinion is a refreshing reminder that, despite what some would prefer, not everything arguably-transformative is transformative fair use. If the defendants wanted to use a copyrighted work within the play, the proper course would have been to negotiate a license or to not use the work at all. And given the way “Who’s on First?” was used within the play, there was certainly no shortage of alternatives that could have sufficed. It’s also nice to see that some judges in the Second Circuit are skeptical of cases like Cariou, which the panel here referred to as “the high-water mark of our court’s recognition of transformative works.” The panel also rightfully noted that an overly-expansive view of transformativeness threatens a copyright owner’s exclusive right to prepare derivative works. And the fact that this push-back is coming from within the Second Circuit makes it all the more interesting.

Categories
Copyright Infringement Internet Uncategorized

Radiohead Video Makes Unauthorized Use of Fictional Characters

Cross-posted from the Mister Copyright blog.

Last month, Radiohead released their ninth studio album, A Moon Shaped Pool, after a five-year hiatus from recording. In true Radiohead fashion, the album’s release was preceded by a unique succession of mysterious social media postings, teaser artwork and music videos for the singles Burn the Witch and Daydreaming.

The Burn the Witch video was shot in stop-motion animation and features an alarming narrative in which an outsider is welcomed into a seemingly idyllic village, only later to be burned alive inside of a wicker man structure. While the creators of the video have acknowledged that the story is an allegory for the current migrant crisis in Europe, viewers have noticed something suspicious about the video unrelated to the chilling subject matter.

Burn the Witch uses claymation figures to portray its characters and soon after the video’s debut, viewers began recognizing similarities to Trumptonshire, a stop-motion BBC children’s television series from the 1960s. The Trumptonshire series—which includes Trumpton, Camberwick Green and Chigley—depicts daily life in a small, English country town and features recurring characters such as a mayor, doctor and fireman. As a children’s program, the storylines typically involved simple domestic problems that were always resolved in a friendly manner.

Given Radiohead’s popularity and the anticipation surrounding the release of their new album, it wasn’t long before some of those involved with Trumptonshire were made aware of the Burn the Witch video and voiced their displeasure. William Mollett, the son-in-law of creator Gordon Murray, expressed his disgust with the unsettling video and hinted at future legal action for what he believes is a copyright violation.

Radiohead should have sought our consent as we consider this a tarnishing of the brand. It is not something we would have authorized. We consider that there is a breach of copyright and we are deciding what to do next.

While the creators of cheery Trumptonshire may not appreciate an association with the dark Radiohead video, at first glance it’s not a case of clear-cut copyright infringement. The creators of Trumptonshire certainly can’t claim copyright in using claymation characters to express an idea, and the trope of an idyllic small village with a mayor, doctor and fireman would also not be protectable. These elements would be considered scènes à faire, or “scenes that must be done,” in that they are obligatory to a certain genre and one author or creator can’t exclude others from using them.

Where it gets tricky, especially for the Burn the Witch video, is that fictional characters, even if obligatory to a certain genre, can become copyrightable the more distinctly they are expressed. Think of famous literary characters like Sherlock Holmes or James Bond. An eccentric sleuth character or intrepid British spy can’t be copyrighted, as they are too broad to exclude others from employing them in separate creative works. But give the detective a hunting cap and pipe, or the spy a Walther PPK and martini—shaken, not stirred—and now you have characters with distinctive traits, worthy of copyright protection.

A significant case discussing the protectability of fictional characters involved Steven Spielberg’s iconic 1982 film E.T. the Extra-Terrestrial. After the film had become a major box-office hit and financial success, Universal sued a toy maker that was producing and selling dolls that closely resembled the titular alien character. Though the defendant toy company tried to claim that an alien character was not worthy of copyright protection, the court pointed to several distinct features of the E.T. character, which were also featured in the defendant’s doll.

The doll features the oddly shaped head, elongated neck, squat torso, long thin arms, and hunched-over posture of “E.T.”. The defendants’ doll has the distinctive shape and posture of “E.T.” as well as “E.T.”’s disproportionately large head, flat face, wide mouth, pug nose, knobby forehead, and large blue eyes.

A closer look at the Burn the Witch villagers reveals distinct and definite similarities to the inhabitants of Trumptonshire, validating the copyright claims of the Trumptonshire creators. For instance, the mayor of Trumptonshire is depicted as a mustachioed man wearing a tri-corned cap and medallion and is accompanied by a butler-like servant in jacket and tie. While the mayor in Burn the Witch sports a slightly different hat and long sideburns instead of a mustache, the similarities are undeniable.

(Trumptonshire pictured on the left, Burn the Witch on the right)
(Trumptonshire pictured on the left, Burn the Witch on the right)

It’s possible that defenders of the music video would argue that the work is a parody and immune from infringement claims under the fair use doctrine. But contrary to popular belief, not all parodies automatically trigger fair use, and in this case, the Burn the Witch video would not qualify as a parody.

According to the Supreme Court, a parody “is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works.” But the Radiohead video isn’t commenting on Trumptonshire so much as using the Trumptonshire world and characters to comment on and criticize something else, which would classify it as a satire, not a parody. While satire may still be found to be non-infringing, the Supreme Court warns that satires are not as likely to merit a finding of fair use, especially when using a substantial amount of the original work.

Viewing the two works in succession, it’s difficult to deny a similar semblance. Even if Burn the Witch does not appropriate specific characters, the total concept and feel of the Radiohead video is substantially similar to Trumptonshire. A total concept and feel test refers to a subjective assessment of one work considered alongside another and whether both an expert and ordinary person would find them substantially similar.

In 1977, Sid & Marty Krofft Television Productions Inc. v. McDonald’s Corp. set the standard for total concept and feel by introducing a two-part extrinsic and intrinsic test for determining substantial similarity. The case involved a copyright infringement claim by a team of puppeteers and television producers against McDonald’s for their “McDonaldland” advertisements. The 9th Circuit evaluated similarity extrinsically by employing an expert to determine certain parallels between the two works.

Such criteria include the type of artwork involved, the materials used, the subject matter, and the setting for the subject. Since it is an extrinsic test, analytic dissection and expert testimony are appropriate. Moreover, this question may often be decided as a matter of law.

The intrinsic test relies on the response of an “ordinary reasonable person” to determine whether there were similarities in the expression of the works, a test that could be completed by a jury. In the Krofft case, the court found that both tests satisfied the similarity analysis, even with the defendants offering a list of differences between the two.

Using the two-part test established by Krofft, the Radiohead video would likely be found substantially similar to Trumptonshire and therefore infringing. Burn the Witch uses the same claymation-style stop-motion animation and features similar characters and settings as Trumptonshire, all factors that weigh in favor of extrinsic substantial similarity. And while the intrinsic test is subjective and may vary from one ordinary reasonable person to the next, it’s not hard to imagine a jury finding the two works substantially similar.

Radiohead has always been on the cutting edge of music technology, and front-man Thom Yorke has been an outspoken critic of a music industry that fails to protect the property rights of artists as their music is routinely stolen on sites like YouTube and the Pirate Bay. And so it’s surprising that they would not ensure that their collaborators had secured permission to use the Trumptonshire characters, given the similarities between the two works. Although the United Kingdom has similar exceptions to copyright law—known as fair dealing—as the United States, the laws are narrower and would likely favor the Trumptonshire creators if a copyright infringement suit is brought. As highly influential band that champions artists’ rights, Radiohead should take better care to practice what they preach.

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Copyright Internet Uncategorized

Attacking the Notice-and-Staydown Straw Man

Ever since the U.S. Copyright Office announced its study of the DMCA last December, the notice-and-staydown issue has become a particularly hot topic. Critics of notice-and-staydown have turned up the volume, repeating the same vague assertions about freedom, censorship, innovation, and creativity that routinely pop up whenever someone proposes practical solutions to curb online infringement. Worse still, many critics don’t even take the time to look at what proponents of notice-and-staydown are suggesting, choosing instead to knock down an extremist straw man that doesn’t reflect anyone’s view of how the internet should function. A closer look at what proponents of notice-and-staydown are actually proposing reveals that the two sides aren’t nearly as far apart as critics would have us believe. This is particularly true when it comes to the issue of how well notice-and-staydown would accommodate fair use.

For example, Joshua Lamel’s recent piece at The Huffington Post claims that “innovation and creativity are still under attack” by the “entertainment industry’s intense and well-financed lobbying campaign” pushing for notice-and-staydown. Lamel argues that the “content filtering proposed by advocates of a ‘notice and staydown’ system . . . would severely limit new and emerging forms of creativity.” And his parade of horribles is rather dramatic: “Parents can forget posting videos of their kids dancing to music and candidates would not be able to post campaign speeches because of the music that plays in the background. Remix culture and fan fiction would likely disappear from our creative discourse.” Scary stuff, if true. But Lamel fails to cite a single source showing that artists, creators, and other proponents of notice-and-staydown are asking for anything close to this.

Similarly, Elliot Harmon of the Electronic Frontier Foundation (EFF) argues that “a few powerful lobbyists” are pushing for notice-and-staydown such that “once a takedown notice goes uncontested, the platform should have to filter and block any future uploads of the same allegedly infringing content.” Harmon also assumes the worst: “Under the filter-everything approach, legitimate uses of works wouldn’t get the reasonable consideration they deserve,” and “computers would still not be able to consider a work’s fair use status.” Like Lamel, Harmon claims that “certain powerful content owners seek to brush aside the importance of fair use,” but he doesn’t actually mention what these supposed evildoers have to say about notice-and-staydown.

Harmon’s suggestion that the reliance on uncontested takedown notices gives inadequate consideration to fair use is particularly strange as it directly contradicts the position taken by the EFF. Back in October of 2007, copyright owners (including CBS and Fox) and service providers (including Myspace and Veoh) promulgated a list of Principles for User Generated Content Services. These Principles recommend that service providers should use fingerprinting technology to enact notice-and-staydown, with the general caveat that fair use should be accommodated. Two weeks later, the EFF published its own list of Fair Use Principles for User Generated Video Content suggesting in detail how notice-and-staydown should respect fair use.

The EFF’s Fair Use Principles include the following:

The use of “filtering” technology should not be used to automatically remove, prevent the uploading of, or block access to content unless the filtering mechanism is able to verify that the content has previously been removed pursuant to an undisputed DMCA takedown notice or that there are “three strikes” against it:

1. the video track matches the video track of a copyrighted work submitted by a content owner;
2. the audio track matches the audio track of that same copyrighted work; and
3. nearly the entirety (e.g., 90% or more) of the challenged content is comprised of a single copyrighted work (i.e., a “ratio test”).

If filtering technologies are not reliably able to establish these “three strikes,” further human review by the content owner should be required before content is taken down or blocked.

Though not explicitly endorsing notice-and-staydown, the EFF thinks it’s entirely consistent with fair use so long as (1) the content at issue has already been subject to one uncontested takedown notice, or (2) the content at issue is at least a 90% match to a copyrighted work. And the funny thing is that supporters of notice-and-staydown today are actually advocating for what the EFF recognized to be reasonable over eight years ago.

While Harmon never explicitly identifies the “powerful lobbyists” he accuses of wanting to trample on fair use, he does link to the Copyright Office’s recently-announced study of the DMCA and suggest that they can be found there. Reading through that announcement, I can only find three citations (in footnote 36) to people advocating for notice-and-staydown: (1) Professor Sean O’Connor of the University of Washington School of Law (and Senior Scholar at CPIP), (2) Paul Doda, Global Litigation Counsel at Elsevier, and (3) Maria Schneider, composer/conductor/producer. These three cites all point to testimonies given at the Section 512 of Title 17 hearing before the House Judiciary Committee in March of 2014, and they show that Harmon is attacking a straw man. In fact, all three of these advocates for notice-and-staydown seek a system that is entirely consistent with the EFF’s own Fair Use Principles.

Sean O’Connor seeks notice-and-staydown only for “reposted works,” that is, “ones that have already been taken down on notice” and that are “simply the original work reposted repeatedly by unauthorized persons.” His proposal only applies to works that “do not even purport to be transformative or non-infringing,” and he specifically excludes “mash-ups, remixes, covers, etc.” This not only comports with the EFF’s recommendations, it goes beyond them. Where the EFF would require either a previously uncontested notice or at least a 90% match, O’Connor thinks there should be both an uncontested notice and a 100% match.

The same is true for Paul Doda of Elsevier, who testifies that fingerprinting technology is “an appropriate and effective method to ensure that only copies that are complete or a substantially complete copy of a copyrighted work are prevented or removed by sites.” Doda explicitly notes that filtering is not suitable for “works that might require more detailed infringement analysis or ‘Fair Use’ analysis,” and he praises YouTube’s Content ID system “that can readily distinguish between complete copies of works and partial copies or clips.” Doda’s vision of notice-and-staydown is also more protective of fair use than the EFF’s Fair Use Principles. While the EFF suggests that a previously uncontested notice is sufficient, Doda instead only suggests that there be a substantial match.

Unlike O’Connor and Doda, Maria Schneider is not a lawyer. She’s instead a working musician, and her testimony reflects her own frustrations with the whack-a-mole problem under the DMCA’s current notice-and-takedown regime. As a solution, Schneider proposes that creators “should be able to prevent unauthorized uploading before infringement occurs,” and she points to YouTube’s Content ID as evidence that “it’s technically possible for companies to block unauthorized works.” While she doesn’t explicitly propose that there be a substantial match before content is filtered, Schneider gives the example of her “most recent album” being available “on numerous file sharing websites.” In other words, she’s concerned about verbatim copies of her works that aren’t possibly fair use, and nothing Schneider recommends contradicts the EFF’s own suggestions for accommodating fair use.

Lamel and Harmon paint a picture of powerful industry lobbyist boogeymen seeking an onerous system of notice-and-staydown that fails to adequately account for fair use, but neither produces any evidence to support their claims. Responses to the Copyright Office’s DMCA study are due on March 21st, and it will be interesting to see whether any of these supposed boogeymen really show up. There’s little doubt, though, that critics will continue attacking the notice-and-staydown straw man. And it’s really a shame, because advocates of notice-and-staydown are quite conscious of the importance of protecting fair use. This is easy to see, but first you have to look at what they’re really saying.

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Copyright Copyright Theory Internet Uncategorized

Ninth Circuit Gets Fair Use Wrong to the Detriment of Creators

The Ninth Circuit’s opinion in Lenz v. Universal is out, and it’s a doozy. The main issue in the case is whether a rightholder has to consider fair use before sending a DMCA takedown notice. Section 512 requires the sender to state that she “has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.” Section 107 says that “the fair use of a copyrighted work . . . is not an infringement of copyright.” The question is whether fair use, which “is not an infringement” under Section 107, is therefore “authorized by . . . the law” under Section 512.

The court concludes that Section 512 “unambiguously contemplates fair use as a use authorized by the law.” This means that rightholders in the Ninth Circuit are now obligated to consider and reject fair use before sending a takedown notice. The court’s new spin on the DMCA places additional obstacles in the way of rightholders—particularly individual creators. The system is already confusing and onerous, and now it burdens people who are not lawyers with the duty to reach legal conclusions. The DMCA notice and takedown regime is a joke, often providing creators and rightholders less than a few minutes of relief before infringing works are reposted, and this opinion only makes the problem worse. But rather than rehash commentary you can read elsewhere, I want to highlight one startling error in the court’s reasoning.

In a bizarre section of the opinion, the Ninth Circuit declares that fair use is not an affirmative defense that excuses infringement: “Given that 17 U.S.C. § 107 expressly authorizes fair use, labeling it as an affirmative defense that excuses conduct is a misnomer[.]” In support, the court purports to quote a footnote from the Eleventh Circuit’s opinion in Bateman for the proposition that fair use is a right:

Although the traditional approach is to view “fair use” as an affirmative defense, . . . it is better viewed as a right granted by the Copyright Act of 1976. Originally, as a judicial doctrine without any statutory basis, fair use was an infringement that was excused—this is presumably why it was treated as a defense. As a statutory doctrine, however, fair use is not an infringement. Thus, since the passage of the 1976 Act, fair use should no longer be considered an infringement to be excused; instead, it is logical to view fair use as a right. Regardless of how fair use is viewed, it is clear that the burden of proving fair use is always on the putative infringer.

This is extremely misleading. The Ninth Circuit makes it sound like the Eleventh Circuit rejects the notion that fair use is an affirmative defense that excuses otherwise infringing conduct. The reality is that the Eleventh Circuit does no such thing. Here’s the full footnote from Bateman, with a paragraph break added:

Fair use traditionally has been treated as an affirmative defense to a charge of copyright infringement See Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, ––––, 114 S.Ct. 1164, 1177, 127 L.Ed.2d 500 (1994) (stating that “fair use is an affirmative defense”). In viewing fair use as an excused infringement, the court must, in addressing this mixed question of law and fact, determine whether the use made of the original components of a copyrighted work is “fair” under 17 U.S.C. § 107. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560, 105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985) (citing Pacific & Southern Co. v. Duncan, 744 F.2d 1490, 1495 n. 8 (11th Cir.1984), cert. denied, 471 U.S. 1004, 105 S.Ct. 1867, 85 L.Ed.2d 161 (1985)).

Although the traditional approach is to view “fair use” as an affirmative defense, this writer, speaking only for himself, is of the opinion that it is better viewed as a right granted by the Copyright Act of 1976. Originally, as a judicial doctrine without any statutory basis, fair use was an infringement that was excused—this is presumably why it was treated as a defense. As a statutory doctrine, however, fair use is not an infringement. Thus, since the passage of the 1976 Act, fair use should no longer be considered an infringement to be excused; instead, it is logical to view fair use as a right. Regardless of how fair use is viewed, it is clear that the burden of proving fair use is always on the putative infringer.

The Ninth Circuit here cut out the first half of the footnote, where the Eleventh Circuit quotes binding Supreme Court precedent explicitly saying that “fair use is an affirmative defense” and then explains what must be done when analyzing such an “excused infringement.” Even worse, the Ninth Circuit uses an ellipsis to cut out the part in the second half of the footnote where Judge Birch, who authored Bateman, makes clear that he’s “speaking only for himself” when he says that fair use is not an “infringement to be excused.” The Ninth Circuit pretends to be adopting the Eleventh Circuit’s reasoning, when in fact it’s rejecting it.

Judge Birch himself even reiterates the point five years later in his opinion for the Eleventh Circuit in the Suntrust case. In discussing the opinion of the court, he refers to the defendant’s “affirmative defense of fair use.” But then in the accompanying footnote, he likewise says that it’s only his personal opinion that fair use is a right. Here’s what he writes:

I believe that fair use should be considered an affirmative right under the 1976 Act, rather than merely an affirmative defense, as it is defined in the Act as a use that is not a violation of copyright. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n. 22 (11th Cir.1996). However, fair use is commonly referred to as an affirmative defense, see Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 590, 114 S.Ct. 1164, 1177, 127 L.Ed.2d 500 (1994), and, as we are bound by Supreme Court precedent, we will apply it as such.

Judge Birch fully understands that fair use is an affirmative defense and that binding Supreme Court precedent compels him to “apply it as such.” And twice he has followed that precedent when writing for the Eleventh Circuit. Yet, the Ninth Circuit here makes it sound like it’s agreeing with the Eleventh Circuit in holding that fair use is a right and not an affirmative defense.

The Eleventh Circuit has even explicitly said that Judge Birch’s view is not the law in that circuit. In an opinion from 2010, the Eleventh Circuit rejects an argument made by the defendant that “fair use is merely a denial of copyright infringement rather than an affirmative defense[.]” The defendant had cited Judge Birch for the proposition, but the Eleventh Circuit notes that “a close reading of Judge Birch’s comments reveal that he was expressing his personal views, not the views of this Court,” and it again holds that “the fair use of copyrighted work is an affirmative defense and should be pleaded as such.”

It’s simply disingenuous for the Ninth Circuit to claim that fair use is not an affirmative defense in the Eleventh Circuit. It is an affirmative defense there and in every other circuit because the Supreme Court has said it’s so. Judge Birch doesn’t get to overrule the Supreme Court, and neither does the Ninth Circuit. Yet, that’s what it purports to do here in Lenz v. Universal.