Category Archives: Blog

Fair Use, the First Amendment, and Foreign Copyright Judgments Part II

Posted August 16, 2022
Photo by Ibrahim Boran on Unsplash

Earlier this month, we wrote about the recent Ninth Circuit decision in Sicre de Fontbrune v. Wofsy—a case about whether U.S. Courts should enforce foreign copyright judgments when the challenged use would likely be a fair use if the case were brought in the United States. 

The good news from Sicre de Fontbrune (at least for U.S. authors) was that the Ninth Circuit seemed to agree that fair use is an important enough matter of public policy to at least deserve further assessment before enforcing a foreign judgment, though it didn’t answer the issue definitively. Although the U.S. is not totally unique in how it approaches fair use, fair use is a distinctive and important part of U.S. public policy, and courts have repeatedly emphasized how it supports core free speech rights as embodied in the First Amendment. So, we think it makes sense that courts should give special attention to fair use and conduct a thorough analysis when U.S. authors have relied on that right. 

But unfortunately, when the Ninth Circuit conducted its own fair use assessment, it gave Wofsy’s fair use assertion anything but special attention, conducting a more cursory analysis than the doctrine requires. We see two grave errors in the Ninth Circuit’s decision. 

So what did the Ninth Circuit get wrong?  

First, some basic facts from the case: Wofsy (the defendant) got permission from the Picasso estate to publish what has now become a standard Picasso reference work, The Picasso ProjectThe Picasso Project documents Picasso’s greatest works and incorporates substantial reference information. Wofsy reused a number of images of Picasso paintings from an earlier, larger work known as the Zervos Catalogue, in which Sicre De Fontbrune bought rights to in the late 1970s. The Zervos Catalogue is a 33-volume work with over 16,000 images of Picasso’s art, produced with cooperation from Picasso and his estate from 1932-1979. The Zervos Catalogue, which does not contain the same reference information as The Picasso Project, is now out of print and selling on the used market for upwards of $20,000 for all 33 volumes. The Picasso Project is 28 volumes, each of which can be purchased individually for $150 directly from Wofsy (or $4,200 for the whole set).

Sicre de Fontbrune originally sued Wofsy in French court in the mid-1990s when he discovered copies of The Picasso Project for sale in a French bookstoreAccording to the Ninth Circuit Court’s retelling of the French case, The Picasso Project reused some 1,400 images from the Zervos Catalogue. The court explained that Sicre de Fontbrune’s claim was not that Wofsy infringed Picasso’s copyrights (remember, he had permission from the Picasso estate), but that Wofsy had infringed Sicre de Fontbrune’s rights in the photographs that it had procured of Picasso’s art and published in the Zervos Catalogue.

The district court, in its own abbreviated fair use analysis, concluded that the use was fair, but the Ninth Circuit reversed. You can read the Ninth Circuit’s fair use reasoning here.

The most significant and concerning error in the Ninth Circuit’s opinion is that it didn’t actually evaluate any of the individual photographs in which Sicre de Fontbrune claimed his rights were infringed. The second factor in fair use analysis requires courts to assess the “nature and character” of the underlying photographs. In the words of another Ninth Circuit opinion, the second fair use factor “recognizes that creative works are ‘closer to the core of intended copyright protection’ than informational and functional works, ‘with the consequence that fair use is more difficult to establish when the former works are copied.’” 

This factor is particularly important in this case because limits on the scope of copyright protection are one of the other ways that copyright law avoids restricting First Amendment protected speech. As the Supreme Court has explained, “First Amendment protections [are] . . . embodied in the Copyright Act’s distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use.” Those limits provide breathing room for the public to freely use underlying ideas and concepts in copyrighted works, while preventing others from locking up that underlying expression from further reuse without adding anything creative or new.

In this case, the defendants didn’t argue (and the court didn’t consider) that the photographs may not be protectable under U.S. law, but the court should have considered the creativity of these photographs more thoroughly as part of its fair use assessment. Instead, the panel merely recited the adage that “photos are generally viewed as creative” and then accepted without question the judgment of the French court regarding whether the photographs could be protected by copyright, using French legal standards to judge creativity, that the photos have “creative elements.” There is nothing to suggest that the panel (or the district court) ever even looked at a copy of the pictures.

While it is true that some photographs can be highly original and creative, the photos in this case are mere photographic representations of other works, exhibiting almost no creativity (a “modicum” of which is required for a work to be protected by copyright in the U.S.). Unfortunately, given the sparse briefing on the fair use issue below and lack of argument from the plaintiffs on fair use, the court never had the opportunity to really look into the creativity issue. At a minimum, the Ninth Circuit should have sent this issue back down to the district court for it to make a judgment for itself. If either court had looked at these photos, it seems obvious to us that the minimal creativity they exhibit would have resulted in the second fair use factor strongly favoring Wofsy’s use.  

Picasso’s Pierrot and Harlequin (1918), one of the Zervos images reproduced in The Picasso Project. The image on the left is from the Art Institute of Chicago, which holds the original. The image on the right is from Zervos Catalogue, displaying no meaningful creative addition to Picasso’s original.

The other major mistake the court made was to not meaningfully evaluate the “purpose and character” and transformative nature of Wofsy’s use under the first fair use factor, one of the most important factors in fair use analysis. The Ninth Circuit rejected the lower court’s finding that Wofy’s use “aligned with criticism, comment, news reporting, teaching . .  . , scholarship, or research,” and instead construed the use in the most simplistic terms: “The ‘use’ at issue is . . . the reproduction of copyrighted photographs in a book offered for sale.” So, the Ninth Circuit said, the use was both commercial and non-transformative. 

That kind of superficial analysis of the purpose and character of Wofsy’s use is not sufficient in fair use analysis. While it is true that Wofsy copied the photographs for use in a book offered for sale, at that high level of abstraction, virtually any unauthorized use of images in a book offered for sale would fail this version of the factor one analysis. Such an approach would radically alter commonly accepted understandings of how fair use applies to nonfiction publishing and would upend the market, which relies heavily on fair use to incorporate images in “books offered sale.”  

As the Supreme Court recently stated, “in determining whether a use is ‘transformative,’ [a court] must go further and examine the copying’s more specifically described ‘purpose[s]’ and ‘character.” In this case, Wofsy’s purpose in using the images was to create a “systematic and comprehensive illustrated record of Picasso’s paintings,” far more complete than the Zervos Catalogue and with substantial reference information on with substantial cross-reference information to aid scholars in finding other catalogs that include each image, and where each underlying original Picasso may be found. These uses are new and different from the original photographs, enabling scholarship and research, and making them consistent with the Copyright Act’s prototypical examples of fair uses. Had the court interrogated the purpose and character of Wofsy’s use more thoroughly, it would have reached the same conclusion as the district court and found this factor too weighed in favor of fair use. 

What comes next? 

Given the importance of fair use and free speech to U.S. public policy, and these significant errors in the Ninth Circuit’s decision, last week, Wofsy filed a petition with the Ninth Circuit for rehearing and rehearing en banc. Authors Alliance intends to submit a brief supporting their petition, which we hope will help the court address these errors. 

Update: Respondent Lynn Goldsmith Files Brief in Warhol Foundation v. Goldsmith

Posted August 12, 2022
Photo by Adam Szuscik on Unsplash

Last week, attorneys for photographer Lynn Goldsmith filed a reply brief in The Andy Warhol Foundation v. Goldsmith, a case headed to the Supreme Court this fall. In June, Authors Alliance submitted an amicus brief in this case in support of appellant the Warhol Foundation (“AWF”) after they submitted their own brief, and we have been covering this case on our blog since the Second Circuit’s opinion was handed down last year.

The lawsuit concerns a series of Andy Warhol screen prints and sketches depicting the late musician Prince, known as the Prince Series and inspired by a photograph taken by Goldsmith. The images in the case were created after a first image was commissioned by Vanity Fair based on the photograph taken by Goldsmith, authorized pursuant to separate agreements between Vanity Fair and Goldsmith and Vanity Fair and Warhol. The authorized Warhol image appeared in the magazine in 1984 and included credit for both Goldsmith and Warhol. However, Warhol went on to create fifteen additional works of the image in the same style, which are the subject of the litigation.

After learning of the additional images after Prince’s death, Goldsmith sued AWF for copyright infringement, alleging that the Prince Series infringed her copyright in the photograph of Prince. The district court for the Southern District of New York had found for AWF on the fair use grounds, as the Prince Series “transformed Prince from a vulnerable, uncomfortable person” as seen in Goldsmith’s photograph “to an iconic larger-than-life-figure.” Yet the Second Circuit went on to reverse the district court’s decision, holding that since comparing the Goldsmith photograph and the Prince series side-by-side, they appeared visually similar, Warhol’s use was not transformative. Then, AWF appealed the decision to the U.S. Supreme Court, who agreed to hear the case this upcoming term. 

Goldsmith makes two primary arguments in her brief: first, that Warhol’s use of Goldsmith’s photograph was not transformative. Second, Goldsmith argues that the test for transformativeness proposed by AWF is not workable. 

Regarding the question of whether Warhol’s use was transformative, Goldsmith argues that a secondary use is transformative “only if that use must necessarily copy from the original without ‘supersed[ing] the use of the original work, and substitut[ing] … for it.’ “ According to Goldsmith’s view, because Warhol did not have to copy Goldsmith’s photograph in order to create a silk screen depiction of Prince (presumably, other pictures of Prince could have worked just as well), the use is not a transformative one. Goldsmith draws on principles governing parody fair uses, which by definition must draw from the original work in order to function as effective parodies, to argue that it is always the case that a transformative use is one in which the copying was “necessary.” The brief also argues that a finding of transformative use requires that the secondary work does not “usurp the market” for the first one. While it is true that when a use is transformative, it is generally less likely that it will usurp the market for the original work, the question of the market effects is a separate consideration in fair use analysis than the transformativeness inquiry. 

Goldsmith also defends the Second Circuit’s novel test for transformativeness, arguing that the Second Circuit reached the correct outcome because the two works shared the same “purposes”: being works of art and depictions of Prince. As Authors Alliance explained in our amicus brief, this argument misunderstands the “purpose and character” inquiry: a work might have the purpose of being a parody, as in Campbell, or serve the purpose of news reporting, as in many other fair use cases, but the form of a work (a work of art) is not a purpose. Campbell concerned a parodic song, but the Court in that case did not state that the work’s purpose was serving as a song. 

Goldsmith rejected AWF’s argument that the “new meaning or message” test, derived from the seminal Supreme Court decision, Campbell v. Acuff-Rose Music, is the proper one to apply in this case, going so far as to say that AWF’s formulation of the Campbell test would “upend copyright.” Goldsmith argues that the “new meaning or message” test is improper because the words of the test are absent from the statute that codifies fair use. The brief further argues that it is improper for courts to consider “meaning,” because the meaning of an expressive work is highly subjective. Yet this argument relies on an oversimplified version of Campbell’s test for transformativeness. That decision directs courts to consider a secondary work’s “new meaning or message” as part of its analysis of the purpose and character of a work. Considerations such as commerciality and how well the use fits within the prototypical fair uses listed in the Copyright Act (such as criticism, news reporting, and teaching) are also relevant. 

While Authors Alliance disagrees with much of the argument in Goldsmith’s brief, we appreciate the concerns it raises about striking the proper balance between protecting copyright holders’ exclusive rights and ensuring that socially beneficial onward creation can flourish. While we believe that Goldsmith argues for a balance of rights that tips too far in favor of a rightsholder’s ability to control secondary uses, it is clear that authors need clear guidance about that balance to continue to rely on fair use, and this case asks the Supreme Court to provide just that. We will keep our readers apprised of updates as this case moves forward.

Can fair use and the First Amendment protect U.S. authors from foreign copyright judgments?

Posted August 1, 2022
Photo by Ibrahim Boran from Unsplash.

On July 13, the Ninth Circuit handed down an interesting opinion in Sicre de Fontbrune v. Wofsy, a case addressing whether U.S. courts should enforce foreign copyright judgements when a fair use defense (which is available in the United States but not in many other jurisdictions) would have applied in the United States.  

Fair use is incredibly important for authors—it supports all kinds of creative work, allowing authors to copy the work of others for quotation, comment , or criticism; to create a parody; or even to create research tools that make it easier to learn and discover or gain new insights. For U.S. authors who publish online and aim for an international audience, applying fair use can be a challenge because the doctrine only applies in the United States. Most other countries have no direct analog to fair use, which raises uncertainty: will authors be liable for copyright infringement in other jurisdictions when they exercise fair use online, and if so, how might a negative outcome in another jurisdiction affect their ability to write in the United States? Sicre de Fontbrune begins to address some of these questions.  

Background

This facts of this case goes back several decades, to the early 1990s when Alan Wofsy—a San Francisco based art publisher and antiquarian book dealer—obtained permission from the Picasso estate to publish what has now become a standard Picasso reference work, The Picasso Project. The Picasso Project documents Picasso’s greatest works with substantial reference information. Wofsy reused a number of images of Picasso paintings from an earlier, larger work known as the Zervos Catalogue, in which Sicre De Fontbrune asserts copyright. The Zervos Catalogue is a 33-volume work with over 16,000 images of Picasso’s art, produced with cooperation from Picasso and his estate from 1932-1979. The Zervos Catalogue is now out of print and selling on the used market for upwards of $20,000 for all 33 volumes. The Picasso Project is 28 volumes, each of which can be purchased individually for $150 directly from Wofsy (or, $4200 for the whole set).

Sicre de Fontbrune originally sued in the French courts in the mid 1990s when Wofsy offered a small number of copies of The Picasso Project for sale in France. According to the Ninth Circuit Court’s retelling of the French case, The Picasso Project reused some 1,400 images from the Zervos Catalogue. The court explained, Sicre de Fontbrune’s claim was not that Wofsy infringed Picasso’s copyrights (remember, he had permission from the Picasso estate), but that Wofsy had infringed Sicre de Fontbrune’s rights in the photographs that it had procured of Picasso’s art and published in the Zervos Catalogue

France—a jurisdiction with no equivalent to the U.S. doctrine of fair use—concluded that Wofsy’s use infringed Sicre de Fontrbrune’s copyright and so handed down a judgment against Wofsy in 2001. A decade later, Sicre de Fontbrune discovered some copies of The Picasso Project in a French bookstore, and so Sicre de Fontbrune sued again to enforce its judgment in France and won. Because the judgment was from a French court, and Wofsy (and his assets) were in the United States, Sicre de Fontbrune then took its judgment to California, where Wofsy is located, in order to actually collect on its French legal victory. Sicre de Fontbrune then asked California courts to enforce the judgment against Wofsy so Sicre de Fontbrune could recover money damages.

Wofsy raised a number of defenses in the U.S. proceeding, including that the California courts are not permitted to enforce a foreign court’s judgment when it is “repugnant to the public policy of this state or the United States” (most states’ laws include identical provisions).  Wofsy argued that because it is the public policy of the United States to support free expression under the First Amendment, and because fair use has been recognized by courts as one of the primary ways that copyright law accommodates the First Amendment, Wofsy should prevail because his use qualifies as fair use under U.S. law.  

The First Amendment and the Public Policy Exception to Enforcement of Foreign Judgments

Courts are hesitant to use the public policy exception to avoid enforcement of judgments from foreign courts. For example, the Second Circuit, interpreting New York’s version of the same act, explained that “[a] judgment is unenforceable as against public policy to the extent that it is repugnant to fundamental notions of what is decent and just in the State where enforcement is sought. The standard is high, and infrequently met.” Yet, free speech has been one area where courts have been willing to apply the exception, typically in libel cases. Even Congress has intervened with the SPEECH Act, which prohibits any domestic court from enforcing a foreign defamation judgment unless the foreign court “provided at least as much protection for freedom of speech and press in that case as would be provided by the first amendment to the Constitution of the United States and by the constitution and law of the State in which the domestic court is located.”

Fair Use and Foreign Judgments

There are very few cases, however, addressing whether the public policy exception applies in cases where a user would have had a viable fair use defense in the United States. The Supreme Court has explained that fair use is tightly connected with free speech rights, describing it as a “built-in free speech safeguard,” and the Second Circuit has explained that “First Amendment concerns are protected by and coextensive with the fair use doctrine.” Consequently, fair use should be an important part of the “public policy exception” analysis. 

But, as far as we are aware, only two courts have considered whether a viable fair use defense under U.S. law should shield a defendant from enforcement of a foreign judgment.  The first is a Second Circuit case from 2007, Sarl Louis Feraud Intern. v. Viewfinder, Inc., interpreting New York’s version of the California law discussed above. This was also a case involving a French judgment. The other is Sicre de Fontbrune.  In both cases, these courts concluded that, in order to resolve the question of whether the public policy exception applies to avoid enforcement of a foreign copyright judgment, it must first assess whether fair use applied because fair use is so entwined with free speech rights. Though there are only these two cases on point so far, this is a positive trend for U.S. creators who rely on fair use to promote speech that may not be permissible in other jurisdictions. 

U.S. authors are still left with some uncertainty, however, about whether they are protected from foreign judgments at home in the United States. In both Viewfinder and in Sicre de Fontbrune, the courts left several significant questions unresolved. In Sicre de Fontbrune, the court found that Wofsy’s use was ultimately not fair use, and so the court never addressed what a positive fair use ruling would mean, namely: would a positive fair use ruling always be sufficient to trigger the public policy exception, or are some fair uses not sufficiently connected to First Amendment protections to trigger the public policy exception? In addition, the court failed to consider how the scope of copyright protection in the U.S. should factor into the analysis, given that (at least in our opinion) it is questionable whether the images in the Zervos Catalogue would be independently protected under U.S. copyright law to begin with.

This is a long post, so that’s all for now. Stay tuned next week for a discussion of the Sicre de Fontbrune court’s fair use analysis, and why we think the court made some missteps.  

Update: Antitrust and the Proposed Penguin Random House and Simon & Schuster Merger

Posted July 29, 2022
Photo by Sasun Bughdaryan on Unsplash

In November 2021, Authors Alliance published a blog post about antitrust and the publishing industry, focusing on a recent antitrust investigation intended to block the merger of two of the largest publishers in the country: Penguin Random House (“PRH”) and Simon & Schuster. The case is currently the subject of antitrust proceedings, with the Department of Justice (“DOJ”) on one side, and PRH, who is the party that would be purchasing Simon & Schuster, on the other. On August 1st, 2022, this case is scheduled for oral argument in the District Court for the D.C. circuit before Judge Florence Pan. In today’s post, we will provide an update on the case and share some thoughts about what it might mean for authors.

Witness Lists

Last week, the lists of witnesses for each side were announced. Both PRH and the DOJ included many prominent authors and publishing industry professionals on their witness lists. Literary agents and publishers will testify for both sides. Perhaps surprisingly, each party’s witness list also includes well-known authors. Bestselling author Stephen King will testify on behalf of the government, for example, whereas Andrew Solomon will testify on behalf of Penguin Random House. Penguin Random House also plans to call an economist to testify, likely as to potential economic effects of the merger. 

Parties’ Final Briefs

Then, earlier this week, both PRH and the DOJ submitted their final briefs in the case before it proceeds to oral argument. In its brief, the DOJ argues that a merger between PRH and S&S would violate antitrust laws based on the huge market share of bestsellers that the new firm would have, which it estimates will be nearly 50%. The DOJ also postulates that this would result in lower advances for authors, as there would be fewer publishers to “bid” on anticipated bestsellers, and ultimately, that the merger would lessen creative output and mean fewer authors could make a living from their writing. 

The DOJ’s brief also contextualized the merger within the longstanding pattern of publishing houses merging and consolidating, arguing that the industry as a whole is an “oligopoly” dominated by five major publishers, which cumulatively control 90% of the market for anticipated bestsellers (aside from Simon & Schuster and Penguin Random House, Hachette Book Group, Macmillan, and HarperCollins make up the rest of the so-called “Big Five”). Smaller publishers, which lack the resources of these major players, are generally unable to compete with the Big Five when it comes to anticipated bestsellers, as they often cannot offer the large advances bestselling authors come to expect. The DOJ concludes that because the planned merger would substantially lessen competition in the anticipated bestsellers market, it is presumptively illegal, a presumption which it states cannot be overcome by PRH’s arguments. The DOJ’s argument is also notable because it focuses on the harm to authors, not consumers. By including diminished creative output in the negative effects that might result from the merger, the DOJ’s brief signals that incentivizing authorship and supporting authors are important interests to be weighed when considering reorganization within the publishing ecosystem. 

PRH, for its part, argues that the relevant “market” in the case should not be the market for anticipated bestselling books, but market for books published overall. It further alleges that the “anticipated bestsellers” market (which the DOJ defines as books with advanances over $250,000) the DOJ discusses in its filings has no basis in industry classifications, and would only include approximately 85 books out of the more than 55,000 books published each year. PRH also challenges the government’s “presumption” of illegality, arguing that its prediction model is not adequate to show a likelihood of competitive harm. PRH argues that the merger would actually enhance competition by enabling the new firm to offer more attractive offers and incentivizing other large publishers to do the same in order to compete. It also states that the DOJ government misunderstands the publishing industry and book auctions, and that the DOJ’s predictions about competition within the publishing industry rest on false assumptions. For example, the brief explains that there is substantial uncertainty about how well a book will perform once it is published, making book auctions highly subjective and meaning that no “market price” can be set for book advances. Additionally, because authors have other priorities aside from maximizing financial gain, such as establishing strong relationships with their editors and ensuring that the publisher is a good fit for their work, it is not unheard of for authors to accept a bid that is not the highest offered due to these other factors. 

Overall, the parties’ final briefs in this case show that the book publishing industry is one beset by unusual characteristics and conditions: the offer and auction processes are not straightforward, sales predictions are unreliable, and the role of literary agents in book sales can obfuscate things further. And while publishing houses have steadily consolidated over time, antitrust efforts to make the industry less of an “oligopoly” have so far not been successful. 

As a general matter,  Author Alliance believes that more competition among publishers, and less consolidation of market power, will benefit authors. The trend that the DOJ observes about consolidation is true across the industry, including tradebook publishers but also academic publishers, textbook publishers and others, and substantially and negatively impacts all types of authors. It’s also true that more competition across the publishing ecosystem is needed, as shown by the pending ebook pricing fixing lawsuit against the Big Five publishers and Amazon. 

What’s Next?

Multiple sealed documents have been filed in the case, which makes it difficult to say with certainty what next steps are already in the works. Reports are that after initial oral arguments, trial will begin and is expected to last three weeks. The court has set a post-trial briefing schedule, suggesting that the upcoming hearing will not be the end of the story in this case. Authors Alliance will keep our readers informed about any updates as this antitrust case moves forward.

Hachette Book Group v. Internet Archive: Updates and Other Amicus Briefs

Posted July 20, 2022
Photo by Markus Winkler on Unsplash

Last week, Authors Alliance submitted an amicus brief in Hachette Book Group v. Internet Archive. You can learn more about the arguments we made in our brief in last week’s blog post. Authors Alliance was not the only amicus in this case—five other briefs were submitted by organizations and individuals that, like Authors Alliance, believe controlled digital lending (“CDL”) to be a fair use worthy of defending in court. In today’s post, we will provide an update on the case and an overview of other amici’s arguments. 

The Case

In June 2020, four of the largest publishers filed a lawsuit against the Internet Archive in the Southern District of New York, challenging, among other things, the legality of CDL. The case is currently before district court Judge John Koeltl. The case stretched on for over two years until both parties filed their motions for summary judgment in early July. A request for “summary judgment” is one where a party asks the court to rule on the case before a full trial, and is proper when no facts are in dispute. Summary judgment motions are fairly typical at this stage in a civil trial. 

On July 14th, six amicus briefs were filed by the following parties:

  • Authors Alliance; 
  • Library Futures Institute, together with EveryLibrary Institute and ReadersFirst;
  • A group of copyright scholars led by law professor Jason Schultz;
  • A group of intellectual property law professors led by law professor Rebecca Tushnet;
  • Michelle Wu, former director of the Georgetown Law Library and someone deeply involved in the history of CDL;
  • Kenneth Crews and Kevin Smith, both lawyers and librarians who have written and taught extensively on library copyright issues.

The next day, Judge Koeltl granted Authors Alliance’s motion to submit an amicus brief, as well as the other five amici’s motions to do the same. Later that day, the publishers filed an opposition to several of the amicus briefs, including ours, but this came after the judge had already granted the motions. 

We are pleased that Judge Koetl promptly agreed to allow us to submit an amicus brief in this case. Amicus briefs are useful when they can provide information or perspectives not offered by the parties in the case. We believe our brief will accomplish just that: we provided the court with information on the views and motivations of authors to show it that many authors do support CDL, contrary to the publishers’ argument that authors as a group are against CDL. While amicus briefs are not very common at the district court level (but more common in higher courts), the six separate briefs in this case show how many parties are deeply invested in CDL, and highlights the importance of this case for readers and authors going forward. 

Other Amicus Briefs

Library Futures Institute

The Library Futures Institute, along with groups the EveryLibrary Institute and ReadersFirst, submitted an amicus brief in the case representing the perspective of libraries. In its brief, Library Futures explained that CDL is an established practice employed by numerous public libraries across the country—it is far from unique to the Internet Archive. Library Futures further contextualized library lending historically: this is not the first time that publishers have been up in arms about changes in library practices, yet book publishing as an industry continues to thrive. CDL is also cost-effective for libraries and the taxpayers that support them, allowing libraries to make their collection more accessible and broadly available while making the most of the limited resources and physical storage libraries have. Library Futures also drew key distinctions between licensed ebooks and CDL scans: the two have different features and purposes, undermining the publishers’ argument that a CDL loan is a highly effective substitute for licensing an ebook. Instead, Library Futures argues that CDL bridges the gap between print and digital resources for researchers and readers, ensuring that libraries can serve their mission and readers can access books. 

Copyright Scholars

A group of 17 copyright scholars, led by NYU Law Professor Jason Schultz, submitted a brief to the court discussing the first sale doctrine, digital exhaustion, and library lending. In their brief, the copyright scholars explained that libraries have had a special place in our copyright scheme since time immemorial, and copyright permits libraries to lend books out in whatever manner they see fit. This fact, the copyright scholars argue, means that libraries should be able to loan out copies via CDL without publishers’ interference. This brief also argues that CDL is a fair use because of its nonprofit, socially productive purpose and the fact that it does not cause “market harms” for the purposes of fair use analysis. Because CDL enables libraries to do what they have always done—make their collections available to patrons and adapt to changes in technology—the copyright scholars argue it is consistent with fair use and with legal principles covering libraries’ operations. 

Intellectual Property Law Professors

A group of intellectual law professors, led by Harvard Law professor Rebecca Tushnet, also submitted a brief in this case to make the argument that the noncommercial and nonprofit status of CDL make it consistent with fair use. Tushnet explained how and why CDL is a noncommercial use and explained that fair use analysis favors such uses. Furthermore, this brief discusses how nonprofit library lending has historically received special treatment in the law because of libraries’ crucial role in supporting access to knowledge, freedom of speech, and a core purpose of copyright: to incentivize creation for the benefit of the public. Libraries help democratize information by ensuring broad audiences can access information, and CDL is simply a new way for libraries to fulfill this mission. 

Michelle Wu

Michelle Wu, a former law professor and former director of the law library at Georgetown, also submitted a brief in this case defending CDL. In her brief, Wu explains that CDL was designed to strike a balance between two competing interests:  granting authors exclusive rights and encouraging socially beneficial onward creation. She also discusses the broad range of ways in which CDL benefits libraries, and explains that the publishers’ proposed solution—that libraries must digitally license works—is inadequate to meet the needs of libraries and their patrons. Wu also explains that, regardless of the outcome of this particular case, the court should be extremely cautious about disrupting CDL as a general practice, because its contours, applications, and features vary across the different implementations of CDL. While the publishers behave as if CDL is a monolithic practice, it can vary substantially between institutions that implement it. 

Kenneth Crews and Kevin Smith

Library and information scholars and historians Kenneth Crews and Kevin Smith also submitted an amicus brief in this case, arguing that CDL is a natural extension of traditional library activities in supporting communities, broadening access to information, and facilitating civic engagement. In their brief, Crews and Smith contextualize the history of libraries in the U.S., and emphasize libraries’ role in ensuring public access to information and working towards a more egalitarian society. The brief also explains how and why CDL is the “logical and reasonable next step” for libraries as they adapt to meet the changing needs of their patrons. The digital age has brought on heightened inequality in access to information, making CDL lending by libraries more important than ever. 

What’s Next?

Following their motions for summary judgment, both the publishers and the Internet Archive filed letters asking the court to agree to grant oral argument, where the parties appear and make their case before the judge. No oral argument has been scheduled as of the date of this writing, though we will keep our readers apprised as this case moves forward. After briefing and arguments, the court has a few options. It could grant either side’s motions in whole or in part. The court could also conclude that important facts actually are in dispute, in which case a full trial may be scheduled. Once there has been a decision in a case, there is always the possibility that either party could appeal the ruling by asking the Second Circuit (the relevant court of appeals) to reconsider Judge Koeltl’s decision.

Authors Alliance Submits Amicus Brief in Hachette Book Group v. Internet Archive

Posted July 15, 2022
Photo by Timothy L Brock on Unsplash

Authors Alliance is thrilled to announce that we have submitted an amicus brief in Hachette Book Group v. Internet Archive, a case currently pending in the Southern District of New York. In the case, four large publishers—Hachette, HarperCollins, Penguin Random House, and Wiley—brought a lawsuit against the Internet Archive, challenging, among other things, the legality of Controlled Digital Lending (“CDL”).

Our brief asks the court to uphold CDL as a fair use and explains that, contrary to the claims of the publishers, CDL does not harm authors, and in fact many authors support it strongly. In anticipation of our brief, we launched a survey to elicit feedback from our members and other authors on how they viewed CDL and whether and how they had used it. A majority of respondents voiced strong support for CDL, showing that the publishers’ representations about author interests do not apply to all authors. Our voice is an important one in this case because the publishers purport to represent the interests of authors in general, when a vast majority of working authors do not publish with these publishers or necessarily share their interests. Authors are not a monolith, and while not all authors support CDL, many see it as a valuable way to achieve their dissemination goals.

In our brief, we argue that CDL should be upheld for four reasons. First, CDL does not disrupt incentives for authors to create: authors have different motivations for creating new works, and these can include seeing their works have a greater impact when made available through CDL. Second, CDL helps authors reach readers, ensuring works are broadly accessible rather than languishing on library shelves. Library readers can encounter difficulties getting access to works when they are only available as print copies, whether due to print or mobility disabilities or simply living too far from the library in question. Third, CDL ensures that works are preserved, keeping them from disappearing into obscurity once they are no longer available commercially, but remain protected under copyright. The disappearance of 20th century books from public consciousness is a serious problem, and CDL’s preservation function is one solution. Finally, CDL can be a powerful research tool for authors to access others’ works during their writing process. CDL enables efficient access to a wide variety of research sources, and several Authors Alliance members have attested to the effectiveness of CDL as a research tool. 

We will keep our readers and members informed as this important case moves forward. We thank all of our survey participants for helping us understand the views and motivations of Authors Alliance members and other authors. You can read our full brief below:

Authors Alliance Supports Model Ebook Legislation

Posted July 7, 2022

Authors Alliance is pleased to add its support to an effort that would restore balance to the ebook market. Last week, Library Futures released a policy statement and model legislation that would help state legislatures resolve a host of challenges that make it difficult for libraries to lend ebooks and ensure their long-term availability. 

Why we care: For authors who want to have an enduring impact on the world, having their writings fall into obscurity is a major concern. For print books, libraries have historically played an important role in making sure books did not drop out of circulation. No matter the current state of the market or what is going to make the biggest splash on a publisher’s bottom line (or even whether a book has long gone out of print), libraries make authors’ books available to readers in both the short and long term. Copyright law plays an important role in balancing the level of control that publishers have over copies they sell and the rights that libraries and their readers have to access and use those copies. Current law gives libraries fundamental rights, including the ability to buy copies on the open market, lend copies to users one at a time, and preserve books for the long-term. 

For ebooks, publishers have been able to write their own rules for how libraries can use those books. That’s because every ebook that you buy–or that a library acquires –is not actually owned by the purchaser, but licensed by the publisher or ebook distributor. The terms of these licenses are largely dictated by publishers. In recent history, libraries have contended with contracts that severely limit how they can fulfill their mission – contracts that charge libraries multiple times more than what consumers pay, place strict limits on how many times a ebook may be lent out before the library has to pay for it again, place limits on how long the library can have access,  limits on how long a user can check out a book, and limits on how researchers can use that book (e.g., limiting text and data mining), among many other limitations that don’t apply in the print world. 

These kinds of contractual restrictions make an end run around the traditional market balance that existed in the print world. The end result is that for ebooks, authors are less likely to reach the readers they hope to, especially cutting out readers who rely on libraries for access and don’t have the financial means to purchase ebooks themselves. Restrictions on library preservation activities can also jeopardize long-term availability. While libraries are committed to continuing to pay for the care needed to maintain books long into the future, commercial publishers have no such incentive beyond the window in which a work is commercially viable. That window for commercial viability is short – on average, only 5 years. While some publishers (mostly academic publishers) have been willing to agree to license terms with libraries that provide for long-term availability for ebooks, most others have not, and instead actively frustrate library efforts to ensure long-term access. All of this means that as time goes on,  these types of restrictions could make authors’ books harder—if not impossible—to find online.

What the proposed ebooks law does: We wrote last year about a Maryland law passed in 2021 that aimed to force publishers that sold ebooks in the state to also license to libraries on “reasonable terms,” addressing many of licensing problems we note above.  

While the bill passed the legislature and became law,it ran into trouble almost immediately. The Association of American Publishers brought a lawsuit to enjoin its enforcement, arguing that because copyright law is the domain of federal law, state legislation governing ebooks is preempted by federal law and therefore unenforceable. Earlier this year, the Federal District Court of Maryland agreed, holding that because the Maryland law required that publishers “shall offer” a license to libraries whenever they offer an ebook to the public, it effectively forced publishers to grant these licenses, conflicting with the copyright holder’s federally granted exclusive right to control public distribution. The court explained, “[f]orcing publishers to forgo offering their copyrighted works to the public in order to avoid the ambit of the Act interferes with their ability to exercise their exclusive right to distribute. Alternatively, forcing publishers to offer to license their works to public libraries also interferes with their exclusive right to distribute.” The decision tracks closely with an opinion that Shira Perlmutter, Register of Copyrights and Director of the U.S. Copyright Office, released in 2021. The Copyright Office drew a sharp distinction between those state laws that purport to regulate the terms of a contract (which she concluded are unlikely to be preempted since they do not interfere with the right to distribute) with state laws that require publishers to grant a license (likely to be preempted). Perlmutter explained that “[b]oth the Third Circuit and the District of Utah have explicitly excluded from permissible state regulations those that “appropriate[] a product protected by the copyright law for commercial exploitation against the copyright owner’s wishes.”

Since Maryland passed its legislation, numerous other states have taken up the same issue, with slight variations on their approach. Given the failure of the Maryland law, how states craft such legislation is clearly important. 

Authors Alliance supports the Library Futures policy paper and model legislation because it offers a reasonable, productive, and viable alternative pathway for states to address inequities and unequal bargaining power in the ebook marketplace. Specifically, it proposes an approach that does not demand that publishers license to libraries on certain terms, but instead focuses on the state’s traditional and well accepted role in regulating how its own state contract law will apply, particularly in cases of unequal bargaining power.  We encourage states to utilize the framework set out by Library Futures rather than repeating the same framework as the Maryland law.

Authors Alliance Joins Amicus Brief in Vans v. MSCHF, Supporting the First Amendment Rights of Creators

Posted June 27, 2022

On Friday, Authors Alliance was pleased to join on an amicus brief in an important and fast-moving trademark case before the Second Circuit Court of Appeals in Vans, Inc. v. MSCHF Product Studio, Inc. Vans, creator of a variety of well-known skater shoes, alleged that MSCHF (an art collective, based in Brooklyn, pronounced “mischief”) had infringed its rights by “blatantly and unmistakably incorporat[ing] Vans’ iconic trademarks and trade dress” in MSCHF’s own shoe, which MSCHF called the “Wavy Baby.” For its part, MSCHF and the associated artist who designed the shoe (the artist’s stage name is “Tyga”) defended its creation by arguing that its shoes are a parody and an artistic expression of Van’s trademarks, thus protected by the First Amendment. MSCHF, for this project and many others, primarily uses “existing, potent, pieces of culture as [their] building blocks and working medium to create new works.”

Earlier this year, the Eastern District of New York granted a temporary restraining order and preliminary injunction against MSCHF, preventing distribution of the Wavy Baby shoes. The court reasoned that the Wavy Baby shoe was likely to cause consumer confusion and that MSCHF’s First Amendment defense was unlikely to succeed. MSCHF appealed, and the case is currently before the Second Circuit Court of Appeals. 

In the past, Authors Alliance hasn’t weighed in on trademark lawsuits like this. But one of the major issues we care about is making sure that authors can freely communicate their ideas and reach broad audiences. We know that our members “write to be read” and hope to see their knowledge and products of their imagination widely disseminated. Often, restrictive interpretations of copyright law can impose a barrier for authors. That’s why we’ve focused on things such as fair use, which gives authors the right to comment, criticize, and create parodies freely, without infringing copyright, even when using or referencing material from other creators, and even when those materials include popular brands and culturally significant materials. 

Other laws, such as trademark law, can impose significant barriers for authors as well, and other rights such as the First Amendment can protect authors. Our brief doesn’t take a position on who should win the lawsuit. What we do take a position on is that First Amendment protections in trademark suits be taken seriously;  authors and artists rely heavily upon those protections to comment on modern consumer culture. Thus, the brief argues that the Second Circuit should reinforce a clear framework for courts to dispose of unconstitutionally oppressive trademark suits early in the litigation process, as a matter of law. As our amicus brief argues,  “[t]rademark law does not give brand owners the right to control depictions of, or comments on, their brands. Nor can it. The First Amendment guarantees artists’ right to depict the world as they see it and to respond in the marketplace of ideas to the inescapable corporate brand messages by which we are bombarded every day, virtually everywhere we look.” Without a clear framework for quick disposition of these suits, our amicus brief argues, “deep-pocketed brand owners can chill artists’ exercise of their First Amendment rights simply by threatening or filing lawsuits that are unlikely to prevail on the merits but that will entail long, costly discovery battles.”

Thanks to the attorneys at Lex Lumina PLLC for drafting this brief, and the visual artists, Mason Rothschild and Alfred Steiner, who joined us as amici curiae.

Welcome to to Dave Hansen, the New Executive Director of Authors Alliance

Posted June 16, 2022

Authors Alliance is pleased to welcome Dave Hansen as Executive Director, effective June 15, 2022. Dave is succeeding Rachel Brooke who has served as Interim Executive Director since October 2021. Rachel will remain with Authors Alliance, taking on the role of Senior Staff Attorney upon Hansen’s appointment. 

“Dave’s leadership experience and longtime support of Authors Alliance will be a boon to our education and advocacy work, and I am so excited to work together to further our mission of supporting public-minded authors,” said Rachel. 

Carla Hesse, Authors Alliance Board Member and outgoing Board President, remarked: “We are thrilled to welcome Dave as our new Executive Director. He brings a wealth of experience and expertise, as well as a fresh vision for the future of Authors Alliance in the legislative, legal and policy domains.”

Dave joins the Authors Alliance from Duke University, where he worked since 2016. He was responsible for Duke University Libraries’ core research, collections and scholarly communication support in his role as Associate University Librarian and Lead for Copyright and Information Policy. As a member of the Libraries’ senior leadership he helped guide organizational policy while also working closely with faculty and graduate student authors, publishers, and librarians on copyright and other legal issues. He was also active in promoting information policy that benefits the public, testifying before congress, making agency submissions, and writing amicus briefs submitted to a variety of federal courts. 

“I’m incredibly excited to be joining the Authors Alliance,” said Dave. “The mission of the Authors Alliance is so unique and important. Especially right now, with so much up for debate in copyright and information policy, I’m motivated to bring a coordinated voice in the policy arena, to advance the interests of authors who want to serve the public good by sharing their creations broadly.”  He continued, “In my view, the Authors Alliance mission and its members are at the heart of what the copyright system is all about — directly promoting ‘the progress of science and the useful arts,’ as the Constitution puts it—and there is really no other organization like the Authors Alliance that prioritizes the views of public-interest minded authors.”  

“I’d like to see Authors Alliance continue its great work in promoting copyright policy that values openness and flexibility for authors, with reasonable rules that allow the public to benefit from access to creative works. For example, Authors Alliance has long supported controlled digital lending, which I think will remain a policy focus for us into the future, along with related issues of digital ownership. I also believe legislative efforts to more tightly control the online platforms through which many authors share their work will be important for Authors Alliance as well. New legislation such as the EU’s Article 17 filtering rules, and similar proposals for changes to US law, could easily stifle authors from sharing their works and exercising their rights online. There are also a number of policy issues beyond copyright–for example, content moderation and Section 230 of the Communications Decency Act–that increasingly affect how authors can share their work, and I think Authors Alliance should explore how we can best address those challenges.”

Prior to his role as Associate University Librarian for Duke University Libraries, Dave served as head of the Libraries Office of Copyright & Scholarly Communication, and between 2011 to 2016 held academic appointments at UNC Chapel Hill School of Law and UC Berkeley School of Law. He holds a JD and MSLS from UNC Chapel Hill.

Top Gun and Termination of Transfer

Posted June 10, 2022
Photo by Peter Pryharski on Unsplash

Termination of transfer has been in the news lately with a dispute over the release of a sequel to the movie Top Gun, entitled Top Gun Maverick, which as of the date of this blog post is one of the highest grossing movies in the U.S.. A little discussed and somewhat arcane provision of copyright law, termination of transfer is a mechanism that allows authors to formally reclaim rights that were previously handed over to a publisher or another party. Termination of transfer can be a powerful tool for authors who want to reclaim rights, but the termination of transfer statute is complicated, requiring that authors wait at least 35 years to exercise this right and serve notice between two and ten years in advance.

In the Top Gun Maverick dispute, the estate of the author who wrote a magazine article on which the original Top Gun movie was based is suing Paramount Pictures in an effort to stop the film’s release. Paramount had obtained a license for the magazine article, a nonfiction piece entitled “Top Guns,” for the original movie, but did not obtain a license to use the materials for the sequel. “Top Guns” was published in 1983 and is “a character-driven tale of two ambitious Navy fighter pilots” which inspired the original film.

In its complaint, the estate claims that it terminated the transfer of rights in “Top Guns” via the statutory provision, meaning that Paramount would no longer hold rights in the article as of the date of termination. The estate provided notice about the termination in 2018, and alleges that the termination went into effect in 2020. For its part, Paramount claims that Top Gun Maverick was “sufficiently completed” before 2020 when the termination went into effect, as it had originally been planned for release in 2019. On the other hand, the estate has expressed its view that the film was not completed until 2021 based on re-shoots. 

The questions in the Top Gun Maverick dispute may be largely technical: what does it mean for a film to be sufficiently completed, and how does this relate to statutory termination of transfer? Paramount has expressed that it has no interest in settling, reflecting its likely belief that it did not need a license from the author of “Top Guns” in order to produce Top Gun Maverick, whether due to the timing of the termination of transfer or for other reasons. Regardless, it is notable to see a major news story and high-profile lawsuit involving termination of transfer. Many have lamented that statutory termination of transfer is rarely used due to its obscurity, context dependence, and how complicated the provision and its requirement are. Authors Alliance is optimistic that this renewed attention to termination of transfer could lead authors and other creators to explore whether termination of transfer might help them reach their dissemination goals, and we encourage our members to consider termination of transfer where appropriate. Once a termination of transfer has been affected, the author who terminated the transfer regains the rights she had previously handed over to her publisher or another party. In the case of the “Top Guns” author’s estate, the estate is now free to license the article to other parties (whatever the result of the current dispute might be).  

Authors Alliance has a dedicated resource page on termination of transfer as well as a tool for authors to help them determine when they might be able to effectuate a termination of transfer and a template and guidance on effecting a termination of transfer. We have also published guest blog posts from authors on their experiences with termination of transfer. If you have experience with termination of transfer, please reach out to us at info@authorsalliance.org to share your story and help us bring more attention to this important but underused provision within copyright law.