Last month in our newsletter to members (join here so you don’t miss future news!), we shared a call to sign on to an open letter, organized by Fight for the Future, on behalf of authors in support of libraries. We’re really pleased to announce that this letter is now posted online and open for more signatures here. We encourage you to read it and sign if you support its message.
From our perspective, libraries are critically important partners in making sure that authors’ works are read and preserved. As the letter explains, “Libraries are a fundamental collective good.” The letter’s signatories “are disheartened by the recent attacks against libraries being made in our name by trade associations such as the Association of American Publishers and the Publishers Association: undermining the traditional rights of libraries to own and preserve books, intimidating libraries with lawsuits, and smearing librarians.”
Unfortunately, and predictably, the letter has received almost instant condemnation from the Authors Guild, the AAP (which, you might recall, has asserted that it has acted as legal counsel for the publishers who brought the Hachette v. Internet Archive lawsuit), and other related groups. They assert: 1) that authors don’t really understand what the Internet Archive controlled digital lending lawsuit is about, and if they did they wouldn’t support it, and 2) that “real libraries” don’t engage in activities like the controlled digital lending that is the subject of the Internet Archive lawsuit.
Neither argument holds weight. As part of our own efforts to support controlled digital lending in this case, Authors Alliance conducted a survey of our members and other authors. Responses showed that many authors do support CDL, and support it strongly. Additionally, many librariesacross the countrypractice CDL: it is far from a practice unique to the Internet Archive.
Jack’s work and that of several aligned groups has now resulted in three pieces of proposed legislation–one federal bill called the “Restoring Artistic Protection Act” (RAP Act), and two similar bills at the state level in New York and California–that would amend the rules of evidence to make it more difficult for prosecutors to introduce a defendant’s creative or artistic expression as evidence against a defendant in a criminal case. Authors Alliance supports these efforts. The California bill is now sitting on Governor Newsom’s desk, and we have written a letter to the Governor explaining why this legislation is important not just to rap artists, but to all authors and creators, and expressing our hope that it becomes law. Governor Newsom has until September 30th to sign or veto the bill. If he neither signs nor vetoes it, the bill will become law, going into effect in January 2023.
These bills–while addressing discriminatory use of rap lyrics against defendants–are designed to apply broadly to protect many other creators, including authors, from having their creative expressions used against them in court. The RAP Act, for example, states that as a general matter, ”evidence of a defendant’s creative or artistic expression, whether original or derivative, is not admissible against such defendant in a criminal case.” It allows for limited exceptions, such as when the lyrics make a specific reference to the alleged crime, but nonetheless provides strong protections for creative expression. The Act goes on to define “creative or artistic expression” broadly, as “the expression or application of creativity or imagination in the production or arrangement of forms, sounds, words, movements or symbols, including music, dance, performance art, visual art, poetry, literature, film, and other such objects or media.’’
We recently had the opportunity to sit down with Jack and discuss with him the background, and future, of this legislation:
Tell me about what motivated this effort?
Jack: The issues motivating the RAP Act have been going on for a long time. While it’s almost unthinkable that someone would use the music of Johnny Cash (“I shot a man in Reno just to watch him die”) or Eric Clapton (who sang “I Shot the Sheriff,” covering Bob Marley) as evidence against them in a trial, rap lyrics have been used again and again against rappers. Conservatively, scholars have identified over 500 cases in which prosecutors have used rap lyrics as evidence against an artist in court.
The admission of rap lyrics can be extremely detrimental to defendants. Over 25 years of research has shown that the mere association with rap can create a strong negative bias in jurors, who will take the lyrics as more literal, more violent, and more threatening, as compared to lyrics from other genres. All you have to do is label it “rap.”
Can you tell me about the origins of these bills?
The work on this issue began almost a decade ago. Charis Kubrin, who co-authored the Rap on Trial Legal Guide, Charis Kubrin, has been writing about this issue since 2005, and has since conducted astonishingresearch demonstrating a massive risk of bias when rap lyrics are introduced. When she began to hear regularly from defense attorneys needing help with this issue, we conceived of developing the Guide. Over three years later, with the help of dozens of law students in the IP, Arts, and Tech Clinic at UCI Law, we published the Guide along with a Brief Bank and Case Compendium.
What has been remarkable is that as we surfaced these issues, lawmakers in New York and California found out about them on their own and took action. And proponents from both the entertainment industry and the criminal justice movement have been working with them. The New York bill became the basis for the current federal bill, and the California bill is now on Governor Newsom’s desk for his signature.
How do these bills actually work?
These bills raise the bar for introducing rap lyrics as evidence. The federal bill, for example, would require a prosecutor to establish by “clear and convincing evidence” that the defendant intended the lyrics to have a literal meaning or that the expression refers to the “the specific facts of the crime alleged.”
The California bill is a little bit different. It says that the court should start with the presumption that creative expression is not probative, and requires that prosecutors have to overcome that presumption by showing that the lyrics in question meet a set of criteria for introduction as evidence, such as that they match the specific elements of the crime, or were written close in time to the alleged crime. Notably, the court is required to look at whether the introduction will introduce bias, and must look at all the research I mentioned on the issue of negative bias associated with rap.
How do these bills affect other creators?
These bills apply broadly, protecting artists, authors and all other types of creators. All the cases we’ve identified in our research have been focused on the uniquely negative use of rap lyrics against defendants–but you can see the importance of these protections for authors and other creators, especially in the current political climate. For example, with book censorship taking hold in a variety of places, it’s easy to imagine an aggressive prosecutor trying to use a controversial author’s fiction writing as evidence of criminal activity.
What can authors do?
The federal RAP Act has been co-sponsored by representatives Bowman (NY), Johnson (GA), Maloney (NY), and Jayapal (WA). If you support the bill, you should contact your representative expressing your support.
If you are in California, AB 2799 is currently on Governor Newsom’s desk awaiting his signature to become law. You can contact his office to express your support and encourage him to sign the bill.
Today, Authors Alliance joined 20 public interest, civil society, and other like-minded organizations in signing on to a letter opposing the latest iteration of the Journalism Competition and Preservation Act (“JCPA”). The full text of the letter can be found here. Last year, Authors Alliance signed on to an earlier letter voicing opposition to the JCPA when it was initially proposed. A new version of the bill was recently released in the Senate, prompting the bill’s opponents to reiterate our concerns.
In brief, the JCPA would enable collective bargaining by news organizations with large online platforms by creating a “safe harbor” from antitrust law to allow media organizations to band together and negotiate with these platforms. This blog post will explain our concerns about the bill and provide an update on how the legislation has evolved in the months since it was first proposed.
Problems with the JCPA
Touted as bipartisan legislation intended to protect journalism from unfair encroachment by large tech companies, the legislation has received support from groups such as the Authors Guild and some news publications. But civil society organizations have drawn attention to serious problems with the legislation for those who care about robust fair use rights and access to knowledge.
The JCPA would force platforms to negotiate with news publications for “access” to their content to engage in basic activities such as linking to the news publication’s website. By creating what some have dubbed a “link tax,” the JCPA could lead organizations and individuals to link less to other sources out of fear of copyright liability, creating a chilling effect on online speech and making knowledge less accessible. The JCPA could also expand the scope of copyright by covering the aggregation of snippets or headlines from press publications—information that is in many cases not entitled to copyright protection. The JCPA may also work to entrench the largest press publishers while disadvantaging smaller publishers, who lack the sophistication or resources to participate in this collective bargaining.
Changes to Legislative Language
The latest revised bill represents the third round of revisions to the JCPA (Public Knowledge has published comprehensive discussions of the first and second rounds of revisions in recent months for readers interested in learning more). Unfortunately, the latest changes to the JCPA does little to address the concerns voiced by Authors Alliance and our co-signatories last year.
There is some evidence that the bill’s sponsors heard the concerns voiced by Authors Alliance and others, but the changes do not go nearly far enough towards ameliorating our concerns. For example, the latest version of the bill includes a provision stating that it does modify, expand, or alter the rights guaranteed under copyright. But the legislation could also cover activities that are considered to be fair uses (such as aggregating “snippets” from articles and linking), creating uncertainty as to how the fair use doctrine interacts with this proposed legislation.
The revised bill also includes an “employee cap” which would bar news organizations with over 1,500 employees from participating in the anticipated collective bargaining to help address concerns about entrenching the largest players. But this would exclude just three of the country’s largest news publications, making it ineffective at addressing monopoly concerns. As today’s letter points out, the legislation as currently envisioned could “cement and stimulate consolidation in the industry and create new barriers to entry for new and innovative models of truly independent, local journalism.” To make matters worse, the JCPA does nothing to ensure that arbitration that any gains to news organizations will actually go to the journalists actually writing the articles. The legislation establishes “collective bargaining” rights for publications, many of which do not allow their employees to collectively bargain. By prioritizing publications over the authors who make these publications possible, the bill does little to address the difficulties faced by journalists and other authors.
Finally, other changes in the legislation create new problems. New language in the bill would force platforms to carry content of digital journalism organizations that participate in collective negotiations, which could lead to platforms being required to aggregate content containing extreme views or misinformation. This raises serious free expression concerns.
Andy Warhol Foundation v. Goldsmith is high stakes, as far as copyright law goes. The fair use case, currently before the Supreme Court, has the potential to radically change how we understand and rely on fair use, so it’s not surprising that the case has generated significant interest. We’ve chronicled the background of the suit and arguments made by the Andy Warhol Foundation (“AWF”) here and by photographer Lynn Goldsmith, here.
Last week, the final set of amicus curiae (friend of the court) briefs were filed. In total, there were 38 amicus briefs filed: 8 in support of the AWF, 20 in support of Goldsmith, and 9 in support of neither party. Our own brief, in support of AWF, is here.
If you add them up, the amicus briefs total around 240,000 words (for context, that’s just a little shorter than A Game of Thrones!). They come from a range of perspectives, with submissions from the “Royal Manticoran Navy: The Official Honor Harrington Fan Association;” Dr. Seuss Enterprises; Senator Marsha Blackburn; individual artists, photographers, photography groups; various media and publishing industry associations; at least 59 law and art professors across a number of different briefs (for, against, and neutral); several library groups and museums; and many others. It’s hard to summarize all of the briefs in a single blog post, but you can read them yourself on the Supreme Court website here.
The U.S. Government’s amicus brief: making art may be a fair use, but selling it isn’t
One brief stands out: the amicus brief submitted by the United States government. Typically, the government will only file an amicus brief when it has a meaningful federal interest in the case, which it identified here as primarily based on the policy advisory role of the U.S. Copyright Office and the U.S. Patent and Trademark Office to Congress and the Executive Branch, respectively. Submitted by the Solicitor General and co-authored by a number of U.S. Copyright Office staff, it argues that the Second Circuit rightly decided the case and that Goldsmith should prevail. If nothing else, it’s worth a read to understand how the Copyright Office staff think about fair use.
The brief largely echoes and bolsters the arguments made by Goldsmith, but reframes a key issue in the case with a new and unusual argument about licensing that we thought worth highlighting. First, the government brief starts by redefining what the case is about, telling the court that the question presented is “whether petitioner established that its licensing of the silkscreen image was a ‘transformative’ use . . . ” (emphasis mine). That is a subtle but important change from how AWF presented the question to the Supreme Court when it decided to hear the case. AWF stated the question as “whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material.” Goldsmith, in her brief opposing Supreme Court review, framed the question slightly differently but still focused on the original Warhol prints and not their subsequent licensing. She argued that the question is “whether the Second Circuit correctly held that Warhol’s silkscreens of Prince did not constitute a transformative use.”
The government’s brief then goes on to make the following argument: that “the fair-use inquiry focuses on the specific use—here, petitioner’s 2016 commercial licensing of the Orange Prince image to Condé Nast—that is alleged to be infringing.”
The first part of that statement is nothing new: fair use is a fact-specific inquiry. What’s interesting is how the government then goes on to narrowly defining the “use” in question as AWF’s subsequent commercial licensing of the work. The government argues that the court should distinguish between the creation of Warhol’s original prints—which may have been a fair use—and the exploitation of the Warhol print via commercial licensing, which the government argues was not. The government isn’t entirely alone in suggesting this approach. For example, a brief by a number of library organizations suggested that the court might focus on the commercial licensing as a way to resolve this case, and a brief by a number of museums discuss some of the implications of this approach.
The government’s narrow focus on commercial licensing seems like an attempt at a Solomonic resolution for this particular case, and may seem like a good way to achieve a just result for fair use edge cases. But it’s worth pausing to consider some unintended consequences.
It’s a novel approach—we can’t think of a single case in which a court ruled that the creation of a secondary work was fair, but its subsequent commercial exploitation (such as when a work is licensed to a magazine or publisher) was not.
This new approach seems likely to create an awful lot of confusion and uncertainty for creators. It would mean that ownership of rights in a secondary work that rely on fair use would be permanently hobbled; instead of the full bundle of rights that copyright provides (such as the rights to distribute, perform, and reproduce the work), the author relying on fair use to create a new work would be stuck with a more tenuous set of rights, since this new work could at any time be converted from a “lawful fair use” with a copyright owned by the author, to an “infringing derivative” based on its crossing an undefined line of too much commercial exploitation.
This change in status, from lawful to infringing, causes particular uncertainty for creators because of Section 103(a), a part of the copyright act we don’t discuss much. Section 103(a) states that, for a derivative or compilation that incorporates pre-existing copyrighted materials, there is no copyright at all “in any part of the work in which such material has been used unlawfully.” For a work like the Warhol print that is so tightly integrated with the Goldsmith original, Section 103(a) would put the Warhol print into a copyright twilight zone—the Warhol foundation wouldn’t hold any copyright at all, but neither would anyone else. It would effectively give Goldsmith a veto over any subsequent use, though not actually owning rights in the secondary work itself.
This could also generate quite a bit of uncertainty for downstream users who were relying on AWF’s previously valid rights in the secondary work. Imagine, for example, that prior to licensing the Warhol image to Condé Nast, AWF had granted a free license to a number of non-profit libraries, museums, or art history scholars to reproduce and distribute the Warhol image in a variety of educational and scholarly contexts. We presume that this licensing passes fair use muster and so AWF still holds rights. Then, AWF later licenses the Warhol print to Condé Nast and crosses the fair use line. Section 103(a) would then apply to extinguish all of AWF’s rights that underlie the license for scholarly use, converting previously valid, licensed uses into ones that potentially infringe themselves on Goldsmith’s rights.
Perhaps those downstream users could then rely on fair use themselves to continue to make use of the prints, but that puts an awful lot of responsibility on those users to understand and apply fair use themselves so that they are sure to stay within the bounds of the law. It also would require those users to somehow learn of the subsequent infringing use and extinguishment of their license. That kind of notification isn’t something the copyright system is currently well-suited to accomplish. It also casts aside those users outside the U.S. who don’t have any such backup fair use pathway to legitimize their use.
Commerciality and market considerations certainly play an important role in the fair use assessment, and maybe it would have made a difference in this case if Warhol had actually agreed not to commercialize the prints but then later did (there is no evidence of this). But, as it stands, it seems to us that creating a category of secondary copyrighted works that are only sometimes fair use, until they’re not based on subsequent commercial exploitation, isn’t the best option.
Our brief makes two principal arguments for why the Ninth Circuit should re-hear the case. First, we explain that the case has serious First Amendment implications which could affect the free speech rights of countless U.S. authors and members of the public. Next, we argue that the errors the original panel of Ninth Circuit judges made in its fair use analysis are serious enough that the Ninth Circuit should reconsider whether Wofsy has a viable fair use defense to Sicre de Fontbrune’s infringement claim.
In our fair use argument, we drilled down further on the various errors the panel made as well as the serious ramifications its decision could have on authors’ ability to rely on fair use to create new works of authorship. We argue that the panel failed to consider the First Amendment limitations on copyright protection: the photographs in question exhibited minimal creativity, which the court should have considered as part of its analysis of the nature of the works at issue. We also argue that the court erred by disagreeing with the lower court’s finding that Wofsy’s use was aligned with scholarship and research—prototypical examples of fair use set forth in the Copyright Act. Finally, we explain that fair use is a crucial First Amendment safeguard, which the panel should also have given more weight to in its decision.
Authors Alliance extends our thanks to Kathryn Thornton at Ropes & Gray for providing support on this brief, as well as our fellow amici for their feedback and support.
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 Project. The 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 bookstore. According to the Ninth Circuit Court’s retelling of the French case, The Picasso Project reused some 1,400 images fromthe 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.
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 ZervosCatalogue 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.
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.
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.
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 fromthe 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.
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.
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.
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.
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.
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 summaryjudgment 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:
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.
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, 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.
Following their motions for summary judgment, both the publishers and the Internet Archive filedletters 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.