On October 12th, the Senate Judiciary committee began its discussion of the nomination of the Honorable Amy Coney Barrett to a seat on the U.S. Supreme Court. Prior to her nomination to the Court, Judge Barrett served as a judge in the 7th Circuit Court of Appeals after being nominated to that court by President Trump in 2017. While her three year tenure means there are few clues as to her views on intellectual property, three copyright decisions out of the 7th Circuit, for which Judge Barrett was one of three judges on a panel considering the cases, shed some light on how she might rule in copyright cases. With approximately 40 copyright petitions currently before the Supreme Court, the stakes are high for rights holders and policy makers. It should be noted that Judge Barrett did not write any of the below opinions herself, but participated in deliberations and joined each of them in full. While Judge Barrett’s nomination has been subject to controversy in some circles, there is reason to be optimistic about her views on copyright law.  

Rucker v. Fasano

Rucker v. Fasano was a case in which an author of an unpublished work alleged that an author of a similar published work had infringed her copyright. In 2010, author Kelly Rucker submitted a chapter and synopsis for a novel, The Promise of a Virgin, to a fiction contest sponsored by Harlequin Publishing, a popular trade publisher of romance novels. Then next year, Rucker learned she was not a finalist in the competition. Then, in 2013, Rucker found a book on Amazon entitled Reclaim My Heart written by defendant Donna Fasano. After purchasing a copy and reading the book, she discovered “several similarities between the plot of the novel and her work.” Both novels told “a tale of a wealthy teenage girl who falls in love with a boy of Native American heritage and becomes pregnant, before they are cruelly parted[,]” before “the lovers are reunited years later and . . . rekindle their fiery romance while their child explores his indigenous heritage with his father’s guidance.” Rucker believed that these similarities showed that Harlequin must have given her synopsis and sample chapter to Fasano, forming the basis for her copyright claim.

Ultimately, Rucker’s claim was found to be meritless. After a district court ruled in Fasano’s favor, finding that Reclaim My Heart did not infringe upon Rucker’s copyright in The Promise of a Virgin, Rucker appealed the ruling to the 7th Circuit. The district court had concluded that the novels “were not strikingly similar,” despite sharing some common themes, since “Rucker’s book was a ‘highly sexualized romance’ while Fasano’s was more of a ‘courtroom drama.'” The district court was also persuaded by the fact that Fasano finished a manuscript for a work that later became Reclaim My Heart in 2007—before Fasano began writing The Promise of a Virgin. Fasano also submitted a synopsis of the work to Harlequin in 2006, but her book was ultimately published by Amazon. 

In the 7th Circuit, a three judge panel including Judge Barett affirmed the district court’s holding, focusing on the impossibility of copying where Fasano’s book was written before Rucker’s and where there was not only no evidence of copying, but no possibility that Rucker could have copied Fasano’s work based on the timeline. The court stated summarily that given the factual record, “it is established that Fasano did not copy Rucker’s work,” without which “there can be no viable claim for copyright infringement.” Rucker’s claim that she “‘believe[d] upon reliable information’ that Fasano had access to the submissions to the Harlequin contest” was found to be insufficient to support an inference that this was the case. 

Vernon v. CBS Television Studios

In Vernon v. CBS Television Studios, writer Antonio Vernon sued several television networks for copyright infringement, alleging that they had stolen his idea for a television show called Cyber Police, for which Vernon had unsuccessfully submitted three scripts to a production company. Vernon alleged that a multitude of television shows on these networks including Intelligence, CSI: Cyber, and Cybergeddon infringed his copyright in Cyber Police based on the similarities between his work and these shows. After a district court dismissed his claims on grounds that his complaint was inadequate, Vernon appealed to the 7th Circuit. 

A three judge panel including Judge Barrett affirmed the district court’s dismissal of Vernon’s complaint. It found that the supposedly copied features of his work, such as “agents fighting cybercrime, ‘romantic strife,’ and ‘computer hijacking'” were “too common and standard to plausibly suggest that defendants’ shows were ‘substantially similar’ to his.” Such elements are known as scènes à faire—features standard to certain types of works, like marriages at the end of romantic comedies and shoot-outs in western films—and are as a rule not protected by copyright. In holding that there was no valid claim for infringement, the court underscored this principle and applied it to a relatively new type of work: technology-driven police television shows. This application of scènes à faire relaxes the threat of litigation for authors that seek to use familiar scenes and elements in their works, even when those scenes and elements involve new and emerging fields and technologies.

Sullivan v. Flora, Inc.

Sullivan v. Flora concerned the question of what constitutes a “work” for the purposes of a copyright infringement suit when the allegedly infringing materials consist of multiple images registered for copyright under a single application. While this may seem overly technical, there are wide-ranging implications for rights holders subject to meritless copyright claims.

In 2013, graphic artist Amy Sullivan entered into an agreement to produce original artwork for two informational videos for Flora, Inc., an herbal supplement company, though she retained the copyright in her work. Later that year, Sullivan discovered that Flora had used her artwork in promotional advertising, which the agreement between the parties did not authorize. Sullivan contacted Flora about the matter, and some of the images were removed from the promotional advertising materials. Sullivan proposed a licensing agreement whereby Flora could pay for the continued use of her artwork in the promotional materials. Flora refused, whereupon Sullivan filed suit. A jury ruled in Sullivan’s favor, finding Flora had infringed Sullivan’s copyright in 33 individual illustrations and awarding her $3.6 million in statutory damages. Flora then appealed the determination to the 7th Circuit.

One issue that loomed large in the litigation was the question of whether the 33 images used by Flora without proper authorization constituted a single work, or 33 separate works, for purposes of copyright. All the illustrations were registered on the same copyright application, but on the other hand they were separate, discrete illustrations. Because statutory damages in a copyright infringement lawsuit are calculated on the basis of the number of works infringed, the question had serious implications for Flora’s financial obligations but also for copyright claimants more broadly. This was the question before a three judge panel including Judge Barrett. The 7th Circuit considered, as a matter of first impression for that circuit, “what constitutes ‘one work’ in a fact pattern where a jury found infringement on multiple works registered in a single copyright application.”  The court held that this inquiry should ask whether the works have substantial independent economic value on an individual basis, or if the value lies in their compilation and relies on the presentation of all works in concert. This fact-sensitive analysis makes it more difficult for a copyright claimant to prevail on large damages awards based on infringement of multiple images where the images function as a compilation. After laying out this test, the court remanded the case to the district court for application of the proper analysis to Sullivan’s claim, vacating the $3.6 million damages award. 

Sullivan v. Flora is still ongoing—in early 2020, the parties submitted their briefs to the district court for the Western District of Wisconsin in support of their positions regarding damages.

Key Takeaways for Authors

While it is difficult to extrapolate a comprehensive view of copyright law from copyright decisions Judge Barrett participated in during her time in the 7th Circuit, a theme of skepticism of overbroad copyright claims and excessive damages emerges from these three decisions. In both Rucker v. Fasano and Vernon v. CBS, the court rejected copyright infringement claims based on tenuous similarities between two works, signaling that more is required than mere thematic similarity to prevail on a copyright infringement claim. Together, the cases make clear that a belief that a later work is simply too similar to the author’s own work alone cannot be the sole basis for a successful copyright claim in the 7th Circuit. 

Sullivan v. Flora also has important implications for authors, since the judges in the case demonstrated a concern about excessive damages in copyright actions. One of Authors Alliance’s founding principles is ensuring copyright’s remedies protect our members’ interests, and this decision serves as an obstacle for excessive damage awards in the 7th Circuit: a claimant must prevail on proving that each compiled work has independent economic value before being awarded damages based on multiple incidences of infringement: multi-million dollar awards like the plaintiff in that case received cannot be the default in such situations.

Tomorrow, the Senate Judiciary Committee will consider S. 4632, the Online Content Policy Modernization Act, which would establish a small claims tribunal within the Copyright Office as an alternative to federal court for pursuing copyright claims. Authors Alliance has concerns with the provisions in the current draft.

As we’ve previously written, Authors Alliance supports reducing barriers to copyright enforcement for those with limited financial resources by providing a faster and cheaper avenue to remedies. Today, the high cost of litigation keeps many independent authors and other creators from enforcing their copyrights. A well-designed copyright small claims process could fix this but, unfortunately, the copyright small claims dispute provisions in S. 4632 invite abuse and pose a high likelihood of harm to authors as both claimants and respondents in the proposed tribunal.

To address problems with the current draft of S. 4632, we urge the Committee to:

• Limit statutory damages to cases where it is impossible or cost prohibitive to prove actual damages and develop principles to guide awards of statutory damages;
• Remove restrictions on the grounds for judicial review of the tribunal’s decisions;
• Include additional safeguards to deter copyright trolls and preserve the utility of the small claims tribunal for independent authors and creators;
• Require potential respondents to affirmatively opt-in to the small claims process; and
• Narrow the jurisdiction of the small claims tribunal.

Read more about these recommendations in our letter to the Committee.

Independent authors and creators should have access to a low cost way to enforce their copyrights and vindicate their right to use others’ copyrighted works in lawful ways. We urge the Committee to modify the bill to better serve the creators it is intended to benefit.

Authors Alliance, joined by the Library Copyright Alliance and the American Association of University Professors, filed a petition with the Copyright Office for a new three-year exemption to the DMCA as part of the Copyright Office’s eighth triennial rulemaking process. Our proposed exemption would allow researchers to bypass DRM measures in order to conduct text and data mining research on both literary works that are published electronically and motion pictures. Further details can be found in the full text of the petition, available here.

Text and data mining allows researchers and others to gain new insights into language and culture, scientific inquiry, and civic participation. For example, text and data mining can be used to examine the evolution of language over time or to identify important but overlooked findings in scientific papers.

While the possibilities of text and data mining are great, researchers face limitations in their ability to use the technique. They must either rely on collections of works created by others, which may be missing important, relevant works, or they must build their own collections, a prohibitively time-consuming process in which researchers manually scan printed books or capture video playback in real time.

Authors Alliance believes that researchers building their own collections of works should be able to bypass DRM measures to extract data directly from sources such as eBooks and DVDs. The DMCA prohibits such circumvention, even if the intended use would not infringe anyone’s intellectual property rights. If this exemption is granted, researchers will be empowered to build relevant collections and conduct this important research.

How you can help

Historically, the Copyright Office has scrutinized the factual record when deciding what exemptions ought to be granted. Assuming the Copyright Office considers our exemption request, we will need to make a more detailed submission to the Copyright Office later this year that fully sets out the legal and factual basis for the exemption. If your research has been impacted by the inability to access electronically published literary works or motion pictures, we want to hear from you. Please reach out to us at info@authorsalliance.org and share your story.

Authors Alliance is grateful to Clinic students Jason Francis and Alistair McIntyre, supervised by Clinic Director Catherine Crump and Teaching Fellow Gabrielle Daley, at the Samuelson Law, Technology & Public Policy Clinic at Berkeley Law for their assistance filing this petition and for this blog post.

The Internet Archive has responded to a copyright lawsuit filed by a group of commercial publishers which takes aim at the Controlled Digital Lending (“CDL”) model and the Internet Archive’s (now closed) National Emergency Library. The Internet Archive’s answer to the publishers’ complaint highlights the fair use arguments underpinning the digitize-and-lend model, which has been in operation since 2011 with the support and participation of hundreds of other libraries.

Under the CDL digitize-and-lend model, libraries make digital copies of scanned books from their collections available to patrons (the hard copy is not available for lending while the digital copy is checked out, and vice versa). A library can only circulate the same number of copies that it owned before digitization. Like physical books, the scanned copies are loaned to one person at a time and are subject to limited check-out periods. The Internet Archive launched National Emergency Library in March in response to the COVID-19 outbreak which left the physical collections in libraries inaccessible to patrons; books available through the National Emergency Library were not subject to the “owned-to-loaned” ratio. The National Emergency Library closed on June 16.

The Internet Archive’s answer to the publishers’ complaint explains that the digitize-and-lend model serves the public interest in preservation, access, and research—all classic fair use purposes. Every book in the collection has already been bought and paid for by the libraries that own them, and most of the volumes are out of print.

In a recent statement, Internet Archive Founder & Digital Librarian Brewster Kahle emphasized that “libraries have the right to buy books, preserve them, and lend them even in the digital world” and that learners need digital access to books that libraries own physically. “Controlled Digital Lending is a respectful and balanced way to bring our print collections to digital learners. A physical book, once digital, is available to only one reader at a time. Going on for nine years and now practiced by hundreds of libraries, Controlled Digital Lending is a longstanding, widespread library practice.”

Copyright expert and Authors Alliance Board President Pamela Samuelson agrees, stating “it’s really tragic that at this time of pandemic that the publishers would try to basically cut off access to a digital public library like the Internet Archive is running.”

Authors Alliance has long been a supporter of the CDL model, which helps authors share their creations with readers, promotes the ongoing progress of knowledge, and advances the public good—objectives that are consistent with the mission of Authors Alliance. Several of our members have spoken out in favor of the model. CDL is particularly beneficial for authors whose works are out of print or otherwise commercially unavailable: In the absence of digitizing and lending these books, many would simply be inaccessible to readers. The CDL model is a boon to the authors of these and other books, allowing them to find new audiences online.

Today, Authors Alliance joined with allies to petition to renew the existing exemption to Section 1201 of the Digital Millennium Copyright Act (DMCA) that allows authors to bypass encryption to make fair use of film clips in nonfiction multimedia e-books.

While copyright law generally provides for exceptions like fair use that allow authors to use copyrighted works without permission in certain circumstances, some courts have held that these exceptions do not apply to the anti-circumvention provisions of Section 1201. Evading digital rights management (DRM), even when done for otherwise lawful purposes, may be prohibited by law. However, every three years, the Librarian of Congress is empowered to approve discrete, temporary exemptions from the law in order to carve out space for non-infringing uses caught up in the DMCA’s broad sweep.

In 2015 as a part of the U.S. Copyright Office’s sixth triennial rulemaking session, Authors Alliance joined with author Bobette Buster, the American Association of University Professors, and counsel from legal clinics at the UC Irvine Intellectual Property, Arts, and Technology Clinic and the Samuelson-Glushko Technology Law & Policy Clinic at University of Colorado, Boulder to successfully petition for an exemption that allows authors to circumvent digital locks on Blu-rays, DVDs, and digitally transmitted videos to make fair uses in multimedia e-books offering film analysis. In the seventh triennial rulemaking, the Librarian of Congress expanded the exemption to all nonfiction multimedia ebooks.

Now, as the eighth triennial rulemaking cycle begins, our team has submitted a petition to renew this exemption. Authors Alliance believes that multimedia e-books are an important form of authorship and wants to see authors empowered to fully realize their promise. The freedom to author e-books that incorporate multimedia content, consistent with the core tenets of the First Amendment and academic freedom, remains significant and important. We will continue to track the progress of the rulemaking and provide updates as they become available.

We are grateful to the student attorneys and their supervisors at the Intellectual Property, Arts, and Technology Clinic at UC Irvine School of Law and the Samuelson-Glushko Technology Law & Policy Clinic at University of Colorado School of Law for their work supporting this exemption.

Authors Alliance is grateful to David Hansen, Associate University Librarian for Research, Collections, and Scholarly Communications at Duke University, for sharing this blog post based on his statement to the Senate Committee on the Judiciary, Subcommittee on Intellectual Property on whether the notice and takedown procedures under Section 512 of the Digital Millennium Copyright Act (DMCA) are working. This statement was originally presented on June 2, 2020.

Hansen’s testimony addressed how universities and research libraries interact with Section 512 as both service providers serving a large number of users and as rightsholders who produce creative copyrighted content. The excerpted portion below addresses the first perspective: that of universities and libraries as rightsholders.

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Promoting the creation and dissemination of knowledge is an important part of what our university and our libraries do. At Duke alone, our faculty and other researchers author more than 10,000 articles every year, along with hundreds of books, reports, video content, software, visual works, learning resources, educational programs, and many other types of materials. For virtually all of this content, our primary aim is to get as many people as possible to read and engage with the ideas we are sharing to help increase our collective understanding of the world around us, and of each other. These works of authorship, more than almost any other, fall at the heart of what our Constitution states is the objective of Copyright Law: “to promote the progress of science and the useful arts.”

In most cases and for most of the published research Duke produces, we aim to disseminate these works with no direct financial return; no royalty. If possible, our authors generally want no financial barrier to stand in the way of engagement with their research, operating under the idea that more and faster progress will be made without those barriers. In many cases, we find ourselves licensing around the controls that copyright law automatically provides. For example, more than ten years ago, Duke Faculty voted to adopt an institutional open access policy that provides for free, widespread distribution of research articles that Duke faculty have authored.

Duke leaves the ultimate decision on how to disseminate scholarship to the individual authors. Many authors post their materials to Duke systems (for example, DukeSpace, our institutional repository). But, many also share through nonprofit repositories such as ArXiv or bioArxiv, as well as commercial sites such as ResearchGate and Academia.edu. Because of the variety of content, and the desire to engage our research with the public, we also share content through more popular sites such as YouTube.

Given our interest in widespread dissemination of ideas, for research and academic work our strong preference is a system that is biased toward keeping content up online unless there is strong evidence that an infringement has occurred. The current notice and takedown system does not always accomplish this goal.

First, for some academic works, the ownership of rights is far from clear. Although authors are the holders of those rights initially, they are often asked to license them away at least in part through publishing contracts that are confusing and vary significantly from journal to journal and which can change with some frequency. As a result, some academic authors are unsure of whether they are legally permitted to share their own work online under the terms of their publishing agreement. Many research articles are also subject to pre-existing licenses that attach automatically upon creation—for example, at Duke under our Open Access policy—which provide that authors and their institutions retain certain rights to share and reuse their work. My experience with takedown requests we receive at Duke is that publishers do not take into account pre-existing open access licenses even though their existence is widely known. In the case of a takedown request for an article an author has posted to an online platform, authors can feel uncertain how to respond since they may be unsure whether they actually have retained the necessary rights to distribute or reuse their own work.

These takedown efforts to remove content posted by authors can be highly disruptive. In our role as a service provider at Duke, we only receive a few such requests each year, but other online hosts of scholarly content have become targets. In 2017 the commercial publisher Elsevier, a Dutch-owned publishing conglomerate, reportedly issued 100,000 takedown notices to ResearchGate. ResearchGate is a for-profit site, but most of the content is submitted by academic authors to share for free with other researchers and the world. Subsequently, Elsevier and one other publisher, the American Chemical Society, sued ResearchGate for copyright infringement, identifying more than 3,000 articles they claimed rights to. At least some of those articles are likely to be covered by preexisting university open access licenses. At present ResearchGate reports that it hosts 150,000 Duke authored articles. Unfortunately, Section 512 currently contains few mechanisms to address these asymmetries of power and information in the notice and takedown process. For most academic authors I work with, including faculty but especially graduate students, responding to a takedown notice is an intimidating and time-consuming process that most will try to avoid if at all possible.

Second, and perhaps the most important thing I can convey, is how important fair use is for research, teaching, and for libraries that support those functions. Most research is highly iterative, building upon the work of others. Often, for scholarly publication that means one must reference earlier work by copying—whether by simple quotation in a literary critique, by copying charts or graphs in a scientific publication, or by reusing images in a work commenting or criticizing art or history. These are all common place examples of fair use that academic authors and teachers rely on every day. Indeed, I have found that I seldom review a scholarly work that does not rely on fair use in some way. While the courts have consistently found that fair use supports these kinds of core scholarly and teaching uses, other provisions of the Copyright Act can make exercising the fair use right challenging. For scholarly authors who want to share their work through online platforms, Section 512 is one of them.

Section 512 does not explicitly address how fair use factors into the notice and takedown process. The Ninth Circuit’s decision in Lenz v. Universal Music Group Corp., 815 F.3d 1145 (9th Cir. 2016) (the “dancing baby” case) was a welcome development, as it mandated that a rightsholder first consider fair use in order to assert the required good faith belief of infringement when making a takedown request. However, in practice we know that in many instances automated content identification systems are the first method of assessment, and they do not handle fair use assertions well.

This is predictable given the fact-intensive balancing that fair use requires. It is an “equitable rule of reason” that requires careful consideration of several factors. For a recent, ironic, example, YouTube’s ContentID system reportedly flagged a video of a panel discussion of a law school copyright conference hosted by NYU’s Engelberg Center on Innovation Law & Policy. It identified multiple claims of infringement. The videos included several short clips of popular songs, which were necessary for the musical experts on the panel (experts from the well known “Blurred Lines” case) to include in order to explain to the audience how to analyze songs for similarity. Although NYU had a strong fair use claim, ContentID had no way of understanding.

While automated systems certainly have their place, it is important to have adequate processes in place to protect those users, such as academic authors, who rely heavily on fair use when sharing their own research with the world.

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To read more about Hansen’s views on how Section 512 works for universities and libraries as service providers and for his suggestions for how Congress should approach changes to Section 512, read Hansen’s full statement here.