Category Archives: Law and Policy

Authors Alliance Petitions for New Exemption to Section 1201 of the DMCA to enable Text and Data Mining Research

Posted September 8, 2020
Photo by Andrew Buchanan on Unsplash

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.

Authors Alliance Supports Copyright Office Proposal to Develop Termination Tools

Posted August 5, 2020
Photo by Nick Fewings on Unsplash

Authors Alliance has submitted comments to the U.S. Copyright Office in support of its proposal to develop sample templates for notices of termination and/or an online notice builder.

In the United States, termination of transfer laws enable authors to regain rights in their works that might have been signed away—even if their contracts contain language to the contrary. While termination rights are immensely important for authors and the public, termination rules are complicated and formalistic, which contributes to the underutilization of this important tool. The statutory provisions governing timing of the notice and termination windows, together with the regulations governing the information required in notices of termination, are complex. Adhering to these requirements can be especially burdensome to creators who are not represented by agents or attorneys.

Given Authors Alliance’s efforts to address these challenges by providing resources and tools to help creators understand how to evaluate whether and when a work might be eligible for termination and how to exercise termination rights, it will come as no surprise that we wholeheartedly support the Office’s proposal to develop sample templates for notices of termination and/or an online notice builder.

Authors Alliance commends the Copyright Office for giving consideration to developing resources to help creators properly effectuate their termination rights. Our comment invites the Office to look to our tools as a model for these efforts, and to count on Authors Alliance to support these efforts based on our experience developing termination of transfer resources for creators. With proper tools and guidance, we believe more authors will be able to terminate rights and make their works newly available.

To read our full comment, click here.

Internet Archive Defends Library Digitize-and-Lend Model

Posted July 29, 2020
Photo of book and Open LIbrary card
Photography courtesy of the Internet Archive

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.

Authors Alliance and Allies Petition to Renew 1201 Exemption for Nonfiction Multimedia E-books

Posted July 22, 2020
Image by Pexels from Pixabay

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.

Section 512: University and Research Libraries as Rightsholders

Posted July 7, 2020
Photo by Markus Winkler on Unsplash

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.

The Missing Stakeholder of DMCA 512: Non-Infringing Users

Posted June 30, 2020
Magnifying glass on blue background with words "Focus On: Section 512 Notice & Takedown"
Photo by Markus Winkler on Unsplash

Authors Alliance thanks Professor Casey Fiesler and Corian Zacher for sharing this guest blog post.

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On May 21st, the Copyright Office released a report documenting the results of a study five years in the making. Its goal was to evaluate the current effectiveness of Section 512 of the Digital Millennium Copyright Act, which immunizes internet providers and websites that host user generated content from copyright infringement liability—as long as they provide a system that allows copyright holders to request that infringing content is removed. In practice, Section 512 has enabled websites like YouTube to continue operating without facing excessive legal costs and copyright infringement judgments. In other words, every time you see a “this video is no longer available due to a copyright claim” message, you’re seeing the results of a compromise—because without DMCA 512 takedown procedures, those copyright owners might have just sued YouTube out of existence instead.

One obvious conclusion of the study was that “no potential solution(s) will please everybody” (pg 68). However, the problem is that “everybody” as defined by the Copyright Office study seems to include only two categories of stakeholders: online service providers (OSPs, like YouTube) and large-scale copyright owners like movie studios and record companies. Even in concluding that “the notice-and-takedown system as experienced by parties today is unbalanced” (pg 72) (which we agree is true), nowhere do we see the experiences of another relevant category: content creators who make fair uses of copyrighted content. The Copyright Office virtually ignored these “transformative creators,” along with other kinds of Internet content consumers.

However, these relevant stakeholders are also deeply impacted by the lack of balance in DMCA 512. The fact that platforms like YouTube have entrusted copyright analysis with algorithms rather than human content moderators has resulted in the improper removal of many non-infringing works, particularly those that transform copyrighted content in a way that constitutes fair use—for example, remix videos, or videos that reference movie clips in order to critique a film or educate students through distance learning. The Copyright Office acknowledges that the goal of Section 512 is balancing the needs of all relevant parties, but at the same time, it vastly underestimates the extent that improper takedown notices affect users. The nod to “inaccurate notices” (when non-infringing content receives a takedown request) even focuses on the cost incurred to the OSP—with no acknowledgment of the cost to the non-infringing content creator (pg 148).

However, there is a very real cost to transformative content creators as well, and they should be a relevant stakeholder in policy discussions. Inaccurate takedown notices have a tremendous impact on all creators’ ability to share their work online, and those repeatedly accused of infringing may lose content and accounts as a result. These stakes are particularly heartfelt by small creators, who rely on the reach of platforms to share their content.

In 2017, we collaborated with the Organization for Transformative Works to conduct a survey of fan creators that focused on experiences with and attitudes about copyright, including the DMCA. There were over 2,000 survey respondents, and our qualitative analysis of these answers revealed a number of salient points drawn from real-world experiences with DMCA takedowns. Our conclusion is that between chilling effects and improper takedowns, DMCA 512 procedures have resulted in a great deal of non-infringing transformative content being lost from the internet.

The imbalance here is one of power. Most instances where participants reported that their works were accused of infringing another’s copyright involved fanvids (a type of remix video), generally on YouTube. Participants suggested that YouTube’s application of Section 512 adversely impacts works that constitute fair use because YouTube’s automated system flags content that contains any amount of copyrighted work. After all, if even judges and lawyers reasonably disagree about what constitutes fair use, how could an algorithm make that judgement? Moreover, when a video is taken down because a platform’s automated system flags it, the burden shifts to users to have their work reinstated. Faced with that burden, participants also wrote about how “scary” the process is; even YouTube’s “Copyright School” video suggests that remix video creators should consult a lawyer and emphasizes that they could “get into a lot of trouble” if they file a counter-notice incorrectly. Additionally, fan creators frequently use pseudonyms (as do many content creators) and might be wary of providing their real name on a legal document that would be connected to their account pseudonym, as is required by a counter-notice.

We heard from a number of participants who had their transformative content flagged and decided not to try to file counter-notices, because they were concerned about doing it incorrectly, they were confused by the process, or lacked the time to try to figure it out. However, from the few that did, they were often successful—suggesting that platforms remove content without considering whether the work was a fair use or not, or the work would not have been flagged in the first place. Considering the number of users who simply don’t fight it when their work is taken down, we can reasonably conclude that platforms are frequently removing non-infringing fanworks. Moreover, repeated experiences of takedowns often lead to users abandoning a platform altogether.

Overwhelmingly, the fan creators represented in our survey viewed the lack of balance in the takedown process as stifling their creativity and hindering their ability to share their work. The harm of failure to consider fair use was particularly powerful: Participants whose works were removed explained that they believed that their works constituted fair use, offered examples of uses that fit squarely within fair use by being noncommercial and being used for criticism and parody, and discussed how removal of those works harmed their individual creativity and ability to participate meaningfully in their community.

By assuming that all users are “infringers” or “pirates” and therefore an adversary to the 512 process, the Copyright Office does a disservice to the many content creators who reasonably and legally rely on fair use. Instead, they should be considered a stakeholder along with OSPs and copyright holders, such that their benefits and harms are part of the balance as well.

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Casey Fiesler is an Assistant Professor of Information Science at University of Colorado Boulder, where she studies online communities, governance, and ethics. Her dissertation work for a PhD in human-centered computing (following a law degree) examined the chilling effects of platform design and policy on transformative content creators. She is a member of the OTW legal committee.

Corian Zacher is a May 2020 graduate of the University of Colorado Law School. Her research focuses on technology law and policy.

Authors Alliance Submits Reply Comments to USCO on the Meaning of Publication in the Online Context

Posted June 16, 2020
Photo by Lauren Mancke on Unsplash

In March, Authors Alliance submitted comments to the U.S. Copyright Office in response to its request for public input on the meaning of “publication” in the online context. This week, we submitted reply comments to support our position.

In our initial comments, we encouraged the Copyright Office to adopt guidance stating that “publication” occurs when a work is first offered, under the rights-owner’s authority, for viewing online without technological restrictions that prevent downloading or other reuse. This position is supported by the statutory text, the legislative history, the case law, and the policy goals of (1) clear, bright-line guidance and (2) promoting broad use of works by reducing the availability of statutory damages and fee-shifting, which chill use and expression.

Our reply comments explain and expand on the stakes of “forfeiture of rights” under Section 411, a provision of the Copyright Act that provides that a civil action for copyright infringement cannot stand where the plaintiff knowingly included inaccurate information in its copyright application that would have caused the Copyright Office to deny that registration. We explain why this provision and case law underscore the necessity of clear and bright-line guidance, and how the intuitive and unambiguous approach to online publication proposed by Authors Alliance responds to that critical issue. Our comment also explains how a careful examination of the effects of registration errors shows that the stakes are not that high, and most rights can be substantially restored after dismissal due to an invalid registration, with the exception of the already undesirable right to statutory damages.

Authors Alliance thanks the exceptional team at Latham & Watkins for preparing these comments. To read the full comment, click here.

US Copyright Office Issues Report on Section 512

Posted June 3, 2020
Diana Buck - Headshot

Authors Alliance is grateful to Diana Buck, Copyright Intern, for sharing this summary of the US Copyright Office’s recent Report on Section 512, a part of the Digital Millennium Copyright Act (“DMCA”) enacted in 1998 to provide a framework for copyright owners and online service providers (“OSPs”) to address copyright infringement online.

The United States Copyright Office recently released a Report on the operation of Section 512. The Report is the culmination of a five-year study of whether Section 512 is working as originally intended to balance the interests of OSPs and copyright owners.

Section 512 gives OSPs a “safe harbor” from secondary liability for their users’ copyright infringement. In return, OSPs are required to implement certain features to protect copyright holders, most notably “notice and takedown” procedures. Under notice and takedown procedures, copyright owners can get infringing material removed from online sites by sending brief “takedown notices” to OSPs, without the expense and hassle of filing a lawsuit. To be eligible for the safe harbor, upon receiving a takedown notice with the statutorily-required information, the OSP must remove the allegedly infringing material.

In preparing the Report, the Copyright Office sought input from stakeholders. OSPs generally praised Section 512 for allowing them to grow their services and serve the public without facing debilitating lawsuits. Copyright owners generally expressed concern that they couldn’t utilize Section 512 in a meaningful way to address copyright infringement because infringing material reappears across the internet even after it is removed in response to takedown notices. User groups critiqued the notice and takedown regime in a different way, contending users’ interests are not being adequately protected when their content is mistakenly targeted and removed.

The Copyright Office’s Report concludes that the balance has tilted askew, failing to meet the concerns of copyright owners. However, the Copyright Office generally recommends that Congress clarify and revise some of the language of Section 512, rather than make any large changes that would go beyond the original construct of the DMCA. The Copyright Office outlines areas for potential revision, including:

  • Clarifying what exactly constitutes a “repeat infringer,” and whether allowing OSPs to have unwritten policies for termination of repeat infringers’ access to OSP platforms has Section 512’s desired deterrent effect.
  • Clarifying the proper knowledge requirements for an OSP to receive safe harbor protection, including delineating a lack of “actual knowledge” of infringing activities from a lack of “red flag knowledge,” which is when an OSP is aware of facts and circumstances that make infringing activity apparent.
  • Clarifying whether a copyright owner, when submitting a takedown notice, must include a unique URL for every instance of infringement on an OSP’s service.
  • Considering an alternative dispute resolution model for whether material should be removed and reinstated, instead of requiring that a copyright owner must file a federal lawsuit.
  • Monitoring the impact of the Ninth Circuit’s decision in Lenz v. Universal Music Corp., and whether it is appropriate for Congress to clarify whether copyright owners who send takedown notices should have to meet an implied good faith requirement that they assessed whether the potentially-infringing use was actually fair use.

Advocacy groups for large content creators, such as the Association of American Publishers (“AAP”) and the Motion Picture Association of America, issued statements that commend the Copyright Office’s report, agreeing with the Report’s conclusion that the DMCA fails to adequately protect creators’ rights.

Academics and organizations critical of the Report argue that it favors the copyright industry in almost every respect, potentially placing new burdens on OSPs and allowing notice senders to abuse Section 512 by using notice and takedown to censor content they do not own or control. Several commentators point out that the Report fails to account for internet users’ interests. Copyright scholar and Authors Alliance board president Pamela Samuelson also criticizes the Report’s stance on the Lenz decision and for chiding OSPs for failing to remove content that the OSPs believe is fair use. Critics express concern that the Report supports terminating internet access for users on the basis of allegations of infringing activity. These critics express relief, at least, that the Report did not go as far as suggesting site-blocking or notice-and-staydown (areas where the Copyright Office instead suggested that additional study was needed).

Whether to make any of the changes suggested in the Report is a legislative decision for Congress. The Senate Judiciary Subcommittee on Intellectual Property is examining the DMCA and has announced plans to draft changes to the law as early as this year. The Copyright Office, in its Report, stated its intention to prepare education materials for copyright owners and OSPs on their rights and obligations under Section 512, including rolling out a new website, copyright.gov/DMCA, for that purpose.

Authors Alliance Statement on Publisher Lawsuit Against Internet Archive

Posted June 2, 2020
Photo of book and Open LIbrary card
Photography courtesy of the Internet Archive

Yesterday, a group of commercial publishers filed suit against the Internet Archive, arguing that making electronic copies of books available through Open Library and the National Emergency Library constitutes copyright infringement. The lawsuit takes aim at the Controlled Digital Lending (“CDL”) model and the Internet Archive’s National Emergency Library.

This suit conflates two distinct approaches to lending works, each with different copyright implications. Regardless of how one feels about—and the legality of—the National Emergency Library (a temporary response to the urgent pandemic crisis), Authors Alliance fully supports Controlled Digital Lending and believes the attempt to challenge it in the courts is without merit.

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 relies on CDL to make many of its scanned books available through the Open Library.

The National Emergency Library expands on the CDL model by eliminating waitlists for books through at least June 30, 2020. The Internet Archive launched the National Emergency Library in March after libraries across the country closed in response to the COVID-19 outbreak, leaving their physical collections inaccessible to patrons. Unlike books made available through CDL, books available through the National Emergency Library are not subject to the “owned-to-loaned” ratio.

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.

Authors Alliance has not taken a position on the National Emergency Library, but we urge publishers and others to recognize that this is an extraordinary time of emergency and to be flexible about efforts to enable students, scholars, medical professionals, and the shelter-in-place public to read. We applaud the publishers who have made scholarly content freely available to assist with access for the many students, faculty, and researchers now working remotely due to the global pandemic.

Implied Licenses in Copyright Law

Posted May 27, 2020

Authors Alliance is grateful to Jacqui Lipton for this guest post on implied licenses. Her new book, Law and Authors: A Legal Handbook for Writers, is an approachable, reader-friendly resource to help authors navigate the legal landscape of the contemporary publishing industry. Through case studies and hypothetical examples, Law and Authors addresses issues of copyright law, including explanations of fair use and the public domain; trademark and branding concerns for those embarking on a publishing career; laws that impact the ways that authors might use social media and marketing promotions; and privacy and defamation questions that writers may face. Get your copy today from the University of California Press (use discount code 17M6662 for 30% off).

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Authors deal with copyright issues all the time, both in relation to their own, and other people’s, work: for example, if an author wants to use someone else’s photography or graphic to illustrate a point made in a book, or use a line of a poem or song as a chapter epigraph. Usually, a publisher will ask the author to obtain permission for these uses. In the absence of permission, or in the absence of a traditional publisher seeking permission (e.g., in the self-publishing context), the go-to defense for unauthorized use, if a problem arises, is typically fair use.

This blog post is about another defense to copyright infringement that can arise where an author thinks she has permission to use copyrighted material in the absence of a clear contract, based on surrounding facts. Enter the implied license doctrine. While it can be difficult to succeed with this defense, it’s worth knowing about.

Implied licenses in the copyright context are an outgrowth of basic contract law principles where agreements are sometimes implied between two or more people in circumstances where a judge or jury believes that those people would have made a contract if they’d turned their minds to it. The typical example given in law school classrooms involves lawn mowing: Assume you mow your neighbor’s lawn every Sunday for three weeks, and she gives you $20 each time. Then you mow her lawn the next week and she refuses to pay. Do you have a contract? A contract would probably be implied here based on the way you both acted. Your neighbor would likely have to pay you the $20 for the fourth week.

Copyright law has adopted a similar approach in terms of licenses to use a copyright work if it seems like the parties would have created a license under the circumstances. An implied license, if it exists, must, by definition, be non-exclusive because U.S. copyright law requires exclusive licenses to be in writing.

Courts have differed in the tests they use for implying a copyright license. Some courts use a three-step test that largely developed out of situations where the parties had an express agreement in place, but deviated from its terms in practice: for example, where a contract requires invoices to be generated and payments to be made prior to engaging in a licensed use, but the parties have engaged in a course of dealing that allows invoices and payments to post-date uses (e.g., publication) of licensed works.

In these kinds of cases, many courts have asked whether the copyright holder: (1) creates a work at another person’s request; (2) delivers the work to the other person; and, (3) intends the other person to copy and distribute the work. If the answer to all of these questions is “yes”, a license will likely be implied.

For example, in Latimer v Roaring Toyz, 601 F.3d 1224 (2010) a freelance photographer (Latimer) was hired by Kawasaki to photograph some tricked-out Kawasaki motorbikes for promotional materials connected to a bike show. The pictures were later used for promotions in Cycle World magazine articles and on Roaring Toyz’s website. Kawasaki and Roaring Toyz argued that there was an implied license to use the photos in all of these contexts. The court held that there was an implied license for Roaring Toyz to use the photographs for the bike show, but not for any other purposes. (The license had to be implied here because the original contract was with Kawasaki, not Roaring Toyz.)

Applying the three-step test, the court noted that: (1) Latimer took the photos at Kawasaki’s request; and, (2) he delivered the photographs to Kawasaki and Roaring Toyz; (3) for use at the show. This was enough evidence to support an implied license to use the photos at the show. However, the license didn’t cover the additional uses on Roaring Toyz’s websites or in the Cycle World magazine.

Not all courts rely on the three-step test for implied licenses. Some take a much more wholistic view of whether an implied license has been established. In Pelaez v McGraw Hill, 399 F. Supp. 3d 120 (2019), another case involving arguments about unauthorized uses of photography, the court noted that the correct legal test for an implied license is whether the parties conduct, taken as a whole, supports the intent to grant a license. This approach, taken in many cases, is more like the standard common law approach to implying any kind of contractual obligation to unclear facts.

In Pelaez, Judge Wood emphasized the fact that a license cannot be imposed on the basis of the unilateral expectations of one party. It is not enough for a person to subjectively believe there was a license; there must be actual facts from which the court could infer that both parties intended a license, or would have intended a license if they had turned their minds to it. If an author or other creative artist makes it clear, say, on their website that they do not consent to unauthorized use of their material (e.g., many authors say they “do not allow fanfiction”), it’s unlikely a court would imply a license in relation to the relevant works.

Because of the challenges in constructing implied licenses out of often ambiguous facts, if you want to re-purpose someone else’s work in your own manuscript, it’s a better idea to either obtain permission or to see if you raise a good fair use argument. More information on fair use is available here.

Of course, a court can always “get it wrong” when working by implication, which is why it’s always better to specifically say clearly what uses are, and are not, allowed, under a written contract. Even if you post your work online, express license terms are easier to create than ever before. Creative Commons licenses enable authors and others to release work online with clear license terms attached. Stock photography websites, for example, do a very good job of clearly setting out the licensing terms for images released via their services. Terms can include both money and attribution, as well as restrictions on future commercial uses. Further information on Creative Commons licenses is available here.

Headshot of Jacqui Lipton

Jacqui Lipton is the founder of Raven Quill Literary Agency as well as a consultant on business and legal issues for creative artists. She also teaches law and legal writing at the University of Pittsburgh, as well as several online venues. She writes regular columns on legal and business issues for authors for SCBWI, Luna Station Quarterly, Catapult, and Savvy Authors. Her book Law and Authors: A Legal Handbook for Writers is available from University of California Press.