Category Archives: Law and Policy

The Public Domain and New Derivative Works

Posted January 12, 2021
Montage of book and film covers of works entering the public domain
Montage courtesy of the Center for the Study of the Public Domain

Earlier this month, we celebrated the new batch of literary works entering the public domain, and shared with you some common ways that works enter the public domain. Once a work is in the public domain, authors and the public at large can make any use of it in any way they wish, including uses that were formerly the exclusive right of the copyright holder. One such right is the right to prepare derivative works based on the public domain work. Derivative works are new works which build off of pre-existing works, such as translations or theatrical adaptations. Today, we will discuss new uses that can be made of works that have fallen into the public domain using examples from popular films and literature. 

The Great Gatsby in 2021

One of the most well-known literary works to enter the public domain this year is F. Scott Fitzgerald’s The Great Gatsby. Now, authors are free to create new works drawing on the characters, plot, and expression from Fitzgerald’s original without fear of copyright liability. Since it is no longer subject to copyright protection or restrictions on its use, the text can also be read or downloaded for free online

One new derivative work based on The Great Gatsby and published just this month is Michael Farris Smith’s Nick, a new prequel. Nick imagines Nick Carroway’s life prior to his time at West Egg, explores Nick’s trauma, and describes a stay in New Orleans after World War I. While the Fitzgerald Trust, which controls the rights to Fitzgerald’s works under copyright, has been selective in granting licenses to prepare derivative works based on Gatsby in the past, it can no longer “try and safeguard the text, to guide certain projects and try to avoid unfortunate ones.” For instance, one recently licensed derivative work of Gatsby was a graphic novel published in June 2020. Fitzgerald Trustee Blake Hazard “was closely involved with the graphic novel” and selected the illustrator herself. Now, anyone is free to use Gatsby as a building block for add-on creation like graphic novels without permission from the Fitzgerald Trust. And we are sure to see new derivative works emerge in the coming months and years: trade publishers are planning new hardcover editions, and fans have recently called for a Muppet version of the novel (though we note that this is complicated by the fact that Disney controls the copyright in the Muppets).

Derivative Works in Popular Culture

Derivative works based on works that have entered the public domain are nothing new. Shakespeare’s plays—which have always existed in the public domain, since their publication predated the first copyright law—have inspired a multitude of beloved derivative works, from films Ten Things I Hate About You (The Taming of the Shrew) and She’s the Man (Twelfth Night) to Ray Bradbury’s Something Wicked this Way Comes (Macbeth), and has inspired numerous loose retellings such as Brave New World (The Tempest) and even Disney’s The Lion King (Hamlet). 

In fact, derivative works based on public domain works will themselves eventually enter the public domain once their copyrights expire, enabling the creation of new derivative works based on now-public domain derivative works. For example, the musical and film, West Side Story, is a derivative work based on Shakespeare’s Romeo and Juliet, a play which itself drew heavily on Ovid’s Pyramus and Thisbe, such that Romeo and Juliet too could be considered a derivative work. Both Romeo and Juliet and Pyramus and Thisbe were published prior to the passage of the first copyright law, but this example illustrates how derivative works based on public domain works can lead to the evolution of popular stories over time. In this way, creating derivative works based on works in the public domain fosters the development of culture and knowledge—a core purpose of copyright law.

Reaching New Audiences with Derivative Works

Derivative works can also enable the original work to reach new audiences. Shakespeare’s plays can be daunting for contemporary readers, using unfamiliar language and conventions. But the multitude of derivative works based on Shakespeare plays brings the stories to audiences who may not be interested in reading the original works, enhancing access to the stories in the process. 

It may surprise you to learn that Disney—colossal and vocal defender of copyright protection—has for decades taken advantage of the public domain to produce some of its most popular and successful films. In the 90s, Disney co-produced with Jim Hensen studios two Muppets movies based on public domain books: A Muppet Treasure Island and A Muppet Christmas Carol, based on out-of-copyright works by Robert Louis Stevenson and Charles Dickens respectively. The list goes on—Snow White, Cinderella, and Sleeping Beauty are all based on Grimms’ Fairy Tales; The Little Mermaid is based on a Hans Christian Andersen story, as is the more recent Frozen—a retelling of Andersen’s The Snow Queen. In general, the Disney adaptations made these stories more palatable for children, such as changing the ending of The Little Mermaid from one in which “[Ariel’s] heart is broken when her prince marries someone else” and ultimately sacrifices herself rather than killing the prince, as Ursula demands, to the happily-ever-after ending we know today.

In this way, new derivative works based on public domain works can enable the original work to reach new audiences. Public domain texts can be made freely available online for anyone to read, enhancing access to those texts for those without access to the print editions. Translations are derivative works which allow public domain texts to reach audiences who lack fluency in the work’s original language, and a wide variety of adaptations—from abridged versions for less advanced readers to so-called critical editions for college students—can help the work reach readers of different demographics. 

The possibilities for add-on creation to works that have entered the public domain are endless. We encourage our members and readers to explore the public domain and discover new sources of inspiration! 

Authors Alliance Files Comment in Support of New Exemption to Section 1201 of the DMCA to Enable Text and Data Mining Research

Posted December 15, 2020
Photo by Maxim Ilyahov on Unsplash

Yesterday, Authors Alliance, joined by the Library Copyright Alliance and the American Association of University Professors, filed a comment with the Copyright Office for a new three-year exemption to the Digital Millennium Copyright Act (“DMCA”) as part of the Copyright Office’s eighth triennial rulemaking process. Our proposed exemption would allow researchers to bypass technical protection measures (“TPMs”) in order to conduct text and data mining research on both literary works that are published electronically and motion pictures.

Background: Section 1201 and Exemptions

Section 1201 of the DMCA prohibits the circumvention of TPMs used by copyright owners to control access to their works. It also prohibits the manufacture or sale of devices or programs designed to circumvent these TPMs. In other words, section 1201 prevents individuals from breaking digital locks on copyrighted works, even when they seek to make a fair use of those copyrighted works or engage in otherwise non-infringing activities. 

Because section 1201’s prohibitions can interfere with fair and socially beneficial uses of copyrighted works, the DMCA also provides for a triennial rulemaking process to grant temporary exemptions to the prohibitions. Authors Alliance has participated in each 1201 rulemaking cycle since our founding, petitioning for exemptions and their renewals to help authors enjoy their rights while ensuring their creations reach new audiences during the 2015 and 2018 cycles. For the upcoming 2021 rulemaking, we have petitioned for a new exemption that would allow researchers to bypass TPMs on literary works distributed electronically and films for the purpose of conducting text and data mining (“TDM”) research, in addition to our petition to renew an exemption for multimedia e-books

Text and Data Mining

Text and data mining refers to automated analytical techniques aimed at analyzing digital text and data in order to generate information that reveals patterns, trends, and correlations in that text or data. TDM has great potential to enable groundbreaking research and contribute to the commons of knowledge. As a highly transformative use of copyrighted works done for purposes of research and scholarship, TDM fits firmly within the ambit of fair use. But the current prohibition on bypassing TPMs in section 1201 makes TDM research on texts and films time consuming and inefficient—and in some cases, impossible—working against the promotion of the progress of knowledge and the useful arts that copyright law has been designed to incentivize.

Because literary works distributed electronically and motion pictures are protected TPMs, researchers—unable to bypass these TPMs due to section 1201—can turn instead to works in the public domain for their TDM research. With regards to films, this avenue is effectively unavailable, since works published after 1925 generally remain under copyright. For literary TDM scholars, literary works published before 1925 remain a potential alternative area of study, but focusing TDM on pre-1925 texts “further reinscribes white men as the center of the field and further marginalizes women and people of color.” Authorship was far less diverse in 1925 than it is today, so TDM research on public domain texts ends up privileging white male voices rather than being representative of authors contributing to the commons of knowledge today.

Our petition for a TDM exemption is accompanied by letters of support from 14 separate authors and researchers currently engaged in TDM research on literary works and films whose work has been hampered by section 1201, and two additional letters from experts who support TDM researchers. Here are just a few examples of their experiences: 

The Data Sitters Club

The Data Sitters Club is a group of scholars under the Stanford University Literary Lab, “a research collective that applies computational criticism, in all its forms, to the study of literature.” The Data Sitters Club explores research questions in relation to the well-known Baby-Sitters Club series, a series for elementary and middle school aged girls that was popular primarily in the 80s and 90s. The group would like to use computational analysis to investigate the extent to which the characters have distinct voices and explore the series’ treatment of religion, race, adoption, divorce, and disability. The Data Sitters Club sees their study as a step towards exploring the worldview of American women in their 30s and 40s who read the Baby-Sitters Club books as children. It also has the goal of investigating common tropes in the books to explore these questions further. 

There are over 200 books in the series, yet literary scholarship on the Baby-Sitters Club is sparse. Due to this gap, the power of TDM to shed new insights on large quantities of text, and the formative effect of children’s literature on its readers, the group sees a particular impetus to explore how the “iconic depiction of girlhood in the upper-middle-class American suburbs” has both mirrored and shaped its readers’ views of the world. Yet because the Baby-Sitters Club books were all written during the latter half of the 20th century, they remain under copyright, and the e-book versions are protected by technical protection measures, as is almost always the case with e-books. Because of section 1201’s prohibition on bypassing TPM, the Data Sitters Club cannot use the Baby-Sitters Club e-books for their project, and are instead forced to manually scan physical books and correct any transcription errors before they can apply their computational analysis to the texts, limiting the amount of texts they can study and detracting from the time they can spend on their important research questions. 

The Conglomeration of Publishing and Patterns in Fiction

Professor Dan Sinykin, an assistant professor at Emory University who teaches English and computational analysis, is currently at work on a book, The Conglomerate Era, which seeks to explore how the conglomeration of U.S. publishing changed fiction: in the 1950s, almost every publisher in the country was independent, but today, despite the continue presence of some independent publishers in the ecosystem, only five multinational media conglomerates dominate the trade market (soon to be four, with the planned merger of Penguin Random House and Simon & Schuster). Professor Sinykin would like to use TDM “to detect patterns of change across thousands of novels across decades” in a groundbreaking exploration of literary history. However, because he seeks to study works published after 1945, which remain protected under copyright, Professor Sinykin’s project is made much more difficult due to section 1201’s prohibition on bypassing technical protection measures. 

Because he cannot use the e-book versions of late-20th century novels to do his analysis, Professor Sinykin must use HathiTrust, a digital corpus of works under copyright that scholars can use for TDM purposes with subscriptions or institutional affiliations. Professor Sinykin points out the weaknesses of using HathiTrust, such as the cumbersomeness of using HathiTrust’s “data capsules,” including their limited computing power and the difficulty of accessing the capsules securely. The HathiTrust capsules are also limited to “holdings of select university libraries” and are not representative of fiction during the time period Sinykin wishes to study. Importantly, HathiTrust is not free, making the type of research Sinykin is currently undertaking inaccessible to scholars with fewer resources. If Professor Sinykin could bypass TPM on e-books and use those for his project, he could use more representative fiction texts and would thus be enabled to “write a better, truer book about conglomeration.” He could also teach TDM to his students—the next generation of scholars—to ensure that this work continues in the future. 

Text and Data Mining to Study Stylistic Elements in Film

Professor David Bamman is an assistant professor at UC Berkeley whose research focuses on natural language processing and cultural analytics, and whose current TDM project involves films. Professor Bamman also has experience applying natural language processing to a digitized collection of books which he and his team manually scanned themselves (similar to the Data Sitter’s Club’s workaround) due to concern over section 1201 liability if they instead bypassed TPMs. 

In 2018, he became interested in applying TDM techniques—computer vision and video processing techniques specifically—to film, and decided to compile a data set of films to explore whether directorial style in movies can be measured and quantified. Professor Bamman estimated that a dataset of approximately 10,000 films would allow him to conduct this research and explore how directorial style can be decomposed and measured, such as through types and lengths of shots and the color palette used in the film. Yet, cognizant of section 1201’s prohibition on bypassing technical protection measures, Professor Bamman purchased individual DVDs and underwent the burdensome process of playing them on a computer, and using “screen-capture” software to record the movie as it played in real time. This method does not violate section 1201, but proved to be insufficient for Professor Bamman’s project, as it would have apparently taken a human operator 10 years to manually screen capture enough films for him to complete his corpus. As a result, Professor Bamman has abandoned this line of research, despite seeing immense value in research questions around “historical trends in film over the past century.”

We’re grateful to law students from the Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law School for their work preparing the comment. Responses from commenters who oppose the petition for this exemption are due February 9, 2021 and further comments in support of the petition, or from those who neither support nor oppose the petition, are due March 10, 2021. The Librarian of Congress is expected to issue a final decision on the proposed exemption in October 2021. We will keep our members and readers apprised of any updates on our proposed exemption as the process moves forward.

Authors Alliance Weighs in On DMCA Reform

Posted December 2, 2020
Photo by Mike Stoll on Unsplash

Yesterday, Authors Alliance responded to questions from Senator Thom Tillis about reforming copyright law to better encourage the creation of copyrightable works and to protect those who make lawful uses of copyrighted works and software-enabled products. Tillis’s questions focused on potential reform to section 512 and section 1201, added to title 17 of the U.S. Code by the Digital Millennium Copyright Act (“DMCA”), and acknowledged that other aspects of title 17 could be revised to better tailor copyright law to the digital age.

As a threshold matter, our letter emphasizes that the goal of copyright reform efforts should be to appropriately align the interests of individual creators with the interests of the public for whom they create. We explain how authors and other creators who rely on online platforms to share non-infringing works with their audiences would be harmed if the current notice-and-takedown system under section 512 shifts to a notice-and-staydown system. A notice-and-staydown regime would harm authors relying on fair use, a license, or another lawful reason for sharing a work on the platform. Instead of moving to notice-and-staydown, we offer suggestions for copyright reform that would better serve the interests of creators and other non-infringing users.

With respect to section 1201, we suggest new permanent exemptions and changes that would streamline the triennial rulemaking process. That said, we emphasize that making the rulemaking process more efficient in these and similar ways is only a partial remedy to the fundamental problem that section 1201 stifles speech, access, and onward creation—even where those activities are clearly non-infringing—and in doing so creates heavy burdens for authors. To update section 1201 in a way that would truly benefit authors, we recommend that Congress should make clear in reforming legislation that there must be a nexus between the relevant use and copyright infringement for there to be a violation of section 1201.

To read our entire submission, click here.

We share Senator Tillis’s interest in reforming “copyright law’s framework to better encourage the creation of copyrightable works and to protect users and consumers making lawful uses” of copyrighted works, and look forward to supporting efforts that would make copyright work better for authors.

Fair Use and Parody in Fiction

Posted November 24, 2020
Photo by Josh Applegate on Unsplash

In celebration of National Novel Writing month, Authors Alliance is pleased to bring you resources and information about copyright issues of note for fiction authors. In this post, we will go over fair use as it applies to fiction writing. Last week, we discussed copyright protection for literary characters, and the preceding week, explored exceptions to copyright that are relevant to fiction authors.

One of the exceptions to copyright we talk about most often at Authors Alliance is fair use. Fair use is a doctrine that allows the use of copyrighted works without permission in certain circumstances, and is included in the Copyright Act. Authors Alliance offers a full-length guide to fair use for nonfiction authors, as well as a dedicated resource page designed to help authors navigate fair use issues. Within fiction, fair use comes up in different contexts than we normally see in nonfiction, as many of the core purposes of fair use—news reporting, research, and nonprofit educational uses—do not fit neatly within the ambit of commercial fiction. For this reason, fair use in fiction is often discussed in terms of parody. Parody— first discussed as a fair use by the Supreme Court in Campbell v. Acuff-Rose Music—works as a form of comment and criticism, core purposes of fair use. In the aforementioned case, the Court stated that parody had to “mimic an original to make its point.” While mimicking an original work is typically indicative of the kind of copying that can be infringement, in the context of parody, this similarity is essential for the parody to be successful. The Campbell Court defined a parody as a “literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule,” a definition which courts have more or less applied since. 

Suntrust Bank v. Houghton Mifflin 

The seminal court case for parody fair use in fiction is Suntrust Bank v. Houghton Mifflin, in which the estate of Margaret Mitchell, author of the perennial bestseller, Gone With the Wind, sued an author who had borrowed elements of the story for copyright infringement. The case concerned a book written by author Alice Randall entitled The Wind Done Gone, which Randall stated was “a critique of [Gone With the Wind]’s depiction of slavery and the Civil–War era American South.” The Wind Done Gone subverted many of the racial stereotypes in Mitchell’s novel, turning a story of a wealthy white family living on a plantation in Georgia into one which “flips [Mitchell’s] traditional race roles” and criticizes the racist tones in Mitchell’s prose by foregrounding complex and well-developed Black characters. 

The Wind Done Gone incorporates fifteen separate characters from Gone With the Wind into its story, as well as several distinct elements of the plot, “such as the scenes in which Scarlett kills a Union soldier and the scene in which Rhett stays in the room with his dead daughter Bonnie, burning candles.” Yet the court relied on the Campbell decision to find that Randall’s use of Mitchell’s work was a fair one—it was necessary to directly evoke the work in order to comment critically on it in a way that would be clear to readers. 

Dr. Seuss v. Penguin Books

Two other cases involving alleged parodies of works by Dr. Seuss illustrate the nuances of parody fair use a bit further. In Dr. Seuss v. Penguin Books, the estate of Theodor Geisel (the author of the Dr. Seuss Books) sued Penguin Books for its publication of an allegedly infringing work. The Cat NOT in the Hat! A Parody by Dr. Juice was “a rhyming summary of highlights from the O.J. Simpson double murder trial” which evoked the style of Seuss’s work. Penguin argued that the work was a parody of The Cat in the Hat and thus a fair use. The Cat NOT in the Hat! included language telling the O.J. Simpson trial story in the style of Seuss, such as “One Knife? / Two Knife? / Red Knife / Dead Wife” and “[I]f the Cat didn’t do it / Then Who? Then Who?” Yet evoking Seuss’s style was not enough to make the work a parody—the court emphasized that “[a]lthough The Cat NOT in the Hat! does broadly mimic Dr. Seuss’ characteristic style, it does not hold his style up to ridicule.” Unlike The Wind Done Gone, The Cat NOT in the Hat! did not comment on the original work, but merely borrowed its style to achieve different aims. For this reason, the court found that the work was not a parody, and that the author’s use of Seuss’s characters and style was not a fair one. 

Lombardo v. Dr. Seuss 

In Lombardo v. Dr. Seuss, the Geisel estate once again sued an author that had borrowed from Dr. Seuss’s work to create her own. In this case (which we have written about before in the context of fair use analysis), the allegedly infringing work was a play called Who’s Holiday, which “makes use of the characters, plot, and setting of the Dr. Seuss book, How the Grinch Stole Christmas! . . . to make fun of it and to criticize its qualities.” Who’s Holiday features the main character in How the Grinch Stole Christmas, Cindy-Lou, as a 45-year old woman who has fallen on hard times. Throughout the play, Cindy Lou “drinks hard alcohol, abuses prescription pills, and smokes a substance she identifies as ‘Who Hash,’” while speaking in rhyming couplets which evoke Seuss’s style. Unlike the Penguin Books case, Who’s Holiday did in fact criticize How the Grinch Stole Christmas!. Like The Wind Done Gone, it commented on the wholesome tone of the original work by juxtaposing it with crass, adult language and themes. Who’s Holiday “subverts the expectations of the Seussian genre” and making it appear “ridiculous,” functioning as an effective parody well within the bounds of fair use. 

Copyright Protection for Literary Characters

Posted November 17, 2020
Photo by King Lip on Unsplash

In celebration of National Novel Writing month, Authors Alliance is pleased to bring you resources and information about copyright issues of note for fiction authors. In this post, we will go over the copyrightability of fictional characters. Last week, we discussed exceptions to copyright that are relevant to fiction authors, and next week, we will survey issues in fair use that are relevant to fiction writers

As we discussed last week, some features of fiction work are outside of copyright protection altogether. But what about literary characters? As it turns out, the answer is not entirely clear cut. Some literary characters are entitled to copyright protection, and courts employ different tests to make this determination on a case-by-case basis. As a general rule, the more well-defined and unique a character is, the more likely it is to be entitled to copyright protection. This principle was established by the renowned Judge Learned Hand in a 1930s case, Nichols v. Universal Pictures. In that case, Judge Hand pushed back against attempts to claim copyright in characters that were defined mostly by scènes a faire and were therefore “stock figures.” More recently, courts have refined this analysis while considering the copyrightability of popular characters. 

In Detective Comics v. Bruns Publications—decided just a few years after the Nichols case—a court found that the Superman character was subject to copyright protection despite arguments that the character embodied the stock hero “Hercules” character commonly used in epics and action stories. Because Superman had original attributes beyond a Hercules type, the court found he could be copyrighted, and that a competing comic, Wonderman, infringed the copyright in the Superman character with its Wonderman character. The court observed that both Superman and Wonderman “conceals his strength beneath ordinary clothing but after removing his cloak stand revealed in full panoply in a skintight acrobatic costume.” Both were described as “the strongest man in the world” and “the champion of the oppressed,” and the only significant difference in their portrayal in the comics was that Wonderman wore a red uniform and Superman a blue one. The court concluded that the authors of Wonderman had “used more than the general types and ideas” present in the Superman character, and found infringement. 

Litigation involving famous detective Sherlock Holmes illuminates the nuances of copyright protection for literary characters a bit further. In a 2014 case, Klinger v. Conan Doyle Estate, the estate of Sir Arthur Conan Doyle sued the editor of an anthology of stories inspired by Sherlock Holmes, alleging that her work infringed the copyright in several Sherlock Holmes stories that had not yet entered the public domain. At the time of the lawsuit, a bulk of the stories had entered the public domain based on the expiration of the copyrights in those stories. The court rejected the estate’s argument that because some of the stories were still under copyright, the characters of Sherlock Holmes and his sidekick, Watson, remained under copyright. Because Klinger’s anthology was inspired by the Sherlock Holmes cannon as a whole, much of which had entered the public domain, the estate could not claw back copyright protection simply because a few stories about Holmes remained under copyright. Therefore, even if a character can be protected by copyright, when the underlying work enters the public domain, so too does that character. In this way, the court circumscribed copyright protection for literary characters.

But the Conan Doyle estate’s attempt to stake out a valid copyright in the character of Sherlock Holmes, despite many of the stories having entered the public domain, did not end there. Recently, the estate filed a lawsuit against Netflix, alleging that its new series, Enola Holmes, infringed the copyright in the Sherlock Holmes stories which remained under copyright. In this case, the estate is arguing that these later stories portrayed a different version of Sherlock Holmes than that of the early stories, and alleges Netflix appropriated the character traits of the version of Holmes portrayed in the late stories. Among the Holmes traits the estate alleges that Netflix copied are an affinity for dogs and a respect for women, which it argues were not present in the early stories that have entered the public domain. This lawsuit demonstrates the uncertainty in protection for literary characters: the question is the same as the one considered in the Klinger case, but with new factual circumstances, a court will once again consider the copyrightability of Holmes and whether Netflix’s new work infringes the estate’s copyrights.

Another recent court case involving a popular Disney film provides a contemporary example of characters which are too general and ill-defined for copyright protection. In Daniels v. Disney, the author of a series of children’s books sued Disney, alleging that its popular film, Inside Out, infringed her copyright in the “Moodster” characters in her own work, which were “color-coded anthropomorphic emotions,” such as a yellow character representing happiness and a red character representing anger. The court found that the Moodsters characters were not sufficiently “delineated” and consistent to qualify for copyright protection: the appearances and names of the Moodsters changed over time, with only the colors and associated emotions remaining consistent across different works. In a sense, the court found that the characters were embodiments of the idea of associating color with emotion, making the claim also based on an uncopyrightable idea. Because the moodsters were not protected by copyright, the court did not need to consider whether Disney’s anthropomorphized emotions constituted infringement. Daniels has appealed the ruling to the Supreme Court, which has not yet decided whether to hear the case. Authors Alliance will keep its members and readers updated about this case as it develops.

What’s Not Protected: Copyright for Fiction Authors

Posted November 10, 2020
Photo by Ed Robertson on Unsplash

In celebration of National Novel Writing month, Authors Alliance is pleased to bring you resources and information about copyright issues of interest to fiction authors. In this post, we will go over some of the elements of fiction writing that simply do not qualify for copyright protection. Later this month, we delve into a discussion of the copyrightability of characters in literary works and survey issues in fair use that are relevant to fiction writers

It is a basic tenet of copyright law that some things are simply outside of copyright protection. These are often referred to as uncopyrightable subject matter. There are a few a bright line rules in the United States⁠—for example, that titles of literary works, slogans, and lists of ingredients cannot be copyrighted⁠—but outside of these principles, things become a bit more complicated.

Categories of uncopyrightable subject matter affecting fiction writers are ideas, themes, and scènes à faire. These concepts are closely related, and the overarching justification for excluding them from copyright protection is that they are simply too general and standard to a particular genre or convention for an individual creator to be granted a temporary monopoly on them—which is what copyright provides. 

Ideas and Themes

Ideas and themes cannot be copyrighted, although the expression of a particular idea or theme can be. In other words, when a fictional work involves a particular concept, a later work’s use of this concept cannot form the basis of an infringement claim, though copying the words used to express the idea or theme could constitute infringement. 

In Williams v. Crichton, the author of a series of children’s books sued the author of Jurassic Park, alleging that the film infringed his copyright in his own book, which also involved “the concept of a dinosaur zoo.” After examining each work in turn, the court concluded that both portrayed dinosaur zoos, but also found that the idea of a dinosaur zoo could not be copyrighted. The dinosaur zoos were expressed in different ways: one was in a natural remote island, another an entirely man-made attraction. 

Similarly, in Allen v. Scholastic, a court considered an allegation that J.K. Rowling’s Harry Potter and the Goblet of Fire infringed the copyright in a lesser-known picture book. Both works had a wizard protagonist who participated in a wizarding competition, and both were “primarily created for children,” but the similarities ended there: Allen’s work was just sixteen pages, whereas Rowling’s was over 700. The works were “distinctly different in both substance and style” and elicited “very different visceral responses from their readers.” Here too, the idea of a wizarding competition was found to be outside of copyright protection. 

In Madrid v. Chronicle Books, poet Lori Madrid alleged that the Pixar film, Monsters, Inc., infringed her copyright in a poem about a monster which is frightened to discover a human child in its closet. Madrid argued that the presence of “a big, fat, furry monster with horns on its head” and “monsters in children’s bedroom closets and vice versa” in both works was evidence of infringement. The court disagreed, finding that both were uncopyrightable ideas. The court pointed to other earlier works which also made use of these ideas—such as Maurice Sendak’s Where the Wild Things Are—as evidence that they were not the kind of original, creative expression copyright seeks to protect. 

Themes—which often flow from ideas central to a work—are similarly not subject to copyright protection. In the Scholastic case about Harry Potter, themes of friendship and competition in both works were found insufficient to establish a copyright infringement claim, as these concepts were too general such that finding infringement would go against copyright’s goal of encouraging the free exchange of ideas. And in the Chronicle Books case about Monsters, Inc., the theme of a mother-child relationship was similarly too general to serve as the basis of an infringement claim. 

Scènes à Faire

Scènes à faire (from the French for “scenes to be made”) are characters, settings, events, or other elements of a work which are standard in the treatment of a given topic. The doctrine of scènes à faire recognizes that these elements are not copyrightable and cannot form the basis for a claim of infringement. In the Jurassic Park case discussed in the previous section, for example, the court found that “electrified fences,” “workers in uniforms,” and “dinosaur nurseries” were scènes à faire that flowed naturally from the unprotectable idea of a dinosaur zoo. Because the idea of the dinosaur zoo itself cannot be protected, and a dinosaur zoo is likely to include these elements as a logical matter, they also are not subject to copyright protection. 

Courts have found that certain ideas or literary genres are associated with particular scènes à faire, such that those elements cannot form the basis of an infringement claim. In Hogan v. D.C. Comics, considering an allegation that one vampire novel infringed another, a court found that “imagery of blood, religious symbolism such as crosses and allusions to the bible” were indispensable to vampire tales, making these elements scènes à faire in this context. Similarly, in DuBay v. King, considering an allegation that Stephen King’s The Dark Tower series infringed the copyright in a cartoon published in the late 1970s and early 1980s, a court found that similarities in the protagonists’ “looks” did not constitute infringement where both were “[a] western, or cowboy-looking loner often in desolate or eerie surroundings.” Because such a costume and presentation was standard in a story about the Old West, these similarities were scènes à faire and could not form the basis of an infringement claim.

Copyright Office Studies Effect of Sovereign Immunity for Copyright

Posted October 28, 2020
Photo by Markus Winkler on Unsplash

Last week, the Copyright Office closed the comment period for its ongoing study on sovereign immunity. Sovereign immunity is a doctrine that makes states and state entities immune from lawsuits under federal law in some cases. Congress sought to eliminate sovereign immunity in the copyright context in a 1990 federal law, but a recent decision by the Supreme Court has overturned the law. Now, the Copyright Office is conducting a study to determine whether copyright infringement by state entities is an ongoing problem warranting a new legislative remedy. It solicited feedback from the public in June. 

Authors Alliance has been closely monitoring the comments submitted to the Copyright Office—48 in total. Some comments from rights holders and trade associations alleged that infringement by state entities had occurred in multiple instances, but others argued that the evidence offered did not rise to the level of widespread, intentional infringement which would warrant a new legislative solution.

State Sovereign Immunity

State sovereign immunity immunizes states and state entities—like state government agencies, public hospitals, and state universities—from lawsuits under federal law without their consent, with roots in the Eleventh Amendment to the U.S. Constitution. But state sovereign immunity is not absolute, and can be modified or eliminated in some contexts. In 1990, Congress passed the Copyright Remedy Clarification Act (“CRCA”), which sought to eliminate state sovereign immunity with regards to copyright claims, known as abrogation, under the authority of the Intellectual Property Clause of the Constitution.  

In 1999, a Supreme Court case, Florida Prepaid Postsecondary Educational Expense Board v. College Savings Bank, found invalid an attempt to abrogate state sovereign immunity under the Intellectual Property Clause in the patent context. For twenty years, without further word from Congress or the Supreme Court on the matter, the law was left in a state of uncertainty.

Recent Background: Allen v. Cooper

Sovereign immunity within copyright was recently brought to the fore in the copyright community with a Supreme Court case during last year’s term, Allen v. Cooper. The case concerned the state of North Carolina’s use of copyrighted images of a pirate ship found off the coast without permission from the photographer rights holder. 

In the case, following the logic of Florida Prepaid, the Court held that Congress lacked the authority to abrogate sovereign immunity under the Intellectual Property Clause, making the attempt to do so in the CRCA invalid. The Court also noted that Congress could have abrogated state sovereign immunity with regards to copyright claims under its 14th Amendment powers, but that the way it did so with the passage of the CRCA did not meet the requirements of its 14th Amendment powers. Under the 14th Amendment, Congress must enact legislative solutions that are “congruent and proportional” to the problems it seeks to address. The Court held that the record before Congress did not show the widespread, intentional infringement which would justify the total abrogation of sovereign immunity for copyright claims in the CRCA. 

Responding to the Court’s conclusion and a call from Congress to investigate the matter, the Copyright Office issued a “notice of inquiry” in June 2020, announcing a study that seeks to “evaluate the degree to which copyright owners are experiencing infringement by state entities” and the extent to which these infringements are “based on intentional or reckless conduct.” The Copyright Office also asked whether other remedies available to rights holders under state law were adequate to address the problem of infringement by state entities.

Comments from the Public

The comments—both the initial round and the reply comments—fell into two categories: those that argued that infringement by state entities is widespread and hurts rights holders and creators using examples of these entities asserting sovereign immunity, and those that argue that there is no evidence of widespread infringement, but only anecdotal evidence of alleged infringement. Commenters alleged state infringement in the context of photographs, songs, software, and, to a much lesser extent, literary texts. 

With regards to authors of written works specifically, evidence of infringement by state entities was sparse. One rights holder comment argued that several university presses had infringed her copyrights in putting together a book of interviews, but reply comments in favor of sovereign immunity pointed out that fair use and unclear copyright ownership in interviews undercut this claim. The Association of University Presses, for its part, added that academic books do not bear out such a pattern of infringement, and suggested the Copyright Office “look elsewhere” in attempting to develop its record. 

Anti-Sovereign Immunity

The Copyright Alliance—one of the most prominent voices that submitted a comment arguing against sovereign immunity, which several reply comments endorsed specifically—conducted a survey of its members to offer as evidence to the Copyright Office. The survey found that some members believed their works had been infringed by a state entity. It supplemented its survey results with a discussion of a high-profile settlement involving unauthorized uses of news articles on the website for CalPERS, the California state pension fund, over an eight-year period. In that case, the state agency allegedly posted full copies of news articles in a newsletter to employees and a public website without permission, ultimately removing the content and settling. Other commenters, such as the News Media Alliance, also addressed the CalPERS settlement. 

Trade organizations representing songwriters and photographers as well as a few individual companies and creators also made comments alleging that infringement by state entities is common based on their experiences extracting licensing fees from college radio stations and obtaining remedies when a state entity uses a photograph in advertising without the rights holder’s permission. One such company, Pixsy, attempted to combine statistics about uses of images by post-secondary institutions with an estimate of what percentage of uses of images online were unauthorized to support an argument that sovereign immunity was depriving its clients of millions of dollars in licensing fees. Similarly, SoundExchange, a digital licensing firm for music, examined the royalties it received from college radio stations and concluded that these were lower than expected due to public institutions’ reliance on sovereign immunity. Several anti-sovereign immunity comments also argued that state entities themselves profit off the licensing of their intellectual property, making sovereign immunity unfair. 

Pro-Sovereign Immunity

On the opposite side of the argument were state universities, their libraries, and organizations representing those entities. Comments in favor of maintaining sovereign immunity emphasized that there is no evidence that infringement is intentional and widespread, and suggested that the major alternative remedy available—an injunction requiring the infringing content be removed—is adequate in most circumstances. Many research librarians stated that in their experience aiding university employees with copyright questions, very few rights holder complaints were brought to their attention. 

A joint reply comment from the Association of American Universities and the Association of Public and Land Grant Universities sought to identify weaknesses in the empirical studies undertaken by the Copyright Alliance and SoundExchange: neither investigation accounted for fair use or the effects of the COVID-19 pandemic on university practices in the early months of 2020, and the Copyright Alliance study relied on its members subjective beliefs that their copyrights had been infringed by state entities. 

In its reply comment, the University of Michigan Library pointed out that the Copyright Office’s call for comments was directed at rights holders, but many of the comments received focused on state universities and state libraries, many of whom were not given an opportunity to chime in. The Association of University Presses submitted a reply comment along similar lines. Emphasizing that scholarship can be hampered by overreaching copyright claims and that state entities cannot afford “the expensive hurdle of nuisance claims,” the Association argued that the Copyright Office should “look elsewhere” for evidence of widespread, intentional infringement than state run universities and libraries. It also noted that the comments against sovereign immunity failed to take fair use into account, focusing on perceived infringement without considering whether these uses would be fair. 

Going Forward

The Copyright Office stated in its notice of inquiry that it intends to host one or more public roundtables to seek additional input. Authors Alliance will be monitoring these roundtables and any other forthcoming policymaking activities regarding the abrogating of sovereign immunity going forward, and we will continue to update members and readers as new developments emerge.

Judge Amy Coney Barrett’s Record on Copyright

Posted October 13, 2020
“President Trump Nominates Judge Amy Coney Barrett for Associate Justice of the U.S. Supreme Court” by The White House is marked with CC PDM 1.0

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.

House Judiciary Committee Hears Testimony on Revisions to Section 512 of the Digital Millennium Copyright Act

Posted October 6, 2020
Photo by Louis Velazquez on Unsplash

On September 30th, the United States House of Representatives’ Judiciary Committee heard testimony from a variety of stakeholders regarding potential reforms to Section 512 of the Digital Millennium Copyright Act (“DMCA”), a law passed in 1998 which made reforms to U.S. Copyright Law. Section 512 provides for—among other things—a so-called “safe harbor” from copyright liability for online service providers (“OSPs”) that host user-generated content, provided those OSPs have a system in place that allows rights holders to request that infringing content be removed and follow other requirements outlined in the statute. This has given way to the current system of notice and takedown, whereby copyright holders formally request the removal of allegedly infringing content, and with which many who create, post, and access content online are all too familiar. 

Background

In May of this year, the Copyright Office released a report five years in the making, evaluating the effectiveness of Section 512. In the report, the Copyright Office concluded that the balance Congress sought to achieve in Section 512 is, in its view, “askew,” concluding that many creators are struggling to earn a livelihood in light of the pervasiveness of online infringement and the practical difficulties of having infringing content removed. 

Authors Alliance has written before about the issuance of the report, as well as the impact of Section 512 on non-infringing creators and universities and research libraries. While Authors Alliance embraces the underlying premise that Section 512—now more than 20 years old—is in need of updating to meet the demands of the modern information society, we believe reforms should focus on protecting creators’ interests in making their works available online. Last week, industry representatives, content creators, and policy advocates testified as to the advantages and challenges of Section 512 as it currently stands.

The Hearing

Six stakeholders testified at the hearing and provided additional written testimony: representatives from the Library Copyright Alliance, the Copyright Alliance, Public Knowledge, and the Computer & Communication Industry Association in addition to an individual singer-songwriter and a visual artist who is the leader of the PLUS Coalition. The hearing was polarizing, with two distinct ideological camps emerging, disagreeing both on whether reforms were needed to Section 512 as well as what reforms would address the various problems posed by the provision. On the one side, represented by the Library Copyright Alliance and Public Knowledge, witnesses expressed doubt about the Copyright Office’s conclusion that the “balance” Section 512 sought to achieve between facilitating free speech online and protecting copyrights is askew, tilting too far in favor of speech at copyright holders’ expense. Public Knowledge further proposed a need for reform in the opposite direction, i.e., making it more difficult to get allegedly infringing content removed, due to the current notice and takedown regime being over-broad as well as posing a threat to free speech online and the lawful fair use of others’ work. 

On the other side, the remaining witnesses argued that the current notice and takedown system hurts creators, who must vigilantly search for infringement online and request removal of infringing content through what they described as a highly burdensome “constant whack-a-mole” process which can require consulting legal counsel. They argued that this can result in less time for artistic endeavors and can compromise an already fragile income stream for creators. Both the visual musical artists testified that they had had such experiences. 

Members of the committee seemed similarly divided in their sympathies to the two camps. Some representatives expressed concern for the depressing effect that infringement could have on content creators’ income, and others focused on overzealous takedown notices and the negative impact that could have on add-on creators—such as YouTube personalities that rely on fair use to comment on culture—and internet users at large. 

Many of the stakeholders discussed whether technical solutions could go some of the way towards ameliorating the problems posed by Section 512, but disagreed over whether a technical solution was possible. Stakeholders and members of the committee emphasized the overwhelming amount of takedown notices the largest platforms like YouTube receive, as well as the imperfection of existing algorithms to correctly detect infringement on these platforms.  The representative from Public Knowledge echoed Authors Alliance’s concerns about the missing stakeholders at the hearing: internet users whose access to non-infringing content is disrupted when it is removed due to overzealous takedown notices as well as add-on creators whose speech is suppressed.

What’s Next?

Senate and House Committees are continuing to review the provisions of the Digital Millennium Copyright Act with an eye towards proposing reforms. We will keep readers informed about major developments. Recently, the Copyright Office also launched a new website on the DMCA and its key provisions, including Section 512. For more information, watch the full hearing and read written testimony on the House Judiciary Committee’s website. 

Authors Alliance Voices Concerns About the Copyright Small Claims Tribunal to Senate Committee

Posted September 30, 2020
U.S. Capitol
photo by Martin Falbisoner | CC BY-SA

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.