Today, Authors Alliance joined Public Knowledge and four other civil society groups to urge Congress to amend the Journalism Competition and Preservation Act (“JCPA”) to clarify that the bill does not expand copyright protection to article links and that authors and other internet users will not have to pay to link to articles or for the use of headlines and other snippets that fall within fair use.
The JCPA (H.R.1735 in the House and S.673 in the Senate) proposes to create a four-year “safe harbor” from antitrust law, allowing print, broadcast, and digital news companies to band together to negotiate compensation terms for their news stories with the largest online platforms. While the goal of the bill—to preserve a strong, diverse, and independent press—is commendable, the bill’s framework relies on a fundamental mischaracterization of U.S. copyright law. As currently drafted, there is a risk that the JCPA could be interpreted by courts to implicitly expand the scope of copyright.
As our letter explains, linking is outside of the scope of copyright in the U.S., as merely linking to external content does not implicate any of a copyright owner’s exclusive rights. Furthermore, the use of brief snippets of content—such as headlines, images, or short excerpts—that often accompany links are minimal quotations of copyrighted material have been consistently found to be fair uses under copyright law, and protection for these types of uses is mandated by the Berne Convention. These fair uses cannot be banned or substantially curtailed without running afoul of Supreme Court jurisprudence, the First Amendment, and multilateral international obligations.
To address these issues, our letter asks Congress to create a savings clause that makes it clear that copyright protections are not being expanded to include linking, or fair uses of snippets from the linked material. The full text of our letter is available here.
Readers familiar with Authors Alliance’s work will know that we offer a suite of resources to help authors get back the rights to their works, including information on how to revert rights by exercising a contractual provision or through negotiating with a publisher and resources on how to terminate a transfer of copyrights under U.S. law. Authors who get their rights back can increase their works’ availability and reach more readers by making an out-of-print book more widely available, releasing their work in a more affordable format or under an open access license, or re-packaging and releasing books with a new look and feel.
In today’s post, we’ve gathered some resources about the concepts of rights reversion and termination. Whether you are a rights back newbie or a reversion and termination aficionado, we think you’ll learn something new by digging into these resources.
Reversion & Termination Basics
Rights Reversion Reversion can be a powerful tool for authors, but many authors do not know where to start. A right of reversion is a contractual provision that permits authors to work with their publishers to regain some or all of the rights in their books when certain conditions are met. But authors may also be able to revert rights even if they have not met the triggering conditions in their contract, or if their contracts do not have a reversion clause at all. Our guide to Understanding Rights Reversion arms authors with the information and strategies they need to get their rights back and give their books a new life. We also provide templates and guidance on how to craft a persuasive rights reversion request letter.
Termination of Transfer 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 prohibiting it. To learn more about termination of transfer and how to evaluate whether a work is eligible for termination under U.S. law, authors can explore the Termination of Transfer Tool, which we developed in partnership with Creative Commons. Authors can also refer to Authors Alliance’s guidance and templates for how to provide notice of termination to rightsholders and record the termination with the U.S. Copyright Office.
A Deeper Dive
Reversion of Copyright in Europe Assembling three contributions from a special section of the European Intellectual Property Review, this paper examines the topic of rights reversion in the context of the adoption of the Directive on Copyright in the Digital Single Market (2019), which introduced a new right of revocation to the EU copyright framework entitling authors and performers to reclaim rights in their works when they are not being exploited (a “use-it-or-lose-it” principle). Included is an article by Ula Furgal which explains that there is a lack of understanding what “sufficient exploitation” means, especially in the digital context, which should be addressed when implementing the revocation right. Also included is an article by Elena Cooper which argues that the common law tradition of freedom of contract is compatible with constraints on contractual transfers, and that U.K. reversion provisions historically were a direct response to the significant increase in the copyright term in 1911.
Foreign Contracts and U.S. Copyright Termination Rights: What Law Applies? Judge Richard Arnold and Professor Jane Ginsburg discuss the choice of law issues that arise when agreements which are subject to the laws of other countries assign U.S. copyrights and purport to do so in perpetuity. Arnold and Ginsburg examine the question of what law governs the permissible scope of an author’s grant in light of U.S. law’s inalienable termination rights. Using the recent U.S. and English cases, Ennio Morricone Music Inc. v. Bixio Music Group Ltd. and Gloucester Place Music Ltd v. Le Bon, to illustrate the problem, the authors conclude that U.S. termination rights cannot be overridden by a contract subject to a different law.
Making Sense of the Termination Right: How the System Fails Artists and How to Fix It A report by Public Knowledge demonstrates how the termination right is failing to protect the very creators that termination was designed to serve. The report critiques the complex eligibility, timing, and filing formalities for termination, which are exacerbated by ambiguities in the law and its application. On top of the onerous procedural requirements, the report highlights power asymmetries governing the negotiation, assignment, and reversion of ownership rights that also harm authors—particularly creators of color—who seek to exercise their termination rights. The report recommends six policy actions to help restore fairness and functionality to termination of transfer rights.
Author’s Interest Project: Preliminary Findings on Benefits of Copyright Reversion Preliminary findings from the Author’s Interest project suggest that granting authors minimum reversion rights would open new economic opportunities for authors and publishers and help promote ongoing availability to the public. The research suggests that there is a need to investigate minimum reversion rights addressing books that have reached the end of their commercial life, uses that are not being exploited, situations where publishers go into liquidation, and term limits akin to U.S. termination of transfer laws.
Authors Alliance is grateful to Argyri Panezifor this guest post. Panezi is an Assistant Professor at IE Law School where she teaches contracts, copyright law, and principles of LegalTech. Her current work focuses on copyright issues related to digital libraries, on law and AI (contractual and extra-contractual liability), and on legal technologies, specifically examining e-Justice developments within the EU. She is also a research fellow at the Digital Civil Society Lab at Stanford University, where she explores the notion of critical digital infrastructure as well as state and federal regulatory frameworks that govern ISPs in the context of public internet access, focusing on access for critical utilities during emergency situations. She holds a law degree from the University of Athens, an LL.M. from Harvard Law School, and a Ph.D. from the European University Institute.
On June 1, 2020, four publishing houses, Hachette Book Group, Inc., HarperCollins Publishers LLC, John Wiley & Sons, Inc., and Penguin Random House LLC, filed before the US District Court for the Southern District of New York a copyright infringement action against the Internet Archive for the Archive’s operation of what it called a “National Emergency Library” (NEL) after the first US shelter-in-place orders in response to the COVID-19 pandemic. Indeed, on March 24, 2020, the Internet Archive had announced the launch of a temporary online NEL to support “emergency remote teaching, research activities, independent scholarship, and intellectual stimulation while universities, schools, training centers, and libraries were closed due to COVID-19.” In their announcement the Archive called on authors and publishers to support the effort, which would ensure “temporary access to their work in this time of crisis.” It provided an opt-in option for authors who wanted to donate their book(s) to the NEL, and an opt-out option for authors who wanted to remove their book(s) from the NEL.
The NEL collection ceased operation on June 16, 2020, and the Internet Archive returned to its previous system of controlled lending of copyrighted works (on Controlled Digital Lending (CDL) see previous posts here and here). Even though the operation of the NEL was limited in time, argument about its propriety continues and has wider implications relating to the libraries’ multiple roles during and beyond emergencies. Stakeholders’ reactions to the NEL appear to be mixed. The Association of American Publishers, for example, issued a public statement opposing the Internet Archive’s NEL initiative. Meanwhile, the Archive has published a number of stories from librarians, educators, parents, and researchers endorsing the initiative.
The pending case, Hachette v. Internet Archive, introduces a new dimension to existing debates around electronic access to library material, particularly around e-lending, raising at least two important questions: Did the emergency created by the COVID-19 shutdowns introduce new market failures as regards access to critical educational and research material, or as regards access to library works in general—or do these emergencies merely highlight possible already-existing failures? Furthermore, can emergencies justify additional exceptions to copyright laws covering electronic access to library material, and if so, under what circumstances?
In my recent article, A Public Service Role for Digital Libraries: The Unequal Battle Against (Online) Misinformation Through Copyright Law Reform and the Emergency Electronic Access to Library Material (forthcoming, 31 Cornell J.L.& Pub. Pol’y_ _ (2021)), I examine the ongoing Hachette v. Internet Archive litigation, placing it in the context of earlier US copyright case law that deals with the digitization or the making available of copyrighted works for educational, research, and other purposes (notably: Authors Guild v. Google, Authors Guild v. HathiTrust, and Cambridge University Press v. Becker). There is also a global debate focusing on similar issues, apparent, for example, in similar cases brought before courts in Europe (Technische Universität Darmstadt v. Eugen Ulmer KG and Vereniging Openbare Bibliotheken v. Stichting Leenrech), India (University of Oxford v. Rameshwari Photocopy Service), and Canada (CCH Canadian Ltd v. Law Society of Upper Canada and the recent York University v. Access Copyright).
Taking the Hachette v. Internet Archive case as a starting point, my article reflects on the current and potential future role of copyright doctrine in preserving institutional functions of libraries and discusses how the COVID-19 emergency exposed new but also highlighted existing market failures.
Libraries’ public service role includes safeguarding and providing equal access to research, to educational material, but also to credible information, including in the digital environment. Both on- and offline libraries serve a function as trusted and, in principle, neutral places dedicated to equalizing access to credible information and knowledge in societies with structural inequalities and biases. Particularly during this pandemic, libraries have embraced their institutional role and joined the fight against misinformation, including about the pandemic. The article examines the extent to which current US copyright law supports libraries in these increasingly pertinent functions and advocates for the copyright framework to provide enhanced support to libraries.
Authors Alliance, joined by the Library Copyright Alliance and the American Association of University Professors, is petitioning 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. If granted, our proposed exemption would allow researchers to bypass technical protection measures (“TPMs”) in order to conduct text and data mining research on literary works that are distributed electronically and motion pictures. Last week, Authors Alliance responded to questions posed by the Copyright Office as it considers the merits of the proposed exemption following last month’s public hearing on the exemption.
Text and data mining (“TDM”) 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 TDM researchers are currently hindered by Section 1201 of the DMCA, which prohibits the circumvention of TPMs used by copyright owners to control access to their works. 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.
Following last month’s hearing, the Copyright Office asked proponents and opponents of the proposed exemption to: 1) describe minimum security measures eligible institutions should be required to use to secure corpora of literary works or motion pictures used for TDM research and 2) share views on potential regulatory language that would limit a researcher’s ability to view literary works or motion pictures included in corpora. In addition, opponents were given the opportunity to respond to changes proponents proposed in our reply comment to address opponents’ concerns.
Security Standards and Controls
With respect to security measures, our response describes the flexible process that information security and data management professionals at research institutions use to select and apply security controls to research data. This approach tracks the processes laid out in international standards and federal agency procedures. We explain why these risk assessment frameworks are superior to a globally applied fixed list of minimum security requirements and how they are consistent with the Office’s approach to information security in previous exemptions.
Our letter provides examples of common and effective security controls used in many research settings, including user authentication, use of encryption, event logging, and maintaining physical security of the resources housing the data. We recommend that the Office should identify these controls as examples of reasonable security measures, while leaving room for information security departments and researchers to fine-tune the precise security controls used to the specifics of the research corpus and the information system in which it is housed.
Prohibiting Researchers from Viewing Text and Images
With respect to the extent to which regulatory language should limit a researcher’s ability to view literary works or motion pictures included in corpora, we clarify that while researchers do not need this exemption for the purpose of viewing the full text or images of the works that they or their institutions have already obtained lawfully, researchers must be able to verify their research methods and research results. This verification requires that researchers have some ability to view corpus text or images. That ability is consistent with the research environments of both HathiTrust Data Capsules and Google Book Search, and it is consistent with fair use precedent.
Our letter explains why researchers need to view enough of a corpus to verify their methods and their findings. By way of example, if an algorithm tells the researcher that frame #133292 of a corpus copy has a high probability of being a scene of violence, and that frame corresponds to a scene in the film Pulp Fiction, the researcher would not watch a copy of the DVD or digital download in its original format to verify that finding. But at some point, either the researcher or peer reviewer may need to locate and examine frame #133292, a designation that exists only in the corpus copy, to verify the algorithmic finding. Our response explains that a blanket prohibition on viewing text or images would comprehensively undermine TDM research relying on the exemption and would provide little added value or protection given the other restrictions in the proposed exemption. For this reason, we recommend that—although we do not believe an express viewability limitation is warranted—should the Office choose to include one, it should use the model of the HathiTrust Research Center’s Non-Consumptive Use Policy rather than an outright ban on viewability.
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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. We’re grateful to law students and faculty from the Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law School for their work supporting our petition for this new exemption.
Authors Alliance, together with Professor Ariel Katz and represented by Sana Halwani of Lenczner Slaght, participated in oral arguments before the Supreme Court of Canada in Access Copyright v. York University. Our arguments furthered the views we shared in our factum submitted last month.
The case involves a claim by Access Copyright, a Canadian copyright collective, which seeks to have York University comply with an interim tariff approved by the Copyright Board of Canada for works in its collection. In response, York University brought a counterclaim seeking a declaration that its guidelines for copying materials for education purposes constituted “fair dealing” under the Copyright Act of Canada (fair dealing is the Canadian analogue to fair use). The case raises the question of whether copyright collectives can force users to license content from them, even if the users prefer to comply with their copyright obligations in other ways.
At oral argument, we began by explaining to the court that Access Copyright does not represent the interests of all authors. Authors Alliance represents authors whose primary concern is their works having the greatest possible impact by reaching the largest possible audience. Unfortunately, the flawed approach to fair dealing taken by the courts harms these interests, and undermines our members’ efforts to support education and informed public discourse, by creating a chilling effect on the dissemination of copyrighted works. Our members’ dissemination goals are advanced by a robust approach to fair dealing.
We further explained how the fair dealing factors in this case were incorrectly dealt with because they were not anchored to specific instances of alleged infringement. The abstract nature of that inquiry was a result of the lower courts’ willingness to make a determination of infringement outside of an infringement action without the proper parties and necessary evidence. The trial court concluded that there were reproductions that entitled Access Copyright to royalties—that there was infringement—without identifying any particular reproduction that was not fair dealing.
One example of why this approach is problematic is illustrated by the way the lower courts handled the “effect of the dealing” factor. The effect of the dealing factor is intended to consider the market impact of the defendant’s actions with respect to the plaintiff’s work on the sale of or royalties from that particular work. But instead, the lower courts looked to the effect on the market generally. This general market approach untethers the analysis from the economic interests of the specific authors of the works at issue, instead bringing in irrelevant evidence of copying by other institutions and of the impact of the copying on the sales of other works.
This was a mistake and the lower courts should have addressed only whether the reproduced work adversely affects or is likely to compete with the original work, not with the market generally. We asked the court to find that it was an error of law to consider this factor in aggregate and at a market-wide level, and to reaffirm the correct approach to the effect of the dealing factor is an investigation into the effect of a specific dealing on a specific work.
Authors Alliance is grateful to Sana Halwani for skillfully representing our interests at oral argument, and to the entire Lenczner Slaght team, including Paul-Erik Veel, Jacqueline Chan, and Anna Hucman, for pro bono assistance with this intervention. We will keep readers updated on the outcome of the case.
The case involves a claim by Access Copyright, a Canadian copyright collective, which seeks to have York University comply with an interim tariff approved by the Copyright Board of Canada for works in its collection. In response, York University brought a counterclaim seeking a declaration that its guidelines for copying materials for education purposes constituted “fair dealing” under the Copyright Act of Canada. The case raises the question of whether copyright collectives can force users to license content from them, even if the users prefer to comply with their copyright obligations in other ways.
As our factum explains, in the absence of specific allegations of copyright infringement from copyright owners, the lower courts should not have dealt with the issues of infringement and fair dealing. Because the lower courts did so without the proper plaintiffs, the result was a misguided approach to fair dealing that undermines users’ rights and the interests of many authors. Our factum also explains that even when their works are published under “all rights reserved” models, many of our members believe that their interests are best served with a robust application of fair use and fair dealing that does not unduly interfere with their dissemination goals, particularly in educational contexts.
On the issue of whether the approved tariffs are mandatory vis-à-vis users, our factum supports the Federal Court of Appeal’s finding that the approved tariffs bind copyright collectives but cannot be imposed on users as mandatory tariffs. We highlight some of the incoherent outcomes that would follow from the mandatory tariff theory, including the further marginalization of authors who are not a part of the collective’s repertoire.
The Supreme Court of Canada will hear oral arguments in the case on May 21, and Authors Alliance has been granted permission to present up to five minutes of oral arguments at the hearing. Authors Alliance is grateful to Lenczner Slaght attorneys Sana Halwani, Paul-Erik Veel, and Jacqueline Chan, as well as law clerk Anna Hucman, for pro bono assistance with this intervention.
Yesterday, Authors Alliance submitted a comment to the Copyright Office in response to a Notice of Inquiry regarding developing regulations to govern the copyright small claims procedure under the newly enacted CASE Act. In the past, we have spoken out in favor of a sensible copyright small claims process, but cautioned that the CASE Act could invite abuse and pose a high likelihood of harm to authors as both claimants and respondents. Now, Authors Alliance welcomes the opportunity to provide our feedback to the Copyright Office so it can work to ensure that the Copyright Claims Board (“CCB”), which will hear copyright small claims, is an efficient, effective, and respected forum, and moreover that it serves the individual authors and creators it is intended to benefit. We summarize our input below, and invite you to read our full comment for more detail.
Notice Sending
One of the areas in which the Copyright Office requested input is the contents of the notices that will be sent to respondents when a claimant makes a claim against them before the CCB. The CASE Act mandates that these respondents be given an opportunity to opt-out of the proceedings and instead have the claim proceed in federal court, and requires the CCB or an entity acting on its behalf to send respondents two separate notices notifying the respondent of the claim against them. Regarding the contents of these notices, Authors Alliance advocated for clear, comprehensive, and informative notices which will convey to the recipients the nature of the CCB proceedings and the consequences of failing to opt out. We also requested that the CCB include information on these notices about why a respondent might want to opt in or opt out. If a respondent fails to opt out or appear before the CCB, they may be subject to a default judgment that is subject to limited review in federal court. It is our hope that if the Copyright Office implements our suggestions, notices will not be ignored, which could leave unwary respondents on the hook for damages.
Opt-Out
The Copyright Office also sought guidance on the opt-out procedure for respondents who want to opt out of the CCB proceedings. Authors Alliance strongly urged the Office to make opting out as simple as possible for respondents of different levels of technical and legal sophistication. We suggested the Office allow respondents to opt out using a variety of methods: email, online form, over the phone, or by standard mail. We also encouraged the Office to develop a publicly available list of entities that intend to opt out in order to make the forum more efficient for claimants, who can check this list to see if the party they are pursuing a claim against indicates an intent to affirmatively opt out before filing a claim. Finally, we provided feedback on a special opt-out provision for libraries and archives, advocating for a robust opt-out provision that would allow libraries and archives to avoid the cost of defending excessive claims and spend their precious resources elsewhere to further the public good.
Limiting Cases
The Copyright Office also asked for input on whether and how to limit the number of cases that a given party can bring before the CCB over a calendar year. While Authors Alliance did not propose a specific threshold (which would be difficult if not impossible to do without knowing the what the CCB’s caseload will look like), we did commend the Office for its attention to this matter, and suggested that it impose meaningful limits on the number of cases that can be brought by a given party, with the overall goal of deterring unscrupulous actors while keeping the forum open and accessible to those who most need it—individual creators and authors seeking to enforce or defend their rights. We also suggested that the CCB implement regulations to deter “repeat players” from bringing repeated and ill-founded claims.
Guidelines on Unsuitability for the Forum and Award of Statutory Damages
Authors Alliance also suggested that the Copyright Office develop sets of guidelines for the CCB to use when determining whether a particular claim is appropriate for the forum and guidelines for the award of statutory damages. The CASE Act requires that the CCB dismiss claims that are not suitable for CCB adjudication, but does not provide much in the way of guidance as to how to determine whether the CCB is a suitable forum for a given claim. We suggested that the Office set guidelines to help the CCB determine whether a case is suitable for the proceedings, encouraging the CCB to dismiss complicated, fact-specific claims, and hear only straightforward infringement claims. Complicated, fact-specific issues like fair use are not appropriate for this streamlined procedure, and guidelines to this effect would go a long way to making the forum efficient and accessible. Regarding statutory damages, we suggested that the Copyright Office issue guidelines for the CCB to use when deciding whether to award statutory damages. In general, damages awards be proportional to the actual harm from the alleged infringement, rather than the maximum allowable damages under the statute ($15,000 per work and no more than $30,000 overall), which is often grossly disproportionate to lost licensing revenue the claimant would have received if the alleged infringer had obtained a license to use the work. We also suggested that the CCB should be particularly mindful to avoid statutory damages in cases of noncommercial uses.
This year is shaping up to be a big one for copyright: a new batch of works entered the public domain, the 2020 year-end stimulus bill made several changes to copyright law, the Copyright Office is currently undergoing its triennial rulemaking process to grant exemptions to section 1201’s prohibition on breaking digital locks, and courts are considering ever more difficult issues related to fair use. Two recent cases that have been making waves in the copyright community are Google LLC v. Oracle America, Inc. and The Andy Warhol Foundation v. Goldsmith. Both cases discuss “transformativeness,” a key component of the fair use test, but reach different results: In the former, the Supreme Court ruled in favor of fair use, and in the latter, the Second Circuit Court ruled against fair use.
At Authors Alliance, we care about fair use because it helps authors meet their goals of seeing their works shared broadly, facilitating the use of copyrighted works in some circumstances for certain specific purposes such as research, commentary, and teaching. Fair use also allows authors to use existing materials to strengthen their own research, commentary, and scholarship. We offer short summaries and takeaways from these cases here to keep you apprised of the goings on in copyright and offer some guidance on how these decisions might impact fair use cases more directly related to authors of literary works in the future.
Earlier this month, the Supreme Court issued its long-awaited decision in Google v. Oracle, a case that has been percolating in the lower courts for years, which concerned the question of whether Google’s unauthorized use of computer code to which Oracle held the copyright constituted fair use. In the case, Google was appealing a ruling by the U.S. Court of Appeals for the Federal Circuit, which had held that Google’s use of APIs (also referred to as “declaring code”) was not fair use, despite a jury reaching the opposite conclusion. Google appealed to the Supreme Court on the question of whether APIs were protected by copyright at all and, if so, whether Google’s use of the code was fair.
In a decision by Justice Breyer, the Court skirted the question of whether APIs were copyrightable, but overturned the Federal Circuit’s finding of infringement, holding that Google’s use of the APIs was fair use. To come to this determination, the Court considered the four factors involved in fair use determinations. It found that declaring code was functional in nature: unlike the more creative “implementing code” involved in designing Android (and written by Google), the Court viewed the declaring code as equivalent to “building blocks.”
The Court also found that Google’s use was transformative in purpose and character because it used Oracle’s declaring code, as well as its own computer code, to create a new platform offering “a new collection of tasks operating in a distinct and different computing environment.” The Court stated that this was sufficiently transformative to overcome the commercial nature of Google’s endeavor—the creation of the massively popular Android operating system. The Court further found that Google used a small quantity of Oracle’s code relative to the total code it used to create Android, overcoming arguments that the 11,500 lines of Oracle’s code that Google used was quite a substantial amount. Finally, the Court considered whether Google’s Android usurped a market Oracle could have otherwise profited from, and decided that Oracle was not well-positioned to develop a mobile platform at the time and that Google had not usurped its market.
For authors who care about the widespread dissemination of their works and contributing to the commons of knowledge, Google’s fair use victory may seem a hopeful sign. But there is reason to believe that the holding will be of limited applicability in the future: It is not clear that it even applies to all software copyright issues. The decision—and importance of details such as the number of lines of code that were actually copied—shows how fact-sensitive fair use is. And the Court’s vision of transformativeness in the context of computer code is not an easy fit for other contexts, creating uncertainty as to whether and how the case will affect authors and creators in the future.
In late March, the Second Circuit Court of Appeals issued its opinion in The Andy Warhol Foundation v. Goldsmith, a case concerning a series of screenprinted images created by artist Andy Warhol depicting the late musical artist (formerly known as) Prince, reproduced in court documents and referred to as the Prince series. The first image of Prince that Warhol created was commissioned by Vanity Fair, and was based on a photograph taken by plaintiff Lynn Goldsmith, a renowned celebrity photographer. All of this was authorized pursuant to agreements between Goldsmith and Vanity Fair and between Warhol and Vanity Fair. The Warhol image that appeared in Vanity Fair included credit lines for both Warhol— the artist—and Goldsmith—the photographer of the work upon which Warhol’s was based. But Warhol did not stop there— he created fourteen additional works in the same style, comprising the Prince series that was the subject of the litigation.
In the case, Goldsmith sued the Warhol Foundation for infringement in the New York district court, alleging that the Prince series infringed on her copyright in the photograph of Prince. The district court found for the Warhol Foundation on fair use grounds, focusing on the transformative nature of Warhol’s silkscreen prints, which it believed “transformed Prince from a vulnerable, uncomfortable person,” as he was presented in Goldsmith’s photograph, “to an iconic, larger-than-life figure[.]” Warhol’s works also changed the image of Prince from a black and white, three-dimensional representation to two dimensional, colorful representations. Goldsmith appealed the ruling to the Second Circuit, which overturned the district court’s finding of fair use.
The Second Circuit disagreed with the district court that Warhol’s images were transformative. In its view, the district court improperly took on “the role of art critic,” making an artistic determination that Warhol’s works were transformative, rather than comparing the elements of the images and their purposes and characters. Under this approach, the Second Circuit concluded that the work retained “essential elements” of Goldsmith’s photograph, and was functionally the same work with a new aesthetic.
Unlike the Google case, the narrow reading of transformativeness in Warhol v. Goldsmith can more readily be applied in other contexts where other creative works could be broken down into their elements and compared. The Warhol court was not the only one in recent months to constrain the so-called “transformative use test,” and courts are increasingly moving away from considering transformativeness subjectively, and towards examining elements of the two works more objectively. Yet the Google decision took a broader approach to fair use, and one which, as a Supreme Court case, will be more influential to courts across the country. The variations in treatment of fair use in general, and transformativeness specifically, show how fair use is a context-specific determination. Creators who would like to learn more about how fair use applies to the common situations they face can turn to our fair use guide for nonfiction authors and the best practices guides specific to other communities of creators.
News about non-fungible tokens (“NFTs”) selling for eye-popping sums has been hard to miss. Nyan Cat, an iconic GIF of a cat with a Pop-Tart for a torso flying through space, sold for nearly $600,000. Twitter CEO Jack Dorsey’s first tweet—a mere five words—recently sold for nearly $3,000,000. And an NFT representing digital artist Beeple’s Everydays: the First 5000 Days collage set a record in March as the third most expensive artwork ever sold from a living artistwhen it sold at a Christie’s auction for more than $69,000,000.
While NFTs offer a new avenue for creators to get paid for digital assets, many have questions about what exactly an NFT holder “owns” in relation to the digital object and whether that ownership includes copyrights. This post explains these concepts and how they relate to ownership of physical objects.
NFTs are unique cryptographic assets that exist on a blockchain. NFTs facilitate the sale of digital items by providing owners of digital objects with a registration record to keep track of and verify the ownership of a digital file. Because NFTs can be used to represent unique digital items, they provide a way for individuals to own and collect “authentic” versions of digitally native assets.
Digital artists have struggled to monetize their creations since digital art can be readily copied and shared online in its original form. NFTs don’t change this: digital files represented by NFTs can still be copied and shared (setting aside the copyright implications of doing so). Instead, NFTs represent something that cannot be copied: the right to claim ownership of the underlying digital work. In this respect, NFTs can be used to create artificial scarcity by making only one NFT to represent a work, bringing “ownership” of a digital work of art more in line with ownership of a physical work of art.
Like physical art, the NFT itself can be sold. Because of the record keeping function of the blockchain, some NFTs ensure that artists get a percentage of the sales proceeds every time the ownership changes hands on the secondary market, a feature that is somewhat akin to an artist resale right, or droit de suite, that exists in many European countries and provides that artists receive royalties for their works when they are resold.
On its own, an NFT does not transfer intellectual property rights to the NFT holder. This means without an additional license or transfer of copyrights, the NFT holder does not acquire the rights to make and sell copies of the digital artwork. While this may seem surprising, this is analogous to how ownership works in the physical world: the ownership of a physical object is distinct from the ownership of copyright. The owner of a painting may do whatever she wants with the physical copy—sell it, give it away, etc.—but she does not acquire the copyrights in the painting simply by purchasing the physical copy. Without further authorization, the owner of a copyrighted painting typically cannot, for example, make and sell greeting cards with copies of the painting on them, which would be unauthorized reproductions of the work. In this way, ownership of the NFT is similar to owning a physical copy of any creative work, though the NFT owner simply has the token recording ownership rather than a physical manifestation of the object.
That said, a digital artist can elect to transfer or license some or all or of her copyrights to the NFT holder. For example, when MetaKoven bought the NFT representing Beeple’s Everydays at auction, he also acquired some rights to display the artwork online. While it is not yet clear what MetaKoven will do with these rights with respect to Everydays, in December he purchased a different collection of digital artworks by Beeple, which he is displaying in a digital museum (where he is also selling fractionalized ownership of the collection). Whether art lovers will find the virtual gallery experience approachable, let alone a satisfactory parallel to the analog world—and whether collectors and investors will continue to find appeal in ownership of NFTs—is yet to be seen.
Authors of written works wondering what opportunities they might have to take advantage of the NFT craze may look longingly at the recent sale of a New York Times column by Kevin Roose about NFTs that was itself turned into an NFT. Pitched as “the first article in the almost 170-year history of The Times to be distributed as an NFT,” it recently sold for $560,000 in a charity auction. Illustrating the concept that ownership of the NFT does not itself transfer any copyrights, Roose’s article makes clear “the NFT does not include the copyright to the article or any reproduction or syndication rights.” The NFT holder acquires no more rights to copy and share the article than someone who accesses the column through their New York Times digital subscription or who has a copy of the Times delivered each morning.
Unsurprisingly, commentators disagree as to whether the NFT hype is here to stay or will soon die down. In the meantime, NFTs offer a novel way for tech savvy creators to bring attention to and potentially monetize their digital works.
Authors Alliance, joined by the Library Copyright Alliance and the American Association of University Professors, is petitioning 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. If granted, our proposed exemption would allow researchers to bypass technical protection measures (“TPMs”) in order to conduct text and data mining research on literary works that are distributed electronically and motion pictures. Yesterday, Authors Alliance participated in public hearings hosted by the Copyright Office to consider the merits of the proposed exemption.
Text and data mining (“TDM”) 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 TDM researchers are currently hindered by Section 1201 of the DMCA, which prohibits the circumvention of TPMs used by copyright owners to control access to their works. 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.
At yesterday’s hearing, the clinical team from the Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law School representing Authors Alliance testified about the details of the exemption and its immense value for TDM researchers. The team explained how section 1201 prevents those researchers from creating the corpora of works they need to discover new insights from text and data mining, interfering with their ability to generate new copyrighted works that add to our cultural understanding and advance human knowledge.
Specifically, clinic students, Ziyad Alghamdi, Tait Anderson, and Erin Moore, and clinical supervisor, Professor Erik Stallman, shared how section 1201’s prohibitions chill new research and hinder the progress of knowledge in at least three ways: 1) forcing researchers to limit datasets in a way that makes their findings less illuminating than they would otherwise be, 2) causing researchers to artificially constrain research to public domain texts, and 3) leading researchers to abandon potential TDM projects altogether.
Opponents of the exemption testifying in the hearing—representing publishers, the software industry, and content licensing organizations— raised concerns about whether TDM was fair use under copyright law, whether the proposed security measures for the TDM corpora were sufficient to allay their security concerns, and whether alternatives like pre-assembled TDM corpora would be adequate for TDM researchers.
Regarding fair use, Erin Moore testified that relevant case law firmly establishes TDM as a fair use, and that the fact that the use could have been officially licensed by the copyright holder does not mean the use is not a fair one. Moore also emphasized the noncommercial and educational nature of the uses TDM researchers seek to make under this exemption, classic features of fair use. To address opponents’ security concerns, Tait Anderson explained that “reasonable security measures” as used in our petition was concrete enough to require researchers to take precautions to prevent against public dissemination and unauthorized sharing, while not being overly prescriptive in order to accommodate a wide range of TDM projects with different levels of sensitivity in the underlying data. On the topic of existing alternatives to the TDM corpora the TDM researchers seek to compile, Ziyad Alghamdi highlighted the limitations of commercial TDM databases like Hathitrust, which are both limited in the scope of works they contain and how TDM research can be conducted using these works. TDM researchers are seeking this exemption in part because these databases are costly, difficult to use, and incomplete for answering research questions about contemporary literary works and films.
Other topics discussed during the lively hearing included whether the proposed exemption should align with similar carve outs for TDM research in Europe and Japan, how sharing corpora with affiliated researchers for peer review purposes might work, and how and whether literary works and films should be analyzed differently for the purposes of the exemption. 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. We’re grateful to law students from the Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law School for their work supporting our petition for this new exemption.
