The following legal cases are of importance to ARL because of their relevance to the research library community. ARL has submitted amicus briefs in many of these cases to help the courts understand the research library community perspective.
Canadian Court Rules in Favor of ISPs
In a 9-0 decision on June 30, 2004, the Supreme Court of Canada ruled that Internet Service Providers (ISPs) are “intermediaries” thus not responsible for paying royalties to performers and composers of music downloaded by the ISPs’ customers. The court noted that although ISPs provide hardware and the technology required for access to the Internet and the World Wide Web, ISPs are not responsible for content, thus what their customers download.
In a vastly different approach than in the US, where the recording industry has sued individual users and P2P file sharing services, the Society of Composers, Authors, and Music Publishers of Canada (SOCAN) sought to make the ISPs liable for music downloaded by their customers. The Canadian Association of Internet Providers representing the ISPs argued that SOCAN should seek royalties for downloaded music from the Web sites that provide access to those works.
Faulkner v. The National Geographic Society
On March 4, 2005, in the case of Faulkner v. the National Geographic Society (NGS) (PDF), the US Court of Appeals for the Second Circuit ruled that NGS did not infringe on the copyrights of freelance photographers and authors when it digitized their works to create a CD-ROM collection from the entire print version of the NGS magazine (from 1888 to 1996) in a searchable format.
Judge Ralph K. Winter wrote the opinion for the New York Court claiming the plaintiffs’ arguments were unconvincing because the “transfer of work from one media to another generally does not alter its character for copyright purposes.” The decision upholds the ruling made in 2004 by the US District Court for the Southern District of New York.
ARL, and other library associations, submitted an amici curiae brief (PDF) in support of National Geographic, as a ruling in favor of the freelancers would have required publishers of collective works, and others who legitimately digitize them, to obtain additional copyright permission. Seeking additional authorization from the freelancers would hamper the efforts of libraries and others to digitize scholarly collections.
It is likely the Supreme Court will agree to hear this case because this ruling conflicts with a ruling by the Eleventh Circuit Court of Appeals, Greenberg v. National Geographic (see next case).
Greenberg v. National Geographic Society
On June 13, 2007, the US Court of Appeals for the Eleventh Circuit reversed an earlier ruling in the case Greenberg v. National Geographic Society (PDF). This is a very important ruling for publishers who want to digitize their works. This ruling permits digital versions of the works (e.g., print or microfilm) if no changes are made to them. Greenberg, a photographer sued the National Geographic for including his works in a CD-ROM compilation of all of the issues of the National Geographic magazine. An earlier ruling by the US Court of Appeals for the Eleventh Circuit ruled against the National Geographic Society. An appeal to the Supreme Court was rejected and the case was again before the Eleventh Circuit.
On August 30, 2001, the Association of Research Libraries (ARL), the American Library Association (ALA), the American Association of Law Libraries (AALL), and the Medical Library Association (MLA) jointly filed an amicus brief in support of the National Geographic Society’s appeal to the US Supreme Court [PDF]. The brief was filed due to concerns that the Eleventh Circuit decision could hinder the use of digital technologies. The Copyright Act is “media-neutral,” and libraries believe that it should allow publishers to take advantage of new technologies to preserve and distribute creative works to the public.
ALA, ARL, AALL, and MLA view the CD-ROM of the National Geographic magazine as no different than if a microfilm version of the magazine had been made. Copyright protection extends to works in any tangible medium of expression. The original collective works that are reproduced in digital facsimiles constitute a permissible revision and are not themselves changed by the transformation from paper to the CD-ROM version. In this case, the photographs at issue appear in the CD-ROM version in the exact positions (along with text and advertising) in which they appeared in the original print version of the magazine.
Libraries also support the right of scholars and researchers to combine pre-existing works with the necessary software to provide a searching capability. Under the Eleventh Circuit’s decision, no CD-ROM or digital technology that requires the addition of such software could arguably ever qualify as a permissible revision. On June 6, 2006, AALL, ALA, ARL, MLA, the Society of American Archivists (SAA), and the Special Libraries Association (SLA) jointly filed an amicus brief in support of the National Geographic Society, urging the Eleventh Circuit to reverse its judgement [PDF]. On October 18, 2007, AALL, ALA, ARL, MLA, the National Association of State Universities and Land-Grant Colleges, SAA, and SLA filed an amicus brief urging the Eleventh Circuit to grant an appeal re Greenberg v. National Geographic [PDF].
The New York Times v. Tasini
On June 25, 2001, the US Supreme Court issued its decision in the case of The New York Times v. Tasini. In a decisive 7-2 ruling, the justices upheld an appeals court ruling that the reuse of a freelance author’s work on CD-ROMs and in commercial electronic databases without the author’s permission constituted copyright infringement. In February 2001, ARL and ALA filed a “friend of the Court” brief (PDF) to present the library perspective to the US Supreme Court concerning the practical effects of the issues at stake in the case. The brief refuted a number of inaccurate claims and offered constructive ways to balance the rights of freelance authors, commercial electronic database producers, publishers, and the public.
In its ruling, the Supreme Court rejected the publishers’ argument that a ruling for the authors would have “devastating” consequences. In arguing the case, the publishers claimed that they would be forced to delete articles by freelance writers in their databases, and that it would not be feasible to remunerate the authors due to the large number of works involved as well as the expense of locating these contributors. Unfortunately, some of the publishers are continuing to take this position in the wake of the court’s decision. It should be noted, however, that there are financial implications for the publishers regardless of whether they choose to track and delete articles by freelancers or if they decide to locate and reimburse these authors.
The Supreme Court explicitly noted in its opinion that deletion of the freelance writers’ articles was not necessarily the only outcome and that publishers could explore other alternatives. The Justices pointed out that there are “numerous models for distributing copyrighted works and remunerating authors for their distribution” such as the system of blanket performance licenses for musical compositions.
The impact of the court’s ruling will be primarily on older works that currently reside in commercial electronic databases such as Lexis-Nexis. Publications such as the New York Times now require permission for electronic republication of works by freelance authors, but this was not standard industry practice until fairly recently.
Equally important, implicit in the Supreme Court’s decision was the recognition that the nation’s libraries and archives continue to provide access to the historical record of periodicals and newspapers. In addition, the court’s ruling recognized that certain archival media, such as microfilm and microfiche, do not infringe freelance authors’ copyrights. Thus the historical record will continue to be available to researchers and the public.
ARL continues to monitor the effects of the Supreme Court’s ruling in the Tasini case and its impact on libraries. For further information please see: Libaries and the Tasini Case, ALA: Copyright Issues, National Writers Union Web site, and The New York Times Company: Journalism Ethics Policy.
Why did ARL support the publishers in the NGS case and the freelancers in Tasini?
Faulkner v. National Geographic Society differs considerably from New York Times v. Tasini, in which the Supreme Court affirmed the copyright privileges of freelance writers whose works were originally published in newspapers and periodicals and then licensed by the publishers to commercial electronic databases. The associations believe the Copyright Act permits publishers, libraries, archives, and the public to take advantage of new technologies to preserve and distribute creative works to the public if no changes are made to the original work once republished in a different format.
At base, its decision in Tasini was about fair compensation to individual authors when commercial electronic database publishers reused articles without additional permission to create new collective works and sell articles on an individual basis. Thus, it protected the author’s private reward pursuant to the balance that Congress struck in enacting Section 201( c) of the Act.
Metro-Goldwyn-Mayer Studios v. Grokster
On March 29, 2005, the US Supreme Court heard arguments in the case Metro-Goldwyn-Mayer Studios v. Grokster (PDF). This is an important case to the library, education, technology, and consumer electronics communities as there are significant implications for future technological development and innovation.
In this case, 28 entertainment companies sued the makers of file-sharing services, Grokster, Kazaa, and Morpheus. The 9th US Circuit Court of Appeals in San Francisco ruled that file-sharing services were not liable for their users’ illegal activity. The ruling cited the precedent set in the US Supreme Court decision, Sony Corp. v. Universal City Studios (known as the Sony Betamax decision, 1984), and noted that file sharing systems have significant non-infringing uses not unlike videocassette recorders that allow consumers to make copies of copyrighted works for the purposes of time-shifting.
ARL, with four other library associations, the Internet Archive, the ACLU, and Project Gutenberg filed an amicus brief (PDF) before the US Supreme Court. The brief presented includes examples of peer-to-peer applications in the education and library arenas as well as a focus on free speech issues.
These organizations also filed an amicus brief (PDF) when the case was before the Court of Appeals.
Lexmark v. Static Control Component (10/04)& Chamberlain Group, Inc. v. Skylink Technologies, Inc. (8/04)
In the case of Lexmark v. Static Control Component, the 6th US Circuit Court of Appeals in Cincinnati overturned a lower court ruling that prohibited Static Control Component Inc. from manufacturing microchips for Lexmark ink cartridge replacements. Static Control reserve engineered one of Lexmark’s toner cartridges in order to compete and create a cheaper product. The three-judge panel noted, “Lexmark failed to establish likelihood of success under the general copyright statues or under the DMCA.” According to Judge Gilbert Merritt, “Congress did not intend to allow the DMCA to be used offensively in this manner, but rather only sought to reach those who circumvented protective measures ‘for the purpose’ of pirating works protected by the copyright statute.”
In a similar case, Chamberlain Group Inc. v. Skylink Technologies Inc., a Northern District of Illinois US District Court ruled that Chamberlain Group, a garage door manufacturer, could not prohibit Skylink Technologies from manufacturing a universal garage door opener. Chamberlain Group filed the suit on the claim that Skylink Technologies violated the DMCA by selling a device that circumvented their access controls. More info, 9/1/04.
Article by Jonathan Band (PDF), Partner, Morrison and Foerster, LLP, on the decisions of these two DMCA-related cases.
Pacific Bell Internet Services v. Recording Industry Association of America
On November 17, 2003, ARL joined 17 library, public interest, and consumer advocacy organizations in filing an amicus brief (PDF) in the case of Pacific Bell Internet Services (PBIS) v. the Recording Industry Association of America (RIAA). The RIAA has issued several subpoenas to the Internet service provider under section 512(h) of the DMCA seeking to identify the names, addresses, and phone numbers of PBIS subscribers. Pacific Bell filed suit against the RIAA in July 2003, arguing that the subpoena provision in the DMCA is unconstitutional. According to the brief, section 512(h) “is so devoid of procedural protections that it is an invitation to mistake and misuse.” Amici argue that section 512(h) violates the Due Process Clause of the Fifth Amendment “because it does not contain adequate procedural protections against the curtailment of constitutionally protected expression.”
Recording Industry Association of America (RIAA) v. Verizon
On December 19, 2003, reversing the rulings of the lower court, the US Court of Appeals for the District of Columbia Circuit ruled in favor of Verizon (Recording Industry Association of America (RIAA) v. Verizon (PDF)). In a case with significant implications for users of file sharing systems, the decision stopped the RIAA from gaining access to names of individuals that the RIAA suspected of illegally downloading music from the Internet. The suits filed by the RIAA have focused on section 512(h), the subpoena provision of the DMCA, that allows any copyright owner or representative to “request the clerk of any US district court to issue a subpoena” to force an Internet service provider (ISP) to identify “an alleged infringer.”
In July 2002, the RIAA filed a lawsuit against Verizon Internet Services Inc., after Verizon refused to comply with a subpoena issued at the request of the RIAA. Verizon argued that “the RIAA subpoena relates to conduct outside the limited scope of the extraordinary subpoena authority created by the DMCA, [and] is invalid.” In December, the US Court of Appeals for the District of Columbia Circuit agreed with Verizon that the special subpoenas could be used only when material is stored on an Internet service provider’s system or network, not when the service provider is merely acting as a conduit for the communications of others. The court ruled that subpoenas issued by copyright owners under the DMCA seeking the identity of individuals engaging in peer-to-peer file sharing of copyrighted sound recordings and other works were invalid.
The ruling applies to all Internet service providers, including universities and colleges. While it is strictly applicable only to subpoenas issued from the district court in Washington, DC, the strongly worded decision likely will be treated as important precedent in other jurisdictions.
ARL, with others in the library community and public sector, participated in an amicus brief (PDF) in this case siding with Verizon.
The Verizon victory has resulted in a new legal tactic by the RIAA to identify individuals they believe are engaging in illegal file sharing of copyrighted music. The trade association filed more than 500 “John Doe” suits that are more labor intensive and expensive to file. Additional challenges in this arena are underway including a recent case, RIAA v. Charter Communications Inc. ARL, along with 21 other consumer, privacy, and library groups sided with Charter Communications Inc. In a case similar to that of Verizon, the RIAA is seeking the identity of Charter Communications subscribers who they believe are engaging in P2P activity with copyrighted music.
For more information, please see the press release.
Dastar Corp. v. Twentieth Century Fox Film Corp., et al.
On June 2, 2003, the US Supreme Court issued its opinion (PDF) in the case, Dastar Corp. v. Twentieth Century Fox Film Corp. The court ruled unanimously (8-0) in favor of Dastar Corp.
Dastar used Twentieth Century Fox film footage from the 1950s that has entered the public domain to create a documentary on World War II without citing the source of all the footage. Twentieth Century Fox sued Dastar and won. The US Supreme Court has overturned that decision, ruling that Dastar did not break the law when it repackaged the public domain footage.
On February 13, ARL joined other library associations; representatives of the public interest community; computer, and communications associations; and financial services interests in an amicus brief (PDF) to the US Supreme Court on the case. Amici were concerned that a decision in favor of Twentieth Century Fox might undermine the 1991 US Supreme Court decision, Feist Publications Inc. v. Rural Telephone Service, in which the court rejected the sweat-of-the-brow doctrine that could provide copyright protection to the facts contained in databases by virtue of the effort the publisher expended in collecting the facts. Rather, the Supreme Court held that the Constitution’s Intellectual Property Clause protects only “the original expression reflected by the selection, coordination, and arrangement of the facts. The facts themselves remained in the public domain.”
According to Jonathan Band, ARL’s attorney, the decision did not specifically refer to the issue of facts. However, “the reasoning of the court is extremely helpful to supporters of balanced intellectual property laws.” The court focused on the definition of the word “origin” in Section 43(a) of the copyright law. Band explained that “the court said that to treat the origin of communication products as the entity that created the underlying intellectual property ‘would create a species of mutant copyright law that limits the public’s federal right to copy and use expired copyrights.’”
Baystate Technologies v. Howard Bowers
On June 16, 2003, the US Supreme Court denied a writ of certiorari without opinion in the case of Baystate Technologies Inc. v. Bowers. The decision, a disappointment to the library community, will let stand the January 29, 2003, US Court of Appeals decision that “the Copyright Act does not preempt state contract law that allows parties to impose a ban on reverse engineering.”
In a brief submitted to the Federal Circuit Court of Appeals (PDF) after the January decision, Robert Kann, attorney for the petitioner, Baystate, claimed that the federal circuit court’s decision upsets the delicate balance between creators and users of copyrighted material “by allowing the author to nullify through contract, the right to reverse engineer and, accordingly, take back the material dedicated to the public domain.” He explained that, “in exchange for a copyright monopoly over certain protectable expression, the author yields to the public the unprotectable material in the work, along with the associated right to reverse engineer that work to discover and use its unprotectable material.” ARL joined others in the library and public interest communities in an amicus brief in June.
Eldred v. Ashcroft
On January 15, 2003, the US Supreme Court upheld the Sonny Bono Copyright Term Extension Act (CTEA) in a landmark 7-2 ruling (PDF) that came as a disappointment to the library community and other advocates of a vibrant public domain. Justice Ruth Bader Ginsburg delivered the majority opinion; Justice John Paul Stevens and Justice Stephen Breyer each wrote dissenting opinions.
Enacted in October 1998, the CTEA extended copyright protection of existing works by 20 years, from the life of the author plus 50 years (as mandated in the 1976 Copyright Act) to life of the author plus 70 years. The Act prospectively added 20 years of copyright protection to future works. For works made for hire, the term of protection was extended from 75 to 95 years, thus allowing major corporations such as Disney an additional 20 years of control over their works. In May 2002, ARL joined others in the library, archival, historical, and musical communities in an amici curiae, or friends of the court, brief. The brief argued that, by passing the CTEA, Congress exceeded the limits on copyright protection authorized by the U.S. Constitution’s Copyright Clause. According to amici, the CTEA upset the delicate balance between limited copyright protection for creators and the promotion of “progress [in] science and useful arts” through the growth of a vibrant public domain.
Writing for the majority, Justice Ginsburg said that Congress had not exceeded its authority in extending the terms of protection for copyrights because the US Constitution allows Congress to grant protection to creators for “limited times” and, in fact, the CTEA is “limited” to a twenty-year extension. She wrote: “we are not at liberty to second-guess congressional determinations and policy judgments of this order, however debatable or arguably unwise they may be.”
In his dissent, Justice Breyer wrote:
This statute will cause serious expression-related harm. It will likely restrict traditional dissemination of copyrighted works. It will likely inhibit new forms of dissemination through the use of new technology. It threatens to interfere with efforts to preserve our Nation’s historical and cultural heritage and efforts to use that heritage, say, to educate our Nation’s children. It is easy to understand how the statute might benefit the private financial interests of corporations or heirs who won existing copyrights. But I cannot find any constitutionally legitimate, copyright-related way in which the statute will benefit the public. Indeed, in respect to existing works, the serious public harm and the virtually nonexistent public benefit could not be more clear.
For Justice Ginsburg’s majority opinion, see Eldred v Ashcroft: Opinion of the Court (PDF). For the two dissenting opinions, see Eldred v Ashcroft: Stevens, J. dissenting (PDF) and Eldred v Ashcroft: Breyer, J. dissenting (PDF).
Register.Com v. Verio
In 2001, ARL, together with many others, including the American Library Association, the Digital Future Coalition, the Computer and Communications Industry Association, and the National Writers Union, filed an amici curiae brief in the case Register.com v. Verio. Verio extracted information from the publicly available Register.com WHOIS database for use in telemarketing. In response to this extraction, Register.com sued Verio and was successful in district court. The amici curiae brief (PDF) argues that these claims are preempted by the federal intellectual property system; the district court ruling is at odds with the Feist decision regarding facts being in the public domain; and it also raises First Amendment concerns.
The brief notes: “Technological innovation has forever changed the way people access information. Increasingly, the information available in the digital age involves computer databases. In the future, more facts will be available to the public only via the Internet. The District Court’s decision in this case would allow database publishers unilaterally to restrict what others can do with these facts. This contravenes the nation’s fundamental information policy: “All facts scientific, historical, biographical, and news of the day… are part of the public domain available to every person.” (Feist, 499 US at 348.) “There should be no misunderstanding what is at stake in this case. Even in the digital environment, copyright law permits users of publicly accessible, online databases to utilize freely the raw factual data gleaned from the databases. Because the district court’s decision undermines this fundamental guarantee, it must be reversed.”
Hyperlaw v. West Publishing Company
In July 1999, the US Supreme Court denied certiorari, or refused to hear, two cases under appeal by West Publishing Company. By rejecting the request, the Supreme Court let stand two decisions by the US Court of Appeals for the Second Circuit in favor of Matthew Bender & Co. and Hyperlaw Inc.
The US Court of Appeals for the Second Circuit limited the ability of West Publishing Co. and West Publishing Corporation to copyright legal decisions. In two rulings, Matthew Bender v. West Publishing Co. and Matthew Bender Co. and Hyperlaw Inc. v. West Publishing Co. and West Publishing Corporation, the court determined that the changes that West Publishing makes to judicial opinions are not sufficient to warrant additional legal protection of the decisions. The court noted that, “All of West’s alterations to judicial opinions involve the addition and arrangement of facts, or the rearrangement of data already included in the opinions, and therefore any creativity in these elements of West’s case reports lies in West’s selection and arrangement of this information. In light of accepted legal conventions and other external constraining factors, West’s choices on selection and arrangement can reasonably be viewed as obvious, typical, and lacking even minimal creativity. Therefore, we cannot conclude that the district court clearly erred in finding that those elements that Hyperlaw seeks to copy from West’s case reports are not copyrightable, and affirm.”
Members of the Shared Legal Capability and the Society of American Archivists filed an amicus brief noting that “this case raises many important issues concerning public access to public domain works of the United States Government. Although the case specifically deals with access to federal court case law that is binding on United States citizens, the lower court’s ruling also provides important precedent for no fee public access to other information published by the United States Government. This case typifies a growing trend of publishers laying claim to government information by making trivial alterations, which do not create copyrightable matter and which are neither annotated nor highlighted, and using those minuscule changes to assert statutory copyright protection.”
The denial of certiorari by the Supreme Court rulings will likely result in further effort by West Publishing, Reed Elsevier, and other proponents of the database legislation to press for additional protections of databases outside the scope of copyright.
