The history of American copyright law originated with the introduction of the printing press to England in the late fifteenth century. As the number of presses grew, authorities sought to control the publication of books by granting printers a near monopoly on publishing in England. The Licensing Act of 1662 confirmed that monopoly and established a register of licensed books to be administered by the Stationers’ Company, a group of printers with the authority to censor publications. The 1662 act lapsed in 1695 leading to a relaxation of government censorship, and in 1710 Parliament enacted the Statute of Anne to address the concerns of English booksellers and printers. The 1710 act established the principles of authors’ ownership of copyright and a fixed term of protection of copyrighted works (fourteen years, and renewable for fourteen more if the author was alive upon expiration). The statute prevented a monopoly on the part of the booksellers and created a “public domain” for literature by limiting terms of copyright and by ensuring that once a work was purchased the copyright owner no longer had control over its use. While the statute did provide for an author’s copyright, the benefit was minimal because in order to be paid for a work an author had to assign it to a bookseller or publisher.
Since the Statute of Anne almost three hundred years ago, U.S. law has been revised to broaden the scope of copyright, to change the term of copyright protection, and to address new technologies. For several years, the U.S. has considered and acted on copyright reform. The Canadian government is considering copyright reform as well.
According to Article I, Section 8, Clause 8 of the U.S. Constitution, “the Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
1790: Copyright Act of 1790
The First Congress implemented the copyright provision of the U.S. Constitution in 1790. The Copyright Act of 1790, An Act for the Encouragement of Learning, by Securing the Copies of Maps, Charts, and Books to the Authors and Proprietors of Such Copies, was modeled on the Statute of Anne (1710). It granted American authors the right to print, re-print, or publish their work for a period of fourteen years and to renew for another fourteen. The law was meant to provide an incentive to authors, artists, and scientists to create original works by providing creators with a monopoly. At the same time, the monopoly was limited in order to stimulate creativity and the advancement of “science and the useful arts” through wide public access to works in the “public domain.” Major revisions to the act were implemented in 1831, 1870, 1909, and 1976.
1831: Revision of the Copyright Act
The term of protection of copyrighted works was extended to twenty-eight years with the possibility of a fourteen-year extension. Congress claimed that it extended the term in order to give American authors the same protection as those in Europe. The extension applied both to future works and those current works whose copyright had not expired.
1834: Wheaton v. Peters
The case arose from a dispute between the official reporter of U.S. Supreme Court decisions, Richard Peters, and the previous reporter, Henry Wheaton. Peters began publishing “Condensed Reports” of cases decided during Wheaton’s tenure and Wheaton sued. The case went before the U.S. Supreme Court. Peters argued that Wheaton had failed to properly obtain copyright, while Wheaton argued that authors were entitled to perpetual property rights in their works. Justice McLean delivered the majority decision, stating that “since the statute of 8 Anne, the literary property of an author in his works can only be asserted under the statute. . . . That an author, at common law, has a property in his manuscript, and may obtain redress against any one who deprives him of it, or by improperly obtaining a copy endeavours to realise a profit by its publication cannot be doubted; but this is a very different right from that which asserts a perpetual and exclusive property in the future publication of the work, after the author shall have published it to the world.” The decision struck a decisive blow against the notion of copyright as a perpetual natural right, and the utilitarian view of copyright embodied in the U.S. Constitution prevailed, i.e., “that patents and copyrights are exclusive rights of limited duration, granted in order to serve the public interest in promoting the creation and dissemination of new works.” See the amicus brief submitted to the U.S. Supreme Court by Tyler Ochoa and Mark Rose in the case of Eldred v. Ashcroft,May 20, 2002.
1841: Folsom v. Marsh
In a case brought before the Massachusetts Circuit Court in 1841, the owner and editor of a multi-volume collection of George Washington’s letters sued Charles Upham for using hundreds of pages of the letters, in their entirety, in a volume on the life of Washington. Justice Joseph Story found that Upham had infringed the owner’s copyright in publishing some 350 pages of Washington’s letters in his 866-page book. Upham argued that Washington’s letters were not “proper subjects of copyright” because their publication would not harm the deceased author, and because they were not literary in nature. Story disagreed and held that letter writers and their designated heirs, not the persons to whom the letters are addressed, possess copyright in the letters they have written, no matter the content.
Upham also argued that he had “a right to abridge and select, and use the materials . . . for [his] work, which . . . is an original and new work, and that it constitutes, in no just sense, a piracy of the work of the plaintiffs.” Again, Story disagreed, saying that Upham’s work was “a selection of the entire contents of particular letters, from the whole collection or mass of letters of the work of the plaintiffs. . . . [and] that these letters are the most instructive, useful and interesting to be found in that large collection.” In explaining the nature of the infringement, Story said, “It is certainly not necessary, to constitute an invasion of copyright, that the whole of a work should be copied, or even a large portion of it, in form or in substance. If so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another,that is sufficient, in point of law, to constitute a piracy pro tanto” (my emphasis). The court’s definition of what constituted a “justifiable use of the original materials” formed the basis of the “fair use” doctrine. Put another way, Story said that, “the question of piracy, often depend[s] upon a nice balance of the comparative use made in one of the materials of the other; the nature, extent, and value of the materials thus used; the objects of each work; and the degree to which each writer may be fairly presumed to have resorted to the same common sources of information, or to have exercised the same common diligence in the selection and arrangement of the materials.”
1853: Stowe v. Thomas
Harriet Beecher Stowe sued F.W. Thomas, publisher of a German-language periodical, Die Freie Presse, in 1853. Thomas translated Uncle Tom’s Cabin into German and sold it in the United States without the author’s permission. Judge Robert Grier of the Third Circuit Court of Appeals explained in the decision that once an author published her or his work, “and given his thoughts, sentiments, knowledge or discoveries to the world, he can have no longer an exclusive possession of them.” With regard to translations, he continued, “the same conceptions clothed in another language cannot constitute the same composition; nor can it be called a transcript or ‘copy’ of the same ‘book.'” According to Siva Vaidhyanathan, the “antiproperty” rhetoric in the decision encouraged many American authors to take a stand in favor of copyright as property until the copyright law was revised in 1870 (Vaidhyanathan, 48-50).
1870: Revision of Copyright Act
The administration of copyright registrations moved from the individual district courts to the Library of Congress Copyright Office. The term of protection was not extended in this revision.
1886: Berne Convention
The goals of the Berne Convention provided the basis for mutual recognition of copyright between sovereign nations and promoted the development of international norms in copyright protection. European nations established a mutually satisfactory uniform copyright law to replace the need for separate registration in every country. The treaty has been revised five times since 1886. Of particular note are the revisions in 1908 and 1928. In 1908, the Berlin Act set the duration of copyright at life of the author plus 50 years, expanded the scope of the act to include newer technologies, and prohibited formalities as a prerequisite of copyright protection. In 1928, the Rome Act first recognized the moral rights of authors and artists, giving them the right to object to modifications or to the destruction of a work in a way that might prejudice or decrease the artists’ reputations. The United States became a Berne signatory in 1988.
1891: International Copyright Treaty
Because American copyright law applied only to American publications, European authors were unable to profit from the publication and sale of their works at extremely low prices during the nineteenth century. The so-called “cheap books” movement, spread rapidly by small upstart publishers after the Civil War, threatened the “courtesy principle” of gentlemanly price-fixing adhered to by the large, established publishers such as Henry Holt. By the 1880s cheap books flooded the American market. By 1890 authors, publishers, and printers’ unions joined together to support an international copyright bill (Vaidhyanathan, 50-55).
A major revision of the U.S. Copyright Act was completed in 1909. The bill broadened the scope of categories protected to include all works of authorship, and extended the term of protection to twenty-eight years with a possible renewal of twenty-eight. The Congress addressed the difficulty of balancing the public interest with proprietor’s rights:
“The main object to be desired in expanding copyright protection accorded to music has been to give the composer an adequate return for the value of his composition, and it has been a serious and difficult task to combine the protection of the composer with the protection of the public, and to so frame an act that it would accomplish the double purpose of securing to the composer an adequate return for all use made of his composition and at the same time prevent the formation of oppressive monopolies, which might be founded upon the very rights granted to the composer for the purpose of protecting his interests” (H.R. Rep. No. 2222, 60th Cong., 2nd Sess., p. 7 ).
1973: Williams and Wilkins Co. v. United States
Williams and Wilkins, publishers of specialized medical journals, sued the National Library of Medicine (NLM) and the National Institutes of Health (NIH)charging that the agencies had infringed copyright by making unauthorized photocopies of articles featured within their publications and distributing them to medical researchers. The U.S. Court of Claims held that medicine, and medical research would be harmed by finding an infringement, and since the Copyright Act was under revision by Congress, it was better to allow the status quo to continue in the interim. In the decision, Judge Davis stated, “the court holds, based on the type and context of use by NIH and NLM as shown by the record, that there has been no infringement, that the challenged use is ‘fair’ in view of the combination of all of the factors involved in consideration of ‘fair’ or ‘unfair’ use enumerated in the opinion, that the record fails to show a significant detriment to plaintiff but demonstrates injury to medical and scientific research if photocopying of this kind is held unlawful, and that there is a need for congressional treatment of the problems of photocopying.”
1976: Revision of the U.S. Copyright Act
The 1976 revision was undertaken for two primary reasons. First, technological developments and their impact on what might be copyrighted, how works might be copied, and what constituted an infringement needed to be addressed. Second, the revision was undertaken in anticipation of Berne Convention adherence by the U.S. It was felt that the statute needed to be amended to bring the U.S. into accord with international copyright law, practices, and policies. The 1976 act preempted all previous copyright law and extended the term of protection to life of the author plus 50 years (works for hire were protected for 75 years). The act covered the following areas: scope and subject matter of works covered, exclusive rights, copyright term, copyright notice and copyright registration, copyright infringement, fair use and defenses and remedies to infringement. With this revision, for the first time the fair use and first sale doctrines were codified, and copyright was extended to unpublished works. In addition, a new section was added, section 108, that allowed library photocopying without permission for purposes of scholarship, preservation, and interlibrary loan under certain circumstances.
In addition to section 108, section 107 is important to libraries because it contains an exception to the exclusive rights of owners to make and distribute copies of their works. It states that “the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” To determine whether the use of a work is a fair use, the following four factors are to be considered: purpose and character of the use, nature of the copyrighted work, the amount and substantiality of the portion used in relation to the whole, and the effect of the use on the potential market. See Title 17of the U.S. Code.
1976: Classroom Guidelines
In addition to legislative reforms, private negotiations between owners and users of copyrighted materials resulted in guidelines for classroom and educational use as well as reserve room use. These guidelines were not part of the statute but were included in the House report accompanying the 1976 act. The 1976 “Agreement on Guidelines for Classroom Copying in Not-for-Profit Educational Institutions with Respect to Books and Periodicals” was adopted by thirty-eight educational organizations and the publishing industry. According to the text of the guidelines, the purpose was “to state the minimum and not the maximum standards of educational fair use under section 107 of the [Copyright Act of 1976]. The parties agree that the conditions determining the extent of permissible copying for educational purposes may change in the future; that certain types of copying permitted under these guidelines may not be permissible in the future; and conversely that in the future other types of copying may be permissible under revised guidelines.”
1976: CONTU Process
The National Commission on New Technological Uses of Copyrighted Works (CONTU) was appointed by Congress in 1976 to establish guidelines for the “minimum standards of educational fair use” under the 1976 act. “The CONTU guidelines were developed to assist librarians and copyright proprietors in understanding the amount of photocopying for use in interlibrary loan arrangements permitted under the copyright law.” Guidelines were established for copying for interlibrary loan.
1983: Encyclopedia Britannica Educational Corp. v. Crooks
Encyclopedia Britannica sued the Board of Cooperative Educational Services, a consortium of public school districts, for systematically taping educational programs that were broadcast on public television stations and making copies available to member schools. The court found that the actions of the school board would have a detrimental effect on the market of the commercially produced programs and that the use was not a fair use.
1986: Maxtone-Graham v. Burtchaell
Maxtone-Graham wrote a book containing women’s stories of unwanted pregnancy and abortion in 1973. She denied Burtchaell’s request to use excerpts from her published interviews. He published them anyway. The Second Circuit Court of Appeals found that quoting 4.3% of an author’s work was not excessive and that Burtchaell’s use of the narratives was a fair use.
1987: Salinger v. Random House
After an initial decision in favor of J.D. Salinger’s unauthorized biographer, Ian Hamilton, the Second Circuit Court of Appeals found that quoting or paraphrasing from unpublished materials (Salinger’s letters) in an unauthorized biography was not fair use and the book was never published.
1988: Berne Convention
The United States became a Berne signatory in 1988. The major changes for the U.S. copyright system as a result of Berne were: greater protection for proprietors, new copyright relationships with twenty-four countries, and elimination of the requirement of copyright notice for copyright protection.
1990: Circulation of Computer Software
Congress amended the Copyright Act to prohibit commercial lending of computer software. The amendment noted that libraries could lend software provided the “copy of a computer program which is lent by such library has affixed to the packaging containing the program a warning of copyright.” The amendment was a modification of the first sale doctrine.
1991: Basic Books, Inc. v. Kinko’s Graphics Corp.
A Federal District Court in New York ruled that Kinko’s Graphic Corporation infringed copyrights, and did not exercise fair use, when it photocopied coursepacks that included book chapters, and then sold them to students for classwork. The court found that most of the fair use factors worked against Kinko’s in this case, especially given Kinko’s profit motive in making the copies. Additionally, the court found that the classroom guidelines did not apply to Kinko’s. The court did not rule that coursepacks cannot constitute fair use in other circumstances.
1991: Feist Publications v. Rural Telephone Service Co., Inc.
The U.S. Supreme Court found that the U.S. Constitution requires that, for a work to receive copyright protection, it must reflect creative expression or originality. Thus, the compilation of a telephone directory by Feist was not an infringement even though it was compiled from the information in the Rural Telephone Service White Pages. The information in the white pages was not copyrightable because it comprised “comprehensive collections of facts arranged in conventional formats.”
1992: American Geophysical Union v. Texaco
American Geophysical Union v. Texaco resulted from a class action suit brought by six scientific publishers (on behalf of other publishers registered with the Copyright Clearance Center). In July 1992, a U.S. District judge ruled in the seven-year-old copyright case that a Texaco scientist violated the Copyright Law when he copied complete journal articles without providing the appropriate fee to the publishers. Texaco argued that the copying fell within fair use. The court ruled that the profit motive of the company was a relevant consideration in the analysis of the purpose of the use. They also found against Texaco in considering the amount of the work used, and found that the market was affected because Texaco could have paid royalties through the CCC.
In 1994, the Second Circuit Court of Appeals upheld the lower court decision. In April 1995, Texaco petitioned the Supreme Court to review the case. On May 15, 1995, Texaco and a steering committee representing the publishers announced that they had agreed upon terms to settle the case. Texaco, which conceded no wrongdoing in the proposed settlement, paid a seven figure settlement and retroactive licensing fee to the CCC. In addition, Texaco entered into standard annual license agreements with the CCC over the next five years.
1992: Amendment to Section 304 of Title 17
Congress amended Section 304 of Title 17 making copyright renewal automatic. The amendment dramatically curtailed the entry into the public domain of works protected by copyright before 1978.
1993: Playboy Enterprises Inc. v. Frena
The Florida Northern District Court held that Frena, an electronic bulletin board operator, had violated Playboy’s copyright when one of their photographs was digitized and placed on the bulletin board system by one subscriber and downloaded by another subscriber. According to the decision, “it does not matter that Defendant Frena may have been unaware of the copyright infringement. Intent to infringe is not needed to find copyright infringement. Intent or knowledge is not an element of infringement, and thus even an innocent infringer is liable for infringement; rather innocence is significant to a trial court when it fixes statutory damages, which is a remedy equitable in nature.”
1993: NII Initiative
The Working Group on Intellectual Property Rights was established to explore the application and effectiveness of copyright law and the National Information Infrastructure. The NII was described as “a seamless web of communications networks, computers, databases, and consumer electronics” (Information Infrastructure Task Force, National Telecommunications and Information Administration, National Information Infrastructure: Agenda for Action,1993).
1994: Campbell v. Acuff-Rose Music Inc.
The Supreme Court ruled that 2 Live Crew’s parody of Roy Orbison’s song, “Pretty Woman,” was a fair use. The court found that a commercial use could be a fair use especially when the markets for an original work and a transformative work are different (Vaidhyanathan, 148-49).
1994: Working Group’s Green Paper
The Working Group on Intellectual Property Rights sponsored a series of activities to solicit input on copyright issues and the NII. These included public hearings and, in June 1994, a draft NII report was circulated for comment and review (the Green Paper). Part of the review process included three hearings (held in Los Angeles, Chicago, and Washington, DC) hosted by the Working Group, where members of the stakeholder community presented reactions to the Green Paper.
The Working Group on Intellectual Property Rights sponsored the Conference on Fair Use (CONFU). Established in September 1994, CONFU was the venue for a discussion of issues of fair use in the electronic environment. CONFU participants developed guidelines for fair use of educational multimedia, and proposed guidelines in a number of areas including interlibrary loan, electronic reserves, digital images, and distance education. According to the final report[PDF file], issued in 1998, “it was clear that fair use was alive and well in the digital age, and that attempts to draft widely supported guidelines will be complicated by the often competing interests of the copyright owner and user communities” (p. 18).
1995: Religious Technology Center v. Netcom
A federal judge in the Northern District Court of California ruled that Netcom, an Internet Service Provider (ISP), was liable for contributory infringement (as opposed to direct infringement) of copyright because the company did not remove copyrighted materials posted by a subscriber. Justice Whyte found that “mere possession of a digital copy on a [server] that is accessible to some members of the public” may not constitute direct infringement of the exclusive right to publicly distribute and display. The case was significant for its implications for Internet Service Providers’ knowledge of and liability for infringers’ activities, as well as their use of the fair use doctrine as an affirmative defense against charges of contributory infringement. In 1998, the DMCA limited the liability of “service providers” for some forms of infringement. For more information on ISP liability, see the Copyright Crash Course, “Is Your Library an Internet Service Provider Under the DMCA?”
1995: Release of the White Paper
The culmination of the NII Working Group’s efforts was release of the white paper in September 1995. The white paper contained recommendations to amend the Copyright Act of 1976 and presented a lengthy legal analysis of current copyright law. The white paper’s legislative amendments and recommendations were introduced in Congress as the NII Copyright Protection Act of 1995 (S. 1284 and H.R. 2441).
1996: TRIPS Agreement
In December 1994, President Clinton signed the Uruguay Round Agreements Act (URAA) which implemented the General Agreement on Tariffs and Trade (GATT) including Trade-Related Aspects of Intellectual Property (TRIPs). Provisions in the URAA amended U.S. copyright law. On January 1, 1996, copyright for works from eligible countries was restored.
1996: Database Protection Legislation
In May 1996, Rep. Carlos Moorhead (Chair, House Judiciary Subcommittee on Courts and Intellectual Property, R-CA) introduced the Database Investment and Intellectual Property Antipiracy Act of 1996 (H.R. 3531). The legislation was comparable to a European sponsored initiative to protect databases for fifteen years from unauthorized extractions of more than an insubstantial part of the database contents. A variety of bills were introduced until 1999. Discussions on this extremely controversial legislation continued throughout 2002, with congressional staff trying to craft a compromise bill.
1996: Princeton University Press, MacMillan Inc., and St. Martin’s Press v. Michigan Document Services, Inc., and James Smith
In November 1996, the Sixth Circuit Court of Appeals decided in an eight to five ruling in favor of publishers who sued Michigan Document Services (MDS). MDS was an off-campus, for-profit photocopy shop whose owner, James Smith, made coursepacks that included substantial portions of copyright protected books and sold them to students. Smith claimed his use of the material was a fair use and in February 1996 the same court had ruled in his favor. However, in April 1996 the judges of the court voted to rehear the case en banc, leading to the November ruling. MDS appealed the case in January 1997; however, the U.S. Supreme Court refused to hear the case.
1996: World Intellectual Property Organization (W.I.P.O.)
Delegates from 160 countries considered two treaties on international intellectual property law during a Diplomatic Conference convened in December 1996 in Geneva, Switzerland. The delegates adopted new versions of the proposed treaties resulting in a new approach to copyright issues. The Conference adopted a statement ensuring the two treaties would “permit application of fair use in the digital environment.” The treaty language emphasized “the need to maintain a balance between the rights of authors and the larger public interest, particularly education, research and access to information.”
1998: Sonny Bono Copyright Term Extension Act
On October 7, 1998, the House and Senate passed S. 505, the Copyright Term Extension Act (CTEA). The law extended protection from life of the author plus fifty years to life of the author plus seventy years. President Clinton signed the measure into law on October 27, 1998 (P.L. 105-298). The law’s provisions applied to works under copyright on the date of its implementation. An exception permits libraries, archives, and non-profit educational institutions to treat copyrighted works in their last twenty years of protection as if they were in the public domain for non-commercial purposes, under certain limited conditions.
President Clinton signed the Digital Millenium Copyright Act (DMCA) into law on October 28, 1998 (P.L. 105-304). The law’s five titles implemented the WIPO Internet Treaties; established safe harbors for online service providers; permitted temporary copies of programs during computer maintenance; made miscellaneous amendments to the Copyright Act, including amendments which facilitated Internet broadcasting; and created sui generis protection for boat hull designs. A controversial title establishing database protection was omitted by a House-Senate Conference.
Among the most controversial provisions of the DMCA is Section 1201. According to Jonathan Band of Morrison & Foerster, LLP, Section 1201 “prohibits gaining unauthorized access to a work by circumventing a technological protection measure put in place by the copyright owner where such protection measure otherwise effectively controls access to a copyrighted work. This prohibition on unauthorized access takes effect two years after enactment of the DMCA.” Over the next two years, the Librarian of Congress conducted a rulemaking proceeding to determine appropriate exceptions to the prohibition. Additional rulemakings will occur every three years.
For more information on the DMCA, see the Home Recording Rights Coalition: DMCA Legislative History.
1999: Bender v. West Publishing Co.
The U.S. Supreme Court denied certiorari, or refused to hear, two cases under appeal by West Publishing Company. By rejecting the request, the U.S. Supreme Court let stand two decisions by the Second Circuit Court of Appeals in favor of Matthew Bender & Co. and Hyperlaw, Inc.
The Second Circuit Court of Appeals limited the ability of 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 made to judicial opinions were 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.”
1999: UCITA Passed by NCCUSL
In July 1999, the National Conference of Commissioners on Uniform State Laws (NCCUSL) passed the Uniform Computer Information Transaction Act (UCITA, formerly UCC 2B). UCITA is a proposed state law that seeks to create a unified approach to the licensing of software and information.
1999: Digital Theft Deterrence and Copyright Damages Improvement Act of 1999
Congress approved a significant hike in the minimum statutory damages for various types of copyright infringement in the Digital Theft Deterrence and Copyright Damages Improvement Act of 1999 (H.R. 3456). The law increased the minimum statutory damages for infringements from $500 to $750 and increased the maximum from $20,000 to $30,000. The maximum for willful infringement increased from $100,000 to $150,000.
2000: Virginia Passed UCITA
On March 14, 2000, Governor Jim Gilmore of Virginia signed UCITA into law. Virginia was the first state to approve the legislation. Maryland passed it in April 2000. The highly controversial legislation is under consideration in several state legislatures.
The Anti-Circumvention Provision of the DMCA, Section 1201(a)(1), allows exemptions from the prohibition on circumvention of technological protection measures for “persons who are users of a copyrighted work which is in a particular class of works, if such persons are, or are likely to be . . . adversely affected.” Congress directed the Register of Copyrights to review the section and to issue recommendations to the Librarian of Congress on “classes of works” that should be exempt from the ban on circumvention.
Members of the Shared Legal Capability (made up of representatives of the five major library associations: the American Library Association, the American Association of Law Libraries, the Association of Research Libraries, the Medical Library Association, and the Special Libraries Association) had called for a broad exemption from technological protection measures in order to ensure that library users could exercise fair use of protected material. The Assistant Secretary for Commerce, Gregory Rohde, noted that “information crucial to supporting scholarship, research, comment, criticism, new reporting, life long learning, and other related lawful uses of copyrighted information should never become available only to those with the ability to pay.” He called for exemptions “grounded in the principle of fair use” that would allow the public to fully realize their access to lawfully acquired information.
On October 27, 2000, the Librarian of Congress announced the exemption of two narrow classes of works: compilations of lists of websites blocked by filtering software applications; and literary works, including computer programs and databases, protected by access control mechanisms that fail to permit access because of malfunction, damage, or obsolescence. In issuing the rulemaking, the Librarian of Congress noted several concerns and stated his intent to call upon Congress to reconsider selected aspects of the copyright legislation. In particular, he noted the “potential damage to scholarship” and possible harm to “American creativity” resulting from provisions in the statute.
The full recommendation of the Register of Copyrights and determination of the Librarian of Congress can be found at: http://www.loc.gov/copyright/1201/anticirc.html.
2000: Register.com v. Verio
Verio extracted information from the publicly available Register.com WHOIS database for use in telemarketing. In response, Register.com sued Verio and was successful in New York Southern District Court in December 2000. The judge ordered Verio to stop using customer contact information it had acquired through the WHOIS database for mass marketing purposes. At issue are limits on access to and use of personal information on publicly available online databases.
2001: Greenberg v. National Geographic Society
Two photographers claimed that the inclusion of their photographs in the National Geographic Society’s (NGS) CD-ROM version of the NGS magazine violated their copyrights and that the NGS was not exempt under Section 201(c) of the Copyright Act. Section 201(c) permits the owner of copyright in a collective work, such as a magazine or encyclopedia, to reproduce and distribute an individual author’s freelance contribution “as part of that particular collective work, any revision to that collective work, and any later collective work in the same series.”
“The Complete National Geographic,” a thirty-disc CD-ROM set, reproduced each monthly issue of the National Geographic magazine from 1888 through 1996. Each NGS magazine included in the CD-ROM is an exact replica of the entire magazine; thus a user encounters photographs of a freelance author’s article in the original context.
2001: New York Times v. Tasini
On June 25, 2001, the U.S. 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 its ruling, the Court rejected the publishers’ argument that a ruling for the authors would have “devastating” consequences, requiring them to delete freelance writers’ works in commercial electronic databases. 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 New York Times now requires permission for electronic republication of works by freelance authors, but this was not standard industry practice until the 1990s. Equally important, implicit in the 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. Ultimately, The New York Times and other publishers chose to remove the freelance writers’ works, as many as 115,000 articles, from Lexis/Nexis and other full-text databases if the writers did not waive their claims for compensation under the decision.
2001: Russian Programmer Arrested for Copyright Circumvention
Among the first challenges to the DMCA was the case of Dmitri Sklyarov, a Russian programmer accused of circumventing copyright protections in Adobe Systems’ eBook Reader while working for a Russian software firm, ElcomSoft. Sklyarov was arrested in July 2001. ElcomSoft was charged with one count of conspiracy and four counts of trafficking in technology used to circumvent copyright protections.
On April 2, 2002, Judge Ronald Whyte of the Northern District of California denied a motion to dismiss the prosecution of ElcomSoft. ElcomSoft’s attorneys argued that the actions at issue in the case occurred outside of the U.S., and that the law banned tools that consumers could use for legitimate purposes, such as blind people converting e-books to audio files to be read aloud by their computers. Finally, the attorneys argued that computer code is speech and is therefore protected under the first amendment to the U.S. Constitution.
2001: State Sovereign Immunity
According to the Eleventh Amendment to the U.S. Constitution, state entities, including universities and libraries, may not be held liable in federal court cases. After a series of U.S. Supreme Court decisions held that the sovereign immunity clause exempts state entities from adherence to federal intellectual property laws, the Texas Northern District Court took up the question of state immunity from copyright infringement litigation in January 1998. The court concluded that a state agency cannot be held liable for copyright infringement in federal court. In April 1998, the Fifth Circuit Court of Appeals affirmed the decision, finding that the University of Houston, a state agency, could not be held liable in federal court for copyright infringements.
On November 1, 2001, Patrick Leahy (Chair, Committee on the Judiciary, D-VT) introduced S. 1611, the “Intellectual Property Protection Restoration Act of 2001,” to address what is seen by many as an inequitable situation under which state entities can use federal law to protect their own intellectual property but may infringe the copyright, patent, and trademark laws that protect others’ intellectual property. S. 1611 would make the availability of federal intellectual property protection laws contingent upon the voluntary waiver by states of their own immunity from suit under the sovereign immunity clause of the U.S. Constitution.
2002: Consumer Broadband and Digital Television Promotion Act (S. 2048) Introduced in Senate
On March 21, 2002, Sen. Ernest Hollings (Chair, Committee on Commerce, Science, and Transportation, D-SC) introduced the “Consumer Broadband and Digital Television Promotion Act” (S. 2048). The goal as stated in the bill is “to regulate interstate commerce in certain devices by providing for private sector development of technological protection measures to be implemented and enforced by Federal regulations to protect digital content and promote broadband, as well as the transition to digital television, and for other purposes.” The bill requires that any device that can record, receive, or store copyrighted digital information comply with copy-protections encoded in digital works such as DVDs, CDs, and electronic books.
2002: ABA Issues UCITA Report
The National Conference of Commissioners on Uniform State Laws (NCCUSL), the body that introduced UCITA in 1999 and continues to promote its adoption by state legislatures, met in early August 2002. The UCITA Standby Committee, responsible for drafting UCITA, proposed thirty-eight amendments. Those amendments were adopted despite a lengthy debate in which delegates pushed for additional changes. Forty delegates signed a petition to downgrade UCITA from a “uniform law” to a “model law,” a move that would remove NCCUSL’s obligation to promote the law in state legislatures. Although the effort was unsuccessful, the debate revealed widespread disenchantment with UCITA within NCCUSL.
On January 31, 2002, the ABA Working Group assigned to review UCITA issued its report to the Board of Governors. UCITA seeks to replace the public law of copyright with the private law of contracts. UCITA was passed by state legislatures in Maryland and Virginia in 2000, but has yet to pass in other states due to significant opposition in the public and private sectors.
As part of the ABA review, NCCUSL, the body responsible for drafting UCITA in 1999, scheduled hearings in fall 2001 and invited interested parties to submit amendments. Representatives from ARL, ALA, and AALL drafted two amendments: 1.) To clarify that terms in non-negotiated licenses would not be enforceable if they prohibited activities normally permissible under federal copyright law; and 2.) To broaden the criteria for declaring such contract terms unenforceable.
2002: Senate Approves Distance Education Legislation
The “Technology Education and Copyright Harmonization Act,” or the “TEACH Act” (S. 287) became law on November 2, 2002. The legislation supported by members of the higher education and library communities, implements recommendations made by the Copyright Office in 1999. Among the benefits of the Act for distance education are an expansion of the scope of materials that may be used in distance education; the ability to deliver content to students outside the classroom; the opportunity to retain archival copies of course materials on servers; and the authority to convert some works from analog to digital formats. On the other hand, the TEACH Act conditions those benefits on compliance with numerous restrictions and limitations. Among them are the need to adopt and disseminate copyright policies and information resources; implementation of technological restrictions on access and copying; adherence to limits on the quantity of certain works that may be digitized and included in distance education; and use of copyrighted materials in the context of “mediated instructional activities” akin in some respects to the conduct of a traditional course.
2003: Eldred v. Ashcroft
On January 15, 2003, the United States Supreme Court ruled in Eldred v. Ashcroft, a challenge to the constitutionality of the 1998 Sonny Bono Copyright Term Extension Act. The Court rejected the plaintiff’s argument that repeated retroactive copyright term extensions would be in violation of intent of the Constitution’s Copyright Clause’s “for limited Times” term.
2003: Dastar Corp. v. Twentieth Century Fox Film Corp.
In Dastar Corp. v. Twentieth Century Fox Film Corp., the Supreme Court ruled that works in the public domain could be repackaged and sold as new works without providing credit or citation to the original authors. Dastar had purchased videotapes of a TV series originally published by Fox that had entered into the public domain. When Dastar edited, repackaged, and sold the TV series, it provided no attribution back to the original authors. Fox sued Dastar for violation of §43(a) of the Lanham Act. The Court rejected this theory, reasoning that a plain text interpretation of §43(a) did not support Fox’s claims and that Fox’s interpretation of §43(a) would conflict with the policy goals of the Copyright Act provisions on public domain and the limited authorial rights in the Visual Artists Rights Act.
2003: Kelly v. Arriba Soft
In Kelly v. Arriba Soft, a photographer sued the search engine company, Arriba Soft, for thumbnails of and in–line linking to images hosted on his website. On appeal, the Ninth Circuit ruled that the thumbnails Arriba Soft created of Kelly’s photos were covered by fair use exemptions and did not constitute copyright infringement.
2003: Rulemaking on Exemptions to the DMCA Anticircumvention Provisions
In 2003, the Librarian of Congress announced four classes of works that would be exempted from the prohibition against circumvention of technological protection measures: 1) Compilations consisting of lists of Internet locations blocked by commercially marketed filtering software applications that are intended to prevent access to domains, websites, or portions of websites; 2) Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete; 3) Computer programs and video games distributed in formats that have become obsolete and which require the original media or hardware as a condition of access; and 4) Literary works distributed in e-book format when all existing e-book editions of the work contain access controls that prevent the rendering of text into specialized formats. The full text of these categories of works is available here: http://www.copyright.gov/1201/2003/index.html. These exemptions would remain in effect until October 27, 2006.
2004: Chamberlain Group Inc. v. Skylink Techs. Inc.
In Chamberlain Group Inc. v. Skylink Techs. Inc., the Federal Circuit ruled in a court battle between a garage door manufacturer, Chamberlain, and the manufacturer of universal garage door openers, Skylink. In order to work with Chamberlain’s garage door system, Skylink needed to circumvent a lockout code contained in Chamberlain’s embedded software. Chamberlain claimed that Skylink, by doing so, violated the anti–circumvention provision of the Digital Millennium Copyright Act.
The court rejected Chamberlain’s claim and found that the anti–circumvention provision of the Digital Millennium Copy Act required that the circumvention either infringe or contribute to infringement of copyright. Skylink’s circumvention of the Chamberlain garage door opening code could not meet this requirement, as no copyright infringement was furthered by the Skylink universal garage door opener.
2004: Lexmark v. Static Control Components
In Lexmark v. Static Control Components, Lexmark sued Static Control Components to block third–party suppliers from providing discount ink cartridges compatible with Lexmark’s printers. Lexmark printers contained proprietary software that would only accept Lexmark ink cartridges, which also contained proprietary software. Static Control Components reverse engineered the embedded Lexmark ink cartridge software and provided microchips to third–party companies who produced Lexmark compatible cartridges. Lexmark sued Static Control Components for both copyright infringement and violation of the DMCA’s anti–circumvention provisions. The court, however, rejected both of these claims. In particular, the court found that the DMCA anti–circumvention provision could only apply if the circumvented measure protected copyright material from all forms of access. Lexmark’s technological measure, however, restricted only one form of access.
2005: Family Entertainment and Copyright Act
The Family Entertainment and Copyright Act was enacted on April 27, 2005. One part of the Act, the Artist’s Rights and Theft Prevention Act of 2005, created criminal penalties for individuals who record motion pictures in a theater or for individuals who distribute unpublished works, such as movies or software. The Family Entertainment and Copyright Act also included the Family Home Movie Act of 2005. The Family Home Movie Act provided a statutory exemption for DVD players and other home movie players that contain technology to skip objectionable content.
2005: Faulkner v. National Geographic Society
In Faulkner v. National Geographic Society, the National Geographic was sued by past contributors for copyright infringement for creating and selling a CD–ROM collection of past issues of the National Geographic Magazine. National Geographic argued that the CD–ROM collection of past magazines was a compilation revision, allowed under copyright law, and not a new derivative work. National Geographic had previously been sued and lost in the case, Greenberg v. National Geographic Society, for their CD–ROM collection.
Faulkner, however, was brought after the Supreme Court decided New York Times Co. v. Tasini and clarified which digital distributions could be considered revisions. The Second Circuit, relying on Tasini, split with the Eleventh Circuit Greenberg court and held that the National Geographic CD–ROMs were a revision under copyright law. The Supreme Court declined to hear an appeal from the Faulkner case, so a split persists between the Second and Eleventh Circuits.
2005: American Library Association v. Federal Communications Commission
In November of 2003, the Federal Communications Commission (FCC) adopted a rule that would have required manufacturers of digital television equipment to honor a “broadcast flag” — copy protection for digital TV — embedded in TV signals. Library and consumer organizations challenged the FCC order on the grounds that the FCC had exceeded their statutory authority. The U.S. Court of Appeals for the District of Columbia Circuit agreed with the plaintiffs and ruled, in American Library Association v. Federal Communications Commission, that the FCC’s authority ended at the point of signal transmission.
2005: Metro-Goldwyn-Mayer Studios v. Grokster
On June 27, 2005, the United States Supreme Court ruled against Grokster, a peer-to-peer file-sharing company. Grokster had sought to avoid secondary copyright infringement liability by relying on Sony Corp. v. Universal City Studios. Grokster argued that Sony limited distributor liability for any technology that had substantial non–infringing uses.
In Metro-Goldwyn-Mayer Studios v. Grokster, the Court distinguished Sony and found that the possibility of substantial non–infringing use of a product did not shield a distributor who “promot[ed] its use to infringe copyright.” The Court sent the case down for further proceedings, but adopted an active inducement theory that would hold any active inducers liable for secondary copyright infringement.
2005: Google Library Project
In 2005, Google launched a project to digitize and index the collections of several research libraries. Google seeks to use the digitized books in its search engine by providing brief, few sentence long or less, search results. Google will then provide links to websites from which the books can be purchased and libraries from which the books can be borrowed. Five publishers have sued Google for copyright infringement, and the Authors Guild has filed a separate class action against Google. Based on the limited quotations actually displayed to the user, Google has argued that its use of the books falls under the fair use provision of the Copyright Act.
2005: Mannion v. Coors Brewing Company
The Southern District Court of New York considered what the copyrightable elements of a photograph are. The dispute arose when the defendant, Coors Brewing Company, created a billboard that imitated Mannion’s photo of basketball player Kevin Garnette posed in a white t-shirt in front of a background of clouded sky. The court noted that copyright protection in the plaintiff’s photo was limited to the individual elements that constituted an “original work of authorship.” Under the originality requirement, the court found that while the clouded sky, white t-shirt, and likeness of Garnette were unoriginal public domain elements—and therefore not copyrightable—the plaintiff’s original composition and arrangement of the elements as a whole in the photograph was protected. Thus, Coors infringed Mannion’s copyrighted photo to the extent that it copied the composition and arrangement of Mannion’s photo without authorization. Find more information at http://scholar.google.com/scholar_case?q=mannion+v.+coors+brewing+company&hl=en&as_sdt=2,9&case=16977894138805983217&scilh=0.
2006: Field v. Google
On January 19, 2006, Google prevailed in a case brought by an author and lawyer who alleged that Google violated the reproduction and distribution rights of his original web content by providing copies through Google’s website cache. The Court, however, found that Field had granted Google an implicit license by failing to indicate that the content should not be archived, even though he was aware of technical steps to block archiving. Furthermore, the Court found that Google’s use of the web content was fair and that Google’s automatic, non–volitional delivery of cached content could not constitute direct infringement under the Copyright Act.
2006: Perfect 10 v. Google
In Perfect 10 v. Google, the adult website and publisher Perfect 10 sued Google for direct and secondary copyright infringement stemming from Google Image Search. Google Image Search indexes images publicly available on the Web and presents the results as thumbnails of and links to responsive images. Google indexed third–party websites that hosted infringing Perfect 10 images and thus linked to and created thumbnails of Perfect 10 images. Perfect 10 sued Google for the thumbnails, the links to the infringing images, and for secondary infringement by creating an audience for the infringing content.
The district court in Perfect 10 v. Google ruled that Google did not infringe by linking to infringing images or by “creating an audience.” The court adopted a “server test” for in–line linking that would hold Google liable only for content hosted on its own web servers. The court, however, distinguished Perfect 10 v. Google from Kelly v. Arriba Soft and ruled that Google’s thumbnails were not covered under fair use. In Perfect 10, the court found that Google profited from ads placed on the infringing websites. The court also found that Google’s thumbnails competed with similar size and quality images Perfect 10 licenses for mobile viewing.
Both Perfect 10 and Google have appealed the decision to the Ninth Circuit Court of appeals.
2006: HR 5439
In 2005, the Copyright Office began studying “Orphan Works,” works still under copyright whose owners cannot be located. The Copyright Office conducted two roundtable discussions and several informal discussions with groups representing copyright owners and users. The office released a report to Congress detailing the problem and suggesting a possible legislative approach to solve the problem.
After extensive negotiations, Chairman Lamar Smith (chair, Subcommittee on Courts, Internet, and Intellectual Property, Committee on the Judiciary and R–TX) introduced H.R. 5439, “Orphan Works Act of 2006.” The bill has been reported out of the Subcommittee and is pending before the House Committee on the Judiciary.
2006: CleanFlicks v. Soderbergh
CleanFlicks provides edited versions of DVD movies to home viewers who wish to avoid objectionable content. On July 6th, 2006, CleanFlicks lost a court case, CleanFlicks v. Soderbergh, against a group of directors and motion picture studios who claimed that CleanFlicks infringed their exclusive right of distribution. The Court rejected CleanFlicks’s fair use defense, finding that CleanFlicks’s edits were non–transformative and that public benefits were not outweighed by “the intrinsic value of the right to control the content of the copyrighted work which is the essence of the law of copyright.” The case is currently on appeal.
2006: Communications, Consumer’s Choice, and Broadband Deployment Act, S. 2686, 109th Congress
Senator Ted Stevens introduced S. 2686, the Communications Consumer’s Choice, and Broadband Deployment Act of 2006. The bill would have included a broadcast flag requirement similar to the one that the FCC unsuccessfully attempted to enforce in American Library Association v. Federal Communications Commission. Under the proposed requirement, a “broadcast flag” sent through the data stream of a digital television program would have indicated any recording or copying restrictions. While the Senate Commerce Committee approved the broadcast flag provision, the overall bill never passed on the Senate floor. For more information, visit http://www.gpo.gov/fdsys/pkg/BILLS-109s2686is/pdf/BILLS-109s2686is.pdf.
2006: Copyright Office Report on Orphan Works
In response to a 2005 request from Senators Orrin Hatch (R-UT) and Patrick Leahy (D-VT), the US Copyright Office undertook a review of the orphan works problem and developed recommendations based on its review and public input. The report explored the orphan works problem, finding that there are no serious arguments questioning the existence of the problem. Additionally, it identified obstacles to identifying and locating rightsholders and the legal background that frames the discussion. The report included proposed solutions and recommendations, which included requiring a reasonably diligent search before designating a work as an orphan, limitations on remedies available to a plaintiff upon a showing of a reasonably diligent search by defendants, and an attribution requirement when using works reasonably believed to be orphaned. For more information, visit http://www.copyright.gov/orphan/orphan-report-full.pdf.
2006: T-Peg Inc. v. Vermont Timber Works, Inc.
This case presented the first opportunity for the courts to apply the Architectural Works Copyright Protection Act (“AWCPA”), Pub. L. No. 101-650, §§ 701-706, 104 Stat. 5089, 5133-34 (1990), which added architectural works as a new category of copyrightable expression under the Copyright Act. The court had to determine whether the defendant infringed the plaintiff’s architectural work when that work was not yet built but merely drawn in design blueprints. The First Circuit Court of Appeals held that it did not matter whether the architectural work was actually built, as copyright protection in the work extended to the form as well as the arrangement and composition of spaces and elements expressed tangibly in the blueprint design. For more information, visit http://scholar.google.com/scholar_case?q=t-peg+v.+vermont+timber+works&hl=en&as_sdt=2,9&case=3788590760819179377&scilh=0.
2006: Bill Graham Archives v. Dorling Kindersley, Ltd.
The US Court of Appeals for the Second Circuit clarified the extent to which the fair use doctrine is available as an affirmative defense to a claim of infringement in this seminal copyright case involving images reprinted in a coffee table book. Defendant Dorling Kindersley reproduced, at a reduced size, Bill Graham Archives’ copyrighted poster images relating to the music group the Grateful Dead for use in a coffee table book about the history of the band. In balancing the four factors of the fair use analysis, the court found that while the images were exact reproductions, and thus copied the entire original work, the use was transformative because the posters were recontextualized and repurposed; the posters were used not for their original advertising purpose but for historical documentation. This analysis led the court to conclude that the use was fair, and that fair use does not necessarily require a literal transformation of the copyrighted work, but rather a transformative (i.e., recontextualized or repurposed) use of the work. For more information, visit: http://scholar.google.com/scholar_case?q=Bill+Graham+Archives+v.+Dorling+Kindersley,+Ltd.&hl=en&as_sdt=2,9&case=4859855179349004000&scilh=0.
2006: Rulemaking on Exemptions to the DMCA Anticircumvention Provisions
In 2006, the Librarian of Congress announced that six classes of works would be exempted from the prohibition against circumvention of technological protection measures: 1) Audiovisual works included in the educational library of a college or university’s film or media studies department for the purpose of educational use in the classroom by media or film professors; 2) Computer programs and video games distributed in formats that have become obsolete for the purpose of preservation or archival reproduction by a library or archive; 3) Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete; 4) Literary works distributed in e-book format when all existing e-book editions of the work contain access controls that prevent the rendering of text into specialized formats; 5) Computer programs in the form of firmware that enable wireless telephone handsets to connect to a wireless telephone communication network; 6) Sound recordings, and audiovisual works associated with those sound recordings, distributed in compact disc format and protected by technological protection measures for the purpose of good faith testing or correcting such security flaws or vulnerabilities. These exemptions went into effect on November 27, 2006 and would remain in effect until October 27, 2009. The full text of each of these exemptions is available here: http://www.copyright.gov/1201/2006/index.html.
2007: Perfect 10 v. Amazon
This case involved Google’s use of “thumbnail” versions of the plaintiff’s copyrighted images in its search engine. At issue was whether the use of “in-line linking” to full-sized images and the display of thumbnail versions of the plaintiff’s images constituted an unauthorized distribution or display of the work under the Copyright Act. The US Court of Appeals for the Ninth Circuit found that in-line linking, which directed the user’s browser to a full-size image on the plaintiff’s website, was not an infringing display by Google. Further, although the display of thumbnail versions on Google’s sites were unauthorized, Google had an affirmative fair use defense because the display of thumbnails was highly transformative, particularly in light of its purpose as a public search tool. For more information, visit http://scholar.google.com/scholar_case?q=Perfect+10+v.+Amazon&hl=en&as_sdt=2,9&case=17826705839648059877&scilh=0.
2007: Perfect 10 v. CCBill, LLC
The US Court of Appeals for the Ninth Circuit interpreted the applicability Digital Millennium Copyright Act’s (“DMCA”) safe harbor provisions. Under Section 512, the DMCA provides a safe harbor from liability for Internet service providers who act as mere conduits for infringing content so long as they reasonably implement a policy that terminates the account of a repeat infringer of copyrighted material. Perfect 10 sued CCBill, a payment services company, and CWIE, a webhosting and connectivity service company, for copyright infringement alleging that CWIE’s and CCBill’s clients were infringing its web content. The Ninth Circuit found that the defendants maintained the required termination policy and were not unreasonable in their failure to terminate the apparent infringement by clients because they did not have proper notice. The court emphasized that Section 512 does not require service providers to police the content on their server but rather to terminate at an “appropriate” time after having actual knowledge of infringing activity. Because Perfect 10 did not fulfill a critical notice requirement— declaring under penalty of perjury that it represents the copyright holder and has a good faith belief that the use is infringing—the defendants were not imputed with knowledge of infringement. For more information, visit http://scholar.google.com/scholar_case?q=Perfect+10+v.+CCBill+LLC&hl=en&as_sdt=2,9&case=4735249074019268133&scilh=0.
2007: Bridgeport v. Combs
The US Court of Appeals for the Sixth Circuit clarified the amount and availability of punitive damages under the Copyright Act in this case involving the alleged infringing sampling of the plaintiff’s song “Singing in the Morning” on the first album of rap star Notorious B.I.G. A jury found that the defendant, Justin Combs Publishing and Bad Boy Entertainment, infringed the plaintiff’s copyrighted song and awarded $366,939 in compensatory damages (intended to compensate the plaintiff) and $3.5 million in punitive damages (intended to punish the defendant). The defendants appealed on several grounds, including that the $3.5 million dollar punitive damage award was unconstitutionally excessive. Historically, it had been unclear whether punitive damages are available for claims under the federal Copyright Act. The Sixth Circuit added guidance for the reasonableness of punitive damages based on several factors that the Supreme Court previously set forth for determining the reasonableness of damages. In its analysis, the Sixth Circuit noted that: 1) Where the harm is only economic and not physical, 2) It is the defendant’s first offense, and 3) The plaintiff is not financially vulnerable, a ratio between 1:1 or possibly 2:1 between compensatory and punitive damages is all the Constitution’s due process standard will allow. Thus, the court found that the 9.5:1 ratio awarded by the jury did not satisfy the due process standard and remitted to the lower court to lower the punitive damages award. For more information, visit http://scholar.google.com/scholar_case?q=Bridgeport+v.+Combs&hl=en&as_sdt=2,9&case=1684435277251708517&scilh=0.
2007: Freedom and Innovation Revitalizing US Entrepreneurship Act of 2007 (“FAIR USE Act”)
Congressman Rick Boucher introduced the FAIR USE Act, seeking to protect the fair use rights of consumers and to enhance library preservation efforts through the Copyright Act’s Section 107 fair use right. The FAIR USE Act would have permanently enacted into law six narrow exemptions to the DMCA that were earlier approved by the Librarian of Congress, Dr. James H. Billington. The bill allowed six classes of works to be exempt from the DMCA’s Section 1201 anticircumvention restrictions where the use is found to be noninfringing. The Act would have also enabled libraries to circumvent technological protections for the purposes of preservation. The FAIR USE Act did not make it out of the House Subcommittee on Courts, the Internet, and Intellectual Property. For more information, visit http://www.gpo.gov/fdsys/pkg/BILLS-110hr1201ih/pdf/BILLS-110hr1201ih.pdf.
2008: Richlin v. Metro-Goldwyn-Mayer Pictures
The co-authors of the movie treatment “Pink Rajah,” which subsequently served as the inspiration for MGM’s production of the movie sensation “Pink Panther,” sued MGM based on a theory of 50 percent renewal ownership interest in the original treatment and all derivative works, including the “Pink Panther” movie. The plaintiffs had failed to renew their copyright in the treatment but argued that the renewal of the copyright in the “Pink Panther” motion picture effectively renewed the treatment’s copyright because the movie was premised on the treatment. The court rejected this argument. The plaintiffs also asserted that the incorporation of ideas from the treatment into the motion picture rendered the plaintiffs default co-authors of the “Pink Panther” motion picture. The Ninth Circuit did not accept the plaintiff’s claim of co-authorship, noting that although the treatment served as the inspiration for the movie, the plaintiffs had no control over or involvement in the creation of the motion picture, and therefore, were not co-authors with a copyright interest in “Pink Panther.” For more information, visit http://scholar.google.com/scholar_case?q=Richlin+v.+Metro-Goldwyn-Mayer+Pictures&hl=en&as_sdt=2,9&case=14739926066751597405&scilh=0.
2008: WIPO Broadcasting Treaty
In June of 2004, the World Intellectual Property Organization (“WIPO”) began deliberating a Broadcasting Treaty that would afford broadcasters economic rights, akin to copyright protection, in their broadcasts for up to 50 years. The treaty was originally couched in terms of an attempt to update the 1961 Rome Convention, but also adds many technologies that did not exist during the Rome Convention. The treaty would allow broadcasters to claim rights in their signals as well as rights to the creative content produced by other individuals. For example, a broadcasting company would own rights in the broadcast of a director’s film that was licensed under a Creative Commons license. A revised draft of the treaty was issued in 2006, when various countries (including the US) sought to exclude webcasting from the treaty. After postponing discussions in 2007, the treaty became the focus of the WIPO Standing Committee on Copyright’s 2008 meeting in Geneva. Agreement on text has not been reached, but WIPO’s Standing Committee on Copyright and Related Rights continues to list broadcasters’ rights as an issue on its meeting agenda. For more information, visit http://www.wipo.int/edocs/mdocs/copyright/en/sccr_s2/sccr_s2_paper1.pdf.
2008: Cartoon Network v. CSC Holdings
The US Court of Appeals for the Second Circuit held that Cablevision’s offering of a remote-storage DVR service did not infringe the public performance and reproduction rights of copyright owners including Cartoon Network, CNN, and Fox. The Second Circuit reversed the lower court’s holding on all three grounds at issue. First, it found that Cablevision’s buffering of television programming content on its server for 1.2 seconds was only transitory in duration and did not meet the “fixed in a tangible medium” requirement necessary to constitute a copy. Second, and central to the court’s analysis regarding Cablevision’s liability for direct infringement, was the issue of who made the copies of the copyrighted television and film content. While the district court found that Cablevision made the copies of the television programming by offering to record the content at the user’s request, the Second Circuit held that Cablevision’s mere creation of a system that reproduces content was not sufficiently tied with the causation of illegal copying directed by users. Finally, the Second Circuit held that Cablevision’s playback transmission service was not offered “to the public” (therefore not a public performance) because it was only directed to the particular user who requested the playback. For more information, visit http://scholar.google.com/scholar_case?q=Cartoon+Network+v.+CSC+Holdings&hl=en&as_sdt=2,9&case=13763893657469687275&scilh=0.
2008: Section 108 Study Group Issues Final Report
After three years of work, the Section 108 Study Group issued its final report focused on analyzing the exceptions and limitations of the Copyright Act’s Section 108—affording libraries and archives limited rights of reproduction in copyrighted works—and issuing suggested changes to Section 108 to make copyright law more amenable to the needs of libraries, museums, and archives working in the digital environment. The Library of Congress and the US Copyright Office commissioned the Section 108 Study Group, which was comprised of librarians, lawyers, and publishers. Drawing conclusions from bimonthly meetings and public roundtables, the Final Report issued the following legislative recommendations: (1) adding museums to the institutions protected by Section 108; (2) creating a new exception to allow libraries to make a “preservation only” copy of at-risk works prior to their deterioration; (3) adding an exception to allow libraries and archives to capture and reproduce publicly available web sites and online content for preservation purposes and to make those copies accessible to users for private study, research and scholarship; (4) allowing libraries to have flexibility in making the necessary number of copies of copyrighted works to ensure their long term preservation rather than limiting them to three lawful preservation copies. The Study Group’s report had no binding legal effect but merely operated as set of recommendations for the Copyright Office and Library of Congress.
2008: Jacobson v. Katzer
This ruling from the US Court of Appeals for the Federal Circuit is seen as a critical victory for open source licensing models, arising out of a dispute over model train software that the plaintiff, Jacobson, offered freely to the public, subject to specific terms of an “artistic license”—a form of open licensing. Jacobson alleged that the defendant, Katzer, infringed on the copyright in the software when Katzer did not comply with the terms of the artistic license when he used Jacobson’s textual files for his own computer program. The district court held that while Katzer might have breached the artistic licensing conditions, this did not give rise to an actionable claim for copyright infringement. The Federal Circuit reversed the district court’s ruling, asserting that artistic licensing conditions, including non-exclusive licenses, create enforceable copyright conditions. Katzer’s refusal to comply with the licensing conditions created an actionable claim for copyright infringement under the open licensing system. For more information, visit http://scholar.google.com/scholar_case?q=Jacobson+v.+Katzer&hl=en&as_sdt=2,9&case=17776182574171214893&scilh=0.
2008: Prioritizing Resources and Organization for Intellectual Property Act
In December 2008, President George W. Bush signed the PRO-IP Act into law. The Act was designed to strengthen protection for rights holders and increase penalties for counterfeiting and infringement of intellectual property rights. Among other amendments to the Copyright Act, the PRO-Act established that registration is not a prerequisite for criminal prosecution of copyright infringement. Additionally, the PRO-IP Act calls for the President to appoint an Intellectual Property Enforcement Coordinator (“IPEC”) who is required to develop a Joint Strategic Plan to help combat infringement and counterfeiting of intellectual property in the US and in foreign countries. For more information, visit http://www.gpo.gov/fdsys/pkg/PLAW-110publ403/pdf/PLAW-110publ403.pdf.
2008: WIPO Efforts to Protect Traditional Cultural Expressions
Beginning in 2001, WIPO increased its efforts to protect Traditional Culture Expressions (“TCE”) by creating the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC). TCEs represent works of indigenous peoples and traditional communities and can include stories, legends, names, symbols, songs, and music. The IGC is charged with the difficult task of providing intellectual property protection for TCEs where the works cannot be easily protected by copyright law or other intellectual property laws. For example, many TCEs do not have one clear author or owner; thus, it is difficult to protect them under US copyright law. In response, the IGC has worked to define the issues and options for possible legal protection for TCEs. Additionally, WIPO launched the Creative Heritage Project in 2008 to develop best practices and guidelines for managing intellectual property issues when recording, digitizing, and disseminating cultural heritage.
2009: Arista Records, LLV v. Launch Media, Inc.
The Second Circuit considered whether a “webcasting” Internet radio service that allowed users to tag favorite songs and tailor the station to their particular music preferences was an “interactive service” under Section 117 of the Copyright Act. If the defendant’s Internet service, “Launch” radio, constituted an “interactive service,” it would be required to pay individual licensing fees to the copyright owners for each song rather than statutory licensing fees established by the Copyright Royalty Board. The court found that the Launch service was not interactive because a user could not request that a particular song be played on demand, and the service did not offer stations specifically designed and created for each individual user. For more information, visit http://scholar.google.com/scholar_case?q=Arista+Records,+LLC+v.+Launch+Media,+Inc&hl=en&as_sdt=2,9&case=4815766747883301339&scilh=0.
2009: A.V. v. iParadigms, LLC
IParadigms owned a service called TurnItIn, a database which compares a student’s work submitted through the site with content available on the Internet, including papers previously submitted to the service, to determine whether plagiarism existed. The Fourth Circuit held that no copyright infringement existed because iParadigm’s use of the student papers was transformative fair use. The Fourth Circuit found that, even though the fact that TurnItIn was a commercial service and included the entirety of the works submitted, the use was “highly transformative” in its function.
2009: Associated Press v. All Headline News Corp.
The Southern District Court of New York determined the extent of copyright protection for “hot news” received over the Internet. The Associated Press (AP) sued the All Headline News Corp. (“AHN”) alleging that AHN was free riding on AP’s copyrighted stories by paying journalists to search the Internet for AP news articles and republish them under the AHN name. The court affirmed that under INS v. Associated Press, 248 US 215 (1918), “hot news” items are protected from misappropriation. Additionally, the court denied the defendant’s motion to dismiss allegations that AHN violated the DMCA when it removed and altered the copyright management information of AP, including the name and identifying information about the copyright owner. The court found that these provisions of the DMCA are not limited to removing technological measures of automated systems. For more information, visit http://scholar.google.com/scholar_case?q=Associated+Press+v.+All+Headline+News+Corp.&hl=en&as_sdt=2,9&case=6285496836987996092&scilh=0.
2010: Salinger v. Colting
In the summer of 2009, J.D. Salinger, author of the famed coming of age story Catcher in the Rye, sued Fredrick Colting, author of 60 Years Later: Coming Through the Rye for copyright infringement and sought to obtain a preliminary injunction to stop publication of Colting’s book. Salinger claimed that the similarities between the books rendered 60 Years Later an unauthorized sequel to Catcher in the Rye, violating Salinger’s exclusive right to produce derivative works. While the district court issued the preliminary injunction, the US Court of Appeals for the Second Circuit vacated the order explaining that the lower court did not go through the proper test for deciding whether to issue a preliminary injunction—a test set forth by the Supreme Court in eBay v. MercExchange, 547 US 388 (2006). The Second Circuit noted that Salinger would likely win on the merits of the case but remanded to the lower court to determine whether a preliminary injunction was a proper remedy considering the following factors set forth in eBay v. MercExchange: (1) An irreparable injury to plaintiff; (2) Legal (monetary) remedies are inadequate; (3) Balance of hardships to each party, and (4) The public interest in the preliminary injunction. While the eBay case dealt with patent infringement, the Second Circuit’s decision in Salinger is significant because it engages in the same four-factor analysis before issuing preliminary injunctions in copyright infringement claims. This analysis is a significant shift from courts’ previous practice of routinely granting injunctions based on a presumption of irreparable harm. For more information, visit http://scholar.google.com/scholar_case?q=Salinger+v.+Colting+&hl=en&as_sdt=2,9&case=14430115072998341439&scilh=0.
2010: Gaylord v. United States
Frank Gaylord appealed a United States Court of Federal Claims’ decision that a US postal stamp portraying images of soldier sculptures from the Korean War Veterans Memorial was a fair use a copyrighted work. The US Court of Appeals for the Federal Circuit agreed with the lower court’s finding that Gaylord was the sole author of the soldier sculptures and that the soldiers were not an architectural work for the purpose of the Architectural Works Copyright Protection Act. However, the appellate court rejected the lower court’s holding that the Postal Service’s stamp was a fair use of Gaylord’s work. The appellate court explained that the stamp was not sufficiently transformative in purpose and that the commercial nature of the stamp also weighed against fair use. Additionally, the appellate court rejected the argument that the US was a co-owner of the copyrighted work merely because it commissioned Gaylord to create the sculptures. The court opined that the US did no more than direct Gaylord to create the sculptures; it did not add any creative or original elements to the work, and therefore could not be considered a joint author of the sculptures. For more information, visit http://scholar.google.com/scholar_case?case=1101790394228662801&q=Gaylord+v.+United+States&hl=en&as_sdt=2,9.
2010: Rulemaking on Exemptions to the DMCA Anticircumvention Provisions
After issuing a Notice of Inquiry and receiving numerous public comments, the Librarian of Congress announced in 2010 six classes of works that would be exempt from the Section 1201 provisions. The classes of works exempted included: 1) Motion pictures on DVDs to accomplish incorporation of short portions for educational uses in colleges and universities, documentary filmmaking, or noncommercial videos; 2) Computer programs to allow interoperability between wireless telephones and software applications; 3) Computer programs in the form of firmware or software to connect wireless telephones to the telecommunication network; 4) Video games on personal computers for the purpose of testing or correcting security flaws or vulnerabilities; 5) Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete; and 6) Literary works in e-book format when all existing e-book editions contain access controls preventing the rendering of text into a specialized format. These exemptions were announced on July 20, 2010. The specific language defining each category is available here: http://www.copyright.gov/1201/2010/.
2010: Baltimore Ravens v. Bouchat
The Court of Appeals for the Fourth Circuit affirmed in part and reversed in part a district court’s holding that the Ravens and the NFL made fair use of Bouchat’s drawing when they portrayed a similar image in the Ravens’ lobby headquarters as well as some NFL highlight films. In the early 1990s, Bouchat created the “Shield” logo, and the Ravens subsequently used a similar image, the “Flying B” logo, on the team’s helmets for the 1996, 1997, and 1998 seasons. After a 2000 decision finding that the Ravens’ “Flying B” logo infringed Bouchat’s image, the Ravens ceased to use the “Flying B.” However, the logo still appeared in highlight films and in pictures hung in the lobby of the Ravens’ headquarters. In its fair use analysis, the Fourth Circuit rejected the lower court’s finding that the highlight films sold by the NFL and played during Ravens’ home games were “primarily historical in purpose,” finding instead that there was no documentary purpose for the highlights and no transformative message behind the use of the “Flying B” logo. With regard to the display of the logo in the Ravens’ lobby, the Fourth Circuit held that Ravens fairly used the image because it documented previous games and relayed factual content about the Ravens—it was not used for the original purpose of identifying the Ravens. For more information, visit http://scholar.google.com/scholar_case?q=Baltimore+Ravens+v.+Bouchat&hl=en&as_sdt=2,9&case=2192489748530170159&scilh=0.
2010: Anti-Counterfeiting Trade Agreement
In November 2010, the United States, along with other negotiating parties, released the final text of the Anti-Counterfeiting Trade Agreement (“ACTA”) designed to combat the production and distribution of counterfeited goods and the infringement of copyrighted works. ACTA’s reach is far in scope, as it would create an enforcement body that operates independently from previously recognized international copyright bodies, including the World Trade Organization (“WTO”), the World Intellectual Property Organization (“WIPO”), and the United Nations. It would also create standards that go above and beyond those already agreed to by the WTO’s Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) Agreement. ACTA would cover goods as well as Internet distribution and information technology in an effort to strengthen enforcement of intellectual property rights. Many critics of ACTA have asserted that it offers vague definitions of “counterfeit” and “piracy” and that it seeks to impose damages that are disproportional to the relevant harms and significantly higher than any previous international IP treaty. The US has signed, but not ratified, ACTA, and as of April 2014, it has not yet secured the six necessary ratifications to enter into force. The Office of the United States Trade Representative previously stated that it negotiated ACTA as a “sole executive agreement” and therefore would not send it to Congress for ratification. Notably, in July 2012, the European Parliament rejected ACTA by an overwhelming margin of 478 to 39 (with 165 abstentions), and Japan remains the sole country that has ratified the agreement. For more information, visit http://trade.ec.europa.eu/doclib/docs/2011/may/tradoc_147937.pdf.
2010: Vernor v. Autodesk
2010: Trans-Pacific Partnership Agreement (TPP)
In 2010, nine countries of widely differing economic and developmental backgrounds began negotiating a comprehensive, large-scale regional trade agreement known as the Trans-Pacific Partnership Agreement (TPP). The TPP originally grew out of the Pacific-4 (P4) trade bloc of Brunei, Chile, New Zealand, and Singapore, with the additions of Australia, Malaysia, Peru, the United States, and Vietnam as negotiating parties by 2010. Canada and Mexico entered the negotiations in December 2012, and Japan became a negotiating party in July 2013. The TPP, as a comprehensive agreement, contains more than twenty proposed chapters including one on intellectual property rights, enforceable through the investment chapter which would create independent dispute settlement bodies that would allow private investors to bring suit against governments. Allowing investor-state dispute settlements has been a controversial issue as enforcement of trade disputes before the World Trade Organization (WTO) is conducted state-to-state and does not include a mechanisms for individual investors to sue a government. The text of the agreement remains secret and there have been no official releases of the text, resulting in sharp criticism regarding this lack of transparency by civil society and academics as well as numerous members of Congress. While no government has officially released the text, several notable leaks of the text have occurred in the areas of intellectual property, environment, and investment. The intellectual property chapter leaks reveal a comprehensive chapter that includes substantive provisions on copyright, trademarks, and patents as well as detailed enforcement provisions covering civil, criminal, border measures, and ISP liability. Critics of the agreement have raised concerns that the intellectual property chapter of the TPP could impact access to medicines and access to knowledge. As of April 2014, a final agreement has yet to be reached, and the intellectual property chapter is widely reported as one of the most controversial issues among the negotiating parties.
2011: Rejection of Google Books Settlement
In March 2011, Judge Chin rejected the proposed settlement of Authors Guild v. Google, a case in which right holders asserted that the scanning of books and creation of a searchable database infringed copyright. Authors Guild and Google reached a settlement agreement which authorized Google the non-exclusive right to continue to digitize books, sell subscriptions to an electronic database, sell access to individual books, and sell advertising on pages from books. In exchange, Google agreed to pay right holders sixty-three percent of all revenues from the uses and that an established book rights registry would administer distribution of the revenues. Google also agreed to pay $45 million into a settlement fund for works digitized prior to May 5, 2009. The agreement created an “opt-out” system to allow right holders to exclude their books from some or all of the uses.
After a fairness hearing, Judge Chin rejected the proposal, finding that there was inadequate representation of the class, the settlement exceeded the scope of the original litigation and appeared to be more of a business arrangement, the issue of “orphan works” was a matter for Congress, and the agreement would give Google a significant advantage over its competitors. In particular, the opinion noted concerns with the “opt-out” design of the agreement, rather than “opt in.”
2011: Stop Online Piracy Act/Protect IP Act
The Stop Online Piracy Act (SOPA), introduced into the House by Representative Lamar Smith (R-TX) and the Protect IP Act (PIPA), introduced into the Senate by Senator Patrick Leahy (D-VT) in 2011, targeted websites dedicated to infringing activities. PIPA essentially represented a re-write of the Combating Online Infringement and Counterfeits Act (COICA), which failed to pass in 2010. Among other issues, these bills were designed to bar payment networks from conducting business with infringing websites, prohibit search engines from linking to infringing websites, require blocking of access to websites, and expand application of criminal penalties. Following massive online protests, including a “blackout” of numerous websites—many of which were high profile sites such as Google, Wikipedia, and Reddit—on January 18, 2012, numerous co-sponsors of the bills withdrew their support and neither bill passed.
2011: Barclays Capital, Inc., et. al. v. FlyOnTheWall.com, Inc.
The Second Circuit considered the “hot news doctrine” and its applicability in the digital age. FlyOnTheWall ran a financial news service that reported stock recommendations from investment firms on its website. These firms argued that the recommendations were “hot news,” and FlyOnTheWall’s use of the information resulted in “hot news” misappropriation. The Second Circuit rejected Barclays’ argument, finding that the “hot news doctrine” applies only in the narrow circumstance where a defendant is truly free-riding, and that absent a finding of free-riding, copyright preemption applies and the Copyright Act’s prohibition on protection for facts or news of the day applies. The Second Circuit found that FlyOnTheWall was not free-riding because it merely reported on the news or facts of the investment firms’ recommendations.
2011: WIPO Limitations and Exceptions for Libraries and Archives
The World Intellectual Property Organization (WIPO) Standing Committee on Copyright and Related Rights (SCCR) has discussed limitations and exceptions for libraries and archives since 2008 along with limitations and exceptions for persons with print disabilities and for educational and research institutions. In November 2011, a special meeting was convened and the formation of topic “clusters” were agreed to for discussion including preservation, the right of reproduction, legal deposit, library lending, parallel importation, cross-border uses, orphan works, liability, technological protection measures, and contracts. At the meeting of SCCR 24 in November 2011, Brazil, Ecuador, and Uruguay put forth their proposal on an instrument for limitations and exceptions for libraries and archives; subsequently other delegations put forth proposals on this topic, as well. Additionally, a document entitled “The Case for a Treaty on Exceptions and Limitations for Libraries and Archives: Background Paper by IFLA ICA EIFL and INNOVARTE” was introduced along with an “Objectives and Principles” document by the United States. The Africa Group previously submitted a comprehensive proposal on limitations and exceptions for persons who are visually impaired or otherwise print disabled, libraries and archives, and education. Libraries and archives continues to appear as an agenda item for the WIPO SCCR, and a “working document containing comments on and textual suggestions towards an appropriate international legal instrument (in whatever form) on exceptions and limitations for libraries and archives” has been continually revised and distributed.
2012: Golan v. Holder
In a 6-2 decision, Supreme Court upheld Congress’ power to restore copyright protection to works that had already entered the public domain. The case involved challenges to a law passed in 1994, implementing the Uruguay Round Agreement, which gave foreign owners of copyright a copyright under United States law for the remainder of the period of the term of protection in their home country. The works that benefited from this law were not protected by copyright in the United States, resulting in a massive withdrawal of works from the public domain.
2012: Viacom v. YouTube, Inc.
Viacom sued YouTube, alleging that the company was liable for copyright infringements committed by its users even though YouTube complied with Viacom’s takedown notices. In April 2012, the Second Circuit ruled in favor of YouTube, finding that the company was protected from liability unless it actually knew of, or was willfully blind to, the specific instances of infringement or facts indicating such infringement. The Second Circuit also noted that while YouTube could be held liable for willful blindness, this standard did not impose an affirmative duty to seek out infringing activity.
2012: WIPO Beijing Treaty on Audiovisual Performances
On June 24, 2012, member states of WIPO concluded the Beijing Treaty on Audiovisual Performances, designed to provide legal protection to performers in audiovisual works. This treaty had long been considered by WIPO, and a previous attempt at a diplomatic conference in 2000 on this issue failed. Upon conclusion of the 2012 diplomatic conference, the Beijing Treaty became the first WIPO copyright treaty adopted since the 1996 WIPO Internet Treaties (WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty). The treaty provides performers in audiovisual works exclusive moral and economic rights over their performances, including the rights of attribution, integrity, reproduction, and distribution. Forty-nine countries, including the United States, signed the treaty at the conclusion of the diplomatic conference, and as of April 2014, the Beijing Treaty has seventy-two signatories, but only Botswana and the Syrian Arab Republic have ratified the agreement. The Beijing Treaty requires thirty ratifications before it will enter into force.
2012: WIPO Limitations and Exceptions Regarding Education
In advance of the WIPO SCCR 24 held in July 2012, numerous documents regarding limitations and exceptions for education were submitted for distribution to the WIPO Secretariat. These documents included a proposal by Ecuador, Peru, and Uruguay; draft articles and thematic clusters on limitations and exceptions for the benefit of educational, teaching, and research institutions submitted by Brazil; and a “provisional working document towards an appropriate international legal instrument (in whatever form) on limitations and exceptions for persons with other disabilities containing comments and textual suggestions” prepared by the Secretariat. The Africa Group previously submitted a comprehensive proposal on limitations and exceptions for persons who are visually impaired or otherwise print disabled, libraries and archives, and education.
2012: Association for Information and Media Equipment, et. al. v. Regents of UCLA, et. al.
An association of video vendors, AIME, sued UCLA for copyright infringement over the university’s streaming of digital videos. In November 2012, the district court dismissed the case, primarily on standing issues, affirming the sovereign immunity of UCLA regents and officers as state officials performing their job duties and finding that AIME as an association that does not hold any of the copyrights did not have standing to bring suit on behalf of its members. With respect to the substantive claims, the court found in favor of “incidental fair use,” where works licensed to UCLA were copied from a DVD to a network server. The court also found that it was not unreasonable for UCLA to conclude that streaming videos to enrolled students was permitted under fair use.
2012: Rulemaking on Exemptions to the DMCA Anticircumvention Provisions
Effective October 28, 2012, the Librarian of Congress announced that the following eight categories of works would be exempt from the prohibition against circumvention of technological protection measures: 1) Literary works, distributed electronically, that prevent the enabling of read-aloud functionality or interfere with screen readers or other applications or assistive technologies for persons who are blind or have other disabilities, subject to remuneration or used by an authorized entity in accordance with 17 USC. 121; 2) Computer programs that enable wireless telephone handsets to execute lawfully obtained software applications for purposes of interoperability; 3) Computer programs in the form of firmware or software that enable a wireless telephone to connect to the wireless telecommunication network, within ninety days of the effective date of the exemption; 4) Motion pictures on DVDs for use of short portions for the purpose of criticism or comment for noncommercial videos, documentary films, nonfiction multimedia e-books offering film analysis, and educational purposes in film studies or other courses; 5) Motion pictures via online distribution services for use of short portions for the purposes listed in number 4; 6) Motion pictures on DVDs where circumvention is used for screen capture technology for purposes of criticism or comment in noncommercial videos, documentary films, nonfiction multimedia e-books offering film analysis, and educational purposes; 7) Motion pictures via online distribution services where circumvention is used for screen capture technology for the purposes listed in number 6; 8) Motion pictures and other audiovisual works on DVDs or distributed by an online service and protected by technological measures that control access to such works to access the playhead and/or related time code information embedded in copies of such works for the purpose of conducting research and development for the purpose of creating players capable of rendering visual representations for persons who are blind, visually impaired, deaf, or hard of hearing. The full text of these exemptions is available at http://www.copyright.gov/fedreg/2012/77fr65260.pdf.
Notably, the third rule of the 2012 rulemaking process effectively ended the exemptions previously authorizing consumers to unlock their cell phones to access other mobile networks. This failure to renew the exemption caused controversy and a “We The People” petition attracted more than 114,000 signatures, leading to several bills which addressed either the specific issue of cell-phone unlocking or the broader issue of unlocking technology. For more information on this controversy, see Jonathan Band, Cell Phone Unlocking: A Legal Primer (2013), http://www.arl.org/https://www.arl.org/wp-content/uploads/2013/03/band-cell-phone-unlocking-08mar13.pdf.
2013: UMG v. Veoh
UMG sued Veoh, a video-sharing website, arguing that Veoh was liable for copyright violations of its users because the company hosted content that was accessible by other users rather than merely providing storage services, and therefore did not qualify for safe harbors. UMG also advanced the argument that Veoh should have seen “red flags” of infringement. In March 2013, the Ninth Circuit withdrew its 2011 opinion in the case and issued a superseding opinion that largely affirmed its earlier decision, finding that the safe harbor provisions of the DMCA did apply. In its decision, the Ninth Circuit rejected UMG’s argument that safe harbor applies only to web hosting companies in the business of storage. In reaching this decision, the court recognized that web hosting servers store user materials to make the materials accessible to other users, otherwise the service would be mere online backup services. The court also rejected UMG’s argument that Veoh should have seen “red flags” of infringement and held that specific knowledge of particular infringing activity is required. The Ninth Circuit found that Veoh’s general knowledge that its services could be used for infringement was insufficient to constitute a red flag.
2013: White v. West Publishing
The District Court for the Southern District of New York considered a case in which two attorneys filed a lawsuit against West Publishing and Reed Elsevier arguing that the Westlaw and LexisNexis’ wholesale copying of legal filings, including motions and briefs, constituted copyright infringement. Westlaw and LexisNexis had downloaded the legal filings from PACER, included metadata into the filings, and made the documents available on their own databases to subscribers. Westlaw and LexisNexis argued that the addition of metadata and collection into its databases constituted a transformative fair use. In February 2013, the court granted summary judgment in favor of West Publishing and Reed Elsevier, noting that a full decision would follow. As of April 2014, the district court has yet to publish its full decision.
2013: Kirtsaeng v. John Wiley & Sons
In March 2013, the Supreme Court resolved a circuit split concerning parallel importation of copyrighted goods, finding in favor of application of the first sale doctrine regardless of the place of manufacture or sale, a principle also known as international exhaustion. The facts of the case centered around actions of an individual student, Kirtsaeng, who imported copies of textbooks from Thailand, where the books were available at a lower price, and resold them in the United States. Section 109(a) of the Copyright Act limits the copyright owner’s right of distribution after first sale of a copy “lawfully made under this title” and John Wiley & Sons argued that this phrase meant “lawfully made in the United States.” The Supreme Court overturned the Second Circuit’s decision, which would have limited application of the first sale doctrine to works made domestically, and instead held that the first sale doctrine applies to copies of copyrighted works lawfully made anywhere in the world.
2013: Associated Press v. Meltwater US Holdings, Inc.
The Southern District of New York considered whether Meltwater’s use of electronic clippings of news items constituted copyright infringement. Meltwater offered news monitoring services to subscribers and electronically clipped news items found online and distributed them to subscribers. Users of Meltwater’s service could search for news articles and would receive a list of results that included the headline, a link to the article, and excerpts. Judge Cote rejected Meltwater’s fair use argument, ruling that the commercial nature of Meltwater’s service and the effect on the potential market weighed against a finding of fair use.
2013: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled
In June 2013, after years of negotiations, WIPO convened a diplomatic conference that resulted in adoption of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (“Marrakesh Treaty”). The treaty was the result of efforts by the World Blind Union (“WBU”), library and civil society organizations to address the need to combat barriers to access, including with respect to new digital technologies for blind and visually impaired persons. Although the issue of accessible format works had been discussed at WIPO for thirty years, the first formal proposal was introduced by Brazil, Ecuador, and Paraguay in May 2009. Subsequently, other proposals were made by the United States, the European Union, and the Africa Group. Ultimately, the Marrakesh Treaty created minimum limitations and exceptions to allow the creation of accessible format works and would also allow for cross-border sharing (export and import) of these accessible formats. Fifty-one countries signed the Marrakesh Treaty on the final day of the diplomatic conference, June 28, 2013, a record number of signatories on signing day for any WIPO-administered treaty. The United States signed the Marrakesh Treaty on October 2, 2013 but has yet to ratify it. The Treaty needs twenty ratifications before it will enter into force.
2013: Cariou v. Prince
The Court of Appeals for the Second Circuit ruled that the majority of artist Richard Prince’s uses of photographer Patrick Cariou’s photographs in works of collage were non-infringing fair uses; for five of the thirty claims of infringement, the case was remanded back to the lower court. Prince used images of Rastafarians published in Cariou’s book, Yes Rasta, removing them from the book, altering the images and pinning them in a collage on plywood. In overturning the district court’s ruling, the Second Circuit rejected any requirement that a new work “comment on” the original work and that secondary uses may be considered fair even if they serve a purpose other than those identified in the preamble of Section 107 of the Copyright Law. The Second Circuit emphasized the transformative nature of Prince’s new works, which it found altered “the original with new expression, meaning or message.”
2013: Authors Guild v. Google (currently on appeal to the Court of Appeals for the Second Circuit)
In 2005, the Authors Guild filed suit against Google for its “Google Books” program which consisted of the “Partner Program” involving the hosting and display of materials provided by rights holders and the “Library Project” which involved the digital scanning of books in the collections of the New York Public Library, Library of Congress, and university libraries. Through the Library Project, Google Books helped to preserve books and also enhanced research by making the books searchable, allowed for data mining or text mining, and enhanced accessibility for persons who are visually impaired or otherwise print disabled. The plaintiffs in the case objected to the Library Project, alleging copyright infringement. The parties subsequently entered into a proposed settlement agreement, which was rejected in March 2011 as not being fair, adequate, and reasonable. Further settlement negotiations failed and the parties filed for cross-summary judgment motions.
After conducting a fair use analysis of Google’s conduct, on November 14, 2013, Judge Chin granted Google’s motion for summary judgment, finding that Google’s use of the copyrighted works was highly transformative and provided significant public benefits. Similarly, Judge Chin found that Google was entitled to summary judgment regarding the copies made available to libraries, which served to provide libraries the ability to engage in fair use activities.
2013: Bouchat v. Baltimore Ravens
In December 2013, the Court of Appeals for the Fourth Circuit found in favor of fair use in a case concerning the incidental use in three videos and an exhibit at the Baltimore Ravens’ stadium of the “Flying B” logo used by the Ravens in their first three seasons. In 2000, a court found that the “Flying B” logo infringed Bouchat’s image and the Ravens subsequently ceased using the logo, though it appears in the aforementioned videos and exhibit. The Fourth Circuit found that the uses were fair because they were highly transformative. In finding that fair use applied, the court also noted that this doctrine is essential in harmonizing copyright law with the First Amendment. In addition to pointing to the transformative use of the logo, the court recognized that the use was also fleeting, incidental, de minimis, and innocuous.
2013: Diversey v. Schmidley, et. al.
In December 2013, the Tenth Circuit ruled that the indexing and making available of a work to patrons constitutes distribution of the work, even where no patron accessed the work. This ruling resulted in a finding that the distribution right had been infringed, despite the fact that the claims were filed beyond the three-year statute of limitation period after the making of the unauthorized copy and no copy had been lent. The court held that the distribution right had been infringed within the three-year period because the work had been made available to the borrowing public.
2014: Swatch Group Management Services v. Bloomberg
The Second Circuit considered the scope of copyright protection of Swatch Group’s sound recording of a conference earnings call with invited financial analysts and whether Bloomberg’s dissemination of a copy of that sound recording to its subscribers constituted fair use. After conducting an analysis of the four fair use factors, the Second Circuit ruled in favor of Bloomberg. Despite the fact that Bloomberg is a commercial entity and the recording of the call was considered unpublished, the court found that the first two factors weighed in favor of Bloomberg. Bloomberg’s use of the entire recording was considered reasonable, and the third factor regarding the amount and substantiality of the portion used was determined to be a neutral factor. The court found that the fourth factor, regarding the effect on the market, favored Bloomberg because the public benefits outweighed the potential yet untapped market and that the value to Swatch was not the licensing royalties, but rather, the information conveyed. The court therefore determined that Bloomberg’s use was fair even though Bloomberg had done nothing to transform the recording, noting also that Swatch’s copyright was “exceedingly thin, as the recording is thoroughly factual in nature.”
2014: Garcia v. Google
The Ninth Circuit considered the issue of whether an actor has a copyright interest in a performance and, based on this interest, a right to have a video taken offline. In Garcia v. Google, actress Cindy Lee Garcia was tricked into appearing on-screen in a five-second clip in the film “Innocence of Muslims,” in which she was over-dubbed. She objected to the anti-Islamic messaging of the film and claimed a copyright interest in her performance, requesting that Google remove the film from YouTube. The district court in the case denied her request to order Google to remove the film, but on appeal in a February 2014 decision by a 2-1 panel of the Court of Appeals for the Ninth Circuit, Garcia prevailed, and the court ordered removal of the film online. The Ninth Circuit admitted that the copyright claim was doubtful, and yet the Copyright Office nonetheless entered an order for the removal, effectively restraining free speech. In April 2014, Google, supported by several amici, requested that the Ninth Circuit rehear the case en banc, before the full court.
2014: Authors Guild v. HathiTrust
HathiTrust is a partnership of research institutions and libraries working to ensure that the cultural record is preserved and accessible through digitization. The HathiTrust partnership’s digitization of works not only preservs these works but also enables data mining and textual analysis, makes it easier to identify and locate sources of information, and provides accessible formats to persons who are visually impaired or otherwise print disabled. In September 2011, the Authors Guild filed suit against HathiTrust and five universities claiming that the making, storing, and providing access to digital scans of copyrighted works was illegal. In particular, the Authors Guild objected to the Orphan Works Project, which sought to identify digitized books in the HathiTrust library whose owners were difficult or impossible to find. After the suit was filed, the University of Michigan suspended the Orphan Works Project. The National Federation of the Blind intervened in the case as defendants given the benefits of the HathiTrust project for persons who are blind or print disabled.
On June 10, 2014, the Court of Appeals for the Second Circuit affirmed the lower court decision in Authors Guild v. HathiTrust in favor of HathiTrust Digital Library. The Second Circuit found that creating a full-text search database and providing access to the print disabled were clearly transformative fair uses. The court remanded the issue of preservation back to the district court to determine the standing of the plaintiffs to bring the claim; in doing so, the court did not express any opinion as to whether or not the preservation function was a fair use.
The Second Circuit began its fair use analysis by noting that while the Copyright Act certain exclusive rights, “there are important limits to an author’s rights to control original and derivative works. One such limit is the doctrine of ‘fair use,’ which allows the public to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances.” In finding in favor of fair use, the Second Circuit noted that with respect to the fourth factor—effect on the potential market—”the copyright holder must point to market harm that results because the secondary use serves as a substitute for the original work.”
2014: Cambridge University Press, et. al., v. Patton, et. al. (Georgia State Case)
The Georgia State University case involved the use of electronic course reserves that made excerpts available online to students enrolled in particular courses. Three academic publishers (Oxford University Press, Cambridge University Press, and Sage) argued that the unlicensed posting of digital excerpts for student access almost always exceeded fair use and brought suit against the use of e-reserves at Georgia State. After the case was initially filed in 2008, GSU created a fair use checklist policy to guide professors’ decisions about what materials they could share with students under fair use. This checklist did not include specific percentages or page limits.
In 2012, Judge Evans of the District Court for the Northern District of Georgia ruled that the vast majority of the seventy-four claims of infringement were fair use. The Eleventh Circuit reversed and remanded, upholding the importance of the flexible application of fair use but finding fault with the district court’s methodology which used bright line rules and an arithmetic approach (i.e., if three of the four fair use factors favored fair use, then the use was fair). The Eleventh Circuit rejected a ten-percent-or-one-chapter formulation and determined that fair use decisions must be conducted on a case-by-case (or work-by-work) basis. It also rejected the Classroom Copying Guidelines as a basis for fair use. The case has been sent back to the district court for reconsideration under the Eleventh Circuit’s methodology.
Patterson, Lyman Ray and Stanley W. Lindberg. The Nature of Copyright: A Law of Users’ Rights.Athens: University of Georgia Press, 1991.
Patterson, Lyman Ray. Copyright in Historical Perspective.Nashville: Vanderbilt University Press, 1968.
Rose, Mark. Authors and Owners: The Invention of Copyright.Cambridge, Mass.: Harvard University Press, 1993.
Samuels, Edward. The Illustrated Story of Copyright.New York: St. Martin’s Press, 2000.
Vaidhyanathan, Siva. Copyrights and Copywrongs: The Rise of Intellectual Property and How It Threatens Creativity.New York: New York University Press, 2001.
This timeline was written and compiled by ARL staff. The timeline is a work-in-progress and will be continually updated. The authors would like to thank Stanley Katz, Director, Princeton University Center for Arts and Cultural Policy Studies, for reading and offering valuable advice on this timeline.