YouTube Announces It Will Defend Some Creators’ Fair Use Claims

YouTube recently announced that it will protect “some of the best examples of fair use on YouTube” by defending some creators in copyright litigation.  Under this initiative, YouTube “indemnifies creators whose fair use videos have been subject to takedown notices for up to $1 million of legal costs in the event that takedown results in a lawsuit for copyright infringement.”

The announcement notes:

We’re doing this because we recognize that creators can be intimidated by the DMCA’s counter notification process, and the potential for litigation that comes with it . . . In addition to protecting the individual creator, this program could, over time, create a “demo reel” that will help the YouTube community and copyright owners alike better understand what fair use looks like online and develop best practices as a community.

Fair use is a critical right under United States copyright law that accommodates the First Amendment, is flexible and responsive to change, and supports the constitutional purpose of copyright: to “promote the progress of science and the useful arts.”  Fair use allows for creators to use copyrighted works in transformative ways, including for purposes of parody, commentary and criticism, and innovation.  Many videos on YouTube rely on fair use, incorporating other copyrighted works, but using them in transformative ways and we applaud YouTube’s decision to defend some creators who rely on this important doctrine.



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Efforts by the Anne Frank Foundation to Prevent Anne Frank’s Diary from Entering Public Domain

Copyright term in several countries, including the United States and European Union, go far beyond international standards.  The current term is set at the life of the author plus seventy years and this lengthy term severely harms the public domain and contributes to the orphan works problem.  Some past blog posts on copyright term can be found here (myths and facts) and here (term and the public domain).

This copyright term, which extends well beyond the life of the author, has no policy justification.  In fact, according to the UK-commissioned independent review of copyright by Ian Hargreaves:

Economic evidence is clear that the likely deadweight loss to the economy exceeds any additional incentivising effect which might result from the extension of copyright term beyond its present levels. This is doubly clear for retrospective extension to copyright term, given the impossibility of incentivising the creation of already existing works, or work from artists already dead. Despite this, there are frequent proposals to increase term . . . The UK Government assessment found it to be economically detrimental. An international study found term extension to have no impact on output.

Despite the fact that copyright term is unacceptably long, where a work is still profitable many years after an author’s death, the current rightholders will seek ways to extend term further.  The New York Times recently reported that the Anne Frank Foundation is doing just that by claiming that the her father was a co-author and the copyright term should expire 70 years after his death in 1980, rather than Anne Frank’s death in 1945.  Thus, Anne Frank’s diary would not enter the public domain on January 1, 2016 (70 years after Anne Frank’s death), but would instead be extended another 35 years and would not enter the public domain in Europe until January 1, 2051.  (NB: The copyright term would not be affected in the United States, because United States copyright law grants a 95 year copyright term for foreign works published between 1923 and 1977).

Otto Frank, Anne Frank’s father, claimed in a prologue to the published diary that the diary was written by his daughter.  However, according to the New York Times article, the Foundation is claiming that Otto Frank “‘created a new work’ because of his role in editing, merging and trimming entries from her diary and notebooks and reshaping them into ‘kind of a collage’ meriting its own copyright.”

There are several absurdities to this story.  First, Otto Frank could have claimed co-authorship during his lifetime, in the decades between the publication of the diary and his death, but never appears to have done so.  The Foundation could have claimed co-authorship soon after his death in 1980, but instead waited until just six years ago to seek copyright advice, seemingly motivated by the fact that the work’s copyright term is set to expire at the end of this year.  It seems bizarre to allow the Foundation to now try to claim copyright on behalf of a man who never tried to do so during his lifetime, and which it never sought to do in the several decades after his death.  This move appears solely motivated by the royalties the Foundation will lose when the work enters the public domain.

Additionally, as pointed out by Mike Masnick of TechDirt, “who in their right mind thinks that copyright was the ‘incentive’ necessary for Anne Frank to write her diary?”  Justice Stevens, in his 2003 dissent in Eldred v. Ashcroft pointed out the absurdity of copyright extensions in incentivizing the creation of works:

No potential author can reasonably believe that he has more than a tiny chance of writing a classic that will survive commercially long enough for the copyright extension to matter. After all, if, after 55 to 75 years, only 2% of all copyrights retain commercial value, the percentage surviving after 75 years or more (a typical pre-extension copyright term)—must be far smaller. Seesupra, at 248; CRS Report 7 (estimating that, even after copyright renewal, about 3.8% of copyrighted books go out of print each year). And any remaining monetary incentive is diminished dramatically by the fact that the relevant royalties will not arrive until 75 years or more into the future, when, not the author, but distant heirs, or shareholders in a successor corporation, will receive them. Using assumptions about the time value of money provided us by a group of economists (including five Nobel prize winners), Brief for George A. Akerlof et al. as Amici Curiae 5-7, it seems fair to say that, for example, a 1% likelihood of earning $100 annually for 20 years, starting 75 years into the future, is worth less than seven cents today. See id., App. 3a; see also CRS Report 5. See generally Appendix, Part A, infra.

What potential Shakespeare, Wharton, or Hemingway would be moved by such a sum? What monetarily motivated Melville would not realize that he could do better for his grandchildren by putting a few dollars into an interest-bearing bank account? The Court itself finds no evidence to the contrary. It refers to testimony before Congress (1) that the copyright system’s incentives encourage creation, and (2) (referring to Noah Webster) that income earned from one work can help support an artist who “`continue[s] to create.'” Ante, at 208, n. 15. But the first of these amounts to no more than a set of undeniably true propositions about the value of incentives in general. And the applicability of the second to this Act is mysterious. How will extension help today’s Noah Webster create new works 50 years after his death? Or is that hypothetical Webster supposed to support himself with the extension’s present discounted value, i. e., a few pennies? Or (to change the metaphor) is the argument that Dumas fils would have written more books had Dumas père‘s Three Musketeers earned more royalties?

Copyright term is currently too long.  Allowing rightsholders to claim co-authorship, decades after the deaths of the actual author as well as an alleged co-author, as an attempt to extend copyright term further is a blatant and unacceptable attack on the public domain motivated solely by attempts to demand more royalties.  The Diary of Anne Frank should enter the public domain at the end of the year as it is currently scheduled and be made free for people to read, and for historians and researchers to use and study.

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ARL and Higher Education Support Lingua Editors

On November 12, 2015, ARL, together with The American Association of State Colleges and Universities (AASCU), the American Council on Education (ACE), the Canadian Association of Research Libraries (CARL), the Confederation of Open Access Repositories (COAR), EDUCAUSE, and the Scholarly Publishing and Academic Resources Coalition (SPARC) wrote in support of the editors of the Elsevier journal Lingua who resigned en masse on October 27, 2015.  Lingua’s editors cited the journal’s price increases that outpaced costs of production and Elsevier’s refusal to transition the journal to an open access model as reasons for their resignation.  The editors announced a plan to launch an open access journal and, as the letter notes, “The actions of the Lingua editors reflect the underlying values of scholarship that knowledge should be shared as widely as possible for the benefit of research and society.”


The letter continues:

As organizations committed to the principle that access to information advances discovery, accelerates innovation, and improves education, we share the significant concerns raised by the Lingua editors and we support sustainable open access models. Furthermore, research is becoming increasingly international and we must develop a system that fosters global participation, regardless of geographical location or size of institution. To that end, we strongly support the Lingua editors’ decision to pursue an alternative solution, which will better serve the needs and values of higher education and the public that sustains it.

[. . .]

We firmly believe that the higher education and research communities need to collectively advance alternative models of scholarly publishing that are fair, sustainable, and transparent.


For more information, see “ARL, Higher Education Groups Support Lingua Editors, Open Access” on the ARL website.

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ARL Disappointed in Senate’s Passage of Flawed Cybersecurity Bill

On October 27, 2015, the U.S. Senate voted 74-21 to pass the flawed Cyberinformation Sharing Act (CISA), a slightly modified version from the bill that passed the House of Representatives earlier this year.  CISA, which purports to protect against data breaches, actually raises serious privacy concerns.  In passing CISA, the Senate unfortunately voted against a number of proposed amendments which would have strengthened user privacy.

Among other concerns, CISA will allow companies to expand monitoring of their users’ online activities and permits sharing of vaguely defined cybersecurity threats without adequate privacy safeguards.  It authorizes law enforcement that goes far beyond the scope of cybersecurity.

The Senate and House will now need to conference to resolve the differences between the two versions that passed.


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New 1201 Rules on Exemptions to Prohibition on Circumvention of Technological Protection Measures Released

On October 27, 2015, the Library of Congress released its final rules for the current cycle of the Digital Millennium Copyright Act’s (DMCA) Section 1201 rulemaking, setting forth exemptions from the prohibition against circumvention of technological protection measures (TPMs).  Every three years, proponents of exemptions must engage in a long process to seek renewal or expansion of existing exemptions or the granting of new exemptions in order to circumvent TPMs for non-infringing uses.  The new exemptions expand the previously granted exemptions in several areas and also grant new ones.

ARL, as part of the Library Copyright Alliance (LCA) submitted petitions for proposed exemptions requesting renewal of an exemption grating people who are print disabled circumvention of technological protection measures on literary works distributed electronically as well as renewal and expansion of an exemption for motion picture excerpts for educational purposes.  LCA also joined in five filings that provide evidence for the need of various exceptions that have been proposed including for: use of audiovisual works for educational use, for MOOCs, and for informal learning and K-12; e-book accessibility; and 3-D printing.

The new rules renew the exemption for literary works distributed in electronic form for persons who are blind, visually impaired or print disabled.  Notably, there was no opposition to renewing the exemption granted in 2012 and the Association of American Publishers filed comments indicating it did not object to this renewal.  Additionally, the 2015 rules permit circumvention for motion picture excerpts for educational purposes.  In a long and detailed rule, the new exemption permits circumvention of DVDs and Blu-ray discs for the use of short portions of motion pictures by college and university faculty and students in film studies or courses requiring close analysis of film and media excerpts and by the faculty of massive open online courses (MOOCs) in film studies or other courses requiring close analysis of film and media excerpts (among other specific exceptions regarding use of motion picture excerpts).

The new exemptions also permit circumvention to access video games for the purpose of copying and modification to restore access to the game when necessary to allow preservation by a library, archive or museum.

Among other exemptions not directly related to libraries and higher education, but that highlight the absurdity of the process, the Copyright Office and Library of Congress considered exemptions to permit circumvention for the purpose of diagnosis, repair and modification of vehicles and for the purpose of security testing on vehicles or medical devices implanted in patients.  In April 2015, Wired published a piece highlighting the absurdity of using technological protection measures and copyright to prevent individuals from tinkering with items that they own in a piece titled “We Can’t Let John Deere Destroy the Very Idea of Ownership.”  While the Library of Congress ultimately granted (again, highly detailed) exemptions in these categories, but the exemption that allows diagnosis, repair or modification of a vehicle will not go into effect for 12 months.

The National Telecommunications and Information Administration (NTIA) submitted its recommendations to the Copyright Office and noted concerns over the potential misuse of technological protection measures for non-copyright purposes and cautions against giving too much weight to non-copyright concerns implicated by proposed exemptions:

While there have long been proposed exemptions that implicated issues unrelated to copyright law, the sixth triennial rulemaking has stood out for its extensive discussions of matters with no or at best a very tenuous nexus to copyright protection.  Parties have, in this proceeding, raised concerns about medical device safety, vehicle emissions standards, best practices in software vulnerability disclosure, and other issues that are not contemplated in copyright law. In asserting the relevance of such matters to this proceeding, parties often cite the fifth statutory factor in this rulemaking, which allows the Librarian of Congress (and by extension, the Copyright Office) to consider “such other factors as the Librarian considers appropriate.”

NTIA urges the Copyright Office against interpreting the statute in a way that would require it to develop expertise in every area of policy that participants may cite on the record. Although Congress clearly included this factor to enable consideration of issues not otherwise enumerated, the deliberative process should not deviate too far afield from copyright policy concerns.6 As the Register of Copyrights noted in 2010, “the focus in this rulemaking is limited to actual or likely adverse effects on noninfringing uses of copyrighted works. No other agency has delegated authority to temporarily limit the application of the prohibition on circumvention. This prohibition was established to provide legal support for, and foster the availability of, copyrighted works in the digital environment.” Therefore, the Office should not, in its deliberations, heavily weigh unrelated matters such as greenhouse gas emissions or the quality of materials used to build aircraft, and should instead focus primarily on questions relevant to copyright law.8 Congress, applicable regulatory agencies, and their counterparts within state governments are well-equipped to deal with these non-copyright issues in the appropriate settings and under legal authorities focused on those issues.

Additionally, NTIA’s comments continue expressing concerns:

[T]hat security measures that have been deployed for non-copyright reasons—such as security and privacy, or possibly anti-competitive goals—are being described in this rulemaking as technological measures controlling access to copyrighted works under Section 1201.  This is a fundamental misuse of Section 1201, which can lead to reduced respect for the DMCA and copyright law, and can yield either an inappropriate overprotection of copyright (out of concern, for example, to avoid harming security), or a reduction in security (because of a grant of an exemption in this proceeding where indeed no significant copyright interest is at issue).

A related problem would arise if a manufacturer were to use the same technological protection measure to achieve two functions—enhance security and protect a legitimate copyright interest. Again, this could lead to inappropriate outcomes, and manufacturers would in many cases be well advised to separate techniques aimed at copyright protection from those aimed at security and privacy.

These concerns lead to two practical considerations. First, a record showing that a technological measure was not deployed with copyright protection in mind should weigh heavily in favor of a proposed exemption. Such a standard is entirely consistent with the statutory factors to be considered in this rulemaking.

Second, the increasing ubiquity of security measures has led to a widespread assumption that Section 1201 applies in a broader set of circumstances than may, in reality, be true. One of the clearest examples of this phenomenon appeared during the previous triennial rulemaking, when one group of proponents sought an exemption for circumventing access controls protecting public domain works.  The problem has further manifested itself during this proceeding, as highlighted by the confusion over whether circumvention is necessary to make certain repairs to video game consoles, as well as the possibility that the Lexmark decision may have placed some acts of circumvention involving 3D printers outside the scope of Section 1201.  In these circumstances, the Copyright Office has a role to play in clarifying the scope of Section 1201 through these proceedings. Where the prohibition against circumvention clearly does not apply, NTIA recommends the Copyright Office continue its previous practice of noting that a “requested exemption is beyond the scope of this rulemaking proceeding.”  Similarly, in cases where the prohibition may apply, but only in certain instances, NTIA suggests noting the prohibition’s limitations when recommending an exemption to the Librarian. NTIA further encourages the Copyright Office to make clear to manufacturers and content creators that they should remain cognizant of the underlying purposes for which an access control is implemented. Manufacturers should not implement access controls on devices to restrict certain device functions or enforce non-copyright-related business models—which is not the purpose behind Section 1201—and then try to use the DMCA to enforce a business model or limit a user’s post-purchase modification of a device.

While the 2015 exemptions include some improvements with respect to expanded exceptions, the rules have become more verbose and complex over the course of the six rulemaking cycles. The long, detailed exemptions will lead to greater confusion and make the exemptions less useful.  Laura Quilter has this excellent post on the complexity of the new exemptions.

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Libraries Comment on Copyright Office Extended Collective Licensing Proposal

In June 2015, the Copyright Office released its report on Orphan Works and Mass Digitization.  When the report was released, ARL noted flaws with the report for both the orphan works legislation recommendation and the mass digitization/extended collective licensing pilot program proposal pointing out that libraries rely heavily on fair use.  The Library Copyright Alliance (LCA) also submitted a response to the report.  Subsequently, the Copyright Office released a Notice of Inquiry (NOI) regarding its proposed pilot program for mass digitization and extended collective licensing.

LCA submitted comments in response to the NOI which point out the impracticality of the proposed pilot program and urges the Copyright Office to reconsider its decision to proceed with a pilot.  It points out that while the Copyright Office models its proposal off the Google Books Settlement (NB: the settlement was rejected by the district court, but Google’s use was held to be fair use.  On October 16, 2015, the Court of Appeals for the Second Circuit upheld the district court’s determination that the Google Books project is fair use), the circumstances of the settlement are starkly different from present circumstances.

LCA’s response also highlights the inappropriate policy choices of the pilot program.  For example, the Copyright Office’s report suggests that depression-ear photographs would be the type of collection that could fall under the program.  However, this is exactly the type of collection that would likely be fair use and therefore not subject to a license.  LCA’s comments conclude:

Accordingly, sensible public policy would favor an exception permitting free access to digitized, commercially unavailable books for nonprofit educational and research purposes. Congress has adopted other specific exceptions for nonprofit uses as it has sought to achieve a balance in Title 17 among the interests of the diverse stakeholders in the copyright system. See, e.g., 17 U.S.C. §§ 108, 109(b)(2), 110(1), 110(2), 110(3), 110(4), 110(6), 110(8), 110(9), 112(b), 112(c), 112(d), 121, and 1201(d). Therefore, we strongly suggest that the Copyright Office move away from an ECL, with all its impracticalities and costs, and instead study a framework for a true exception permitting access to digitized, commercially unavailable literary works for nonprofit educational and research purposes.

In addition to LCA’s comments, several other library consortium or associations also filed responses to the NOI, including the Boston Library Consortium, the Association of Southeastern Research Libraries and the Triangle Research Libraries Network.

The Boston Library Consortium (BLC) submitted comments opposing the ECL framework proposed by the Copyright Office because it would “(1) impose significant new burdens on libraries and archives, (2) limit access to and use of existing unused works, and (3) is strikingly unnecessary, since libraries and archives, rightsholders, and users alike currently benefit from reliance on fair use and and individual, careful judgment by libraries and archives.”

BLC’s comments point to several specific digitized collections from Boston College and the University of Massachusetts Amherst.  It notes that Boston College digitized collections of Boston College history or alum; of the Baltimore-based advertising and music firm, John Donnelley & Sons Records; and a collection of records of former Speaker of the House “Tip” O’Neill.  The comments then point out that the University of Massachusetts, Amherst digitized W.E.B. Du Bois’ letters, essays, lectures, fiction, nonfiction writing, research notes and photographs.  The comments note that the Copyright Office’s pilot proposal would discourage these types of important projects or possible make them “completely infeasible.”

BLC’s comments also point out that:

Under Existing Law, Libraries and Archives Have a Proven Track Record of Developing Approaches to Digitization that Carefully Balance the Rights of Subjects and Potential Copyright Claimants with the Benefits to the Public of Digitization.

As the digital age developed, libraries and archives took a characteristically cautious and risk-averse approach to digitization of collections, carefully doing research into the copyright status of collections, the return on investment of trying to ascertain rightsholders, the potential liability risks, and numerous other potential avenues of risk and harm.

Growing confidence in the profession’s ability to discern potential areas of trouble, as well as an increasingly robust line of fair use cases, has led to many institutions feeling confident in digitizing and providing access to material potentially in copyright, and in establishing procedures to address any legitimate concerns.

This comfort level was well expressed in two recent “Best Practices in Fair Use,” which examined the professional practices of librarians and archivists, and captured the conclusions of the profession based on its decades of experience.

In the ARL Code of Best Practices, librarians agree that fair use supports the use of materials from collections to create physical and virtual exhibitions, facilitating “public awareness and engagement” and “promot[ing] new scholarship” with these collections. The considered opinion of librarians and archivists is captured in provisos, such as recommending full attribution, appropriate levels of resolution or portions, curatorial context, and technological measures as appropriate, and cautioning against extending the rationale to support souvenir sales or other commercial uses.

Exhibitions are a more limited use of collections, but the ARL Code of Best Practices also addressed wholesale digitization of entire collections. Here again the experiences of librarians and archivists were distilled into guidelines laying out circumstances which decades of experience have shown to affect the equities of use of the works, either through fair use of copyrighted works or substantive rights of subjects of works. Libraries and archives’ attention to potential claimants’ rights is demonstrated in the guidance that, “Libraries should also provide copyright owners with a simple tool for registering objections to online use, and respond to such objections promptly.” While the relative lack of complaint suggests that libraries’ curation and screening efforts are well-placed, the eagerness to address any such concerns further attests to the good faith efforts by which libraries and archives generally operate.

Most recently, the Best Practices in Orphan Works expanded on such questions in detail, providing additional clarity to concerns about, for example, public access, third party use of collections, and quality of digitized artifacts . . .

[ . . . ]It is no accident that the case law regarding copyright infringements by libraries and archives is exceedingly sparse, and virtually non-existent with respect to special collections. It is in fact a testament to the careful attention to the equities that librarians and archivists provide, as well as a reflection of the obvious fact that for many “orphan works,” no claimants exist.

The Association of Southeastern Research Libraries (ASERL) submitted comments that note, “ASERL finds the concept of Extended Cooperative Licensing to be questionable at its core, as it proposes to create a new organization and empower it to establish and collect royalties for content for which it has no rights or authority . . . Moreover, implementing an ECL model would have a profound chilling effect on the efforts by libraries and other cultural heritage organizations to improve public access to their collections for research, teaching and learning.”

Like BLC’s comments, ASERL points to several digitization efforts by its member libraries including the Arthur Scott Photograph Collection at George Mason University, which includes photographs taken by Arthur Scott from his work from 1934-1974 as well as other photographs and correspondence; and the EU Pix Collection at Emory University which includes a large mix of items.  The comments point out that the proposed ECL model would threaten these collections.  Additionally, the ASERL comments point out that the complexities of the program would lead to uncertainty and:

The resulting fear, uncertainty, and doubt created by these proposals would contribute to libraries foregoing their digitization efforts in order to reduce the risk of possible legal entanglements.

In short, these proposals would result in libraries being unable to digitize collections that would, under current rules, never stretch the bounds of legally defined fair use.  It is easy to imagine the eventual impacts: Without the ability to digitize library collections, access to a large body of content would be restricted.  A student or researcher would not be able to benefit from the content held at the nation’s research institutions without incurring the time and expense of traveling to each library in person.  This would curtail American scientific and commercial innovation, limit our cultural and historical insights, and inhibit the growth of artistic knowledge.  The results are incalculable.

Instead, ASERL members remain focused on the underlying purpose of copyright, “to promote the Progress of Science and useful Arts, by securing for a limited Time to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” We believe libraries should continue to rely on the well-established principles of fair use as annunciated in the Copyright Act, 17 U.S.C. § 107. These principles have served libraries and interested copyright holders remarkably well over time. The current legal framework provides a fair and equitable means for resolving disputes relating to works that have been digitized and made available on the internet. Fair use has survived multiple legal challenges, ensuring libraries and other cultural heritage organizations can continue to provide improved access to the nation’s intellectual and cultural output.

The Triangle Research Libraries Network (TRLN) comments state that “While we appreciate the Copyright Office’s interest in this issue, we believe that the Office’s mass digitization licensing proposal would be ineffective and inefficient.”  The comments point out that,

We have digitized countless in-copyright works, either with permission from rightsholders or under the doctrine of fair use or other legal defenses, coupled with a takedown mechanism, should that prove necessary.

From among our vast holdings and digitization projects, we are unable to identify a single instance in which we would benefit by pursuing a license under an extended collective licensing (ECL) system like the one proposed by the Office.

The comments point out the many problems of collective management organizations (CMOs).  For example, TRLN’s comments note, “the ECL proposal does not resolve the orphan works problem; it merely shifts the burden of searching for owners from the digitizing library to a CMO.  In doing so, it moves the responsibility for finding owners to an entity that has little incentive to actually locate and pay rightsholders.”  Additionally, the comments note that the end users that hold copies of the works would likely be better situated to find the owners because they may have more information regarding the acquisition and provenance of the works.


TRLN libraries are unlikely to purchase an ECL license offered by a CMO.  These organizations would not provide an equitable, practical solution to rights issues connected with the material TRLN libraries deem most important to digitize.  In addition, much of the material that we prioritize for digitization is beyond the scope of the pilot project that the Copyright Office proposes.  Our focus for digitization is on material that is not currently discoverable and on material that is unique, rare, or ephemeral.  IN short, our priorities for digitization are special collections material and, often, non-textual material.  While we cannot speak for all libraries, we believe our digitization experiences and priorities are similar to those of many other U.S. research libraries.

TRLN’s comments provide several examples of digitization from the University of North Carolina at Chapel Hill including the Frank Porter Graham papers (which includes digitization of 25,000 pages from the collection); a collection of historic North Carolina postcards; a unique collection of North Carolina films chronicling aspects of life in the state during the twentieth century (including oral histories, films and other works); and the Southern Folklife Collection (digitizing rare sound recordings and motion pictures).

The comments conclude:

These are materials that, for the most part, no one else holds and that are of great interest to researchers.  In many cases, the authors of these works did not contemplate commercializing their creations.  In many other cases, the creators are unknown.  We cannot compensate rightsholders whose names are lost and whom we cannot find, but we can honor them and the work they did by preserving it, attributing it to the greatest extent possible, and making it available to the public.  When it is foreseeable that they cannot be found, it does these rights holders no service to send payments to a collective management organization for a fruitless search. Consequently, we would not take advantage of the pilot program the Copyright Office proposes, because it does not fit with our needs and priorities.

[. . . ] Instead, we suggest that the Office focus on other solutions, such as finding a way to re-introduce formalities in some situations, digitizing and providing access to past Copyright Office records, and considering a more straightforward exception to the problems of orphan works and mass digitization, such as a notice and takedown system that libraries are already utilizing.

The full list of comments responding to the Notice of Inquiry is available at the Copyright Office’s website.

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It’s #OAWeek

Open Access Week 2015 is in full swing!  Here’s a list of events happening this week worldwide.

Just a couple quick points of note.  First, Congress continues to consider S. 779, the Fair Access to Science and Technology Research Act (FASTR), which the Senate Homeland Security and Governmental Affairs Committee unanimously approved.  It calls on federal agencies with research budgets of over $100 million to establish, to the extent possible, common public access policies for peer-reviewed journal literature resulting from federally funded research.  ARL continues to engage with Congress on this issue to support passage of this bill.

Additionally, there was great news to start off the week with University of Illinois Urbana-Champaign passing its Open Access policy.  The policy (subject to waivers) states

Each Faculty member, for the purpose of making his or her scholarly articles widely and freely available in an open access repository, grants to the University of Illinois a nonexclusive, irrevocable, worldwide license to exercise any and all rights under copyright relating to each of his or her scholarly articles, in any medium, and to authorize others to do the same.

University of Illinois Urbana-Champaign is one of several universities that have adopted open access policies this year, building on the success of policies adopted by universities previously.  MIT Libraries maintains a list of institutions with open access policies and their scope.

Enjoy the rest of #OAweek2015!

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Second Circuit Affirms Fair Use in Google Books Case

*This blog post is now available in a PDF version as an issue brief here*

On October 16, 2015, the U.S. Court of Appeals for the Second Circuit unanimously affirmed the lower court’s fair use decision in Authors Guild v. Google, also known as the “Google Books” case. Google, through its Library Project, made digital copies of tens of millions of books submitted to it by libraries. It then included these copies in a search index that displayed “snippets” in response to search queries. The Second Circuit held that the copying of the books and the display of snippets is transformative and a fair use. Furthermore, Google’s provision of digital copies to its partner libraries that submitted the particular work is not an infringement.

This decision follows directly from last year’s positive fair use decision in Authors Guild v. HathiTrust. There were two main differences between the two cases. Google is a commercial party, while HathiTrust is non-profit; and Google displays snippets, while HathiTrust just provides page numbers. Judge Leval, the federal judiciary’s foremost expert on fair use who developed the concept of transformative use, carefully explained why these differences did not affect the fair use analysis.


In 2004, Google initiated its Library Project where it partnered with major research libraries. These libraries submitted books from their collections to Google, which then scanned, indexed and made them machine-readable. Since 2004, Google has scanned and indexed more than 20 million books, most of which are non-fiction and out-of-print. The public can perform searches on the Google Books database, which in response to a query lists books containing the search term. Sometimes links are provided to where a particular book can be purchased or a library where the book can be located. No advertising is displayed to the user of the search function.

If a user clicked on a specific book, Google Books displays a maximum of three “snippets” containing the search term. It does not allow a user to increase the number of snippets through the same search term and also “blacklists” snippets and portions of the book from view. It disabled snippet view for works where the snippet would satisfy the need for the book and, since 2005, excluded the use of snippet view at the request of a rightsholder.

Google allowed its participating libraries to download the digital image and machine-readable versions of the books that a particular library submitted for scanning. The agreements with the libraries required libraries to abide by copyright law in using the downloaded copies and to prevent dissemination to the public at large.

The Authors Guild and several authors sued Google, asserting that the project infringed their copyright. Google filed for summary judgment, arguing that its use was a fair use and in 2013, the district court ruled in favor of Google.

The Plaintiffs, which include three authors (the Second Circuit previously held in Authors Guild v. HathiTrust that the Authors Guild did not have standing to sue on behalf of its members) appealed to the Second Circuit, contending that 1) Google’s copying of entire books and providing snippet views provided a substitute for Plaintiffs’ works and was not transformative; 2) Google’s status as a commercial entity precludes a finding of fair use; 3) Google Books infringes on the Plaintiffs’ derivative rights in search and deprives them of the ability to license their works in search markets; 4) Google’s storage of digital copies expose a risk that Plaintiffs’ books will be made freely or cheaply available on the Internet; and 5) distribution of the digital copies to its library partners could cause Plaintiffs to lose copyright revenues if libraries make these copies available.

Fair Use Analysis

The Second Circuit begins its analysis by examining the purpose of copyright:

The ultimate goal of copyright is to expand public knowledge and understanding, which copyright seeks to achieve by giving potential creators exclusive control over copying of their works, thus giving them a financial incentive to create informative, intellectually enriching works for public consumption. This objective is clearly reflected in the Constitution’s empowerment of Congress “To promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their respective Writings.” U.S. Const. Art. I, §8, cl. 8. Thus, while authors are undoubtedly important intended beneficiaries of copyright, the ultimate primary intended beneficiary is the public, whose access to knowledge copyright seeks to advance by providing rewards for authorship.  

The court notes that the fair use doctrine was developed in order to support this purpose of supporting progress and that this doctrine was eventually codified under Section 107 of the Copyright Act of 1976. However, as confirmed by the Supreme Court, this statutory codification did not change the judicial doctrine of fair use.

Courts look at four fair use factors in evaluating whether a use is fair: 1) purpose and character of the use; 2) nature of the copyrighted work; 3) amount and substantiality of the portion used in relation to the whole; and 4) effect on the potential market.

First Factor: Purpose and Character

Turning to the first factor, the court focuses on determining whether the use is transformative while noting that a finding against transformativeness does not preclude a fair use finding. However, “transformative uses tend to favor a fair use finding because a transformative use is one that communicates something new and different from the original or expands its utility, thus serving copyright’s overall objective of contributing to public knowledge.”

The Second Circuit first examined whether the search function has a transformative purpose, quickly noting that in HathiTrust, it found that “the creation of a full-text searchable database is a quintessentially transformative use.” (As noted above, Judge Leval wrote the court’s decision. Judge Leval first coined the phrase “transformative use” in a law review article in 1990. Some have argued that the recent fair use jurisprudence strays from Judge Leval’s vision of transformative use because it has permitted the copying of entire works without transforming the works themselves. Judge Leval’s conclusion that Google’s creation of a full text database lays this criticism to rest.)

Turning to the differences between the Google Books search and HathiTrust, the Second Circuit considered whether the snippet view is also transformative. The court finds that

Snippet view adds important value to the basic transformative search function, which tells only whether and how often the searched term appears in the book. Merely knowing that a term of interest appears in a book does not necessarily tell the searcher whether she needs to obtain the book, because it does not reveal whether the term is discussed in a manner or context falling within the scope of the searcher’s interest.

The court notes that the snippet provides “just enough context” for a user to evaluate whether the book is responsive to her interests, but does not reveal enough to threaten the copyright interest.

Additionally, the court examines the case in light of Google’s status as a commercial entity, which also distinguishes this case from HathiTrust. While the Plaintiffs rely on dicta in a Supreme Court case that commercial uses are presumptively unfair, the Second Circuit states “while the commercial motivation of the secondary use can undoubtedly weigh against a finding of fair use in some circumstances, the Supreme Court, our court, and others have eventually recognized that the Sony dictum was enormously overstated.” The Supreme Court later ruled that Congress could not have intended a rule finding such a presumption and the Second Circuit has “rejected the contention that commercial motivation should outweigh a convincing transformative purpose and absence of significant substitutive competition with the original.” Ultimately, the Second Circuit concludes:

We see no reason in this case why Google’s overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition, as reasons for granting fair use. Many of the most universally accepted forms of fair use, such as news reporting and commentary, quotation in historical or analytic books, reviews of books, and performances, as well as parody, are all normally done commercially for profit.

Second Factor: Nature of the Work

The Second Circuit notes that the second factor “has rarely played a significant role” in a fair use determination. While courts have suggested that uses of factual works may be more favored than fictional ones, the court finds that the distinction between factual and fictional works is not dispositive in a fair use determination:

While each of the three Plaintiffs’ books in this case is factual, we do not consider that as a boost to Google’s claim of fair use. If one (or all) of the plaintiff works were fiction, we do not think that would change in any way our appraisal. Nothing in this case influences us one way or the other with respect to the second factor considered in isolation.

The court also notes that, in relation to the first factor, “the second factor favors fair use not because Plaintiffs’ works are factual, but because the secondary use transformatively provides valuable information about the original, rather than replicating protected expression in a manner that provides a meaningful substitute for the original.”

Factor Three: Amount and Substantiality Used

As in its decision in HathiTrust, the Second Circuit finds that the amount used was appropriate for the creation of a search database. Here, the court notes that,

Notwithstanding the reasonable implication of Factor Three that fair use is more likely to be favored by the copying of smaller, rather than larger, portions of the original, courts have rejected any categorical rule that a copying of the entirety cannot be a fair use. Complete unchanged copying has repeatedly been found justified as fair use when the copying was appropriate to achieve the copier’s transformative purpose and was done in such a manner that it did not offer a competing substitute for the original.

Thus, “[a]s with HathiTrust, not only is the copying of the totality of the original reasonably appropriate to Google’s transformative purpose, it is literally necessary to achieve that purpose.”

With respect to the amount used with respect to the snippet view, the court acknowledges that “enabling searchers to see portions of the copied texts could have determinative effect on the fair use analysis.” However, Google’s snippet view “does not reveal matter that offers the marketplace a significantly competing substitute for the copyrighted work.” The snippet view contains significant protections including limiting the size of the snippet to one-eight of a page, blacklisting of one snippet per page and one out of every page, providing no more than three snippets for each term searched and excluding certain books, such as dictionaries and cookbooks, from snippet eligibility. As a result, “a searcher cannot succeed, even after long extended effort to multiply what can be revealed, in revealing through a snippet search that could usefully serve as a competing substitute for the original.”


The blacklisting, which permanently blocks about 22% of a book’s text from snippet view, is by no means the most important of the obstacles Google has designed. While it is true that the blacklisting of 22% leaves 78% of a book theoretically accessible to a searcher, it does not follow that any large part of that 78% is in fact accessible. The other restrictions built into the program work together to ensure that, even after protracted effort over a substantial period of time, only small and randomly scattered portions of a book will be accessible. In an effort to show what large portions of text searchers can read through persistently augmented snippets searches, Plaintiffs’ counsel employed researchers over a period of weeks to do multiple word searches on Plaintiff’s book. In no case were they able to access as much as 16% of the text, and the snippets collected were usually not sequential but scattered randomly throughout the book. 

[. . .] The fragmentary and scattered nature of the snippets revealed, even after a determined, assiduous, time-consuming search, results in a revelation that is not “substantial,” even if it includes an aggregate 16% of the text of a book. If snippet view could be used to reveal a coherent block amounting to 16% of a book, that would raise a very different question beyond the scope of our inquiry.

Thus, the amount used for both the search function and snippet view is appropriate.

Fourth Factor: Effect on the Market

The Second Circuit notes the importance of the fourth fair use factor which “focuses on whether the copy brings to the marketplace a competing substitute for the original, or its derivative, so as to deprive the rights holder of significant revenues because of the likelihood that potential purchasers may opt to acquire in preference to the original.”

With respect to the creation of a search database, the court again references its decision in HathiTrust, which found that search does not serve as a substitute for the original work.

With respect to the snippet views, the court found that this feature of Google Books does not harm the value of the original, due to the fact that snippets provide tiny fragments that are not continuous and, in the aggregate, amount to no more than 16% of a book. Thus, the snippet view “does not threaten the rights holders with any significant harm to the value of their copyrights or diminish their harvest of copyright revenue.” The Second Circuit acknowledges:

We recognize that the snippet function can cause some loss of sales. There are surely instances in which a searcher’s need for access to a text will be satisfied by the snippet view, resulting in either the loss of a sale to that searcher, or reduction of demand on libraries for that title, which might have resulted in libraries purchasing additional copies. But the possibility, or even the probability or certainty, of some loss of sales does not suffice to make the copy an effectively competing substitute that would tilt the weighty fourth factor in favor of the rights holder in the original. There must be a meaningful or significant effect “upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4).

Furthermore, the type of loss of sale envisioned above will generally occur in relation to interests that are not protected by the copyright. A snippet’s capacity to satisfy a searcher’s need for access to a copyrighted book will at times be because the snippet conveys a historical fact that the searcher needs to ascertain. For example, a student writing a paper on Franklin D. Roosevelt might need to learn the year Roosevelt was stricken with polio. By entering “Roosevelt polio” in a Google Books search, the student would be taken to (among numerous sites) a snippet from page 31 of Richard Thayer Goldberg’s The Making of Franklin D. Roosevelt (1981), telling that the polio attack occurred in 1921. This would satisfy the searcher’s need for the book, eliminating any need to purchase it or acquire it from a library. But what the searcher derived from the snippet was a historical fact. Author Goldberg’s copyright does not extend to the facts communicated by his book. It protects only the author’s manner of expression. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 974 (2d Cir. 1980) (“A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains.”) (emphasis added). Google would be entitled, without infringement of Goldberg’s copyright, to answer the student’s query about the year Roosevelt was afflicted, taking the information from Goldberg’s book. The fact that, in the case of the student’s snippet search, the information came embedded in three lines of Goldberg’s writing, which were superfluous to the searcher’s needs, would not change the taking of an unprotected fact into a copyright infringement.

Even if the snippet reveals some authorial expression, because of the brevity of a single snippet and the cumbersome, disjointed, and incomplete nature of the aggregation of snippets made available through snippet view, we think it would be a rare case in which the searcher’s interest in the protected aspect of the author’s work would be satisfied by what is available from snippet view, and rarer still—because of the cumbersome, disjointed, and incomplete nature of the aggregation of snippets made available through snippet view—that snippet view could provide a significant substitute for the purchase of the author’s book.

Thus, the Second Circuit concludes after evaluating all four fair use factors that Google’s creation of a searchable database and providing the public with snippet views is fair use and not an infringement.

Derivative Works

The Second Circuit rejects the argument that Plaintiffs have a derivative right over the search and snippet view functions, stating that “there is no merit to this argument.” The court points out that copyright “does not include an exclusive right to furnish the kind of information about the works that Google’s programs provide to the public. For substantially the same reasons, the copyright that protects Plaintiffs’ works does not include an exclusive derivative right to supply such information through query of a digitized copy.”

The court similarly dismisses the argument that Google Books harms the existence or potential for paid licensing schemes. While the Plaintiffs cite the Google Books Settlement agreement that was eventually rejected by the district court as evidence for a licensing market, the Second Circuit notes that the settlement would have allowed users to read substantial portions of the books and therefore distinguishable from the current project which “in a non-infringing manner, allow the public to obtain limited data about the content of the book, without allowing any substantial reading of its text.”

The court also finds that there is no unpaid licensing market because the snippets displayed are “arbitrarily selected snippet[s] of text . . . the snippet function does not provide searchers with any meaningful experience of the expressive content of the book. Its purpose is not to communicate copyrighted expression, but rather, by revealing to the searcher a tiny segment surrounding the searched term, to give some minimal contextual information to help the searcher learn whether the book’s use of that term will be of interest to her.” Thus, the court rejects the Plaintiffs’ arguments that Google Books infringes on their derivative rights.

Exposure/Security Risks

Although the Plaintiff’s assertions that Google’s stored digital copies could pose risks if hackers accessed them is “theoretically sound, it is not supported by the evidence.” The court points out that Google’s scans “are stored on computers walled off from public Internet access and protected by the same impressive security measures used by Google to guard its own confidential information. As Google notes, Plaintiffs’ own security expert praised these security systems.”

Distribution to Partner Libraries

The Second Circuit also rejects the notion that Google’s distribution of digital copies to the participant libraries that submitted the particular work is infringement, pointing out that the library is only permitted to use the copy in a non-infringing fair use manner.

The libraries propose to use their digital copies to enable the very kinds of searches that we here hold to be fair uses in connection with Google’s offer of such searches to the Internet public, and which we held in HathiTrust to be fair uses when offered by HathiTrust to its users. The contract between Google and each of the participating libraries commits the library to use its digital copy only in a manner consistent with the copyright law, and to take precautions to prevent dissemination of their digital copies to the public at large.

In these circumstances, Google’s creation for each library of a digital copy of that library’s already owned book in order to permit that library to make fair use through provision of digital searches is not an infringement. If the library had created its own digital copy to enable its provision of fair use digital searches, the making of the digital copy would not have been infringement. Nor does it become an infringement because, instead of making its own digital copy, the library contracted with Google that Google would use its expertise and resources to make the digital conversion for the library’s benefit.

The court acknowledged that while libraries could make infringing uses of these copies, this outcome is “sheer speculation” and there is no evidence on the present record to hold Google liable as a contributory infringer based on such speculation.


The Second Circuit’s decision in the Google Books case is a strong affirmation of fair use and demonstrates the importance of the fair use doctrine in responding to new technological developments. The search and snippet function of Google Books allows for important research, including through text-and-data mining to allow researchers to conduct research that would not be possible without the large searchable database created by Google. Additionally, Google’s digitization of certain works from library collections demonstrates an important partnership, which has allowed libraries to make fair uses of these copies, including to provide access for those who are visually impaired.

The Authors Guild plans to appeal the case to the Supreme Court of the United States, though it is far from clear whether the Supreme Court would grant certiorari in this case. In its litigation with HathiTrust, the Authors Guild decided to settle the preservation issue (the sole outstanding issue after the Second Circuit’s ruling in favor of fair use for the creation of a full-text searchable database and creation of accessible formats for those who are visually impaired or print disabled) and declined to pursue an appeal.

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Analysis of the Final TPP (Leaked) Text on Intellectual Property: Mixed Results

*This post is also available as an issue brief here*

On October 5, 2015, the twelve trade ministers of the TPP negotiating parties (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam and the United States) announced that they had come to an agreement on the large regional trade agreement that had been under negotiations for the past five years.

While the agreement has been criticized for a number of reasons, it is important to recognize the areas where the agreement has improved from the initial proposals made by the United States in February 2011. Civil society, technology companies and academics have participated throughout the negotiating process to improve the language of the final text and many of these efforts are reflected in the agreement.

Of course, one of the main points of criticism regarding the TPP was the lack of transparency; without the various leaks of the intellectual property chapter throughout the course of the negotiations, substantive debate, criticism and proposed alternatives may not have been possible. It is worth noting that the agreement was signed by the trade ministers of the twelve negotiating parties in Atlanta, GA without a single official release of any chapter of the TPP. Notably, when international agreements are negotiated in multilateral fora such as at the World Intellectual Property Organization (WIPO), the negotiations are much more transparent and stakeholders have the opportunity to view and substantively comment on the proposals.  Even today, the final text has not been officially released, though Wikileaks has released a leaked copy of the final agreement’s intellectual property chapter.

Improvements in the Text

The final text of the TPP saw improvement in several areas, including the removal of certain provisions.

Removal of the Ban on Parallel Importation

The United States’ initial proposal included a ban on parallel importation, granting authors “the right to authorize or prohibit the importation into that Party’s territory of copies of the work, performance or phonogram made without authorization, or made outside the Party’s territory with the authorization of the author, performer, or producer of the phonogram.” This proposal would have prohibited parallel importation, limiting the application of the first sale doctrine to authorized copies made within the Party’s territory. Thus, a legitimate copy made in another country could not be sold in the United States without the author’s consent.

This proposal was controversial at the time it was introduced as other negotiating parties strongly rely on parallel importation of works. Additionally, during this time a high-profile court case, Kirtsaeng v. John Wiley & Sons, involving this very issue was making its way through the court system ultimately ending up before the Supreme Court of the United States. In that case, an individual purchased lawfully made textbooks in Thailand, where they were less expensive, and resold them in the United States.

In March 2013, the Supreme Court ruled that the first sale doctrine applies to lawful copies regardless of their place of manufacture. This ruling clarified that United States law does indeed allow for parallel importation, thus conflicting with the United States’ proposal. Despite this ruling, it took many months and several negotiating rounds for the United States to remove its language banning parallel importation. Ultimately, though, this prohibition was removed and is not in the final text of the agreement.

Removal of Language on Temporary Reproductions

Another area of controversy surrounding the United States’ proposal centered around language granting authors the right to authorize or prohibit reproductions “in any manner or form, permanent or temporary (including temporary storage in electronic form).” Many criticized the inclusion of temporary reproductions, particularly the clarification that it applied to “temporary storage in electronic form” as potentially prohibiting the temporary copies that are constantly made by a computer to read e-mails, store documents, access content, etc. Reference to “temporary reproductions” and “temporary storage in electronic form” is not in the final text, another helpful improvement in the text.

Removal of the Ban on Formalities

The October 2014 leak of the IP chapter, which reflected the state of negotiations as of May 2014, revealed that parties had agreed to new language banning formalities that did not appear in prior leaks. ARL criticized this development noting

This language could be problematic if the United States, or other TPP parties, wanted to re-introduce formalities for copyright protections granted that go beyond minimum international standards. Register of Copyrights Maria Pallante, for example, proposed the re-introduction of formalities for the last twenty years of copyright protection in the United States. If adopted, such a proposal would violate the TPP and subject the United States to investor-state dispute settlement, under which a corporation could sue the Unites States government for failure to comply with the TPP.

However, the August 2015 leak, reflecting the state of negotiations as of May 2015, as well as the final leaked text show that the text was ultimately removed. The removal of this language was a welcome improvement, preserving the ability to re-introduce formalities for protections granted under the TPP that go beyond minimum international standards set by the Berne Convention or TRIPS.

Improvements on Technological Protection Measures

The United States’ initial proposal on technological protection measures (TPMs) included detailed language, including a closed-list set of limitations and exceptions to the anti-circumvention rules. In addition to the very limited set of exceptions, the proposal would have allowed countries to use a three-year rulemaking process, modeled after the Digital Millennium Copyright Act (DMCA) 1201 rulemaking process, to create additional limitations and exceptions subject to a “substantial evidence” burden. This proposal would not have permitted new permanent limitations and exceptions to the anti-circumvention rules and was heavily criticized, particularly as certain events, such as the Register’s refusal to renew an exemption in 2012 to allow for the unlocking of cell phones, highlighted the absurdity of the process.

The 2014 leak and the final text of the agreement reveal that parties have removed the closed list of limitations and exceptions as well as the rulemaking process. Instead, the text allows parties to provide for limitations and exceptions and to use legislative, regulatory or administrative processes to create exceptions. This language would permit the creation of new permanent limitations and exceptions.

Furthermore, while the language still provides that a violation of the anti-circumvention rules “is independent of any infringement that might occur under the Party’s law on copyright and related rights,” this text could be mitigated by a helpful footnote that reads “A Party may provide that the obligations described in paragraph (ii) with respect to manufacturing, importation, and distribution apply only where such activities are undertaken for sale or rental, or where such activities prejudice the interests of the right holder of the copyright or related right.”

The fact that the United States’ initial proposal in 2011 made circumvention a “separate and independent cause of action” was controversial and makes little sense. Establishing that circumvention is independent of any copyright infringement negatively impacts legitimate, non-infringing circumvention. However, the footnote that appeared in the final text could mitigate the harm of this provision because circumvention for legitimate purposes would not prejudice the interests of the right holder.

Inclusion and Improvements on Text on Limitations and Exceptions

The United States’ initial proposal included placeholder text for limitations and exceptions on copyright. The United States tabled a proposal on limitations and exceptions in July 2012. While proposal was a welcome one, including language referencing balance for purposes such as “criticism, comment, news reporting teaching, scholarship and research” which had never been in any prior United States free trade agreement, there were also criticisms of the proposal which noted that this new paragraph was “subject to and consistent with” the three-step test. Critics pointed out that some specific limitations and exceptions, such as the quotation right under the Berne Convention, are not subject to the three-step test (that limitations and exceptions are confined to 1) certain special cases, 2) the at do not conflict with the normal exploitation of the work, and 3) do not unreasonably prejudice the legitimate interests of the right holder).

Ultimately, the language regarding limitations and exceptions was improved and clarification was included that the text on the three-step test did not reduce or extend the scope of limitations and exceptions under international agreements including TRIPS, the Berne Convention, and the WIPO Internet Treaties.

The text of the United States’ proposal also improved with respect to the fact that the list of “legitimate purposes” now specifically references “other similar purposes” as well as “access to published works for persons whoa re blind, visually impaired, or otherwise print disabled.” The text also includes a specific footnote recognizing the Marrakesh Treaty and acknowledges that some Parties facilitate the availability of accessible format works beyond the requirements of the Marrakesh Treaty.

Finally, while the language on limitations and exceptions could have been stronger with language mandating that parties achieve a balance or foster a balance, rather than the agreed to language that “Each Party shall endeavor to achieve an appropriate balance in its copyright and related rights system,” the inclusion of the language in the final text is still a success. The United States has now recognized in a free trade agreement the importance of balance in the copyright system. Furthermore, the United States has stated that this language provides “an obligation for Parties to continuously seek to achieve balance in copyright systems,” because the language requires Party to “endeavor to achieve” balance. The words “shall endeavor” do create a mandatory obligation for parties to seek this balance.

Inclusion of this language signals that the Office of the United States Trade Representative (USTR) has responded to criticisms that the United States proposals only export rights for rightholders and not our balanced system which includes limitations and exceptions. This language should be included in future trade agreements and USTR should seek to improve upon it in the future by strengthening the language requiring parties to achieve a balance or foster a balance. Despite the fact that the language could have been stronger, its inclusion in the final text still reveals a mandatory obligation for parties and represents a positive development.

Remedies Allow for Judicial Discretion

The final language regarding enforcement also shows areas where the text has improved from the United States’ initial proposal.

For example the final text includes language that replicates text from the Anti-Counterfeiting Trade Agreement (ACTA) requiring parties to take proportionality into account. The text reads, “In implementing the provisions of [the enforcement] Section in its intellectual property system, each Party shall take into account the need for proportionality between the seriousness of the intellectual property infringement, and the applicable remedies an penalties, as well as the interests of third parties.” This language on proportionality is a welcome inclusion and would ultimately allow domestic laws to provide judicial authorities discretion in ordering remedies.

Additionally, while the United States’ initial proposal in 2011would have required judges to consider certain measures of damages (“in determining damages for infringement of intellectual property rights, its judicial authorities shall consider, inter alia, the value of the infringed good or service, measured by the suggested retail price or other legitimate measure of value submitted by the right holder”) the final language provides judicial authorities the discretion to consider these measures of damages. The final text provides that “judicial authorities shall have the authority to consider . . .” and this added language “have the authority” changes the text from a mandatory obligation that judges consider these measures of damages to providing them the discretion to do so. This addition is an improvement and consistent with current United States law which permits judicial discretion.

Other provisions on the text on remedies includes similar language, providing that judicial authorities “shall have the authority” to impose certain remedies, but does not actually require that authorities order these remedies. While some have criticized the TPP as prohibiting the Copyright Office’s proposal on orphan works (which is a highly flawed proposal as analyzed here and here), the actual text of the TPP permits considerable discretion and does not actually require authorities to order damages in a particular amount.

General Provisions

As noted in ARL’s analysis of the August 2015 leak, language on general provisions reveal considerable positive developments. The final text includes language provides that the objectives of the agreement are as follows:

The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

The principles specifically reference the public interest and address the need to prevent abuse of intellectual property by right holders: 

1.  Parties may, in formulating or amending their laws and regulations, adopt measures necessary to protect health and nutrition, and to promote the public interest in sectors of vital importance to their socio­economics and technological development, provided that such measures are consistent with the provisions of this Chapter.

2.  Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

The final text also includes a section on “Understandings in respect of this Chapter” which reads as follows:

Having regard to the underlying public policy objectives of national systems, the Parties recognize the need to:

  • promote innovation and creativity;
  • facilitate the diffusion of information, knowledge, technology, culture and the arts; and
  • foster competition and open and efficient markets;

through their intellectual property systems, while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including rights holders, service providers, users and the public.

The August 2015 leaked text, reflecting the negotiating text as of May 2015, also included language proposed by Chile and Canada “acknowledging the importance of preserving the public domain.” This text was, however, opposed by the United States and Japan and ultimately not included in the agreement. It is extremely unfortunate that the United States and Japan would oppose inclusion of such text.

However, in the section on “Cooperation” the text from the August 2015 leak remains in the final text recognizing the importance of the public domain:

The Parties recognize the importance of a rich and accessible public domain. 

The Parties also acknowledge the importance of information materials, such as publicly accessible databases of registered intellectual property rights that assist in the identification of subject matter that has fallen into the public domain.

While it is disappointing that the United States and Japan opposed the inclusion of a reference to the public domain in the general provisions, the fact that the importance of the public domain is recognized on the section regarding cooperation is still welcome language.

Shortcomings/Areas for Improvement in Future Agreements

Flexibility on ISP Liability

The final language of the agreement does provide for some flexibilities with respect to Internet Service Providers (ISP). While the text, contained in Section I, is modeled off the DMCA and provides for safe harbors for ISPs implementing a notice-and-takedown system, an annex specifically preserves Canada’s notice-and-notice system. The annex provides that the notice-and-takedown safe harbors do not apply to a Party that has implemented a notice-and-notice system instead.

Unfortunately, this flexibility will only be permitted for Canada and not for the other negotiating parties. The language under the annex requires the system to be in place “upon date of agreement in principle of this Agreement,” which occurred when the trade ministers announced the agreement on August 5, 2015. Canada was the only country at that time to have a notice-and-notice system in place.

However, another annex to the intellectual property chapter provides that as an alternative to implementing the article on ISP, parties may instead implement Article 17.11.23 of the US-Chile free trade agreement. Chile’s system involves notice-and-takedown, but involves a judicial order before takedowns are required. Countries may therefore choose between implementing the language in the TPP or the language of the US-Chile trade agreement.

Unfortunate Extension of Copyright Term

Copyright Term Extension

One of the biggest areas of criticism that remains in the final agreement is that the parties settled on a copyright term of life plus seventy years, or seventy years for corporate works. The United States’ 2011 proposal would have set copyright term as the life of the author plus seventy years, or ninety-five (or up to one-hundred twenty years if unpublished) years for corporate works. While countries did not accept the United States’ proposals on corporate works, they did agree to the term of life plus seventy years. Some countries with pre-existing free trade agreements with the United States (Australia, Chile, Peru and Singapore) already had obligations to provide for a period of life plus seventy years and Mexico had an even longer term, which it proposed, of life of the author plus one hundred years.

However, it is highly unfortunate that the other countries ultimately agreed to extend copyright term, given the lack of justification for excessively long terms. The Hargreaves report commissioned by the United Kingdom, for example, points out that economic evidence does not support copyright term extensions. Maria Pallante, Register of Copyrights, noted that a Copyright Office study questioned “whether copyright term should be extended to benefit remote heirs or assignees, ‘long after the purpose of the protection has been achieved.’” Despite the lack of policy justification for these terms and the fact that copyright term extension damages the public domain and increases the orphan works problem, the final text of the agreement reveals that countries must provide for copyright terms that go far beyond the minimum international standards.

After the trade ministers announced an agreement had been reached, New Zealand released a fact sheet on the TPP. This fact sheet estimated that the copyright term extension would cause “significant cost” to New Zealand: “This cost – in terms of foregone savings on books, films, music and other works – increases gradually over 20 years and averages around $55 million a year over the very long term.”

Article QQ.A.10bis, however, does provide that countries that are required to implement copyright term extension do not need to restore protection to subject matter that has fallen into the public domain in its territory as of the date of entry into force of the agreement. The extension will therefore apply only to those works that are still under protection as of the date the agreement enters into force for that country (which will depend on each country’s domestic process for approving the final agreement).

While the United States will not require changes to its domestic laws with respect to copyright term, it is unfortunate that this term is being imposed on other countries when it far exceeds international standards. Brunei, Canada, Japan, Malaysia, New Zealand and Vietnam will all be required to increase the copyright terms in their countries. Furthermore, it would be extremely difficult for the United States to revisit this term and reduce copyright term in the United States, even though evidence justifies and supports shorter terms, as the TPP would need to be re-negotiated with all TPP parties.


While there are still areas where the TPP should be criticized and several areas where the language of the TPP could have been better, the final text reveals significant improvements from the United States’ initial proposals. It is possible that some of these proposals resulted from stakeholder engagement, including criticisms of prior texts and proposals which was only made possible through leaks. These improvements and changes in the text over the course of the five years of negotiations reveal the importance of transparency in negotiations.

The TPP will still need to be approved by the domestic procedures set forth in each of the parties. In the United States, Congress will vote under the “fast track” procedures it set when it granted the President trade promotion authority. Congress will be able to approve or reject the agreement in a straight up-down vote, meaning that it cannot amend the agreement. Due to the timing set forth under fast track procedures, a vote in the United States will not occur until 2016. In Canada, a vote will not take place on the TPP until after it concludes its upcoming elections on October 19 and the new Parliament is in place.

Whether or not Congress approves the agreement, the final text of the TPP will likely provide the starting point for future negotiations. USTR has used past agreements, particularly the most recently concluded free trade agreements, as a template for future agreements. The gains made with respect to supporting a balanced copyright system should serve as a basis for additional improvements in the future.

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New Advocacy and Policy Update Available

The latest ARL Advocacy and Policy Update (covering mid-August to the beginning of October) is now available.  Previous Advocacy and Policy Updates can be found here.

From the current update’s summary:

With its return from an August recess, the US Congress faces several controversial must-pass bills and other divisive issues with little time to spare prior to the passage of a short-term funding measure for the US Government as the Government’s fiscal year ended on September 30. A short-term funding bill that will fund the Government through mid-December was approved in lieu of another Government shutdown.

The US Senate continues to press ahead for passage of the Fair Access to Science and Technology Research Act (FASTR), a bill to codify the Office of Science and Technology Policy’s 2013 memorandum regarding public access to federally funded research.

The White House is building a pool of prospective candidates for the Librarian of Congress position. With James Billington’s retirement at the end of September, the White House has been reaching out to stakeholders, including ARL, for their input and recommendations. Legislation has been introduced in the Senate to limit the term of the Librarian of Congress to 10 years.

Copyright has been an active area over the past six weeks. Members of the House Judiciary Committee are poised to introduce several bills regarding the future of the US Copyright Office— determining the office’s authority and whether it will remain in the Library of Congress. This may be the first issue that the House considers as it continues its review of the Copyright Act for possible reform. A court ruled that Warner/Chappell Music does not hold a valid copyright to the “Happy Birthday” song lyrics, and there were two positive fair use decisions in Lenz v. Universal and Katz v. Google. The Library Copyright Alliance filed comments on the Copyright Office Notice of Inquiry on Extended Collective Licensing, and the 1201 Digital Millennium Copyright Act rulemaking is still underway.

ARL participated in a number of amicus briefs on a variety of issues. ARL, the American Library Association, Association of College and Research Libraries, and Chief Officers of State Library Agencies filed an amicus brief in support of the Federal Communications Commission’s Open Internet Order protecting network neutrality. ARL also joined in an amicus brief in the case Wikimedia v. National Security Agency (NSA), challenging warrantless surveillance and invoking the First Amendment’s protection of privacy.

Congress continues to consider reform of the Electronic Communications Privacy Act, or ECPA and there is widespread support in the House for such reform.

The US Supreme Court has agreed to rehear Fisher v. University of Texas at Austin, a case involving the University of Texas (UT) admissions process, which seeks to improve student body diversity.

On the international front, several additional countries have ratified the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, with Canada moving closer to ratification of the treaty. Another meeting took place in late September–early October to finalize the Trans-Pacific Partnership Agreement, a large, regional, trade agreement among 12 countries including Canada and the US. Finally, the “right to be forgotten” online has been upheld in Europe, and French regulators declared that search engines must apply the right to be forgotten across all domains, not just in France or Europe.

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