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Celebrating New Works Entering the Public Domain in the United States

On January 1, 2019, the United States saw a mass number of new published works enter the public domain for the first time in twenty years.  After the enactment of the Copyright Term Extension Act, which extended copyright term for 20 years, a moratorium was placed on most new works entering the public domain.  Although works published in 1923 were originally scheduled to enter the public domain in 1999, the Copyright Term Extension Act gave works published between 1923 and 1977 and expanded term of 95 years.  (Note: determining the term of copyright can be incredibly complex; this chart is helpful in determining the potential public domain status of a work.)

A rich, robust public domain provides critical building blocks for the creation of new works because authors can use and reuse existing material without first seeking permission.  Examples of culturally prominent works that relied on existing works abound, from this list of 50 Disney movies based on the public domain to this paper, “Nothing New Under the Sun” (covering everything from classical music and modern jazz to literature to the stage and movies to visual arts).  While an author’s talent and work certainly contribute to great new works, such creations are not created in a vacuum; these examples of new works building on old works demonstrate the importance of the public domain.

In celebration of Public Domain Day, cultural heritage institutions are digitizing and making available a number of works and collections that are entering the public domain. The Association of Research Libraries (ARL) is gathering information about and publicizing such resources that are available in ARL member institutions. Below are just a few examples:

The Ohio State University Libraries, for example, working with the School of Music, are highlighting musical compositions entering the public domain.  The digital scores have been made available and new recordings will be posted.

The University of Oregon has created a Public Domain Day exhibit highlighting key works entering the public domain from the libraries’ collection in the categories of movies, books and music.

MIT Libraries is celebrating the public domain by digitizing 100 books from its collection, such as J.M. Barrie’s play A Kiss for Cinderella.

The University of Illinois-Urbana Champaign Libraries is featuring 1923 works of Helen Louis Thorndyke.

Significantly, HathiTrust Digital Library has made more than 53,000 works from 1923 available online.

Celebrating the public domain can give new life to old works and lead to new creations. Enjoy the mass numbers of newly available digitized works from 1923!

Advocacy and Public Policy Update

ARL has released a new Advocacy and Public Policy Update, covering the period from September 14, 2018 to January 15, 2019.  Prior updates are available here.

This update covers a wide range of topics including:

Copyright and Intellectual Property Issues

  • Public Domain Day 2019
  • Capitol Records v. ReDigi
  • Georgia v. Public.Resources.Org
  • GSU e-reserves
  • LCA comments on non-commercial uses of pre-1972 sound recordings

Net Neutrality

International Issues

  • NAFTA renegotiation
  • Marrakesh Treaty updates

Legislation and Agencies

  • US Appropriations update
  • Museum and Library Services Act
  • Geospatial Data Act
  • Open Government Data Act
  • ARL comments on NTIA’s request on consumer privacy

The Implications of the ReDigi Decision for Libraries

*Guest blog post by Jonathan Band, Counsel to the Library Copyright Alliance, which consists of the American Library Association, the Association of College and Research Libraries, and the Association of Research Libraries*

Summary

The U.S. Court of Appeals for the Second Circuit has finally issued its long-awaited decision in Capitol Records v. ReDigi. The Second Circuit affirmed the district court’s finding that the ReDigi service, which allowed the resale of iTunes files, infringed copyright. The Second Circuit’s reasoning clearly closes the door on the concept of digital first sale in a commercial setting. It also raises questions concerning the viability of Controlled Digital Lending (“CDL”) by libraries. Accordingly, CDL initiatives must be carefully reevaluated in light of this decision.

  • The Second Circuit affirmed that the first sale right, codified at 17 U.S.C. 109(a), is a limitation on the distribution right, not the reproduction right, and thus does not provide a defense to the making of copies during the course of the sale of digital files.
  • The court rejected ReDigi’s argument that its technology transferred digital files without reproducing them.
  • The court rejected ReDigi’s argument that fair use permitted any copies it made.
  • The decision is problematic for CDL for two reasons:
  1. The decision is the most analogous precedent to the library sharing of digital files of copyrighted works; and
  2. The decision could be read as implicitly rejecting the cornerstone of CDL’s fair use argument: that the first sale right should have a positive influence on the analysis of the first fair use factor.
  • Libraries need to consider whether their CDL programs are likely to pass muster under a more traditional fair use analysis that does not rely on section 109 exercising a positive influence on the first factor.

Background

The now defunct ReDigi service allowed a consumer to sell iTunes music files to other consumers. Under ReDigi’s technology, the music file on the seller’s server was broken into small packets, which were transferred one at a time to ReDigi’s server. When a packet was transferred from the seller’s computer, it was deleted from her computer. The same process was repeated when the file was transferred from ReDigi’s server to the buyer’s computer.

Capitol Records and other record labels sued ReDigi for copyright infringement. In 2013, the district court rejected ReDigi’s first sale defense on the grounds that the first sale doctrine is an exception to the distribution right and not the reproduction right, and ReDigi’s technology infringed the reproduction right. Further, the district court rejected ReDigi’s fair use defense with little discussion, noting that ReDigi’s use was commercial, non-transformative, and harmful to the market for music files.

The Second Circuit held a marathon two-hour oral argument on August 22, 2017. On December 12, 2018, the Second Circuit affirmed the district court’s decision with an opinion written by Judge Leval, one of the country’s leading copyright jurists.

Judge Leval’s Opinion

Judge Leval agreed with the district court that the first sale doctrine provided ReDigi with no defense against Capitol’s claim that ReDigi infringed its reproduction right; the first sale doctrine was a limitation on the distribution right, not the reproduction right. Judge Leval then turned to ReDigi’s contention that it had not infringed Capitol’s reproduction right. ReDigi noted that in its system, each packet was deleted from the seller’s computer as soon as it was transferred to ReDigi’s server. Accord to ReDigi, at no time was there a copy of a file on both the seller’s computer and ReDigi’s server. ReDigi argued that this meant that it didn’t reproduce the file, but just transferred it. Judge Leval rejected this interpretation, finding that the “phonorecord”—a defined term in the Copyright Act–that ended up on ReDigi’s server was a different “material object” from the phonorecord that had existed on the seller’s computer. Additionally, Judge Leval observed that as a factual matter, ReDigi could not ensure that a user had not retained duplicates stored on devices other than the computer on which the user installed the ReDigi software.

Next, Judge Leval considered whether the creation of this new phonorecord was a fair use. His analysis of fair use was more thorough and thoughtful than the district court’s, although he reached the same conclusion. He focused on the first and fourth factors, the purpose and character of the use and the impact of the use on the market for the work. His first factor analysis centered on whether the use was transformative—whether the use “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message, that than merely superseding the original work.” He explained, “uses that criticize, comment on, provide information about, or provide new uses for the copyrighted work are those likely to be deemed transformative.”

Additionally, Judge Leval stated that a secondary use may be transformative if it expands the utility of the original. Examples of utility-expanding transformative fair uses include scanning books to create a full text searchable database (Authors Guild v. HathTrust); copying works into a database to detect plagiarism (A.V. ex. rel. Vanderhye v. iPardigms); and displaying low resolution thumbnail images to facilitate image search (Perfect 10 v. Amazon, Kelly v. Arriba Soft).

To this familiar list of utility-expanding uses Judge Leval added the Supreme Court’s decision in Sony v. Universal, where the Court found that fair use permitted a consumer to record a television broadcast for viewing a more convenient time. Sony typically is treated as a paradigmatic example of a non-transformative fair use. Judge Leval, however, endorsed the Second Circuit’s interpretation earlier this year in Fox News v. TV Eyes that the consumers’ use in Sony was transformative: a use may be fair “if it utilizes technology to achieve the transformative purpose of improving the efficiency of delivering content without unreasonably encroaching on the commercial entitlements of the rights holder.”

Judge Leval found that ReDigi’s use was not transformative because “it provides neither criticism, commentary, nor information” about copyrighted works. Moreover, it did not “deliver the content in a more convenient and usable form to one who has acquired an entitlement to receive the content.” Instead, it just provided “a market for the resale of digital music files, which sales compete with sales of the same recorded music by the rights holder.” Further tilting the first factor against fair use was the commercial nature of ReDigi’s activity.

After cursory treatment of the second and third factors, the nature of the copyright work and the amount and substantiality of the portion used, Judge Leval examined the fourth factor, the effect of the use upon the potential market for or value of the copyrighted work, in more detail. Judge Leval noted that ReDigi made reproductions for “the purpose of resale in competition with the Plaintiffs’ market for the sale of their sound recordings.” ReDigi sold its copies “to the same consumers whose objective in purchasing was to acquire Plaintiffs’ music.” Judge Leval also distinguished the resale of physical copies from digital copies. “The digital files resold by ReDigi, although used, do not deteriorate the way printed books and physical records deteriorate.” The only difference between the copies sold by Capitol and the copies sold in ReDigi’s secondary market was that ReDigi’s copies were less expensive.

Judge Leval then weighed the four factors together. He found that “even if ReDigi is credited with some faint showing of a transformative purpose, that purpose is overwhelmed by the substantial harm ReDigi inflicts on the value of Plaintiffs’ copyrights through direct competition in the rights holders’ legitimate market, offering consumers a substitute for purchasing from the rights holders.”

At the end of the opinion, Judge Leval considered an argument raised in an amicus brief by copyright law professors that the first sale doctrine “must be read to vindicate purchasers’ ability to alienate digital copyright works…without regard to technological medium.” Judge Leval expressed reluctance to wade into this policy argument. “Courts are poorly equipped to assess the inevitably multifarious economic consequences that would result from such changes of law.” Furthermore, reading section 109(a) to accommodate digital resale “would exceed the proper exercise of the court’s authority.” Here, “Congress dictated the terms of the statutory entitlement.” Section 109(a) clearly “negates a claim of unauthorized distribution in violation of the author’s exclusive rights…but not a claim of unauthorized reproduction.” Accordingly, “if ReDigi and its champions have persuasive arguments in favor of the change of law they advocate, it is Congress they should persuade.

Implications for Libraries

The ReDigi decision requires reevaluation of CDL initiatives. The decision is the most analogous precedent to library sharing of digital files of copyrighted works. To be sure, a library would engage in CDL for noncommercial educational purposes, in contrast to ReDigi’s clearly commercial motivation. Moreover, a library could design its CDL program to make it as different from ReDigi’s as possible. For example, the library might engage in CDL only with respect to out of print scholarly monographs. Nonetheless, libraries cannot ignore the long shadow cast by the decision.

Furthermore, the decision calls into question the theoretical underpinnings of CDL. Specifically, CDL relies on the fair use right to replicate the first sale right in the digital environment. Judge Leval’s decision, however, could be read to suggest that the objectives of the first sale right cannot guide the fair use analysis.

The Library Copyright Alliance (“LCA”) filed an amicus brief in support of ReDigi, where we argued that the similarity between the use ReDigi sought to make and uses authorized by section 109(a) should have tilted the first fair use factor in favor of ReDigi. We noted that in Authors Guild v. HathiTrust, the Second Circuit used the rationale for a specific exception—17 U.S.C. § 121, which permits the making of accessible format copies for people who have print disabilities—to support a finding of a valid purpose under the first factor. Likewise, the Copyright Office has repeatedly based fair use conclusions on specific exceptions in the context of a rulemaking under section 1201 of the Digital Millennium Copyright Act, 17 U.S.C. § 1201. We urged the Second Circuit to recognize that the purpose behind the first sale right favored ReDigi in the first fair use factor analysis.

Unfortunately, Judge Leval did not address this argument. The lack of reference to this argument is somewhat surprising given that it was based on the Second Circuit’s reasoning in the HathiTrust decision, and that the Association of American Publishers filed an amicus brief specifically responding to LCA’s brief. Moreover, fair use was the obvious means of addressing the policy concerns raised by the copyright law professors in their amicus brief. Fair use could achieve the objectives of the first sale doctrine in the digital environment without Congress amending the statute.

In one passage, Judge Leval arguably disagreed with this argument. When responding to the law professors’ suggestion that section 109(a) be interpreted to apply in the digital context, Judge Leval stated “the copyright statute is a patchwork, sometimes varying from clause to clause, as between provisions for which Congress has taken control, dictating both policy and the details of its execution, and provisions in which Congress approximatively summarized common law developments, implicitly leaving further such developments to the courts. The paradigm of the latter category is § 107 on fair use.” This could be interpreted to imply that specific exceptions should not influence the first factor analysis—that specific exceptions and fair use should each stick to their own lanes.

On the other hand, by not rejecting it, Judge Leval arguably allowed the argument to live to fight another day. Additionally, Judge Leval’s copyright patchwork argument really doesn’t make much sense. The first sale right is a judge-made doctrine which was codified in section 109(a), just as the fair use right is a judge-made doctrine which was codified in section 107. Thus, it is completely appropriate for a court to consider the principles underlying the first sale right when applying the fair use right.

The status of the argument is particularly significant for libraries interested in engaging in CDL. CDL relies heavily on the notion that fair use enables libraries to replicate the first sale right in a digital context. In their White Paper on Controlled Digital Lending of Library Books, David Hansen and Kyle Courtney state,

The core concept with CDL is that it closely mimics the economic transaction that Congress has already provided for through the first sale doctrine under Section 109. The purpose of the use with CDL is to fulfill the statutory objectives and balance of rights already identified by Congress in Section 109, effectuating that balance considering a new technological use not contemplated at the time Section 109 was enacted. The crux of the proposition is that the purpose and intent of Section 109 should positively influence the “purpose and character” assessment in the fair use analysis.

This, of course, is the same theory LCA articulated in its amicus brief. LCA still believes this theory is correct, and will continue believing in its correctness unless and until the Supreme Court explicitly rejects it. However, Judge Leval’s failure to even acknowledge the theory when he had the opportunity to do so should cause libraries to reevaluate their CDL initiatives. In particular, they need to consider whether their CDL programs are likely to pass muster under a more traditional fair use analysis that does not rely on section 109 exercising a positive influence on the first factor.

ARL Files Comments in NTIA Request for Comment on Consumer Privacy

On Friday, November 9, ARL filed comments responding to National Telecommunications and Information Administration’s (NTIA) request for comment on “Developing the Administration’s Approach to Consumer Privacy.”

In the submitted comments, ARL recognizes that strong privacy protections for users is necessary, but also that overly-prescriptive requirements can cause difficulties in compliance. The comments point to several elements that are critical for meaningful privacy protection, including ensuring transparency and consent, while other areas may be nuanced and policymakers must consider unintended consequences of particular regulations.  For example, the right to deletion raises complex issues and requires a nuanced approach to avoid unnecessary alterations to the cultural and historical record.  The comments also note that effective remedies and enforcement mechanisms are needed to make regulations meaningful.

All filed comments are available on the NTIA site.

Report from AAU-APLU Workshop on Accelerating Access to Research Data

*This is a guest blog post by Mary Lee Kennedy, Executive Director of ARL; Judy RuttenbergProgram Director for Strategic Initiatives; and Cynthia Hudson-Vitale, Head Digital Scholarship and Data Services, Penn State University Libraries*

Over the past two days we participated in the AAU-APLU workshop on Accelerating Access to Research Data, sponsored by the National Science Foundation (NSF). Eighteen of the thirty teams were ARL institutions from Canada and the United States.

This workshop followed directly from the November 2017 AAU-APLU Public Access Working Group Report and Recommendations, and was further informed by the National Academies recommendations in their 2018 consensus report, Open Science by Design: Realizing a Vision for 21st Century Research.  For those who attended the Association meeting, you will remember the update from Alexa McCray, Chair of the National Academies report, and Kacy Redd, Assistant Vice President, Science & Mathematics Education Policy from APLU who staffed the AAU-APLU working group.

This workshop was a pivotal experience at a time in which governmental agencies in the US, Canada, and the EU are focusing on open science, and when many institutions are figuring out how to apply and influence policies, practices and infrastructure. Thirty institutional teams, some of whose members had never worked together before, grappled with the above mentioned report recommendations with a commitment to a set of next steps. Most teams included someone from the research office, IT/high performance or academic computing, and the library, while some included provosts and faculty.

The NSF, NIH, Department of Energy, National Institute on Standards and Technology, the Department of Defense, OSTP, and National Academies actively participated. Alexa McCray and Sarah Nusser (chair of the AAU-APLU Public Access Working Group) set the context upfront: agencies, institutions, and institutional teams including their libraries need to collaboratively design researcher-centered data services and support; RDM is an integral part of good study design; and research data is a valuable institutional asset.

With this context in mind, the teams got to work, with many conversations, and commitments to work together on specific tasks back at their institutions, and to continue to work together as a whole.  I know we all look forward to the workshop report and decisive next steps. In the meantime, please find below a sample of identified priorities and an initial set of next steps for ARL, as well as steps to consider in your institutions.  

Institutional Priorities for Public Access to Research Data

A number of themes emerged when institutions shared their priorities for accelerating public access to research data. A sample of these included:

  • Facilitating low-barrier, seamless support and services for public access to data at the institutional-level through:
    • Establishment of local “one stop services” for research support services, including data management and sharing stakeholder groups to coordinate faculty-centered research data services;
    • Development of training and workshops for public access to data and open science practices, specifically focused on graduate students.
  • Collecting and then mining data management plans (DMP’s) of funded research to:
    • Plan for the deposit and curation of research data;
    • Work with faculty members earlier in the research process to facilitate good data management practices.
    • Identify high value data.
  • Leveraging existing partnerships, cross-institutional collaborations, resources, and tools to extend capabilities for research data services, such as the:

Initial Considerations on Community Next Steps

With our greatest impact being at the intersection between institutional, research and learning community, and public policy communities, ARL will work with:

  • Our colleagues at AAU and APLU, including
    • Articulating a vision, a strategy, and a direction for accelerating public access to data, and
    • Collaborating to scope, and as appropriate participate in, additional workshops for the university and agency communities.
  • Our Advocacy and Public Policy Committee and Research Communications and Collections Working Group to seek ways to influence federal data management policies by representing the needs, capacity, and role of the research library.
  • National agencies, associations, and our ARL Academy (as appropriate) to support the membership in developing open science and open scholarship fluency—particularly as it relates to methods, tools, and data management practices across the institution, and with other research communities.
  • Scholarly and professional societies as potential partners in articulating disciplinary expectations around research data quality, value, and retention.

What can you do as an ARL member?

Please reach out to Mary Lee or Judy to discuss the workshop and its outcomes. ARL member directors James Hilton, Erik Mitchell, and Steve Mandeville-Gamble were also present, along with 15 additional ARL institutions, many of whom included library staff on their teams.

The workshop provided a structured and focused opportunity for institution-based teams to meet and begin to map their assets—technology, policy, people, and other—as well as their challenges. Many institutional teams pledged to continue meeting. If you were not able to attend, you could circulate the agenda to your institutional colleagues (in the research office, in IT, in high performance or academic computing, and other) and encourage discussion along the same lines.

The workshop organizers at AAU and APLU are considering site visits beginning in early 2019 to include institutions that were not able to participate in the workshop. If this advances into a plan, please watch for an announcement of that opportunity.

This was a very engaging workshop, concluding with commitments on concrete deliverables.  It sets an optimistic tone for the path ahead.

ARL Celebrates Open Access Week with Commitment to Open Scholarship

*This is a guest blog post by Judy Ruttenberg, ARL program director for strategic initiatives.*

ARL’s mission is to catalyze the collective efforts of research libraries to enable knowledge creation and to achieve enduring and barrier-free access to information. In celebration of Open Access Week 2018, “Designing Equitable Foundations for Open Knowledge,” we’re sharing ARL’s programmatic priorities in supporting open scholarship in the coming year.

With a new focus area around open scholarship, ARL aims to shift the balance of library strategy, staffing, and budgets in favor of open content and what we are calling academy-owned infrastructure (also known as scholar-owned or scholar-led). The Association is looking at initiatives in support of this big bet in order to support member libraries in:

  • Increasing their purchasing and investment power to support the full range of their collections and research priorities
  • Making informed decisions about where to invest in new forms of open content and infrastructure based on shared criteria and local interests
  • Partnering in the research enterprise within their institutions in a range of activities from data curation and management to publishing

The past several years have seen a decisive global trend among funding bodies, government agencies, and research communities to accelerate scholarly discovery and improve its effectiveness through open practices (such as data sharing and large-scale collaboration) and digital technology. At the same time, some scholarly communities are pushing for greater experimentation and transparency in peer review (ASAPBio), sharing preprints (arXiv, bioRXiv, and many others), and deploying open annotation (hypothes.is) that show a glimpse of what the future of scholarly communication could look like post-journal formats—accessible, dynamic, and networked. Research libraries are positioned to lead in this transformation when deeply engaged in research and scholarly communities and when a shared understanding and commitment exists to collectively steward the full scholarly record. ARL is positioned to  broker a shared agenda with scholarly and learned societies and communities, along with academic leadership and US federal agencies, and partners in Canada, the EU, Australia, and the UK in support of equitable and open knowledge.

More recently, US research library leaders participated in crafting the recommendations of the AAU-APLU Public Access Working Group and the National Academies Open Science by Design, consensus report.  As an Association, ARL looks forward to working with the membership, partners, and stakeholder communities on implementing their recommendations. Our colleagues in Canada provided similar feedback through Portage to the Tri-Agency Research Data Management Policy and CARL will be a key partner in these initiatives.

By strengthening open research practices, policies, and standards, we strengthen libraries’ ability to support local research, scholarship, and collections priorities of all kinds in order to meet their missions.

Eleventh Circuit Reverses and Remands Georgia State E-Reserves Case (Again)

The long saga of the Georgia State University (GSU) e-reserves case continues as the Court of Appeals for the Eleventh Circuit reversed the district court’s ruling which had found that the vast majority of GSU’s use of works in its e-reserves constituted a fair use. This is the second time the Eleventh Circuit has reviewed the case, and the second time it has reversed.

In 2008, publishers sued GSU for copyright infringement, arguing that the use of unlicensed excerpts of copyrighted works in the e-reserves constituted infringement. GSU defended itself, relying on the right of fair use. In the first bench trial, the district court ruled in favor of fair use for 43 of the 48 cases of alleged infringement. The Eleventh Circuit reversed and remanded the case in 2014, directing the lower court to re-examine its weight to market substitution and re-evaluate the four fair use factors holistically, rather than taking an arithmetic approach (i.e., if three fair use factors favor the use, but one disfavors it, fair use should always apply). On remand, the district court re-evaluated the four factors and found that 44 of the 48 cases constituted fair use. In her analysis, Judge Evans assigned each factor a weight: “The Court estimates the initial, approximate respective weights of the four factors as follows: 25% for factor one, 5% for factor two, 30% for factor three, and 40% for factor four.” The publishers again appealed to the Eleventh Circuit, which heard the case in 2017. (Here’s a link to ARL’s amicus brief in the second appeal.)

On October 19, 2018, the Eleventh Circuit released its 25 page opinion—more than a year after hearing oral arguments in the case—finding that the district court again erred in its evaluation of fair use. The Eleventh Circuit suggests that the district court was only mandated to re-evaluate its analysis on the second and third factors, but had instead also re-evaluated its analysis on factor four (in which the district court found in the first trial that in 31 cases, the fourth fair use factor weighed against fair use).

Additionally, the Eleventh Circuit points out that “The district court again applied a mathematical formula in its overall analysis of fair use,” which it had been instructed against. Although the district court couched the given weights as “initial” and “approximate,” the Eleventh Circuit found that the district court only adjusted these factors in four instances and di not adjust the other factors in the overall analysis. Thus, “We conclude that the district court’s quantitative rubric was an improper substitute for a qualitative consideration of each instance of copying in the light of its particular facts.” The Eleventh Circuit has remanded the case, directing the district court to use a holistic approach to fair use, and avoid any mathematical approach with respect to the four factors.

Another issue the Eleventh Circuit opinion addresses is whether the cost of purchasing licenses affects the third factor; the district court in the second trial considered the price of use on two ocassions. The Eleventh Circuit rules that price should not be taken into account when evaluating the amount and substantiality of the portion of the work used.

While the Eleventh Circuit reversed and remanded on the above issues, it affirmed the district court’s decision not to reopen the record. Publishers in 2015 filed a motion to reopen, asserting the need to introduce “Evidence of GSU’s ongoing conduct (e.g. its use of E-Reserves during the most recent academic term)” as well as evidence of the availability of digital licenses. Here, the Eleventh Circuit notes that this decision is within the discretion of the trial court.

Kevin Smith posted about the GSU case on In the Open, with an excellent summary of what the Eleventh Circuit’s opinion (as well as its last opinion) does not do, and what, as a result, the publishers have lost on:

…But the big principles that the publishers were trying to gain are all lost. There will be no sweeping injunction, nor any broad assertion that e-reserves always require a license. The library community will still have learned that non-profit educational use is favored under the first fair use factor even when that use is not transformative. The best the publisher plaintiffs can hope for is a split decision, and maybe the chance to avoid paying GSU’s costs, but the real victories, for fair use and for libraries, have already been won.

Eleventh Circuit Finds Georgia’s Annotated State Laws Not Copyrightable

On Friday, October 19, the Court of Appeals for the Eleventh Circuit found that Georgia’s annotated laws are not protected by copyright, reversing the district court. In Georgia v. Public.Resource.Org, Georgia argued that its annotated state laws are protected by copyright. Public.Resource.org posted these laws online—it has for several other laws and codes in other jurisdictions—and was subsequently sued for copyright infringement. Public.Resource.org argued that because only the annotated versions are considered official versions, they should be free to be read by the public. As a policy matter, this outcome makes sense; one should be able to read, for free, the laws that they must abide by. The Eleventh Circuit agreed with Public.Resource.org.

The Eleventh Circuit did not state that all annotated laws are not copyrightable, but instead noted that in the present case, the annotations were done at the direction of state officials and intertwined with the law itself. The court sums up its conclusion: “the annotations in the OCGA are sufficiently law-like so as to be properly regarded as a sovereign work. Like the statutory text itself, the annotations are created by the duly constituted legislative authority of the State of Georgia. Moreover, the annotations clearly have authoritative weight in explicating and establishing the meaning and effect of Georgia’s laws. Furthermore, the procedures by which the annotations were incorporated bear the hallmarks of legislative process, namely bicameralism and presentment. In short, the annotations are legislative works created by Georgia’s legislators in the exercise of their legislative authority.”

The district court had ruled that the annotations were subject to copyright, then proceeded to reject the argument that Public.Resource.Org’s use was fair use. However, as the Eleventh Circuit notes, “Because we conclude that no copyright can be held in the annotations, we have no occasion to address the parties’ other arguments regarding originality and fair use.”

ARL submitted an amicus brief in this case together with ALA, ACRL, Public Knowledge and other groups and individuals—as well as in a related case, ASTM v. Public.Resource.Org, supporting Public.Resoure.org.

What’s In (and Out) of the IP Chapter of the United States, Mexico, Canada Trade Agreement

Yesterday, Canada announced—just in time for the self-imposed deadline by the negotiating parties of September 30— that it would join the trade agreement with the United States and Mexico. This agreement, a renegotiation of NAFTA, which apparently is also being called the US-Mexico-Canada Agreement or USMCA, includes much more prescriptive provision on intellectual property than what was included in the original NAFTA. The original NAFTA text on intellectual property, written in a different era of trade agreements, does not include language on copyright term or issues covered by the WIPO Internet Treaties (NAFTA was negotiated before the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty).

Presumably any deal that Canada agreed to in the renegotiation was going to be more prescriptive, with greater rights for rightholders, than in the original NAFTA. However, it is also worse, at least in some respects, than what Canada, Mexico and the United States—and nine other countries—had agreed to in the Trans-Pacific Partnership Agreement (TPP) (see analysis of that text here), which the United States withdrew from after Trump became President. (Note: after the United States’ withdrawal from the TPP, the remaining 11 countries in the negotiations—Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam—renegotiated and formed the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, or CPTPP, which suspended many of the United States’ demands on copyright and other IP provisions).

Here’s a look at what’s in—and out—of the renegotiated IP chapter, as compared to both the original NAFTA text and the TPP text:

Limitations and Exceptions 

Arguably the biggest disappointment in the recently released text is what the IP chapter does not include. The TPP had included language based off a United States proposal from 2012 on limitations and exceptions. The TPP obligated parties to try and achieve balance in their copyright systems. Article 18.66 of the TPP read: 

Each Party shall endeavour to achieve an appropriate balance in its copyright and related rights system, among other things by means of limitations or exceptions that are consistent with Article 18.65 (Limitations and Exceptions), including those for the digital environment, giving due consideration to legitimate purposes such as, but not limited to: criticism; comment; news reporting; teaching, scholarship, research, and other similar purposes; and facilitating access to published works for persons who are blind, visually impaired or otherwise print disabled.

While the language could have been stronger—for example by mandating that parties achieve a balance, rather than merely “endeavor[in]g” to do so, a provision on balanced copyright was seen as a success, recognizing the importance of limitations and exceptions in copyright. When trade agreements or laws only include provisions regarding the rights of rightholders, the rights of users get ignored. It is disappointing that the United States chose not to propose balancing language, but instead included limiting language with respect to limitations and exceptions (requiring parties to “confine” limitations and exceptions to the three-step test of 1) certain special cases; 2) that do not conflict with the normal exploitation of the work; and 3) do not unreasonably prejudice the legitimate interest of the right holder.). 

Copyright Term

Copyright term is one of the most significant areas with respect to copyright where Canada will be forced to change its law. As noted above, NAFTA did not contain provisions dictating copyright term (and, of course, was negotiated prior to the United States’ own term extension). Canada currently has a copyright term of the life of the author plus fifty years, but with the USMCA text, will need to extend that term to life plus seventy. Perhaps this concession was to be expected since TPP parties also agreed to the term, yet the consequences to the public domain are significant. The United States has seen a moratorium on published works entering the public domain for the last twenty years due to copyright term extension agreed to in 1998. The public domain is critical for the creation of new knowledge and culture and copyright term plays a significant role in closing off the public domain. This term goes well beyond international standards.

Additionally, Canada agreed to further extension of copyright term for corporate works, beyond what had been agreed to in the TPP. While the TPP parties agreed to providing corporate works (works that are not measured on the life of the author) with 70 years of protection, the USMCA text requires 75 years.

Technological Protection Measures

Because NAFTA went into force in 1994, it did not include provisions that have been found in the era after the WIPO Internet Treaties, such as anti-circumvention measures.  The new provisions in USMCA mirror the text on anti-circumvention of several past bilateral trade agreements by the United States. It requires parties to make it an offense to “knowingly, or having reasonable grounds to know” circumvent technological protection measures, or to manufacture or distribute devices primarily designed or are promoted for the purposes of circumvention. This language is highly prescriptive and detailed. It also includes a closed-list set of seven limitations and exceptions to the anti-circumvention measures, plus a provision permitting “additional exceptions or limitations for noninfringing uses of a particular class of works, performances, or phonograms, when an actual or likely adverse impact on those noninfringing uses is demonstrated by substantial evidence in a legislative, regulatory or administrative proceeding in accordance with the Party’s law.” The text also makes circumvention an independent and separate cause of action, apart from any underlying copyright infringement.

On a positive note, the language regarding additional limitations and exceptions is not restricted to a three-year rulemaking cycle, as exists in the United States and several other trade agreements. From the agreed-to text, it appears that parties may provide for permanent limitations and exceptions, if permitted by domestic law.

While similar language regarding making circumvention an independent cause of action existed in the TPP, the TPP provision was potentially mitigated by a helpful footnote reading, “A Party may provide that the obligations described . . .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.” Making circumvention a “separate and independent cause of action” is controversial and makes little sense, negatively impacting legitimate and non-infringing circumvention.

It is also disappointing to see the inclusion once more of a closed-list set of limitations and exceptions, mirroring those found in the United States’ copyright law, which have been criticized domestically as being overly-narrow and, in some cases, useless.

Objectives and Principles

The USMCA includes high-level objectives and principles that recognize at least some level of balance and mirrors language found in the TPP. Article 20.A.2, for example, notes that intellectual property protection and enforcement “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.” Similarly, the principles provide that parties may “adopt measures necessary to protection public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Chapter.”

While this acknowledgement of balance is welcome, the lack of specific provisions regarding balance underscores the fact that the agreement strengthens the rights of rightholders, ratcheting up protections, without providing the same for users.

Remedies Allow for Judicial Discretion

Another welcome inclusion is language on proportionality that was also found in the TPP, requiring parties to “take into account the need for proportionality between the seriousness of the intellectual property infringement, and the applicable remedies and penalties, as well as the interests of third parties.”

ISP Liability

The USMCA language includes prescriptive provisions regarding safe harbors for Internet service providers. Like the TPP, it includes a carve-out to accommodate the Canadian system of notice-and-notice (as opposed to the United States’ notice-and-takedown). As noted on this blog previously, the flexibility to implement notice-and-notice is limited to Canada only because it is restricted to where such a system exists as “the date of agreement in principle” to USMCA.

For additional reading, Michael Geist has a nice summary from a Canadian perspective.

Software Preservation Best Practices in Fair Use to Help Safeguard Cultural Record, Advance Research

*Cross-posted from ARL News*

*Edited to add links to blog posts by Patricia Aufderheide and Brandon Butler*

The new Code of Best Practices in Fair Use for Software Preservation provides clear guidance on the legality of archiving legacy software to ensure continued access to digital files of all kinds and to illuminate the history of technology.

This Code was made by and for the software preservation community, with the help of legal and technical experts. The publication provides librarians, archivists, curators, and others who work to preserve software with a tool to guide their reasoning about when and how to employ fair use—the legal doctrine that allows many value-added uses of copyrighted materials—in the most common situations they currently face.

Libraries, archives, and museums hold thousands of software titles that are no longer in commercial distribution, but institutions lack explicit authorization from the copyright holders to preserve these titles or make them available. Memory institutions also hold a wealth of electronic files (texts, images, data, and more) that are inaccessible without this legacy software. The preliminary report released by the project team in February documents high levels of concern among professionals worried that while seeking permission to archive software is time-consuming and usually fruitless, preserving and providing access to software without express authorization is risky. Meanwhile, digital materials languish, and the prospects for their effective preservation dim.

In interviews with the project team, software preservation professionals made it clear that users and uses for legacy software are as various as human inquiry, and will multiply over time. In the words of Jessica Meyerson, a founder of the Software Preservation Network, “our cultural record is increasingly made up of complex digital objects.” Another interviewee invoked technology-investor Marc Andreessen’s argument that “software is eating the world,” observing that access to the digital cultural record is itself dependent on software.

The Code of Best Practices in Fair Use for Software Preservation will help this community overcome legal uncertainty by documenting a consensus view of how fair use applies to core, recurring situations in software preservation. Fair use has become a powerful tool for cultural memory institutions and their users, allowing them to realize the potential of stored knowledge with due respect for the interests of copyright holders. (See the 2012 Code of Best Practices in Fair Use for Academic and Research Libraries.) Fair use holds the same potential where software preservation is concerned, particularly given the transformative nature of the uses described in the Code.

The Code of Best Practices in Fair Use for Software Preservation presents a series of five situations in which librarians, archivists, curators, and others working to preserve software can employ fair use. The Code describes the activities, states the principle informing the choice to employ fair use, and makes clear the limitations of such use—that is, the outer bounds of the community consensus at this time. The five situations covered are:

  • Accessioning, stabilizing, evaluating, and describing digital objects
  • Documenting software in operation, and making that documentation available
  • Providing access to software for use in research, teaching, and learning
  • Providing broader networked access to software maintained and shared across multiple collections or institutions
  • Preserving files expressed in source code and other human-readable formats

The Code also includes a brief introduction to software preservation and copyright, an epilogue on the future of software preservation, and two appendices on (1) the fair use doctrine and preservation practice in general and (2) other copyright-related issues related to preservation.

This Code is the result of a project funded by the Alfred P. Sloan Foundation. Co–principal investigators Patricia Aufderheide of the Center for Media & Social Impact at American University’s (AU) School of Communication, Brandon Butler of the University of Virginia Library, Krista Cox of the Association of Research Libraries, and Professor Emeritus Peter Jaszi of the AU Washington College of Law conducted extensive interviews and focus groups with software preservation experts and other stakeholders to produce this Code. The project was coordinated by the Association of Research Libraries (ARL), the Center for Media & Social Impact at AU, and the Program on Information Justice and Intellectual Property at AU Washington College of Law.

Download, read, and use the Code of Best Practices in Fair Use for Software Preservation. The Code will be supported by webinars, workshops, online discussions, and educational materials later this year and in 2019. To stay up to date on news about this project, watch the ARL website, follow us on Facebook or Twitter, or subscribe to our email news lists. For more information, contact Krista Cox, krista@arl.org.

See also:

Pat Aufderheide, “Fair Use and the Future of Digital Culture,” CMSImpact

Brandon Butler, “Introducing the Code of Best Practices in Fair Use for Software Preservation,” The Taper