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Library Copyright Alliance Responds to Copyright Office Inquiry on Visual Works

The Library Copyright Alliance filed a response to the U.S. Copyright Office’s Notice of Inquiry on Copyright Protection for Certain Visual Works, focusing largely on the importance of fair use and the detrimental effects of the current lengthy copyright term in the United States.

The response opens by pointing out,

In the past, the difficulty of identifying or locating the owners of the copyrights in visual works was a significant challenge for libraries.  Visual works are particularly susceptible to “orphaning” and often there is ambiguity in their copyright ownership.  This orphan work problem had a chilling effect on libraries interested in important preservation and archival uses of visual works.  It also impeded the use of collections of visual works for teaching and classroom use.  Indeed, the orphan work challenge prompted LCA to strongly support enactment of the Shawn Bentley Orphan Works Act in 2008.  However, significant changes int he copyright landscape since then convince us that libraries no longer need legislative reform in order to make appropriate uses of “orphaned” visual works in their collections.

The response then discusses the changed landscape, explaining that fair use is less uncertain today with a number of cases that have clarified the scope of this important doctrine.  Additionally, codes of best practices have guided the use of digitization and making available of special collections and archives, including for orphan works.The fact that injunctions are less likely and mass digitization is more common also promote greater comfort in using orphan works.

The statement then notes that the orphan works problem is largely a result of the current copyright term in the United States that “is already unacceptably long, limiting access to visual works that should be in the public domain.”  While not discussed in this response, it is worth noting that what is being called the last round of negotiations for the Trans-Pacific Partnership Agreement (TPP), a large regional trade agreement in the Asia-Pacific region that currently has twelve negotiating parties, copyright term will be an issue for discussion.  Leaked text has revealed efforts by the United States to push for all parties to the TPP to adopt the lengthy term of life of the author plus 70 years, despite opposition to the imposition of copyright term extension.

The Copyright Office has extended its comment deadline to October 1, so there is still time to submit a response to the notice of inquiry.

Thoughts on Fair Use and the Copyright Office Report/Proposal on Mass Digitization

On June 4, 2015 the Copyright Office released its Report on Orphan Works and Mass Digitization. Previous coverage of the orphan works section of the report is available here and the Library Copyright Alliance’s response to the report is available here. This post focuses on the section of the report covering mass digitization and lays out concerns with the report’s proposal and treatment of fair use. The Copyright Office’s report proposes an extended collective licensing (ECL) system, and has issued a Notice of Inquiry requesting public comments, due on August 10, 2015.

Copyright Office Report and Proposed ECL Program

During the March 2014 orphan works roundtables, the general view was that ECL was not a workable solution and there was a lack of interest in pursuing this approach. Despite the opposition to or wariness of ECL, the Copyright Office is nonetheless recommending ECL.

The report suggests that mass digitization cannot be accomplished with the exception of narrow circumstances. The report acknowledges that courts have concluded that mass digitization for full-text search and access for the print-disabled are protected by fair use, but argue that these cases “do not extend to the wider dissemination of copyrighted works without permission or compensation.”

The Copyright Office’s report also discusses voluntary stakeholder agreements, concluding that such arrangements would not protect users from infringement claims by copyright owners that are not part of the agreement.

The Copyright Office proposes a pilot ECL program, limited to specific categories of works. The report suggests “that ECL makes the most sense for the following works: (1) literary works; (2) pictorial or graphic works published as illustrations, diagrams, or similar adjuncts to literary works; and (3) photographs.” The proposed program would be limited to uses “undertaken for nonprofit educational or research purposes and without any purpose of direct or indirect commercial advantage.” While the proposal would allow a for-profit entity to use the program, “it would not be permitted to generate revenue from the collection by, for example, displaying advertisements or charging fees.” According to the proposal, Copyright Office would be tasked with approving collective management organizations (CMO) as part of the ECL. The approved CMO would represent all rights holders, except for those that affirmatively opt-out. The proposal suggests that the proposed Google Books settlement can provide an example of how license agreements can be structured.

In terms of royalty payments, the report states that, “while a CMO should be permitted to deduct fees from the license payments it collects, such deductions should be limited to amounts reasonably necessary to cover specified operational costs.” Where a CMO fails to locate a rights holder who is owed royalties within a specified time period, the CMO should transfer the funds to a trust account. If the funds in the trust account remain unclaimed after three years, the CMO could deduct a reasonable fee and then distribute the balance to educational or literacy based charities.

The Copyright Office’s report does suggest a fair use “savings clause providing that nothing in the statute is intended to affect the scope of fair use.”

Mass Digitization and Fair Use

Unfortunately, notwithstanding the inclusion of a fair use savings clause, the report seems to mischaracterize the importance of fair use in many mass digitization projects. The report asserts that the ECL proposal is intended for “activity for which there is broad agreement that no colorable fair use claim exists: providing digital access to copyrighted works in their entirety.” The Copyright Office continues:

To the extent it could be argued that any individual aspect of a mass digitization project might by itself qualify as fair use (e.g., the underlying digital copying), we would expect that view to be reflected in the overall license fee negotiated between the CMO and the user. That is, where the parties agree that a particular use would likely be deemed fair under established law, the portion of the license fee pertaining to that activity would likely be at or near zero (emphasis added).

This paragraph raises a number of concerns. First, it assumes that the parties must agree that a use is fair and implies that a user must first discuss and negotiate with the CMO. Fair use is a right and a user conducting activities that are fair uses need not engage in any prior discussions or negotiations with rights holders. While there may be circumstances in which a user wishes to first notify or discuss a particular use with the rights holder, he or she is not required to do so.

Furthermore, even with a fair use savings clause, parties may not agree that a use is fair use. In the Authors Guild v. HathiTrust litigation, the Authors Guild asserted that where HathiTrust’s activities went beyond the scope of what is permitted under Section 108, the Copyright Act’s specific exception for libraries and archives (which contains a fair use savings clause), they could not be considered fair use. While the Second Circuit dismissed this argument in a footnote to its opinion, other plaintiffs may try to make similar arguments.

Moreover, in situations where precedent strongly favors an understanding that a particular use would be considered a fair use , the rights holders might argue that the precedent is wrongly decided. Some rights holders argue that the fair use right has been applied too broadly by the courts. During the orphan works roundtables, one participant compared recent fair use case law to Plessy v. Ferguson, the 1892 Supreme Court case that upheld the “separate but equal” doctrine until being overturned by Brown v. Board of Education in 1954. Relatedly, during the orphan works roundtables, there were repeated suggestions that there were only two cases—HathiTrust and Google Books, both of which were on appeal at the time of the roundtables—that supported mass digitization and could be overturned. As Jonathan Band pointed out at the roundtable, however, various other Circuit Courts of Appeals cases also support mass digitization. He noted that HathiTrust and Google Books were based on earlier cases such as Kelly v. Arriba Soft, Perfect Ten v. Amazon and A.V. v. iParadigms.

Finally, rights holders may attempt to distinguish precedent on the basis of minor factual differences.

Special Collections

It appears that the Copyright Office is interested pursuing an ECL pilot program for the very types of collections that libraries already digitize and allow access to under fair use. The report notes, “The Office is particularly interested in stakeholder views regarding examples of mass digitization projects that may be appropriate for licensing under the proposed pilot. These comments may include (but need not be limited to) descriptions of particular collections of copyrighted works (e.g., Depression-era photographs) that prospective users may wish to digitize and make available through ECL.”

Digitizing a collection of Depression-era photographs seems to be a great example of what would likely be fair use. This example suggests a special collection of works that are primarily orphan works. It is unlikely that the rights holders for such works could be identified and located. These works are not likely to be exploited commercially and digitizing them and making them accessible online would therefore not harm the original market for the works. Digitization projects involving special collections often include enhancements that make the collection more useful, such as the inclusion of metadata.

The ARL Code of Best Practices in Fair Use for Academic and Research Libraries sets forth limitations and enhancements for a library’s fair use case in the context of digitizing special collections and making them electronically accessible:

PRINCIPLE:

It is fair use to create digital versions of a library’s special collections and archives and to make these versions electronically accessible in appropriate contexts.

LIMITATIONS:

  • Providing access to published works that are available in unused copies on the commercial market at reasonable prices should be undertaken only with careful considerations, if at all. To the extent that the copy of such a work in a particular collection is unique (e.g., contains marginalia or other unique markings or characteristics), access to unique aspects of the copy will be supportable under fair use. The presence of non-unique copies in a special collection can be indicated by descriptive entries without implicating copyright.
  • Where digitized special collections are posted online, reasonable steps should be taken to limit access to material likely to contain damaging or sensitive private information.
  • Full attribution, in a form satisfactory to scholars in the field, should be provided for all special collection items made available online, to the extent it is reasonably possible to do so.

ENHANCEMENTS:

  • The fair use case will be even stronger where items to be digitized consist largely of works, such as personal photographs, correspondence, or ephemera, whose owners are not exploiting the material commercially and likely could not be located to seek permission for new uses.
  • Libraries should consider taking technological steps, reasonable in light of both the nature of the material and of institutional capabilities, to prevent downloading of digital files by users, or else to limit the quality of files to what is appropriate to the use.
  • Libraries should also provide copyright owners with a simple tool for registering objections to online use, and respond to such objections promptly.
  • Subject to the considerations outlined above, a special collection should be digitized in its entirety, and presented as a cohesive collection whenever possible.
  • Adding criticism, commentary, rich metadata, and other additional value and context to the collection will strengthen the fair use case.
  • The fair use case will be stronger when the availability of the material is appropriately publicized to scholars in the field and other persons likely to be especially interested.

A number of libraries rely on fair use in the digitization of their special collections. For example, Duke University digitized a collection of historic TV commercials, called adViews. While Duke secured agreements from many of the rights holders of the commercials, it also relied on fair use because of the impossibility of identifying all rights holders of TV commercials. As is the case with many special collections, Duke enhanced its fair use position by adding additional videos to the collection featuring executives talking about TV advertising in the early 1960s as well as faculty members discussing the ways they used the materials in teaching.

Another great example is New York Public Library’s (NYPL) digitization of a collection of materials from the 1939 New York World’s Fair. The collection included records, documents, promotional photographs and other ephemera. As detailed by this Fair Use Week guest blog post by Greg Cram, Associate Director of Copyright and Information Policy for New York Public Library, it was extremely difficult to determine whether the works were in copyright and a good-faith search for rights holders “was time-consuming and, ultimately, fruitless.” Relying, in part, on statements and codes of best practices, as well as views of academics, NYPL conducted a fair use analysis and decided to “move forward with digitization of portions of the collection after balancing the education benefit of the undertaking against the risk that a rights holder might subsequently surface” and posted selections online. NYPL created a free iPad application to feature the digitized content and this application was named one of Apple’s “Top Education Apps” of 2011.

These are just two of the many examples where mass digitization projects have relied on fair use. Special collections are a prime example where fair use may provide a strong basis for undertaking these projects. In both of the cases above, it does not appear that rights holders have contacted the institutions to complain or ask that they limit the uses of the digitized works.

In sum, the Copyright Office’s proposed ECL pilot program is inappropriate for special collections.

 

 

Copyright Office Releases Report on Orphan Works and Mass Digitization; Recommends Burdensome Legislation

On June 4, 2015, the Copyright Office released its Report on Orphan Works and Mass Digitization, including recommendations for legislation on orphan works and the creation of an extended collective licensing (ECL) regime for mass digitization. This post focuses only on the Copyright Office’s recommendations on orphan works.  This blog post is also available as an issue brief here.

Report on Orphan Works

The Copyright Office’s report asserts that “the orphan works problem is widespread and significant” and that “anyone using an orphan work does so under a legal cloud, as there is always the possibility that the copyright owner could emerge after the use commenced and seek substantial infringement damages, an injunction, and/or attorneys’ fees.” The report sets forth the problem of orphan works, noting:

The uncertainty surrounding the ownership status of orphan works does not serve the objectives of the copyright system. For good faith users, orphan works are a frustration, a liability risk, and a major cause of gridlock in the digital marketplace. The consequences of this uncertainty reverberate through all types of uses and users, all types and ages of works, and across all creative sectors. By electing to use a work without permission, users run the risk of an infringement suit resulting in litigation costs and possible damages. By foregoing use of these works, a significant part of the world’s cultural heritage embodied in copyright-protected works may not be exploited and may therefore fall into a so-called “20th-century digital black hole.”

The report acknowledges that fair use jurisprudence has moved in a direction that favors the use of orphan works, notably the HathiTrust and Google Books litigation. It notes that this evolution of fair use case law has prompted groups such as the Library Copyright Alliance, of which ARL is a member, to shift its position away from advocating a legislative solution to the orphan works problem. However, the Copyright Office rejects the idea that fair use can provide an adequate solution because:

The judiciary has yet to explicitly address how to apply fair use to orphan works. Thus, the informed and scholarly views of some commenters as to the application of fair use in specific orphan works situations do not yet have as their basis any controlling case law. Also, fair use jurisprudence is, because of its flexibility and fact-specific nature, a less concrete foundation for the beneficial use of orphan works than legislation, and is always subject to change . . . The Office does not believe that reliance on judicial trends, which may turn at any point, is a sufficient basis to forgo a permanent legislative solution.

The Copyright Office also rejects the role of best practices in an orphan works solution, criticizing the ARL Code of Best Practices as well as the Statement of Best Practices in Fair Use of Orphan Works for Libraries & Archives because they fail to “provide guidance on how a library should go about determining if a work is orphaned in the first place, beyond the lack of commercial exploitation by the owners and the likelihood that the owners could not be located.” Additionally, the report criticizes fair use best practices because they “often are arrived at absent consultation with authors and other copyright owners, and therefore run the risk of being more of an aspirational document—what a community believes fair use ought to be – than a descriptive one.”

Rejecting fair use as a solution, as well as other models such as a government license, the Copyright Office proposes a model that provides for limitations on liability.

Discussion Draft for Legislation

The discussion draft for legislation on orphan works is largely based off the Shawn Bentley Orphan Works Act of 2008, which was passed by the Senate, but failed in the House of Representatives.

Limitations on Remedies

The Copyright Office’s draft legislation would limit remedies to reasonable compensation, defined as the amount a willing buyer and willing seller in the position of the user and the rightholder would have agreed to immediately before the infringement began, for eligible users who can establish that they engaged in a good faith diligent search.

The order to pay reasonable compensation does not apply to nonprofit educational institutions, museums, libraries, archives or public broadcasting entities where 1) the infringement was performed without any purpose of direct or indirect commercial advantage; 2) the infringement was primarily education, religious or charitable in nature; and 3) the infringer ceases to use the work after receiving notice of the claim of infringement and having opportunity to conduct a good faith investigation of the claim.

Injunctions may be granted, subject to an exception where the use is recast, transformed, adapted or integrated into a work “with a significant amount of original expression” and the infringer pays reasonable compensation and provide attribution. This limitation on injunctions does not apply, however, where the owner is the author of the work objects, alleging that the new use “would be prejudicial to the owner’s honor or reputation, and this harm is not otherwise compensable.” This restriction on the limitation on injunctions is new; it was not present in the 2008 Shawn Bentley Act.

Good Faith Diligent Search

A good faith diligent search requires, at a minimum, a search of the Copyright Office records, searching sources of copyright authorship, ownership and licensing information, the use of technology tools, printed publications and “where reasonable, internal or external expert assistance,” and the use of databases, including the Internet. In addition, a good faith diligent search “shall include any actions that are reasonable and appropriate under the facts relevant to the search, including actions based on facts known at the start of the search and facts uncovered during the search, and including a review, as appropriate, of Copyright Office records not available to the public through the Internet that are reasonably likely to be useful in identifying and locating the copyright owner.”

The legislation provides that the Copyright Office will maintain and update “statements of recommended practices” for diligent searches for categories of works. These statements “will ordinarily include reference to materials, resources, databases, and technology tools that are relevant to a search” and may consider comments submitted by interested stakeholders.

The requirements for a good faith diligent search set minimum standards that are highly detailed and burdensome. In addition to the minimum standards for a diligent search, users are required to take “any actions that are reasonable and appropriate” that may include review of Copyright Office records that are not available over the Internet, resulting in extremely time consuming and resource intensive searches.

Notice of Use Requirement

This discussion draft also includes a “Notice of Use” requirement, directing users to submit detailed information to the Copyright Office about the intended use and the nature of the search. The “notice of use” must include the following information: 1) type of work used; 2) description of the work; 3) summary of the qualifying search conducted; 4) any other identifying indicia available to the user; 5) source of the work (such as the library or website where the work was located or publication where the work originally appeared); 6) certification that the user performed a qualifying search; and 7) name of the user and description of how the work will be used.

The version of the Shawn Bentley Act passed by the Senate in 2008 did not contain a Notice of Use Provision. When the bill went over to the House, Congressman Howard Berman, then chairman of the House IP Subcommittee, added a notice of use provision as a “poison pill.” Berman was highly skeptical of the need for legislation, so he added the notice of use requirement because he knew it would be strongly opposed by the bills’ proponents, including the libraries and the publishers. The tactic succeeded, and the bill died in the House.

The notice of use is a burdensome requirement that will require time and resources and could significantly undermine the usefulness of the legislation. The high level of detail and documentation required is unworkable, particularly for large volumes of uses. In addition, the Copyright Office does not have the technological infrastructure nor the staff to undertake the effort proposed.

Fair Use Savings Clause

The discussion draft includes a fair use savings clause:

PRESERVATION OF OTHER RIGHTS, LIMITATIONS, AND DEFENSES— This section does not affect any right or any limitation or defense to copyright infringement, including fair use, under this title. If another provision of this title provides for a statutory license that would permit the use contemplated by the infringer, that provision applies instead of this section.

This savings clause is critical in providing assurances that users of orphan works may still rely on fair use. As was pointed out by the Library Copyright Alliance (LCA), individual libraries, and other commentators, fair use jurisprudence has moved in a positive direction. Court cases that have been decided in recent years have strongly favored fair use, particularly in transformative use cases.

Analysis

The Copyright Office’s denigration of fair use as a solution to the orphan works problem is disappointing.  What the Copyright Office fails to acknowledge in its analysis of recent fair use jurisprudence is that fair use is a fairly predictable doctrine. As Professor Pamela Samuelson noted in a 2009 article entitled, Unbundling Fair Uses, “Fair use is both more coherent and more predictable than many commentators have perceived once one recognizes that fair use cases fall into common patterns.”  The Copyright Office’s suggestion that because fair use is flexible and fact-specific it is insufficient to address orphan works, is also misleading. By analogy, while the Copyright law does not have an explicit limitation or exception for the use of VCRs or DVRs, specific legislation to ensure that recording using such devices is lawful is not necessary because it is widely understood that such activity is fair use.

Furthermore, the Copyright Office suggests that even where fair use may be a defense, “many will choose to forego use of the work entirely rather than risk the prospect of expensive litigation.” The Copyright Office fails to recognize that its proposed burdensome legislation that requires extremely time and resource intensive searches as well as notice of use requirements, could also cause users to forego the use of the work. Additionally, where legislation appears overly complicated, while institutions and corporations may make use of it, individual users may find compliance difficult. The TEACH Act is one such example. The difficult and burdensome requirements of the TEACH Act have led to few, if any institutions from using it.

With respect to community best practices, it is true that they are made without consultation with rightholders, but this is a conscious decision. Community best practices “arise from the community’s values and mission. It presents a clear and conscientious articulation of the values of that community, not a compromise between those values and the competing interests of other parties.” Best practices that have been negotiated with rightholders would likely fall far short of what the law actually permits under fair use. Indeed, an effort to develop guidelines in the late 1990’s under the auspices of the USPTO failed to produce any guidance to the various communities of interest after several years of effort.  Furthermore, these best practice documents are grounded in community practices, often supported by case law, not merely aspirational documents.

As noted above, the draft legislation has significant problems including overly burdensome and complicated requirements.  The requirements for a reasonably diligent search and limitations on injunctions are highly problematic.  Finally, the notice of use provision is as poisonous now as it was in 2008.  If it is included in an orphan works provision, it will ensure that the provision is rarely, if ever, used.

What’s Missing from the Register’s Proposals

*Guest post by Jonathan Band, policybandwidth*

In her wrap-up testimony yesterday in the House Judiciary Committee’s two-year Copyright Review, Maria Pallante, the Register of Copyrights, identified three categories of policy issues: those that are ready for legislative process, those that warrant near-term study and analysis, and those that warrant further attention. Unfortunately, what many perceive to be the Copyright Act’s greatest flaw, the existing structure of statutory damages, received just a passing reference in the third “warrant attention” category. As numerous witnesses testified during the course of the Copyright Review, the threat of statutory damages of $150,000 per work infringed chills investment in innovative technologies and allows copyright trolls to extort settlements that greatly exceed the actual harm caused.

The Register paid more attention to the Digital Millennium Copyright Act’s prohibition on the circumvention of technological protection measures, 17 U.S.C. § 1201, which appears on the first two lists. While the Register’s recognition of Section 1201’s flaws is welcome, the Copyright Office has the power to address some of these deficiencies itself without additional Congressional action.

Register Pallante correctly observes that a wide range of stakeholders support “mak[ing] it easier to renew exemptions that have previously been adopted and are in force at the time of the triennial rulemaking proceeding.” She states that “the Copyright Office agrees that the process of renewing existing exemptions should be adjusted to create a regulatory presumption in favor of renewal.” Accordingly, she feels that “it would be beneficial for Congress to amend Section 1201 to provide that existing exemptions will be presumptively renewed during the ensuing triennial cases where there is no opposition.”

However, the Copyright Office need not wait for Congressional action to make the renewal process easier. The Register asserts that “the Section 1201 statutory framework requires that, to continue an existing exemption, proponents must bear the legal and evidentiary burden of justifying the exemption anew .…” In fact, Section 1201 itself imposes no such burden. It simply states that the Librarian must make a determination in a rulemaking proceeding whether to grant an exemption to users of a certain class of works and that the exemption lasts for three years. The statute says nothing about how the Librarian should handle renewals of existing exemptions.

The notion that a proponent must justify an exemption de novo every three years derives from a single sentence in a single committee report issued during the legislative process that resulted in the DMCA. This sentence states that the Librarian’s “assessment of adverse impacts on particular categories of works is to be determined de novo.” The Copyright Office in its administration of the rulemaking is not bound by this report language. Thus, it could decide to create a rebuttable presumption in favor of renewal.

Moreover, even if the Office chooses to give weight to this language, the language only states that the Librarian must take a fresh look at whether users of a class of works are likely to be adversely affected by Section 1201’s prohibition. It does not say that proponents must create a new legal and evidentiary record in support of renewal of the exemption. Instead, the Copyright Office and the Librarian could just review the record created in the previous rulemaking, as supplemented by interested parties in the current rulemaking. If opponents of renewal do not offer substantial evidence that renewal would harm the market for or value of their works, see § 1201(a)(C)(iv), the Librarian is likely to reach the same conclusion he reached three years earlier. In short, the Copyright Office could significantly lighten the burden of renewal by indicating that it will incorporate the record created in the previous rulemaking.

Additionally, in the category of policy issues that warrant near-term study and analysis, the Register identifies numerous other potential problems with Section 1201. She notes that some of the permanent exceptions may be too narrow in scope, and that the exemptions created under the rulemaking apply only to the act of circumvention, and not the development and distribution of circumvention tools.

Further, she observes that some stakeholders have suggested “a disconnect between the original purpose of Section 1201—protecting access to creative works—and its effect on a wide range of consumer goods that today contain copyrighted software.” (This was the subject of a DisCo post earlier this year.) She adds that “consumers have voiced discomfort that Section 1201 prevents them from engaging in activities, such as the repair of their automobiles and farm equipment, which previously had no implication under copyright law.”

It is true that the Copyright Office cannot change the scope of the existing permanent exceptions, nor extend the exemptions to the trafficking in circumvention tools. It is also true that the Copyright Office cannot unilaterally solve the problem of the application of Section 1201 to embedded software essential to the operation of larger devices and machines.

At the same time, the Copyright Office could take a more pragmatic approach toward exemptions for embedded software. For example, it could consider, and ultimately grant, a broad exemption for all software essential to the operation of hardware in the lawful possession of the user. Regrettably, in this rulemaking cycle the Copyright Office has gone in the opposite direction, drawing up classes as narrowly as possible. For the unlocking of devices from wireless networks, the Copyright Office has identified five separate classes for five different kinds of devices. It has done the same for the “jailbreaking” of devices so that they can access alternate lawful content. For circumvention of TPMs on vehicle software, for the purpose of diagnosis and repair, or after-market customization, the Copyright Office is considering only land vehicles, when the same issue obviously will apply to boats and aircraft.

By balkanizing the embedded software problem in this manner, the Copyright Office places a much greater burden on the applicants of each narrow class to meet the evidentiary standard the Office imposes. Section 1201 certainly does not require the identification of such narrow classes.

Obviously these measures will not address all the ills of Section 1201. Legislation along the lines of the Unlocking Technology Act, H.R. 1587, or the Breaking Down Barriers to Innovation Act, S. 990 and H.R. 1883, are necessary to do that. But the Copyright Office could adopt these measures now, without Congressional action.

The Register’s testimony raises too many other issues to be examined here. But one proposal merits attention. In the category of issues that warrant near-term study and analysis, the Register recommends a “formal and comprehensive study” of the safe harbors in Section 512 “to ensure that it is properly calibrated for the internet as we know it today.” Frankly, the Section 512 safe harbors have been studied to death. They have been the subject of numerous Congressional hearings and were a major focus of the Commerce Department Internet Policy Task Force report on Copyright Policy, Creativity, and Innovation in the Digital Economy. As the Register’s testimony acknowledges, the Internet Policy Task Force’s report led to a year-long process to produce best practices for the notice and takedown system. The safe harbors have been examined in law review articles, economic studies, and Congressional Research Service reports. The Register asserts that “it is time to take stock of Section 512.” In fact, Congress, the Copyright Office, the PTO, the copyright owners, the Internet service providers, and public interest groups have been taking stock of Section 512 continuously since its enactment.

A far better use of government resources would be a formal and comprehensive study of statutory damages, “to consider what is working and what is not, along with possible legislative improvements…to…ensure that it properly calibrated for the internet as we know it today.”

Copyright Term Myths and Facts

The written testimony of four of the five witnesses speaking at the July 15, 2014 House Judiciary Subcommittee Hearing on Moral Rights, Termination Rights, Resale Royalty and Copyright Term, address the issue of copyright term. Notably, none of these witnesses suggest that the current term be extended further and Professor of Law Michael Carroll argues that the current term of protection is too long. Although the other witnesses did not propose extension of copyright, it should be noted that Rick Carnes, President of the Songwriters Guild of America, asserts that the current copyright term in the United States is appropriate and should not be shortened. Although he devotes only a single paragraph to the issue of copyright term, his written testimony nonetheless contains statements that are misleading or untrue.

Myth 1: The current copyright term represents the international standard.
Mr. Carnes’ written testimony asserts that “suggestions that the United States should break with the rest of the world to reduce the current term of copyright protection (designed specifically to allow creators to address the economic welfare of their families for a time period limited basically to the lives of their grandchildren) in order to stimulate ‘faster growth of the public domain’ should be rejected outright.”

Fact: The copyright term in the United States extends well beyond the Berne Convention’s standard and beyond the term of protection in the majority of countries.
Many countries’ copyright terms are set by the international agreements to which they are bound. The Berne Convention sets the minimum copyright term as the life of the author plus fifty years. The current term of protection in the United States is set at a period of the life of the author plus an additional seventy years. For corporate works or “works for hire,” the period of protection is set at ninety-five years. These terms far exceed what is required by international law.

Reducing the copyright term to the Berne standard would not “break with the rest of the world” as suggested by Mr. Carnes. The vast majority of countries use the Berne standard of life plus fifty years; there are almost twice as many countries with a period of protection shorter than the current term in the United States than there are countries with a period of life plus seventy years or greater.

Myth 2: The U.S. Copyright Office considers the current copyright term as proper.
Mr. Carnes’ written testimony asserts that the “U.S. Copyright Office, Congress and the United States Supreme Court have considered this issue on numerous occasions and determined that the current term of copyright protection established under Article I Section 8 of the U.S. Constitution is not only proper, but serves the dual purpose of supporting the marketplace of ideas by encouraging professional creativity and bolstering the U.S. economy and balance of trade as well.”

Fact: The U.S. Copyright Office has questioned the value of a lengthy copyright term.
As noted in the LCA statement, Register of Copyrights Maria Pallante has suggested that the current copyright term in the United States may not be beneficial. Ms. Pallante noted in a 2013 speech:

The benefits of a lengthy term are meaningless if the current owner of the work cannot be identified or cannot be located. Often times, this is complicated by the fact that the current owner is not the author or even the author’s children or grandchildren. As the Copyright Office recognized in one of its key revision studies of the 1950s, it seems questionable whether copyright term should be extended to benefit remote heirs or assignees, “long after the purpose of the protection has been achieved.”

The Copyright Office has clearly expressed its concerns regarding copyright terms extending well beyond the life of the author and Mr. Carnes’ assertion that the Copyright Office has determined that a period of life plus seventy years is appropriate is simply untrue.

Further, in recognition of the harms that the 1998 Copyright Term Extension Act has caused, Ms. Pallante has proposed the reintroduction of formalities for the last twenty years of protection.

Myth 3: The Supreme Court has determined the current copyright term is proper.
Mr. Carnes also asserts that the Supreme Court has endorsed the present copyright term as proper, a misreading of Eldred v. Ashcroft.

Fact: The Supreme Court never addressed the question of whether a period of protection of life plus seventy years was appropriate. The Court only upheld the power of Congress to set the term and extend the term retroactively.
The majority opinion in Eldred, while upholding the Copyright Term Extension Act, never addressed the propriety or benefits of the extension itself. Instead, the court addressed “the authority the Constitution assigns to Congress to prescribe the duration of copyrights.” As Justice Stevens’ dissent further points out, the question of “whether the extraordinary length of the grants authorized by the 1998 Act are invalid because they are the functional equivalent of perpetual copyrights is a question that need not be answered in this case because the question presented by the certiorari petition merely challenges Congress’ power to extend retroactively the terms of existing copyrights.”

The Court, by a 7-2 margin, interpreted the term “limited Times” as meaning “confined within certain bounds, “restrained,” or “circumscribed” and found that extending the copyright term by twenty years did not exceed this prescription. The majority then noted that on the question of whether the extension was a “rational exercise of legislative authority conferred by the Copyright Clause … we defer substantially to Congress.” The Court went on to state that the act “reflects judgments of a kind Congress typically makes, judgments we cannot dismiss as outside the Legislature’s domain.” Justice Stevens’ dissent notes that, “Fairly read, the Court has stated that congress’ actions under the Copyright/Patent Clause are, for all intent and purposes, judicially unreviewable.”

Notably, the Court states that in finding that the extension was a rational exercise of authority, “we are not at liberty to second-guess congressional determinations and policy judgments of this order, however debatable or arguably unwise they may be.” The majority never decides whether the extension to the present term of life plus seventy is appropriate and could, arguably, be interpreted as suggesting that the extension might be unwise.

While neither the majority nor Justice Steven’s dissent address the appropriateness of the copyright term extension, Justice Breyer’s dissent vigorously opposes the extension as violating the Constitutional rationale of the intellectual property system:

The economic effect of this 20-year extension—the longest blanket extension since the Nation’s founding—is to make the copyright term not limited, but virtually perpetual. Its primary legal effect is to grant the extended term not to authors, but their heirs, estates or corporate successors. And most importantly, its practical effect is not to promote, but to inhibit, the progress of “Science”—by which word the Framers meant learning or knowledge.

Recap of the Copyright Office’s Roundtables on Orphan Works and Mass Digitization

On March 10-11, 2014 the Copyright Office held roundtables on orphan works and mass digitization. These roundtables included nine sessions, most of which included sixteen panelists representing different organizations and perspectives.

There appeared to be little agreement on the vast majority of issues and opinions diverged widely. The greatest consensus seemed to be opposition to, or at least caution with, extended collective licensing; the Copyright Office noted, however, that some prior comments supported extended collective licensing solutions.

During the sessions, best practices, fair use, the issue of whether orphan works and mass digitization need to be treated separately, and licensing solutions were heavily referenced and discussed. Some individuals attacked recent fair use jurisprudence or claimed that their human rights were threatened by use of orphan works or mass digitization projects. Photographers in particular raised concerns that photographs are turned into orphans too quickly, particularly when images are put on the Internet. The library community seemed to agree on the vast majority of issues, with the exception of one representative from Rutgers University Libraries, and members of the Library Copyright Alliance (LCA) spoke with one voice. Below are summaries from each session.

1) The need for legislation in light of recent legal and technological developments

The first point of disagreement centered around the issue of whether there is even a need for orphan works legislation. Most members of the library community, including the Library Copyright Alliance and a representative of Harvard University, noted that they were satisfied with recent fair use jurisprudence which diminished the need for orphan works legislation. This sentiment was echoed on the next panel by several other representatives of the library community. The Association of American Law Libraries stated their support for legislation in theory, but noted that there is a risk that legislation may not ultimately be a positive. CCIA noted that the complexity and regulatory nature of past orphan works proposals have made some stakeholders oppose a legislative solution.

Others, including Association of American Publishers, Wikimedia, Authors Guild, National Music Publishers’ Association and the representative of Rutgers University Libraries argued that orphan works legislation is needed. Some of those supporting orphan works legislation pointed out that their members or stakeholders value certainty.

In addition to the need for legislation, there were many references to fair use and best practices. Some representatives of rightsholder groups voiced their concern that their stakeholders were not consulted in development of best practices. Some participants noted their approval of recent fair use jurisprudence, while conceding that fair use does not address every issue. The Digital Library Copyright Project noted its project on best practices for use of orphan works for libraries and universities. Representatives of the library community continued to look favorably both on recent fair use jurisprudence and best practices, with the exception of the representative of Rutgers University Libraries who aligned with representatives of some rightsholder groups, including the National Music Publishers Association, American Society of Illustrators Partnership and the American Society of Journalists & Authors and argued that recent court cases on fair use have gone too far.

Although the Copyright Office did not want to engage in a debate over the copyright term, several participants pointed out that the lengthy copyright term in the United States of life plus seventy years has exacerbated the orphan works problem.

2) Defining a good faith “reasonably diligent search standard”

With respect to defining a reasonably diligent search standard, there was again no agreement or consensus view as to how it should be defined and whether a flexible or rigid approach would better solve the orphan works issue. Representatives of the library community encouraged flexible standards due to the differences in users, uses and circumstances that could influence the reasonableness of a search. Additionally, a rigidly defined standard would result in the law being unable to evolve and adapt to new technologies. The American Library Association noted that the searches conducted by librarians reveal sincere efforts to find the rightsholder. A representative of International Documentary Association and Film Independent, pointed out that overly rigid guidelines could result in failure because the legislation would not be used. The Society of American Archivists noted that a high standard for reasonably diligent search could prove too costly and make digitization efforts unsustainable.

Others suggested that a reasonably diligent search standard must have minimum standards and encouraged a more rigid approach in order to provide more certainty. The Motion Picture Association of America and the National Portrait Gallery representatives pointed out that minimum standards could still be flexible.

Some participants offered the following considerations in defining a reasonably diligent search: cost, commercial versus noncommercial intent, free market solutions, type of the work, age of the work and the use of the Copyright Office records. Another issue was whether a reasonably diligent search was possible for mass uses. There was no consensus on any of these issues.

Best practices were again referenced during this session, with many pointing out that they draw on the expertise of the community. Additionally, as noted by the International Documentary Association and Film Independent, best practices can evolve and there have been no specific allegations of misuse in these best practices. Responding to suggestions that the Copyright Office should facilitate drafting of best practices created by rightsholders and the user community, the Library Copyright Alliance pointed out that such negotiations would be long, delay the process at the outset, and could be fruitless, as evidenced by the widely diverging opinions expressed throughout the round table.

3) Role of private and public registries

The Society of American Archivists noted that registries cannot solve all issues and that the majority of orphan works are personal documents. SAA also cautioned that any solution must take into account the cost in searching for an orphan work.

Some of the panelists argued for global registries, while others advocated for voluntary opt-in registries or private registries. Some suggested that there is a need for multiple registries and that users of orphan works must find a way to search all the existing registries.

4) Types of works subject to any orphan works legislation, including issues related specifically to photographs

Much of the discussion centered on whether photographs should be included in an orphan works solution. The Association of American Publishers supported the idea that all works should be subjected to orphan works legislation. Other rightsholder groups specifically suggested a carveout for the interests they represented, such as for illustrators or musicians; others did not specifically advocate for a carveout but said that different works should be treated in a different manner. The Library of Congress pointed to the danger of excluding works such as photographs, because the same photographs are being used over and over again because of the fear in using orphaned works, skewing historical and cultural records.

The American Society of Media Photographers called artists “disenfranchised” and argued that creators would not be able to profit in an ongoing manner. The National Press Photographers Association said that there is a legitimate concern regarding finding the authors of older photographs, but noted that current photographs are instantly made orphans when they are uploaded to the Internet and stripped of their metadata.

The Digital Public Library of America advocated for “democratic access” to works, but the National Press Photographers Association opposed this idea.

During this panel, there was disagreement as to whether the Constitutional rationale of the copyright system is to promote the public benefit. Again, some panelists stated that fair use does enough to address orphan works concerns and already addresses some of the concerns discussed during the panel.

5) Types of users and uses subject to any orphan works legislation

While most panelists during this session seemed to suggest that legislation should cover both commercial and non-commercial users and uses, there was disagreement as to whether they should be treated equally. Additionally, some panelists during earlier sessions voiced disapproval for an orphan works solution that applied to commercial uses.

Several, including the Association of American Publishers, Association of Research Libraries, College Art Association, Writers Guild of America West, and the representative of Harvard University noted that the line between commercial and non-commercial can be difficult to define. Some noted that some non-profit institutions have gift shops or can engage in for-profit activities in order to sustain their non-profit work. Additionally, some commercial entities can provide genuine not-for-profit uses. The Association of American Publishers suggested that commercial entities are necessary because a legislative solution would likely be too complicated for individuals to take advantage of the legislation on their own, but who would be willing to pay for the value provided for by commercial interests.

Some panelists felt the distinction should not be whether a user is commercial or non-commercial, but that consideration should be given to whether a use is commercial or non-commercial. A representative from the Graphic Artists Guild argued that illustrators can clearly explain what are commercial uses and what are non-commercial uses, asserting that their industry would be destroyed if it were possible to use orphaned works for free in the commercial market. The Graphic Artists Guild also noted that non-commercial uses, such as for education and preservation, are already permitted under fair use.

Some arguments were made against making the law overly complicated because doing so could create confusion for individuals or, depending on the complexity, even for lawyers.

6) Remedies and procedures regarding orphan works

This session discussed limitations on monetary damages and injunctions. Most, but not all, participants supported limitations on injunctions because without such limits, no one would take advantage of a solution in which they must invest large amounts of money.

With respect to monetary damages, participants suggested the following: reducing or remitting statutory damages, remitting attorneys fees, and increasing damages for bad actors. Some felt that different standards for different works are appropriate and looking at the circumstances, such as the time or age of commercialization could be taken into account. A representative of the Digital Media Association opposed words like “reduce,” “remit,” or “increase,” arguing that the focus should be on reasonable compensation instead.

The National Press Photographers Association advocated heavily for a small claims court and stated that any orphan works solution should be tied to a willingness to participate in a small claims court.

The National Writers Union argued that the solutions being discussed resulted in blaming the victim and suggested that it is the users of orphan works that should be required to register and notify the public of the intent to use such works.

7) Mass digitization, generally

Throughout the roundtables, many participants argued that orphan works and mass digitization are different issues and must be separated. The panel on mass digitization was the most contentious of the all the panels spanning both days, with attacks on libraries and the Authors Guild making several explicit threats to sue libraries that digitize under a claim of fair use. The contentiousness of this panel highlighted the likely impossibility in coming together to find any solution.

Participants discussed whether fair use applied to mass digitization or whether its use goes too far. The Library Copyright Alliance pointed to several cases supporting the argument that digitization is considered fair use. Although some participants throughout the roundtables dismissed HathiTrust and Georgia State University because both case are on appeal the Library Copyright Alliance noted that the fair use argument is supported by a number of cases that have been decided by several circuits. Again, the library community largely supported the reliance on fair use for digitization projects, with the exception of the representative of Rutgers Universities Libraries. The representative of the University of Michigan, after several attacks on libraries and reliance on fair use, stated that the attacks were unfounded and that libraries are conscientious actors, not pirates. A representative from American University/Creative Commons USA stated that format shifting was clearly fair use, though questions may arise as to the uses after format shifting has taken place.

The Authors Guild disagreed and argued that digitization violates fair use and Section 108. The representative of the Authors Guild issued a “warning” that if libraries continue to digitize and argue fair use, then the Authors Guild would bring lawsuits for this type of behavior. The MPAA stated that it was comfortable with the case-by-case basis approach of fair use, but argued that it is impossible to consider application of fair use in a mass digitization case where you might have 20 million books. The National Press Photographers Association noted that one of the particular problems for photographers is the public perception that everything on the Internet is in the public domain.

As expected, some of the discussion covered the HathiTrust case. The representative of the National Press Photographers Association likened the case to Plessy v. Ferguson, a Supreme Court case from 1892 that upheld the “separate but equal” doctrine until being overturned by Brown v. Board of Education. The National Press Photographers Association argued that HathiTrust had been decided incorrectly and that just because Plessy v. Ferguson was the law for decades, it did not make the law right.

The representative from the Library of Congress pointed to the high costs of mass digitization, stating that it is not as simple as throwing a document into a scanner. He pointed out that there is a value add in what they do by making scans ADA compliant and that there is proper quality control, all of which results in costs to the institution. The Museum of Fine Arts, Boston added that digitization offers new benefits and value, such as providing 360 degree rotation of sculptures or vases, which would not otherwise be available.

8) Extended collective licensing and mass digitization and
9) Structure and mechanics of a possible extended collective licensing system in the United States

Sessions eight and nine overlapped, not only with respect to content but also with some of the same panelists. The participants at the sessions seemed to oppose or were at least wary of extended collective licensing.

Some pointed to the problems of collecting societies including that little money is actually distributed to the creators, there can be a lack of accountability, and they do not take into account the different interests of different authors. A couple of panelists also pointed out that extended collective licensing could come into tension with antitrust laws and that ultimately the states will end up with most fees due to unclaimed property laws.

Most panelists agreed that an individually negotiated license should be the first preference. Many panelists from rightsholder communities stated that voluntary licensing has worked in their communities. Many also pointed out that the United States does not have much history, tradition or experience with extended collective licensing regimes.

One participant noted that extended collective licensing creates an unnecessary tax and can damage fair use; only where fair use does not apply should one seek a license. This participant also pointed to the great value-add that has resulted from mass digitization projects undertaken by libraries.

The National Federation of the Blind cautioned against extended collective licensing because of the huge benefits that mass digitization has provided for persons who are blind or print disabled. He noted that anything that had a chilling effect on mass digitization would likely limit access for persons who are visually impaired and noted concerns with economic disincentives to digitize works.

Conclusion

Written comments are due to the Copyright Office by April 14, 2014. Judging from the discussions at the orphan works roundtable, however, it appears unlikely that the Copyright Office will be able to find a consensus view to please all stakeholders. The views expressed at the roundtable were widely divergent and it seems highly unlikely—given various threats and attacks on libraries as well as the extreme rhetoric regarding fair use—that all stakeholders could come together to find a solution. Even where it seemed like many participants agreed, such as opposing extended collective licensing regimes, the Copyright Office pointed out that some comments submitted in previous requests for comments supported such collective licensing.

Notes from Register Pallante’s “The Next Great Copyright Act”

By Greg Cram, Rights Clearance Analyst, The New York Public Library

On March 4, 2013, Maria Pallante, the 12th United States Register of Copyrights, delivered “The Next Great Copyright Act” at Columbia Law School. In the lecture, Register Pallante reflected on the history of other major comprehensive revisions to United States copyright law. She argued that the time has come for the next general revision to begin by noting the complexity of current copyright law and its failure, in some areas, to stay current. She highlighted the work the Copyright Office has already undertaken in preparation for the next act, including reports on Digital First Sale, Orphan Works, Pre-1972 Sound Recordings, Mass Digitization, and others. Finally, she laid out a number of issues that are on the table for consideration in the next round of comprehensive revision.

The content of the next comprehensive copyright act is important to libraries and library patrons. Copyright law impacts library services at all levels, from the basics of making unsupervised copiers available to patrons to the complicated digitization of works in library collections. In the lecture, Register Pallante highlighted a few issues important to libraries, including the first sale doctrine, the libraries and archives exception, the blind and print disabled exception, and the length of copyright protection. The next copyright act is certain to implicate many library services, not to mention the general flow of content in modern society.

Because of the importance of this lecture, I am sharing my notes below. The lecture was recorded, but is not yet available on the Kernochan Center’s website. I strongly recommend watching the recording when it is available. I labored to take accurate notes and do not intend to misrepresent the content of the lecture. Even with my diligence, these notes should not be understood to be an official record or transcript of the lecture.

My notes on “The Next Great Copyright Act”

The next comprehensive review should begin soon. A comprehensive review is needed for two main reasons. First, courts are asking Congress to fix copyright law (see, e.g., Golan, Google Books, Tenenbaum). Second, more people need help navigating a complex law and shouldn’t and army of lawyers to understand copyright law.

There should be two main themes for the next great copyright act. First, it should be forward thinking, but flexible. Second, authors’ rights to enjoy control and exploit works needs to be meaningful. Authors are not the counterweight to the public interest because protecting authors is in the public interest. A copyright act that did not protect authors would be illogical. But, the law needs to recognize that some authors are different by giving weight to Creative Commons licenses and public domain declarations.

The issues on the table for the next comprehensive review include:

  1. Incidental Copies

    —Not all copies are the same

    —Perhaps there could be discrete exceptions for certain incidental copies

    —For more information on this issue, see the Copyright Offices 2001 study on the Digital Millennium Copyright Act

  2. Public Performance Right for Sound Recordings

    —Copyright Office is a “strong supporter” of a public performance right for sound recordings

    —Disparities between terrestrial radio and internet radio royalty rates are hampering new business models

  3. Stronger Enforcement

    —The new law must respect the integrity of the internet, including free speech

    —There needs to be, however, a mix of legislative and voluntary efforts to combat infringement online

    —On solution may be to increase criminal penalties for streaming, or at least bring them in line with the penalties for distribution through downloads

  4. Small Claims

    —The Copyright Office is studying this issue

    —Small claims may be a way for rights holders to enforce rights when federal litigation may be too expensive

    —The Copyright Office could, potentially, take a lead role in administering small claims

  5. Statutory Damages

    —Review registration requirements

    —Look at statutory damages from all angles

    —Statutory damages are important part of copyright act and should be retained

    —Need to provide guidance to courts about how statutory damages should be applied

  6. The Digital Millennium Copyright Act

    —The Internet has evolved since DMCA passage in 1998

    —Congress should review the § 512 safe harbors

    —Congress also needs to review § 1201 rulemaking, especially in light of the White House response to a petition on unlocking mobile phones

  7. Registration and Deposit of Published Works

    —The deposit requirements for registration should remain in next copyright act

    —Congress should review the legal incentives for registration

    —How can the Library of Congress add born digital works to its collection through this process?

    —The policies surrounding mandatory deposit should not be driven by the collection building activities of the Library of Congress (see the ACCORD Report for more information)

  8. First Sale

    —Digital first sale will be an issue on the table

    —Physical first sale may also need to be reviewed, depending on the outcome of the Kirtsaeng v. John Wiley & Sons case currently before the Supreme Court

  9. Other Exceptions/Limitations

    —The libraries and archives exception in § 108 should be updated

    —Update exceptions for the blind and print disabled in § 121 for the digital world

    —Explore new exception for higher education institutions

    —Personal space-shifting

  10. Licensing

    —Need to review growth of licensing schemes

    —Review mechanical licenses

Now the “bold” issues:

  1. Term of 50 years, renewable for an additional 20

    —The Supreme Court decision in Golan v. Holder is last word on whether life plus 70 years is constitutional

    —However, the term of copyright protection could be modified to 50 years after the death of the author, renewable for another 20 years

    —This would put the burden on the copyright owner to renew copyright term at the end of 50 years after death

    —Modeled after § 108(h), something the Copyright Office is very fond of

    —This proposal would be acceptable under various international treaties, including the Berne Convention

  2. Opt-Out v. Opt-In

    —Extended collective licensing could potentially solve many problems

Finally, Congress should expand the role of the Copyright Office. The Office could help to resolve questions of law or fact through advisory opinions. The Office could also help to establish best practices on a number of topics, including searching for copyright owners. If an extended collective licensing scheme is devised by Congress, then the Office could provide transparency to that system.

To now argue that this minor statement in support of fair use (which doesn’t change anything — since many universities had already acted this way, and it’s always how non-digital reserves had worked) somehow upsets a delicate “balance” isn’t just laughable, it’s an insult to those familiar with the history of copyright law.

Mike Masnick, with a harsh criticism of the amicus brief filed by former Copyright Registers Ralph Oman and Marybeth Peters (together with former CO General Counsel Jon Baumgarten).