US Supreme Court: Copyright Registration Occurs When Copyright Office Registers Copyright

It is not often that the US Supreme Court hands down a copyright-related decision, an unanimous one to boot, and so yesterday was quite a day for US copyright owners and IP practitioners.

The US Copyright Act, 17 U.S.C. § 411(a), states that “registration" of a copyright is a precondition to filing suit for copyright infringement.  Some courts of appeal interpreted “registration” as meaning “filing an application to register the copyright” while others interpreted it as “the Register of Copyrights registers the copyright.”

On March 4, 2019, the US Supreme Court resolved the circuit courts split and ruled that registration occurs when the Copyright Office registers the copyright.  Only after that may a plaintiff file a copyright infringement suit. However, once the copyright is registered, the owner can recover for infringement which occurred both before and after the registration.

The case is Fourth Estate Public Benefit Corp. v. Wall Street LLC.

Justice Ginzburg, who wrote the opinion, noted that registration is not necessary to obtain copyright protection under §408(a) of the Copyright Act.

Justice Ginsburg then wrote about the statutory exemptions to registration before filing suit, such as §408(f)(2) of the Copyright Act, which provides limited circumstances where copyright owners can file an infringement suit before registration. This section was enacted to protect the owners of works having a history of infringement prior to authorized commercial distribution, such as movies or musical compositions. They can file a preregistration no later than 3 months after the first publication.  

Justice Ginzburg wrote that Section 408(f)’s preregistration option, too, “would have little utility if a completed application constituted registration” and that a “copyright owner who fears prepublication infringement would have no reason to apply for preregistration…  if she could instead simply complete an application for registration and immediately commence an infringement suit. “

§411(c) of the Copyright Act provides the owner of a work which is fixed and broadcasted simultaneously the right to file a copyright infringement suit either before or after the work has been thus fixed.

The Court reasoned that “[i]f application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous.” It states that:

“In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”

The Court also found the final sentence of §411(a) to be persuasive as it requires the Register to act before a copyright infringement suit can be filed if the work is not registered: it allows the Register to “become a party to the action with respect to the issue of registrability of the copyright claim.”  Justice Ginsburg wrote that “[t]his allowance would be negated, and the court conducting an infringement suit would lack the benefit of the Register’s assessment, if an infringement suit could be filed and resolved before the Register acted on an application.”

The Petitioner had argued that a copyright owner may not be able to enforce her rights if the Copyright Act’s three-year statute of limitations runs out before the Copyright Office acts on her application for registration. Justice Ginzburg wrote that such “fear is overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application. See U. S. Copyright Office, Registration Processing Times (Oct. 2, 2018).”

This case is likely to stimulate a flurry of copyright registrations, which in turn, may slow down the copyright registration process.

Image is courtesy of Flickr user Tony Webster under a CC BY 2.0 license.

A reaffirmation of the law regarding originality for copyright protection under US law

Jade McKellar

For a work to be protected by copyright, a modicum of originality is required. But would a blank form with some text be sufficiently original?

1709 Blog friend Jade McKellar (University of Southampton) discusses a recent decision of the Review Board of the US Copyright Office which confirmed that the answer is ... no.

Over to Jade:

"The United States Copyright Office Review Board affirmed the refusal the register to register a copyright claim to text in the work “Online California DMV Vehicle Registration” on the basis of insufficient creativity.

Some key principles considered by the Review Board relate to:

• Distinction between ideas and expression: Section 102(b) Copyright Act 1976 excludes protection for “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work” and thus codifies the distinction originated in Baker v Selden, 101 U.S. 99 (1879) between ideas and expression in respect of copyright protection. Copyright protection is available for the expression of ideas, not for the underlying ideas themselves. 
• Merger doctrine (Baker v Selden): where there is one way, or a limited number of ways for an author to convey an idea, the author’s expression cannot be protected under copyright as it would prevent others from using that idea in other works. 

On the basis of these principles the United States Copyright Office has a presumption against the registration of blank forms. The Office’s Regulations preclude registration of “blank forms […] which are designed for recording information and do not in themselves convey information”.

The Copyright Office will examine a work of this type to determine if it contains “an appreciable amount of written or artistic expression” that can be separated from the work’s method of capturing information.

• Originality: A work is registrable it is an “original work of authorship fixed in any tangible medium of expression” 17 USC 102(a). For a work to be “original” it must be an independent creation of the author and contain sufficient creativity (Feist Publications Inc v Rural Tel. Serv. Co, 499 U.S. 340 (1991)). Only a modicum, or more than de minimis, quantum of creativity is necessary. There can be no copyright in a work where “the creative speak is utterly lacking or so trivial as to be virtually non-existent”. A mere simplistic arrangement of non-protectable elements does not demonstrate a sufficient level of creativity for protection (Coach Inc. v Peters, 386 F. Supp. 2d 495 (S.D.N.Y. 2005); Satava v Lowry, 323 F. 3d 805 (9th Cir. 2003)). A combination of non-protectable elements will only be eligible for copyright protection in instances where those elements are numerous enough and their selection and arrangement is original enough to constitute an original work of authorship. 

Background

Cartagz filed an application to register a copyright claim in ‘text, arrangement and layout of text’. This claim was later limited to ‘text’. The work for which registration was sought is represented below:

The United States Copyright Office refused to register the claim on the basis that blank forms and similar works are not protected by copyright. Cartagz requested that the office reconsider its refusal to register. The Office re-evaluated the claims in the First Request and reaffirmed its decision not to register the claim on the basis that the work did not contain sufficient originality or creative authorship. 

Cartagz requested pursuant to 37 CFR 202.5(c) that the Office reconsider its refusal a second time, on the basis that the Office had applied a higher creativity standard than warranted by copyright law, that following Harcourt, Brace & World Inc. v Graphic Controls Corp 329 F. Supp. 517 (S.D.N.Y. 1971). Blank forms have been registrable where they exhibit more than a de minimis amount of creativity, and that the work contains sufficient creativity to obtain copyright protection.

Analysis

The Review Board examined the work in light of the legal standards discussed. The work is a blank form designed to allow the user to record information. Under section 102(b) of the Copyright Act and the merger doctrine, blank forms are not typically subject to copyright protection unless they are shown to contain an appreciable amount of written or artistic expression distinct from the underlying method for recording information.

The Board considered whether the work contains such distinct written or artistic expression to warrant registration: 

• The work’s constituent elements were merely ‘words and shorts phrases, and, as such, are not copyrightable’ (37 CFR 202.1(a)).
• The work as a whole is not sufficiently creative to support registration. Works made by public domain elements may be copyrightable if the selection, arrangement and modification of the elements reflects choice and authorial discretion that is not so minor that “the creative spark is utterly lacking or so trivial as to be non-existent”. Cartagz’s work consists of very few elements, most of which are necessary incidents to allow users to record information, and thus the aggregation of words and phrases in the work lacks sufficient creativity to warrant registration. 

Cartagz’s claim was limited to “text”. However, Cartagz additionally asserted that it intended to maintain a claim in “the selection, coordination, and arrangement of the specific textual and graphical content of the Advertisement as a compilation, which it believed would still be covered by its claim in ‘text.’”.

The Board noted that Cartagz did not register a claim in compilation in the initial application. However, the Board found that even if the compilation rubric were applied in examination of the work, sufficient creative compilation authorship to support registration could not be found. The work does not contain a sufficient amount of creative authorship in respect of the selection, coordination, and arrangements of the work’s constituent elements to warrant copyright protection.

The United States Copyright Office Review Board found that the work, comprising a minimal combination of words and short phrases, lacked the ‘modicum of creativity’ requirement expounded in Feist.

Significance

This decision has reaffirmed the distinction between protectable original expression of ideas and unprotectable underlying ideas in respect of copyright protection, and the criteria for original authorship and creativity. The Copyright Office followed its longstanding presumption against the registration of blank forms on the basis of these principles, and also confirmed the requirement for an above de minimis quantum of creativity in the assessment of the originality of a work.

THE COPYKAT

This CopyKat from David Liao

US Copyright Office – further update

As previously covered on The 1709 Blog here, there was an unprecedented removal of Maria Pallante from her position at the US Copyright Office last October with some speculation that her policy position had been the cause of this. Further information recently revealed indicates however that the US Copyright Office may have been grossly mismanaged during Pallante’s time, with one such example being a failed electronic licencing program which exceeded its budget of $1.1 million by over $10 million.  In addition, there are also allegations a fake budget item to the tune of $25m appeared in the initial FY18 appropriations request, which would account for roughly a third of the Copyright Office’s budget. This information has been brought to light specifically in relation to a bill introduced in Congress March this year (which would, amongst other things, allow the President appoint the next Register of Copyright as opposed to the Librarian of Congress) and more generally a call for modernisation of the Copyright Office and reallocation of power between the government branches.  More details here.

Big Bang Producers can sleep soundly to Soft Kitty

Fans of the hit show “The Big Bang Theory” will be familiar with the catchy song “Soft Kitty” (video clip here for those unfamiliar or wanting a refresher). What may be less well-known is that in December 2015 a lawsuit was filed in relation to this song by Ellen Newlin Chase and Margaret Chase Perry, the daughters of Edith Newlin who wrote the original lyrics to the song in the 1930s as a poem.

As background, this poem had been published in the Songs for the Nursery School book by one of the defendants The Willis Music Group (“Willis Music”) in 1937 with Newlin’s permission, and also registered then as a musical composition with the US Copyright Office. Willis Music subsequently renewed this copyright registration in 1964 and the plaintiffs alleged this would have renewed Newlin’s rights to the lyrics. If so, the licence provided by Willis Music to the other defendant’s (including Warner Bros. Entertainment) would have required Newlin’s permission and therefore use of this song in the show infringed her copyright. 

Despite noting that section 24 of the 1909 Copyright Act is “hardly a model of clarity”, the Southern District Court of New York recently dismissed the claim, holding that Newlin and assigned the copyright to Willis Music (meaning the licence was valid) and that the distinction made by the plaintiff’s between common law copyright and other copyrights was a distinction without a difference. For more details, see here for the memorandum and order. 

Collection societies and blockchain

The three largest member-owned collection societies (the American Society for Composers, Authors and Publishers (ASCAP), the Society of Authors, Composers and Publishers of Music (SACEM), and PRS for Music) are working with IBM and Hyperledger Fabric to create a new system to confirm copyright ownership information and conflicts using blockchain technology. The goal of the project is to “prototype how the music industry could create and adopt a shared, decentralised database of musical work metadata with real-time update and tracking capabilities” and, if successful, will hopefully address long-standing issues in the music industry and provide benefits to music creators worldwide. See here for more details. 

U.S. Copyright Office Seeks Public Comments on Moral Rights

The United States Copyright Office announced it is undertaking “a public study to assess the current state of U.S. law recognizing and protecting moral rights for authors, specifically the rights of attribution and integrity.” The Copyright Office had organized a symposium, ‘‘Authors, Attribution, and Integrity: Examining Moral Rights in the United States,’’ which took place on April 18, 2016.

It now “will review existing law on the moral rights of attribution and integrity, including provisions found in title 17 of the U.S. Code as well as other federal and state laws, and whether any additional protection is advisable in this area.”

It is seeking “public comments addressing how existing law, including provisions found in title 17 of the U.S. Code as well as other federal and state laws, affords authors with effective protection of their rights, equivalent to those of moral rights of attribution and integrity“ on several questions listed below.

General Questions Regarding Availability of Moral Rights in the United States

1. Please comment on the means by which the United States protects the moral rights of authors, specifically the rights of integrity and attribution. Should additional moral rights protection be considered? If so, what specific changes should be considered by Congress? Title 17

2. How effective has section 106A (VARA) been in promoting and protecting the moral rights of authors of visual works? What, if any, legislative solutions to improve VARA might be advisable?

3. How have section 1202’s provisions on copyright management information been used to support authors’ moral rights? Should Congress consider updates to section 1202 to strengthen moral rights protections? If so, in what ways?

4. Would stronger protections for either the right of attribution or the right of integrity implicate the First Amendment? If so, how should they be reconciled?

5. If a more explicit provision on moral rights were to be added to the Copyright Act, what exceptions or limitations should be considered? What limitations on remedies should be considered?

Other Federal and State Laws

6. How has the Dastar decision affected moral rights protections in the United States? Should Congress consider legislation to address the impact of the Dastar decision on moral rights protection? If so, how?

7. What impact has contract law and collective bargaining had on an author’s ability to enforce his or her moral rights? How does the issue of waiver of moral rights affect transactions and other commercial, as well as non- commercial, dealings?

Insights From Other Countries’ Implementation of Moral Rights Obligations

8. How have foreign countries protected the moral rights of authors, including the rights of attribution and integrity? How well would such an approach to protecting moral rights work in the U.S. context?

Technological Developments

9. How does, or could, technology be used to address, facilitate, or resolve challenges and problems faced by authors who want to protect the attribution and integrity of their works?

Other Issues

10. Are there any voluntary initiatives that could be developed and taken by interested parties in the private sector to improve authors’ means to secure and enforce their rights of attribution and integrity? If so, how could the government facilitate these initiatives?

11. Please identify any pertinent issues not referenced above that the Copyright Office should consider in conducting its study.

What are Moral Rights?

The two main moral rights provide the author of a work protected by copyright the right of attribution, that is, the right to be credited as the author of the work, and the right of integrity, that is, the right of preventing the work from being altered or distorted.

Moral rights stem from French law (le droit moral) and Article L. 121-1 of the French Intellectual Property Code still provides an author the right to respect for her name, her quality and her work. This moral right is attached to the person of the author, meaning that French law considers it a personality, a droit de la personnalité, just like the right to privacy or even one’s honor. Under French law, this right is “perpetual, inalienable and imprescriptible” and is “transferable upon death to the author's heirs. Exercise can be given to a third party by virtue of testamentary dispositions.”

Does the U.S. have Moral Rights?

This question is not easily answered. The U.S. finally joined the Berne Convention in 1989. Article 6bis(1) of Berne states that:

‘‘Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”

The U.S. did not enact a comprehensive moral right law when joining the Berne Convention, but instead took the position that a combination of its laws were enough to comply with its obligations under the Convention. Amongst such law is, curiously, the Trademark Act, which Section 43(a) provides a civil action in case of false designation of origin.

However, the Supreme Court held in 2003, in Dastar Corp. v. Twentieth Century Fox Film Corporation, that origin, in Section 43(a), “refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” The Court concluded that therefore Section 43(a) cannot be used to require attribution of uncopyrighted materials.

The 1990 Visual Artists Rights Act (VARA), section 106A of the Copyright Act, which took effect in 1991, provides “certain authors” a right to attribution and to integrity. However, while copyright protects any work fixed in a tangible medium as long as it has a modicum of originality (the itsy bitsy doctrine), only authors of works of visual art have this right.

Such works are narrowly defined by Section 101 of the Copyright Act as “a painting, drawing, print or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or… a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.”

Section 1202 of the Copyright Act forbids providing false copyright management information in order to enable, facilitate, or conceal infringement, and forbids further to remove or alter copyright management information. Artists have been using this section to claim moral rights (see here).

Comments must be received by March 9, 2017.

Image is courtesy of Flickr user mrdanielweir under a CC BY-NC 2.0 license, which includes the moral right of attribution. Moral rights may be provided by contract and included in a license, such as this CC license.

U.S. Bill Would Introduce a Copyright Claims Board

You may have heard that 2016 was an election year in the United States. Congress and life go on, and Representatives Judy Chu (CA-27) and Lamar Smith (TX-21) introduced this month a bill, the Fairness for American Small Creators Act, which would amend the Copyright Act to introduce a Copyright Claims Board (the Board). The press release is here. 

The Board would be established within the Copyright Office and would be an alternative forum to resolve some, but not all, copyright claims (collective sigh of relief from IP attorneys).

Three Copyright Claims Officers

Three full-time copyright claims officers would serve on the board for a six-year term. They would all be attorneys with at least seven years of legal experience. Two of the copyright claims officers would “have substantial experience in the evaluation, litigation, or adjudication of copyright infringement claims and, between them, … have represented or presided over a diversity of copyright interests, including those of both owners and users of copyrighted works. The third copyright claims officer [would] have substantial experience in the field of alternative dispute resolution.”

They would be independent from the Register of Copyrights, but could consult it on general issues of law, but not with respect to the facts of any particular matter pending before the Board or the application of law to a particular matter. The Board’s decisions could be reviewed by a court.

Copyright Claims Attorneys

No less than two attorneys would be appointed by the Register of Copyrights to assist in the administration of the board. They would have to have at least three years of copyright law experience.

Authority and Responsibilities of the Copyright Claims Board

The Board would determine whether a particular copyright claim, counterclaim, and defense could be brought before the Board, and would ensure that they are “properly filed and otherwise appropriate for resolution by the Board.” The Board would manage the proceedings of the Board and render rulings relating to the consideration of these claims, which would include scheduling and discovery. Indeed, the Board would have the power to request the production of information and documents relevant to the resolution of a claim, and to conduct hearings and conferences. The Board would also have the power to facilitate the settlement of any claim or counterclaim of parties and to require cessation or mitigation of an infringing activity, including takedown or destruction of infringing materials, but only if the party asked to do so agrees.

Authority and Responsibilities of the Copyright Claims Attorneys

Copyright Claim Attorneys would have to provide assistance to the copyright claims officers in the administration of their duties, and provide assistance to members of the public with respect to the procedures and requirements of the Board.

Proceedings

Parties would only participate in a Board proceeding on a voluntary basis and the right of any party to pursue a claim in any court of law would be preserved. The claim would have to be filed no more than three years “after the claim that is the basis for the proceeding accrued.” The Board could review claims for infringement, or provide a declaration of non-infringement, unless the claim is already pending before, or finally adjudicated by a court of law. Both parties would have to be in the U.S. The Board could award actual damages and limited statutory damages, but the latter could not exceed $15,000 per work infringed.

This would be a centralized process, as the Board would conduct proceedings “by means of Internet-based applications and other telecommunications facilities, except that in any case involving physical or other nontestimonial evidence, the Board may make alternative arrangements for the submission of evidence if the arrangements do not prejudice another party to the proceeding.”

The parties could be represented before the Board by an attorney or law student who is qualified under applicable law to represent a party on a pro bono basis.

It is an interesting proposal, especially as the whole procedure could be conducted electronically. Allowing qualified law-students to represent parties may, however, have a somewhat limited impact on the ability of parties to seek pro bono counsel, as U.S. states typically require law students representing parties pro bono to be supervised by a faculty member or a practicing attorney.

Image courtesy of Flickr user Michael Coghlan under a CC BY-SA 2.0 license.

Orphan works in the US: getting rid of “a frustration, a liability risk, and a major cause of gridlock”?

Rike Maier

What is going on with orphan works in the US? The 1709 Blog is delighted to host a thoughtful guest contribution by Rike Maier, a PhD researcher at Humboldt University Berlin and researcher at the Humboldt Institute for Internet and Society.

Here's what Rike writes:

“Just a couple of weeks ago, in June, the US Copyright Office published a comprehensive (234 page!) report on the topic of orphan works and mass digitisation. The report deals with the questions of whether legislation is needed to tackle the orphan works problem and, if so, what that legislation should look like.

But let’s back up. 

An orphan work is a work protected by copyright whose rightsholder is unidentifiable or untraceable, making it impossible to seek out a license. This means that a large percentage of works [in Europe, for instance film archives estimate that around 20% of works in their collections are orphans (note that these are however covered by the Orphan Works Directive)] cannot be used legally, if the intended use is not already covered by one of the existing exceptions and limitations to copyright. 

While the issue was discussed most prominently in the context of books and mass digitisation, the orphan works problem has frustrated various kinds of potential users around the world. In Europe, the topic received a lot of attention and is the subject of an entire directive, ie the 2012 Orphan Works Directive. The exception this directive introduces, however, is quite narrow and many commentators have questioned its effectiveness. That is particularly because it requires users to conduct a diligent search for rightsholders that many institutions consider too time-consuming and too costly.

Across the Atlantic, lawmakers and scholars have followed European developments closely. Several attempts at passing orphan works legislation in the US (in 2006 and 2008) remained unsuccessful. Prominent scholars (see eg here) noted that it would be sensible to just rely on the existing fair use doctrine to deal with orphan works, especially for libraries’ digitisation projects. Fair use, the most important exception and limitation to US copyright, is open-ended and allows courts to consider several factors to decide whether the use is fair or whether it constitutes a copyright infringement. The orphan works status could be taken into consideration at several levels, eg in relation to the nature of the copyrighted work or the market factor (as a clear case of market failure).

Despite these arguments, the Copyright Office decided to review the topic of orphan works and started another series of public roundtables in 2014. These roundtables brought together a number of experts and diverse stakeholders, and were designed to advise Congress on potential legislative solutions (all transcripts and videos available here).

In its report, the US Copyright Office published its findings on the topic, and also considered the experiences other countries (and the EU) have made with orphan works legislation thus far. Interestingly, the recommendation the US Copyright Office makes is at its core a limitation of liability. That basically means that a reappearing rightsholder cannot claim full damages that would usually be available to him in case of a copyright infringement – if the infringer considered the work to be an orphan (details below). The Copyright Office rejects the idea of relying only on fair use or best practice statements, and also does not want to introduce a new exception to copyright (as we did in Europe). Rather, it goes back to the idea – limitation of liability – it had already lobbied for in the past. In fact, many aspects of the report are similar to the Shawn Bentley Orphan Works Act of 2008, which eventually failed in the House of Representatives.

Core elements of the legislation proposed in the US Copyright Office’s report…

… specifically for orphan works

A good overview of the criteria the US Copyright Office considers important for future legislation can be found on the 1709 blog. The main idea set forth in the report is to limit a reappearing rightsholder’s monetary relief to a “reasonable compensation”. One major element we know from the European approach also made its way into the US proposal: the diligent search requirement combined with a notice of use [the diligent search was already part of previously proposed legislation in the US, but not the notice of use requirement]. However, going much further than the European exception, the US proposal would also allow derivative uses and would limit injunctions for these types of uses (as long as the infringer pays a fee and provides attribution). Interestingly, and also new to the US orphan works proposals, this limitation on injunctions would not apply if the use of the work “would be prejudicial to the owner’s honor or reputation, and this harm is not otherwise compensable”.

The US Copyright Office’s main argument for rejecting a solution that only relies on fair use is that courts have “yet to explicitly address how to apply fair use to orphan works” and that “because of its flexibility and fact-specific nature” fair use jurisprudence is “a less concrete foundation for the beneficial use of orphan works than legislation.”

… for mass digitisation projects

The second part of the report deals with something entirely new to the US system: extended collective licensing (ECL) for mass digitisation projects. Here is how the US Copyright Office explains what ECL is:

“In an ECL system the government ‘authorizes a collective organization to negotiate licenses for a particular class of works (e.g., textbooks, newspapers, and magazines) or a particular class of uses (e.g., reproduction of published works for educational or scientific purposes)' with prospective users. By operation of law, the terms of such licenses are automatically extended to, and made binding upon, all members of the relevant class of rightsholders including those who do not belong to the collective organization unless they affirmatively opt out. ECL differs from compulsory licensing in that private entities, rather than the government, establish royalty rates and terms of use. In that respect, ECL 'is thought to be beneficial because it preserves the freedom to contract more so than alternative compulsory license schemes.'”

Some experts at the roundtables had spoken up against introducing ECL, arguing that it does not fit within the US copyright system, that poses the risk that averse users will license rather than to rely on fair use, or that a lot of money would be generated that is non-disbursable. So far, the US Copyright Office has not set forth a formal legislative proposal for ECL. Rather, it wishes to explore a pilot program that would be (at least initially) limited to certain types of published works and certain types of users and uses. Overall, the addressees look a little like the beneficiaries of the EU orphan works exception: libraries and archives that fulfil their non-profit goals and digitise their collections (literary works, embedded pictorial or graphic works, photographs).

... Hopefully

Where the US Copyright Office’s ideas may work better than the EU approach

Apart from the overall different approach (limitation of liability rather than exception), the scope of the proposed orphan works legislation is also much broader than that of the Orphan Works Directive. While only certain cultural heritage institutions benefit from the EU directive for reproductions and making works available to the public, the US proposal for orphan works would apply to all types of users and all types of uses. Therefore, private actors like Wikimedia or documentary filmmakers that the EU directive does not privilege could also rely on the proposed US legislation to, for example, make derivative works.

Similarly, while the EU directive is limited to certain types of works (ie books and other writings, audiovisual and cinematographic works, and embedded works), the US proposal would cover all types of orphan works, including even orphan photographs. These tend to raise a lot of concerns on the side of rightsholders, in the sense that photographs may be unduly considered orphan. When orphan works legislation was passed in the UK (a much broader licensing scheme that applies in parallel to the European mandated exception and is also not limited to certain types of works), some commentators were even alarmed that the UK “abolished copyright”. In the US, photographers also voiced the most concerns, for example, that on the Internet, their works often get separated from the rights information. These issues, however, did not sway the US Copyright Office. It referred photographers to databases and projects such as the PLUS registry or the UK Copyright Hub that help users to identify rightsholders of photographs. And, in “the unlikely but unfortunate event that a work of visual art is erroneously claimed by a user to be ‘orphaned,’ and cognizable damages to the owner result, a small claims tribunal” should be set up.

That the scope of the proposed US legislation is much broader may already make the orphan works legislation less of a niche project than the EU directive. Some aspects, such as the orphan works proposal also applying to unpublished works, would likely never be possible in Europe. The fact that the US Copyright Office acknowledges that the diligent searches are not feasible for libraries’ and archives’ mass digitisation projects also seems to be an important lesson learned from the European experiences.

Some disappointed stakeholders and still time for comments

However, not everybody is excited about the orphan works part of the report, particularly the search and notice of use requirements. This aspect makes some potential users as unhappy as the search requirements in the Orphan Works Directive make their European colleagues. For example, the Association of Research Libraries noted in an issue brief that the “notice of use is a burdensome requirement that will require time and resources and could significantly undermine the usefulness of the legislation”. As such, it would prefer to rely on fair use and best practice statements. The issue brief thus highlights that the time-consuming search and notice of use requirements may deter as many (or more) users than does the legal uncertainty that comes with fair use. Some commentators let out their frustration even more directly, and called the proposal “ridiculous” and “doubling down on the problem itself”.

While it seems understandable that the search requirements are time-consuming and complex, it does appear to be that big a burden to then also document this search. Particularly, because: 1) this documentation has the advantage of allowing possible rightsholders to see that their work is considered an orphan; and because 2) a bit different from the situation in Europe, the US proposal only sees the documentation as a “mechanism for isolated uses”, and plans a different regime for mass digitisation projects [Member states can however introduce legislation for mass digitization projects on their own, Recital 4 in the Orphan Works Directive states that the “Directive is without prejudice to specific solutions being developed in the Member States to address larger mass digitisation issues, such as in the case of so-called 'out-of-commerce' works”] (even though this again is limited to certain types of works, see above). One advantage that could come with a searchable notice of use register – ie avoiding duplicate searches – is however denied by the US Copyright Office. “[E]very prospective user must satisfy the diligent search requirement independently”, and checking the notice of use registry will not be sufficient.

We will see if this proposal will be more successful than its predecessors. It certainly has promising elements, even though some stakeholder believe the search and notice of use requirements will continue to make orphan works a source of frustration.

In the meantime, for all those who have some ideas to share about implementing the ECL pilot program, it’s time to comment! The Copyright Office has published a Notice of Inquiry and accepts written comments until 10 August 2015."

Thanks so much Rike for such a great and detailed analysis!

US Re-Enters the Orphan Works Debate

The US Copyright Office (USCO) has recently returned to the subject of orphan works with a study outlining its analysis and proposals, a pdf version of which is available here. At 234 pages long, the best we can do here is provide a very broad overview of the study, and invite our readers to test their personal attention thresholds against the US Government's deathless prose. Just as an incentive, the main body is only 112 pages, and the remainder consists of hefty annexes covering the draft legislation and other supporting information.

This is not the first time the US has addressed the contentious subject of orphans. This time they have conjoined the subject of orphan works with the perceived need to do something to ease the burden on those engaged in the mass digitization of (mainly literary) works. The USCO have been persuaded that it is too financially and physically onerous to expect the digitizers (such as the Google Book Project) to contact each and every author for permission to scan their works, even where the contact information may in fact be readily available.

Orphan Works

 As we will assume that readers of this blog are relatively well aware of the alleged benefits of allowing third parties to access orphan works in order to exploit them through  such activities such as publication, reproduction and making available to the public, things normally reserved to a copyright owner, we won't reiterate what the USCO study has to say on this aspect.

Thus, after conducting a wide review of the solutions adopted or proposed by other nations (including the EU), the USCO study concludes that the best solution for the USA would be a legislative one, as opposed, for example, to letting the courts to apply the Fair Use criteria on a case by case basis. To that end the USCO concludes that resurrecting the failed Shawn Bentley Act of 2008 S. 2913, along with features taken from the 2008 House bill H.R. 5889, would meet the criteria (see below) which they consider any amendment needs to reflect.  In essence the proposed amendment to the Copyright Act 1976 would require a diligent search and registration of the intention to use the work, in return for which the user would face only limited liability in the event that the legitimate owner came forward to claim his/her work. The Fair Use defence would also still be available to the user.  Here is how they summarise the criteria for such legislation:
"

• Establish a limitation on remedies for copyright infringement for eligible users who can  prove they have engaged in a good faith diligent search for the owner of a copyright and  have been unable to identify or locate him or her; 
• Define a diligent search as, at a minimum, searching Copyright Office records; searching  sources of copyright authorship, ownership, and licensing; using technology tools; and  using databases, all as reasonable and appropriate under the circumstances;
• Require the Copyright Office to maintain and update Recommended Practices for diligent  searches for various categories of works, through public consultation with interested  stakeholders;
• Permit a U.S. court, in its determination of whether a particular search qualifies under the  statute, to take into account a foreign jurisdiction's certification that a search was in good  faith and sufficiently diligent, provided the foreign jurisdiction provides similar treatment  to qualifying U.S. searches;
• In addition to a diligent search, condition eligibility on a user filing of a Notice of Use with  the Copyright Office, providing appropriate attribution, and engaging in negotiation for  reasonable compensation with copyright owners who file a Notice of Claim of  Infringement, among other requirements;
• Limit monetary relief for infringement of an orphan work by an eligible user to  'reasonable compensation'  – the amount that a willing buyer and a willing seller would  have agreed upon immediately before the use began;
• Bar monetary relief for infringements of orphan works by eligible non-profit educational  institutions, museums, libraries, archives, or public broadcasters, for non-commercial  educational, religious, or charitable purposes, provided the eligible entity promptly ceases  the infringing use;
• Condition injunctive relief for infringement of orphan works by accounting for any harm  the relief would cause the infringer due to its reliance on its eligibility for limitations on  remedies;
• Limit the scope of injunctions against the infringement of an orphan work if it is combined with  'significant original expression'  into a new work,  provided the infringer pays  reasonable compensation for past and future uses and provides attribution; 
• Allow a court to impose injunctive relief for the interpolation of an orphan work into a  new derivative work, provided the harm to the owner-author is reputational in nature and  not otherwise compensable;
• Condition the ability of state actors to enjoy limitations on injunctive relief upon their  payment of any agreed-upon or court-ordered reasonable compensation; and 
• Explicitly preserve the ability of users to assert fair use for uses of orphan works. "

One of the earliest responses to the proposal has come from Mike Masnick on the Techdirt blog.   Masnick is characteristically scathing about the proposed measures, preferring to use the term 'hostage' rather than orphan, and arguing that a better approach would be to avoid (or at least substantially reduce) the creation of orphans by reinstating the compulsory registration of works in order for them to gain copyright protection. One quibble with this response is it does not address the current problem of the millions of orphans already in existence.
Comment from academic sources has yet to appear, possibly because many interested stakeholders, including academics, will have contributed in the earlier consultation phase, and therefore would have reasonable foreknowledge of what was likely to be proposed.

Mass Digitization

The problem facing institutions and companies (such as HathiTrust and Google Books) which wish to digitize vast quantities of works, some of which may well also be orphans, is rather different in that it is economically infeasible to contact each and every author for permission. The USCO acknowledges this difference by proposing a different solution to the problem, namely developing  an Extended Collective Licensing (ECL) scheme, but unlike the orphan work issue, their proposal here is to lead off with a pilot scheme in order to develop the most suitable ECL framework, concentrating initially on literary, pictorial and graphic, and photographic works.  Furthermore, the pilot scheme will not address unpublished works. The USCO appears to have accepted from an early stage that any ECL scheme will operate on an opt-out basis, although exactly how this will be managed is one of the aims of the pilot scheme.

Here's what the USCO's press release on the subject says about the next phase: "Because the success of such a system depends on the voluntary involvement of both copyright owners and users, the Office is inviting public comment on several issues concerning the scope and operation of the pilot program. The Office will then seek to facilitate further discussion through stakeholder meetings and, if necessary, additional requests for written comment. Based on this input, the Office will draft a formal legislative proposal for Congress’s consideration."
The Notice of Inquiry is available here. Written comments must reach the USCO by no later 10 August 2015

Some News from the U.S. Copyright Office

U.S. Copyright Office Publishes Its Online Fair Use Index

The U.S. Copyright Office recently published online its Fair Use Index. It explains on its site that “[t]he goal of the Index is to make the principles and application of fair use more accessible and understandable to the public by presenting a searchable database of court opinions, including by category and type of use (e.g., music, internet/digitization, parody). The Index was created “to help both lawyers and non-lawyers better understand the types of uses courts have previously determined to be fair—or not fair.”

The Index allows visitors to search a database of fair use judicial decisions from federal jurisdictions, district courts, courts of appeal and the U.S. Supreme Court. The Index does not, however, include all judicial opinions on fair use, but will be updated and expanded periodically. When clicking on a particular decision, a new page opens, which is a pdf document about the case, informing the reader about its date, court, key facts, issue, holding, tags and outcome. What is particularly interesting is the ability to search fair use cases for specific categories, such as “parody” or “music.”

This is a welcome initiative, as fair use is always a mixed question of law and facts and there is no way to predict with certainty if a particular use will be deemed fair by the courts. However, one can regret that the Index does not include the full text of the courts’ opinions, but only their citations, which can be used to easily search for them online, including on free sites such as Google Scholar or Justia.

House Judiciary Committee Hearing: The Register’s Perspective on Copyright Review

On April 29, the House Judiciary Committee held a Hearing on The Register’s Perspective on Copyright Review. It heard the Honorable Maria A. Pallante, Register of Copyrights and Director of the United States Copyright Office.

In her 36-page written statement, Ms. Pallante wrote about the role and functioning of the Copyright Office and listed the “policy issues that are ready for legislative process” (Pallante, p. 10). These issues are: music licensing, small claims, felony streaming, section 108 on library exceptions, orphan works, resale royalty, improvements for persons with print disabilities, and section 1201 on regulatory presumption for existing exemptions.

Music Licensing

Indeed, the Copyright Office published last February its Copyright and the Music Marketplace report, which suggested some changes in music licensing such as fully federalizing pre‐1972 sound recordings, which are currently only protected under state law, a situation which, for the Copyright Office, “impedes a fair marketplace.”

Small Claims

The Subcommittee on Courts, Intellectual Property & the Internet held a hearing in July 2014 about copyright remedies, where the issue of small courts was discussed (see transcript here). Ms. Pallante quoted Representative Coble, who said during this hearing that “smaller copyright owners find it not worth their time or money” to litigate (Pallante, p. 12). As early as 2013, the Copyright Office recommended the creation of an administrative tribunal, to serve as an alternative to federal courts in some copyright infringement cases. It would be interesting to see if this tribunal will finally be created.

Felony Streaming

Ms. Pallante also recommended that Congress “bring the criminal penalties for unlawful streaming in line with those for other criminal acts of copyright infringement,” that is, charging people engaging in unlawful internet streaming with a felony, not a misdemeanor as it is the case now (Pallante, p. 13).

Section 108 Library Exceptions

As for Section 108, it “fails to address the ways in which libraries really function in the digital era, including the copies they must make to properly preserve a work and the manner in which they share or seek to share works with other libraries” (Pallante p. 14). The Copyright Office is of the opinion that “Section 108 must be completely overhauled” and is currently preparing a discussion draft (Pallante, p. 15).

Orphan Works

Ms. Pallante also wrote that “[o]rphan works is ripe for a legislative solution” and affirmed that “the Copyright Office favors a legislative framework in which liability is limited or eliminated for a user who conducts a good-faith, diligent search for the copyright owner” (Pallante, p. 16). However, the rights of the authors, copyright owners and their heirs must be preserved as well.

Resale Royalty

The Copyright Office agrees that resale royalties rights (or droit de suite) may benefit certain visual artists, who are now at a disadvantage under current U.S. law, as they cannot take advantage of the value of their work going up. As such, “there are sound policy reasons to address this inequity, but … the administrative and enforcement costs of a resale right might be substantial.” Therefore, the Copyright Office suggests that Congress should “consider a number of possible alternative or complementary options for supporting visuals artist within the broader context of art industry norms, art market practices, and other pertinent data,” but Ms. Pallante did not elaborate further. (Pallante, p. 19).

Improvements for Persons with Print Disabilities

As for the improvements for persons with print disabilities, the Copyright Office “supports swift ratification of the recent Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, and is currently working with the Administration to achieve that result.”

Ms. Pallante also listed other “policy issues that warrant near-term study and analysis” (p. 21). They are other issues of Section 1201, such as its anticircumvention provisions, Section 512 on notice and takedown, and safe harbor, mass digitization, and moral rights.

Section 1201 Anticircumvention Provisions

Ms. Pallante noted that the anticircumvention provisions of Section 1201 prevent consumers from “engaging in activities, such as the repair of their automobiles and farm equipment, which previously had no implications under copyright law” (Pallante, p.24). That issue has been in the news lately, as the proposed exemption to prohibition on circumvention of copyright protections systems for access control technologies was published on December 12, 2014, and

“would allow circumvention of TPMs [ Technological Protection Measures] protecting computer programs that control the functioning of a motorized land vehicle, including personal automobiles, commercial motor vehicles, and agricultural machinery, for purposes of lawful diagnosis and repair, or aftermarket personalization, modification, or other improvement. Under the exemption as proposed, circumvention would be allowed when undertaken by or on behalf of the lawful owner of the vehicle.”

An IP counsel for John Deere, manufacturer of agricultural, construction, and foresting equipment, recently sent comments to the Copyright Office about this proposed exemption, stating that it is overbroad and that it would violate vehicle manufacturers’ copyright in their software, and that the user of the tractor merely has an implied license for the life of the vehicle to operate it. Congress already passed last year the Unlocking Choice and Wireless Competition Act, which allows consumers to unlock their cell phones. Will Congress also unlock tractors? I will keep you up to date on this important issue, of course. Vroom.

DMCA Notice and Takedown

Ms. Pallante also wrote about the DMCA safe harbors. As the courts have sometimes interpreted these provisions “in ways that some believe run counter to the very balance that the DMCA sought to achieve,” the Copyright Office believes it is time for a “formal and comprehensive study” on the issue. Ms. Pallante mentioned the cost of sending DMCA notices, and how difficult it may be for copyright holders to enforce their right under this take down system.

Mass Digitization

The Copyright Office is completing its analysis of copyright issues raised by mass digitization projects, such as Google Books. Ms. Pallante noted that the problem with mass digitization is “a lack of efficiency in the licensing marketplace,” as it is both costly and cumbersome to secure the sometimes millions of authorizations, to the point that rights clearance is a burden (Pallante, p. 26). Even though fair use may be of help, “the complexity of the issue and the variety of factual circumstances that may arise compel a legislative solution” (Pallante, p. 27). The Copyright Office “as part of its orphan works and mass digitization report, …will recommend a voluntary “pilot program” in the form of extended collective licensing (“ECL”) that would enable full-text access to certain works for research and education purposes under a specific framework set forth by the Copyright Office, with further conditions to be developed through additional stakeholder dialogue and discussion” (Pallante p. 27).

Moral Rights  

The Copyright Office “believes that [the issue of moral rights] is a critical topic for further analysis.” Individual authors face moral right issues, such as attribution and the right to say no to particular uses, and Ms. Pallante noted that some academics questioned the strength of moral rights in the U.S. after the Supreme Court Dastar Corp. v. Twentieth Century Fox FilmCorp. case.

“In the Office’s view, any comprehensive review of the functioning of the copyright system must give serious and sustained attention to the individual rights of authors—apart from corporate interests—and the need to ensure that those personal interests are adequately protected. For this reason, the Office believes that further formal study of moral rights in the United States is an appropriate next step in the congressional process” (Pallante p. 28).

It seems that the year ahead may see, if not legislation, at least some interesting discussions about U.S. copyright.  

Image of Copyright Office Hearing Room courtesy of Flickr user Peter Brantley under a CC BY 2.0 license. 

Image of books courtesy of Flickr user mollyali under a CC BY-NC 2.0 license.