Access Copyright v. York: Our neighbors to the north

We are privileged to have a guest post by Lisa Di Valentino, the UMass law librarian and another local copyright geek. I asked Lisa to write up the recent (long-awaited) decision in the Access Copyright v. York University case. Although it’s a Canadian case, and deals with Canadian law, it speaks to broad trends in academic publishing and copyright enforcement.

Access Copyright v. York University
Lisa Di Valentino,
UMass University Libraries

On July 12, 2017, the Federal Court of Canada handed down its long-awaited decision in Access Copyright’s lawsuit against York University (York), originally filed on April 13, 2013. The suit related to York’s copyright policy and whether their fair dealing guidelines accurately reflected the test set out by the Supreme Court. (Fair dealing is the Canadian version of American fair use. The test for fairness is not codified in the copyright statute, but was established by a 2004 Supreme Court decision.) A summary of Access Copyright’s claims can be found here.

The result was a complete loss for York on all points, and an order to pay retroactive royalties as set by the Copyright Board in its Interim Tariff. However, as the decision is likely to be appealed, I’d like to discuss here what will we be (or should be) the main points of legal contention before the higher court. I will focus here on the fair dealing analysis (starting at para. 249) rather than the mandatory tariff, which is an issue discussed in detail by Howard Knopf and Ariel Katz.

[Michael Geist’s analysis of the York decision can be found here.]

The Supreme Court has been quite clear on several occasions that fair dealing is a right of users, necessary to maintain the balance inherent in the objectives of copyright law. They first used this language in the seminal CCH v. LSUC (CCH) case in 2004, and repeated it in the Copyright Pentalogy of 2012, in particular SOCAN v. Bell (Bell) and Alberta v. Access Copyright (Alberta).

Unfortunately, the Federal Court’s decision in Access Copyright v. York University does not reflect this important aspect of copyright, in general or in the analysis of the various factors of the fair dealing test. While Phelan J. acknowledges that the Supreme Court has characterized fair dealing as a “positive user right” (para. 251), elsewhere the judgment refers to it as an “exception” or “statutory defence” (para. 13). His discussion of the six fair dealing factors also suggests that he is not convinced of the Supreme Court’s view.

Purpose of the dealing

Phelan J. distinguishes York from CCH in that the copying done in the latter was for others, while the copying at York was done “to serve York’s interests and the interests of its faculty and students.” (para. 260) The significance of this distinction is not clear to me. Phelan J. may be suggesting that York’s fair dealing policy and practices are not reliable because they are focused on their own benefit rather than that of the public, or the copyright owner, or some other third party.

He subsequently claims that “It is evident that York created the Guidelines and operated under them primarily to obtain for free that which they had previously paid for.” (para. 272) However, one would think that the majority of fair dealing is done for the user’s interest in that they are copying things for their own use, and with the expectation that no payment is required. I don’t know why that would make a difference in the final analysis; there needn’t be any altruistic motivation to take advantage of one’s own rights.

Character of the dealing

Due to the “unreliability” of York’s evidence (data and expert testimony) as to the actual extent of copying and access to copies, Phelan J. determined that the character of the dealing “tends toward the unfairness end of the spectrum.” (para. 289)

Amount of the dealing

This, according to the decision, is “particularly important in this case” and “problematic” for York (para. 294). Unfortunately Phelan J. misunderstands what “amount” is referring to. In Bell, the Supreme Court explicitly cautioned that the amount to be looked at is the proportion of the work used compared to the whole, not the total amount of copies made: “Since fair dealing is a ‘user’s’ right, the ‘amount of the dealing’ factor should be assessed based on the individual use, not the amount of the dealing in the aggregate. The appropriate measure under this factor is therefore, as the Board noted, the proportion of the excerpt used in relation to the whole work.” (para. 41). However, Phelan J. asserts that “It is relevant to consider the aggregate volume of copying by by all post-secondary institutions that would be allowed if the Guidelines or similar policies were adopted.” (York, para. 301) (I would like to suggest that this factor be renamed to “Proportion of the work” or “Percentage of the work” to avoid further confusion.)

A subsequent paragraph reads: “As became apparent during the course of the trial and as is clear from the terms of the Guidelines, the permitted copying can, in fact, be 100% or such a large part of a work as to appropriate the whole (e.g. for a journal article in a periodical, a short story in an anthology, or a chapter in an edited book).” (para. 310) Phelan J. seems to be suggesting that York (or the AUCC, who drafted the model policy) has pulled this proportion out of thin air; however, the Supreme Court has said essentially the same thing: “It may be possible to deal fairly with a whole work…. The amount taken may also be more or less fair depending on the purpose. For example, for the purpose of research or private study, it may be essential to copy an entire academic article or an entire judicial decision.” (CCH, para. 56)

As for the qualitative aspect, or the importance of the portion compared to the whole (i.e. whether the portion copied represents the “core” of the work), Phelan J. engages in circular reasoning when he asserts that “Where a chapter from a book can stand alone and be important enough to be taken from the whole for inclusion in a course’s required reading, there is little doubt that the copied part is qualitatively significant to the work and to the author’s contribution.” (York, para. 317) This suggests that any dealing is automatically unfair to some degree because the portion copied is important enough that the copier feels the need to copy it.

Alternatives to the dealing

The Supreme Court in CCH noted that there may be alternatives such that the copying is unnecessary. They said “If there is a non-copyrighted equivalent of the work that could have been used instead of the copyrighted work, this should be considered by the court.” (para. 57) (While the court did not mention publicly-licensed and open access, these would be suitable alternatives as well.)

In Alberta the Supreme Court rejected the idea that a textbook for each student should be purchased if only a small portion is necessary to achieve the ultimate purpose (para. 31-32).

Importantly, whether the copy could have been paid for via licence is explicitly not a consideration: “The availability of a licence is not relevant to deciding whether a dealing has been fair.” (CCH, para. 70). However, while Phelan J. acknowledges this in York, he goes on to suggest alternatives that are, in essence, the same as purchasing a licence: using custom book services (which themselves pay licence fees which are passed on to the customer), or purchasing individual articles from the publisher (para. 330). In CCH, the court pointed out that fair dealing is an integral part of copyright (para. 70). Obviously, paying for the copy is an “alternative” to not paying for the copy, but if it were considered an alternative to the dealing for the purposes of this factor, it would always be unfair. Fair dealing is not an infringement of copyright; it is the right to copy (parts of) a work without paying for it at all.

Despite this, Phelan J. does acknowledge that in the end, this factor slightly favours York (para. 331).

Nature of the work

Phelan J. points out that there is “significant work, research, skill, and expense” involved in bringing materials to publication, whether they are poems, journal articles, or textbooks, and that “Most of these people [professional writers] are attempting to make a living from writing and publishing.” (para. 336). This is true. However, it is not relevant to the fair dealing analysis. In CCH the Supreme Court ruled that a non-trivial “exercise of skill and judgment” is necessary for a work to be protected under copyright (para. 16) – so, for example, a collection of names in a phone book, sorted alphabetically, would not attract copyright protection, as it only involves a trivial amount of judgment. However, nowhere in CCH or the Supreme Court’s related decisions is fair dealing predicated on the amount of work or creativity or skill or expense required to publish a copyrighted work; even the magnum opus of the greatest artist in history is subject to the limitations of user rights.

By “nature of the work”, the Supreme Court is referring to whether a work is published or confidential; whether its reproduction could lead to further dissemination, to the benefit of the public. Admittedly there is not much guidance for this factor, as Alberta and Bell do not really address it. But to interpret it to mean that “the harder an author or publisher has worked on something, and the more money that has been spent, the less fair a dealing might be” is to completely ignore the objective of copyright law, which is not only to encourage creation of works, but also their dissemination and incorporation into future works.

Effect of the dealing on the work

As Phelan J. points out, it is up to Access Copyright to provide evidence that they suffered a decline in sales that is linked to the copying taking place at York. However, he goes on to say that York’s copying does not need to be the only or dominant reason for the decline. He provides no precedent or reasoning for this other other than that the Supreme Court hasn’t said otherwise (para. 342). The evidence (which we do not have access to except for a summary), shows “an acceleration of the decline in the sale of works produced for the post-secondary educational market” since the introduction of the fair dealing policy (para. 347).

However, as noted above, there is a chicken-and-egg element to this case. If universities have previously been contributing to sales because they were paying for things they did not have to pay for, then naturally sales will drop when they stop paying. This was even pointed out by Access Copyright — the copying has been going on for many years prior to the introduction of the fair dealing policy, except it was under the terms of a blanket licence (para. 350). These terms were substantially similar to the types of copying that could be considered fair dealing after CCH and the Copyright Pentalogy. Hence, universities declined to renew the licences and instituted fair dealing policies. This is not necessarily evidence that the dealing is unfair, it could equally prove that universities were simply not taking advantage of their rights in the past.

Conclusion

The sense that I get from Phelan J.’s decision is that he believes York (and by extension, other universities using the same fair dealing policy) have suddenly taken advantage of a proffered gift (fair dealing) and running amok with it, to the ruination of publishers and authors. I believe (and have argued in my dissertation) that universities have been entitled to fair dealing all along, and that they are finally realizing that they are paying for uses that they do not have to pay for. Naturally, if a business model involves getting people to pay for what they could (are supposed to) have for free, there will be a significant drop in income once they catch on.

York’s fair dealing policy is not perfect. I have argued elsewhere (chapter 7) that these policies should provide more guidance and avoid “bright line rule-making” that obscures the flexibility of the fair dealing analysis. Neither York nor the AUCC could justify the 10% threshold in this case. It’s probably too much in some cases; it could be too little in other cases.

Furthermore, the absence of safeguards appears to be a big factor in Phelan J.’s conclusion that York’s policy did not translate to actual fair dealing in practice (e.g. para. 266). It’s important for institutions to have someone that can provide guidance in interpreting the policy and make decisions in “iffy” situations. In CCH this role was taken by the reference librarian, as per the Great Library’s Access to the Law Policy, and this was noted by the court in York (“copying at a single location under the supervision and control of research librarians”, “a policy strictly applied and enforced by librarians”) (para. 262).

Librarians and copyright officers can also help faculty find alternatives to relying on fair dealing such as works that the university already pays for via publisher or database licences, public domain materials, and publicly-licensed or “open access” materials (e.g. Creative Commons). Importantly, librarians can and should encourage faculty and researchers to publish in open access journals, and contribute to open access educational materials, to further expand the pool of readily-available works.

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anticircumvention exemption rule published

I’m going to try to summarize the newly published exemption to the anticircumvention rules, but it will take a while because it’s complicated as heck. For our class of university folks, it’s better, BUT — .

The “but” will take a while to explore. In the meantime, my less educational and informative assessment of this rulemaking:

The prolixity of this rulemaking puts it into its own special hell of inaccessible, unintelligible, crazy-making meshugaas / mishegas. It makes me nostalgic for the glory days of 2000, 2003, when at least you could read the exception. Can’t they just “publish any class of copyrighted works”?

Is this the kind of fine regulatory work we could expect even more of from a newly independent Office?

On medical devices and all the other really nutty stuff they were dealing with: The CO really should have been bold and broadened the run-around they did on printer cartridges in ’06, beefing it up with a little misuse …. As Cathy Gellis points out, they go the extra mile on interpreting their authority in some instances, so why not here, in areas where they are so clearly not competent?

The hubris of the CO really thinking they can and should opine on copyright and its appropriate boundaries in these contexts is astonishing. My read on the embargo is them trying to give time to weigh in post-publication, because they needed to get the decision out — Maria Pallante (the Register of Copyrights) is nothing if not diligent about deadlines.

See also:

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Authors Guild v. Google – another fair use win

Authors Guild v. Google (2d Cir. 2015/10/16) just came out, and it’s another win for fair use: “The Court of Appeals concludes that the defendant’s copying is transformative within the meaning of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-585 (1994), does not offer the public a meaningful substitute for matter protected by the plaintiffs’ copyrights, and satisfies § 107’s test for fair use.”

Commentaries and Links:

My thoughts while reading through the case. No analysis yet; just reaction.

Full Text Indexes Are Data About Books, and That’s Fair Use

  • I made this point 10 years ago:  Here’s what I wrote ten years ago about full-text as factual information about a work: “The total number of words, the presence of particular words, and the arrangement of those words in a work are, among other things, facts about the work. So are the author, the title, chapter titles, publication date, etc. Creation of an index to a work or multiple works includes gathering facts about the works. Conceptually, it’s quite distinct from the activities the Copyright Act is aimed at: copying and distributing works are clearly aimed at competitive copying, what used to be termed “piracy”.”
  • Compare with these quotes from Leval’s opinion for the Second Circuit:
    • “Even if the search function revealed 100% of the words of the copyrighted book, this would be of little substitutive value if the words were revealed in alphabetical order, or any order other than the order they follow in the original book.”  p.33Sure, a snippet search might reveal the factual answer to a question and eliminate the need for a sale (or a rental). But the facts are not protected by copyright. “Google would be entitled, without infringement of Goldberg’s copyright, to answer the student’s query about the year Roosevelt was afflicted, taking the information from Goldberg’s book. ”  (pp. 35-36)  Ooh ooh!  Data mining.
    • “the cumbersome, disjointed, and incomplete nature of the  aggregation of snippets made available through snippet view” — Leval: This phrase is so good I will use it twice! Just for emphasis.  (p.36)
    • “Furthermore, the type of loss of sale envisioned above will generally occur in relation to interests that are not protected by the copyright.” – p.35 This is a frank recognition that not all interests that COULD conceivably be covered by some copyright claim are in fact protected by copyright. I really hope this provides helpful support for examining the copyright interests underlying a claim will receive additional critical scrutiny.
  • All the stuff in about metadata & info about books is useful for librarians, scholars.
  • Carrie Russell at ALA made this point clearly:  “In Google Books, Court Finds Creating an Index Is a Fair Use”

Beautiful Language About Copyright’s Purpose

  • “Thus, while authors are undoubtedly important intended beneficiaries of copyright, the ultimate, primary intended beneficiary is the public, whose access to knowledge copyright seeks to advance by providing rewards for authorship.” slip op. p.13 — This isn’t new, but I always like to see the reminder.  Ah, Lord Ellenborough. “In the words of Lord Ellenborough, “[W]hile I shall think myself bound to secure every man in the enjoyment of his copy-right, one must not put manacles upon science.” Cary v. Kearsley, 170 Eng. Rep. 679, 681, 4 Esp. 168, 170 (1802).”  Trotting out the hoary old fan favorites!
  • I like this one: “[The crucial question: how to define the boundary limit of the original author’s exclusive rights in order to best serve the overall objectives of the copyright law to expand public learning while protecting the incentives of authors to create for the public good.” p.15

The Master of “Transformativeness” Sets the Record Straight:

Judge Leval wrote the book–well, the article–on transformative uses, which the Supreme Court then cited in Campbell v. Acuff-Rose (the “Pretty Woman” case). This effectively established the transformativeness analysis as a key gloss on fair use. Since then it has swept the courts, and proven indispensable in analyzing all sorts of uses. Judge Leval clarifies some confusions that have arisen:

  • “In other words, transformative uses tend to favor a fair use finding because a transformative use is one that communicates something new and different from the original or expands its utility, thus serving copyright’s overall objective of contributing to public knowledge.” p.17 I suspect this will be requoted:
  • “The word “transformative” cannot be taken too literally as a sufficient key to understanding the elements of fair use. It is rather a suggestive symbol for a complex thought” p.17 … corrective to the literalists who have tried to argue that “transformativeness” means the work itself has to be changed.
  • Helpful gloss on “transformative” versus “derivative works” on pp.18-19: “The statutory definition suggests that derivative works generally involve transformations in the nature of changes of form. 17 U.S.C. § 101. By contrast, copying from an original for the purpose of criticism or commentary on the original or provision of information about it, tends most clearly to satisfy Campbell’s notion of the “transformative” purpose involved in the analysis of Factor One.”
  • More substance in fn 18’s discussion of transformativeness and “complementarity” than in all of Kienitz v. Sconnie Nation. “We do not find the term “complementary” particularly helpful in explaining fair use. The term would encompass changes of form that are generally understood to produce derivative works, rather than fair uses, and, at the same time, would fail to encompass copying for purposes that are generally and properly viewed as creating fair uses. “
  • “We have no difficulty concluding that Google’s making of a digital copy of Plaintiffs’ books for the purpose of enabling a search for identification of books containing a term of interest to the searcher involves a highly transformative purpose, in the sense intended by Campbell. Our court’s exemplary discussion in HathiTrust informs our ruling. ”  p.21  No difficulty!  Exemplary!  “We have no doubt that the purpose of this copying is the sort of transformative purpose described in Campbell as strongly favoring satisfaction of the first factor.” p.22 It’s hard to see p.21 and 22, with its string cite that “We cited …” in HathiTrust, as anything other than a seriously smackdown of the Authors Guild.

Addressing the Factors:

 

The Authors Guild suggests the Second Circuit ignores the fourth factor. Not so:

  • Leval addresses the idea that commercial uses should presumptively be unfair based on earlier Supreme Court law (Sony):, noting that later Supreme Court jurisprudence “reversed on this very point”: “If that [Sony] were the extent of precedential authority on the relevance of commercial motivation, Plaintiffs’ arguments would muster impressive support.”  Ouch.  “However, while the commercial motivation of the secondary use can undoubtedly weigh against a finding of fair use in some circumstances, the Supreme Court, our court, and others have eventually recognized that the Sony dictum was enormously overstated.” Oh yeah. (p.24) … And then the discussion begins, starting with “The Supreme Court reversed on this very point” in Campbell.
  • It is not the role of the fourth factor to eliminate any possibility of a lost sale.  “But the possibility, or even the probability or certainty, of some loss of sales does not suffice to make the copy an effectively competing substitute that would tilt the weighty fourth factor in favor of the rights holder in the original. There must be a meaningful or significant effect “upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). ” p.35 (emphasis added)
  • Reminder: Not all interests are protected by copyright. The factual content is not protected by content. “Furthermore, the type of loss of sale envisioned above will generally occur in relation to interests that are not protected by the copyright.” – p.35 I really hope this provides helpful support for examining the copyright interests underlying a claim will receive additional critical scrutiny.
  • Sure, a snippet search might reveal the factual answer to a question and eliminate the need for a sale (or a rental). But the facts are not protected by copyright. “Google would be entitled, without infringement of Goldberg’s copyright, to answer the student’s query about the year Roosevelt was afflicted, taking the information from Goldberg’s book. ”  (pp. 35-36) Data mining is protected.

Derivative Works (infringing) Versus Transformative Uses (fair)

  • “Plaintiffs next contend that, under Section 106(2), they have a derivative right in the application of search and snippet view functions to their works, and that Google has usurped their exclusive market for such derivatives. There is no merit to this argument.” (p.37, emphasis added).
  • “The extension of copyright protection beyond the copying of the work in its original form to cover also the copying of a derivative reflects a clear and logical policy choice.” p.37 – Nicely done reminder that it’s not each and every creation of something “derived from” a work.
  • The exemplary list of derivative works in 17 USC 101 “strongly implies that derivative works … ordinarily are those that re-present the protected aspects of the original work, i.e., its expressive content, converted into an altered form.”  Leval, credited with reshaping fair use law through the “transformativeness” inquiry, here takes on one of the significant critiques / confusions: What’s the difference between a transformative fair use, and an infringing derivative work?

The Guild’s “Digital Risk” Argument? Not so persuasive.

  • Judge Leval is not warmly disposed toward the plaintiffs’ “sheer speculation” about “mere speculative possibilities” that libraries might misuse their copies. Thanks, Judge Leval!  Anyone who knows librarians knows we are the furthest from “nefarious” one could imagine.

Pretty much none of the Guild’s arguments were persuasive, actually. Judge Leval is Not Impressed.

Ten months did not improve Judge Leval’s impression of the Guild’s arguments. He was openly skeptical in oral argument of many of their points, and is not exactly using his nice voice to dismiss various arguments put forward by plaintiffs:

  • “We have no difficulty concluding …” (p.21)
  • “If that were the extent of precedential authority on the relevance of commercial motivation, Plaintiffs’ arguments would muster impressive support.” (p.24)
  • “There is no merit to this argument.” (p.37)
  • “Unlike the Plaintiffs’ argument just considered based on a supposed derivative right to supply information about their books, this claim has a reasonable theoretical basis.” (p.41)
  • “Plaintiff’s effort to [rebut Google’s security showings] falls far short.” (p.43)
  • “The claim fails” (p.44)
  • “We have considered Plaintiffs’ other contentions not directly addressed in this opinion and find them without merit. ” (fn 27, p.46)
  • Appendix B

 

Various Thoughts About the Opinion (While Reading)

  • Most detailed description I have yet seen (outside of technical documents) of the snippets. I wonder how much time the judges and clerks spent poking around in Google Books. I bet, a lot!
  • Cats! Everything is better with cats.  “Snippet view adds important value to the basic transformative search function, which tells only whether and how often the searched term appears in the book. Merely knowing that a term of interest appears in a book does not necessarily tell the searcher whether she needs to obtain the book, because it does not reveal whether the term is discussed in a manner or context falling within the scope of the searcher’s interest. For example, a searcher seeking books that explore Einstein’s theories, who finds that a particular book includes 39 usages of “Einstein,” will nonetheless conclude she can skip that book if the snippets reveal that the book speaks of “Einstein” because that is the name of the author’s cat.” p.23
  • Presumption of unfairness for commercial uses, relying on Sony?  IF … then yeah, impressive.  But NOT.  “If that were the extent of precedential authority on the relevance of commercial motivation, Plaintiffs’ arguments would muster impressive support.”  Ouch.  “However, while the commercial motivation of the secondary use can undoubtedly weigh against a finding of fair use in some circumstances, the Supreme Court, our court, and others have eventually recognized that the Sony dictum was enormously overstated.” Oh yeah. (p.24) … And then the discussion begins, starting with “The Supreme Court reversed on this very point” in Campbell.
  • Leval issues a little dicta of his own in fn 20. Maybe for the published version they’ll strip the last two sentences, which are actually assertions of opinions masquerading as facts; facts that were not adequately briefed in this case.
  • Really appreciated the use of the generic female in .
  • “Even if the search function revealed 100% of the words of the copyrighted book, this would be of little substitutive value if the words were revealed in alphabetical order, or any order other than the order they follow in the original book.”  p.33
  • “But the possibility, or even the probability or certainty, of some loss of sales does not suffice to make the copy an effectively competing substitute that would tilt the weighty fourth factor in favor of the rights holder in the original. There must be a meaningful or significant effect “upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). ” p.35
  • Frank recognition that not all interests that COULD conceivably be covered by some copyright claim are in fact protected by copyright: “Furthermore, the type of loss of sale envisioned above will generally occur in relation to interests that are not protected by the copyright.” – p.35 I really hope this provides helpful support for examining the copyright interests underlying a claim will receive additional critical scrutiny.
  • Sure, a snippet search might reveal the factual answer to a question and eliminate the need for a sale (or a rental). But the facts are not protected by copyright. “Google would be entitled, without infringement of Goldberg’s copyright, to answer the student’s query about the year Roosevelt was afflicted, taking the information from Goldberg’s book. ”  (pp. 35-36)  Ooh ooh!  Data mining.
  • “the cumbersome, disjointed, and incomplete nature of the  aggregation of snippets made available through snippet view” — Leval: This phrase is so good I will use it twice! Just for emphasis.  (p.36)
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Comments on Copyright Office Mass Digitization Proposal

I submitted comments on behalf of the Boston Library Consortium today to the Copyright Office in its “Notice of Inquiry  on Mass Digitization“, and the Copyright Office’s proposal of an Extended Collective Licensing regime.

Thanks to Terry Burton, Ryan Maloney, Charlotte Roh, and Jeremy Smith, for helpful editing; to Robert Cox (UMass Amherst) and Christian Dupont (Boston College) for supplying project details; and to Susan Stearns for leading the charge for BLC to speak out on this important issue.

Further Reading

Other commenters

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long copyright terms and evidentiary problems

Click to read PDF of decision in Rupa Marya v. Warner/Chappell

(downloaded from PACER / RECAP; issued from Central District of California 2015/09/22).

Feel free to sing “Happy Birthday” in public, because a court just said Warner wasn’t able to prove it owns the song — and if a major corporation that has been charging people (millions!) for decades to sing the song can’t actually prove it holds the rights, then I would bet money that nobody can.

The song “Happy Birthday” was originally written and published in the 1800s, and the melody is clearly in the public domain. Warner was claiming copyright only over the lyrics, but it has been making millions from licensing the simple lyrics “Happy Birthday to you … ” in a variety of movies and entertainment venues.

A documentary filmmaker elected to resist, suing for a declaratory judgment that Warner did not own the copyright.

Warner lost, because it was not able to prove that it owned the copyright. Why? Because it is really difficult to maintain records over the course of many decades.

We librarians and archivists know this already, of course; it’s why we have whole departments (hi, SCUA) dedicated to preserving and making accessible archival content. Even still, content will sometimes get “lost” or simply not be preserved in the first place.

That’s the situation Warner found themselves in: They didn’t have the original contracts, and the Copyright Office registrations were spotty. So Warner ended up having to rely on old testimony and newspaper quotes from Patty & Mildred Hill about how they composed the work — and they weren’t able to prove, ultimately, that they owned it. (Evidence geeks! Did you notice the “ancient records” exception?)

So, a fun lesson for copyright aficionados: The burden of proving you own a copyright is always on the rightsholder claiming infringement.

And a not-so-fun lesson for rightsholders who are always arguing for longer terms and fewer registration / renewal requirements: The long copyrights you seek are only as strong as the documentary proof that you actually own them.

Cheers,

Laura

eta: People have asked me if this decision will stand. I do imagine Warner is likely to appeal, but this is primarily a trial court weighing questions of evidence. The standard for an appellate review of a trial court’s evidentiary findings is very high — basically that the trial judge made obvious errors.  I haven’t reviewed the record (the materials submitted) so it’s hard to say, but the opinion doesn’t suggest a lot of room for interpretation. There’s just no evidence on some key points that Warner needed to prove — i.e., that it owns the copyright.  No evidence is hard to get around.

But Warner can afford really good lawyers, who could try to get around the issue with creative argumentation, or by doing more research and finding other documentation to prove their copyright.  So Warner has to decide: Is it worth the expense of litigating to try to hang onto a few million in royalties annually?  What are their odds of winning and losing on appeal, and is there a chance that they would establish a bad precedent if they appeal?

That’s just to appeal this part of the case.  The second part of the case is an argument that Warner has to pay back millions of royalties they unjustifiably claimed (what legal scholar Jason Mazzone has termed “copyfraud”).  This part of the case raises some additional interesting issues, and if it bolsters the doctrine of copyright misuse, I’ll be really happy.  I’m also curious to know what Warner might be liable for — how far back could the court go in looking at old revenues?  I don’t know, but now I want to find out.

 

Further reading:

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Comment on Copyright Office Visual Works Notice of Inquiry

July 23, 2015

The University Libraries at UMass Amherst filed a comment with the Copyright Office in its Notice of Inquiry on Visual Works.  Focusing on Questions 4 and 5, we sought to illuminate the ways in which images are used in teaching.

Click here to 
download the PDF file.

Other comments:

 

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Workshop on Author Agreements

Charlotte Roh and I are running a workshop today for ISSR (Institute for Social Science Research), on negotiating your author agreements.

Author Negotiations Workshop, ISSR, April 17 – 107 Bartlett Hall, 1pm – 3pm

“Negotiating Author Contracts and Agreements” with Laura Quilter, the Copyright and Information Policy Librarian at UMass Amherst

Friday, April 17, 2015 – 1:00pm to 3:00pm
107 Bartlett Hall

Scholars routinely sign away rights when they publish — rights that they need to share their own work with colleagues and students, and rights they need to publish and research new work. What rights should faculty keep, and what are the best strategies for negotiating author agreements? Laura Quilter and Charlotte Roh, both with the Scholarly Communication Dept. at the Libraries, will review the issues and bring their respective legal and publishing expertise.

Laura Quilter is the Copyright and Information Policy Librarian at the UMass Amherst Libraries. She educates the campus community on copyright and related matters, through workshops and consultations. She is an attorney (JD, UC Berkeley 2003) and librarian (MLS, University of Kentucky, 1993).

Charlotte Roh is the Scholarly Communication Resident Librarian at the University of Massachusetts Amherst, where she is manages the institutional repository, ScholarWorks@UMass Amherst. She is involved in library publishing, author consultations, and scholarly communication social justice. Her background is in academic publishing with Oxford University Press and Taylor & Francis, and she continues to freelance as an editor.

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