Copyright on the Rocks

Photo by author

I was enjoying the hike along the rugged southern coast of Vancouver Island. Across the rippling waters of the Strait of Juan de Fuca, the snow-capped Olympic Mountains in Washington State glistened in the morning sun. Below me the sea crashed into the rocks and a seal poked its head through the fields of bull kelp. Bare-skinned arbutus trees twisted their smooth orange limbs toward the sky. As I rounded a rocky bluff, a familiar sign suddenly leapt out at me. Emblazoned on the rock ahead of me, as clear as day, was the universally known © sign. How did it get there? By whose hand? 

Closer inspection showed that it was created by a naturally occurring lichen formation (see photo above). But it was uncanny. It was as if nature had imprinted the scene with her own assertion of copyright. 

As I continued trudging along the rocky path, I couldn’t help but muse about that copyright sign. Was Mother Nature letting me know that she had copyrighted and laid claim to this magical scene? After all, copyright is all about protecting the rights of creators, and this led me to reflect on the greatest creator of all, whom we can call God, or Mother Nature, or the Great Creator or whatever you choose. (To each, one’s own definition). Was the Great Creator in the Sky asserting her or his right to this creation? The scene in front of me certainly qualified as original and creative (a beautiful morning like this surely did “not just happen”). But, as I explained in my blog last week, for a creation to be protected by copyright, there is that tricky problem of “fixation”. Also, we know that copyright does not protect ideas, only expressions of ideas. Was this scene an idea, or was it an expression of one–and exactly how do you separate one from another? (And was it “fixed” other than in my mind?) 

The Berkman Klein Center for Internet & Society at Harvard has an interesting discussion of the concept of originality and the exclusion of ideas from copyright protection. It points out that according to US copyright law;

 “In no case does copyright protection for an original work of authorship extend to 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.”

It also notes that the Berne Convention states that protection “shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information”, and that both the TRIPS Agreement within the World Trade Organization and the World Intellectual Property Organization (WIPO) Copyright Treaty state that, while expressions are copyrightable, “ideas, procedures, methods of operation or mathematical concepts as such” are not.

So what are some of the elements that clearly illustrate the difference between an idea and the expression of an idea, the latter being subject to copyright? Many examples can be given; for example there may be only one Harry Potter but J.K. Rowling does not have a lock on the market for stories about boy wizards, so anyone is free to write on that subject. Some topics are generic and mundane, and cannot be copyrighted but yet these generic elements could form the core of a copyrightable work. As I discussed in an earlier blog, a recipe (a “mere listing of ingredients”, according to the US Copyright Office) cannot be protected by copyright. However, while a recipe to bake bread cannot be copyrighted, Beard on Bread is a copyrighted work because of the creative expression regarding the many aspects of baking that James Beard put into that book. 

Yann Martel’s Booker prize winning novel (and later award-winning film) Life of Pi was based on the premise of a boy sharing a boat with a tiger on an oceanic (trans-Pacific) voyage. Martel was accused by Brazilian author Moacyr Scliar of stealing this idea from his novel Max and the Cats, Scliar’s novel written twenty years previously in which a Brazilian boy and a panther cross the Atlantic together in a boat. Scliar accused Martel of plagiarism, and worse, and his publisher contemplated legal action. Martel freely admitted he had been inspired to adopt the “boy and animal in boat concept” by reading a review of Scliar’s work, but said he hadn’t read the novel itself. It didn’t go to court. Scliar dropped the issue after a conversation with Martel, but it is doubtful that Scliar or his publisher would have had much of a legal leg to stand on. People sharing boats with animals is an idea. His novel was his expression of that idea, but so was Martel’s. 

Sometimes it is difficult to separate an idea from its expression. When these become conflated this is referred to as “merging” or the “merger doctrine”. In effect, under this doctrine the expression of the idea has merged with the idea itself. In such cases copyright does not apply because copyrighting the expression would result in constraining the free use of the idea. A good example is the so-called “jewelled bee case”. In this case a jewelled pin in the shape of a bee was the subject of litigation. Would a similar jewel-encrusted pin in the shape of a bee created by another jeweller be an infringement of the copyright of the original jeweller? This was the question the court had to address in Herbert Rosenthal Jewelry Corp v Kalpakian. The court decided on the basis of the merger doctrine that the idea of a jewelled bee could not be protected by copyright, although the defendants could not copy every aspect of the original piece of jewellery (which they had not done, arguing that they had derived the design by studying actual bees).  Because the idea of a bee and its jewelled expression could not be separated, making a jewelled bee was not an infringement of copyright. 

A similar concept to the merger doctrine applies in the area of writing, called as a term of art “scènes à faire”. According to Duhaime’s Law Dictionary, this encompasses “Elements of an original work that are so trite or common that they are not captured by copyright.” There have been several well-known cases in the US where the courts have ruled that common elements of a plot cannot be copyrighted. For example, two police dramas set in the Bronx both involving Irish cops, prostitutes, and drinking would not necessarily involve copyright infringement on the basis of these elements because you likely couldn’t tell a police story in that setting without involving such characters and storylines. The US case where the scènes à faire principle was first enunciated (Cain v Universal Pictures) involved accusations of copyright infringement between the author of a book and a script written for a film. The judge ruled that elements in both such as a couple taking refuge in a church–and engaging in certain activities within the church such as praying and playing the piano–were, in effect, generic and were ideas rather than expressions of ideas. A recent case based on the same principles involved a suit against Disney by two screenwriters who accused the studio of lifting copyright protected elements from their screenplay to produce “Pirates of the Caribbean”. The court dismissed the case pointing out that the similarities between the leading protagonists of both works were common characteristics of pirates; 

“cockiness, bravery, and drunkenness are generic, non-distinct characteristics which are not protectable.”

“Scènes à faire” is not just some abstract copyright theory only relevant in the distant past. In the current dispute between Oracle and Google, in which Google is accused of copying Oracle’s “declaring code” (application programming interface, or API packages) to construct its Android platform, Google is arguing that Oracle’s code had become indistinguishable from standard industry practice and therefore it was entitled to use it without licence, similar to a “scènes à faire” argument. This is a bit hard to swallow when one considers that Google refused a licence from Oracle because it didn’t want to accept the terms of the licence, but then went ahead and copied Oracle’s copyrighted Java code anyway. As Keith Kupferschmid, CEO of the Copyright Alliance stated in an article at the time that the Alliance filed an amicus brief in support of Oracle;

“Google had other options, including creating new declaring code. And if Google wanted to benefit from Oracle’s innovative way to program device functions, it should have licensed the right to do so.”

I am sure that all of these legal arguments are well known to copyright lawyers and are probably a staple of any first year copyright law class, although I wouldn’t know, not having gone to law school! (At the time, I thought history was more interesting). So for you non-legal practitioners amongst my readers, I hope that this quick overview of ideas versus expressions of ideas may provide something new to think about. 

But back to the inspiration for this blog.  As I hiked along the rugged trail, still thinking about the © mark that seemed to have dropped from the sky, I concluded that no-one should be able to copyright this gorgeous setting. The creation that is Nature belongs to us all.  And by the way, let’s not screw it up for future generations. 

© Hugh Stephens, 2020. All Rights Reserved.

My Fixation with Fixation

credit: William Warby: Creative Commons Attribution 2.0 generic license

Sometimes I write about really serious copyright topics, like the economic impact of piracy or proposed changes in copyright legislation, and sometimes the blog posts are more whimsical (monkey selfie), light-hearted (rubber ducky), or practical (recipes), but they all deal with real copyright issues. I will let you decide which category this blog falls into, the serious or the whimsical. 

Earlier this year, just pre-COVID, my wife and I travelled north on Vancouver Island to Parksville, BC, a beach resort where, when the tide goes out, the sand dunes and tidal pools extend for at least a kilometer out to sea. It’s a great place to beach-comb and to build sandcastles. In fact, Parksville hosts an annual Sand Sculpting Competition as part of its Beach Festival held every July and August. Last year over 100,000 people visited and viewed the sculptures. (This year it has been cancelled owing to the pandemic). And sculptures they are. Gone are the days of your grand-dad’s sandcastle. These are sculptures that demonstrate true artistry, with subjects ranging from Icarus flying too close to the sun to sea monsters to fairy princesses. They are truly works of art, as you can see by clicking here. And a work of art ought to be protected by copyright, right?

To be eligible for copyright in the United States and in most countries a work needs three key elements (1) fixation (2) originality and (3) expression (of an idea). Originality requires that the work be created by the author and must possess “at least some minimal degree of creativity” (according to the US Copyright Office-USCO). Expression of an idea means taking a generic idea (such as a vase of flowers) and expressing that idea in a specific, creative way (such as a painting of the flowers). 

Fixation is a bit more complicated. Again, quoting the US Copyright Office with regard to US law, fixation requires that a work be “fixed in any tangible medium of expression, now known or later developed, from which [it] can be perceived, reproduced, or otherwise communicated, either directly or indirectly with the aid of a machine or device.” In Canada, there is no specific requirement for fixation, although it is implicit. 

As to how it is fixed, in the US the author’s expression may be fixed “in a physical object in written, printed, photographic, sculptural, punched, magnetic, or any other stable form.” In other words, the exact form of fixation is not prescribed, but some activities are clearly not fixed. A song that you compose in your head and perform for a live audience is not subject to copyright protection, but if you write down the music or record the performance of the song, that constitutes fixation. Therefore as long as your song meets the other basic requirements, it can be copyright protected. Ironically, if someone makes an unauthorized recording of your live performance, this can constitute fixation allowing you to claim copyright even though the recording itself is an infringement. Using the same criteria, a story that you tell someone does not qualify for copyright protection unless it is written down or recorded, but if it is “fixed” in some way the story (work) can qualify for copyright protection if it meets the originality test.  

What about a work that exists in a physical form but that form is not permanent? Like a sand sculpture. Does that form constitute fixation? Could a sand sculpting artist copyright their work for its original design and shape? 

The USCO provides the following guidance that a work may not be protected by copyright; “if the work or the medium of expression only exists for a transitory period of time, if the work or the medium is constantly changing, or if the medium does not allow the specific elements of the work to be perceived, reproduced, or otherwise communicated in a consistent and uniform manner. A sand sculpture, particularly one below the high tide mark, is certainly transitory. One that is built higher up the beach, in a protected area (like the ones at Parksville) is certainly less transitory but it wouldn’t survive a good rainstorm. (It doesn’t rain in Parksville in the summer, but if it did…..). What if the sculptor added a few secret ingredients, like a wee bit of Portland cement, to the moist sand? Now that could be permanent. But would it be a “sand” sculpture? It’s a copyright conundrum. 

The website New Media Rights, in a non-legal FAQ blog posting for creators discussing “What Can and Cannot be Copyrighted”, gives a sandcastle or an ice sculpture as examples of objects that cannot be protected by copyright because they are not fixed;

“’Fixed’ work is defined as a work that is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” For example, a sandcastle or ice sculpture that you worked all day on would probably not be considered fixed so it’s not copyrightable. However, as soon as you take a photograph of your sandcastle or ice sculpture, thus fixing it in reproducible medium other than your own memory, the image and design of the sandcastle can receive legal protection.”

There are two important points here. First they hedge their advice on whether these objects are subject to protection by copyright, by saying they “probably” would not be considered for protection. They are smart to hedge because very little is really definitive when it comes to copyright. Then they make the point that to obtain legal protection, all that needs to be done is take a photograph of the image. This will “fix” it since photographs qualify for copyright protection. However, the photograph is a separate work, not the original work so what if someone else took the photograph? They would then own the copyright in that photo, so it is important that if you are the sculptor, you take the photograph. 

OK, taking a photograph of the work is an easy out, but let’s chase this concept all the way down the rabbit hole. Suppose that no photographs were taken, but yet the author still wants to protect their creation from unauthorized copies. Could a sandcastle or an ice sculpture be sufficiently permanent to be fixed? 

I remember well the ice sculpture festival “Winterlude” that takes place in the depths of every winter in Ottawa, where I lived for a few years. Quebec City also has a well-known annual ice sculpture festival. The creations are truly remarkable as you can see here. Of course one day in late spring it will warm up in Ottawa (the world’s second coldest capital city, by the way, exceeded in frigidity only by Ulaan Bator, Mongolia’s capital), and the sculptures will melt. But what if the sculpture was carved at the North Pole, or in Antarctica, in a location that will always be subzero? (Until global warming allows palm trees to grow there). Surely then it would be fixed? What about an ice sculpture created for a hotel banquet table setting which, after it has been displayed, is then put back in the hotel’s freezer? It would be fixed as long as the freezer works, but perhaps not permanent. But “permanence” is not required for fixation. Law professor Marc Randazza pondered this question a few years ago in this blog posting; he concluded that an ice sculpture was fixed. 

The issue of fixation has been tested in the courts. The well-known law firm of Bird&Bird reports on a case in the UK where the High Court found copyright infringement of designs debossed in foundation powder pallettes. Once put on a consumer’s nose or cheeks, the design is gone in a puff of powder. But in Britain, under the Copyright, Designs and Patents Act of the UK;

Copyright in literary, dramatic or musical works does not subsist until the work is recorded in writing or otherwise (section 3(2), CDPA). Artistic works are not explicitly required to be fixed in a tangible medium.” 

According to the UK court, as reported by TwoBirds website; 

“The designs could be compared to copyright-protected sand sculptures that would be washed away by the tide. If the sculpture was not so protected, the artist would be unable to claim the copyright in a photograph of it. Similarly, a bespoke wedding cake that later was eaten could still constitute a copyright work, as could an ice sculpture that had melted. The court emphasised the unique position of copyright in an artistic work, in that it does not explicitly require permanence.”   

So in the UK at least, it doesn’t matter if the work has disappeared as long as it was in a tangible form at one point. 

On the cake design issue, a US law firm looked at a real situation where the cake for Barack Obama’s inauguration was copied by the Trump Administration, which ordered an exact replica but from a different bakery. The question was whether the original cake designer could sue for copyright infringement. This article pointed out that for legal action to be taken on a copyright case in the US, the copyright has to be registered, which it wasn’t, and questioned whether the baking of a layer cake and decorating it with designs using the Great Seal of the United States etc. was sufficiently original. We will never know. But the “transitory nature” of the cake did not seem to be an issue. 

I can go on. Chalk art is an interesting topic. It is probably transitory, like a sandcastle, but could last for a considerable period of time if it was in a protected setting. I found an article online regarding chalk art and copyright but it was a warning to chalk artists not to infringe the copyright of others by using unlicensed images as subjects of their art, rather than arguing that the chalk designs were protectable works of art in their own right. 

Then there is the “plating” (arrangement) of food on a plate by a chef. The California Law Review (May 2020) contains a well-researched article arguing that an artistic plating should qualify for copyright protection because it meets the standard of originality and expression despite the banality of the underlying ingredients and the fact that the food arrangement will disappear when eaten. On fixation, one argument advanced is that because the food plating arrangement is repetitively performed, night after night, the fact that it is consumed nightly does not mean that is not sufficiently stable to be “perceived, reproduced, or otherwise communicated for a period of more than transitory duration”, in the same way that an argument can be made for copyrighting of “conceptual art” (installations). It’s a valiant argument but to date has not been successful in court. In the only similar case cited (Kim Seng Co. v. J & A Imports, Inc), in which copyright was claimed in a specific bowl of Vietnamese food as a three-dimensional structure, the claim failed because the dish was ruled to be neither an original work of authorship nor fixed in a tangible medium.

How about fireworks displays? According to the IP law firm of Suiter Swanz, Can you Copyright a Firework Show?, the answer is “no” because it is not fixed in a tangible medium of expression. On the issue of photographing a fireworks display this blog notes that;

“the fact that uncopyrightable subject matter has been fixed through reproduction does not transform the underlying subject matter into copyrightable material.  For example, a photograph or video of a fireworks display may be a copyrightable fixation of the photographic image(s) of the fireworks display, but the fireworks themselves do not constitute copyrightable subject matter… Since a firework display is not recorded on a fixed medium it does not receive copyright protection and it can be photographed but not always recorded/filmed. The photograph taken of the display can be protected as an original photographic/artistic work, with the copyright typically owned by the photographer.”

As you can see, this is complex stuff! There are variations between different legal systems in terms of fixation, and in most cases, the issue is rhetorical rather than practical. The courts are not exactly inundated with cases questioning whether ice sculptures or sand sculptures are fixed and thus subject to copyright, but legal questions involving fixation do occur. These include questions such as whether ephemeral copies–temporary reproductions lasting just a few micro-seconds that are required for technological processes, like broadcasting–are subject to copyright. In Canada, the courts have held that they are reproductions under the Copyright Act; in the US, the situation is just the opposite, when it comes to broadcasting. Even though there is an ephemeral use exception for broadcasting in US law, there is no general ephemeral use exception in the US. In the EU, there is. As I said, it’s complicated. 

So what explains my fixation with fixation? In my defence, all I can say is that I find it fascinating to explore the nooks and crannies of copyright law and its various interpretations. I know it’s all a bit arcane, but I hope you enjoyed the journey. 

© Hugh Stephens 2020. All Rights Reserved. 

Are Libraries the Enemy of Authors and Publishers?

As regular readers of this blog will know, I am unabashedly and unapologetically pro-©, pro-creator, pro-author, pro-artist, pro-publisher and a strong supporter of our cultural and entertainment industries. I am also pro-public library. This raises the question of what to do about publisher Kenneth Whyte’s long and controversial opinion piece that appeared in the Globe and Mail on July 25, “Overdue: Throwing the Book at Libraries”.  (Byline: “As important as public libraries are to civic culture, the good they do is made possible by being a net harm to literature, Kenneth Whyte writes. Libraries are overdue for renewal”). 

Should I refute his criticisms of this venerated public institution? Others, including not surprisingly librarians themselves, have already done that. I could try to defend Whyte’s thesis, that public lending libraries undercut booksellers to the detriment of authors and publishers by giving readers for free what they should be paying for. But then his description of libraries as “pimping free entertainment to people who can afford it” becomes a little difficult to defend, even allowing that he may be deliberately using strong language for effect. I could simply ignore it, as it appears many others in the copyright world have done (and as a couple of friends suggested that I also do). After all, attacking libraries is not a helpful tactic in dealing with a public that is not always convinced of the benefits of copyright to society, and won’t win authors and publishers many friends. Techdirt, a notoriously anti-copyright publication has already jumped on Whyte’s article accusing him of being a “copyright maximalist” who hates libraries. 

Now since you are reading this blog, it is obvious that I did not take the friendly advice to avoid wading into the debate on Whyte’s opinion piece. Why? Because the issue he has raised, which is far from being cut and dried, intrigues me. There are many shades of grey on this one. Whyte’s piece is not the first attack on the role of the public library in the book trade, only the most recent. In Britain a few years ago, when British libraries were facing a funding crisis, popular children’s writer Terry Deary claimed that libraries had outlived their usefulness, being relics of the Victorian age when there was widespread illiteracy. He is reported to have said that: “People have to make the choice to buy books. People will happily buy a cinema ticket to see Roald Dahl’s Matilda, and expect to get the book for free. It doesn’t make sense”. 

There is little doubt that libraries do hustle for business, trying to broaden their appeal to consumers to justify their need for public funding, and this can make it sometimes appear that they offer (unfair?) subsidized competition to booksellers. A good example is this clip from “Curbside Larry” for the Harris County Public Library in Houston, TX. Yes, it’s hilarious and no, it’s not a spoof (I think). It certainly gets its point across that “we got it, and it’s absolutely free”. So librarians are good marketers of what they offer. Better that than stock a product no-one is aware of. They can also be very protective of their own turf to the point of even objecting to free pop-up libraries in parks and people’s front gardens. 

One measure that has been taken in Britain, Canada, Australia and New Zealand–but not the US–to help offset the diversion of revenues away from authors and publishers because of library lending is the Public Lending Right (PLR) scheme. Under the PLR authors (and in some countries publishers) get annual payments based on the number of time their titles are loaned out by libraries. These payments come from general government revenues and are a form of cultural subsidy. Deary complained that the British PLR paid him only 1/6 of what he’d get from a book sale. At the time he was getting 6.2p each time his book went out on loan up to an annual maximum of £6,600. He complained that “if I sold the book I’d get 30p per book. I get six grand, and I should be getting £180,000”. (I’m not sure about his math; just quoting). As for the Canadian PLR regime, Whyte describes it as throwing “a few beans at guileless authors in compensation for the use of their works in libraries”, and urges that it be vastly expanded and adopted in the US. 

The Canadian PLR was instituted in 1986 and was the result of concerns at the time by authors that they were being “ripped off” by libraries. Of course not every book loaned out is a foregone sale, a point repeatedly made by librarians. Maybe a sixth of a loaned loaf is better than 100% of a loaf that wasn’t sold and brought in no revenue? Just how generous the PLR actually is clearly depends on your perspective. University of Ottawa law professor and blogger Michael Geist points out that the PLR is the gift that keeps on giving for authors, earning them some revenue for up to 25 years (as long as their books are in a library’s inventory and go out on loan), albeit with a diminishing percentage as the years pass. In Canada, seven “marker” libraries are used to determine the inventory. That said, according to Geist the average payout per author last year was only $822 with a maximum per title of just $467.88 and the maximum payment to an individual author of $4,500. No one in the literary field is getting rich from the Public Lending Right. The total funding envelope is just over $14 million annually so for the PLR to provide any meaningful income to authors, it would have to be increased many-fold. That is unlikely to happen, despite Whyte’s calls for “more”. 

It is not just libraries that stick in the craw of some authors. Second-hand book shops are also a target. Authors get no royalties from sales of second-hand books. In the US this is known as the “first sale doctrine”, (called “exhaustion” in Canada and some other countries) and this principle allows the purchaser of a book to do just about anything with it once it has been paid for;  keep it, give it away, lend it, sell it or burn it; anything except copying and redistributing it. The authors gets their royalty from the initial sale. Stores selling used books are common, and often they “recycle” books by taking back books that have been “gently read” against a credit that can be used to purchase more used books from them. I frequent one myself because it has a great selection of out-of-print titles, but if it’s a relatively recent title that’s also available online at Amazon or Indigo, or at a bookshop selling new titles, should you feel guilty if you pick up your copy second-hand? Some writers think so; others are more relaxed about it arguing that the most important thing is that a book gets read. 

As an aside, the same principle of exhaustion (i.e. once you buy a work, you can do with it what you wish without further reference to the author, except for not violating the author’s copyright) applies to works of art in Canada and the US. As I noted in an earlier blog posting, there is a push afoot in both countries to get a legislated “Artists Resale Right” whereby an artist would get a small portion of the sale proceeds when one of their works is resold. (A resale right exists in the EU, UK and Australia). One notorious case cited in Canada is that of the Inuit artist Kenojuaq Ashevak, who sold her famous print “Enchanted Owl” in 1960 for just $24. An original print of the work recently changed hands for over $200,000 but her estate gets not a sou. All the benefit from the increased value of her work as she became renowned in the art community accrued to galleries and previous purchasers, and this pattern is often repeated with artists whose work becomes sought after later in their careers. A resale right wouldn’t work for writers though because (a) it would be difficult if not impossible to track the resales and (b) books usually—but of course not always—go down in value as time passes.

But back to libraries. So far I have been discussing how libraries and authors relate mostly with regard to physical books. Lending of digital works opens up many new questions. In the case of an e-book, a consumer typically does not purchase the work but rather licences the right to read the work on a device. The copy on that device could be loaned to someone, but the device would have to be loaned as well. However when loaning a digital book, you can’t have your cake and eat it too. You can’t lend out the work or give it to someone else while still retaining a copy. Libraries have got into the e-book business in a big way, often licensing multiple copies of a work (under terms where they pay considerably more per copy than an individual user would), and then lending out these e-copies to borrowers. However, it is important to note that if a library licenses ten copies of, say, The Handmaid’s Tale, only ten copies can be in circulation at any one time. One digital loan has to terminate before another digital copy can go out on loan to a new borrower. 

Despite this, many publishers are not happy and are concerned that the ease and ubiquity of library digital copies is cannibalizing e-book sales. The argument is that borrowing a physical book causes “friction” that can be alleviated by the consumer when opting for a purchase. Friction consists of inconveniences such as having to go to the library to pick up the book, often having to request it be put on hold, returning the book on time and paying a fine if not returned by the due date, etc. A digital book abolishes friction, as it can be downloaded at home from a library website and the download sunsets when the loan period is up. In an attempt to deal with this issue, in November of last year MacMillan announced that in order to encourage purchases it would withhold new digital titles from libraries for eight weeks after digital release to consumers, with the exception of one copy per library. This is similar in concept to the “windowing” strategy used by major film studios whereby the DVD or streaming release of a film is held back for a set number of weeks while the film plays in cinemas. That strategy is becoming less prevalent in the movie industry, in part because of concern that withholding the home entertainment versions encourages piracy as determined consumers try to skirt the rules to get access to pre-release streaming versions of popular films. Would delayed release also encourage e-book piracy, which is already a growing problem? It’s hard to say, and we may not find out, since MacMillan backed down after loud protests from the library community. However, COVID-19 was undoubtedly a factor and the policy could be revived in future in a post-COVID world. 

COVID was also the catalyst for another experiment involving digital lending and libraries, this time the so-called “National Emergency Library” launched by the Internet Archive in the US. Through its “Open Library” project, the Archive (and other libraries) had been pushing a project whereby it scanned books in its inventory and made them available for loan digitally, bypassing the normal licencing requirements for e-books. The issue of scanning a book to provide a digital version is controversial, with detractors saying this is a form of copying while supporters claim it is a fair use by simply changing formats. Until COVID hit the Archive was careful to follow normal lending rules by allowing only as many copies into circulation as it physically had in inventory. This is known as “controlled digital lending” and requires that if a scanned digital copy is loaned out, the physical copy stays in the stacks. In other words, there is a wait list and a limit on the number of copies in circulation (no more than the number of physical copies from which the scans were taken). 

With the arrival of COVID, the Archive announced that it was suspending the normal practice of maintaining a wait list and would allow unlimited digital copies to go into circulation. While a few initially lauded the Archive for taking measures to assist consumers self-isolating because of the pandemic, it was quickly pointed out that this unilateral move hurt authors and publishers—who were not consulted– and was a case of giving away someone else’s property. Publishers had already loosened controls during COVID and brought suit against the Internet Archive accusing it of giving away what it did not own. The National Emergency Library has now been closed but the suit over controlled digital lending continues. 

Kenneth Whyte, however, was not complaining about the Internet Archive’s agenda to digitally scan and circulate books for free; he was complaining about taxpayer-funded competition from public libraries who lend out both hard copy and digital books in apparent competition with publishers and booksellers. One of Whyte’s suggested solutions is to impose a charge to use libraries, like a monthly Netflix subscription, with an exemption for low-income borrowers. In other words, institute a means test for library borrowing. Somehow I don’t think that is going to catch on. In fact to judge by the majority of the reaction to his op-ed, his views are not mainstream, even amongst publishers. Kate Edwards, Executive Director of the Association of Canadian Publishers wrote to the Globe and Mail to put on the record that;

Canadian publishers recognize that libraries are an important part of the reading ecosystem and a primary channel for book discovery….Library sales are also an important part of the publishing business model…Readers are best served when libraries purchase and promote a diversity of material, including books by local authors published by independent Canadian presses. Increased investment in and attention to these efforts are critical to building a strong reading and literary culture. Publishers and librarians are well poised to pursue these shared goals in partnership, to the benefit of readers, writers and local communities.” 

That sound you just heard was the rug being pulled out from under Whyte by his publishing colleagues. That said, many writers and independent publishers are in a perilous financial position, particularly with the additional challenges of COVID. Publishers, booksellers and writers face challenges from large online book marketers and digital publishers like Amazon, second-hand book stores, consumers who pirate hard copy and e-books, universities and public education systems that refuse to acquire copying licences arguing that their actions constitute fair dealing and, yes, libraries. However that is the ecosystem we live in with all its complexities, and to single out libraries as the main problem seems disingenuous. It’s not cut and dried as to who is right and who is wrong, if that is even the correct way to assess the situation. The situation is complex, combining several hundreds of years of publishing and bookselling trade practices, a hundred and fifty years of public libraries, and twenty years of the digital revolution. 

Changing the public lending model and the role of public libraries is an unlikely and frankly politically unacceptable solution to the problem. However, ensuring that authors get paid for the use of their work by educational institutions, and taking stricter measures against digital piracy and unauthorized copying are actions that could be taken. In the meantime, despite the financial challenges that authors and publishers face, I can confidently predict that books will continue to be written, published, and sold in digital and hard copy formats, both new and used, while being simultaneously circulated by public libraries. There are many paths to literacy. 

© Hugh Stephens 2020. All Rights Reserved. 

USCO’s Study Offers Hope for Reform of the “Notice and Takedown” Law, But Ducks the Issue on Site Blocking

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The US Copyright Office (USCO) recently released its 200 page study on Section 512 of the 1998 Digital Millennium Copyright Act (DMCA), the legislation passed to implement US obligations under the WIPO (World Intellectual Property Organization) Copyright Treaty. This section of the DMCA is otherwise known and better described as the Online Copyright Infringement Liability Limitation Act, the essence of which are the notice and takedown provisions of the legislation. The USCO study is a result of five years’ work reviewing whether Section 512 is working effectively in terms of balancing the needs of internet platforms with those of creators. In a nutshell, Section 512 represents the “grand bargain” that was struck back in the late 1990s at the dawn of the digital age to facilitate the development of online platforms while protecting creators and rights-holders. 

In its most basic terms, the essence of the bargain was that internet platforms (called OSPs, or Online Service Providers in the legislation) would be provided immunity from prosecution for storing, caching, transmitting or linking to copyright infringing materials as long as they took reasonable measures to remove infringing materials when notified of infringements by rights-holders. This is the so-called “safe harbour”. There are many more elements to this, including the need for repeat infringer policies, the question of what constitutes “knowledge” of infringement, the process by which content is taken down and put back, and so on, but the basic arrangement was a compromise between copyright industries who wanted internet platforms to bear more responsibility for carrying or facilitating access to infringing content and internet companies who wanted to avoid the uncertainties and pitfalls of ongoing litigation for infringing material on their platforms. 

More than two decades later, those nascent internet companies (many of which did not even exist in 1998) have become corporate behemoths. Generally speaking Silicon Valley has been very satisfied with the way in which Section 512 has worked; creators, rights-holders and the content industries not so much. As the USCO Study puts it: 

“In the twenty-plus years since section 512 went into effect, the question has often been asked whether the balance that Congress sought has been achieved, particularly in the light of the enormous changes that the internet has undergone.”

“Roughly speaking, many OSPs spoke of section 512 as being a success, enabling them to grow exponentially and serve the public without facing debilitating lawsuits. Rightsholders reported a markedly different perspective, noting grave concerns with the ability of individual creators to meaningfully use the section 512 system to address copyright infringement and the “whack-a-mole” problem of infringing content reappearing after being taken down. Based upon its own analysis of the present effectiveness of section 512, the Office has concluded that Congress’ original intended balance has been tilted askew.” (emphasis added)

Given this conclusion, the USCO Study makes a number of recommendations as to how Congress could restore that balance. The debate on these recommendations is going to be drawn out, intense and fierce, and there is not the space here to get into the specifics. Many others will be writing on these questions over the coming months. Instead, I want to focus on just one issue that was raised in the study; that of blocking access by consumers in the US to offshore pirate streaming and download sites as a means to combat content piracy. The short-hand term for such measures is “site blocking”.

The USCO examines site blocking in the section of the Study (pp. 58-63) that looks at how other countries have tried to strike the balance between platforms and rights-holders when it comes to online infringement. It notes that “recent studies have shown that website blocking has operated as an effective tool in addressing digital piracy, despite the familiar misperceptions about its efficacy and alleged potential for abuse” and that “currently, more than 40 countries have either enacted or are under an obligation to enact some form of no-fault injunctive relief to block access to piracy sites”. This is all thoroughly documented. The USCO Study goes ono to examine the very effective systems in place in the UK, Australia, India, and the EU, regimes that I have commented on elsewhere (here, here and here). So far, so good.  But then we move to the section of the Study dealing with “Specific Findings and Recommendations”. 

Site blocking falls under the rubric of “Adoption of International Approaches”. Actually, given the non-recommendation that results, it should more accurately read the “non-adoption” of approaches used successfully by other countries. This section starts out all right;

Some rightsholders also advocated for a more extensive system of no-fault injunctions to address websites primarily dedicated to piracy…many of these websites are located abroad, beyond U.S. jurisdiction, which insulates them from any likelihood of being forced to pay millions of dollars in statutory damages.  Rightsholders supporting the proposal of expanded injunctive relief report that such systems have been largely effective in addressing the most egregious cases of infringement.”

But then, after a discussion of the technical means to give effect to site blocking, the Study turns to the notorious anti-copyright lobby group EFF (Electronic Frontier Foundation) for its received wisdom; 

EFF echoes a number of website blocking opponents when it asserts that website blocking systems ‘introduce dangerous mechanisms for Internet censorship, interfere with users’ fundamental rights, and, often, prove ineffective in solving the problem of online copyright infringement’.”

All of these assertions are effectively rebutted by footnoted studies cited by USCO but in its attempt at a “on the one hand, and on the other” approach, the Copyright Office’s “two-handed” strategy inevitably ends up going nowhere. 

After citing numerous research papers documenting the effectiveness of site blocking, the Study’s only recommendation is for “additional, dedicated study”. In other words, sit firmly on the fence. This is a disappointing outcome to what could have been an important opportunity to add a major tool to the US toolbox to combat online piracy. As I noted in a blog to mark World IP Day “Time to Forge a Global Solution to a Global Problem (Blocking of Pirate Streaming Sites)”, the US is fast becoming an outlier and the major holdout on instituting some form of site blocking. And it’s not as if the US doesn’t have a problem. The US is the leading source of visits to pirate streaming sites globally. It thus has the dubious distinction of leading Russia, China and Brazil as the home of the largest number of pirate streaming site users, with 1.2 billion pirate site visits in December 2019 alone.

Strangely, Section 512 already contains a provision–Section 512(j)–that could be used to obtain injunctions to effect site blocking. That was the original intention, as noted in a 2007 study published in the Vanderbilt Law Review, cited as a reference by the USCO; 

“The Foreign Site Provision may be used to stop the U.S. infringement that occurs through the use of foreign sites and services. Interpreted correctly, the provision may be used to block infringing sites as well as those that offer the programs used to infringe. After obtaining a judgment against just one direct infringer, a copyright holder may have a service provider enjoined from providing access to the infringing site. While blocking an infringing site will not stop copyright infringement through that site worldwide, it will stop infringement through that site in the United States, where 2005 album sales were at their lowest level since 1996. The Foreign Site Provision will not solve all the problems of copyright holders. Aside from handling continued worldwide infringement, copyright holders using the Foreign Site Provision will undoubtedly face unfounded claims of censorship and damage to innovation from their actions. Nonetheless, the provision was written to protect copyrighted works and should be used accordinglyThe Foreign Site Provision is the next step in this ongoing fight against digital piracy and copyright holders should take it.”

Despite this call for use of Section 512 (j) and language in the legislation providing for site blocking injunctions, this provision has seldom if ever been used. The USCO Study examines this anomaly, and notes that rights-holders assert that they have not used the provision because “courts have interpreted the injunctive relief too narrowly” and it has become conflated with domestic takedown requests. Smaller rights-holders complain about the cost of pursuing injunctions. The platforms have argued that 512(j) is not needed or used because relief is available through the notice and takedown provision (although the USCO study noted that this is unbalanced and is not working as intended) and that expanding it could jeopardize their safe harbour protections. Whatever the reason, 512 (j) has effectively been a dead letter from the inception of the DMCA. 

So where does the USCO come out on this issue? While accepting that there may be some untapped potential in Section 512(j) to combat online infringement, it concludes that it’s unlikely that changes to this provision would play a significant role in restoring the balance between rights-holders and platforms. Yet at the same time USCO admits that courts have been overly narrow in their consideration of whether injunctive relief should be available to rights-holders under 512(j). Therefore it recommends that Congress monitor what is happening and consider (eventually), whether clearer language is needed. 

“For this reason, Congress may wish to monitor court decisions interpreting this provision and consider whether a reformulation is warranted.”

This again is a disappointment and effectively ducks the issue despite a clear conclusion that this element of the legislation is not working as originally intended by Congress. 

One cannot help but wonder why the USCO wandered into the site blocking minefield if it was not prepared to come up with any concrete recommendations. Perhaps this is explained by the fact that the Study’s terms of reference required it to respond to comments received. Some rights-holder organizations filed submissions arguing for a site blocking mechanism in the US through injunctive relief, while others, like the EFF, submitted opposing views. USCO tries to capture both viewpoints without providing any direction. 

Hearings have already begun on the Study, despite some platforms claiming that the COVID epidemic requires that examination of copyright issues be put off for another day. But it has already taken five years to produce the USCO’s 512 Study. Let’s hope it doesn’t take as long to come to grips with its recommendations. It would have been helpful to see concrete recommendations, of which there are many in the Study that are useful, also extend to enablement of site blocking in the US. That didn’t happen, so reform will have to come in some other way. In the meantime, an opportunity has been missed and the US remains a major outlier when it comes to using site blocking orders—either through the courts or via an administrative regime—to block access to offshore pirate streaming content. 

I am confident that the US will eventually get there. The question is “when”. From a rights-holder perspective, the sooner this happens, the better. 

© Hugh Stephens 2020. All Rights Reserved.