Issues in American Copyright Law and Practice

 

by

 

Joseph F. Baugher

 

Last revised May 23,  2017

 

This work is issued under

a Creative Commons license

Creative Commons License

 

This is my layman’s perspective on American copyright law and practice.  I should mention as a disclaimer that I am not a lawyer, nor do I play one on TV.  Certainly don’t take this as legal advice of any sort—for that you should talk to a real lawyer.

 

Table of Contents

 

 

Copyright is explicitly provided for in the US Constitution.  Article 1, Section 8 says

 

Congress shall have the Power to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries

 

This clause gives Congress the power to grant the author or the owner of a creative work a bundle of exclusive rights to use or exploit their work in certain ways.   This set of exclusive rights is known as copyright--once a work is copyrighted, no one else can do any of these things without the permission of the copyright owner.  This clause is often referred to as the intellectual property clause, since it gives Congress the power to give people the right to profit by the use of their intellect--it covers patents as well as copyrights.

 

It is very rare that the Constitution actually lists any specific reasons for the powers that are granted to government, but a reason is spelled out here.  The Constitution says that the purpose of copyright (as well as patents and intellectual property laws in general) is to advance the progress of science and the useful arts—the 18th century way of saying that the ultimate purpose of copyright and patent laws is to promote the advancement of knowledge, art, and technology.  The purpose of copyright and patent laws is not to provide authors and inventors with an income—the establishment of a legal system that ensures that authors and inventors can get paid for their work is a means, not an end.  The Framers imagined that the best way to promote the advancement of technology and knowledge was to ensure that authors and inventors could obtain financial remuneration for their efforts, which would encourage them to produce still more works. 

 

Over the years, Congress has passed numerous laws that have given legal backing to the notion of copyright, including the granting of a set of exclusive rights to copyright holders.  Among the rights that Congress has given to the copyright owner is the exclusive right to publish or distribute copies of the work, as well as the exclusive right to perform or display the work in public.  Also included among the bundle of rights granted by Congress to the copyright holder is the exclusive right to make a copy of their work, as well as the exclusive right to create a derivative work based on the original work.  Basically, copyright is a government-mandated monopoly that is granted to the copyright owner, one which if properly exercised is supposed to benefit the public by encouraging artists and authors to create still more works.

 

Copyright grants the artist an exclusive monopoly on the performance, adaptation, publication, or distribution of their work, but the Framers were highly suspicious of any sort of monopoly, so they deliberately required that the monopoly had to be a limited one, that it would expire after a certain amount of time, and afterwards the work would be free for anyone to use in whatever manner they liked.  The Framers felt that the monopoly that copyright grants must of necessity be limited so as to avoid the danger of any sort of monopolistic stagnation, and always be an effective mechanism by which the storehouse of knowledge would steadily increase and by which democracy would grow and flourish.  Copyright was intended to be a delicate balance between the economic interests of authors and publishers and the interests of consumers, readers, and the public at large, one that if properly observed should encourage authors to create still more works but at the same time should also provide a benefit to the public as a whole.

 

What can be copyrighted?  Just about anything, it turns out.  The first copyright law, passed by Congress in 1790, gave protection only to maps, charts, and books, but in succeeding years copyright protection was gradually expanded to cover more and more categories of artistic and intellectual creativity.  The current copyright law now says that copyright protection applies to “original works of authorship”, a category so broad that it includes almost anything.  Copyright nowadays applies to just about every form of creative expression one can think of: literary works, novels, biographies, academic textbooks, scholarly journal articles, magazines, music and songs (both the words and the tune), poetry, dramatic works (including the accompanying music), pantomimes, choreography, pictures, photographs, cartoons, radio and television broadcasts, graphic works, paintings, sculpture, movies, sound recordings, and architectural works.  Also copyrightable are computer software programs, even embroidery patterns.  The copyright law purposely uses the broad phrase “original works of authorship” to describe the types of works that can be protected by copyright in order to avoid the need for Congress to rewrite the copyright laws every time a new medium is created.

 

 

Exclusive Rights

 

On the copyright notice page of a book, you will often see the phrase All Rights Reserved.  What does this mean?  It means that a certain bundle of rights are reserved exclusively for the copyright owner, and that anyone else who wants to exercise any of these rights needs the permission of the copyright owner to do so.  These rights have been established by Congress over the years.

 

The primary monopoly granted by copyright law to the rightsholder is the exclusive right to create and distribute copies of the work.  Anyone else who wants to create and distribute copies of the work by any manner whatsoever needs the permission of the copyright owner to do so.  If someone else has already published a best-selling novel, it would be an infringement if you were to print and distribute cheap copies of the novel without the permission of the copyright owner.  It would be an infringement if you burned copies of a hit compact disk recording and then sold them for a cheap price at a swap meet.  Giving the copies away for free is still an infringement of the rightsholder’s exclusive rights, if this is done without obtaining permission.  There is no minimum number of copies that need to be created and distributed in order for the copyright owner’s exclusive monopoly to have been infringed—in principle, all that would be needed is for just one copy to have been made and distributed. 

 

Another exclusive right is the right of publication—the copyright owner is the only one who can publish the work, and anyone else who wants to do so needs the permission of the copyright owner to do so.  The right to publish the work is often confused with the right to create and distribute copies of the work.  These two rights are related, but they are not precisely the same.  For a long time, what was actually meant by publication was not explicitly defined or spelled out under the copyright law, and the outcome of many lawsuits hinged on whether or not publication had actually taken place.  This uncertainty was finally resolved in the 1976 copyright law.  Publication now formally means the act of creating copies of the work and making them available to a general public audience on an unrestricted basis, either by sale, rental, lease, or distribution.  The copies don’t even have to be sold in order for publication to be said to have taken place—they could actually be given away for free. 

 

There is an additional wrinkle in the formal definition of publication, which says that the copies that are created must be distributed to the general public in order for publication to be said to have taken place.  This means that a creation and distribution of copies solely to a restricted set of people such as your friends and family, to a selected group of theatre critics, to just a few newspaper reviewers, or strictly to the employees of a particular business would not formally count as a publication under the copyright law if the recipients of the work don’t have the right to distribute the work to people outside the group.  Nevertheless, the creation and distribution of copies even to a restricted audience (such as the employees of your corporation) without the permission of the rightsholder would still be a violation of the copyright owner’s exclusive rights, even though publication would not formally have taken place.

 

Copyright restrictions also apply to the public performances of copyrighted works.  A public performance is formally defined in copyright law as the reciting, rendering, playing, dancing, or acting of a creative work in a place or location that is open to the public, or in any place in which an audience of a substantial number of people beyond one’s immediate friends and family can see or hear the performed work, whether money is charged or not.  The law says that a public performance also takes place when a transmission or communication of the work is made to a place where a public audience can see or hear the work, whether it is seen in the same place or in a separate place, whether at the same time or at different times.  This means that television and radio broadcasts, as well as cable transmissions and Internet streaming also count as public performances.  Consequently, if you play or transmit a DVD in such a manner that a public audience can see it, this counts as a public performance under copyright law.

 

Only the copyright owner is allowed to make a public performance of their work.  If you want to read a book out loud in such a way that a public audience can hear it, you need the permission of the book’s copyright owner.  If you read a copyrighted poem to a public audience, you need the permission of the copyright owner of the poem.  If you want to show a motion picture to a public audience, you need the permission of the movie production entity that owns the copyright, whether an admissions fee is charged or not.  If your theatre group wants to perform Death of a Salesman, they need the permission of the Arthur Miller estate to do so and probably must pay a royalty fee.  If your rock group wants to perform the Eagles song Hotel California at one of their concerts, they need the song publisher’s permission to do so.  Even if you play recorded music in such a way that a public audience can hear it, you need permission to do so and must pay for the privilege.  This means that when a disk jockey plays a music recording on the radio, the station must pay a fee to the owner of the song. 

 

However, there are some provisions in the copyright laws that exempt from copyright restrictions certain public performances of music and nondramatic works such as speeches, lectures, or poetry when they are done for nonprofit educational or charitable purposes.  Instructors or students at a nonprofit educational institution are allowed to perform a copyrighted work in the course of face-to-face teaching activities without obtaining the permission of the copyright owner.  The basic idea behind these exemptions is to exclude from copyright restrictions those live performances of copyrighted works in which there is no direct or indirect commercial purpose involved, when the performers are not being paid, or when there is no admission charge, or if there is a admission charge but the proceeds are used exclusively for educational, religious, or charitable purposes and not for private financial gain.   This exception also applies to transmissions for the blind or for other handicapped persons, as well as performances held at social functions organized by nonprofit veterans or fraternal organizations, so long as the proceeds are used solely for charitable purposes and not for private financial gain. 

 

Under copyright law, a public performance is not formally equivalent to a publication—in order for publication to be said to have legally taken place, it is necessary that copies of the work have been distributed to the general public.  Performing a play, giving a lecture, singing a song, or showing a movie does not count as publication, because no copies are being distributed.  However, prior to 1978, if a work of art was displayed to the public in such a manner that people were allowed to copy it freely, publication was considered as having taken place.

 

Copyright owners are given control over public performances of their works, but not over private performances.  You are free to let your spouse and children watch the video you purchased, you can lend the book you just bought to your friend, and you can play a copyrighted recording on your stereo for your friends and neighbors when they visit your house.  You can sing a copyrighted song to your kids without getting anyone’s permission or paying any fees.  You can let your relatives watch Game of Thrones on HBO when they visit you.   Any attempt by copyright holders to regulate or restrict private performances of their works would require a totalitarian state, much like that depicted in the novel 1984, under which every human activity was closely observed and monitored by the state authorities.

 

Copyright restrictions also apply to public displays of copyrighted works.  Legally, a “display” of a work involves the showing of a copy of it, either directly or by means of a film, a slide, a television image, or even by the incorporation of the image onto an Internet website.  The display is “public” if the work is shown at a place that is open to the public or at a place when a substantial group of people beyond your immediate friends and family can see the copy of the work.   Public displays are treated in copyright law somewhat differently than are public performances.  Public performance generally applies to things like music, dramatic works, or movies, whereas public displays refer to paintings, sculptures, or photographs.  The showing of a motion picture would be treated as a public performance, but the showing of individual images from the movie would be considered as a public display. 

 

Only the copyright owner has the right to make a public display of their work.   If you put a copy of a copyrighted work in any place where the public is able to see it, you could be accused of copyright infringement unless you have the permission of the copyright owner to do so.  If you want to mount a copy of a copyrighted photograph on the wall of your business, you need the photograph owner’s permission to do so.  Posting something on the Internet is equivalent to making a public display of it—if you scan and digitize a copyrighted photograph from a magazine and post the image on the Internet without permission, you are committing a copyright infringement which could get you into serious trouble.  However, a face-to-face display by the owner of a legally-acquired copy of a copyrighted work in a public gathering of viewers present at the place where the copy is located is not considered as an infringement, nor is the use of a projection device to throw an image of the work onto a screen.  If you simply hold up a picture from a magazine while giving a public lecture, the owner of the copyright on the photograph will probably not object and this would not be an infringement.  But if the display of the image is by a closed-circuit TV system, or if the display is via multiple TV screens or via a set of computer monitors, an unauthorized display might well be an infringement.

 

Copyright restrictions also apply to the making of derivative works, which are creative works that are based on or derived from another work.  Examples are translations, musical versions, dramatizations, adaptations for film or theatre, abridgements, fictionalizations, edits, condensations, fan fiction, and sequels.   The owner of the copyright on a creative work has the exclusive right to create a derivative work based on it.  If a motion picture studio wants to make a movie of your best-selling novel, they need your permission to do so.  If you want to write a musical version of the M*A*S*H hit TV show, you would need the permission of the show’s copyright owner to do so.  If you write words to a musical tune, or set a poem to music, you are creating a derivative work, and you would need the permission of the original work’s copyright owner to do so.  If you want to translate a Tom Clancy technothriller into German, you need the Tom Clancy estate’s permission to do so.   A sequel also counts as a derivative work--if you want to write a sequel to The DaVinci Code, you need Dan Brown’s permission to do so.  The reuse of characters, plots, or situations from previous works is also considered as a creation of a derivative work--you would need Paramount’s permission if you wish to use Captain Kirk or Mister Spock in your work of fiction.  Photographs or artworks that have been electronically manipulated or altered also count as derivative works—if you scan someone’s copyrighted photo and then use Adobe Photoshop to copy parts of it into another work, you need the photo owner’s permission to do so. 

 

You are completely free to create a derivative work based on something that is not subject to copyright—for example you could write a musical version of Shakespeare’s Hamlet without having to get permission from anyone, since Shakespeare’s work is no longer under copyright.  If you want to make a movie out of the novel Wuthering Heights, you don’t need anyone’s permission to do so, since the copyright on the novel expired a long time ago.  However, if the original work is under copyright, you definitely need the permission of the copyright owner in order to create a derivative work based on it.  

 

The courts have concluded that a secondary author may actually be infringing if what they did somehow invoked the original work’s “total concept and feel”, even if they did not literally copy or even paraphrase any of the expression in the original work.  A work that too closely resembles the style, mood and overall aesthetic appeal of an original expressive work may well be an infringement. 

 

Fan publications or fan websites are especially risky--it is definitely not a good idea to set up a fan website for House of Cards, with photos and episode summaries, without the permission of the TV show’s owner.  Even though you might think that the show would welcome the free advertising, the TV show’s lawyers may take a different view.   It often happens that the holders of popular copyrights ignore fan websites or fan publications or even subtly encourage them because it helps them in the promotion of their products, but it is entirely up to the rightsholder whether they want to do that.  The copyright owners of Star Trek, Star Wars, ET, The Simpsons, and Harry Potter have been quite hostile to people who try to do fan creations without their permission.  However, there is a special provision for parody, so if you want to do a parody of a Star Trek episode on Saturday Night Live, this is usually OK.  But the difference between a parody and a derivative work is often a very subtle one, and sometimes can be decided only in court.

 

With the passing of the Copyright Act of 1909, the right to make a copy of a copyrighted work was added to the list of exclusive rights granted to the copyright owner.  Only the copyright owner can legally make a copy of their protected work, whether the copy is distributed to others or not.  The purpose of this change was originally to prevent others from making illicit copies of one-of-a-kind works of fine art such as paintings or sculptures, but nowadays this rule has been expanded to mean a prohibition of making a copy of any sort of copyrighted work of art—a book, a music CD, a photograph, or a movie.   Under this law, the making of even one copy of a copyrighted work without the permission of the rightsholder could in principle be an infringement, even if no attempt is made to sell, lend, rent or otherwise distribute that copy to others.

 

When Congress first passed copyright laws in the late 18th century, the creation and distribution of copies of any creative work were both extremely difficult and expensive propositions, and few people had the resources to do so, which meant that copyright law affected only a tiny minority of the population. The only people who had to worry very much about copyright laws were book or newspaper publishers, record labels, music composers and publishers, and perhaps a few celebrated authors.   In fact, as recently as only 60 years ago if you were just an ordinary individual with only limited resources and did not have access to a printing press, a recording studio, or a television network, you would be hard pressed to violate copyright even if you wanted to.  For example, suppose that back in the 1950s you wanted to hand out free copies of a hit novel of the day (say Peyton Place) to passersby in the street.   In order to make illicit copies of the book, you would have to laboriously hand-copy or type the entire text of the book onto mimeograph masters, mount the masters one at a time onto the drum of the mimeograph machine, turn the crank, collate the pages, fasten them together, and then hand-carry the copies and pass them out.  It would probably not be worth the cost and the hassle.  

 

However, technology has advanced quite a bit in recent years, with the advent of the tape recorder, the photocopy machine, the digital camera, the scanner, the videocassette recorder, and finally the computer and the Internet, all of which make the copying and distribution of copyrighted material a lot easier and cheaper for people to do.  Just about anyone can now copy creative works very easily and with very little cost.  And, by use of the Internet, it is very easy and inexpensive to distribute these copies to others, which means that just about anyone with access to a computer, a modem, a scanner, a tape recorder, or a photocopy machine can be a “publisher” in the strict legal sense of the term.  Consequently, copyright restrictions have been extended to the prohibition of the creation of unauthorized copies of protected works, whether actual publication or distribution is intended or not.  Copyright practice now applies more to the making of copies of protected works than it does to actual publication.  This means that copyright law now affects just about everyone—anyone who creates artistic works or who consumes or uses media needs to pay close attention to the copyright laws lest they get themselves into trouble. 

 

An obvious example is that FBI copyright warning that you always see when you view a commercial movie on a DVD disk.  This warning is telling you that it is illegal to make a copy of the DVD movie without the permission of the copyright owner.  If you make an MP3 copy of a popular song and make it available to others via peer-to-peer computer networks, you run the risk of being sued.  In order to make multiple photocopies of a book or magazine article, and use them for certain purposes, you need the permission of the copyright owner.  In order to duplicate a photograph and put it on your website or mount it on the wall of your business, you require the permission of the photo’s owner.  If you are writing scholarly papers or textbooks, you need to clear the rights on every photograph or quotation that you use.   Computers are especially tricky in copyright law--just about everything that you do with a computer involves making a copy of some sort, which means that copyright law can impose certain restrictions on what you are allowed to do with your computer. 

 

However, in practice these restrictions on copying are not absolute—if you want to make a copy of a protected work strictly for your own personal use, this is usually OK.  No one is going to drag you into court for ripping a song from a CD that you legally purchased and copying it onto your iPod, so long as you don’t sell or give the copy to someone else.  It is also legal for you to go to the library and make photocopies of short parts of books or magazine articles for your own personal use.  It is certainly true that copyright holders are not entirely happy about this sort of personal copying, but if your copying was strictly for your own personal, private use and did not interfere with the copyright owner’s profits, rightsholders have usually not objected and the law typically does not intervene.  In America the government cannot and should not try to regulate what you do in the privacy of your own home—what you do there is your own business so long as you do not endanger or adversely affect the rights of others.  A certain amount of copying is also considered to be OK if it is done strictly for nonprofit, educational purposes and if the person doing the copying does not somehow earn money by their act.   However, if you make and distribute multiple copies in such a manner that you end up competing with the original in the commercial marketplace, or if you somehow end up making money by your copying, you could get into some trouble.  But the boundaries between harmless copying and copying which adversely affects the copyright owner’s profits are not very clear, which keeps a lot of copyright lawyers in business.

 

 

Copyright Myths and Misconceptions

 

Copyright law is a very arcane subject, and very few people, including some lawyers, actually understand how it really works.  In place of a deep understanding of copyright law and practice, there are a lot of myths and misconceptions about copyright out there, some of which are described below.

 

Some people erroneously think that when they purchase a book, music CD, or DVD they also own the copyright on it.  This is entirely wrong.  Although you may own a particular copy of a creative work, the original author or creator still owns the copyright on the work itself, and you cannot reproduce, distribute, or publically perform or display the work without the permission of the copyright owner.   Suppose you purchase a book in a bookstore.  The book is now yours, and you can do what you please with it--you may sell the book to someone else, lend it out, give it away, let your spouse read it, cut out pages, or even destroy it.  However, you did not receive the copyright on the book when you bought it, and you really only own the pieces of paper that the words are printed on, not the words themselves.  The content of the book is still the intellectual property of the copyright holder and you may not make and distribute copies of the book, may not write a sequel, may not create an abridgment, may not make a public performance of the book by reading it aloud in public, and may not post it on the Internet, since all of these rights are reserved exclusively for the copyright owner.

 

Another misconception about copyright law is that copyright is infringed only if you charged admission to a public performance or display that you made of the work, or if you charged money for the copies that you distributed or somehow made money in other ways by what you did.  This too is entirely incorrect.  Copyright is still violated even if you do not charge for the copies you distributed or for the public performance that you gave, only the amount of damages awarded in court is affected, especially if you happen to have hurt the commercial value of the original copyrighted work by copying or performing it.

 

Yet another common misconception is that if the owner of a copyright does not defend against infringements, then they lose their copyright forever.  The idea of undefended loss is a concept from trademark law, under which you can lose your trademark if you no longer actively use it in the marketplace, if you go out of business, or if you see infringements and do nothing about them.  Copyright holders are not required to sue infringers in order to maintain their exclusive rights--copyright is never lost unless it is explicitly signed over to someone else or if it expires.  Unlike the owners of trademarks, copyright owners are not required to actively market their works to the public or even to stay in business in order to maintain their protection.

 

Another misconception is that when an author or artist dies, the copyright protection provided for their works ends at the same time and that thereafter one is free to do anything they like with their works.  This also is wrong--when an author dies, his or her copyright does not die with them--it lives on and on, for 70 years or even longer after the death of the author, and the owner’s heirs or estate assume ownership of the copyright and inherit all the rights.  An example is the composer George Gershwin, who died in 1937.   Despite his death, his music is still protected by copyright.  His estate now owns and controls the copyrights on his works, and you need the permission of the Gershwin estate if you want to perform An American in Paris, Porgy and Bess, or Rhapsody in Blue, and the estate continues to bring in a significant income from royalties and licenses.  The Gershwin copyrights will not begin to expire until sometime between 2019 and 2027 at the earliest.

 

Yet another misconception about copyright is that works must be registered with the US Copyright Office (a part of the Library of Congress) in order for copyright protection to apply.  This was true at one time in the past, but is now no longer true.  The Copyright Act of 1976 removed the requirement for registration with the US Copyright Office in order for copyright to apply.   

 

So what do you have to do in order to copyright your work?  Not much of anything, it turns out.  According to current US copyright law, a creative work is now automatically protected by copyright as soon as it is rendered into any definitive, fixed form or medium that makes it possible for others to access the work.  Formally, a work is said to be “fixed” when it is rendered into a form that permits it to be perceived, reproduced, or otherwise communicated to others for a period of more than just transitory duration, either directly or with the aid of a machine or device.  So you now don’t have to do anything in order to obtain a copyright—it is automatic once you put your work into a tangible, definitive form, whatever the form might be.   Virtually anything will qualify as a tangible medium—words on paper, sounds recorded on magnetic tape or optical disks, songs written in musical notation, photographs, drawings, paintings, video recorded on a VHS tape or on a DVD, data stored on a computer hard drive or memory disk, information posted on the Internet, even scribbled notes on the back of an envelope.

 

The requirement for a definitive fixed form means that simply telling your friends about the great novel, screenplay, or song you have in mind is not sufficient to guarantee any rights under copyright law—you have to put it into some sort of tangible form, like writing it down, drawing it on a piece of paper, filming it, or recording it.  If all you do is tell someone about your radically new idea for an artistic expression without ever writing it down or drawing it on a piece of paper, it is not protected by copyright since it has not been expressed in any fixed form such that others can read and study it.   However, as soon as you type your novel or your poem on your computer’s word processor, it is now fixed in a definitive form and is automatically protected by copyright.  As soon as you write down your new song in musical notation on a sheet of paper, it is automatically protected.  As soon as you record your new song on tape or on a CD, it is automatically protected.  As soon as you process the film in your camera, the photographs you took are automatically protected.  As soon as you put something up on your website, it is automatically protected.  All that is required is that the work be rendered in some sort of tangible, non-transient form, no matter what the form may be. 

 

Although copyright registration is no longer required for protection to apply, there are still some advantages in doing so.  To register a work with the US Copyright Office[1], all you have to do is fill out an application form, deposit a copy of the work, and pay a filing fee of $45.  A registration request can be filed with respect to either a published or an unpublished work.  Registration may be made at any time during the life of the copyright, although the act of registration does not extend the life of the copyright.  The Register of Copyrights can refuse a registration request if the material being deposited is not eligible for copyright protection—perhaps the work lacks originality or creativity, maybe the material itself is uncopyrightable, or the claim is invalid for other reasons.  Once a registration request has been approved, it establishes a public record of the copyright claim and could be of help if the validity of the copyright is ever challenged in court.  Registration makes it much easier to prove that you actually own the copyright that you are claiming.  If registration is made within 5 years after first publication of the work, the certificate issued by the Copyright Office is prima facie evidence of the validity of the copyright.  An artist often cannot collect statutory royalties and fees unless their work is registered.

 

Although registration is no longer required, the owners of works published in the USA are still required to deposit within 3 months of publication two copies of their works for use by the Library of Congress.  If the publisher fails to comply with this deposition requirement, there are fines and penalties, but the underlying copyright protection is not lost. However, there are some categories of works that are exempt from mandatory deposition requirements.

 

Under US copyright law, registration is required before an infringement lawsuit can be filed in federal court.  However, this requirement does not apply to works initially published outside the USA, so long as the nation where the work was originally published adheres to the Berne Convention.  A copyright holder can of course simply wait to register their work until they find that they actually need to sue someone for infringement, but if they do wait they can’t recover nearly as much in a lawsuit.  Only if a work is formally registered within 90 days of publication is an author entitled to statutory damages and attorneys’ fees upon successful litigation against an infringer.  These statutory damage charges allow copyright holders who succeed in court with claims of infringement to receive a set amount of compensation per work, as opposed to compensation for actual financial losses.  These statutory damages can greatly exceed the actual financial harm that was suffered.   For example, plaintiffs who can show willful infringement can get damages of up to $150,000 per work infringed, without having to prove any actual monetary harm.   The prospect of having to pay astronomical statutory damages is a potent legal threat that copyright owners can use against private individuals—a person willfully infringing a copyright might face statutory damages that are larger than their entire assets. 

 

Some people talk about the so-called “poor man’s copyright” as an alternative to formal copyright registration with the US Copyright Office.  This consists of simply mailing an envelope with a copy of the work enclosed to yourself, preferably by certified mail, and then storing the envelope unopened somewhere in a safe when it arrives.  It is claimed that this tactic could in principle help to provide proof of creation of the work, and could be important evidence if someone else later falsely claims that they have created the work.  However, the protections supposedly offered by the “poor man’s copyright” are little more than an urban legend[2], and the technique has no legal basis, at least in the USA.  I am unaware of any case in which an author’s copyright was established and legally defended in a court of law by this method.  The postmarked-and-sealed envelope technique is probably too easily circumvented for courts to regard this as reliable evidence.  In any case, the US Copyright Office explicitly says on its website that there is no provision in US copyright law for the “poor man’s copyright” and that such a technique is not a substitute for “real” copyright registration, especially if you want to collect statutory royalties or find that you need to sue someone for copyright infringement.

 

Another misconception is that by making a live performance of your work, you guarantee your copyright on the work.  This is not necessarily true. Live performances that have never been fixed in any permanent media have a rather ambiguous copyright status.  Simply making a public performance of your work may not necessarily provide you with any copyright protection—if you simply sing your new song in public without ever writing it down or recording it on tape or on a CD, it is not protected by copyright since you have not fixed it in any tangible form.  A live television broadcast that is not being simultaneously taped or recorded by the broadcaster is not being fixed in any non-transient medium either--once the electromagnetic wave leaves the transmission tower, the program is gone forever and can never be seen again.  Nevertheless, even before their work is formally “fixed”, some state laws may grant the author some degree of protection under the state’s statutory or common-law rules.  Examples could be an improvised comedy skit or a live interview that might be protected by state laws against secret, unauthorized taping or recording by members of the audience.  But just as soon as the comedian or the interviewer writes down the performance or records it themselves, it automatically falls under federal copyright protection.

 

Still another misconception is that the author must publish their work before it is eligible for copyright protection.  This too is completely wrong.  Within copyright law, publication has a precise technical meaning--it formally means making copies of the work available on an unrestricted basis to a public audience, either by sale, by rental, by leasing, or by lending.   Examples of works that have never been published are private letters that are kept stored in a trunk, private family photographs that have never been taken out of a photo album, or an author’s manuscript that has been locked away and never released to the public.   A work is also considered to be unpublished in the copyright law sense even if it is distributed or displayed, but is done so under conditions where there are significant restrictions placed on who can see it, what can be done with the work, or when it can be shown to others.  All of these unpublished works are nevertheless protected by copyright because the current copyright law says that all that is necessary for copyright protection to apply is for a work to be rendered or fixed into some sort of definitive, tangible form that makes it possible for others to apprehend or access the work.  This means that works by authors that have never been published, such as manuscripts, notes, or private letters, are definitely protected by copyright and the restrictions on their use by others can actually be more stringent than those applicable for published works.  This is because it is thought that the author should have first crack at publishing the work. 

 

Another common misconception is that material on the Internet is free for anyone to use without restriction.  This also is completely wrong.  Materials posted on the Internet are works that have been rendered into a fixed form that can be accessed by others (HTML files, JPEG photos, MPEG movies, MP3 sound files, etc), so copyright does apply there.  The posting of something on the Internet (text, pictures, music, or video) is equivalent to making a public display of the item, and only the copyright owner of the item can legally do this.  Just about everything posted on the Internet is owned by someone, either by the creator of the website or by some other party.  If you want to use something posted on the Internet in your own work, make sure you get permission from the owner of the material before you do so, or else you may find yourself in court.  Also, be very careful about what you put up on your own website.  Make sure what you put up there is really your own work and is not borrowed from someone else.  If you do borrow something from someone else, make sure you have permission from the copyright owner to do so.  Definitely do not post an image of Mickey Mouse on your website.  You do not want a visit from the Disney organization’s lawyers.  They have much deeper pockets than you do.

 

Some people erroneously believe that when you perform someone else’s work in public, display someone else’s work in public, or when you copy someone else’s work into your own work, you will be shielded against an accusation of copyright infringement if you properly acknowledge the source.  This is a confusion of two different concepts—copyright infringement and plagiarism.  Plagiarism is using the work of others without proper acknowledgment, whether the work is copyrighted or not, whereas copyright infringement is using someone else’s copyrighted work without permission, whether it is acknowledged or not.  Copyright infringement is a legal matter, but plagiarism is a matter of professional and scholarly ethics.  When you include someone else’s copyrighted text in your work, quoting the name of the original author may help, but it might not be sufficient to protect you against an accusation of copyright infringement, especially if you copied a lot of stuff and did not ask for permission to do so.  Conversely, you could be accused of plagiarism even if you used material from an uncopyrighted work but did not quote its origin.  Although plagiarism is in itself not a legal matter, the courts could interpret many aspects of plagiarism as copyright infringement, especially if the stuff you plagiarized was from a copyrighted work and you were seen as profiting economically from your act.  In any case, if an author is caught plagiarizing another work, this can often be a career-ender or at least a major public embarrassment. 

 

There are also myths and misconceptions about copyright notices.  On the opposite side of the title page of a book, on a website, on a magazine article, in the credits of a television show, or somewhere on just about any sort of artistic work, you will usually see the familiar copyright notice.  The presence of this copyright notice means that the copyright owner reserves the rights associated with copyright exclusively for themselves. The accepted format of the copyright notice must include the copyright symbol © (or the word “Copyright” or the abbreviation “Copr”), the year of publication, and the name of the copyright owner.  An example is

 

© XYZ Publishing Co, Inc, 2008

 

Sound recordings use the letter P in a circle, the notice appearing somewhere on the CD jewel case or on the disk label itself.  .

 

A major misconception on the part of many is that a creative work must have this copyright notice attached to it in order for copyright to apply, and the absence of such a mark means that the work is not protected by copyright and that anyone can do what they like with the work.  Like the requirement for registration, there was actually a requirement for the inclusion of a proper copyright notice at one time in the past—if a work had no copyright mark on it, this meant that you were completely free to use it in any manner whatsoever.  In fact, if you carelessly left off the copyright mark when you published your work, you automatically forfeited any copyright protection even if the work had previously been registered.  

 

However, the requirement for the inclusion of a copyright notice was removed when the USA adhered to the Berne Convention, effective March 1, 1989, although it must still be present on works copyrighted before that date.  This now means that even if there is no copyright notice anywhere in sight, the work may nevertheless still be subject to copyright protection, and the absence of a copyright notice no longer necessarily means that you are free to use the work in any manner you please.  You even have to be careful about works published or copyrighted before 1989—even if such a work lacks a proper copyright notice, the copyright law did have provisions under which the owner was able to correct the problem of the missing copyright notice at a later time[3].  You need to carefully investigate to be sure that such a work is truly free of copyright restrictions.

 

Even though a copyright notice is no longer required, there are still some good reasons for attaching one to your copyrighted work[4].  It informs the public that your work is indeed protected by copyright, and the presence of this notice may be an intimidating factor that scares off some potential infringers.  It also prevents another party from credibly claiming that they innocently infringed your copyright when they copied your work, thus escaping certain damages under the Copyright Act.  The presence of a copyright notice also identifies the copyright owner and the date of first publication, so it makes it easier for someone to reach you and request a license or permission to use the work.

 

Since neither registration nor a copyright notice is required for copyright to apply, you should usually assume that just about everything you see, hear, or read is copyrighted, even if there is no copyright mark anywhere on it.  Someone probably owns every photograph you see printed in a magazine or posted on the Internet.  Somebody probably owns every song that you hear on the radio.  Everything posted on the Internet is probably someone’s intellectual property and should not be taken or used by you without permission.  Before you use anything created by someone else in your own work, make sure you have permission in writing to do so.  Sometimes royalties must be paid.  If you are in doubt about whether your use of a copyrighted work is legal, ask permission first.

 

At one time, you had to be very careful about the whole copyright process—it was so complex that you could inadvertently lose your copyright if you screwed up the paperwork, if you omitted an obscure but vital step in the process, or if you missed an important deadline.   Copyright was very process-intensive, and you could lose your copyright if you made even the slightest misstep.  Authors lost their copyrights if they forgot to renew them in a timely fashion, people lost their copyrights if they filled out the paperwork improperly, and publishers even lost their copyrights if they forgot to include the required copyright notice in their published works.  If the copyright notice had the wrong format, if the year of publication was incorrect, if the wrong name was placed in the notice, even if the notice was in the wrong location--any of these errors could result in an irretrievable forfeiture of the copyright.  However, things are entirely different now—you now no longer even need to register your work for copyright to apply, copyright notices are no longer required, most of the paperwork in the process has been almost entirely eliminated, and authors and rightsholders no longer have to worry very much about formalities in order to maintain their protection.

 


Intellectual Property

 

Copyright is a subcategory of what is known in the trade as intellectual property.  Other subcategories are patents, trademarks, and trade secrets.  Sometimes the right of publicity is considered as another category of intellectual property.  Moral rights are also sometimes considered as yet another aspect of intellectual property.  These all work somewhat differently than copyrights, and people often confuse the different types of intellectual property with each other. 

 

Patents

 

Ideas and discoveries cannot be protected by copyrights, but they can be protected by patents[5] [6] [7]. 

 

Patents are intended to apply to objects, processes, or ideas that have practical, real-world applications, and can cover just about anything that has a potential for being sold as a useful product in the marketplace   Patents can be taken out on new products, new processes or new machines.   Patents can be taken out on chemical compositions, mixtures of ingredients, or chemical compounds.  Patents can also be taken out on new ways of planning or constructing articles of manufacture.  Patents can be taken out on chemicals, pharmaceuticals, drugs, even on new varieties of vegetation created through breeding or genetic manipulation.  Patents can also be taken out on improvements on already patented processes, machines, or compositions. 

 

A patent gives you a monopoly on the commercial exploitation of your invention, which means that only you can put the invention on the market.  Once you have a valid patent, you can prevent a competitor from marketing or selling your patented product without your permission.  Even if someone else independently and legitimately comes up with the same idea that was described in your patent, your patent still takes precedence and the new inventor is prohibited from marketing the product without your permission.  A patent owner can exclude others from marketing the invention or idea, even if the owner chooses not to exploit the idea themselves, so you are not required to bring your product to market after you patent it. 

 

The granting of patents encourages the advancement of the sciences and the useful arts in two ways.  First, it provides the inventor with a means by which they can profit financially from their ideas, supposedly encouraging them to produce still more inventions.  Second, since the patent applicant is required to submit a detailed description of their invention and how it works, the patent process helps to disseminate technological and scientific information to other inventors and to the general public at large.  The patent process also encourages and motivates large corporations to produce new products—this sort of intellectual property is often a significant part of a company’s assets.

 

A patent holder can profit from their invention by going into business for themselves, or they can license the use of their invention by another company.  Many patents are an improvement of prior inventions that may still be covered by someone else’s patent.  If the original patent is still in force, the owner of the new patent cannot bring out the product in the marketplace without the permission of the original patent’s owner, but the new patent owner can exclude the original patent owner from using the improvement without their permission.

 

The law says that in order for something to be patentable, it must be useful--it must have some sort of practical, real-world application.  You can’t patent something that has no practical use.  You can’t patent a novel, a poem, a song, or a dramatic production--copyright is used for these.  In addition, laws of nature, mental processes, mathematical algorithms, physical phenomena, and abstract ideas cannot be patented.  You cannot patent laws of physics--Einstein’s General Theory of Relativity revolutionized the world of physics, but it cannot be owned by anybody, not even by Albert Einstein.  You cannot patent a scientific discovery--if you go into the New Guinea jungle and find a new species of plant, you cannot patent the plant that you found.  However, if you produce that same new species of plant via genetic manipulation, you could patent that—such a patent is known as a plant patent.

 

Unlike copyrights, patents definitely need to be registered in order to be valid.  A patent is taken out by filling out an application form and submitting it to the US Patent and Trademark Office[8], which is a part of the Department of Commerce.  According to the law, a product idea must meet three standards to qualify for patent protection:  it must be useful, it must be novel, and it must not be obvious.  Also, if the inventor has previously described their invention in a printed publication or has already used the invention publicly, they must submit the patent application before one year has gone by, or else the patent application will be rejected.  The clerks in the Patent and Trademark Office then study the application and see if it meets the standards and then either approve or reject the application.  Patents applications can be rejected if they do not meet the standards. 

 

Approximately 18 months after a patent application is filed, the US Patent and Trademark Office will publish it in an official notice, unless the applicant specifically requests non-publication at the time of filing.  Publication does not mean that the patent has been approved, or even that the patent will necessarily be approved in the future.  However, publication of the patent application enables certain damage recoveries to take place in case someone else makes, uses, sells or imports the invention during the time while the patent application was under review.  But such damage recoveries can only take place after the patent application is actually approved.

 

Since the patent approval process can take years, it often happens that the inventor starts marketing their product as soon as the application is submitted, and they may legally label it as “patent pending”.  However, the label “patent pending” has no legal effect, and the protection afforded by a patent does not start until the actual granting of the patent.  Nevertheless, anyone who copies the invention after the Patent and Trademark Office has published the patent application can be sued for past transgressions once the patent is finally granted, provided that the patent holder placed them on notice regarding the patent pending status. 

 

The term of a US patent is 20 years from date of initial application (only 14 years for design patents)—much shorter than the duration of copyrights—and cannot be renewed except under very limited circumstances. 

 

But there are limits on what a patent can actually do.  The possession of a patent does not actually grant you the right to market your product, since antitrust laws or FDA regulations may restrict the ways in which a patent holder can market their invention.  Taking out a patent is no guarantee that your invention will be commercially successful.   All that a patent can really do is to prevent someone else from putting your product out in the marketplace without your permission.  So the possession of a patent is basically the right to exclude others from the commercial exploitation of your idea. 

 

Having a patent does not mean that you can squelch or prohibit any speech or commentary about your idea or your product.  Taking out a patent cannot prevent others from discussing, analyzing, or even criticizing your idea or invention, but it can prevent someone else from putting your product on the commercial market without your consent. 

 

In the United States, only individuals may apply for patents, not corporations or organizations.  However, it is common for a corporate employee to be required to assign the ownership rights of their patents to their employer as a condition of their employment.

 

In order to obtain a patent, you must disclose in the application the details of your invention or discovery, so when you take out a patent on your invention you also reveal to the public the details of how it works.  As a result, when your patent expires, competitors will be completely free to copy your invention and put it on the market.  Even though you might choose to forego obtaining a patent so that you keep your invention a trade secret, there is still some protection by federal laws that make industrial espionage and the unlawful disclosure of trade secrets a crime.  But without a patent there is no legal recourse if some other inventor happens independently to come up with your same idea.

 

A patent can be a considerably more powerful protector of intellectual property than a copyright, especially if the intellectual property has any sort of commercial application.  It would certainly be foolish of you to publish details of your invention without patenting it first.  For example, suppose you describe your new invention in a scholarly journal article without taking out a patent on the invention.  Your article is certainly protected by copyright, and no one else can copy the text of your article without your permission.  But copyright only protects the specific expression of your idea, not the idea itself, and without a patent, you cannot prevent someone else from manufacturing or selling the invention that you described. 

 

Patent infringement is the unauthorized manufacture, sale, or marketing of the patented invention.  Patents are generally enforced by filing a civil action for infringement in a Federal court, but it is the responsibility of the individual patent holder to go after infringers in court, not the government.  Typically, the plaintiff will seek financial compensation for past infringement and will seek an injunction preventing the defendant from further infringements.  The history of invention is replete with inventors having to spend a large fraction of their time battling against infringers—the early history of the telephone being a prominent example.  Despite its innovative technology, the telephone was actually a fairly simple device that could easily be copied, and Alexander Graham Bell was forced to sue lots of infringers to protect his invention.

 

Patents can also be taken out on the ornamental appearance of an object rather than on its functionality or its structure.  Such a patent is known as a design patent.  Design patents can protect the ornamental design, configuration, or shape of an invention, independent of its functionality.  A design patent would be appropriate if the basic product already exists, and is not being improved on in its functionality but only in its style.  Design patents can protect industrial products like computers, cell phones, furniture, even items of clothing like bunny rabbit slippers.  Novel fonts and computer icons can be covered by design patents, if they are displayed on a computer screen and are part of an article of manufacture that has practical utility.  The shape of an article of manufacture can even be the subject of a design patent—the unique shape of the Coca-Cola bottle had a design patent taken out on it in 1915.  Design patents can be used to prevent competitors from making, using, or selling knock-offs or imitations of the owner’s patented design. 

 

There is some degree of overlap between design patents, copyrights, and trademarks.  Although design patents and copyrights both cover aesthetic features, copyright is generally used for non-utilitarian articles such as songs, plays, or novels that have no useful purpose, whereas design patents cover the novel ornamental features of a utilitarian object, such as the base of a lamp.  A trademark may be taken out on an object already covered by a design patent if its shape, color, or appearance is used to indicate its origin.  The difference between a design patent, a copyright, and a trademark can often be a subtle one.

 

However, design patents are rather difficult and expensive to obtain, since the applicant for a design patent must still meet the novelty and non-obviousness tests.  Many original designs of fashion and industrial art fail to meet these standards.  In addition, in order for a design to be eligible for a patent, it must be original—a design that is similar in appearance to a well-known or naturally occurring object would not be original and hence not patentable.   In order to be eligible for a design patent, the design must have a unique and original feature or group of features that distinguish it from prior designs that are already publicly available.  In addition, the design patent process can take several years, which exceeds the life expectancy in the marketplace for many designs, which means that by the time a design patent finally gets approved, the market window for the product will probably already have closed.  Design patent infringement lawsuits can be difficult to win in the courtroom, since the plaintiff must be able to prove that an “ordinary observer” would be convinced that the offending design is substantially similar to the patented design.  For these reasons, design patents are often regarded as not a very useful or effective means of protecting intellectual property such as fashion designs or industrial designs.

 

Can computer software be patented?  This is a subject of some controversy[9], since there have been some rather abusive patent claims of ownership of things like voice over IP, streaming media, online gaming, online test taking, digital music, hyperlinks, pop-up windows, the computer simulation of physical processes, the manipulation of mathematical formulas, even the procedure used by Google to rank websites and the ‘one-click” procedure used by Amazon.com to sell books online.  The Supreme Court has repeatedly ruled that abstract concepts and mathematical algorithms are not patentable--is a computer program really nothing more than a mathematical algorithm and hence not protectable by patent?  Nevertheless, the Federal Circuit Court[10] has ruled that computer software can indeed be patented, but only under rather restrictive circumstances.  A computer program can be patented only if the computer is used to manipulate real-world numbers and quantities (such as money, fuel consumption statistics, or medical data), but not if the program is only a mathematical algorithm such as the conversion of base-10 numbers into hexadecimal form, the determination of prime numbers, or the factoring of a polynomial. 

 

But where should the boundary between patentable and un-patentable software lie?  A lot of people think that the granting of software patents discourages innovation by locking basic ideas out of the marketplace.   Software developers have to be extremely careful that they do not inadvertently use some idea in their programs that is covered by somebody else’s prior patent.  A lot of experts feel that software ideas are being granted patent protections that are so obvious[11] that just about anyone who is computer literate could have come up with them.  Another problem is that patent applications require that the inventor reveal how their process works, but most computer source codes remain proprietary and secret, and the general public and other inventors never get to see how the ideas are actually implemented and do not benefit by the awarding of the patent.  Responding to these criticisms, the Patent and Trademark Office has recently said[12] that it will be very resistant to approving new software patent applications, arguing that process inventions are unpatentable unless they result in the physical transformation of an article or are tied to a particular machine. 

 

Another source of confusion is that software is often covered by copyrights as well as by patents.  The possession of a copyright allows the author of a computer program to prevent others from copying and distributing the program but does not prevent others from writing their own versions of the basic implementation, whereas a patent prevents others from using any of the ideas behind the software, even if they were independently developed and there was no copying involved.  Consequently, a patent can provide quite a bit more protection for a software developer than can a copyright.

 

Trademarks

 

A trademark[13] [14] [15] [16] [17] is yet another category of intellectual property.  A trademark protects words, names, phrases, slogans, pictures, packaging, symbols or designs that are used by the trademark owner to identify their goods in the marketplace, and to distinguish their goods from the goods of others.  If the words or design is used to identify the source of a service rather than a product, it is called a service mark.  Trademarks and service marks are sometimes collectively referred to together as simply marks.

 

There are a couple of other types of marks—certification marks and collective marks[18]. 

 

A certification mark is any word, phrase, symbol or logo that is intended to be used in commerce by someone other than the mark’s actual owner, but with the owner’s permission.  It can used to certify the origin of a product, to designate the mode of manufacture of the product, or to indicate that the quality, reliability, and safety of the product meet certain standards.   An example of a certification mark is the Good Housekeeping Seal Of Approval that is applied to household products that have been judged to be of sufficiently high quality.  Another example is the Underwriters Laboratories mark that is attached to items of electrical equipment that indicates that they satisfy certain safety standards.   Yet another example of a certification mark is the AARP endorsements of Medicare Supplemental insurance policies that are actually sold by the United HealthCare insurance company. 

 

A collective mark is a mark that is owned by an organization or association and is used to indicate membership in that organization or is used to identify goods or services that originate from members of that organization. An example of a collective mark is CPA, which is used to indicate membership in the Society of Certified Public Accountants.  Another example is a mark owned by a trade union such as the International Ladies Garment Workers Union which would be applied to a product’s label to indicate that it was manufactured in a shop whose workers were members of that union.  A further example of a collective mark is the torch logo used by businesses that have been accepted as members of the Better Business Bureau, which accredits businesses which meet certain reliability and integrity standards.   The primary difference between a collective mark and a certification mark is that a collective mark can be used only by members of the organization which owns the mark, whereas a certification mark can be used by anyone who complies with the standards specified by the organization which owns the particular certification mark.

 

Trademarks and service marks are governed by state statutory and/or common law and by the federal Lanham Act of 1946, which is designed to protect consumers from misrepresentations of products and services, by enabling them to rely on well-known marks to identify quality goods or services, and to prohibit businesses from passing off shoddy products and lousy services using the good names of established brands.

 

With trademark protection, a customer who has purchased boxes of Kellogg’s Corn Flakes in the past and has liked the product, can be reasonably assured that the next time they buy a box of breakfast cereal labeled as Kellogg’s Corn Flakes they will be getting a product that has the same quality and taste as the ones that they have previously purchased, and not some sort of cheap, lower-quality knockoff.   It would be a trademark violation for someone to put out a breakfast cereal labeled as Corn Flakes, marketed in such a way that would confuse the customer into thinking that they were purchasing the genuine Kellogg’s product.  Cheap, low-quality products made or marketed in such a way that they resemble established well-regarded products are also illegal--a cheap imitation Rolex watch would also be a trademark violation. 

 

Trademark or service mark owners can be quite hostile to people who use or copy their marks without permission, especially if there is even the slightest danger of the public being misled into assuming that the mark holder is the owner or sponsor of the product or service on which the mark is used.  For example, you cannot market “Harry Potter” toy brooms, because Warner Brothers owns the Harry Potter trademark and the associated franchise, and you would be making money illegitimately by trading on the status and good name of an established brand.  In addition, people might be misled into thinking that Warner Brothers actually produced your toy broom.  Most Internet Service Providers forbid their subscribers from posting on their personal websites any trademarks or service marks that they do not actually own or control, since people might mistakenly assume that the mark owner is somehow the creator or the sponsor of the website.

 

Even though the federal government cannot claim copyright on any works created by their employees in the performance of their official duties, the government can claim trademark rights on its designs and logos.  You definitely do not want to use the NASA logo in your project without permission, because people might mistakenly assume that NASA is somehow the sponsor or creator of your project.  Again, the no-confusion rule applies here.

 

There are situations under which trademark issues overlap with copyright concerns.  In one case[19], a merchandiser was prevented by Universal City Studios from using the phrase “E.T. Phone Home” from the popular motion picture ET—The Extra Terrestrial on its line of drinking mugs and pencil holders.  This case primarily involved trademark issues, since the court concluded that people might be confused into thinking that the defendant’s line of mugs and pencil holders was actually produced by Universal or its licensees.  But the court also concluded that Universal’s copyright on their movie was infringed, since key lines of dialogue were used from the copyrighted motion picture without permission. 

 

There are some things that are protected by both trademark and copyright restrictions—Mickey Mouse being a particularly well-known example.  Mickey Mouse is both a copyrighted work of art and a recognizable mark symbol that identifies Disney products and entertainment services.  The Disney organization is particularly ruthless in going after people who infringe either the copyright status or the mark status of Mickey Mouse.  The Disney organization is a large and wealthy corporation with “deep pockets” that can hire the most expensive lawyers, and invariably wins whenever they drag someone into court.

 

A mark can be registered with the US Patent and Trademark Office (an agency of the Department of Commerce) by filling out an application and paying a fee (currently $325).  The power of the federal government to register marks is derived from the interstate commerce clause of the Constitution, rather than from the intellectual property clause.  In the United States, registration is not required in order for a mark to be valid, but many owners do so in order to inform others of their claims.  The existence of a registration can be valuable evidence that the owner really does the mark that they are claiming if the validity of the mark is ever challenged in court.  Registration of a mark can also be useful if the business crosses state lines or is intended to expand nationally, or it can be useful if there is a fear that a competitor might attempt to imitate the mark in the future.   Registration also gives the owner the right to record the registration with the US Customs and Border Protection Service, to protect against the importation of infringing foreign goods.  Registration can make it a lot easier to obtain trademark or service mark registration in foreign countries.  However, even if you haven’t registered your mark, you can in certain cases stop others from infringing under state or common law trademark rights.  Although a mark owner is not required to register their mark in order for it to be valid in the marketplace, registration is required before a trademark or service mark infringement lawsuit can be filed in federal court. 

 

Once the mark application is received by the Patent and Trademark Office, a clerk then examines the application and either accepts or rejects it.  The most common reason for rejection is that the mark is confusingly similar to an already-existing mark.  Mark registrations can also be turned down if the mark is judged to be not sufficiently distinctive, if one is attempting to register a generic term, or if the term being registered is judged as being somehow obscene, scandalous, immoral, or offensive.  An example of the misuse of a generic term would be an attempt to reserve the name Coffee Shop as a trademark for your new neighborhood bistro.  However, one can use a generic term in a trademark—Office World and Office Depot being examples, but the owners of these marks cannot claim exclusive trademark rights to the individual words Office, Depot, or World.  The law also requires that in order to register a mark, the owner must be actually using it in commerce, or must state that they have a bona fide intention to use it in commerce within six months of the application.  

 

The Patent and Trademark Office is often resistant to approving trademarks that are seen as being “laudatory”, especially if the proposed trademark is based on exaggerated praise that can’t be proven or has not been proven true[20].  For example, in 2016 the Patent and Trademark Office rejected the Whole Foods grocery chain’s attempt to  register the phrase “World’s Healthiest Grocery Store”, arguing that that Whole Foods operates only in the USA, Canada, and England,  In addition, since they had never used the slogan before, so few people associate the phrase with Whole Foods.   Papa John’s slogan “Better Ingredients, Better Pizza” was initially struck down in 2000 because it could not substantiate the claim that it really had better ingredients than its competitors.  Papa John’s continued to use the phrase in its advertisements, because their customers already associated it with the company.

 

Once registered, the famous symbol ® can be applied to the design or phrase to indicate to potential infringers that the mark has indeed been registered.  The well known ™ symbol (the symbol is SM for service marks) is used when exclusive marketing rights are claimed in association with a mark, but the mark has not yet been registered.  It is not required that either symbol be used, but these symbols are widely used throughout the world.

 

Use of the ® symbol in advertising or merchandising informs the public that the associated mark has indeed been registered with the US Patent and Trademark Office.  The presence of this mark can act as a deterrent to potential infringers who might be tempted to use this mark for their own businesses.  However, a mark owner must be careful never to use the ® symbol if their mark has not actually been registered—doing so could be considered as fraud, which could subject the user to civil or even criminal penalties. 

 

Once a mark registration request has been accepted, the US Patent and Trademark Office places it on one of two lists—the Principal Register or the Supplemental Register.  Which registry the mark will appear on depends on the perceived strength and distinctiveness of the mark in the marketplace.  Marks that are based on coined words or distinctive designs are usually classified as being strong and distinctive and are placed on the Principal Register—Polaroid, Kodak, Memorex, Verizon, and Xerox being prominent examples.  The Nike swoosh and the AT&T globe are examples of distinctive logos that have strong protection.  Terms or phrases that have a suggestive quality without actually describing the goods or services are also strong.  An example is “Like It Never Even Happened”, which is used by the Servpro water and fire damage repair service.  Names such as Healthy Choice, Beauty Trends, or Best Interiors that attempt to describe some quality or characteristic of the goods or services being offered are considered as being weaker and less distinctive and get placed on the Supplemental Register.  The owners of both types of marks are entitled to use the ® symbol if they so choose.  However, if a mark on the Supplemental Register happens to have acquired a sufficient level of distinctiveness via continued use over time, it can be moved to the Principal Register.

 

What about using your name as a trademark for your new business?  If you are reasonably certain that there is no one else anywhere with your same name in the same line of business, you can probably feel safe to go ahead and use your name as the trademark for your new business. 

 

But you need to be careful here, because even if there is someone in an entirely different line of business that is using your same name, there could be a problem because customers might get confused as to who owns what.  If someone who happens to have the last name of Sears attempts, for example, to open up a mom-and-pop dry cleaning establishment named Sears, the Sears corporation will probably drag them into court, lest customers be misled into thinking that Sears, Roebuck and Co actually owns or operates that dry-cleaning establishment.  So it is probably a good idea to search the trademark database very carefully before you try to use your name as a trademark for your new business, just to make sure that there is no other business already using it and  you find yourself dragged into court.

 

However, you might have a problem if you want to register your name as a trademark with the US Patent and Trademark Office.  Under Federal trademark law, a surname can be registered as a mark only if it has already become well-known through advertising or long-term use.  Examples are Mrs. Fields, Sears, Hyatt, McDonalds’s, Calvin Klein, Honeywell, Harriet Carter, and J. C. Penny.  These marks have become sufficiently well-known that they now have strong protection. 

 

The owner must periodically renew their trademark or service mark registration, once every ten years.  This is fairly simple to do--in the renewal request, all that the owner has to do is allege that they wish to continue the use of their mark in commerce.  If the owner does not renew their mark, there is a danger that they might lose control of their mark in the marketplace.  However, the renewal can be performed an indefinite number of times, so in principle the mark registration could last forever.

 

Unlike copyrights or patents, trademarks and service marks can last indefinitely if the owner wants to continue to use them to identify their products or services, but the owner can lose control of their mark if they go out of business, if they stop using it in the marketplace, or if they see infringements and do nothing about them.  Legally, a mark is considered to be abandoned if its use in the marketplace has been discontinued with intent not to resume such use, and nonuse for 3 consecutive years is considered prima facie evidence of abandonment.  Marks can also be lost if they are licensed to a franchisee without adequate supervision or quality control.  A mark can also be lost if it has become generic over time—aspirin, cellophane, and thermos being prime examples.  These terms now stand for a broad line of products and are thus no longer entitled to trademark or service mark protection.

 

However, just because a particular company has gone out of business does not necessarily mean that its marks can be freely used by others.  It is quite difficult to prove in court that that the mark owner has no intent to resume use--somebody might still own the mark, even if the company that used it has gone out of business.  Companies known as trademark speculators sometimes buy up marks at cheap prices from bankrupt or defunct companies in the hope that they can be sold to someone else for a higher price at a later time, and you might still be infringing if you use such marks without permission[21].

 

Trademark law does not provide any sort of general protection for physical objects such as fashion designs or industrial articles.  Trademark law would only provide protection if the configuration of the product somehow served to identify the source of the product, an obvious example being the unique shape of a Coca-Cola bottle.  A fashion designer could not take out a trademark on their latest dress, unless the appearance of the new dress somehow served to identify the source.  Even if the configuration of the product did qualify for a trademark, the protection would only apply against uses of the design that would be likely to confuse or mislead customers.

 

The ownership of a mark does not necessarily mean that you own all the words used in the mark.  Ownership of a mark only means that you have the exclusive right to use it in commerce to identify your product line or service, and to distinguish it from competitors who offer a similar line of products or services.  Others can use the same words, provided that there is no danger that reasonable people might mistakenly assume that the words being used are referring to your product line or service.  It is also permissible to use the same word or words to distinguish different kinds of goods--Microsoft Windows and Anderson Windows can coexist, since no one is going to assume that Anderson Windows is selling computer operating systems or that Microsoft is offering household storm windows for sale. 

 

However, owners of very famous marks can often succeed in preventing the use of their marks by others on goods or services that do not compete with or are even similar to their famous product.  For trademarks that have become famous over the years, the courts are willing to grant much broader protection for these marks and will usually prohibit almost all use of the trademark (or anything even close to it) by anyone other than the famous mark’s owner.  For example, the famous fast-food vendor McDonald’s was able to prevent a motel chain from using the mark McSleep, because the courts concluded that the motel chain was trading unfairly on McDonald’s reputation and that the public would be confused into believing that the motels were actually owned or operated by McDonald’s[22].  Consequently, it is probably never a good idea to use the prefix “Mc” in your trade name, lest people confuse it with McDonald’s.    Basically, the rule applied in court is that if the reuse of a similar-sounding trademark is likely to cause customer confusion, or if it trades unfairly on the reputation of the original mark’s owner, it will probably be considered as an infringement.

 

Like patents, a mark owner has the responsibility to defend against infringements, not the government.  This enforcement is usually handled by suing the infringer in federal court.  In order to successfully sue for infringement, you have to show that you really do own the trademark under contention and that the infringer has improperly used in commerce your logo, words, or other registered marks in connection with the sale, distribution, or advertising of their goods or services.  Also you must be able to show that the borrowing has created a likelihood of confusion with your original mark.  A successful lawsuit against an infringer usually involves the awarding of financial damages along with the imposition of a cease and desist injunction requiring that the infringer stop the infringing activity.

 

Trademark dilution is another form of trademark infringement, one in which someone is using a famous mark for commercial purposes in such a way that it somehow diminishes or harms the distinctive value of the mark in the marketplace.  The courts recognize two distinct types of trademark dilution—blurring and tarnishment. 

 

Blurring of a trademark can occur if its market power is somehow diminished through its unauthorized use in association with dissimilar products.  Trademark dilution can be charged even if there is no danger that anyone will mistakenly assume that the trademark owner is responsible for producing the product where the mark is used.  Examples of famous trademarks are Kodak, Xerox, or Kleenex.  Blurring would occur if, for example, someone brought out a line of Xerox bicycles, a line of Kodak hair dyes, or a line of Kleenex radios—each of these uses might diminish the power of the original mark through its identification with dissimilar goods.  Blurring can also occur if someone else uses a mark that is perceived as being too similar to the mark that you have been using, so much so that the general public stops associating the mark exclusively with your company.

 

Tarnishment of a trademark can occur if someone casts an unflattering light on the mark by using it in association with inferior, shoddy, or unseemly products or if it portrayed in an unwholesome or unsavory manner in the marketplace.  The Disney organization uses this notion to go after pornographers that are using images of Mickey Mouse or Snow White in their films. 

 

There are some limitations on trademark and service mark rights.  Free speech rights still exist in the trademark and service mark world, and a mark owner cannot prevent others from discussing, lampooning, parodying, or even criticizing their mark, especially if there is no danger of product confusion, no competition with the products or services covered by the mark, nor any possibility that reasonable people could be misled into thinking that the mark owner was the author of the parody or was the source of the discussion or criticism.  You cannot prevent a competitor from mentioning your mark in a commercial, even if the ad is criticizing your product or service or is comparing it unfavorably with theirs. 

 

The use of marks is also permitted in news reporting, in criticism, or for literary purposes, in which the marks are being used solely to identify products or services, and so long as the use is strictly informational and not intended to sell anything.   Authors can use a mark in a descriptive sense in both fiction and nonfiction works, so long as they use the mark in such a way that it doesn’t suggest any association with the goods or services that it represents.  If no income is solicited or earned by the people who use your mark, or if no goods or services are actually being offered in conjunction with your mark, or if the goods or services that are being offered cannot be confused with those that you offer, then the use of your mark is considered to be non-commercial and is generally allowed.  Again, the no-confusion rule applies here—if no reasonable person is going to mistakenly assume that the mark owner is the sponsor or creator of the place or situation where their mark is being used, the use is generally allowed.  Mad magazine became famous for producing parody advertisements, using subtle alterations of marks to lampoon famous products and services. 

 

This legal doctrine is known as nominative use, and it allows someone to use the trademark of another as a reference to describe the other product or to compare it to their own.  This doctrine was first used in 1992 when a court ruled that it was OK for a magazine to use the name of the New Kids On The Block band in a survey, and the court found that there was no way to ask people their opinion of the band without actually using its name.

 

Trademark issues have even entered the world of the Internet.  The reason for this is the so-called domain name, which is used by online businesses to direct customers to their websites.  Prominent examples are Amazon.com, Google.com, Facebook.com, Twitter.com, and Peapod.com. 

 

First, a little technical explanation is in order.  Websites are designated by easy-to-remember names such as www.amazon.com,  www.peapod.com, or www.google.com, which are used by web browsers such as Internet Explorer or Mozilla Firefox to connect users to the appropriate websites.  These names are known as Uniform Resource Locators (URLs).  However, the packet routing protocol (known as the Internet Protocol, or IP) that is used by the Internet to direct data packets to their destinations in the World Wide Web knows nothing about URLs.  Instead, it uses a numerical address (known as an Internet Protocol (IP) address[23]) to route the packets.  The IP address is the Internet equivalent of a telephone number, and the original version of the protocol used a 32 bit number that consisted of a set of four numbers, separated by dots, an example being 212.185.73.202.  This system allowed over four billion different possible addresses.  However, due to the rapid growth of the internet and the predicted exhaustion of available addresses, a new addressing system using 128 bits was developed and is currently being deployed worldwide.  Each website on the Internet is assigned a separate and unique IP address. 

 

In order for a web browser to reach a website, the URL must be somehow converted into its equivalent IP address.  The means by which a URL is mapped into its equivalent IP address is known at the Domain Name System (DNS[24]).  It translates easy-to-remember domain names into their equivalent IP numerical addresses.  When a user first types in a URL in the input window of their browser or clicks on an Internet hyperlink, a message is sent over the Internet to a DNS server, asking it for the IP address of that particular URL.  The IP address of the DNS server is hard-wired into the browser by the ISP.  There is no formula for the conversion from a URL into an IP address—it is a simple table lookup.   In many ways, the process is quite akin to looking up a telephone number in the white pages of the phone book by using a person’s name and address.  If the server has that number on file, it immediately responds with the address, and the browser then uses the IP address to immediately connect the user to the website.  If the server does not have that particular URL, it queries a hierarchical network of other servers until the requested URL is found.  If it turns out that the URL is not found anywhere in the system or does not actually exist, an error is returned to the user and the user’s browser displays the message “DNS entry not found”.   

 

In order to protect against any one server being down, there is wide scale duplication of the databases among a large set of multiple servers distributed all over the world.  Since the Internet is continually changing, the DNS network continually updates itself with new DNS entries as they are added, ensuring that the entire database maintains internal consistency.   The DNS is a rather amazing distributed database, one that handles billions of requests for billions of names every day through a network of millions of name servers.  Every time that you view a website on the internet, you are making requests to multiple name servers scattered all over the world.  What is amazing is that the process is completely transparent to the user and is extremely reliable.

 

In the era of Internet commerce, an easily recognizable domain name can be an extremely valuable commodity[25].  Anyone can obtain a domain name by contacting any one of dozens of companies that handle domain name registrations, filling out an application and paying a fee.  The Internet Corporation of Assigned Names and Numbers (ICANN)[26] is a not-for-profit public-benefit corporation formed in 1998 to handle the job of managing and coordinating the Domain Name System.   It has the job of approving domain name applications, and it accredits and supervises the activities of the dozens of domain name registrars.  ICANN ensures that there are no duplications in the names allocated by the registrars that they supervise, and that they all conform to the rules laid down for the allocation of domain names. 

 

Since domain names that actually label the product or service can be quite valuable, Internet businesses will often register their domain names as trademarks with the Patent and Trademark Office to prevent others from misappropriating or misusing their domain names.  If you are opening up a new Internet business or are even setting up a new website, when you choose a domain name, you need to make sure that it isn’t identical or even similar to an existing trademark, or you could be sued.  You certainly be unwise to try and reserve the name www.haveacoke.com for your own website, since reasonable people might assume that the Coca-Cola bottling company is somehow the owner or the sponsor of your website. 

 

Cybersquatting is the act of reserving domain names that are identical or similar to recognized trademarked brand names, in the hope of being able to sell the rights to these names at a later time for an astronomical price, or to profit in bad will from the goodwill of a trademark owned by someone else.   The Anticybersquatting Consumer Protection Act enables a trademark owner to sue someone they believe to have taken out a domain name in bad faith that conflicts with their trademarked business name.  Alternatively, a trademark owner can take their case to ICANN for arbitration.  Courts and arbitrators generally side with the trademark owner against cybersquatters.

 

Now for some examples of recent trademark cases and rulings:

 

 

A recent example of the application of trademark law involved the use of the phrase “Fair and Balanced”[27] by the satirist Al Franken in the subtitle of a book that he wrote lampooning the far right.  Fox News, which generally leans toward the conservative side of the political spectrum in its broadcasts, claims that phrase as a trademark, and they filed a lawsuit claiming that people might be deceived into thinking that the Franken book was a Fox News product. 

 

The courts rejected the claim, concluding that the phrase was a common idiom used in everyday life, and that Franken was within his rights in lampooning and criticizing the phrase.  Others can use the phrase “Fair and Balanced” without permission, provided that there is no risk of product confusion and no possibility that a reasonable person might imagine that Fox News is the sponsor or owner of the work where the phrase is used. 

 

 

In 1997, the pop group Aqua released a song named “Barbie Girl”, which was a tune lampooning the popular Barbie and Ken dolls marketed by the Mattel Corporation.  Mattel, which had a reputation of intolerance for any criticism or ridicule of their products, was not amused, and sued the group[28], claiming that Aqua had violated the Barbie trademark by turning her into a sex object, that the band had tarnished the reputation of the doll by implying in the lyrics that she was a “loose woman”, and that the song had harmed the value of the Barbie trademark and had impinged on Mattel’s marketing plan. 

 

The lawsuit was ultimately dismissed in 2002 by the lower courts, on the grounds that the song was protected as a parody under the trademark doctrine of nominative use as well as by the First Amendment of the US Constitution.  The Supreme Court decided not to accept Mattel’s appeal, so the lower court ruling stands. 

 

In 2009, Mattel decided to lighten up, and announced that they were going to use an adaptation of the song in their advertising campaigns[29].

 

 

In March of 2011, Amazon.com, the well-known online vendor of books, videos, music,  and just about everything else, announced that it was going to open an online service that would distribute applications (generally called “apps”) for the Google Android line of smart cell phones.  They called it the “Appstore”. 

This immediately aroused the wrath of Apple Inc, which runs its own “App Store” to sell applications for its iPhone, iPad, and iPod mobile devices.  Apple sued on March 18, 2011, accusing Amazon of infringing on its App Store trademark[30][31].  The lawsuit also alleged trademark dilution, that Amazon.com’s use of the term Appstore is likely to reduce the distinctiveness of Apple’s App Store mark by whittling away at the public’s association of the App Store mark with Apple’s services.

Apple had been awarded the App Store trademark by the U.S. Patent and Trademark Office in 2010.  However, Microsoft had formally opposed Apple’s trademark registration, on the grounds that the term “App Store” was too generic and that Apple was attempting to claim a trademark on what was simply a descriptive term.  An official ruling on that objection is pending. 

Apple was hoping that it would be able to show that it has used this “App Store” descriptive term so extensively that the public has come to associate that descriptive term exclusively with the company, which means that the company should indeed be able to claim trademark rights on that term. Apple would no doubt try to show in court that it had undertaken great efforts and expense to get the public to associate the name “App Store” exclusively with its brand.  Apple is trying to avoid what happened to Aspirin, Kleenex and Xerox—namely they want to prevent the words “App Store” from becoming part of our lexicon, which would cause the dilution and eventual loss of their trademark on the name. 

However, in July of 2013 Apple dropped their lawsuit before the case could go to trial, leaving Amazon.com free to use Appstore[32]. 

 

·         Apple Vs. Apple

 

One of the most prominent trademark issues of recent years was the legal dispute between Apple Computers and Apple Records[33], which points out the legal dangers when two separate companies have the same word in their trademarks.

 

Apple Corps was founded in January 1968 as a tax haven for the considerable cash reserves that the Beatles had accumulated.  The name Apple Corps was apparently a pun on the phrase "apple core".  It was planned that Apple Corps would finance a record label and other pet projects of the band members while also providing a "front" for their other financial activities in order to reduce personal liability and taxes for the Fab Four.  Ultimately, Apple Records was the only successful and long-lived division of Apple Corps. The Apple label released all Beatles records after 1968 and was also home to several other artists.

 

Steve Jobs and Steve Wozniak created Apple Computer in April of 1976 to sell the Apple 1 personal computer kit.  It's likely that Steve Jobs was aware of the existence of the Beatles' holding company because he was a Beatles fan, although choosing Apple as the company name could have been a result from Jobs' previous job at the All-One Farm.   The company’s founders realized up front that they were probably asking for trouble by using the Apple name, but they liked it so much that they went ahead and used it anyway.

 

It didn't take long for Apple Computer to attract the negative attention of Apple Corps.  In 1978, Apple Corps sued Apple Computer for trademark violations. After the case went to court, the two parties settled in November 1981 with the understanding that Apple Computer would never enter the music industry and that Apple Corps would never enter the computer business.  The other stipulation was that a flat sum would be paid by Apple Computers for the rights to the Apple name. The amount was rumored to be in the tens of millions, but court documents released later reveal that it was only $80,000.

 

However, the waters began to be muddied when Apple Computer began to develop devices and software that were capable of music playback and creation.  This alarmed Apple Corp yet again, and in 1989, eight years after the first settlement, Apple Corps filed suit against Apple Computer again, this time for violating the original agreement not to enter the music industry. 

 

The suit again went to court, and the two parties reached a settlement on October 9, 1991.  Outlined in the settlement was a description of each company’s respective trademark rights to the term “Apple”.  Apple Computer would still be allowed use of the name “Apple” to market "computers, microprocessors and microprocessor controlled devices, telecommunications equipment, data processing equipment, ancillary and peripheral equipment, and computer software of any kind on any medium" and would be allowed to produce marketing materials and networks to support those products.  It was agreed that Apple Corps would reserve the right to use the name Apple on any “creative works whose principal content is music”, but Apple Computer would be allowed to use the Apple name on “goods or services...used to reproduce, run, play or otherwise deliver such music content”.  But according to the agreement Apple Computer would not be allowed to create, package, sell, or distribute physical music materials such as records or CDs. 

 

However, the term "physical" as mentioned in the 1991 agreement was sort of ambiguous.   If "physical" is defined as meaning devices such as compact discs or other systems capable of storing and delivering pre-recorded music, Apple Computers would indeed be allowed to transmit music to its customers, since what is actually being transmitted is data.  But if the aforementioned definition of "physical" refers to any system that delivers music, then Apple Computers would be liable if it ever tried to deliver the song itself online, not just the device to play it on.  Apple Corps reserved the right to sue Apple Computer if the company ever used the Apple name to sell "creative works whose principal content is music."

 

And then Apple Computer began to offer music content for online downloading.  The iTunes Music Store was introduced in 2002.  The iTunes Music Store offered songs for download onto a customer’s computer or onto their iPod music playback device.  In the eyes of Apple Corps, the iTunes Music Store was a clear violation of the terms of the 1991 settlement.  In September 2003, Apple Corps sued Apple Computer simultaneously in the US and UK, this time for breach of contract for using the Apple logo in the creation and operation of Apple Computer’s iTunes Music Store.

 

Settlement talks fell through after Apple Computer offered Apple Corps $1 million for the right to use the Apple name in the music industry.  The case went to court on March 29, 2006 in the UK after the suits in the US and the UK were consolidated on September 21, 2004.  On 8 May 2006 the court ruled in favor of Apple Computer, with the court holding that no breach of the trademark agreement had been demonstrated.  This meant that the Beatles have no claim against Apple Computer's trademark as it pertains to Apple's iTunes software and online service. Apple Corps was also ordered to pay Apple Computer's legal expenses to the tune of over $3.5 million.  Apple Corps promised to appeal the decision.

 

On January 9, 2007, the Apple computer company renamed itself Apple Inc. to reflect its expanding role in the consumer electronics and music industry

 

On 5 February 2007, Apple Inc. and Apple Corps announced a settlement of their trademark dispute under which Apple Inc. will own all of the trademarks related to “Apple” and will license certain of those trademarks back to Apple Corps for their continued use.  The settlement ended the ongoing trademark lawsuit between the companies, with each party bearing its own legal costs, and Apple Inc. would be able to continue using the name Apple on its iTunes products. The settlement included terms that are confidential, although newspaper accounts at the time stated that Apple Inc. was buying out Apple Corps' trademark rights for a total of $500 million U.S.  Apple Inc ultimately paid Apple Corps $26.8 million for the right to use the Apple name in computers and music distribution.

 

In November of 2010, it was announced by Apple Inc that it was going to make Beatles music available for download on iTunes.  Incidentally, this represented the first time that Beatles tunes were available for legal download on any online music service.  This seems to indicate that the trademark battle between Apple Inc and Apple Corp has finally been resolved at long last. 

 

 

            In 1976, the rock band The Eagles released an album entitled *Hotel California*, and the title track on the album became an instant hit.  The album won the 1977 Grammy award for the record of the year.  The title song featured a long guitar introduction featuring Don Felder and Joe Walsh, with complex lyrics sung by Don Henley.  Don Henley insisted that the song was not really about an actual hotel, but was instead a metaphor for the “dark underbelly of the American dream, about narcissism, about the music business, and about excess in America.”

 

            In May of 2017, A Mexican hotel in Baja California was sued by the band for using the name “Hotel California” without permission, and actually promoting their guests to believe that the hotel is actually associated with the band.  The hotel is supposedly selling merchandise that suggests an association with The Eagles and with the song.   In addition, the band claims that the hotel is claiming that the hotel served as the inspiration for the lyrics in the song “Hotel California”.  In addition, the band claims in the suit that the hotel is playing the band's music in its sound system and is applying to register the name “Hotel California” with the U.S. Patent and Trademark Office. 

 

Trade Secrets

 

Trade secret [36] [37] [38] [39] law is yet another important part of intellectual property.  A trade secret is information about a recipe, a procedure, or a technique that a company wants to prevent its competitors from knowing anything about.  Trade secret laws provide some level of legal protection for a company’s products and processes that can on some occasions be preferable to the protection that patents can offer.  People who steal or disclose trade secrets via corporate espionage, bribery, or larceny can be prosecuted for criminal offenses, whereas someone who infringes a patent can only be sued in civil court. 

 

No registration is required to claim a trade secret—all you have to do is declare something a secret and take measures to keep outsiders from discovering the secret.  If there is a stated “don’t tell” policy, this can represent sufficient activity to preserve secrecy.  Examples of subjects of trade secrets are chemicals, recipes, lists of ingredients, manufacturing processes, lists of customers or clients, computer program source codes, corporate policies, even lists of the company’s employees. 

 

There are two standards for trade secret legal protection—secrecy and competitive advantage.   A trade secret is no longer secret if someone independently and legally figures it out for himself or herself, or if it was so obvious that it was easy to ascertain in the first place.  If the company fails to realize any economic or competitive benefit from protecting a trade secret, then the revealer or distributor of the secret might not be legally liable.

 

Trade secret law can be a powerful and effective way of protecting corporate intellectual property.  If the company chooses to patent its trade secrets, the company must reveal them in public and the patent protection will last for only 20 years, after which anyone is free to put out the same product.  But if the company does not patent the trade secret, it can protect it virtually forever.

 

Under the provisions of the 1976 Copyright act, it is possible for the author of computer software to associate trade secrets in the source code and to assert copyright in the source code (and in the executable code).

 

The best-known successful use of trade secrets is the recipe for making Coca-Cola[40].  The Coca-Cola Company chose never to patent their recipe, since this would have revealed the formula to the public.  Since any patent that the company took out would last only 20 years, competitors would be completely free to market the product after the patent expired.  By relying on trade secret laws, Coca-Cola can protect its formula virtually forever.  However, without a patent Coca-Cola cannot prevent competitors from reverse-engineering its product and putting out similar products, such as Pepsi-Cola.

 

The Right of Publicity

 

Somewhat similar in scope to copyright but quite different is the so-called right of publicity[41].  This gives an individual the exclusive right to profit commercially from the use of their name, image, photograph, likeness, or persona.  If someone wants to use your name or image in a TV commercial, they need your permission to do so.  If someone wants to use your name to endorse a product or service, they need your permission to do so.  If someone wants to put your photograph on a T-shirt and sell it to the public, they need your permission to do so.  Some laws even protect an individual’s signature, nickname, gestures, and mannerisms—even phrases and pieces of property that are closely associated with the individual.  Sometimes impersonations, look-alikes, or impressions can be considered to be unauthorized appropriations of a person’s right of publicity.   This means that even if someone does an impersonation of your voice, singing style, or mannerisms in such a manner that they derive a commercial benefit from such an act, this might be a violation of your right of publicity, as well as the misappropriation of your performance or performance style.

 

There is as yet no federal law dealing with the right of publicity, but several states have enacted such legislation[42].  The state laws vary in their scope—some state laws give a right of publicity only to celebrities or public persons, but others give the right of publicity to any individual.  Some states provide protection only if an individual has previously exploited the commercial value of their identity.  In some states the right of publicity only exists for individuals and cannot be transferred to someone else, but in others the right can be freely transferred to third parties.  In some states, the right of publicity ends with the individual’s death, but in others it can continue for some number of years after the individual has deceased. This means that agents, heirs, and estates can often be in charge of an individual’s right to publicity.   In other states, the right of publicity is protected under unfair competition laws that make it a tort if a company falsely claims that you have endorsed their product.  However, right of publicity laws protect only the personas of individuals, not the personas of corporations, partnerships, or organizations

 

The right to publicity has evolved from the right to privacy.  The right of privacy is basically the right to be left alone.  It protects an individual from the emotional anguish resulting from the publication or dissemination of private facts that are of no concern to the public at large, facts that are embarrassing, intimate, or those facts that portray them in a false light that is highly offensive.  The right of publicity is an extension of the right of privacy—it gives an individual a property right in his/her identity, and prevents someone else from deriving a commercial gain from an unauthorized use of this identity. The right of publicity must also be distinguished from defamation in that defamation involves the publication of untruthful information while rights of publicity claims usually result from the publication of truthful information.

 

Most right of publicity legal actions involve celebrities.  Since celebrities have spent a considerable amount of time, money, and talent in the pursuit of becoming famous, they are thought to have the right to make money when they exploit this fame, and they have the right to prevent others from misappropriating their persona without paying for the privilege.  Many celebrities derive much more income from commercial endorsements than they do from doing what made them famous in the first place—singing, dancing, acting, or playing sports.

 

The first right of publicity legal action (in 1953) involved the unauthorized use of the images of well-known baseball players on bubble-gum cards[43].  The singer Bette Midler won a judgment against the Ford Motor Company when an impersonator imitated her voice in a commercial[44].  A circus performer, whose “human cannonball” act was videotaped and shown on television, sued for the unlawful appropriation of his professional property[45].  Singer Tom Waits sued the potato chip vendor Frito-Lay for misappropriation of his voice in a radio commercial[46].  In 2001, the heirs of the Three Stooges sued an artist who had done a charcoal sketch of the slapstick trio[47].  The late-night talk show host Johnny Carson sued in 1983 when a manufacturer of portable toilets used without authorization the phrase “Here’s Johnny” in the promotion of their product[48].  Even though this was a line used by Ed McMahon to introduce the host, the line was seen being so closely associated with Johnny Carson that its unauthorized use infringed his right of publicity.  Woody Allen sued when an advertiser used a look-alike in one of their commercials[49].  A NASCAR driver successfully sued when a cigarette company used in an advertisement an image of a distinctive racecar that could be readily identified as belonging to him[50].  In 2007, the socialite and model Paris Hilton sued Hallmark Cards for unauthorized use of her photograph on a greeting card, along with an unauthorized use of her trademarked catch-phrase “That’s Hot” which is used on her line of perfumes and clothes[51].  Even non-celebrities can sue for unauthorized use of their right of publicity--a jury in California awarded a resident over 15 million dollars when the Nestlé Corporation used his image in a Taster’s Choice coffee commercial without his consent[52].

 

One of the most prominent cases involving the right of publicity was Vanna White vs Samsung Electronics (1992)[53].  Vanna White is the co-hostess of the popular television game show Wheel of Fortune, and is famous for walking back and forth in front of a game board, dressed in an exotic gown and pointing to letters as the contestant guesses them.  Samsung produced an advertisement for a VCR starring a robot dressed in a wig, gown, and jewelry reminiscent of Vanna White, posed next to a Wheel-of-Fortune game board.  The ad was a humorous attempt to depict a future in which robots did everything.  Although her name wasn’t used, Vanna White sued for infringement of her right of publicity, for using her likeness, signature, and voice for commercial purposes without her permission. 

 

Although the lower court had ruled against Vanna White, she appealed the decision and the Appeals Court ruled that her right of publicity had indeed been infringed.  The defendants had argued that their advertisement was a parody and was thus protected speech, but the Appeals Court ruled that the advertisement’s spoof of Vanna White and Wheel of Fortune was subservient and only tangentially related to the ad’s primary message.  The purpose was deemed to be commercial, which make the ad a “knock-off” rather than a parody.  This decision seems to make actionable the evocation of a celebrity’s identity in any form--just about anything that you put out there in an advertisement for a commercial product that evokes a celebrity’s identity is probably risky.  Any image, voice, or even a phrase that evokes an individual’s identity might be judged to be an infringement of their right of publicity.

 

Even dead celebrities still have rights of publicity.  Just because a celebrity is dead, this does not necessarily mean that one is free to use their image or persona for commercial purposes without permission.  Dead celebrities such as James Dean, Marilyn Monroe, Buddy Holly, Judy Garland, Humphrey Bogart, John Lennon, Michael Jackson, and Harry Carey are still valuable commodities in advertising and commercials, and you need to get the permission of their estates (and pay a hefty sum) if you want to use their images, recorded voices, or persona for any sort of commercial purpose, lest you get sued.  One of the most valuable celebrities is Albert Einstein, whose estate is controlled by the Hebrew University in Jerusalem, Israel, and you need the permission of Hebrew University if you want to use the famous physicist’s image, voice, or persona for any commercial purpose.

 

Although Elvis Presley died in 1977, his estate (controlled by Elvis Presley Enterprises, Inc) rigidly controls who can sell or use his name, voice, or image[54].  Permission from EPE is required before anyone can use any sort of image of the King, and EPE regularly monitors television shows and movies, looking for any invocation of Elvis’s image, voice, or persona that has not been pre-cleared, that is, one in which the appropriator has not obtained permission and paid for the right to use the image.  There are literally thousands of Elvis impersonators out there, and EPE would be hard put to stop all of them.  Nevertheless, EPE has sued some of the more successful ones for making a public performance of Elvis’s persona for commercial purposes without permission.   Since 1979, EPE has filed over 100 lawsuits to assert the estate’s exclusive rights to Elvis’s name and likeness[55].

 

Authors of fictional novels or the producers of movies often have to be careful that they do not inadvertently infringe on someone’s persona in their creative works—they may strictly by accident have included a character that is similar in several respects to a real person.  Consequently, in order to protect themselves against lawsuits, movie producers often include in their movie credits a standard boilerplate legal disclaimer saying that all persons depicted are purely fictional, and that any similarity to actual persons, living or dead, is purely coincidental.  

 

There is some degree of conflict between the right of publicity and the First Amendment of the US Constitution.   Under free speech, certain uses of an individual’s identity are permitted—it is generally true that if the issues surrounding an individual are a matter of public concern or if the individual is somehow newsworthy there is a considerable amount of leeway allowed in the use of their persona.  It would be impossible, for example, to write historical works or news articles that refer to real characters if an individual’s right of publicity automatically prohibited such efforts.  However, if the individual’s persona is used in entertainment or fiction, or if there is even a hint of a commercial application of the individual’s identity such as in a TV commercial or a product endorsement, there is considerably less latitude.  Historical fiction and historical entertainment that make mention of real persons can be risky, since they are not primarily intended to disseminate real facts to the public—such a use is not really to inform or educate the public, it is primarily for entertainment and hence has a commercial purpose.  If you are making any money by using the identity of a real person, you could be asking for a lawsuit.

 

The line between a protected and an unprotected use of someone’s publicity right is often unclear.  Generally, the unauthorized use of someone’s identity for a commercial purpose is likely to be an infringement.  However, if the use adds significant creative elements or if it is used to provide social commentary on matters of public concern and interest, the use is usually considered to be permissible.  Generally, uses of someone’s identity for purposes of satire, parody, political debate, or social commentary are protected under the First Amendment.  For this reason, Saturday Night Live can probably feel perfectly free to satirize and mock celebrities without any fear of legal sanctions.  

 

However, it is often not clear exactly which types of publications or presentations are “news” or “satire” and those that are simply “advertising” or “commercial”.   The actress Elizabeth Taylor sued NBC to prevent them from using her name or likeness or using another actress to portray her in a TV miniseries, but the courts rejected her argument, maintaining that the right of publicity cannot be used to suppress commentary about the lives of public people, and would be an unconstitutional prior restraint against First Amendment-protected speech[56]. 

 

The right of publicity is a new and evolving aspect of the law, and important changes and adaptations can be expected in the future.

 

Moral Rights

 

Moral rights[57] are the rights given to authors and creators of copyrighted works that are recognized in civil law jurisdictions rather than explicitly in copyright law.  In contrast to the economic rights that are protected under copyright, moral rights are concerned with protecting the personality and reputation of authors, giving them the ability to control the eventual fate of their works.  Moral rights are codified in the Berne Convention, which the United States ratified in 1988. 

 

Moral rights of authors and artists are recognized in European copyright law but not very much in the USA, at least not yet.  In the USA, an artist’s moral rights are protected primarily by defamation, privacy, or unfair competition laws rather than by copyright law, but visual artists are provided with some special protection through the Visual Artists Rights Act (VARA)[58] of 1990.   

 

This law applies strictly to unique, one-of-a-kind, visual works of fine art such as a painting, drawing, print, sculpture, or still photograph, that exist as a single copy or only as a limited edition of 200 or fewer copies that are individually signed and numbered by the author.  The law does not cover works of graphic design, maps, charts, technical drawings, databases, electronic publications, motion pictures, books, magazines, advertisements, works for trade or commercial purposes, or reproductions.  VARA also does not apply to works for hire. 

 

The law was designed to protect the post-sale rights of creators of unique pieces of visual fine art--even if the artist has signed over the copyright to someone else or has sold the work, they still retain the moral rights under VARA.  An author of a visual artwork has the right to claim authorship of that work and has the right to prevent the use of their name as the author of any work of visual art that they did not create.  Noone can put my name on a visual work of art that I didn’t create, and they can’t take my name off a work that I did create.  Moral rights as outlined in VARA allow an author to prevent revision, alteration, or distortion of their work, even if it has been sold to someone else.  An author has the right to publish works anonymously or pseudonymously.  The author of a visual artwork also has the right to prevent the use of their name as the author of a distortion, mutilation, or other modification of the work that would be prejudicial to their honor or reputation.  If someone draws a moustache on a portrait that I painted, they can’t claim that I did it.  It also prevents the destruction, modification, or defacement of an artistic work of recognized stature. 

 

Unlike copyright, moral rights under VARA are not transferable, and end with the life of the author.   For joint works created by two or more authors, the moral rights endure for a term consisting of the life of the last surviving author.

 

However, the author can waive their moral rights under VARA if he or she expressly agrees to such a waiver in writing.

 

VARA does not forbid people from distorting or mutilating reproductions, portrayals, depictions, or images of the visual work, such as that which might take place in magazines, newspapers, posters, movies, or advertisements.  VARA cannot forbid someone from making a parody of a visual work of art, criticizing it, making fun of it, even ridiculing it.  VARA only protects the physical integrity of the visual work itself, not its use in reproductions or images.  However, such reproductions may be forbidden under copyright law, since they could be construed as the production of unauthorized “derivative works”. 

 

 

Works for Hire

 

“Works for hire” [59]are those for which an employer rather than the employee is considered to be the author of the work and owns the copyright on it.  This would, for example, include a work prepared by an employee within the scope of their employment, or a work specially ordered or commissioned as part of another larger work.  Most firms require that their employees sign an agreement that stipulates that all the works that they create in the course of their jobs become the intellectual property of the employer.  So if I work for the Disney organization, my employer owns the copyright on the creative works that I perform for them, not me.  This means that my employer owns all the exclusive rights granted under copyright law, and I have no say in what happens to my work or in what the company does with my work.  The only money I get from the Disney organization is my salary and benefits--I am not entitled to receive any extra money from the commercial exploitation of the work or sale of the work in the marketplace. 

 

However, if a company employee writes a novel or textbook on a subject that is totally unrelated to their job and they do it at home and in their spare time, they can usually claim the copyright on it, but they should probably go ahead and clear the ownership status with the company management, just to keep themselves out of trouble in case there is a disagreement later on. 

 

Determining who qualifies as an “employee” under the works-for-hire provision of the copyright law can sometimes not be easy—generally the determination of whether or not someone is an “employee” of a given firm is based on the amount of control exerted by the employer over the employee, on whether the employer can dictate how or where the work is done, whether the employer supplies equipment and resources for the employee’s use, and on whether payments of salary and benefits are made and on whether taxes are withheld.  So an independent contractor would not be considered as an “employee” under the copyright law, but the work that they do might nevertheless be considered as a “work-for-hire” if it were specially commissioned by the firm and if there is a written agreement between the contractor and the firm that the work is a work made for hire.   The legal status of works created by outside contractors can often be quite unclear--there have been several legal disputes in which corporations claimed that outside contractors who created artistic works for them were actually “employees” of the corporation, and that the corporation “owned” the intellectual property that they created.  

 

 

Copyright Transfers

 

The ownership of a copyright can be transferred from one party to another via sale, grant or gift, and can be bequeathed by will just like any other sort of personal property.  All of the exclusive rights involved in the possession of a copyright also go along with the copyright itself, and the person or persons who receive the copyright can also lay claim to any and all of the exclusive rights involved in the copyright.  The transfer of copyright ownership has to be done in writing, and the transfer can be recorded in the Copyright Office.

 

Very often, when an author or artist wishes to commercially exploit their work, the creator typically transfers the ownership of the copyright to the company that will get the work to market, such as a book publisher or a record company.  This is because few authors or artists except the most famous and celebrated have the resources or channels of distribution to disseminate their creations.  This is what happened when I published my two books—my publisher owns the copyright on my books and all of the associated exclusive rights, not me.  This means that I would not be allowed to distribute copies of my own books, republish them somewhere else, perform them in public, post them on the Internet, or create derivative work based on my books, at least not without getting the permission of my publisher to do so.  However, it is common for the author to place some limitation on the number of exclusive rights transferred to the publisher, for example perhaps the transfer will last for only a limited time, it might only be applicable in certain locations, or it will only be exercised through certain media.  All of these details are worked out at the time the initial book or recording contract is signed. 

 

A transfer of copyright from an author or artist to a book publisher or a recording company is not formally the same as a “works-for-hire” agreement, since the author or the artist is not considered as being an “employee” of the book publisher or record company.   However, when working out the details of the contract, the author needs to make sure that the contract they will be signing does not have wording in there which states or even implies that their creation will be treated as a “work-for-hire” by the publisher or record label.  The author should probably have an experienced intellectual property attorney look over the contract before they sign it, lest he or she be taken to the cleaners.

 

If the author of the work has granted the copyright to another party, the author does have the right to terminate the grant and reclaim their copyright at any time during a period of five years beginning at the end of 35 years from the date of execution of the original grant.  Upon termination, all rights revert back to the author, but derivative works prepared while the grant was in effect may continue to be utilized.  After reclamation, the author could republish their work, print and issue copies, create derivative works, or do whatever they please with it.  However, if the author had inadvertently agreed that the party receiving the copyright could treat the work as being a “work-for-hire”, the author could never be able to reclaim their copyright.

 

 

Copyright Collaborations

 

Very often, two or more people collaborate in the creation of a work.  In such cases, who owns the copyright on the work?  The authors of a joint work[60] are considered as being the co-owners of the copyright, unless there is an agreement to the contrary.  All of the authors of the work must intend that their contributions be combined into a single work, although is not necessary that the contributions of all the authors be equal in value or effort.  One of the authors can use the entire work as they please without getting the permission of the other authors. 

 

An example of a joint work might be a popular song written by collaboration between a composer who writes the music and a lyricist who composes the words.  One of the best known of these songwriting teams was Richard Rodgers and Lorenz Hart, who worked together on over 30 musicals between 1919 and 1943.  In such a case, the composer and the lyricist would be the joint owners of the copyright on the song that they wrote and would share in the profits.    However, if a lyricist simply writes words for a previously existing piece of music, this would not be a joint work, since the lyricist would be creating a “derivative work”, for which the permission of the writer of the original music would be required.

 

 

The Public Domain

 

Despite the draconian tone of what appears above, not everything can be copyrighted.   Those things not subject to copyright are also said to be in the public domain, and you can anything you please with them without obtaining anyone’s permission or paying any fees.  Works in the public domain include those for which copyright was inapplicable in the first place, those for which the copyright has expired, or those for which the copyright has been forfeited or abandoned.

 

Things Not Subject to Copyright

 

Not everything can be copyrighted.  One example of something that is not subject to copyright is a work that entirely lacks originality.  The copyright law specifically says that for a work to be eligible for copyright protection, it must be original.  The work cannot be a mere mechanical reproduction of a previous work.  For example, you can’t simply copy the text of Shakespeare’s Othello onto a CD and claim that you own a new copyright on it.  You can’t scan and digitize the famous Matthew Brady photograph of Abraham Lincoln and claim that you now own a copyright on the digital version.  Even if you change the typeface, correct the spelling errors, or reformat the line spacing in a nineteenth-century Dickens novel, you still have not met the standard of minimal originality required for copyright to apply. 

 

Blank forms such as time cards, graph paper, bank checks, checklists, or address books cannot be copyrighted, because they do not contain even a minimum amount of originality.  You cannot copyright information that is common property and which contains no original authorship, such as a calendar, a ruler, a height and weight chart, or a list of scientific unit conversions.  However, the amount of originality required is quite small, and just about any work that is created by an author or artist will usually qualify for copyright protection.  Quite a bit or even most of the author’s work could actually be copied or even lifted bodily from previous works, but so long as at least some part of it is original, the work usually qualifies for copyright protection.  

 

Other examples of things that are not subject to copyright are works that have not yet been fixed in a tangible form of expression, such as speeches, songs, jokes, novels, or performances that have not yet been written down or recorded.  Simply singing your new song in public is not enough to obtain a copyright on it—you have to record it on some sort of medium such as audio tape or CD or write it down in musical notation on a piece of paper.  However, you have to be careful about works that have been fixed in tangible form but have not yet been published—they can still be protected by copyright and there are special restrictions on their use by others.

 

Titles, names, short phrases and slogans, familiar symbols or designs, lettering, typefaces, or coloring schemes are not copyrightable.  You cannot copyright your name, and then start suing anyone who uses it without your permission.  Short phrases such as “Make My Day”, “Do You Feel Lucky”, “Beam Me Up”, “Round Up the Usual Suspects”, or “Show Me the Money” were made popular by the movies and television, but they cannot be copyrighted since they are common idioms used in the English language. 

 

This is a source of major confusion to many people, since, although these things cannot be copyrighted, they can be trademarked.  A trademark is a mechanism used by the owner to identify the source of their goods and services in the marketplace, and is used to distinguish them from those of others. 

 

In general, copyright cannot protect single words or short phrases, even if those words or short phrases are nonsense words.  But there are a few cases[61] that indicate that nonsense words or phrases might be copyrightable under certain circumstances. Examples might be things like Lewis Carroll’s Jabberwocky phrases, which might be considered to have a sufficient level of originality that they could be protected by copyright.  Judge Learned Hand has argued that such a string of nonsense words might under the right set of circumstances be sufficiently original that they could conceivably be protected by copyright.  One might argue that if you created a new word that you could prove that no one had ever used before, it might be copyrightable and you could prevent others from using that word without your permission.  This logic has been used to protect the source code for computer programs—these consist of a string of seeming nonsense words such as if, case, switch, else, char, int, main, while, return, and the like, interposed with strange names and numbers which mean something only to a computer compiler.  

 

You cannot copyright a strictly useful or utilitarian article such as an automobile, airplane, boat, appliance, tool, dish, lamp, or a piece of household furniture.  Also you cannot copyright articles of clothing such a dress or a suit, which means that fashion designs cannot be copyrighted.  However, you can copyright any of the visual, artistic, or graphic aspects of a useful article that can be identified either physically or conceptually as being separate from its utilitarian aspects.  This means that although you can’t copyright a lamp, you could copyright your particular artistic design for the base of the lamp, since the base of the lamp can be identified as being separate from the primary functionality of the lamp.  Consequently, a useful article could have both copyrightable and uncopyrightable aspects.  However, the courts and the Copyright Office have generally applied the separability test in such a way that most industrial designs are excluded from copyright protection.  Separation between the utilitarian aspect and the artistic aspect is especially difficult to achieve for fashion designs, which effectively means that fashion designs cannot be protected by copyright.  Although fashion designs cannot be protected by copyright in the USA, they can be protected by copyright in Europe, so you need to be careful.

  . 

Mere facts cannot be copyrighted, and anyone is free to quote them without having to obtain anyone’s permission.  The statement “John F. Kennedy was the 35th President of the United States” is a fact—it can’t be copyrighted.   Facts about scientific, historical, biographical, or newsworthy events cannot be protected by copyright, even if the author spent considerable time and effort discovering things that were previously unknown.  The particular words, sounds, or images that an author uses to express these facts can be copyrighted, but not the facts themselves.  For example, suppose an author spends a lifetime of research in gathering information about the status and final disposition of military aircraft and publishes the information in a book or posts it on the Internet.  Once the material is published, others are free to use the results in their own works without paying the original author anything, provided of course that they express the information in their own words and give proper credit to the original author. 

 

Also, you cannot copyright ideas, procedures, methods, systems, processes, concepts, theories, scientific principles, or scientific discoveries.  If you discover a new law of physics, you cannot copyright the new law, but you can copyright your particular description or illustration of the law you discovered.  If you invent a new algorithm for solving differential equations, you cannot copyright it.  If you devise a new business procedure or a new accounting process, you cannot copyright that either.   You cannot copyright a mere listing of ingredients in a recipe or a formula, but any commentary, notes, photos, or illustrations accompanying the list could be copyrightable. 

 

Ideas, methods, ingredients, procedures, and processes can, however, be patented.  When you patent your idea, the patent gives you a monopoly on any commercial application of that idea, but the patent does not enable you to prevent others from discussing or criticizing the idea.  A patent can be a much more valuable protector of intellectual property than a copyright, especially if the idea has any sort of commercial application. 

 

Publications, photographs, or works of art created by officers or employees of the federal government as part of their official duties are not subject to copyright.  Examples are the texts of Supreme Court decisions, reports put out by Congressional committees, transcripts of Senate hearings, speeches by the President and other government officials, Defense Department reports, federally sponsored photographs, poetry, dramatic plays, music, and paintings such as those produced under New Deal governmental sponsorship during the Depression, photographs and films taken by military personnel during combat, as well as NASA photographs of distant planets.  The creation of all of these works was financed by the taxpayers, and these works are considered as being the property of the public at large, and anyone can do what they like with them without asking anyone’s permission or paying any royalties.   Even though federally created or sponsored publications or photographs are not subject to copyright, copyright may nevertheless apply to some state or local government publications. 

 

But the federal government is not precluded from receiving and holding copyrights transferred to it by assignment or bequest.  Examples are works created by outside private corporations or individuals under contract to the government, such as military recruitment advertisements or public service announcements about the hazards of illegal drugs or the dangers of drunk driving.  The government owns the copyright on these, and you have to be careful about using them in your own work. 

 

You also have to be careful about some artistic works that are commissioned by the federal government, such as music or poetry written for certain public occasions such as Presidential inaugurations or other ceremonies.  These may not necessarily be free from copyright restrictions--in some cases, the artists who created these federal government works are able to reserve the intellectual property rights for themselves.  The details of who owns what are worked out during the initial negotiations at the time the initial contract for the work is signed—if the government so desires, it can insist that the work be dedicated to the public domain, but otherwise the creator can reserve the copyright on the work that they create for themselves[62].

 

There are some ambiguous copyright situations involving works created by quasi-governmental institutions that one might at first might think are federal agencies, but which really aren’t[63].  Examples of such institutions are the Smithsonian Institution, the National Gallery of Art, the Public Broadcasting Corporation, even the US Postal Service.  Congress created these institutions as private and independent nonprofit corporations, they are not formally agencies of the federal government, and they can and do claim copyright on their works.  Photographs, books, or brochures put out by the Smithsonian Institution, the television and radio programs created by PBS or NPR for the PBC, publications put out by the National Gallery of Art, even the design of the stamps used by the US Postal Service, are all subject to copyright.  Although you are generally allowed freely to use these copyrighted works for noncommercial, educational, or nonprofit purposes without obtaining permission or paying any fees, you generally cannot use them for any commercial, profit-making purposes, at least not without getting permission to do so.  Also you have to be careful that when you do use these works in your project, you don’t somehow imply either directly or indirectly that the institution from which you borrowed the item is somehow the sponsor or the creator of your project.

 

Works created by officials of the American federal government are not subject to copyright, but this not necessarily true for foreign governments.  A work created or sponsored by a foreign government might very well be subject to copyright under the laws of that particular country, and if that country were a signatory to the Berne Convention you would be guilty of infringement if you copied or performed the work here in America without permission.  An example is the United Kingdom, where the speeches by the Prime Minister, the works printed by Parliament, and the publications issued by Her Majesty’s Stationery Office are subject to what is known as Crown Copyright.[64]  You generally cannot use these works without obtaining permission, although there are some complex exceptions in which Crown Copyright does not apply to government-issued works.  If you want to use something published by Her Majesty’s government, you need to be very careful.

 

Copyright can be used to protect the particular expression of an idea, not the idea itself.  This is known in copyright law and practice as the idea/expression dichotomy.  American copyright law provides protection only for specific expressions of ideas, not the ideas themselves—anyone is allowed to freely use, criticize, or refer to the ideas behind the expression.   For example, I can copyright my own book on communication with extra-terrestrial intelligence, but I can’t copyright the general topic of communication with extraterrestrial intelligence and cannot prevent someone else from also writing about the same topic, provided of course that the other author uses his/her own words.  This distinction is vital for the maintenance of a free press as well as making it possible for a free and complete discussion of intellectual, political, and religious ideas—it dates all the way back to the Framers, who recognized that granting a complete control over ideas by a government-mandated monopoly would be a powerful medium of censorship and press control.  The arena of public discussion and debate would be very silent indeed if authors or large private corporations could claim ownership of ideas and if permission from them was required before others could legally discuss, criticize, or refer to these ideas.  However, the distinction between an idea and a specific expression of that idea can be a subtle one, and often can be decided only in court.   Is a particular musical chord progression an idea or an expression?  Is the notion of a starship engaged in seeking out new life and new civilizations, boldly going where noone has gone before, an idea or an expression? 

 

Databases[65] are a complicated matter in copyright law--they may be subject to copyright protection, but the data in them is not necessarily protected, especially if the individual items in the database are things that are themselves not eligible for copyright such as facts, names, dates, numbers, or short phrases.  The copyright law explicitly states that copyright covers only the compilation itself, and not the underlying materials or data that are in the compilation--the underlying data is not automatically granted copyright protection via its inclusion in the database.  In order to be eligible for copyright protection, the database must be a collection of preexisting materials or a collection of data that are selected and organized in such a way that the work as a whole can be considered as being an original work of authorship. 

 

An example of a database that could be protected as a compilation would be a listing of Presidential quotations.  The individual quotations are not subject to copyright since they are the public utterances of a Federal official, but the choice by the author of which quotations to include would be considered as an original work of authorship and hence eligible for copyright protection.  You would not require permission to use just one presidential quote from the database—you certainly wouldn’t need anyone’s permission to use FDR’s famous quote “The only thing we have to fear is fear itself”--but you would probably have to get the database creator’s permission if you wanted to use the whole list of quotes from it in your own work.  So a database of unprotected items is protected only as a compilation. 

 

A cookbook that lists a series of recipes would be copyrightable only as a compilation.  The individual recipes in the cookbook would not be subject to copyright since they are merely lists of ingredients, but since there is some degree of originality in the choice of which recipes to include in the cookbook, the entire cookbook would be copyrightable as a compilation.

 

However, not all compilations of data can be copyrighted--in order to be eligible for copyright protection, the making of a compilation must have involved a certain minimal amount of creativity, certainly more than a mere alphabetic sorting of previously-existing information.  The Supreme Court held in Feist Publications, Inc vs. Rural Telephone Service Company, Inc (1991) [66]that the white pages of the telephone book do not contain enough creativity to be eligible for copyright protection.   Feist Publications had a business in which they issued regional telephone directories that combined listings from several local telephone companies.  Most of these local telephone companies readily agreed to license their data to Feist, but the Rural Telephone Service Company did not.  Feist went ahead and copied Rural’s telephone numbers into its regional directory without obtaining permission.  Rural then sued Feist for copyright infringement.  The case went all the way to the Supreme Court.  The Court ruled that Feist was not guilty of copyright infringement because alphabetical listings and other such unoriginal assemblies of data cannot be copyrighted.  The fact that the Rural Telephone Service Company had spent considerable time, energy, and money (sometimes called “sweat of the brow”) in constructing the data in the telephone book was found to be irrelevant, since the book that was produced was nothing more than an alphabetic listing of subscribers that the company was already required to compile under existing law and that no creative expression was involved.   

 

So the Supreme Court added a new requirement for copyright—the work must exhibit a certain minimal amount of creativity in order for it to be copyrightable.  This means that you could not copyright a table of trigonometric data such as a listing of sines and cosines of angles, since the composition of such a table is strictly a mechanical act involving no creativity.  This creativity requirement is sort of vague—the courts have not tried to specify the exact amount of creativity that is required in order for a work to be copyrightable, but there has to be at least some minimal amount of creativity present.  Nevertheless, the actual amount of creativity required for copyright to apply is quite small.  It does not matter if the author’s creation is of poor quality or is totally lacking in ingenuity or is completely devoid of any artistic merit—so long as there is at least some minimal amount of creativity involved, the work is protected by copyright.

 

Copyright Expiration

 

Another category of works not subject to copyright are those works which were at one time under copyright, but are so no longer.  The Constitution requires that copyright terms must last only for limited times.  The amount of time that copyrights endure can be a very complicated matter, and some copyrights can last for a very, very long time.  But one thing is certain—all copyrights will eventually expire.  

 

Works whose copyright has expired are said to have entered the public domain[67].   They are considered to be owned by the public at large, not by any individual artist or author or by any corporation or organization. No one can claim exclusive ownership of things in the public domain, and anyone can do whatever they please with public domain works without obtaining anyone’s permission or paying any fees.  You are completely free to make and distribute copies of any work that is in the public domain, you can publish it, you can digitize it, you can translate it into a different language, you can perform it in public, you can make a public display of it, you can post it on the Internet, you can write a screenplay based on it, you can make it into a movie, or use it to create any sort of derivative work.  You can do absolutely anything you want with a work whose copyright has expired without getting anyone’s permission or paying any money to anyone—anything at all.

 

You are free to perform Shakespeare’s Hamlet anytime and anywhere you want, you can do what you like with Mark Twain’s Huckleberry Finn, and you are free to have your orchestra perform Brahms’s First Symphony, since the copyrights on all of these works expired a long time ago.  You are free to create derivative works based on the Grimm Brothers fairy tales without getting anyone’s permission, since the copyrights on these works have also expired.  However, music can be a bit tricky--even though the music of Brahms’s First Symphony is free of copyright restrictions, a particular audio recording of the music might very well be protected by copyright and may not be copied and distributed without permission.

 

The rules governing the duration of copyrights can be quite complicated.  Under current copyright law, for any work created after 1978 the duration of its copyright is the life of the author plus 70 years.  Works for hire last even longer--they enjoy protection for 95 years from date of publication or 120 years from date of creation, whichever is shorter.  Works that had been published or registered for copyright prior to January 1, 1978 that were still under copyright on that date have terms of 95 years following the date that the copyright was initially secured.  So it is going to be a long, long time before most modern works will enter the public domain.  But all of them eventually will.

 

Generally, anything published before 1923 can be considered as now being in the public domain, and numerous works published after 1923 are also in the public domain because their copyrights have now expired.  But thousands of other works published after 1923 are still under copyright, and you would need permission to use them.   Unpublished works created even before 1923 are not necessarily in the public domain—these works are protected for at least the life of the author plus 70 years.  If they were created before 1978 but first published before 2002, the works have protection until 2047.  

 

Also in the public domain are works published before 1964 but for which the copyright was not renewed in a timely fashion[68] under the rules in existence at the time.  This renewal must have been made during the 28th year after the work was first published or registered, which means that a book published in 1938 would have to have had its copyright renewed in 1966.  If this didn’t happen, the book automatically fell into the public domain and anyone could do anything they pleased with it.  It turns out that most copyrights were not renewed--fewer than 11 percent of the copyrights initially registered between 1883 and 1964 were actually renewed at the end of their 28-year terms, even though the cost of renewal was fairly small.  This lack of renewal is due to the fact that most of the income from the vast majority of copyrighted works is derived strictly from the first couple of years that they are on the market, and declines fairly rapidly after that.  This meant that most works were essentially worthless by the time that the end of their initial 28-year term was reached.  Since these works were no longer worth very much anyway, the copyright owners (even if they still existed) very often simply didn’t bother to renew their copyrights.   This means that a lot of these older works are actually now in the public domain. 

 

It can sometimes be difficult to determine if the copyright of a work published after 1923 had its copyright properly renewed during the 28th year of its original term.  If a work had gotten republished, the copyright notice page will sometimes state explicitly that the copyright was renewed.  But more often than not, there will be absolutely no indication anywhere on the work of whether its copyright was renewed.  But absence of evidence is not evidence of absence—the copyright might have actually been renewed even if there is nothing in writing anywhere on the work.  You will probably actually have to search the US Copyright Office records to see if the copyright of a given work was renewed.  This is pretty easy to do for works published between 1950 and 1963, since there is a searchable online database maintained by the US Copyright Office.  However, for works published earlier, you must search the records manually.  Only if you can be absolutely sure that the copyright was not renewed can you feel safe to use the work without obtaining permission.

 

The determination of whether or not a given copyright has expired is not a simple and easy task, and usually requires a careful search of the records by experienced (and expensive) intellectual property experts.  There is an overview of the public domain at the following link.

 

Generally, works written by authors long dead are no longer subject to copyright, but even there you have to be careful.   The works of Homer are certainly in the public domain since he has been dead for 2700 years, but copyrights may nevertheless exist on new translations or new formulations of his works.   Even the Bible may be under copyright in certain situations.  The Revised Standard Version of the Bible[69] was a new English translation of the Bible created by a group of scholars in the 1950s from the original Greek of the New Testament and the original Hebrew of the Old Testament, designed to be a more readable and literally accurate version of the King James Version.  Although the original Greek and Hebrew works are certainly in the public domain, as is the King James Version as well, the RSV is still under copyright, the copyright being owned by the National Council of Churches of Christ in the USA.  Music is a special problem—the music for Beethoven’s Fifth Symphony is certainly in the public domain, but an individual sound recording of this symphony may not be, and could well be protected by copyright.

 

The Frank Capra movie It’s a Wonderful Life (1946)[70] [71] accidentally ended up in the public domain in 1974 because somebody either forgot or simply didn’t bother to renew its copyright during the 28th year after the film’s release.   Inadvertently, the fact that the film was now in the public domain led to its increased popularity—many TV stations could now air the film free of having to pay royalties, and it soon became a perennial Christmas favorite.  However, in 1993 Republic Pictures was able to use the Supreme Court ruling in Stewart vs Abend[72] to enforce its claim of copyright on the film.  Although the film itself had entered the public domain, the short story upon which it was based had had its copyright properly renewed in 1971, and the movie was considered as being a derivative work and hence still protected by copyright.  As a result, only NBC is now licensed to show the film on network television, the colorized versions have all been withdrawn, and Republic now has exclusive video rights.  So the movie enjoyed a few years of life under the public domain, but is now back firmly under copyright.

 

Happy Birthday to You[73] is perhaps the best-known song in the English language—you might think that this song is almost certainly in the public domain, since it is sung at millions of birthday parties and was even sung to President Kennedy by Marilyn Monroe and has been incorporated into millions of music boxes, greeting cards, and other musical products.  But until quite recently, you would have been wrong—for many years the song was not in the public domain and somebody actually owned Happy Birthday to You.  Although you were probably still safe if you sang the song at home for your family, in order to sing the song in public, to create a musical product using the song, or to incorporate the song into your movie, TV show, or commercial, you needed the permission of AOL Time Warner to do so, or a battery of lawyers would soon be at your door.  The licensing fees and royalties paid on the use of the song brought in about 2 million dollars per year. 

 

But in February of 2016, a Federal judge ruled that AOL Time Warner does not own a valid copyright on the song[74].  The ruling was the result of a 2013 class-action lawsuit brought by several artists against Warner/Chappell, the music publishing arm of the Warner Music Group, seeking the return of the millions of dollars in fees that the company has collected over the years.  The melody (originally known as Good Morning to All) had originally been published in 1893 by the two sisters Mildred and Patty Hill.  Warner’s copyright originated with the Summy Co, the Hill sisters’ publisher, which had been acquired by Warner in 1988.    Summy had registered the song’s melody in 1935, which meant that the United States copyright would not expire until 2030,   But apparently they did not register the Happy Birthday to You lyrics.  The defendants argued that Hill sisters eventually also gave Summy Co. the rights to exploit and protect the Happy Birthday to You lyrics, but the judge could find any support for this in the record.  The true origin of the Happy Birthday to You lyrics is sort of murky, and it is not at all clear as to who actually wrote them.  The court ruled that the copyright that Warner/Chappell held covered only the piano arrangements of the music, and not to the melody or the lyrics.  Warner/Chappell has agreed to pay a $14 million settlement to those who had previously been charged money for the use of the song. So the song is now in the public domain, and you can now do anything you please with it. 

 

 

Dedicated Works

 

Dedicated works[75] are those that are deliberately placed in the public domain by their creators, usually by people who want to make some sort of political or intellectual point. This sort of dedication is rare, and you need to make sure that the owner really has dedicated the work to the public domain before you are free to use it.  Also, you need to make sure that the person making the dedication has the right to do so.  Only the copyright owner has the right to make such a dedication, and sometimes the creator of the work is not the copyright owner—you need to contact the copyright owner to be sure.  For example, I do not own the copyrights on the two books that I wrote—the publisher does—and I would not have the power to dedicate my books to the public domain, even if I wanted to. 

 

Assuming that an author actually wants to dedicate their work to the public domain and wishes to abandon all their rights under copyright to their creative work, how do they actually go about doing this[76]?    Actually, the copyright law provides no formal procedure for doing this, and some experts in copyright law think that it isn’t even legally possible to abandon one’s copyright.  In response to a query, the Copyright Office told me that although there is no formal procedure in place for the renunciation of copyright, there is no law requiring that a copyright owner actually enforce their rights, and they could ignore any and all infringements if they choose to do so.

 

But it is not entirely obvious how someone would actually go about dedicating their work to the public domain.  One thing that an author might do is to inform the Copyright Office in writing that they intend to relinquish all rights under copyright to their work.  However, the Copyright Office has no official form to do this, and since there is no recognized procedure in place for relinquishing copyright, it is not clear what the legal effect of submitting such a relinquishment letter would be, if any. 

 

Alternatively, if the author really wants to abandon their exclusive rights under copyright, the Public Domain Sherpa website recommends that the author should attach an unambiguous and unequivocal statement to their work acknowledging their intention to give up all rights under copyright to the work[77]. The statement must be carefully worded in order to avoid any possible misunderstanding.  The statement must not say that the author is giving up just some of their rights under copyright law—it must say that they are giving up all of them.  The statement should also say that the author is giving up any right to enforce their copyright by legal means such as the filing of a lawsuit. In addition, the statement should also say that the dedicator relinquishes all present and future rights in perpetuity, which would ensure that the author or his heirs and successors couldn’t change their minds and come back at a later time and reassert their copyright.  If you don’t see all of these things stated clearly and unambiguously in the relinquishment statement, be very careful before you go ahead and use the work—contact the author to make certain that you know what their intention really is, or you could find yourself in court.

 

Could an author who voluntarily placed their work in the public domain change their mind at a later time and put their work back under copyright restrictions?  Since copyright is automatic, and since the Copyright Office does not recognize any formal procedure for the renunciation of copyright, I supposed that one could reasonably argue that full copyright protection was always potentially available for the entire period of time that the author had voluntarily put their work into the public domain, and they could decide to enforce their copyright at any time they pleased.   However, one might also argue that if the author had attached a clear and unambiguous statement of copyright relinquishment to their work, this might be considered as being a legally-binding contract, and that it would difficult to sue someone who copied, performed, or distributed the work under the reasonable assumption that they had the right to do so

 

 

 

Limitations on Exclusive Rights--First Sale[78]

 

The legal principle of first sale means that once a customer has legally acquired or purchased a copy of a copyrighted work, they can do whatever they please with the item, so long as what they do with the work does not tread on any of the copyright owner’s exclusive rights.  You can sell your copy to someone else, you can give it away, you can lend it to others, you can modify or change it to your liking, you can access it as many times as you please, and you can access your copy at any time or place of your choosing.  You could even burn it to ashes if you like.  In fact, you can do just about anything you like with a copy of a copyrighted work that you own, except publicly perform the work, display it in public, create a derivative work based on it, or make and distribute unauthorized copies, since these are rights that are reserved exclusively for the copyright owner.  Even though you may own a copy of the work, you still don’t own the copyright on it.

 

The first sale doctrine makes it legal for you to sell, loan, or give away copies of copyrighted works that you legally acquired, even if the copyright holder opposes your action.  In addition, you can re-read a book several times or watch a DVD again and again without paying an additional fee.  It is perfectly legal to sell used books, movies, or music on eBay or Amazon.com.  The first sale doctrine is what makes lending libraries, video rental stores, used record stores, and used bookstores legal—they have the right to operate without having to consult with a rightsholder every time they lend or sell a work

 

The first sale principle also makes it legal for you to make copies of software, DVDs or CDs that you legally acquired for your own use, provided that you do not give or sell these copies to others.  It is perfectly legal for you to make a backup copy of your Microsoft Windows XP® disk, provided you don’t give it to someone else.  The Audio Home Recording Act of 1992 makes it legal for listeners to make personal digital copies of their music.  So it is legal for you to rip songs off of a CD that you legally purchased and burn them onto other CDs or copy them onto your PC hard drive or onto your iPod, provided you don’t sell them or give them to someone else.

 

The doctrine of first sale also makes it legal for you to watch or listen to the copyrighted work you legally purchased on any type of equipment you please.  It is perfectly legal for you to play your CD on your home computer, or to watch a DVD on your laptop.  You can also read the book you purchased anytime and anywhere you please—on the train, while sitting in the park, while lying in bed at home, or even while in the bathroom.

 

The principle of first sale also means that one is permitted to modify, deface, or destroy his or her legitimately-acquired copies of copyrighted works, so long as duplication is not involved.  This means that I am completely free to rip pages out of a book I legally purchased, to throw it away, or even burn it completely to ashes.  However, the principle of first sale might not apply to limited edition artworks or works of fine art—for example it might be illegal under the principle of artists’ moral rights to destroy or deface a signed and numbered photograph that was created in limited editions of just a few copies. 

 

First sale is explicitly provided for in Section 109 of the 1976 Copyright Act, but it has been a part of the common law since the beginning of the twentieth century.  The first sale doctrine was first applied by the Supreme Court in the case of Bobbs-Merrill Co vs Strauss in 1908[79], when they ruled that the exclusive right to sell copies of copyrighted works applied only to the first sale of the copyrighted work, and that the copyright owner gave up their ability to control the subsequent fate of the individual copy of the work once it has been sold to a customer.

 

The doctrine of first sale is an important guarantor of First Amendment rights—it prevents the rightsholder of intellectual property from being able to completely control who has access to it and how it is used.  Without first sale, publishers could refuse to let unfriendly critics have access to their books, corporations could prevent consumer groups from seeing documents that cast them in an unflattering light, and authors could be able to prevent satirists from getting copies of their works. 

 

The principle of first sale is somewhat in conflict with the principle of “moral rights”, under which an artist has the power to regulate the subsequent use of their artwork, even after it has been sold to someone else.  However, in the USA moral rights are restricted to unique visual works of art—generally moral rights apply strictly to one-of-a-kind works that are hanging in an art gallery or are on public display—and prevents them from being dishonored or defaced.

 

The Grey Market

 

The “gray market”[80] has provided an interesting challenge to the first sale doctrine.  Because of currency fluctuations, lower manufacturing and distribution costs, along with lower advertising costs, American companies can often sell their copyrighted products in foreign markets at significantly lower prices.  Once these prices drop low enough, it becomes economically feasible for foreign buyers to import these products back into the American market, undercutting American vendors.  This is known as the “gray market”, and it is not illegal.  However, American vendors regard this as unfair competition and have used the copyright laws to try and stop it.  In 1998, the Supreme Court ruled that domestic manufacturers of copyrighted goods could not use their copyright monopolies to protect themselves from gray market competition.

 

The gray market was involved in a recent Supreme Court decision[81].  The case began when Sunap Kirtsaeng, a citizen of Thailand who was studying at universities in the United States, asked his friends and family back home to buy Wiley-made English language textbooks for a cheap price on the local market and then ship them to him in the USA.   These editions made by Wiley’s Asian branch were generally manufactured with cheaper paper and bindings and had fewer colors and graphics, although the content was substantially the same as their American-made editions.  He then sold these books to American students for a markup on eBay, making a handsome profit.

 

Big-time textbook publisher Wiley was not at all pleased at what Kirtsaeng was doing and they sued him in federal court, arguing that the first sale principle did not apply to goods bought outside the United States for a lower price and then resold here.  Allowing cheaper textbooks sold abroad to be resold in the American market would undercut the market for the more-expensive American editions, resulting in lost business for Wiley.  A district court found Kirtsaeng guilty of copyright infringement and ordered him to pay $600,000 in damages. An appellate court upheld the decision.  

 

The case was appealed to the Supreme Court.  In a 6-3 decision issued in March of 2013, the Supreme Court overturned the lower court decisions, and ruled that what Kirtsaeng was doing was indeed protected under the provisions of first sale, which does not allow the copyright owner to control the subsequent fate of their product after its first sale.  

Libraries, used book and record sellers, and movie rental services such as Netflix and Redbox all rely on first sale to avoid having to ask permission each time they sell or lend something that they have already paid for.  Librarians generally hailed this decision, since they feared that a different ruling would have eroded the principle of first sale, and might even force them to ask permission from publishers and authors before they could loan out imported books.  But representatives of the Wiley publishing concern expressed disappointment at the ruling, and hinted that they might try to pressure Congress to change the copyright laws.

 

First Sale Exceptions

Some exceptions to the first sale doctrine have recently crept into the copyright laws, especially in the digital realm.

 

You may have noticed that you have never seen a record rental store.  In 1984, Congress passed the Record Rental Amendment which amended the 1976 Copyright Act to make it illegal to make phonograph records available for commercial leasing or rental without the permission of the copyright owner.  However, nonprofit libraries and nonprofit educational institutions were still allowed to lend out phonograph records.  This law was passed to address recording industry concerns about rented phonograph records being taken home by customers and copied onto magnetic tape and then passed along to others, resulting in fewer sales of recordings.  Nevertheless, the rental of videocassettes is still allowed, since another bill that proposed to apply the same restrictions to video rentals was defeated.

 

You may also have noticed that you have never seen a software rental store.  The 1990 Computer Software Rental Amendments Act specifically forbids the commercial rental or leasing of computer software without the permission of the copyright owner, which removes from computer software some of the first-sale rights granted to other media such as books and movies.  Software publishers were fearful that people would simply leave the software sitting on their computers (or even let their friends install the software on their computers) after they returned the original disks to the lender.   If the lending of software were to be allowed, people could acquire valuable software for much less money (or for free), resulting in fewer sales for the software publishers.

 

Does the principle of first-sale apply at all to computer software?  Can I sell, give away, or lend the software that I have legally purchased?   Software publishers such as Microsoft or Adobe claim that the first-sale doctrine does not apply at all to software because software is understood by them to be licensed, not sold.   These software publishers maintain that when you purchase software, you are not really purchasing the software itself, but are only purchasing a license to use the product in a manner bound by the provisions of the End User License Agreement (EULA)[82].  This license is written in almost unintelligible legalese and is usually printed on a piece of paper that is packed inside the box that holds the installation disks and the documentation.  The box is covered by a shrink-wrap transparent plastic coating, and opening the box implies that the purchaser accepts the terms of the license.  Because of the wrap, the customer can’t read the terms of the license until they have actually purchased and opened the package, which means that the customer is forced to “sign” a contract that they haven’t been able to read.  For this reason, the EULA is sometimes known as a “shrink-wrap” license. 

 

Sometimes you don’t see the EULA until you actually begin installing the software on your computer and see a window pop up with a whole bunch of mind-numbing legal jargon on it, listing the terms of the license.  If you don’t click on the “I accept” button to agree to the terms of the license, you will not be allowed to install the software.  For this reason, the license is sometimes called a “click-through” license.

 

Typically, the EULA explicitly removes[83] the right of ownership of the software and instead confers only a right to use the software, subject to a long list of conditions, restrictions, and exclusions.  You do not own the software that you bought, in the same sense that you own your car.  Most EULAs forbid you from lending the software that you purchased to others, the fear being that the people you lend it to will simply install the software for free on their own computers without paying anything to the software’s copyright owner.  Some EULAs even prevent you from reselling or giving the original software to others—if you find that you no longer need the software or if you find that it doesn’t meet your needs, you are stuck with it.  People who have tried to sell their unneeded software on eBay have been threatened with legal action by the software vendors.  Some EULAs forbid you from making copies of the software, even if the copies are for your own personal use.  You may even be forbidden from installing the software on more than one computer—you can use it on your computer, but you can’t put it on your spouse’s computer.  Some EULAs shield the vendor from liability claims other than physical defects in the CD, which is designed to protect them from frivolous lawsuits.   Some EULAs forbid you from reverse-engineering the product, and prevent you from tinkering with or altering the product in any way so that it might better be able to meet your needs. 

 

There is a controversy about whether EULAs are legally enforceable[84].  The courts have issued contrary decisions[85],[86].  So far, there is no definitive ruling. 

 

In spite of the uncertainty about the legal enforceability of EULAs, software vendors usually enforce these restrictions by applying digital rights management techniques.  For example, there may be copyguards applied to the installation disks that prevent the user from making a copy of the disk.  More often than not, when the user installs the software on their computer, they must be on the Internet, and must type in a code number that is supplied with the package.  This binds the software to a particular computer.  If someone tries to install the same software on another computer, the reuse of the code number will be detected and the installation will be blocked. 

 

Increasingly, software vendors no longer let their customers install the software on their computers, instead putting their software on some server on the Internet (sometimes called placing the software up in the “cloud”),  This means that you need to be on the Internet and must enter a login and a password to use the software and pay a fee.  All of the work is done on the server, not on the customer’s computer, and any files that need to acted upon on by the software must be uploaded to the server. Adobe has announced that their software will no longer be sold as a set of disks that customers can use to install the software on their computers, but will instead be available only on Adobe servers for a monthly fee.  Adobe did this primarily to block software pirates from making and selling copies of their Photoshop software. 

Advocates claim that cloud computing allows companies to avoid up-front infrastructure costs (e.g., purchasing servers). Cloud computing is often cheaper because of economics of scale, and updates and bug fixes are easier to handle.  A customer no longer needs to shell out lots of money to buy the software, and no longer needs to buy expensive servers and high-end computers.   All they really need is Internet access, and only need to pay a monthly fee to use the software.    This can often be a lot less expensive for them.

The downside of cloud computing is the customer is often effectively locked to their cloud provider.  A customer using software located up in the cloud is generally subject to a long list of restrictions and exclusions, restrictions that they would never be subject to if the software were located on their own computer.  If the customer stops paying, they will lose access to the software as well as to any work they saved in proprietary file formats.   Cloud users are also limited in the amount of control and management of their applications, data and services, and one can only do with the software that the vendor allows them to do.  Another problem is that the user loses control of his or her data when they upload it to the cloud service, because it is stored on a computer belonging to someone else (the cloud provider).   The user is now at the mercy of the cloud provider--there is a risk that proprietary or personal data that is stored up on the server may not be secure, that it may be accessible to other parties, perhaps even to malicious hackers. There are legal issues as to who actually owns this uploaded data.  Does the customer still own it, or does the cloud company now own it?  . Privacy advocates fear that there are dangers that the hosting cloud service can monitor user communications at will.  There are often data caps, which are placed on cloud users by the cloud vendor allocating only a certain amount of bandwidth for each customer, and these are often shared among other cloud users.  Since the cloud server uses proprietary software and often stores a user’s files in a proprietary format, there can be problems if the user wishes to move to a different platform.

Electronic books (sometimes called e-books) are electronic versions of books.  Rather than being printed on paper, these books are stored as digital files that can be accessed and read on computer screens.  They are becoming increasingly popular, since they are generally less expensive than printed books, and they can be read remotely without the reader having to carry the printed book around with them.  But just like computer software, e-books are considered as being licensed, not sold. When I purchase an e-book, I really don’t own it in the same sense that I own a printed book.  My access to an e-book that I have purchased can be subject to a long list of vendor-imposed restrictions on what I can do with it, restrictions which are never applied to a printed book.   .

 

The principle of first sale certainly applies to an old-fashioned dead-tree print book.  Once I have legally acquired such a book, I can do anything I please with it.  I can read it anytime or anywhere I please.  I can read it again and again.  I can read it in any order I please.  I can mark it up.  I can add bookmarks.  I can copy short parts.  I can lend it out to anyone I please, for as long as I like.  I can sell it.  I can even give it away.  I can even destroy it if I want to.  The book is mine, and I can do anything I want with it, provided that what I do does not tread on the publisher’s copyright.

 

But these same set of first sale rights generally do not apply to e-books.  I really don’t own an e-book, but am only purchasing the right to read it.  I generally can’t sell or lend out an e-book without the permission of the vendor.  E-books are often laden with all sorts of digital rights restrictions, primarily designed to prevent their users from sending copies to their friends who have not paid for it.  These restrictions often prevent me from making my own personal copy of my e-book, or they prevent me from printing out a hard copy.  Some restrictions even disallow the read-aloud functionality that can be useful for visually-impaired people. 

 

An e-book is often locked to a particular reader (such as Amazon’s Kindle or Apple’s Ipad), and I am often unable to read the e-book on a different competing platform.  There is no universal e-book format, and books readable on one platform may not be readable on another platform.   If my particular e-book reader becomes obsolete or if the vendor of the reader goes out of business, I may no longer be able to read the e-books that I purchased.  The digital rights management restrictions that are often applied to an e-book will generally make it difficult or impossible to convert it so that it can be read on a different platform, and in some situations such conversions may actually be illegal. 

 

The e-book that I purchase may actually be located on the vendor’s server, not on my hard drive or on my reader.  I may only be able to access the e-book by logging on to the vendor’s server, and I may be unable to download a permanent copy onto my computer’s hard drive or onto my reader.  Print books will last almost forever, but e-books have an uncertain lifespan.  My access to my collection of e-books may be the mercy or the whim of the vendor.  There is a danger that your e-books could disappear from your electronic library if the vendor bellies-up, or if their reading platform has a bug, or if their platform becomes obsolete.   Even e-books located on my own reader might be vulnerable.  My e-book could be erased if I do something with it that the vendor doesn’t like—an oft-quoted example being Amazon.com erasing e-books from its user’s Kindle readers when they learned that the titles had been sold without the publisher’s permission.  Amazon.com even remotely deleted copies of George Orwell’s 1984 from user’s devices.

 

Many libraries[87] are purchasing e-books rather than printed books, and in the future e-books may eventually supersede and entirely replace physical books in most libraries.  The principle of first sale certainly apply to the library’s collection of print books, and the library is free to lend them out to anyone they please and on any terms they choose. But the same first-sale rights generally do not apply to the library’s collection of e-books, and what the library can do with e-books can be restricted by the terms under which they are licensed from the publisher or the vendor.  Some e-book publishers prohibit the library from sharing the contents of their e-books with other libraries via interlibrary loan.  Very often, the digital file for the e-book is located on the seller’s server rather than on the library’s server, and the library’s patrons can assess the work only so long as the library pays an annual subscription fee.  If the library stops paying the fee, the book disappears from their collection.  Even when the library has purchased a license for perpetual access, there are still restrictions that go far beyond those for a printed book.  For example, it might be a violation of the licensing agreement for the library to send the book out on interlibrary loan.  The fact that the titles are licensed makes it possible for the vendor to monitor and record individual patrons’ book choices or even assert control over readers’ behavior, intruding on their privacy.  If the publisher of a print book goes out of business, the book is still there and can be accessed by library patrons essentially forever.  But if the publisher or vendor of an e-book fails or goes belly-up, access to the e-book may be lost as well.

 

Just like software and e-books, more and more of our media has been moved up into the cloud.  Examples are Netflix and Hulu, which offer online streaming access to movies and TV shows.  Services such as Spotify, Amazon Prime, and Apple Music offer online streaming access to music.  Online streaming may in the future eventually supersede or entirely replace the sale and rental of DVDs, as well as the sale of CDs.  When the media that we purchase is up in the cloud, we no longer own it, but only have a license to view or listen to it, subject to a long list of restrictions and exclusions.  When I purchase a DVD or a CD, the disk is mine and I can do what I please with it—I can sell it, I can lend it, I can give it away, I can view or listen to it as many times as I please, and I can access it on any medium that I choose.  But these same rights generally do apply to media that is in the cloud.  When I access media that is up in the cloud, I am really only renting it, subject to lots of restrictions imposed by the vendor.  I generally cannot download the media to my computer, I can’t lend it out, I can’t give it away, and if I want to view or listen to it again, I will have to pay an additional fee. 

 

More and more computer industries, software vendors, and rights holders of all sorts are insisting that the first sale doctrine is an obsolete concept that is not valid at all in the digital era[88].  In the present environment, the customer’s first sale rights are steadily being eroded away.  First, the rental of phonograph records was forbidden, next the rental of computer software was forbidden.  Shrink-wrap licenses now stop you from selling or lending your computer software to others, they prevent you from tinkering with the software or modifying it in any way, and they prevent you from making copies.  In imitation of the practices of software distributors, more and more vendors in other areas are attempting to impose restrictive EULAs on their customers. Electronic books such as those that are created for the Amazon Kindle contain certain restrictions which prevent the user from reading the book on competing readers, prevent them from making copies, and prevent them from lending the e-book to others.  Certain CD-ROM videogame vendors argue that the first sale doctrine should not apply to them because these games are computer programs.  Media accessible only in the cloud via streaming has restrictions which forbid making copies, forbid lending it out to others, forbid the downloading of copies, and require payment of an additional fee if one wants to access it again.  Since so many products nowadays have a computer chip in them, there will be strong pressure to do away with the principles of first sale altogether, replacing them with uses that are governed by increasingly complex and limiting EULAs that effectively strip away all first sale rights.  As digital media become more and more prevalent, the right of first sale may gradually wither away.

 

Limitations on Exclusive Rights--Fair Use

 

Copyright laws provide an exception for fair use, where you don’t need the permission of the copyright owner to copy, display, or perform their work.  The fair use doctrine is perhaps the most significant limitation on the exclusive rights held by a copyright owner.  It provides for the legal, non-licensed citation or incorporation of copyrighted material into another author’s work under certain circumstances.  The fair use doctrine assumes that certain uses of a copyrighted work constitute a sufficiently compelling social good for the general public that even if the copyright holder objects, the uses can nevertheless go forward without restriction.  

 

The idea of fair use is fundamentally based on free-speech rights granted by the First Amendment of the US Constitution—copyright cannot be used to take away your basic rights as a citizen of the USA.   If permission were required every time a document is copied for private use or if one had to get permission every time they wanted to incorporate a quotation into a new work, the hassle of tracking down copyright owners, seeking permissions, and paying fees would cripple our ability to share ideas.  If schoolteachers had to get permission for every image, film, song, or article that they used in the classroom, education would be stifled.  Copyright owners could censor ideas by denying permission to anyone whose views they disliked.   If the owners of intellectual property could use their government-granted monopoly to withhold access to their works at will, this would be a violation of the First Amendment’s guarantees of free speech.  However, the concept of fair use is sort of vague, and whether or not a specific use of a copyrighted work is fair use can often only be settled in court. 

 

At the very highest level, the principle of fair use allows for uses of a copyrighted work by others for purposes that are deemed socially beneficial, for example in education, criticism, commentary, scholarship, research, reportage, or parody.  Generally, the principle of fair use means that you are allowed to use short quotations from a copyrighted work while writing a review or a commentary without having to obtain permission from the work’s copyright holder.  If you broadcast movie reviews for a TV station, you are allowed to show a short clip from a copyrighted movie while broadcasting a review of the movie without having to get permission from the movie studio.  An author is allowed to use short quotations from other writers without having to obtain permission or pay any fees.  A reporter is allowed to quote facts and opinions from others while writing newspaper articles.  A scholar is allowed to quote the works of other experts in the field when writing journal articles.  An individual is permitted to make photocopies of copyrighted journal articles for personal, research, or educational uses.  You are allowed to create a parody of a novel, song, movie, or TV show without asking permission from anyone, even if the copyright owner strenuously objects to what you are doing.  If you are a teacher in a nonprofit educational institution, you are allowed to exhibit or display copyrighted works during face-to-face classroom teaching, and you are allowed to hand out multiple copies of copyrighted works for classroom use. 

 

The principle of fair use was codified in Section 107 of the 1976 Copyright Act, although federal courts had been using a common law form of the notion of fair use since the 1840s.  Section 107 of the Copyright Act says that the reproduction of copies for purposes such as criticism, commentary, news reporting, research, scholarship, teaching (including multiple copies for classroom use) is not a copyright violation.  Generally, the principle of fair use means that if what you are doing is seen as benefiting the public in some way, you are permitted a great deal of latitude in your use of copyrighted materials.  Section 107 was amended in 1992 to clarify that fair use applies to unpublished as well as published works.

 

Fair use is especially important in classroom teaching, the reasoning being that education is such an important social good that a considerable latitude is allowed in the use of copyrighted materials .  However, even though schools and universities fulfill a valuable social function and are allowed a great deal of fair use access to copyrighted works, not all educational uses are fair uses, and you have to be extremely careful about what you do in the classroom.  Just because a copyrighted work is copied or performed in a school, college, or university, or is used in such a way that has educational overtones, the use may not necessarily be fair.   For example, it is definitely not fair use for a schoolteacher to make photocopies of the entire course textbook and hand them out in class.  Instructors are allowed to copy short segments of copyrighted works and hand them out in class, but when a for-profit copy shop starts making money off photocopying fees for classes, the courts will start to be suspicious.  

 

Fair use is not considered as being some sort of “right” that is granted by the copyright law to the general public—it is instead regarded as a defense that can be used against an accusation of copyright infringement brought in a lawsuit.  The copyright law and the courts interpret fair use as an “affirmative” defense[89], which means that if a lawsuit is filed, the burden of proving that their use was fair rests with the defendant—the plaintiff does not have to prove that the use was “unfair”, the defendant must prove that it was “fair”.  For this reason, most defendants in copyright lawsuits that involve fair use questions usually settle out of court rather than go through the expense and hassle of a court trial.  The settlement usually involves the payment of damages, along with the removal of the offending work from the marketplace.

 

But what uses of copyrighted works can reasonably come under the protection of the fair use doctrine, and what uses are definitely outside the pale?  Section 107 of the copyright law specifies four nonexclusive factors that are to be considered by the courts in determining whether any particular use of a copyrighted work is fair use.  These are

 

  1. Purpose and character of use, including whether such use is of a commercial nature or is for nonprofit educational purposes
  2. The nature of the copyrighted work
  3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
  4. The effect of the use upon the potential market for or value of the copyrighted work.

 

The law gives no further details about fair use other than those listed above, so the whole notion of fair use is sort of vague and uncertain.  In order for your use to be considered fair, you don’t necessarily have to have all four of these factors working in your favor, but if the matter goes to court there will be an complex interplay between these four categories and a decision will be made on the basis of the four factors to see if the use tilts toward or away from fair use.  Since fair use is not an exact doctrine, if you want to use something written or created by someone else, it is probably wise to get permission in writing first.

 

Here are some more details on the four fair use categories.  These generally are derived from precedents laid down by court decisions involving fair use issues in the past, rather than from anything listed in the copyright law itself.

 

1.      Purpose and Character of Use, Including Whether Such Use Is Of A Commercial Nature or Is For Nonprofit Educational Purposes.

 

This fair use category has two aspects.  First, it asks what the purpose of your use of copyrighted materials was, and secondly it asks what sort of product you produced when you used the copyrighted material.  The law does not actually spell out any details about what purposes and characters of use are actually favored under fair use, other than a rather general statement that non-profit educational uses of copyrighted works are more likely to be judged fair use than are commercial applications that are designed to make money.

 

Basically, the “purpose” part of this particular rule asks whether the use of the copyrighted work was intended to serve some sort of public or societal interest such as education, scholarship, or research, or was strictly intended for commercial profit-making purposes.   It essentially boils down to the question--did you make any money when you incorporated someone else’s copyrighted work in your own work, when you performed it in public, or when you made and distributed copies?   If you made money on the deal, that might in itself tilt the scales against fair use. 

 

In addition, some recent court decisions seem to indicate that even if you didn’t make any money but are perceived as benefiting in some manner by your use of copyrighted material, it might not fall under fair use.   Of course, if this view were taken to extreme it would mean that no use whatsoever of a copyrighted work would ever be considered as being fair use, since it is hard to imagine why anyone would ever employ copyrighted material in their work unless they expected some sort of benefit.

 

The phrase “nonprofit educational use” appears in this category.  Just what does “nonprofit educational purpose” mean?  The term “not-for-profit” turns up quite often in copyright law, and this particular fair use factor specifically says that there is different treatment if the use of the work was by a nonprofit educational institution than if it was used by a for-profit organization for commercial purposes.  Consequently, some discussion of exactly what constitutes a not-for-profit organization is probably in order. 

 

The formal definition of what defines a not-for-profit organization is not all that clear, but the most often quoted definition is that a nonprofit organization has as its primary purpose for existence the support of some matter of public interest[90], and does not have a goal of generating a monetary profit.  A nonprofit organization is typically involved in activities that are intended to benefit the public in some manner—such as the arts, social issues, charities, healthcare, research, religion, or education.   A nonprofit organization certainly does need to bring in money to sustain its operations, but making money is not its primary goal. 

 

Unlike for-profit corporations, nonprofits do not issue stock or pay dividends, and they do not have shareholders.  Many nonprofits rely on government grants or tax credits to fund their operations, as well as on grants from charitable foundations or direct donations.  A not-for-profit organization may accept, hold, and disburse money and other things of value, and it may even charge money for the use of its services.  However, the extent to which a nonprofit is allowed to generate income may be constrained, and if they do manage to make a profit the use of the profits may be restricted.    Most colleges and universities are classed as not-for-profit, although there are a growing number of educational institutions that do operate for a profit. 

 

In the United States, nonprofits can apply to the Internal Revenue Service for tax-exempt status, which makes them immune from federal income taxes, although they usually have to file a return.  Often, nonprofits are also exempt from state sales taxes or local property taxes.  This tax-exempt status is considered so important and so vital that it is often used as an operational definition of what it means for an organization to be a non-profit, and the IRS has some rather rigid restrictions on what nonprofits can do[91] and how much money they can make.   For example, if profits are actually earned during the course of a nonprofit organization’s activity, the money that was earned must be plowed back into the operations of the organization and not paid out to the managers as bonuses. 

 

Contrary to a generally widespread perception, nonprofits are actually allowed to lobby the government to support their particular causes, although the IRS rules governing the amount of lobbing that is allowed can be quite complicated and the amount of lobbying that is permissible will vary with the type of nonprofit organization.  For example foundations such as the Bill and Melinda Gates Foundation are heavily taxed on any lobbying expenditures, which effectively means that they cannot lobby at all, but a charitable organization such as the American Cancer Society can freely lobby up to a certain limit, so long as the amount of lobbying that is done is an “insubstantial” part of the organization’s overall activity[92]or is less than a certain dollar amount per year. 

 

In addition, nonprofits are generally not allowed to engage in partisan political activities, by directly or indirectly supporting or opposing candidates for political office.  However, organizations such as the American Association of Retired Persons can engage in unlimited lobbying and can even engage in some partisan political activities, but individual contributions to them are not tax-deductible[93].  If nonprofits exceed these bounds or limitations, they can lose their tax-exempt status.

 

Some legal authorities interpret the “purpose and character of use” rule as meaning that any use whatsoever of a copyrighted work by a for-profit organization is automatically outside the bounds of fair use, and that fair use does not apply at all to a for-profit organization.  However, this is much too strict an interpretation, and fair use applies to everyone, not just to non-profit organizations.   Use of a copyrighted work by a for-profit corporation can still fall under fair use if it somehow benefits the public or falls under the protection of the other three fair use categories.  Conversely, not all uses of copyrighted material by a nonprofit organization are automatically fair uses, especially when all four of the fair use factors are brought into account. 

 

But it is still true that the courts do generally favor non-profit use over for-profit use when they consider copyright issues that are brought before them.  Reproductions or performances of copyrighted works made by nonprofit educational institutions are more likely to be deemed fair use than those made by for-profit businesses and used for commercial purposes.  Any hint of a commercial exploitation of a reproduction or performance of a copyrighted work might in itself deem the act not to be fair use.  However, a commercial motive doesn’t always automatically disqualify someone from being able to claim fair use--a use that benefits the public can still qualify as fair use, even if it makes money for the user.  Many of the cases in which the courts have found unlicensed uses of copyrighted works to be fair have involved commercial projects that were designed to make money.

 

The “character” part of this fair use factor asks how the copyrighted material was actually used when the reproduction was made.  What sort of product did you produce when borrowed something from someone else’s copyrighted work and inserted it into your own work?  Was the character of the use transformative, that is, was what you borrowed used to help create something new and different, or was it simply inserted verbatim into another work?   Did you add value to the original work by creating new information, new aesthetics, new insights, or new understandings?  Did you create something new, or were you just copying?  A use of a copyrighted work is more likely to be protected under fair use if it transforms the original from which it borrows—it adds something new, perhaps with a different character, or it provides a new expression, meaning, or message.  Uses of copyrighted works for the purpose of review, criticism, commentary, news reporting, scholarship or education are generally considered to be transformative and are usually likely to be judged fair use.  But if you simply convert a song into an MP3 file, this is not transformative, since you are simply copying and the new work is superseding the old one. 

 

Whether a new work which reuses an earlier work is transformative or not is a rather subjective matter, and not all courts have agreed on what this means.  Some courts have interpreted transformative use as one which merely uses a copy of the original work in a manner different from that which the copyright owner currently does.  The use of a commercially-successful novel as a subject of a classroom exercise might be considered as being sufficiently transformative, since the novel’s author certainly didn’t write the novel with the intent that it be used for educational purposes.  Other courts interpret the meaning of transformative use much more strictly—it must involve the use of parts of the original work in a manner that creates something new, with a new purpose or character, altering the original with a new expression, meaning, or message.  Simply doing something with the work that the original work’s copyright owner did not intend or envision might not be sufficiently transformative.  This is because a court might conclude that the original work’s copyright owner could very well have done that themselves if they had chosen to do so, and that the new work is effectively a derivative work that supersedes or competes with the copyright owner’s potential marketplace for the revision or adaptation of their work. 

 

What about parodies of copyrighted works?  The First Amendment of the US Constitution guarantees the right of free speech, which includes the right to poke fun at politicians, celebrities, media stars, books, songs, and movies.  Parody is generally considered as coming under category 1 of the fair use criteria--parodies are generally considered transformative, and they are thought to provide a social benefit by highlighting the earlier work and creating a new one in the process.  However, in order to be considered as fair use, a parody must be perceived by audiences as a parody.  But proving whether your parody of a song, movie, or book is actually a parody rather than just a derivative work is tough.  The courts have generally concluded that a parody should take just enough to conjure up the original work in peoples’ mind, not any more.  If a work is both transformative and is seen by most reasonable people as a parody, it is likely to be judged fair use, even if it is sold for its own sake and hence commercial in nature.

 

The courts have generally ruled that a parody of a copyrighted work is protected as fair use, but not a satire.  A satire uses the original work as a point of departure to comment about society, religion, politics, or morals in general, whereas a parody makes fun of the theme and values expressed in the original itself.  According to the Supreme Court, in order for a work to be considered as being a parody of a prior composition, it must involve the use of some elements of the prior composition to create a new work that, at least in part, comments about the prior work itself.  A work that merely uses the original work as a vehicle to launch a criticism of something else (such as religion, politics, or society in general) is considered as a satire and is therefore not protected under fair use.  If you want to write a satire that is based on a piece of copyrighted art, you are creating a “derivative work” and you generally require the permission of the copyright owner to do this or you could end up in court.  However, the distinction between a satire and a parody is vague at best, and the so-called parody/satire distinction has been the subject of several recent court decisions. 

 

The musical satirist Weird Al Yankovic[94] makes a career out of lampooning popular songs, but since he can’t really be sure whether his songs will be considered as satire or parody, in order to cover his backside he goes through the process of obtaining permission from the owners of these songs before he releases his adaptations.  Since his songs generally don’t adversely affect the market for the originals (and also because his songs sell fairly well), he has generally been successful in obtaining permission. 

 

2.      The Type of Work That is Copied

 

What type of work did you copy?  Was it factual or creative?  Reproducing a factual work is more likely to be judged to be fair use than the reproduction of a creative work such as music, a movie, or a fictional novel.   Authors usually have more leeway in using material taken from factual works (e. g. scholarly, scientific, or technical works) than from creative works such as novels, poems, or plays.  This is true especially when it is necessary to use extensive quotations from factual works to ensure accuracy.

 

The basis for the different treatment of creative and factual works is that creative expressions can be copyrighted, but not ideas or bare facts.  Consequently, if a copyrighted work is predominately factual in nature (such as a news article, a scientific paper, or an official report), then reuse of the work is more likely to be considered as fair use.  The facts that appear in a news story may reasonably be copied into a second article, but the manner in which these facts are presented cannot be copied.  Again, the idea/expression dichotomy applies here.  So it is usually OK if you quote the results of a factual news report in your own article, provided that you express it in your own words and properly acknowledge the source.

 

If you use parts of a work that is still under copyright but which is no longer commercially available (such as a book which is now out of print), this is more likely to fall under fair use than if you used parts of a work which is still on the commercial market.  If you used major parts of a book still in print without getting permission, this might not be considered as fair use, because what you did might be considered as competing in the marketplace with the original work.  Nevertheless, even if you used without permission a portion of an out-of-print work, this still might be considered as being an infringement, because you might be depriving the original author of a license fee for the privilege of using it in your work.

 

In addition, the reuse or copying of copyrighted materials that are considered as being “consumable” is not generally considered as being fair use.  Materials considered to be “consumable” are those that are intended for one-time use and, once used, they cannot be used again.  Examples are workbooks, surveys, or standardized tests that once they are used have no further value.

 

Yet another aspect of this factor is whether the work that was copied was itself a published work or not.  If the work has never been published (such as, for example, private letters, or an unpublished manuscript), the copying of the work into another work is generally not considered fair use.  This is because it is thought that the original author should have the first crack at publishing the work.

 

3.      The Amount of Work Copied

 

How much of the original work was used?   The smaller the amount that you take, the more likely it is that you will be able to avoid a lawsuit.  However, the law does not specify any word count numbers, any percentages, any ratios, or any absolute indication of any sort of the amount of copying that is allowable under fair use, since the use of the entire work might be fair use under certain circumstances whereas the use of only a small part might not be fair use in other circumstances. 

 

Generally, the more that is taken from the original, the less likely it is that it will be considered as being fair use.  The courts want to make certain that the user has taken no more of the copyrighted material than was absolutely necessary to achieve their purpose.   Even though the amount taken is small, it should not be an amount equivalent to the “heart” of the work, or else the user could be in legal hot water.  But determining exactly what the “heart of the work” is can be rather subjective.  Just a few pilfered song notes could be considered as an infringement if a court agrees that those few notes are the “essence” of the song.  In any case, the reuse of entire works is only very rarely considered fair use, and if you take all or substantially all of a copyrighted work without permission you are probably asking for trouble.   However, the quoting of just a few lines from a movie (or the use of a short clip) for the purpose of a review would certainly be considered fair use. 

 

Pictures and photographs present a special problem, because it usually the entire image that is copied, not just part of it.  Posting an exact copy of a copyrighted photo on a website would definitely not be fair use, although there are cases in which such duplication is OK if a thumbnail is used, in which the duplicate is a low-resolution copy of the original.   If you want to use a copyrighted photograph in your new book, the publisher will require that you obtain permission in writing from the owner of the photo before you will be allowed to use it.

 

4.      Impact on the Potential Market

 

This rule asks whether a new work that reuses parts from a copyrighted work competes economically in the marketplace with the original work from which it borrowed.  Will the new work cause fewer numbers of people to buy or rent the original work, adversely affecting its economic value?  Will the new work result in lost business for the original work’s copyright owner?  

 

This test evaluates the potential as well as the actual financial harm to the original copyrighted work, which means that the test could focus on adverse impacts on any possible future sources of revenue a rightsholder could tap, regardless of whether such a market actually exists at present.   Even if you are not now directly competing with the original work, if you deprive the copyright owner of income by undermining a new or potential market for their work, you might be asking for a lawsuit.  You could be accused of copyright infringement even if what you did actually created the new market for the original work in the first place.  For example, you definitely don’t want to write a book describing the meaning of the last season of the Lost TV show, at least not without the permission of the show’s rightsholder.  They could presumably have done that themselves, and you would be competing with a potential market that the show’s copyright holder could possibly pursue, even if they had no intention of actually doing so.

 

Basically, the principle of fair use allows you to use a small portion of someone else’s work in a non-competitive way for purposes that benefit the public.  But if you take large portions of someone else’s work for your own personal financial gain, you may have diminished the worth of the original in the marketplace and you will be in legal hot water.  This factor does not presume that all commercial harm to the original is automatically not fair use, but if the new work is not transformative and if the creator makes money selling it, it will be difficult to prove that the original work was not financially damaged.

 

The courts have established that the existence of a system for purchasing licenses or permissions to use a copyrighted work is one of the potential economic values of the work.  Some argue that the mere failure to purchase a license when one is readily available is automatically a copyright violation, irrespective of how the work is used.  However, the existence of a license does not in itself mean that the use of the work is not fair, especially if the other three factors favor a finding of fair use.  Before one can conclude that the failure to purchase a license for the use of a copyrighted work is a valid economic loss to the rightsholder, one must first show that such a license is actually required.  The other three fair use factors need to be considered--not all uses of a copyrighted work require permission.

 

Note that this fourth test asks only if the new work will compete economically with the original one that it borrowed from.  It does not ask whether the new work, through criticism or parody, reduces the demand for the original.  If that were the case, then a scathing review of a movie that causes fewer numbers of people to attend would be a copyright violation.  The Supreme Court has ruled that this is not the kind of economic harm recognized by copyright law.

 

 

Fair Use Precedents and Cases

 

Perhaps the best way to describe how fair use works in actual practice is to quote some law cases dealing with the subject.  These show just how confusing the whole issue is, and how inconsistent the outcomes were.  If you are looking here for a definitive ruling about what counts as fair use and what does not, you will be greatly disappointed.   The results of your fair use legal case might depend on which court or which judge gets the case.

 

Williams and Wilkins Co v. United States (1973)[95]

 

The Williams and Wilkins company was a publisher which specialized in medical journals.  They sued the National Library of Medicine and the National Institutes of Health, charging that these governmental agencies were making unauthorized photocopies of articles in Williams and Wilkin’s copyrighted journals, and were distributing them to medical researchers.

 

The US Court of Claims held that this was not copyright infringement, that the use was fair, in view of the combination of all the factors in previous cases, and that there had been no detriment to the publisher’s business model.  In addition, the court concluded that there would be a great injury to medical and scientific research if this sort of photocopying were held to be unlawful.

 

MCA Music vs. Earl Wilson (1976)[96]

 

The World War II classic song Boogie Woogie Bugle Boy of Company B was used as a part of a risqué musical piece entitled The Cunnilingus Champion of Company C, one of several songs performed in the 1974 musical Let My People Come—A Sexual Musical.  The copyright owner of Boogie Woogie Bugle Boy of Company B sued for copyright infringement.

 

The court concluded that The Cunnilingus Champion of Company C was indeed copied in substantial part from Boogie Woogie Bugle Boy of Company B and that the two songs are substantially similar.  The court ruled that the new song was not a burlesque or parody of the original--the intent was to ridicule sexual mores, not to ridicule the song itself.  It was a satire, not a parody.  The amount taken by the new song exceeded the permissible scope under fair use, and the new song had taken more than was necessary to recall or conjure up the original.  Consequently, the use was ruled not to be fair.

 

Keep Thomson Governor Committee vs. Citizens for Gallen Committee (1978)[97]

 

A candidate for political office used 15 seconds of his opponent’s campaign song in a political advertisement.

 

This was ruled fair use, since the amount that was taken was small and it was part of a political debate.

 

Italian Book Corporation vs American Broadcasting Company (1978)[98]

 

During the TV coverage of an Italian festival in Manhattan, NY, the film crew happened incidentally to record a band playing a portion of a copyrighted song.  The owner of the copyrighted song sued the TV network for copyright infringement.

 

This was ruled to be fair use, since only a small portion of the song was used, no damage to the market value of the song was done, and the replaying of the song was incidental to the news event.

 

Walt Disney Productions vs. Air Pirates (1978)[99][100]

 

The Air Pirates were a group of counterculture cartoonists working out of San Francisco who published a comic book depicting Mickey Mouse and other popular Disney cartoon characters as being involved in sexual situations, taking illegal drugs, and using bad language.   The group claimed that its purpose was to parody and criticize the Disney image of family-values squeaky-clean wholesomeness, happy endings, and smiling faces. 

 

The Disney organization was not amused, and in 1971 filed a lawsuit against Air Pirates, alleging copyright infringement, trademark infringement, and unfair competition.  Air Pirates claimed that their parody was protected speech under the First Amendment, and that it was also protected under the fair use laws.  In addition, they maintained that the parody had done no economic damage to Disney’s original works. 

 

In mid-1972, the court issued an injunction against the Air Pirates, barring them from publishing any more Disney cartoons until the case was resolved.  The initial decision in the California District Court went against the Air Pirates, the judge rejecting the parody defense, and ruling that a parody could not consist of a substantial taking or outright copying of a copyrighted work.  The First Amendment claim also failed, with the court ruling that a free speech defense for the use of copyrighted material would only be valid if the use of the copyrighted material had been fair.  The judge also found Air Pirates guilty of trademark infringement and trade disparagement. 

 

The defendants appealed to the Court of Appeals for the Ninth Circuit.  In 1978, the Ninth Circuit reaffirmed the Circuit Court’s original ruling against the Air Pirates, although they dismissed the trademark infringement claim because there had been no public confusion between the Air Pirates and the Disney comics and that no one could have reasonably concluded that the Disney organization was the creator of the Air Pirates’ comics.   The fair use defense was rejected because the defendants had copied the substance of the Disney products, not just small parts.  The court held that the First Amendment did not prevent the court from blocking the distribution of the comic, because the defendants could have expressed their theme without copying any of Disney’s protected expression.  The fact that the cartoon figures were used in different plots and portrayed with altered personalities was ruled to be immaterial. 

 

The Supreme Court refused to hear the appeal.

 

Elsmere Music, Inc vs National Broadcasting Company, Inc (1980)[101]

 

The song I Love New York was written in 1977 as part of an ad campaign for New York City.  In 1978, the TV show Saturday Night Live performed a comedy sketch in which the song I Love Sodom was sung to the tune I Love New York.  The copyright owner of I Love New York was not amused, and sued for copyright infringement.

 

The Circuit Court ruled in favor of fair use.  The purpose and nature of the copying was to create a parody, and that the parody was not intended to replace the original.  The authors of I Love Sodom used no more of I Love New York than was necessary to conjure up the image of the original.   The market for the original had not been harmed.

 

Roy Export Company Establishment of Vaduz, Liechtenstein  vs Columbia Broadcasting System (1982)[102]

 

Shortly after the death of the great filmmaker/comedian Charlie Chaplin, the CBS television network broadcasted a half-hour retrospective program about him and his work.  To create the program, the network copied several short segments from Charlie Chaplin films and used them in the news report.  But the network had not obtained proper permission from Charlie Chaplin’s copyright holders to show all these clips.  The movies’ copyright holders then sued CBS for copyright infringement.

 

CBS argued in court that their inclusion of the Chaplin segments was fair use, because they were reporting on a news event of some significance, namely the death of Chaplin.  However, the court ruled against fair use and concluded that the portions that had been taken corresponded to the “heart” of the films, since the network had deliberately chosen the scenes considered to be among Chaplin’s best work.  In addition, the court concluded that CBS could have achieved their purpose by including only those Chaplin segments that were in the public domain, and that their decision to include copyrighted material without permission was motivated by commercial rather than by educational considerations.

 

 

Eloise Toby Marcus vs Shirley Rowley and San Diego Unified School District (1983)[103]

 

Eloise Marcus wrote a booklet entitled Cake Decorating Made Easy.  The defendant, Shirley Rowley, a teacher in the San Diego school system, incorporated substantial parts of Ms. Marcus’s work into a booklet that she used in her classes.   Ms Marcus found out about this, and sued both Ms. Rowley and the San Diego school district for copyright infringement.

 

A lower court ruled in favor of fair use in this issue, stating that the defendant’s copying of the plaintiff’s material for nonprofit educational purpose constituted fair use.  But the appeals court reversed the lower court’s ruling, and ruled against fair use.  Since Ms. Rowley’s copying was for the most part verbatim, and there was no attempt by the defendant to obtain permission to copy the material and no credit was given, this mitigated against fair use.  A substantial portion of the work had been copied, which also militated against fair use.  In addition, the copying had an adverse effect on the market for the original work. 

 

Encyclopedia Britannica Educational Corp vs Crooks (1983)[104]

 

A consortium of public school districts had systematically taped educational programs that were broadcast on public television stations and made copies available to member schools.

 

The court ruled against fair use.  The court was largely sympathetic with the educational purpose of the copying and the distribution, but found that the highly-organized and systematic actions of the school board would have had a detrimental effect on the market for the commercially-produced programs, because all of the works were available on the market for lease.  If the works had been unavailable through normal channels, there might have been more justification for reproduction.  Although the taping was for educational purposes, the schools were retaining copies for 10 years, thus competing with the market for leasing licenses.

 

The court did not address the issue of a single teacher making copies of copyrighted material and showing them in class.

 

Hustler Magazine Inc vs Moral Majority, Inc (1985)[105]

 

Hustler magazine publisher Larry Flynt made some inflammatory statements about the Reverend Jerry Falwell in an article in one of his magazines.  Falwell then made hundreds of thousands of copies of the article and distributed them as part of a fundraising effort.  Flynt then sued Falwell for copyright infringement.

 

The court concluded that this was fair use on Falwell’s part, since the magazine sales were not diminished because it was already off the market.

 

Harper & Row vs The Nation (1985)[106]

 

President Gerald Ford contracted with Harper and Row to publish his memoirs.  Time magazine then contracted with Harper and Row to publish a 7500-word excerpt from the book one week before the book would be shipped to the stores.  The Nation magazine obtained a copy of the Ford manuscript and then, several weeks before Time’s publication was due out, published its own article that included quotes, phrases, and facts from the manuscript.  Time then cancelled the publication of its article and did not pay Harper and Row for the rights.  Harper & Row then sued the Nation magazine for copyright infringement.

 

The case eventually wound up in the Supreme Court.  The Court found in favor of Harper & Row.  Although the purpose of the article was reportage, the Nation magazine was found to be involved in a commercial enterprise since it had the stated objective of scooping both the book and the Time article.  Even though the article was factual rather than creative, the Court concluded that since the Ford manuscript had not yet been published it weighed against fair use.  Although the amount used in the Nation article was small, the Court concluded that the words quoted were the “heart of the work” (the quoted passage dealt with the reasons why President Ford pardoned Richard Nixon) and hence not fair use.  The Court also ruled that the market value for the serialization of President Ford’s memoirs had been substantially damaged by the Nation’s article.

 

In summary, the Supreme Court concluded that all four of the fair use factors weighed against the Nation’s defense of their publication of the article based on President Ford’s memoirs.

 

Fisher vs Dees (1986)[107]

 

Disk jockey Rick Dees produced a 29 second parody of the Johnny Mathis song When Sunny Gets Blue called When Sonny Sniffs Glue.  The owner of the Johnny Mathis song sued for copyright infringement.

 

The Appeals Court concluded that this was fair use since the song that Rick Dees wrote was a parody.  Only 29 seconds of the original song were used, and the composer of the parody did not act in bad faith.  Even though the use was commercial, it did not adversely affect the market value for the original.  The economic effect of a parody is not in its potential to destroy or diminish the market for the original—any bad review can have that effect—but whether it competes with the demand for the original.  Copyright law is not intended to stifle critics.

 

Maxtone-Graham vs Burtchaell (1987)[108]

 

In 1973, Katrina Maxtone-Graham wrote a book based on interviews with women about their pregnancies and their abortions.  James Tunstead Burtchaell wrote his own book on the same subject, but from an opposing point of view, and sought permission to use excerpts from Ms Maxtone-Graham’s work.  Ms. Maxtone-Graham refused permission, but Burtchaell decided to go ahead and publish the excerpts anyway without getting permission.  Ms Maxtone-Graham then sued for copyright infringement.

 

The court ruled in favor of fair use.  Although the book was put out by a commercial press in the hope that it would make money, the main purpose of the book was to educate the public.  The amount of quotation of the plaintiff’s work was less than 5 percent, which was not considered excessive.  Since the plaintiff’s book was now out of print, the quotations offered no significant threat to the market for the work.  In addition, since the point of view was opposite, the new work was not likely to appeal to the same readers.  Another factor was that the original author had denied the use of limited quotations in a work that had an opposing point of view, which meant that relying on fair use was the only effective means by which the second author could reasonably build on the scholarly work of others.

 

Steinberg vs Columbia Picture Industries, Inc et al (1987)[109]

 

In order to promote the 1984 movie Moscow On The Hudson, the Columbia movie company used a piece of artwork similar to the famous New Yorker cartoon drawn by Saul Steinberg which shows a humorous view of the USA from the viewpoint of a New York City resident.  Saul Steinberg sued the producers, distributors, promoters, and advertisers of the film for copyright infringement.

 

The court ruled against fair use.  It was concluded that the movie artwork was quite similar to the original cartoon—it was not a true parody, it simply borrowed from the original. 

 

J. D. Salinger vs. Random House (1987)[110]

 

The author J. D. Salinger had not published anything since 1965, and had become somewhat of a recluse, shunning all publicity and rejecting any and all inquiries about his private life.  The author Ian Hamilton decided to try and write a biography of Salinger, but Salinger refused to cooperate with the project.  An important source of material for the biography was several unpublished letters written by J. D. Salinger.  Even though these letters had been deposited in a library, Salinger had not authorized their reproduction, and he told Hamilton to remove them from his manuscript.  Hamilton nevertheless included paraphrased versions of the letters in his biography.   Salinger sued to prevent their publication.

 

The court ruled in favor of Salinger and against fair use.  The letters were unpublished, and the court concluded that they were the “heart” of the biography.  Salinger’s letters contained a number of facts, and facts can be reported, but not Salinger’s particular expression of these facts.  The court felt that the letters had been taken primarily to add to the commercial value of the biography rather than to provide a critical study of Salinger.

 

Love vs. Kwitny (1989)[111]. 

 

This case dealt with a case in which more than half of an unpublished manuscript on the subject of the overthrow of the Iranian government was copied by an author.

 

The court concluded that this was not fair use, because the manuscript has not yet been published, and that too much (over half) of the work had been taken.

 

Basic Books Inc et al vs Kinko’s Graphics Corp (1991)[112]

 

A university created what is known as coursepacks that included a collection of chapters from a selection of college textbooks, and then used the Kinko’s photocopying service to duplicate the coursepacks and sell them to students for class work.   Several major publishers then sued Kinko’s for copyright infringement

 

The court found that three of the fair use factors worked against Kinko’s.  The coursepack was created by verbatim copying of the works and was not transformative since it simply repackaged and republished the original material.  Even thought the use of the coursepacks was educational, because Kinko’s is a commercial enterprise and made a profit in the deal, this tipped the scales against fair use.  The fact that the works copied were factual and not creative weighted in favor of the defendant.  The court ruled that Kinko’s had copied the “heart” of the works in the coursepacks, not just small parts.   Finally, the economic value of the original works was harmed because the purchase of the packets obviated purchase of the full texts.  The plaintiffs derived a significant part of their income from textbook sales and also by collection of permission fees.  This impact is especially detrimental to authors of out-of-print books for whom the collection of permission fees is a significant source of income. 

 

However, the court did not rule that coursepacks couldn’t constitute fair use in other circumstances.   The real issue here was the use of a commercial photocopying shop to do the work.  The court left open the question of whether universities could produce coursepacks in their own photocopying facilities so long as they do not enjoy any direct commercial gain.

 

Wright vs. Warner Books, Inc (1991)[113]

 

An author writing a biography of Richard Wright quoted from six unpublished letters and ten unpublished journal entries by Wright.

 

Even though the material copied was unpublished, the court ruled in favor of fair use because no more than one percent of Wright’s unpublished letters were copied and the purpose was informational.

 

Rogers vs Koons (1992)[114] [115]

 

Art Rogers is a professional photographer who took a famous photograph of a husband and wife with their arms full of puppies.  The photo was used on lots of greeting cards and other merchandise.  Jeff Koons made a sculpture based on the photograph in order to make a point on the banality of everyday items.  Rogers found out that his photo had been copied, and sued Koons for copyright infringement.

 

The court ruled against fair use.  The resemblance between the sculpture and the photograph was so close that most people could readily recognize the similarity.   The original photograph was a work of art, which militated against fair use.  The essence of the work had been copied.  The court rejected the parody argument, since Koons’ work was commenting on society in general, not directly on Rogers’ photograph.  The market value of the original photograph was harmed because other sculptors might be willing to purchase the rights to use the photograph.  Koons had produced the sculpture for sale, and the purpose of the copying was therefore commercial.

 

American Geophysical Union vs. Texaco (1992)[116]

 

Scientists at the Texaco Corporation had photocopied technical journal articles to support their research without paying any fees to the publishers.  Six scientific publishers filed a class action suit.

 

The courts ruled against fair use in this matter.  Although research is generally a factor supporting fair use, the ultimate purpose of the copying was to strengthen Texaco’s corporate profits.  The commercial, profit-making motive of the company was relevant.  The entire article was copied, not just small parts, and the copying was not transformative, since exact photocopies do not build on the existing work in a productive manner.  The copying by Texaco was seen as institutional, systematic, and archival in function, which weighed against fair use—there was large-scale systematic copying to create individual libraries of papers for researchers who often did not even use or read the papers that were copied.  The courts also concluded that although the amount of copying was small, the potential market for these articles was adversely affected because there was a mechanism in place in which Texaco could have paid royalties through the Copyright Clearance Center.

 

The case was appealed to the Supreme Court, but before the case could be heard a settlement was reached in which Texaco agreed to pay a licensing fee to the Copyright Clearance Center.  The Second Circuit later amended its decision to clarify that it applies only to systematic, institutional copying and that the ruling does not apply to the isolated copying by independent researchers.

 

The case did not apply to copying done in nonprofit educational institutions or in libraries and archives.

 

Twin Peaks vs Publications Int’l Ltd (1993)[117]

 

Publications Int’l Ltd published a book about the television show Twin Peaks, including direct quotations and detailed descriptions of plots.  The show’s owner sued for copyright infringment.

 

The court ruled against fair use, concluding that the amount of material taken was substantial and that the book adversely affected the potential market for any future authorized books about the program.

 

Campbell vs. Acuff-Rose Music, Inc (1994)[118][119]

 

In 1989, the Acuff-Rose Music, Inc, the publisher of Roy Orbison’s classic rock song Oh Pretty Woman sued songwriter Luther Campbell for writing a mocking parody version of the song with altered rap lyrics.   Campbell had borrowed the opening musical tag and the words (but not the tune) from the first line of the song.  The rest of the song was quite different.  The lyrics of the two songs are also quite different.  Campbell arranged for 2 Live Crew to record his song.  Soon after writing the song, Campbell had 2 Live Crew’s manager approach Acuff-Rose to try and buy the right to use portions of the song, but was rebuffed by the publisher.  2 Live Crew decided to go ahead and release the song anyway.   Acuff-Rose promptly sued for copyright infringement.

 

The district court of Tennessee was the first to hear the case, and they held that the 2-Live Crew song was a parody, and was meant as commentary and criticism of the original and was therefore fair use and not copyright infringement.  The parody was not likely to adversely affect the market for the original. 

 

However the Sixth Circuit Court of Appeals reversed the decision, and ruled that any work intended for the commercial market could not count as fair use even if it was a parody.  In addition, the court ruled that the market for the original song had been harmed by the 2 LiveCrew song, and was thus an infringement that outweighed any parodic purpose.  The case was remanded to a trial court. 

 

Campbell then appealed to the Supreme Court, which reversed the Appeals Court decision in 1994 and concluded that although the use was indeed commercial and that a key riff had been used throughout the parody, the amount taken was just enough to conjure up the original in the mind of the listener, and that the parody did not affect the market for the original song.  The use was transformative and borrowed only a small portion of the song.  The 2 Live Crew version of the song was essentially a new piece of music.  The Supreme Court ordered the District Court to implement the Supreme Court’s findings in order to decide if the song counted as fair use.  Before the next trial phase could take place, the litigants settled out of court.

 

The key to parody being successfully used as a fair use defense appears to be taking as little as possible to conjure up the original. 

 

Religious Technology Center vs Pagliarina (1995)[120]

 

Scientology is a religion founded by the science fiction writer L. Ron Hubbard.   The Church of Scientology claims exclusive rights to certain of Hubbard’s unpublished works, access to which are restricted to members of the church only.  The Washington Post newspaper used three brief quotations from Church of Scientology texts posted on the Internet.  The Church sued.

 

This was ruled that this was fair use, since only a small portion of the work was used, and the purpose was for news commentary.

 

Religious Technology Center vs Lerma (1996)[121]

 

An organization of disgruntled former Church of Scientology members (known as FACT) put some unpublished works by Church founder L. Ron Hubbard up on their website.   The Church of Scientology sued FACT for copyright infringement.

 

The Federal District Court of Colorado refused to issue an injunction against FACT.  In doing so they analyzed the four fair use factors and concluded that the FACT use of the Scientology material was not commercial, that the purpose was criticism and commentary.  Even though the Church materials were unpublished, the court concluded that the same concerns as in the Harper & Row case did not apply in this case.  Although quite a bit of Hubbard’s material was put up on FACT’s website, the Church did not provide the court with the materials in their entirety, and the court could not determine how much copying was actually done.  Finally, the Church did not demonstrate that it had suffered any financial losses due to FACT’s website.

 

Monster Communications vs Turner Broadcasting System (1996)[122]

 

The TNT made-for-television documentary Ali—The Whole Story took a short segment of When We Were Kings, a film depicting the championship fight between Muhammad Ali and George Foreman held in Zaire.  The owners of When We Were Kings sued the Turner Broadcasting System for copyright infringement.

 

The court ruled in favor of fair use, since only a small portion was used and the purpose was informational.  The use of the film clips by the documentary was transformative, since the original film was largely about the Zaire fight between Ali and Foreman, whereas the documentary was a retrospective of Ali’s life and career.  In addition, the court felt that the use of the short clip would not affect the market for the original film.

 

Princeton University Press vs Michigan Document Services, Inc (1996)[123] [124]

 

A private copy shop created and sold “coursepacks” for classes taught at the University of Michigan under circumstances similar to Kinko’s.   The copy shop had done this without getting permission from the copyright holders.  The book publisher sued for copyright infringement.

 

The copy shop was deemed to have acted outside the scope of fair use.  The basic factor militating against fair use was the fact that a commercial for-profit shop had performed the actual copying, even when professors in a not-for-profit educational institution were the ones that had selected the coursepack material.  The copying was deemed to be a significant fraction of the original works. There were mechanisms in place by which permission to make copies for classroom use could be obtained.  Since licensing or potential licensing opportunities existed for all the works that were copied, the market for the original works was adversely affected.

 

The court did not address the question of whether coursepack production may be fair use if conducted by a university or a nonprofit copy shop. 

 

Los Angeles News Service vs KCAL-TV (1997)[125]

 

A TV news broadcast used 30 seconds of a four minute videotape of the 1997 police beating of Reginald Denny.  The owner of the videotape sued the TV station for copyright infringement.

 

The court ruled against fair use, since the use of the video was commercial, the “heart” of the work was taken, and the owner’s ability to market the video was adversely affected.

 

Dr Seuss Enterprises, L. P. v. Penguin Books USA, Inc (1997)[126][127]

 

An author proposed to publish a book that mimicked the style of the well-known Dr. Seuss book The Cat in the Hat while retelling the facts of the O. J. Simpson double-murder trial.  The book was entitled The Cat NOT in the Hat! A Parody by Dr. Juice.  Dr Seuss Enterprises, a limited partnership that owns most of the copyrights and trademarks of the late Theodor S. Geisel who wrote under the pseudonym Dr Seuss, sued to prevent the publication of the book, charging that the new book was an unauthorized derivative work that would infringe on the copyright and trademark rights of the earlier work.  Geisel’s widow also sued to prevent publication, claiming that the new book would tarnish the image of the original works and would unfairly commingle the image of Dr Seuss with that of an accused double murderer.

 

The court concluded that this was not fair use.  The accused work had a commercial purpose and was not transformative, and would interfere with the market value of the original work.  However, the major factor arguing against fair use in this case was the fact that the accused work was a satire, not a parody.  The book did not poke fun at or ridicule Dr. Seuss, but instead used Dr. Seuss characters and style to retell the story of the murder.  In addition, the court concluded that the Dr. Seuss trademark had been infringed, because people might be confused into believing that the Dr. Seuss enterprise had actually produced and published The Cat NOT in the Hat.  The publisher was enjoined from distributing the book.

 

The creation of a parody is generally allowable under fair use, but not a satire.

 

Ringgold vs Black Entertainment Television Inc (1997)[128]

 

During a Black Entertainment Television (BET) series, a 27-second segment showed a poster of a “story quilt” in the background of the set.  Faith Ringgold, the owner of the copyright on the quilt, sued for copyright infringement.

 

The court ruled against fair use in this case.   The use of the poster by BET was not transformative, the display was a key part of the scene, the work was creative, the entire work was used, and there was a potential for adverse effect on the market for licensing rights because the creator had licensed the work in other TV programs.

 

Sundeman vs The Seajay Society, Inc (1998)[129]

 

A researcher at the Seajay Society, a nonprofit foundation, selected quotations from an unpublished literary manuscript by Marjorie Kinnan Rawlings, and included these quotations in a presentation made to a scholarly conference.

 

The court ruled in favor of fair use.  Although the unpublished nature of the work militated against fair use, the use was scholarly, transformative, and provided criticism and commentary, the amount used was small, and the heart of the work was not taken.  In addition, there was no evidence that the presentation had diminished the market for the original work, and may have actually increased demand for the full manuscript.

 

Reasonable, limited scholarly uses of copyrighted material (even if unpublished) are most likely to be considered fair use.

 

Michaels vs Internet Entertainment Group, Inc (1998)[130]

 

An adult web site obtained a copy of a sexually-explicit video featuring the rock star Bret Michaels and the television star Pamela Anderson Lee.  The adult website claimed that it had a license to display the excerpts, but the two stars disagreed, and they sued to prevent the release of their video on the website.

 

The court enjoined the defendant from distributing the video, and also ruled against fair use in the display of short segments on the website.  The excerpts did not involve any transformation of the original work.  The use was seen to be commercial, since it built up a subscriber base.  Still images and short video clips are the stock-in-trade of the Internet adult entertainment business, and the commercial value of the excerpts is almost as much as that of the entire tape.  The use would therefore conflict directly with the exclusive rights of the copyright owners.  The segments were likely to propagate quickly over the Internet and undermine the market for the original video.

 

Paramount Pictures vs. Carol Publishing Group (1998)[131]

 

Sam Ramer published a book entitled The Joy of Trek (1997), which was a fictitious history of the Star Trek universe.  However, he neglected to get Paramount’s permission to publish the book, and Paramount sued Ramer and his publisher for copyright infringement.

 

The court entered an injunction prohibiting the manufacture, publication, or sale of the book.  They concluded that the characters, plots, and dramatic episodes that comprise the book were created and owned by Paramount, and by reproducing these elements The Joy of Trek infringes on the Star Trek copyrights.  The court concluded that characters, plots, and dramatic episodes were expressions, not ideas, and were hence subject to copyright. 

 

The decision was affirmed on appeal to the 2nd Circuit Court of Appeals.

 

Higgins vs. Detroit Educational Television Foundation (1998)[132]

 

45 seconds of a song composed by Higgins were used as background music during a program about drugs and young people that was broadcasted on a PBS affiliate in Michigan.  The broadcaster also sold videotape copies of the program to educational institutions, for educational use only.  Higgins sued for copyright infringement.

 

The court ruled in favor of fair use.  The defendant had sold only a few copies of the tapes and did not earn a profit; the use was transformative since the music appeared only faintly in the background.  Since it was a piece of music, it was hence a creative work, which would tip the scales against fair use.  However, the amount used was small, no lyrics of the song were used, and then only in the background.  The defendant failed to show that the market for the original had been diminished, and the 45 seconds of the song appearing in the background could not reasonably be said to be a substitute for the original song.  In addition, the plaintiff had no interest in selling his song to the educational videotape market.

 

So it appears that the use of short clips of music and other creative works in nonprofit research and education falls under fair use.

 

Leibovitz vs Paramount Pictures Corporation (1998)[133]

 

An advertisement for the movie Naked Gun 33 1/3: The Final Insult featured the face of actor Leslie Nielsen superimposed on the naked body of a pregnant woman.  The pregnant woman was posed to look like the actress Demi Moore, who had been featured in a photograph that appeared on the cover of the August 1991 issue of Vanity Fair.   Well-known photographer Annie Leibovitz had taken the original Demi Moore photograph, and she sued for copyright infringement.

 

The court found in favor of fair use.  The Paramount advertisement was transformative because it was a parody, a new work that commented on the original and was not merely a copy of the original.  It had imitated the photographer’s style for comic effect or ridicule, which qualified it as a parody.  In addition, Ms. Leibovitz had conceded that the parody would not interfere with the potential market for her photograph.  Even though the use was commercial, the Campbell vs Acuff-Rose case had ruled that a commercial use of copyrighted material is not necessarily unfair use.

 

Castle Rock Entertainment vs Carol Publication Group (1998)[134]


A book was published containing a list of trivia questions about the Seinfeld television show.  Some actual dialogue was used.  The copyright owner of the Seinfeld show sued for copyright infringement.

 

As in the Twin Peaks case, the court ruled against fair use, for much the same reasons.  The preparation of trivia questions about a TV show was not transformative, and although the book had not done any actual market harm, the book had adversely affected the show’s right to make its own authorized trivia books in the future.

 

So it is definitely not OK for you to publish a trivia book based on a TV series, at least not without the permission of the show’s owners.

 

Tiffany Design, Inc vs Reno-Tahoe Specialty, Inc (1999)[135]

 

Tiffany Design was a producer and distributor of videos, calendars, posters, and postcards to vendors in and around Las Vegas, Nevada.  The company had created a Photoshop computer-enhanced adaptation of an aerial photographic image of the Las Vegas Strip.  Reno-Tahoe Specialty, which was a competitor of Tiffany Design, scanned the Tiffany-produced image and then inserted some architectural works copied from Tiffany Design’s work into their own image.  Tiffany Design sued for copyright infringement.

 

The court ruled against fair use in this case.  The use of the copyrighted material in the finished product was for a commercial purpose, and was intended to compete with the original.  The image copied was a computer-enhanced photo and was hence a creative work, and the entire image was scanned.  It was concluded that the incorporation of components of the scanned image could have a significant effect on commercial demand for Tiffany Design’s depictions of the Strip.

 

So it is not fair use to scan an image in order to copy parts of it into a new work, especially if you use the copy for commercial purposes or if you adversely affect the demand for the original.

 

Nihon Keizai Shimbun, Inc, vs Comline Business Data, Inc (1999)[136]

 

A business news service translated Japanese articles into English and prepared abstracts of the information.  The business news service was sued by the Japanese publishers for copyright infringement

 

The court ruled against fair use.  Although the abstracts were factual and were for news reporting, there was nothing new added and hence was not transformative.  Crucial facts and ideas were copied, and the abstracts directly competed with the original articles.

 

Worldwide Church of God vs Philadelphia Church of God (1999)[137]

 

The Worldwide Church of God (WCG) is a religious movement founded in 1933 by radio preacher Herbert W. Armstrong.  The Philadelphia Church of God (PCG) is a splinter group that broke off from the WCG in 1989 over doctrinal differences.  The reasons for the split were complex: following the death of Armstrong in 1986, the leaders of the WCG had begun to dispute the theology of its founder, and had pulled Armstrong’s book Mystery of the Ages from circulation.  The PCG splinter group still adhered to the teachings of Armstrong, and began to reproduce and circulate Mystery of the Ages.  The Worldwide Church of God sued the Philadelphia Church of God for copyright infringement.

 

The fair-use defense failed on all four counts.  The use was not commercial or designed to show a profit, but the copying and distribution of the work had a direct correlation with an increase in PCG membership, which leaned against fair use.  Armstrong’s book was deemed to be creative, which also tipped the scale against fair use.  The entire work was copied, and a reasonable person would expect that the PCG would pay the WCG for the rights to copy and distribute the work.  The verbatim copying and distribution of the work had a harmful effect on WCG’s ability to prepare an annotation or market the work in the future.

 

So it is not fair use for a non-profit religious organization to copy verbatim a publication owned by another non-profit religious organization, even if the work is no longer available.

 

Los Angeles Times vs. Free Republic (2000)[138]

 

Free Republic is a bulletin board Internet website that describes itself as a conservative gathering place devoted to criticizing the way that that the mainstream media (perceived to be liberal) covers current events and issues.  It allowed its members to post copies of full articles copied from newspapers such as the Los Angeles Times and the Washington Post in order to generate discussion and critical commentary.  Access to the site was free and unrestricted.  The website was a for-profit corporation, but was in the process of seeking nonprofit tax status.  The newspapers sued the website for copyright infringement.

 

Free Republic asserted a fair use and a First Amendment defense to their verbatim copying.  They claimed that this copying was necessary in order for site visitors to be able to express their opinions, and that it would be difficult to convey the liberal biases of the stories without actually posting the full text of each article.

 

The court ruled against fair use.  The copying was not transformative, since the articles were copied directly from the news sources without any alterations whatsoever.  The judges thought that verbatim copying of the news articles was not essential to communicating the site’s message, and that a hyperlink to the articles would have served the same purpose.  Although the use was not-for-profit, the posting of the articles was drawing readers away from the commercial websites where the articles originated.  Although the material copied was factual, the website contained the full text of the articles, not just short parts.  Since the newspapers were using these articles to draw traffic to its websites, the defendant was deemed to be adversely affecting the copyright owner’s potential markets.

 

So the inclusion in your website of a hyperlink to copyrighted material is probably OK, but wholesale copying of the original material onto your website is not fair use.  After settling the lawsuit, Free Republic now includes just the first paragraph of the article being discussed, along with a hyperlink to the full text.  However, the actual text of the newspaper article is sometimes hidden behind a paywall, requiring the payment of a subscription fee for access.

 

Nunez vs Caribbean International News Corp (2000)[139]

 

A newspaper published photographs taken by Sixto Nunez of a beauty pageant winner.  The photos were from her portfolio, but a controversy had arisen as to whether they were too revealing for a candidate in that particular pageant.  The photos appeared on a TV news broadcast, then were obtained by a newspaper and published, along with several articles about the controversy. Nunez claimed that the publication of the photos in the newspaper without his permission violated his copyright, and he sued for copyright infringement.

 

The court ruled in favor of fair use.  Although the newspaper was a commercial enterprise and the use of the photos certainly did increase newspaper sales, the use of the photos was actually transformative because they were used to inform the public about the controversy surrounding the photos.  Although reproduction by newspapers of professional photos is generally considered to be infringement, the court agreed that the newspaper had acquired the photos in good faith, and that the photos themselves were actually at the core of the news story and it would have been difficult to report the news without using the photos.  It was true that the entire photo was copied, although to copy less than the whole work would have made no sense.  It was felt that there was little impact on the market for the original photos, since a newspaper reproduction is generally of rather poor quality and could not reasonably be considered as a substitute for the original.

 

Suntrust vs. Houghton-Mifflin (2001)[140]

 

The Wind Done Gone was a novel written by Alice Randall in 2001, which was a retelling of the 1936 Gone With the Wind novel, with many of the same characters and situations of the original, but it told the story from the perspective of the slaves.  Since Gone With The Wind was still under copyright, the new novel was sued by the estate of Margaret Mitchell for copyright infringement, arguing that it was an unauthorized sequel.

 

The 11th Circuit Court, applying the precedent of the Campbell decision, concluded that although The Wind Done Gone was a work for the commercial market, it was substantially transformative, and that The Wind Done Gone was a parody, and allowed it to be published.

 

Lowry’s Reports vs. Legg Mason (2003)[141] [142]

           

Legg Mason, a large financial services firm, purchased a single subscription to “Lowry’s New York Stock Exchange Market Trend Analysis” newsletter, and then over the course of several years disseminated copies of the newsletter to all their employees.   Lowry’s Reports then sued Legg Mason for copyright infringement.

 

The court ruled that this was definitely not fair use.  The commercial nature of the defendant’s business leaned against fair use.  The nature of the newsletter was that of a factual work containing very useful information developed by the publisher.  The amount and substantiality factor went against Legg Mason, since the entire issue was copied.  The effect on the market also weighed against the defendant since the plaintiff is a small publisher with one product and it limited subscriptions to individual subscribers.  Lowry’s was also guilty of breach of contract, since the employee who had signed the original subscription agreement in 1994 had agreed not to disseminate the information in the newsletter to others.  The infringement was willful and deliberate.  A jury awarded $19.7 million in damages to Lowry’s Reports.

 

Kelly vs. Arriba-Soft (2003)[143]

 

An Internet search-engine run by Arriba-Soft had a practice of creating small low-resolution reproductions (known as thumbnails) of images that it found on the Web and putting them on their website.  Clicking on the thumbnails would connect to the image owner’s website and display the full picture in a new browser window.  Leslie Kelly, the owner of the images, sued Arriba-Soft for copyright infringement.

 

The court ruled in favor of fair use.  Factors 1 and 4 were considered important.  The use benefited the public and was transformative, since the originals were converted to thumbnails that improved access to the images on the Internet.  Arriba’s use of the images to make the thumbnails was unrelated to any aesthetic purpose, and was simply a tool to help index and search the Internet.  Once the search engine created the lower-resolution thumbnails from the photos that it found, the program automatically removed the full sized pictures from the server.  The thumbnail images were not being sold as pictures but rather to facilitate the identification of the images in the search engine, and the use of Kelly’s images in the thumbnails did not harm the market for the full-sized images, since by clicking on the thumbnails automatically led the user to the full-sized image.

 

So the conversion of Internet photos to thumbnails is fair use, but the copying of full-size images onto a website is probably not fair use.

 

Mattel vs Walking Mountain Productions (2004)[144]

 

In 1997, artist Tom Forsythe took a series of photographs[145] he termed “Food Chain Barbie”, which portrayed a nude Barbie doll in danger of being attacked by vintage household appliances.  These were meant to be a spoof of the famous doll, the point being to criticize the crass materialism and gender-oppressive values that the doll supposedly represents.  In August of 1999, Mattel, the makers of the Barbie doll, sued for trademark and copyright infringement.

 

In August 2001, a federal District Court agreed that Forsythe’s work was a parody, and was therefore protected under fair use.  The work was highly transformative, and the amount of Mattel’s figure that he used was justified.   The Forsythe art had no discernable impact on Mattel’s market for derivative uses of their Barbie doll product.  The benefits to the public of allowing such use—allowing artistic freedom of expression in criticizing a cultural icon—are great.  There was little danger that customers would be confused and imagine that Mattel was the sponsor of Forsythe’s work. 

 

However, the court did not award Forsythe legal fees, and both Mattel and Forsythe appealed.  In December 2003, a 3-judge panel from the 9th Circuit Court of Appeals upheld the lower court decision, and agreed that Forsythe’s use of undressed Barbies was fair use, and that Barbie would not be readily identifiable in a photograph without use of the Barbie likeness and figure.  Forsythe used only so much as was necessary to make his parody readily identifiable.  It was unlikely that any reasonable consumer would believe that Mattel had sponsored the work.  The Appeals Court sent the matter of legal fees back to the lower court

 

In June of 2004, the District Court ordered Mattel to pay all legal fees.   The lower court argued that because the plaintiff had forced the defendant into costly litigation to discourage him from using Barbie’s image in his artwork, the court should award attorneys fees to deter this sort of litigation in the future.

 

Blanch v. Koons (2005)[146]

 

Well-known artist Jeff Koons found himself in copyright trouble yet again.  Andrea Blanch sued Jeff Koons for using a portion of her copyrighted photograph of a woman’s legs wearing Gucci sandals in his collage painting named Niagra. 

 

In this case, the court ruled in favor of fair use, concluding that Koons’ use of Ms. Blanch’s image was highly transformative. He had changed the orientations of the model’s legs in the original photo, he changed the colors, and he removed the background.   He was attempting to comment on the way public appetites for food, play and sex were mediated by popular images.  His purpose in the use of Ms. Blanch’s image was sharply different from her goals of creating the image in the first place (advertising), since he was using it as a means of commenting on the social and aesthetic consequences of mass media.  In addition, Ms. Blanch did not suffer any damages or monetary losses, and Koon’s painting did not interfere with any of her intended uses of her photograph, nor did it decrease its value.

 

The court felt that the transformative nature of Koon’s work overshadowed other issues, such as the commercial nature of his painting, the creative nature of the work that was used, the amount that was taken, and the effect on the market for the original work.

 

Video-Cinema Films v. Lloyd E. Rigler-Lawrence E. Deutsch Foundation (2005)[147]

 

A nonprofit educational foundation used 85 seconds of a performance by opera singer Lily Pons taken from an old movie entitled Carnegie Hall and added it to a new program named Classic Arts Showcase, and distributed the program to public television and cable channels.  Video-Cinema Films, which licensed the Carnegie Hall film for television and home video distribution, sued for copyright infringement. 

 

Although the use was educational and noncommercial and the clip that was used was only a small part of the 5-minute performance given by the singer, the court concluded that this was not fair use because of the potential loss of licensing revenue.  Video-Cinema Films had previously licensed portions of the work for broadcast, and the court concluded that the foundation’s unauthorized use of the clip undermined the market value of the clip.  Although the relative amount used was small, the inclusion of the clip was not transformative.  The defendants had tried to argue that their use of the Lily Pons performance was as a factual report, not as a creative work of art, but the court rejected this argument.

 

Field vs. Google (2006)[148]

 

The search engine Google operates by using automated programs that continuously search across the Internet, locating and analyzing available web pages, and cataloging them into Google’s searchable Web index.  As part of the process, the automated program makes and analyzes a copy of the web site and stores it in a temporary repository known as a cache.  The Google user is provided with a hyperlink to the actual web page, but has the option of clicking on a link labeled “cached” which will bring up a view of the stored copy.  Google’s caching has the advantage in that it allows users to access the content even when the server carrying the original page is down. 

 

Google does not ask anyone’s permission to do any of this.  Blake Field, an amateur poet, had published several of his poems on his personal website.  Field sued Google for making cache copies of his copyrighted poems without his consent.

 

The court found that Google was not liable for copyright infringement.  For one, the court argued that Google had an “implied license” to do this copying, since Field had put his poems up on his website in the first place and had made them available to the public free of charge, and Google could properly infer that the owner had consented to its access by a search engine.  In addition, Field could have easily added a “no-archive” meta-tag to his website which would have instructed the Google search engine not to make a cache copy, but he had chosen not to do so.

 

What Google was doing was also ruled to be fair use by the court.  Google’s caching of the poems added something new and did not merely supersede the original works--Google’s cache does not substitute for the originals.  The site owners, not Google, have the power to decide whether or not they will allow their web pages to be cached, and the fact that billions of web page owners choose to allow this caching is evidence that they don’t view Google’s cache as a substitute for their own pages.  Because Google serves a socially important purpose in offering access to copyrighted works through cached links, its work is transformative and does not merely supersede or replace the original creation. 

Although Google is a commercial enterprise, there is no evidence that Google profited in any way from the use of Field’s poems. 

 

The second fair use factor considers whether the work copied was a creative or a factual work.  Although Field’s poems were creative works, he had published them on the Internet and had made them available to the world for free.

 

The court concluded that the third fair use factor was neutral in this case, because Google had used no more of Field’s works than was necessary in allowing access to them through cached links. 

 

The fourth fair use factor considers the effect on the potential market for Field’s poems.  Since Field’s poems were made available over the Internet for free, there is no evidence that there is any market value at all for them, and he had never received any compensation from selling or licensing them.  There is thus no evidence that the caching of the links had any impact on any potential market for these works. In general, the court concluded that there is no evidence that there is any potential market for the licensing of search engines to allow users access to web sites through cached links.

 

Bill Graham Archives vs. Dorling Kindersley Limited, Dorling Kindersley Publishing, and RR Donnelley and Sons Company (2006)[149]

 

In October of 2003, Dorling Kindersley Ltd (DK) published a coffee-table book named Illustrated Trip, a biography of the Grateful Dead rock group.  Seven images of concert posters and tickets that they wanted to include in the book were owned by Bill Graham Archives (BGA), and the publisher had made an attempt to get permission from BGA, but they were unable to agree on the terms of the license.  DK went ahead and published the book anyway without getting permission to include the seven images.   BGA then sued for copyright infringement. 

 

The district court ruled that the use by DK of the seven images was fair use.  The book on the Grateful Dead was a biography, whereas the images were not, so the book was considered to be transformatively different from the mere expressive use of concert posters.  Works of historic scholarship, criticism, and commentary often require the incorporation of original source material for optimal treatment of their subjects.  The images were arranged in a collage, and were small in size, and the images were presented to enrich the cultural history of the Grateful Dead, not for commercial gain.  The amount of material used took up only a very small portion of the book and since the amount was quite small this was found to be fair use.  The use of the images was incidental to the commercial value of the book. 

 

Although the images were creative rather than factual, which generally trends away from fair use, this was not considered as an impediment because of the generally transformative use to which they were put in the book, and the use was to emphasize the historical rather than the creative value of the images.  Even though the entire images were used, the images were displayed in reduced size.  Copying of the entire image was necessary in order for it to be recognized.  

 

Finally, the BGA’s primary market for the original works was not harmed, since the small size of the images used in the book could not reasonably be considered as competing with the originals in the marketplace.  Although the court recognized that BGA certainly did have a potential market for royalties for use of its images in other works, the court concluded that simply because licensing revenues were available, this did not automatically mean that the use was not fair.  The plaintiff has to prove that they have a right to licensing revenues before they can show that a failure to pay licensing fees equals market harm.  If the courts were to conclude that failure to pay licensing fees always automatically equates to market harm, the fourth fair use factor would never have any validity.

 

The district court decision was upheld on appeal.

 

Burnett vs 20th Century Fox (2007)[150]

 

The comedienne Carol Burnett was approached by Twentieth Century Fox in mid-2005, seeking permission to use the theme song from The Carol Burnett Show in a Family Guy episode.  She declined the request.  Fox then produced in 2006 a Family Guy episode in which a person resembling Carol Burnett’s well-known charwoman character (a dusty maid distinguished by a blue bonnet, and carrying a bucket, and mop) appears as a female janitor in a porn shop.  Carol Burnett’s name was actually used. 

 

Ms Burnett was not amused, and sued Fox for misappropriating her name and likeness, for violating her trademark, for violating the copyright on The Carol Burnett Show and for violating her publicity rights.  She charged that Fox had caused the Family Guy episode to be rewritten simply to disparage her image and reputation as retaliation for refusing to issue the license.

 

In the Family Guy show, the Griffin family and their friends routinely encounter cartoon versions of celebrities involved in ridiculous situations in order to lampoon them and to criticize society’s current obsession with celebrities and pop culture.  A Los Angeles federal court dismissed the copyright claim[151] and found that Fox’s show was a parody—although offensive, it was fair use.  The plaintiffs had claimed that the target of the parody was not the charwoman character, but Ms. Burnett herself.  However, the court concluded that it was immaterial whether the target of the show was Burnett, the Carol Burnett Show, the charwoman character, the theme music, or all four.   The clip of the charwoman mopping the floor in a porn ship was clearly designed for comic effect or ridicule.  The court also found that the episode had taken just enough imagery and music to make the depiction recognizable to viewers.  The court went on to state that public figures are often targets of parodies and crude innuendoes, but the law must provide broad protection for such efforts and that the definition of parody must remain broad in order to prevent a chilling effect on free speech.. 

 

The court also dismissed the trademark violation claims, concluding that there was no potential for confusion and no dilution of any of Carol Burnett’s trademarks.

 

Perfect 10 vs. Google (2007)[152]

 

Perfect 10, an Internet subscription adult website, sued the Google search engine for creating and displaying thumbnails of the website’s copyrighted images of nude models during its web searches.  The search engines also linked to third-party websites where infringing full-sized images were displayed, which Perfect 10 clamed was copyright infringement.

 

A preliminary hearing[153] in November of 2005 by the US District Court of California ruled that Google’s creation and display of thumbnails likely did infringe Perfect 10’s copyrights and could not be justified under fair use. This is because Google’s use of these thumbnails was deemed to be commercial, since it linked the display of its advertisements to the topic of a customer’s search.  In addition, Perfect 10 had leased the right to distribute reduced-size versions of its images for use on cell phones, and Google’s thumbnails competed with this market.

 

However, the court concluded that Perfect 10 was unlikely to succeed on its claims of vicarious and contributory infringement liability.  In order to succeed in a claim of contributory infringement, Perfect 10 would have to prove that Google had knowledge of the infringement or had induced, caused, or materially contributed to the infringement.  In order to prove vicarious infringement, Perfect 10 would have to show that Google had derived some sort of direct financial benefit from the infringing activity of the third-party websites that hosted the copies of Perfect 10 photos and that Google had failed to supervise or control the infringing activity. 

 

On May 16, 2007, the Ninth Circuit Court of Appeals[154] reversed the lower court’s ruling and concluded that Google’s thumbnails made from Perfect 10’s images were fair use.  Google’s creation of thumbnails is transformative and provides a real public benefit, since search engines provide an important public service because they promote access to creative works.  .  The Appeals Court ruled that Google was not actually displaying the full-sized versions of infringing images by simply providing an on-line link—it is the site displaying the image, not the site providing the link, which is responsible for any copyright infringement. 

 

 

In summary, the lack of consistency in these rulings means that there probably is no way that you can reliably predict ahead of time whether your use of a copyrighted work will actually qualify as fair use.  You may think that what you are doing is OK, but if the copyright owner disagrees you may find yourself in court.  So when in doubt, it is a good idea to ask permission first.  You should probably also consult with a copyright attorney as well.  Most large media companies are so paranoid about the legal unpredictability of fair use that they just won’t take any chances and will insist on written clearances on just about anything that is borrowed or adapted from a copyrighted work, lest they leave themselves open to a crushing lawsuit.

 

 

Copyright Infringement and the Law

 

Any person, company, or organization that violates any of the exclusive rights granted to the copyright owner can be accused of what is known as copyright infringement.  Copyright infringement falls mostly under civil law, but there are criminal penalties for some of the more flagrant examples of copyright infringement, such as selling pirated DVDs off the back of a truck.  People who willfully and deliberately infringe copyrights for the purpose of monetary gain can be accused of a federal crime and can be sentenced to jail time if convicted.  Upon conviction, the court has the discretion of ordering the forfeiture and destruction of all infringing copies as well as the destruction of all devices or equipment used in the creation of the infringing copies.   The duration of the prison sentence and the amount of the fine are generally based on the total value of the goods involved in the infringement and the frequency at which the offense was committed.

 

Recently, the No Electronic Theft act was passed to make it possible for people who reproduce, distribute, or share copies of electronic copyrighted works having a total retail value of more than $1000 to be criminally prosecuted, even if they had no discernable profit motive.  The law was designed to close a loophole in the previous law, under which people who intentionally distributed copyrighted software over the Internet did not face criminal penalties if they did not profit by their actions.  Maximum penalties are 3 years in prison and a fine of $250,000.

 

However, criminal prosecutions for copyright infringement are quite rare, since the federal government simply lacks the resources to track down and prosecute every infringer—crimes such as terrorism, political corruption, kidnapping, financial fraud, and child molestation have a much higher priority with the Department of Justice.  Most copyright infringement actions are civil actions, in which the offended party sues the infringer in federal civil court.  This means that it is the responsibility of the individual copyright owner to enforce their exclusive rights, not the government.  The copyright owner must go through the hassle and expense of hiring a lawyer, filing a lawsuit, gathering evidence, and testifying in court. 

 

Since copyright infringement is usually a civil matter, the constitutional protections provided for defendants in criminal prosecutions do not apply.  In order to successfully sue you in court for copyright infringement, the plaintiff does not have to show that you are guilty beyond a reasonable doubt, they only have to show that a preponderance of the evidence shows that you have violated a copyright.  The burden of proof is much lower in a civil matter than it is in a criminal case, which means that the plaintiff usually wins in court.

 

Copyright laws recognize two different types of copyright violations—direct copyright infringment and indirect copyright infringement.

 

Direct Infringement

 

Anyone who violates any of the exclusive rights of the copyright owner (e.g. distribution, adaptation, publication, public performance, or display) can be sued in civil court for what is known as direct copyright infringement.  In order to prove direct copyright infringement in court, the plaintiff must show that they do indeed own the copyright in question, they must prove that the defendant had access to the work, and they must demonstrate that the defendant violated one or more of the rightsholder’s exclusive rights. 

 

Copyright infringement is what is known as a strict liability, under which you can be held legally liable for acts of infringement even if there was no actual “fault” on your part.  This means that it is no excuse in court to say that you didn’t know you were infringing a copyright, that you did it by accident, that you thought that what you were doing caused no one any harm, or even if you didn’t make any money by what you did.  It is also no excuse to say that your infringing action was done for some greater good or that it benefited the public in some manner.   

 

The civil penalties for direct copyright infringement can be very harsh.  Courts can award up to $150,000 in damages for each separate act of willful infringement, that is, if you knew you were infringing but went ahead and did it anyway.  However, even if you didn’t know you were infringing you are still liable for damages, only the amount of the award will be affected.  However there is the “good faith fair use defense”, which is a special provision in the law that allows a court to refuse to award any damages if the court could be convinced that the person who copied the material reasonably believed that what they did fell under fair use.

 

A copyright owner is under no obligation to enforce their copyright by filing a lawsuit, and they could ignore any and all infringements should they choose to do so.  But there is a “statute of limitations” built into copyright law, under which a copyright owner has a maximum of three years to file an infringement lawsuit in federal court from the date that they first learned about the infringement or should have reasonably learned about it.   Courts often look askance at copyright owners who wait too long to file a lawsuit.

 

Indirect Infringement

 

People or organizations that are not themselves directly copying or distributing a copyrighted work but are somehow assisting, promoting, or abetting the infringement process can still be dragged into court under what is known as indirect or secondary copyright infringement.  The copyright law does not actually mention or recognize indirect infringement as a legal category, but it has evolved over the years through case law, and the concept of indirect or secondary liability is recognized in many areas of law, under which it is thought reasonable to hold an individual liable for the actions of another.  The danger of secondary infringement liability is an important concern for many business and corporate entities, since there is no requirement that the company itself actually be engaged in the underlying infringement in order for them to be sued.

 

The courts recognize two separate and distinct categories of indirect copyright infringement: contributory copyright infringement and vicarious copyright infringement.

 

Contributory copyright infringement[155] can happen when a person or corporation is fully aware of an infringing activity (or should have known about it) and provides a material contribution, an active assistance, or inducement, to the infringing activity, even if they don’t engage in any direct infringing activity themselves.  In order to a business or individual to be held liable for contributory infringement, the plaintiff must be able to convince the court that the accused person or organization had actual knowledge of the infringing activity and that they induced, caused, or materially contributed to the infringement.  The person or organization need not necessarily have profited financially from the infringing activity in order to be held liable for contributory copyright infringement—all which is necessary to show in court is that the offending party aided and abetted the infringement and was aware of what was going on.

 

Examples of things involved in contributory copyright infringement are websites that permit the publication of passwords or access codes for unauthorized access to software, the creation of a website or service that can be used for the uploading or downloading of copyrighted material, or a website that publishes links or addresses to Internet sites that host infringing material.   Companies that produce devices, software, processes, or equipment whose primary purpose is to make it possible for users to subvert copyright can also be held liable for contributory infringement. 

 

Vicarious copyright infringement liability[156] can be found when a company, organization, corporation, or service that has the right and ability to control the activities of its users, customers, agents, contractors, or employees but nevertheless permits or ignores infringing activity on their part and also somehow derives a monetary profit from such activity.  Even if the organization or individual is completely unaware of these infringing acts, they can still be found liable.  Consequently, the prospect of vicarious copyright infringement liability is an ever-present nightmare for many companies and organizations, and extreme measures are often taken to prevent or reduce such legal exposure.  

 

However, in order to successfully sue someone for vicarious copyright infringement, the plaintiff needs to be able to show that the offender had the right and ability to control, regulate, or block the alleged infringing activity.  The plaintiff must also be able to show that the defendant derived a direct financial benefit from the acts of infringement on the part of its users, customers, contractors, or employees.  This financial benefit does not necessarily have to come from the actual sale or rental of copyrighted works, and can include just about any sort of financial income that can be somehow linked even tenuously to the infringing activity, such as the charging of a subscription fee, the collection of advertising revenue or even an exchange of goods and services that are associated in some way with the infringing activity.  Even if the availability of infringing material simply acted as a draw for customers, the defendant can still be held liable for vicarious infringement.  Even if the defendant charges no money at present but there is a hope or expectation to derive financial income in the future from the presence or support of infringement, there could be a judgment of vicarious infringement. 

 

A chain of department stores where a concessionaire was selling counterfeit recordings was held liable for vicarious copyright infringement[157].  The operator of a swap meet at which pirated records and software were being sold by third party vendors was held liable for vicarious copyright infringement, even though the operator was unaware of what was going on but had the ability to control vendor sales.  He derived a monetary benefit from the infringing activity since he charged money for attendance at the swap meet, and his swap meet had increased attendance due to the presence of the infringing vendors[158].  Even operators of entertainment venues such as dance halls have been held liable for infringing performances held by hired bands at their facilities. 

 

 

Federal Copyright Laws

 

Since the Constitution gives Congress the power to provide for copyright, Congress has passed several federal laws over the years that define the meaning of copyright more precisely and provide means for copyright enforcement. 

 

·         President George Washington signed the first copyright law in 1790[159] [160]. It was based largely on the 1710 Statute of Anne in England.   It applied copyright only to books, maps, and charts and set the copyright term to 14 years, renewable just once for another 14 years.  The term “book” was interpreted rather broadly--it included virtually all printed media, including sheet music.  The law was intended to protect authors of copyrighted works against others printing, reprinting, or publishing their works without their permission. 

 

A work did not necessarily have to be published in order for copyright to apply, but the law did require that the work be formally registered in order for it to receive any copyright protection, and it required that copies of the work be placed on file with the local district court.  The owner was then required to post a notice of this registration in a US newspaper for at least four weeks and was required within six months of publication to deposit another copy with the secretary of state. 

 

However, copyright protection was limited to American citizens, which made it legal for American printers to flood the market with cheap editions of leading British authors.

 

·         In 1802, the law was amended to give copyright protection to the design, engraving, and etching of prints.  The amendment also required that a copyright notice be placed on copies of protected works.

 

·         The first major revision of copyright law took place in 1831.   Copyright protection was extended to cover cuts and engravings.  The new law also arranged for musical compositions (but not performances) to be covered under separate statutory copyright protection.   The copyright term was extended to 28 years, with the possibility of a one-time renewal for another 14 years.  The law also allowed an author’s widow or children to file for a copyright renewal.

 

·         In 1856 the rights of public performance of dramatic works was added to those things protected by copyright—one could not make a public performance of a dramatic work such as a play without the consent of the copyright owner.  The music that accompanied a stage dramatic production was also given a right of public performance, which meant that this music could not be played in public without the permission of the copyright owner.

 

·         In 1865, photographs and negatives were given copyright protection.

 

·         In the second major copyright law revision, which took place in 1870, copyright functions were centralized within the Library of Congress.  Before that time, copyright claims had been recorded by Clerks of the US District Courts   Now, in order to obtain a copyright, the applicant had to register the work with the US Copyright Office by filling out a form and paying a fee.  In addition, a copy of the work had to be deposited with the US Copyright Office.  Paintings, drawings, chromolithographs, statues, and other fine arts were also given copyright protection

 

·         In response to complaints from English authors like Charles Dickens, who objected to the flood of cheap American knockoffs of his works for which he received no royalties, Congress passed the International Copyright Act of 1892, which extended copyright protection to foreign works.  Foreign authors were provided with copyright protection in the American market, provided that the author’s country provided equal protection to the works of American authors.

 

·         In 1895, the printing of government documents was centralized in the Government Printing Office.  In addition, the copyrighting of any government publication was prohibited.

 

·         In 1897, all music (not just the music that accompanied a dramatic production) was protected against unauthorized public performance.  You could not sing or play a song in public for profit without the permission of the song’s copyright owner.  However, non-profit music performances were specifically exempted from these restrictions.

 

·         In 1897 the US Copyright Office was established as a separate department of the Library of Congress.  The position of Register of Copyrights was created.

 

·         The third major revision of copyright law was the Copyright Act of 1909[161], which increased the copyright renewal term to 28 years.  The law broadened the subject matter of copyright to include “all the writings of an author”. 

 

It also added “copying” to the list of exclusive rights held by the copyright owner (along with printing, reprinting, publishing, public performances, and public displays).  The initial intention was that this new exclusive right to copy should refer strictly to one-of-a-kind works of art such as paintings, sculptures, and statues, but over the years it has expanded to include the copying of just about any kind of copyrighted art. 

 

The new law established a compulsory (or statutory) license system for the “mechanical recording” of musical compositions.  Before this time, piano roll vendors and recording companies were completely free to make and distribute mechanical recordings of copyrighted music without getting permission from anyone or paying any fees.  This was changed by the 1909 law—a system was established under which songwriters and music publishers were paid a fee whenever their music was recorded onto a mechanical medium such as a piano roll or a sound recording.   A government agency sets the amount of the royalty. A statutory licensing system enables someone to use a copyrighted work without having to go through the hassle and expense of obtaining the explicit permission of the copyright owner, provided that the specified royalties are paid. 

 

The 1909 Act specifically exempted coin-operated music machines (such as the devices that were popular in the penny arcades of the day) from having to make payments for the public performance of copyrighted music, so long as the premises on which they were located did not charge an admissions fee.  This later came to be known in copyright law as the “jukebox exemption”.[162]

 

The 1909 Copyright Act also introduced the concept of a corporate copyright.  Before that time, only individual authors could claim copyright on a work, although individual authors could and did license their works to publishers.  The 1909 act introduced the concept of “works-for-hire”, under which a corporation such as a newspaper could retain copyrights on news reports and articles that appeared in its pages, even if their employees had produced the actual work

 

The 1909 Copyright Act also provided that one could now obtain a copyright in two different ways—one being the familiar process of registering the work with the US Copyright Office, and a new process by which copyright was obtained by simply publishing the work with a prescribed copyright notice attached to it.  In either case, distributing the work without the copyright notice attached to it automatically forfeited the copyright. Registration was in any event necessary for renewal of a copyright.

 

One of the features of the 1909 act was the preservation of state copyright protection (known as common-law copyright) for unpublished works.  An author of an unpublished work could invoke state common-law copyright protection that prevented others from publishing or distributing the work without their permission.  This common-law copyright protection persisted until the work was formally published--once the work was published federal copyright protection was automatically obtained so long as certain formalities were adhered to, such as registration or the attachment of the prescribed copyright notice to the work.  Otherwise the copyright on the work was forfeited.

 

·         In 1912, motion pictures were given copyright protection.  Before that time, motion pictures had been previously registered as photographs.

 

·         In 1914, the USA formally adhered to the Buenos Aires Copyright Convention of 1910, which established joint copyright protection between the United States and certain Latin American nations.

 

·         In 1947, copyright law was codified into positive law as title 17 of the US Code.

 

·         In 1953, public performances for profit and the recording of nondramatic literary works were added to author’s rights.  These would include poetry, novels, and textbooks.

 

·         In 1955, the USA became a member of the Universal Copyright Convention, which had been signed at Geneva in 1952.

 

·         In 1971, the Sound Recording Act extended federal copyright protection to sound recordings.  This first became effective on February 15, 1972, and extended limited copyright protection to sound recordings that were fixed and first published on or after this date.  Before that time, the only copyright protection available for sound recordings was at the state level (usually involving antipiracy laws or unfair trade practice laws), and this varied from state to state.   Recordings created after 1972 are now protected by federal copyright, but those created before 1972 are still protected by state laws. 

 

The record label generally owns the copyright on the sound recording, and no one can distribute the recording or make copies of it without the permission of the record label.  However, public performance rights were not applied to sound recordings—when a sound recording is played in public, it is the songwriter that gets paid, not the performer or the record label.

 

·         The fourth major change in the copyright law was the Copyright Act of 1976,[163] which was intended to incorporate the advent of new technologies into copyright law.  It spelled out the rights of copyright holders, it formally defined what was meant by “publication”, it codified the idea/expression dichotomy and the doctrines of “fair use” and “first sale” (which had only been a part of common law before that time), and it changed the rules dictating the duration of copyrights.   The law went into effect on January 1, 1978.  It governs copyright in the United States today, along with several amendments that have been added in later years.

 

The law added a provision that copyright now applied to “original works of authorship”, which eliminated the necessity for Congress to rewrite the copyright laws each time a new medium was created.  This means that just about any form of creative expression is eligible for copyright protection, no matter what the medium.

 

For works created after the law went into effect in 1978, the new copyright law removed the requirement for publication or the registration of the work with the Copyright Office in order for copyright to apply.   After 1978, the only requirement for copyright to apply is simply that the work be fixed in some sort of medium where others can access it, whether published or unpublished.  The concept of state “common-law” copyright was abolished from that date onward, and was replaced by federal copyright--“publication” no longer served as the dividing line between state and federal copyright protection.   However, for works created prior to 1978, either formal registration or publication with a copyright notice attached was still required for copyright to apply.  

 

Even though registration was now optional, the 1976 Copyright Act required that the copyright owner deposit copies of their work with the Copyright Office within 3 months after publication.  Failure to do so could result in a fine, but would not invalidate the copyright.  There is no requirement to deposit copies of unpublished works.

 

The rules about copyright notices were also changed.  The copyright notice was still required on works published even after 1978--the federal copyright protection that was initially acquired when the work was fixed could still be lost if the work were later published without a proper copyright notice attached.  But there was some protection made available to careless or inadvertent errors on the part of publishers.  Under the new law, if a publisher failed to use the notice, the problem could be corrected at a later time without the publisher losing its copyright on the work.  However, a publisher was given only 5 years to cure any such errors; otherwise the copyright on the work was irretrievably lost.

 

The law also changed the rules used to determine the durations of copyrights.  Under the rules in effect prior to 1978, copyrights lasted for a fixed period of time based on the date of initial publication or registration—the duration of a copyright was 28 years, with the possibility of a one-time renewal for another 28 years. Under the terms of the new law, for works created on or after 1978, the copyright term was now based on the date of the creator’s death—works now had a copyright duration equal to the life of the author plus 50 years. 

 

“Works for hire” now enjoyed protection for 75 years from date of publication or 100 years from date of creation, whichever is shorter

 

Those works created before 1978 that were still under copyright when the new law went into effect and which were in their renewal term had their renewal term retroactively extended from 28 years to 47 years, which gave them a total of 75 years of copyright life following the date the initial copyright had been secured.

 

The owners of works that were still in their initial copyright term in 1978 could also apply for an extension term of 47 years, which gave them access to a total copyright term of 75 years as well.  But they had to actually apply for this renewal—it was not automatic.

 

The new law also added a provision that allowed library photocopying without permission for purposes of scholarship, preservation, and interlibrary loan purposes under certain circumstances. 

 

The law established a compulsory licensing system for cable TV, requiring cable TV operators to pay royalties to television broadcasters when they carried their programming.

 

The law exempted the need for a public performance license for music played on "a single receiving apparatus of a kind commonly used in private homes" and without a "direct charge" being made to listen to the performance.

 

Under the new law, non-profit performances were now also required to pay public performance royalties. The law also eliminated the “jukebox exemption”—the operators of coin-operated music players were now required to pay a compulsory license fee to perform the music “publicly”. 

 

·         In 1980, copyright protection was provided for computer programs.  The Computer Software Act defined what a computer program actually was and clarified the extent of protection afforded to computer software.

 

·         Copyright law was amended in 1982 to provide that people who infringe copyrights willfully and for purpose of monetary gain are guilty of a federal crime.

 

·         In 1984, Congress passed the Record Rental Amendment[164], which amended the 1976 Copyright Act to make it illegal to make phonograph records available for commercial leasing or rental without the permission of the copyright owner.  However, nonprofit libraries and nonprofit educational institutions were still allowed to lend out phonograph records. 

 

This law was passed to address recording industry concerns about illicit copies of the rented phonograph records being made onto magnetic tape.  It was feared that these copies would be reproduced and passed along to others, supposedly resulting in reduced sales of records. 

 

Nevertheless, the rental of videocassettes is still allowed, since another bill that proposed to apply the same restrictions to video rentals was defeated.

 

·         Also affecting copyright in the USA is the Berne Convention, which was an international agreement that was first adopted in Berne, Switzerland back in 1886.  It formed a framework for the international protection of intellectual property.  It requires the signatories to protect the copyrights on works of authors from other signatory countries.  It has been revised and amended several times. 

 

The United States initially did not sign on to the Berne Convention because some of its provisions conflicted with US copyright law as it existed at the time.  The US did not become a party to the agreement until Congress formally adhered to the Berne Convention on March 1, 1989. 

 

A major provision of the Berne Convention was the elimination of the requirement for the inclusion of a copyright notice on a published work in order for copyright to apply.   The inclusion of a copyright notice for works published after March 1, 1989 is now entirely voluntary, and the failure to include a copyright notice on a published work no longer runs the risk of copyright forfeiture. 

 

The Berne Convention also required that signatory nations pass laws requiring that all works except photos and movies shall be protected for at least 50 years after the author’s death, although individual signatories were allowed to set longer terms. 

 

There are some misunderstandings about what is actually required under the Berne Convention.  The Berne Convention prevents a signatory nation from imposing registration formalities on foreign works, but does not necessarily prevent that nation from imposing registration requirements on works created by its own citizens.  American copyright law actually does impose formalities on domestic copyright holders--for example, American copyright holders are required to register their works in order to be able to sue for copyright infringement, but foreign rightsholders are not subject to this requirement. 

 

·         In 1990, Congress passed the Computer Software Rental Amendments Act[165], which amended the 1976 Copyright Act to prohibit the commercial lending leasing, or renting of computer software without the consent of the copyright owner.  However, it did allow nonprofit libraries and nonprofit educational institutions to lend software, provided that the copy that was lent had a copyright warning attached to it. 

 

Behind the amendment was a fear that people would illegally copy rented software programs, or keep the software loaded on their computers after they returned the software to the lender. 

 

This amendment modified the first sale doctrine.  Heretofore, the first sale doctrine held that someone who had legally acquired a copyrighted work would do what they pleased with it, including lending it out to others.  Under the new amendment, commercial concerns which rented or leased computer software were now illegal.

 

·         The Architectural Works Copyright Protection Act of 1990 provided copyright protection for architectural works.

 

·         The Visual Artists Rights Act of 1990 applies some “moral rights” to authors of visual works of art.

 

·         The Copyright Renewal Act of 1992[166] amended the 1976 Copyright Act and reversed the long standing requirement that in order to secure a second term of copyright protection, the copyright owner had to formally renew the copyright with the Library of Congress. 

 

Although the Copyright Act of 1976 stipulated that the copyright duration for works created after January 1, 1978 should be the life of the author plus 50 years, works copyrighted in the USA before January 1, 1978 and which were still in their first term were still subject to a renewal system if the owner wanted a second term.  In order to receive a second term of 47 years, the copyright owner had to go through the steps of formally renewing the copyright.  This was all changed by the 1992 amendment, and the requirement for copyright renewal of works originally copyrighted between January 1, 1964 and December 31, 1977 was eliminated.  The date of January 1, 1964 was chosen, because this was the earliest date on which a work could have been copyrighted and still be in its first term in the year 1992. A second term of 47 years was automatically secured for such works.  Renewal registration for these works was made optional, but could still be done.  However, a copyright that was originally secured before January 1, 1964 and which had not been renewed by the year 1992 was lost—the protection would have expired at the end of the 28th calendar year of the copyright, and it could not be brought back to life.

 

·         The increasing popularity of digital music led to the Audio Home Recording Act [167] of 1992, which amended the 1976 Copyright Act to require that manufacturers and importers of digital audio recording devices and media pay royalties to music copyright holders, to compensate them for music that is presumably being copied at home.  The payments are made to the US Copyright Office, which then distributes the royalties accordingly.  Digital audio recording devices must also have the Serial Copy Management System (SCMS) that prevents serial copying (making copies of copies).  The law specifically permits consumers to use audio recording devices at home for noncommercial use without fear of being sued. 

 

The royalty requirements and the serial copying restrictions do not apply to computers, since their primary purpose is not to act as a digital audio recording device.

 

·         The Uruguay Round Agreements Act[168] of 1994 implemented in US copyright law the agreements resolved at the Uruguay Round of conferences held earlier that decade under the auspices of the General Agreement on Tariffs and Trade (GATT).   Representatives of GATT meet periodically to resolve tariff and trade disputes and to handle international disagreements about things like intellectual property. 

 

The URAA prohibited the unauthorized making or distribution of recordings of live music concerts, even when there was no other fixation going on during the concert.  This was designed to close a loophole in the copyright law, under which live music concerts that were not being recorded by the performers were unprotected by copyright law because they were not fixed in any tangible form.  This caused problems when bootleg tapes or recordings of rock concerts began to appear, since there was no cause for action under the Copyright Act of 1976. 

 

The courts have upheld the congressional implementation of this treaty as an exercise of Congress’s power to regulate interstate commerce rather than under the copyright clause of the Constitution.

 

The Uruguay Round also contained specific provisions that required the USA to restore full recognition to all foreign works that were still under copyright in their home countries but had lost their copyrights in the USA because of noncompliance with certain formalities in American copyright law such as registration or the inclusion of copyright notices.  All foreign works that had been exploited in the USA without authorization because of failure to comply with US formalities were restored to full copyright protection, effective January 1, 1996.

 

·         The Digital Performance Right in Sound Recording Act[169] of 1995 made it possible for recording artists and record labels, in addition to songwriters, to collect “public performance” royalties for the digital transmission of their sound recordings, such as that which takes place over satellite radio services, Internet music streaming services, and subscription digital cable providers that deliver music.  

This was a major change, since conventional AM/FM analog radio broadcasters need to pay public performance royalties only to the copyright owners of the songs that they play on the air, and not to the recording artists or the record labels.   The reasoning behind this change was that it now possible to make a copy of the digital music transmission that was just as good as the original, which could then be burned or recorded onto a blank CD.  This would compete in the marketplace with the original CD and thus eat into the profits of the recording industry.

 

The act also created a compulsory license mechanism for  digital audio transmissions, which allowed digital broadcasters to transmit music without needing to seek out explicit permission from recording artists or record companies, provided that the license fees are paid.  Music copyright owners still retained their preexisting public performance rights, payable through blanket licenses managed by performance rights organizations, but sound recording copyright owners now gained a public performance right for any sound recording performed by means of digital audio transmission.

 

·         The No Electronic Theft (NET)[170] [171] [172] Act of 1997 amended the US Code to permit felony or misdemeanor criminal prosecution of large-scale illegal reproduction of copyrighted works, even where the infringers had no discernable profit motive.  The law specifically included unauthorized electronic reproduction and distribution of copyrighted material as being subject to criminal penalties.

 

The law was designed to close a loophole in which someone who intentionally distributed copyrighted software over the Internet did not face any criminal penalties if they did not profit from their actions, although they could still be sued in civil court.  Excluded were reproductions that were not done willfully or that were small-scale non-commercial copying (copyrighted works with a total retail value of less than $1000.  Electronic copyright infringement carries a maximum penalty of 5 years in prison and a $250,000 fine.

 

·         The Fairness in Music Licensing Act[173][174] of 1998 increased the number of bars and restaurants that were exempted from needing a public performance license to play music or television during business hours.   The courts had interpreted the provision in the 1976 Copyright act that had exempted  the need for public performance licenses for music played on a “single receiving apparatus of a kind found in private homes” in widely divergent manners, leading to uncertainty for bar and restaurant owners who played music or television on their premises.  This led to widespread lobbying from restaurant and bar associations for a change in the law.

 

The new provision kept the 'homestyle' exemption of the original provision but added specific exemptions based on the type of establishment, the size of the establishment, and the type of equipment used to play music or television. Several studies have concluded that the Act exempts around 70% of eating and drinking establishments from paying public performance royalties for music or television being played in their establishments. 

 

·         In 1998, the Sonny Bono Copyright Term Extension Act[175] [176] added 20 years to the lifetime of all copyrights.  The copyright duration was now the life of the author plus 70 years.  Works for hire now enjoyed protection for 95 years from date of publication or 120 years from date of creation, whichever is shorter

 

·         In 1998, the Satellite Home Viewer Act[177] established a compulsory license system for satellite dishes, similar to that earlier established for cable TV.

 

·         In 1998, the Digital Millennium Copyright Act [178] [179] (DMCA) was passed.  This law made it illegal to circumvent a digital lock that a copyright holder used to protect their work against infringement or illicit viewing or listening.  The law also had a safe harbor provision in which Internet Service Providers (ISPs) are not themselves liable for copyright infringement on websites created by their subscribers, provided that the ISPs quickly remove or disable the offending websites immediately after receiving a notice from the copyright owner.

 

·         The Technology, Education, and Copyright Harmonization (TEACH)[180] act of 2002 was designed to clarify the role of copyright in online or distance education.  It expands the scope of educators’ rights granted in face-to-face classroom teaching into the realm of distance education.

 

·         In 2005, the Family Entertainment and Copyright Act [181] [182] [183] was passed.  It makes the use of a camcorder to record a movie in a theatre a federal crime.  It also makes it a criminal act to distribute a copyrighted work before it is released to the commercial market, such as the posting of new movies and songs on the Internet before they are released.  

 

The law also makes legal those video players that can be programmed to filter out objectionable scenes in DVD movies, and makes such players immune from copyright or trademark infringement lawsuits.  However, the law does not permit someone to create a new hardcopy of a sanitized movie or insert new video or audio material to replace the offensive content. 

 

The law also removes an inadvertent limitation on access by libraries and archives to works that are in the last 20 years of their copyright terms and that are not being commercially exploited.

 

·         The Enforcement of Intellectual Property Rights Act[184][185](formerly known as the Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act) passed Congress in 2008 and was signed into law by the President in October of that year.  The law increased both the civil and the criminal penalties for copyright and trademark infringement.  Punishments include not only the seizing of pirated copies but also seizure of the records documenting the manufacture, sale or receipt of pirated items, as well as any device upon which the copies are stored--previously, only the infringing items and things used to make the infringing items could be impounded. 

 

Any computer or piece of network hardware used to facilitate a copyright infringement could be seized by the Justice Department and auctioned off —the owner does not even need to be found guilty of a crime for his property to be seized. The law also says that copyright registration is not required in order for there to be criminal enforcement of a copyright.  

 

The law also creates a new executive branch office, the Office of the White House Intellectual Property Enforcement Coordinator[186][187], this office being modeled on the office of the US Trade Representative.  The function of the office will be to coordinate US domestic and international action to stop IP piracy by overseas operators, typically from China.  The effect of the law was to move the already existing International Intellectual Property Enforcement Coordinator from the Department of Commerce (US Patent and Trademark Office)  to the White House.

 

 

 

International Copyright

 

Copyright restrictions also apply in the USA to works created or published in a foreign country.  This protection is a result of a series of international treaty obligations, under which signatory nations have agreed to give citizens of other member countries the same level of copyright protection that they give to their own citizens.  

 

For many years, American copyright law had a significant loophole that allowed domestic publishers to freely pirate the works of popular English authors such as Charles Dickens, by putting out cheap editions for which the famous author derived no income.  By international agreement, this practice is no longer allowed, and Americans are obligated to respect English copyrights, so long as English publishers respect American copyrights.  For example, a British author such as J. K. Rowling is given the same degree of copyright protection in the US market as an American author such as Saul Bellow. 

 

The first such international agreement was the Berne Convention for the Protection of Literary and Artistic Works[188].  The Berne Convention was first formulated at the suggestion of the novelist Victor Hugo and was first accepted at Berne, Switzerland in 1886.  Since then, it has been revised several times.   Each nation that signs the Berne Convention agreement must guarantee to authors of other member countries the same rights of copyright protection that it grants to its own nationals.  It also requires that signatory nations must enact copyright laws that adhere to certain uniform standards, particularly in matters concerning copyright durations, the kinds of works that are protected, the moral rights of authors, along with the abandonment of requirements for registrations, deposits, and the attachment of copyright notices. 

 

For many years the United States had refused to ratify the Berne Convention, since adherence to the Convention would require major changes be made in US copyright law.   Congress would have to agree to lengthen copyright terms, it would have to abolish requirements for registration and the attachment of a copyright notice, and it would have to provide authors with “moral rights”.   Also reluctant to sign on were some developing countries that felt that that the Berne Convention unfairly favored the interests of copyright-exporting nations. 

 

Nevertheless, most of these nations, including the USA, still wanted to get involved in some sort of multilateral copyright protection, and a different sort of international agreement, known as the Universal Copyright Convention[189], was developed by the United Nations at Geneva in 1952 as an alternative to the Berne Convention.  The UCC was much less stringent in the requirements that it dictated about the copyright laws its member nations must pass.  The USA ratified the Universal Copyright Convention in 1972.  

 

However, over the years the USA did gradually change its copyright laws to bring them more into conformity with the requirements dictated in the Berne Convention, and the USA finally agreed to ratify the Berne Convention in 1989.   Most nations are members of both Conventions, which means that the UCC is largely irrelevant today.  As of 2008, 164 nations had ratified the Berne Convention.  The Berne Convention is administered by the World Intellectual Property Organization (WIPO)[190], which is an agency of the United Nations.

 

The General Agreement on Tariffs and Trade[191] (GATT) was established shortly after World War II to set up rules governing international trade among its members and to try and reduce tariffs, as well as to resolve trade and tariff disputes.  GATT never had any formal organizational structure, but its members regularly met in a series of trade negotiations (known as negotiating rounds) to try and straighten out trade disputes. 

 

A series of critical issues, including complaints from some member nations that their intellectual property was being widely pirated in many developing nations, led to the establishment of the Uruguay Round, which was held between 1986 and 1994.  One of the agreements worked out during the Uruguay Round was incorporated into US law in 1994, which added civil and criminal penalties for people who are caught “bootlegging” sound recordings of live musical performances, and it restored the copyrights of those works by foreign authors that were still under copyright in their home countries but which had lost their copyright in the USA because of failure to conform to certain formalities under American copyright law. 

 

The Uruguay Round culminated in a 1994 treaty that established the World Trade Organization (WTO)[192] as a replacement for GATT.   The WTO differs from GATT in having a definite organizational structure, and is based in Geneva, Switzerland.  The WTO currently has 146 members, accounting for about 97 percent of all world trade, and has as its goals the fostering of liberalized trade relations among its members.  The WTO acts as an overseer of a variety of treaties concerning international trade, and attempts to resolve trade disputes between nations.  It is currently hosting new trade negotiations, under the Doha Development Agenda, started in 2001.  

 

The WTO is extremely controversial and has been the subject of numerous demonstrations, some of them violent.  The WTO is accused of being the tool of the rich and powerful, that it is in the pocket of powerful multinational corporate interests.  The WTO is blamed for the destruction of jobs in high-wage nations by facilitating the outsourcing of jobs to low-cost nations, and is accused of facilitating the exploitation of low-wage workers in third world nations.  The WTO is also charged with ignoring the concerns of health and the environment.

 

The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was negotiated during the Uruguay round, and brought intellectual property questions into international trade issues for the first time.  One of the goals of the WTO is to bring intellectual property under common international rules, as well as to establish minimum levels of protection that each government must give to the intellectual property of fellow WTO members.  The TRIPS agreement calls for the WTO to attempt to resolve questions about the application of intellectual property rules in international trade disputes.  US representatives to WTO periodically complain about the violation of American intellectual property rights by other nations, particularly China, where bootleg CDs, software, and DVDs are readily bought and sold in the open market. 

 

WTO intellectual property rulings can sometimes be quite controversial.  Many observers have been critical of the organization as too heavily tilted towards the interests of large publishing, software, broadcasting, and recording companies, at the expense of ordinary users, viewers, and listeners.  On occasions the WTO has found a permitted use under national copyright law to be a violation of international trade treaty commitments—an example being a ruling that a US law which exempted small restaurants from having to pay public performance royalties was a violation of international treaties. 

 

There is yet another international organization dedicated to intellectual property issues, the World Intellectual Property Organization [193](WIPO).  WIPO was founded in 1967, and was originally developed out of a Berne Convention-created organization known as the United International Bureau for the Protection of Intellectual Property (best known by its French acronym BIRPI).   WIPO formally became a part of the United Nations in 1974.   It currently has 184 member states and is headquartered in Geneva, Switzerland.  WIPO is dedicated to the establishment of a viable international system to handle copyright, trademark, and patent matters and to the promotion of the protection of intellectual property throughout the world via cooperation among nations and through collaborations with other intellectual organizations.  It administers numerous international treaties dealing with various aspects of intellectual property protection, including the Berne Convention

 

There is some amount of overlap between WIPO and the WTO on intellectual property matters, and in 1996 the two agencies agreed to collaborate and cooperate with each other.  Like the WTO, WIPO has been accused of unfairly favoring the interests of large entertainment and publishing conglomerates.

 

Another international treaty is the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcast Organizations, first signed in 1961.  It is administered by WIPO.  Signatories agree to protect music performers or broadcasters of music against certain acts that they have not consented to.  Music performers are protected against unauthorized recordings of their live performances.  In addition, recording companies are given a public performance right—their permission is required whenever their recordings are played in public, either live or over radio or television.  Broadcasters are given a right of rebroadcast, fixation, reproduction, or public performance of their broadcast if it is made in a public place where there is an entrance fee charged.  Most nations have signed the Rome Convention.  However, the United States has not yet signed this treaty, which means that record labels or performers in the USA do not have a public performance right when their recorded music is played—only songwriters and music publishers have such a right.  This is a major point of contention and trade friction between the USA and Europe.

 

 

 

The Sonny Bono Copyright Term Extension Act

 

The Framers deliberately wanted copyrights to expire after a relatively short time, since they were afraid that eternal copyright terms might result in the publishing trade ending up as a system of hereditary privilege, somewhat like the printers guilds of seventeenth-century England, which tied up the rights to authors long dead and tightly controlled what could or could not be printed.  They thought that an infinitely long copyright term was a powerful tool of censorship, and they certainly didn’t want such a system here. 

 

The lifetime of copyright was originally set to 14 years in 1790, extendable by application for another 14 years.  Congress has generally increased the copyright expiration time over the years.  The 1908 Copyright Act extended the life of copyrights to 28 years, renewable just once for another 28 years.   In 1978, the law was changed to provide for protection lasting 50 years after the death of the creator of an individual work.   Works for hire had their lifetimes extended to 75 years.

 

The Sonny Bono Copyright Term Extension Act of 1998 was a law designed to bring US copyright terms more in harmony with those of Europe.  In 1996, the European Union had extended copyright terms from life plus 50 years to life plus 70 years.  Proponents of the law argued that a difference in the length of copyright terms between the USA and Europe would have an adverse effect on the international operations of the entertainment industry—works that are protected by copyright in one country might be in the public domain in others. 

 

The proponents of the law also believed that extending the duration of copyright protection would help American copyright owners protect their works in foreign countries and would provide more incentive for owners to digitize and preserve older works.  In addition, the Copyright Clause of the US Constitution was not considered to be an impediment, since even an absurdly long, but nevertheless finite, duration would still meet the letter of the Copyright Clause, so long as Congress was actually setting this new limit in order to promote the progress of the sciences and the useful arts.  Since people live longer nowadays, it was argued that an increase in copyright duration might provide an extra incentive for more works to be created.

 

Several large media corporations also lobbied for the law.  Under the copyright expiration terms set by the 1976 Copyright Act, in the late 1990s several large publishers and movie studios were faced with the imminent expiration of some of their copyrights on works that originated back in the 1920s and 1930s. Some of these copyrighted works still remained quite profitable for their owners.  Prominent among these was the Disney Corporation, which was faced with the imminent expiration on some of its early copyrights on Mickey Mouse.  If this were allowed to happen, Mickey Mouse would gradually move into the public domain and anyone would be free to sell Mickey Mouse T-shirts, mugs, cartoons, books, and other paraphernalia without having to pay the Disney organization a single dime, and the Disney organization would lose access to a revenue stream worth millions of dollars.  The Disney organization’s intense lobbying effort for the copyright extension law inspired the derisive nickname The Mickey Mouse Protection Act. 

 

The law’s chief sponsor was Sonny Bono, who was formerly a member of a husband-and-wife singing duet known as Sonny and Cher.  The two had a popular TV show back in the 1960s, and were the singers on several Top-40 hit records.  After the two split up, Cher went on to become an internationally famous movie star, and Sonny went on to become mayor of Pasadena and in 1995 he became a Republican congressman from California.  As a songwriter and filmmaker, he had favored increasing the copyright term even before his entry into politics.  Sonny Bono was killed in a skiing accident 9 months before the law was passed, and the law was named in his honor.  Mary Bono, Sonny Bono’s widow and successor in his House seat, was an enthusiastic supporter of the act, and noted that Sonny had actually wanted copyright terms to last forever, but was informed by his staff that this would be unconstitutional. 

 

The estate of the late composer George Gershwin also supported the act.  Another powerful supporter was Jack Valenti, president of the Motion Picture Association of America, the lobbying arm of the motion picture industry.  At the time, the entire country was distracted by the Bill Clinton/Monica Lewinsky matter, and there was little public debate or discussion of the legislation, and the bill was passed by both houses of Congress by a voice vote on October 7, 1998.  The President signed the act into law on October 27, 1998.

 

The Sonny Bono Copyright Term Extension Act of 1998[194] [195] [196] extended copyright protection for another 20 years for all copyrights.  The details of the law are fairly complex:

 

 

 

 

If these copyrighted works happened to be in their renewal terms at the time the Sonny Bono law went into effect, the renewal terms were extended to 67 years, making these works eligible for protection as long as 95 years following the date the copyright was initially secured. 

 

Works published or registered before January 1, 1978 that were still in their original term of copyright when the Sonny Bono law went into effect also had their terms extended to 95 years.  There is no longer any need to file any sort of renewal request in order to extend the original term to the full 95 years.

 

A 1992 amendment to the copyright law made renewals automatic for works published from 1964 through December 31, 1977.  

 

 

 

So copyright now lasts an obscenely long time, and you should probably assume that just about everything created after 1923 is still under copyright.  A summary of the current system for determining copyright durations is displayed in a flow chart on the Cornell University website.

 

Critics of the law regarded the legislation as little more than corporate welfare for powerful interests in the entertainment and content industries.  The law did little to protect individual artists, but it did a lot to enrich powerful media companies that hold the rights to their creations.  Very few works retain any commercial value after the first few years, and are usually pulled off the market by their owners after that.  Extending the copyright terms does little to enhance the value of these works, but for those few works that have retained their commercial value after half a century, extending their copyright terms can have great economic value.

 

The granting of two successive 20-year copyright extensions (one in 1976 and another in 1998) sets a precedent for the granting of infinite copyright terms “on the installment plan”—sometime in the next 20 years you can bet that the Disney organization’s lobbyists will be back before Congress, asking for yet another extension.  This nullifies the spirit if not the letter of the Constitutional requirement for limited copyright terms.  In addition, it is difficult to see how a retroactive copyright term extension will inspire any new creativity— George Gershwin certainly isn’t going to be writing any more music, no matter how often his copyright terms get extended.  Retroactive copyright extension is more likely to favor the creation of a wealthy parasitic class, living off the proceeds of the original creation, with children, grandchildren and even great-grandchildren still reaping the rewards from the work’s creator, now long since dead. 

 

Eldred vs. Ashcroft

 

Eric Eldred[197], a retired computer programmer from New Hampshire, has as a hobby the online posting of works that have recently entered the public domain.  He got his start when he put up a website on the Internet for his teenage daughters, on which he posted copies of classic public domain literary texts such as those by Nathaniel Hawthorne, hoping that they would get interested in them.  His site eventually became popular for students around the world and he received a commendation for his work from the National Endowment for the Humanities. 

 

Robert Frost’s poetry collection New Hampshire was slated to enter the public domain in 1998, and Eldred was anxious to post it on his website.  However, the Sonny Bono Copyright Term Extension Act had the effect of extending the copyright on the Frost poetry collection for another 20 years, which meant that it would not become available until 2019 at the earliest. 

 

Eldred decided to fight this law.  He first thought about performing an act of civil disobedience, by going ahead and publishing the Frost collection on his website anyway.  However, it was pointed out to him that the No Electronic Theft Act of 1998 would have made such an action a federal crime.  Since the prospect of doing time in a federal prison was not all that attractive to him, he decided instead to challenge the retroactive copyright extension in court.  He claimed that this retroactive extension deprived him of his First Amendment rights and also abandoned the Constitution’s clear intention of allowing only “limited” copyright terms. 

 

Lawrence Lessig, a Stanford University law professor, represented Eldred.  Eldred was joined in his action by a group of commercial and nonprofit interests who rely on access to the public domain for their work.  Examples were Dover Publications, a publisher of scientific and academic paperback books, most of which have recently entered the public domain, as well as restorers of films from the 1920s and the 1930s, and publishers of orchestral sheet music.  Arguing in favor of the law was the US government, represented by the Attorney General, supported by powerful interests in the motion picture and recording industries.

 

The case was Eldred vs. Ashcroft[198].  The United States District Court for the District of Columbia heard the case.  The plaintiffs argued that by retroactively extending copyright terms, Congress had violated the intent of the Copyright Clause in the Constitution, since by allowing any number of retroactive extensions; Congress could in practice guarantee an unlimited period of copyright protection.  The plaintiffs also argued that any copyright law must be subject to scrutiny under the First Amendment in order to insure a balance between freedom of speech and the interests of copyright—they argued that the law violates the First Amendment by continuing to prevent published material from entering the public domain.  In addition, the plaintiffs argued that the doctrine of public trust requires that the government must show that any transfer of public property into private hands benefits the public in some manner. 

 

In response, the government argued that Congress can retroactively extend terms as often as it likes so long as the individual extensions are all for limited times.  Also, the original copyright law of 1790 had applied copyright protection to existing works.  Furthermore, copyright terms had been extended by Congress several times in the past, so there was plenty of precedent.  The government also argued that neither the First Amendment nor the doctrine of public trust are applicable to copyright law.

 

On October 28, 1998, the District Court judge rejected all of the plaintiffs’ arguments.  The judge concluded that Congress had the power to extend copyright terms however it liked, so long as the terms themselves were of limited duration.  The judge also rejected the notion of any First Amendment scrutiny in copyright cases.  This rejection was based on the Harper and Row vs Nation case, the notion being that copyright law does not attempt to regulate ideas, only the specific expression of ideas.  Also, the judge ruled that the public trust doctrine was not applicable to copyright law.

 

The plaintiffs appealed to the Court of Appeals of the District of Columbia.  The plaintiffs extended their argument to point out that the Copyright Clause in the Constitution requires that copyright must promote the progress of science and useful arts, and argued that retroactive extensions do not directly serve this purpose.  The Appeals Court upheld the district court decision in a 2 to 1 opinion.  The court concluded that Congress had used its powers to extend the duration of existing copyrights several times since 1831, and none of the previous extensions had been challenged in court.

 

The plaintiffs then appealed to the Supreme Court, and the Court agreed to hear the case.  Lawrence Lessig was Eldred’s lawyer, and Solicitor General Theodore Olson argued the government’s case.  Lessig refocused the case on the limited times aspect of the Copyright Clause, plus the first Amendment argument. 

 

On January 15, 2003, the Supreme Court ruled[199] 7 to 2 that the Sonny Bono copyright extension act is constitutional.  The majority opinion argued that retroactive extensions had been done in 1790, 1831, 1909, and in 1976, so there was plenty of precedent.  The majority opinion was that Congress has the right to determine exactly what the word “limited” means in the copyright clause.  The Court also held that the extension of existing and future copyrights does not violate the First Amendment, since copyright can only be used to restrict the particular expression of an idea, not to restrict the idea itself. 

 

Lessig later wrote[200] that he regretted basing his case on rather narrow legal arguments rather than attempting to demonstrate that weakening the public domain would cause economic harm to the country.  However, even the majority opinion conceded that an excessively-long copyright did not necessarily serve the interest of science and the useful arts, only that Congress had the right to set the expiration term to anything it desired.

 

 

Orphan Works

 

“Orphan” works[201] [202] [203] are those works of art which still fall under copyright, but for which the copyright owner no longer exists or is hard or impossible to find.  Examples might be works whose authors have moved somewhere else and left no forwarding address, works by authors who died a long time ago and which are now owned by heirs or estates, or works owned by corporations that went out of business many years ago or by organizations that no longer exist.  In any case, these works no longer retain any commercial value and were withdrawn from the marketplace long ago by their owners, and are no longer available in any form.  Nevertheless, copyright protection may still be applicable to these orphan works, and you could still be sued by an irate rightsholder if you re-use these works without obtaining permission.  Unfortunately, one sure way to find a missing copyright owner might be to go ahead and infringe on their work, and then first find out that they still exist when they sue you in court. 

 

But it is often quite difficult and expensive to locate the copyright holders of some of these older works.  Because the cost of finding the owner is so high, creators can’t build on orphan works, and can’t run the risk of converting them to new formats.  Prime examples of orphan works are old movies from the 1920s and the 1930s, many of which are sitting in a can somewhere, slowly crumbling away.  Noone dares save these movies in digital form for fear of violating someone’s copyright and getting sued, and it costs too much to find out whom if anyone owns the copyright.  These old movies are frozen into a sort of legal limbo until they finally enter the public domain, and recent extensions of the copyright expiration term have greatly lengthened this period.  By the time that their copyrights finally do expire, these films will likely have turned to dust and be lost forever. 

 

Archivists, historians, and others interested in preserving these works for posterity are locked out for no good reason.  The high cost of locating the owner of these abandoned works is contrary to the Constitutional intent of copyright; it decreases the incentive to create derivative works, and prevents historians and artists from being able to exploit them.

 

The Public Domain Enhancement Act [204] [205] was a proposed law introduced before Congress by Zoe Lofgren (D-CA) and John Doolittle (R-CA) in 2003 to modify the Sonny Bono Copyright Term Extension Act so that any work over 50 years old would have to have its copyright renewed once a year by paying a small fee.  This renewal procedure would make it a lot easier for potential users to find the owners of these older works.  Any work over 50 years old that is not renewed would then automatically pass into the public domain, and would be free for anyone to use.  While imposing essentially no cost on the owners of commercially valuable copyrights, it would reclaim for the public domain the vast majority of works that have retained no commercial value after 50 years. 

 

The bill was introduced in the House as H.R.2601, but it got bottled up in committee and did not pass.   It was reintroduced as H.R.2048 in 2005, but developed no traction and died again.  One of the problems with the bill was the reintroduction of registration requirements, which would run afoul of the Berne Convention, which prohibits formalities such as registration or the inclusion of copyright notices as requirements for copyright protection.

 

The US Copyright Office began studying the whole “orphan works” issue, acting on a request from Senators Orrin Hatch and Patrick Leahy of the Senate Judiciary Committee.  In January of 2006 the Copyright Office issued its report[206] to the Committee.  The report was a long and comprehensive document that clearly confirmed that there is indeed a problem with orphan works and that something should be done to make them more accessible for preservation.  The report also issued some proposals for legislation that would correct the problem.

 

In May of 2006 Congressman Lamar Smith (R-TX) introduced HR.5439, the Orphan Works Act of 2006[207], which incorporated many of the Copyright Office’s recommendations.  The Act recommended that a copyrighted work be deemed an orphan if the copyright owner cannot be located after a “reasonably diligent search”.  If the rightsholder can’t be found, then the copyright owner’s rights will be curtailed and the user will be free to do as they please with the work.   The Copyright Office would be charged with the task of developing procedures and protocols for the establishment of some sort of registry of copyrighted material, one that would be easily searchable by people trying to locate copyright owners.   The bill sought to limit the liability for artists who made a “reasonably diligent search” in their attempt to find the copyright owner but were unsuccessful in doing so.  Under the provisions of the bill, the artist who goes ahead and re-uses an orphan work after performing such a “reasonably diligent search” without finding the copyright owner can avoid the payment of statutory damages or attorney’s fees should the rightsholder subsequently emerge and file a lawsuit.  However, the user should be required to pay a “reasonable compensation” to the orphan work’s owner.

 

Unlike the Loftgren/Doolittle bill, the orphan works proposal would apply to all copyrighted works foreign and domestic, as well as published and unpublished works.   The proposal has been criticized[208] on the basis that it applies to all copyrighted works, not just those deemed to be “older” than a certain number of years.  The Act might be particularly unfair to authors whose works were produced after 1978, when the requirement for formal copyright registration was eliminated and copyright protection became automatic as soon as a work was fixed into some definitive form. 

 

Currently, authors and artists don’t have to be concerned very much about formalities, since copyright protection is automatic and a copyright cannot be lost simply because a rightsholder missed a deadline or filled out a form incorrectly.  Under the current system, an author certainly doesn’t have to worry about whether or not they can be located by people who want to obtain their permission to copy, or reuse their work--whether or not someone can find you does not matter, since they are still not allowed to use your work without your permission.  The new system would impose an additional formality on copyright owners that they did not anticipate when they first created their works.  A copyright owner will have to take additional steps to make sure that potential users will be able to contact them to request permission--how is it possible for a copyright owner to make absolutely sure that they can be found after a “reasonably diligent search” and that they won’t lose their copyright because they have omitted some obscure but important step in the process?   This new system will add new costs and new hassles to the creative process and will probably be a full-employment act for copyright lawyers, since they will have to be consulted by artists and authors at all steps in the process. 

 

In September of 2006, the Smith bill was withdrawn, but in April of 2008 a broadly similar bill, HR.5889, the Orphan Works Act of 2008[209], was introduced in the House by Rep. Howard Berman (D-CA).   A similar bill was introduced by Sen. Patrick Leahy (D-VT) in the Senate: S.2913, which was later renamed the Shawn Bentley Orphan Works Act of 2008[210].    Shawn Bentley was a former staffer to Sen. Orrin Hatch of Utah, and he had been quite active in helping to formulate intellectual property legislation before the Senate.  He died in 2005.

 

Both these bills proposed that the Copyright Office create and maintain an electronic database of pictorial, graphic, and sculptural works,  and post the list on the Internet, where it could be easily searched.   The owners of all copyrighted works would be encouraged to register their works with this database, so that they could be easily found if an artist wanted to get permission to use their works.  The House version of the bill requires that those seeking to re-use a work whose owner cannot be found must first file a “Notice of Use” with the Copyright Office.  The Senate version adds a requirement that re-users of orphan works will have to attach a special symbol to their works.  This symbol will be created by the Copyright Office.  Both of these bills were strongly supported by libraries, but created a storm of protest from artists’ rights societies, which claimed that the proposed laws would have a negative effect on the ability of painters and illustrators to make a living from selling copies of their works[211].

 

The House version (HR 5889) died in committee and never passed the House.  The Shawn Bentley Orphan Works Act version passed in the Senate on September 26, 2008, but it failed to pass in the House. 

 

Along the way, these bills had aroused strong opposition from visual artists as well from some copyright reformists such as Professor Lawrence Lessig.  A lot of artists denounced these bills as nothing less than a legalization of the theft of their works by large corporations.   They worry that if they make their works generally available to the public, unscrupulous individuals or corporations will reuse them without permission, and would be able to avoid an infringement action by simply claiming that the copyright owner “couldn’t be found”.  A lot of people thought that these bills would add a lot of extra hassles for copyright holders, without providing much if any benefit to those who want to reuse orphan works.  For example, artists would have to take additional steps to make sure that they could actually be found after a “reasonably diligent search”, so that their works wouldn’t fall onto an orphan list if the search failed. 

 

In order to protect themselves, artists would probably need to register their works with the proposed electronic database of works, and would probably have to pay a fee to do so, adding an extra cost and hassle that they did not anticipate when they originally created their works.  Does an artist who fails to list their work in this database somehow lose their full rights under copyright if someone else goes ahead and reuses their work without permission?  There is also the potential for a large amount of legal confusion--the person attempting to make use of an orphan work would have to be prepared to prove in court that they had indeed made a “reasonably diligent search’ and that their copying was not an infringement. 

 

 

The Undead Copyright

 

Once a work has entered the public domain, will it stay in the public domain forever, or can someone at a later time come along and put it back under copyright?  The answer is generally no--someone cannot come along at a later time and reinstate copyright on a public domain work.  Once a copyright has expired, it stays expired and cannot be restored.  Like a diamond, the public domain is forever.  Even if somebody republishes the work, it still remains in the public domain and can be freely used by anyone without getting permission or paying any fees. 

 

However there is an important exception to this rule, involving works created or published in other countries that had gotten cast into the public domain in the USA because they had failed to comply with some of the earlier formalities of American copyright law such as registration or the attachment of copyright notices.  The Uruguay Round Agreements Act (URRA) passed by Congress in 1994 codified an agreement reached by the Uruguay Round of the General Agreements on Tariffs and Trade (GATT), under which those foreign works that had lost their copyrights due to noncompliance with US formalities had their copyrights fully restored, being given copyright terms equal to what they would have had if they fully complied with all US formalities.  The URRA became effective January 1, 1996.   These foreign works that were brought back under copyright are known in legal parlance as restored works[212]. 

 

So a lot of foreign works that had been in the public domain in the USA were suddenly thrust back under copyright--it is now very unlikely that any work first published abroad within the last 50 years will be in the US public domain.  As of January 1, 1996, anyone who uses a restored work without permission can be sued for copyright infringement.  But not all foreign works had their copyrights restored—those foreign works that had already gotten a full term of copyright protection in the US and whose copyrights had already expired were not restored, nor were those works what were already in the public domain in their source countries.  So how can you tell if a foreign work has had its copyright restored?  Copyright restoration is automatic, no documents have to be filed, and there is no list anywhere of restored works.  So it can take quite a bit of legwork to determine whether a work originating from outside the USA is in the public domain.


What about people who had begun using these works before the URAA was enacted, relying on the fact that they were public domain works?  Such people are known in legal speak as reliance parties.  What they were doing was perfectly legal at the time, and it would certainly be unfair if they could now be sued because of an inability to predict the future.  The URAA requires that the owners of these restored copyrights have to inform the reliance particles if they intend to enforce their rights.  They can do this in two different ways.  They can do this by providing an actual notice to the specific reliance party, or they can file a notice of intent to enforce a restored copyright with the US Copyright Office.   The Copyright Office does maintain a list of notice of intent filings, which can be useful in investigating the public domain status of a work first published outside the USA, but one has to remember that restoration is automatic, and that the list includes only those parties who have given notice that they intend to enforce their copyrights.

 

However, in April of 2009 a Federal court ruled[213] that Congress had overstepped its authority when it restored these foreign works to copyright protection.  The case originally began when a music teacher who had been freely using Prokofiev sheet music suddenly found that he had to pay performance fees and sheet music rentals as well as other royalties when the music reverted to copyright. The Center for Internet and Society filed a lawsuit in 2001 on behalf of the teacher and others, asking that the URAA be declared unconstitutional.  In 2005, the US District Court for the District of Colorado issued a judgment against the plaintiffs.  However, the 10th Circuit Court of Appeals in 2007 [214] said that the case should be sent back to the original court and be reconsidered on First Amendment grounds. 

 

In 2009, the federal judge who had overseen the first trial changed his mind and agreed that the URRA was indeed in violation of the First Amendment.  The ruling was based on something that the Supreme Court had said when it handed down its ruling in the Eldred vs Ashcroft case.  Although the Court had ruled that the idea/expression dichotomy and the availability of the fair use defense generally make copyright law immune from First Amendment scrutiny, the justices added a statement which said that Congressional copyright action could be overturned if it “altered the traditional contours of copyright expression”.  The District Court agreed that the URRA had indeed done just that.  The tradition in the United States is for all creative works to eventually revert to the public domain and to remain there for perpetuity.  By removing works from the public domain and putting them back under copyright, the URRA hampers free expression and undermines the values that the public domain is designed to protect.

 

But the case was appealed to the Supreme Court, and on January 18, 2012 the Court upheld the URRA in a 6-2 decision.

 

 

Who Owns H. P. Lovecraft?

 

Controversy has arisen over the ownership status[215] of some of the works of the supernatural horror author H. P. Lovecraft, who died in 1937.  Lovecraft has gotten more popular with each succeeding year, with his novels and short stories still being valuable commodities that have been republished numerous times.  In addition, characters, themes, and situations from Lovecraft’s novels and short stores have found new expression in a variety of media, including television, music, short stories, video games, online websites, and movies, and numerous authors have created pastiches based on his work.  The copyright status of the original Lovecraft works is relevant here, since any and all of these activities done without the consent of the copyright holder might be a copyright infringement, which could subject the offender to civil or even criminal penalties.

 

Lovecraft himself was quite generous with his creative works, and he freely invited other authors to write sequels, adaptations, or other sorts of derivative works using situations and characters from his works--the fictional book The Necronomicon, the non-existent school Miskatonic University, the imaginary town of Arkham in Massachusetts, and the so-called Cthulhu Mythos surrounding the Great Old Ones and the gods Cthulhu ,Yog-Sothoth and Him Who Is Not To Be Named, being prime examples.  But Lovecraft is dead, and his heirs, his estate, and the people who currently own his copyrights might be not nearly so generous.

 

But does anyone still own H. P. Lovecraft?  Clearly, anything that Lovecraft published before 1923 is now in the public domain, and is completely free for anyone to use in any manner whatsoever.  However, many of his works published after 1923 have an ambiguous copyright status.  Some of them might actually be in the public domain because they were published without the required copyright notice attached.  Others may be in the public domain because their copyrights were not renewed in a timely fashion under the rules in effect at the time.  Most of Lovecraft’s stories were published in magazines, and although the magazines renewed their copyrights it is not clear if a magazine renewal also covers the individual articles and stories in the magazine.  Dedicated searches of the records have failed to find any valid copyright renewals for these individual stories, and this might mean that they are all now in the public domain.  

 

However, there is a possibility that the Arkham House publishing concern had secured the necessary copyrights from Lovecraft’s magazine publishers and from his heirs, and the Arkham House publisher now claims ownership of Lovecraft’s copyrights.  August Derleth, one of the original founders of Arkham House, was a friend of Lovecraft and he also contributed to the Cthulhu Mythos by writing pastiches of Lovecraft’s works.  Derleth claimed that he had acquired control over Lovecraft’s works, and the Derleth estate claims ownership of Lovecraft’s literary material, including all his unpublished works. 

 

Even if someone can prove that he or she owns Lovecraft, it is still not certain if the copyrights on Lovecraft’s works are still valid.  If Lovecraft’s works are now all in the public domain, even someone who still “owns” his creative works cannot prevent others from republishing his stories, from writing sequels or derivative works, or even from creating video games based on the Cthulhu Mythos.   All of this controversy has caused numerous suits and countersuits, and the issue still stands unresolved today.  Although you will find copies of Lovecraft’s works all over the Internet, the legal status of these copies is unclear.

 

 

The I Have A Dream Speech Copyright Hassle

 

A controversy arose about the copyright status of the famous Martin Luther King “I Have A Dream” speech, delivered on the steps of the Lincoln Memorial on August 28, 1963 and reaching a large audience, both live and televised.  About a month after the speech, Dr. King took steps to secure federal copyright protection under the provisions of the law that were in effect at the time (the Copyright Act of 1909), and he later filed suit to prevent the unauthorized sale of recordings of his speech. 

 

In 1996, CBS produced a video documentary that used, without authorization, major portions of the speech.  CBS argued that by performing his speech in public Dr King had effectively granted it to the public domain, and that Dr. King’s attempt to obtain statutory copyright protection a month later was invalid because the speech had already been forfeited to the public domain.  The King estate disagreed and immediately filed a lawsuit.  

 

The lawsuit hinged on the precise legal meaning of “publication”.  The 1909 Copyright Act had not actually formally defined the term “publication”, and it was left to the courts to figure out what it actually meant.  Over the years, state and federal courts had devised a number of rules to handle cases involving disputes over when publication had actually taken place.  One of the more important rules was a stipulation that an author received state common law protection upon creation of their work—this protection forbade anyone else from publishing the work or publicly distributing it without the author’s consent.  This common law protection persisted until the moment of “general publication” by the author.  Once general publication takes place, state common law protection is lost and the work is automatically forfeited to the public domain unless the author conforms to federal copyright requirements by either registering the work or attaching the required copyright notice. 

 

Over the years, the courts developed a distinction between a general publication and a “limited publication”--a general publication takes place when a work is made available to the public at large without restriction, and a limited publication takes place when the work is communicated to only a select group for a limited purpose and without the right of reproduction, distribution, or sale.  Only a general publication without a copyright notice attached resulted in a forfeiture of common law copyright.  

 

The 11th Circuit Court of the US Court of Appeals[216] ruled that the public performance of the King speech did not in and of itself constitute a “general publication” and by giving this speech in public he did not forfeit his copyright on it.  A public performance, no matter how broad the audience, does not count as a general publication.  Even Dr. King’s distribution of written copies of his speech (without a copyright notice attached) to the news media was merely a “limited publication” because it was for the purpose of enabling the reporting of newsworthy event and was not a distribution to the general public.  So the King estate can still charge a license fee for redistribution of his speech, whether in a TV program, a history book, or in a dramatic re-enactment.

 

 

 

Digital Rights Management[217]

 

Unlike analog copying, digital copying is perfect, and the nth serial digital copy is just as good as the original.  It costs almost nothing to make a digital copy, and it is very easy to transfer it to others over the Internet.  A lot of copyright owners are reluctant to release their content onto digital media (CDs, DVDs, Internet, cable, HDTV, etc) because of a fear that widespread copying and sharing will eat into their profits.  In order to increase their profits and to prevent infringement, rightsholders would like to be able to control or restrict viewing, copying, printing, sharing, transmission, and altering—they want to be able to regulate or restrict just about anything you can possibly do with digital content.   Digital Rights Management, or DRM for short, is a technological means by which the copyright holder can do just that.

 

Digital Rights Management is sort of an Orwellian term--it is a euphemism that hides some rather unpleasant realities.  It is like “Force Management”, which is a corporate euphemism for mass firings and layoffs.  The military is replete with euphemisms like this—“Collateral Damage” is when bombs hit innocent civilians, and “Friendly Fire” is when your own troops are killed by mistake.  The Digital Rights Management term sometimes implies that it is your rights that are being managed, and you are presumably supposed to feel all warm and fuzzy about that.  But it isn’t your rights that are being managed; it’s the rights of the copyright owner.

 

The primary application of Digital Rights Management is to provide a technological means by which content industries can lock down their copyrighted digital material and protect it against infringement and from illicit viewing.  It typically includes the incorporation of copyguards and encryption to prevent the illicit copying of digital media.  It also includes the use of things like digital watermarks to detect any illicit use of the product, and can include the use of the Internet to track the use of the product.  It can also include technical restrictions on the types of devices upon which the digital media can be played, supposedly in order to make it more difficult for miscreants to copy, duplicate, and share material with others.  DRM can also include technical means by which nonpaying customers can be prevented from viewing premium content such as HBO or pay-per-view channels on cable TV, or it can include means by which paying customers can be prevented from copying the premium content and passing it along for free to others. 

 

Other DRM applications have little or nothing to do with the prevention of copyright infringement, but are employed to prevent users from doing things with the product that the vendor doesn’t like, especially those things that might eat into the vendor’s profits.  DRM can be used to prevent you from viewing content you have legally purchased on a medium that is not approved by the content’s vendor--DRM can be used by businesses to lock their customers to a particular platform, as Apple has done with its iPod/iTunes product.  A software vendor such as Microsoft could use DRM to require that their customers use only those applications that are approved by the company or only those in which they have a financial interest.  DRM can be used on a DVD or Blu-ray to prevent you from skipping over the advertisements, the trailers, and the copyright notice.  DRM can also be used by a manufacturer or vendor to require that customers who buy their products must use only certain other products in conjunction with them, such as an inkjet printer vendor requiring that their customers use only their brand of replacement cartridges.  DRM can be used to prevent you from moving your content from one medium to another, for example it could prevent you from saving streaming content onto your hard drive for later viewing or listening.  It could also prevent you from transferring copies of your legally-purchased music onto your computer hard drive or could prevent you from burning your own music onto a CD-R.  It could even prevent you from printing out a hard copy of an electronic file and could prevent you from taking small parts and copying them into other media. 

 

Other DRM techniques are designed to make it possible for vendors to introduce new business models that have the potential to increase their profits.  The possibilities are limitless.  For example, DRM could be used by businesses to introduce services that can discriminate on the basis of price, by region, by device, or even by user.  For example, DRM systems could enable copyright holders to make different versions of their works available with different functionalities for a range of prices—for example, a motion picture company could put out a DVD or Blu-ray movie that could be played only once for a lower price, but could be played multiple times if the customer paid extra, or they could perhaps put several versions of a movie on the same disk—an adult version that you and your spouse could watch, along with a cleaned-up and censored version that you wouldn’t be afraid to let your kids watch.  Perhaps a studio could introduce an interactive version of a movie, with multiple plots and multiple endings, so that the viewer could control the action and choose how the movie evolves on the screen.  A DVD or Blu-ray movie could be offered for a low price that had unskippable advertisements interspersed throughout, but for a higher price the customer would be offered the capability of avoiding the commercials.  An online music provider could offer for a low introductory price a streamed version of a song that could be only listened to once, but for an extra price the provider would allow the customer to save a copy of the song on the hard drive of their computer, and for an even higher price would allow them to burn the song onto a CD.  

 

DRM could be used to impose a “pay-per-view” regime on purchasers of DVDs, Blu-rays and CDs, in which the vendor could charge the customer for each and every time that they viewed or listened to the material—you would have to ask permission from the vendor and pay a fee if you wanted to listen to your music or watch your movie again.  It could also make it possible for a vendor to impose the terms of a “shrink wrap” license on an e-book, DVD, Blu-ray, or CD, enforcing a wide range of restrictions on what a customer is allowed to do with the product. 

 

Vendors could even use DRM to spy on their customers.  For example, CDs and movie disks might come with stealth spyware embedded in them--every time that the customer played the CD or the DVD on their computer, a report would automatically be sent back to the vendor so that the customer could be targeted for commercials and advertisements.  The customer may be required to yield up a lot of personal information as a price of using the product at a certain lower rate.  Another possible business model would be that the customer, before being allowed to view the movie disk on their PC, would be forced to “sign” a contract that allows the vendor to frisk through the contents of their hard drive so that advertisements can be targeted based on what is found there, or even for the customer to be “punished” if something is found there that the vendor does not like, such as a file illegally downloaded from a peer-to-peer network.

 

In the future, you may not actually own the media that you purchase, but you will only have a license to view the material, subject to a whole series of intrusive vendor-imposed restrictions that prevent you from viewing it more than once, that prevent you from giving or selling it to others, and that prevent you from moving it from one medium to another.

 

Watermarks

 

There are several technological means by which DRM can be applied.  One DRM technique is digital watermarking.  In this, extra data is placed on a digital audio or video program or on a digital photograph that can be used to uniquely identify its copyright owner, so that its transmission or copying could be traced.  The watermark doesn’t distort or alter the content and is invisible to users.  The presence of a digital watermark could be used to identify who owned the copyright on the original and could be used to prove a charge of copyright infringement in court.  Copyright owners could use watermarks to track down all illegal copies of photos, music, or videos posted on the Internet and when they find them, take appropriate legal action.  It could deter piracy by ensuring that any time a copy shows up later, it can be traced back to the original owner.  The watermark can also be used to determine if the file has been processed or distorted in any way. 

 

Other applications of watermarks are deliberately designed so that they will not survive copying and will be difficult to recreate—if the watermark is missing or is somehow distorted, this will prove that the file is not the original. 

 

The presence of a watermark cannot in itself prevent copying, but it does allow any copying to be tracked to the source or it could help to distinguish copies from the original.  In addition, the presence of a digital watermark could be used to act as a trigger, and devices could be pre-programmed to look for the watermark and act in certain ways, depending on the rules imposed by the rightsholder.  For example, recording devices could be programmed so that they would refuse to make a copy of the original when the watermark is present

 

Copyguards

 

Other DRM techniques involve the use of  copyguards to prevent unauthorized copying and sharing.  There is a long history of software vendors such as Microsoft or Adobe trying to prevent their customers from making illicit copies of their software and sharing them with others.  Software vendors initially placed copyguards on their software disks to prevent duplication.  Copyguards proved to be relatively ineffective, since most schemes were easy to crack by determined pirates.  In addition, copyguards were a customer dissatisfier, and antagonized legal users since it prevented them from making backup copies of their software (which is perfectly legal to do).  In addition, some copy protection schemes actually damaged other software on the system or even caused computers to crash. 

 

Registration

 

Nowadays, most software relies on registration to prevent illegal copying and to stop customers from passing along the disk to their friends who haven’t paid for it.  When you install the software, you must enter a registration number, which is supplied on a certificate inside the box.  Sometimes the registration must be done online.  There is often a hologram attached to the certificate to ensure that it is genuine and not an illicit copy.  Registration of the product is often a prerequisite to receiving customer support or upgrades.  If you don’t know the registration number, you will not be allowed to install the software.

 

Windows XP® had a rather intrusive DRM scheme that prevented the user from installing a copy of the operating system on more than one machine at a time.  During installation, the setup procedure examined the CD and computed a special secret identifier from the system time and data about the computer’s internal parts and sent this identifier, along with the 25-character product code, over the Internet to Microsoft.  This bonded the operating system to the user’s computer.   If you tried to install the same copy of the operating system on another computer without uninstalling the first one, Microsoft could quickly determine what you are up to and would lock you out.  However, such a DRM system might have unintended side-effects that would antagonize legal users--I suspect that there would be problems if your computer crashes and you have to reinstall everything.

 

Copyguards on Analog VHS Video Tapes

 

Analog VHS movie cassettes have long contained copyguard systems to prevent analog copies from being made to another tape on a VCR.  The earliest and simplest of these was a system in which an extra signal was embedded in the original tape that messed up the vertical sync of the NTSC video signal when the tape was copied on a VCR, causing an irritating horizontal line to crawl through the picture when the copy was viewed.  This system could be easily defeated by boxes that could be purchased at places like Radio Shack or built from plans published in magazines like Popular Electronics.  I had one of these boxes myself.  

 

More recent is a copy protection system marketed by Macrovision[218], in which the Automatic Gain Control of a VCR is messed up when a copied tape is viewed, producing a blinking, unwatchable picture.  Most VHS movie tapes and most DVD and BluRay movies have the Macrovision anti-copying system on them, in order to prevent users from copying the material onto a VHS tape.  The system is not perfect and can cause problems even when legal tapes are viewed on some VCRs.  Determined pirates can relatively easily defeat the system.  Macrovision busters used to be marketed and sold so that home users could make their own personal VHS copies of rented video disks and tapes—I also had one of these. 

 

These analog copy-protection mechanisms did little more than irritate the customer and only deterred casual copying of rented tapes or DVDs on home VCRs, not the determined pirates who ran factories in places like China, Taiwan, Indonesia, or Malaysia.  In any case, an analog tape copy is not as good as the original.

 

Copyguards on Digital CDs and Video Disks

 

Copyright owners are much more interested in defeating the digital copying of CDs,  DVDs, and  BluRays, since digital copying is perfect, and the copy is just as good as the original.  DVD and BluRay movies have carried the CSS encryption system for a long time, but copyguards on CDs are a relatively recent phenomenon   Anti-copying features are beginning to appear on music CDs to prevent people from ripping songs off them and converting them to MP3 files and sharing them on the Internet.  . 

 

One of these is a system created by Macrovision that works by inserting small distortions into commercial audio CDs.  These distortions trick the software that is responsible for encoding MP3s into thinking that the disk has been damaged, aborting the process.  Macrovision claims that these clicks and pops are inaudible on standard CD players, but a lot of music lovers say otherwise.  Hackers claim to have already cracked the system.  In any case, I would be reluctant to purchase a CD in which the manufacturer had deliberately inserted distortions into their music.

 

Other anticopying techniques render a music CD unplayable on a computer CD-ROM, I suppose on the theory that you can’t copy it if you can’t play it.J  Some of these techniques work by hiding the CD’s table of contents so that your CD-ROM drive can’t read it.  Others work by adding a track to the CD that contains bogus data that will prevent the CD-ROM drive from reading the CD.  This would really make me mad, because there isn’t anything illegal about me playing a CD on my PC. 

 

The early CD copyguard attempts have done little more than irritate the customer, and there have been some embarrassing episodes in which record labels have ended up with egg on their faces.  Some copy-protected CDs have actually damaged computer software when played or caused the computer itself to crash.  Some Macintosh computers were actually sent to the repair shop[219] by attempts to play copy-protected Celine Dion CDs.  Worse, some early copyguard implementations have resulted in degraded music CDs that can’t even be played on ordinary audio CD players, leading to a lot of angry customers and returned CDs.  Some of these copyguards could be easily defeated by even relatively unsophisticated people—Sony’s copy-protection on the Celine Dion CD could be defeated by simply scribbling around the rim of the CD with a felt-tip marker, so that it would play on a computer CD-ROM with no trouble[220].

 

TurboTax® Troubles

 

Intuit added an activation code[221] in its 2003 version of TurboTax®, which electronically tied the software to a single computer.  This was intended to prevent buyers from passing their TurboTax CD around to friends who hadn’t paid for it.  Customers blasted the change as something that could cause problems if they bought a new computer before the April 15 tax-filing deadline or if they later upgraded their computer with new hardware and then needed to go back and amend their 2002 returns.  This could also cause problems if the customer’s hard drive crashed and they had to reinstall everything. 

 

And there was another even more serious problem--during installation of TurboTax 2003, extra copy protection software produced by Macrovision was installed on the customer’s hard drive that monitors activities on the system full-time, preventing you from copying the CD by disabling your CD-RW drive.  This copy protection software remained on the hard drive even if TurboTax was uninstalled.  This Macrovision software consumed more than a megabyte of memory and other resources even when TurboTax is not running, almost as if a Trojan horse, spyware, or other malware were running on your machine, eating up resources, slowing everything down, and perhaps even causing system crashes.  

 

I had been a satisfied TurboTax customer for a long time, but when I heard about this new DRM, I decided to buy their competitor’s product instead.  Because of all the negative publicity, Intuit issued a public apology and decided to give up the activation code in future releases.

 

Sony’s DRM Disaster


In 2005, Sony BMG placed a disastrous DRM copy protection system[222] [223] (consisting of two separate parts, known as XCP and MediaMax) on some of the company’s CDs.   This system was designed to make Sony’s CDs “unrippable”, by preventing the user from making a copy of the music on their CD onto their computer hard drive, whether the copy was intended for illegal distribution or simply for legal transfer onto the user’s iPod.   All of this was done with great stealth, without notice or consent from purchasers.  The company also attempted to impose a shrink-wrap license on their CD, with rather restrictive licensing terms. 

 

The XCP part of Sony’s DRM package was a copy protection system that limited the number of copies that a person could make of the CD to three.  XCP worked by surreptitiously installing a copy protection application on the user’s computer that would instruct any application on the computer to refuse to make a copy of it.  In order to prevent users from locating this application on their computer and uninstalling it, the XCP technology used a technology known as a rootkit[224].  A rootkit is intended to conceal running processes, files, or system data—it hides in the user’s machine in such a way that the user doesn’t know it is there and probably couldn’t find it even if a deliberate search is made.  Once installed, the rootkit can install periodic updates through an Internet connection.  The rootkit was extremely difficult to uninstall, sometimes requiring a complete reformatting of the hard drive to get rid of it.  So when you played a Sony CD on your PC, you also loaded a Trojan horse onto your machine.

 

Since XCP resided in a hidden area on the customer’s computer, it posed a security risk for virus attacks since most antivirus software can’t see the files in a rootkit and once installed, a virus could remain there undetected indefinitely.  And sure enough, a computer virus soon appeared that took advantage of this vulnerability.  

 

The MediaMax software that came with the Sony anticopying system was even more insidious—it was designed to act as spyware, allowing Sony to track their customers’ listening habits. Every time someone plays the CD on their PC, MediaMax sent a message to a server, which enabled Sony BMG to find out who was listening to the CD and how often they listen to it.  There was no disclaimer issued by Sony BMG saying that this spyware was there, and there was no easy way to uninstall it. The MediaMax software also had vulnerabilities that could let malicious hackers get control of your computer’s operating system.

 

These security holes were discovered[225] by J. Alex Halderman, a Princeton University graduate student.  He delayed publishing his results for several weeks, while he consulted with lawyers about potential legal liability.  When word about these security holes eventually got out, this was a public relations disaster for Sony BMG.  Class action lawsuits were filed against Sony BMG in New York and California.  The Texas Attorney General sued Sony BMG for installing illegal spyware on customer computers, in violation of Texas state law.  The company eventually recalled the infected disks and agreed to pay damages.  In November of 2005, Sony BMG announced that it was backing out of its copy-protection software and was recalling unsold copy-protected CDs from the stores.

 

In response to constituent complaints about the excessive use of DRM on CDs, Rep. Rick Boucher (D-VA) sent a letter[226] to the recording industry’s lobbying arm, the Recording Industry Association of America (RIAA), asking whether anti-copying technologies might override consumers’ abilities to copy albums they have purchased for their own personal use.  Boucher argued that the installation of copyguards on CDs might well be a violation of the Audio Home Recording Act of 1992.  This Act makes it completely legal for customers to make digital copies of the music that they legally purchased, provided they don’t give or sell them to someone else. 

 

In June of 2002, two California consumers filed suit against the recording industry, claiming that copy-protected CDs are defective products that should not be allowed on the market. 

 

The “Fritz Chip”

 

It is not enough to incorporate copy protection into DVDs and CDs, since many of these copyguards are relatively easily defeated.  It would be much better for copyright holders if computers and other digital devices would have anticopying features built right into their hardware, which would instantly spot anything illegal that is going on, and then quickly stop it. 

 

In order to pursue this end, the content industries supported a bill[227] [228] known as the Security Systems Standards and Certification Act (SSSCA) that was introduced by Senator Ernest “Fritz” Hollings (D-SC) in the autumn of 2001.  The bill would require that the computer industry come up with a technical standard for copy protection within one year after the passage of the law.  If they did not, the government would step in and mandate a standard that everyone would have to follow.  Once a standard is adopted, copy protection hardware using the new standard would have to be included in all digital devices.  It would be a federal offense to disable the copy protection chip or to have a network-attached computer that disables the copy protection.  The copy protection standard would have to be universal, difficult to defeat, inexpensive, reliable, modular, easy to install, upgradeable, and easy to use. However, previously existing equipment was “grandfathered”, and did not have to be modified to include this extra copy-protection hardware. 

 

Although the content industry liked the Hollings bill, it attracted a lot of opposition from the computer industry, with Intel taking the lead.  Consumer groups also opposed the bill.  The bill’s detractors called this anticopying hardware the “Fritz chip”.   Just about every product these days has a computer chip in it, and the bill would require that “Fritz” be incorporated into every digital device—not only computers but toner cartridges, ink-jet cartridges, digital cameras, cell phones, MP3 players, digital hearing aids, garage door openers, singing greeting cards, even Billy Bass, the singing fish would have to have “Fritz” in them.   This would raise the cost of every digital device.  The increased costs would probably cause people to stick to their old computers and not buy new ones, especially if the newer ones were perceived to be less capable, slower, or somehow impeded by the presence of “Fritz”.  A lot of people in the computer industry felt that the Hollings bill could wreck their entire industry, doing to them what AlQaeda did to the American aviation industry on September 11, 2001.

 

Since computer software is very complex, almost certainly the presence of “Fritz” would cause a lot of glitches and computer crashes, and some applications might stop working at all.  The presence of “Fritz” would also inconvenience legitimate users who want to exercise their fair use rights, since it would prevent them from copying short parts for commentary, research, or criticism, it would prevent them from moving their legally-purchased media onto other formats or other platforms, and could even prevent them from sharing their media with friends or family.  “Fritz” could become so odious that I could foresee the development of a “black market” of services that would remove or disable “Fritz”, even in spite of criminal penalties. 

 

Others argued that “Fritz” would slow growth in the computer industry and would stifle competition.  Every new product, every new service, and every new way of presenting and displaying media would have to take the presence of “Fritz” into account, raising the cost of research and development.  The proposed law could eventually require that electronics and computer manufacturers would have to beg permission from the entertainment and content industries before introducing any new products.  

 

It might actually not even be physically possible to construct a device that would do what the proposed law requires.  The law specifically requires that the copy protection standard would have to be universal, difficult to defeat, inexpensive, reliable, modular, easy to install, upgradeable, and easy to use. Some commentators like Ed Felten[229] of Princeton University argued that the idea of coming up with a uniform standard for copy protection that would satisfy all these requirements is asking for the impossible, like requiring that the government come up with a uniform standard for teleportation, within only a year.

 

In response to the storm of criticism, the bill was revised and the name of the bill was changed[230] to the Consumer Broadband and Digital Television Promotion Act (CBDTPA) and it was reintroduced in March of 2002.  Some of the more objectionable parts of the original bill were softened somewhat.  The definition of devices to which the bill would apply was narrowed to include only digital media devices rather than a description that would cover virtually everything with a microprocessor in it.  Also added was a provision that any software standards that were chosen must be open-source.  Also included was a provision that the chosen standard must be able to accommodate fair use of copyrighted content. 

 

The Hollings bill attracted so much negative publicity that it was eventually withdrawn in some embarrassment, as it is now generally held up as an example of what not to do in the realm of copyright protection.

 

The Analog Hole

 

Today, anyone with a home computer can digitize an analog TV broadcast or VHS video recording, save the file on their hard drive, and then transmit it over the Internet without any restriction.  Microsoft software that is already available on virtually all computers can easily do this, and there are no copyguard mechanisms in place to block this.  If you want to copy a video disk, all you need to do is to connect the video outputs from your player to the inputs of the video card of your computer, and you are good to go.  All of the copyguards are circumvented.  Basically, this means that if you can play it, you can record it. 

 

It is true that since you are making a digital copy of an analog output, the quality is not as good as that which you could get from making a direct digital copy of a DVD.  However, digital copying of analog material typically results in file sizes which are significantly smaller, which makes this option more desirable for file traders.   This is the so-called analog hole,[231] which content providers are anxious to block[232].

 

The movie industry is trying to plug this hole by lobbying for laws that would require that all media devices (analog as well as digital) include watermarking technology that would detect copyright information even if digital information were converted into analog and then back again. 

 

One attempt to plug the analog hole was the Digital Transition Content Security Act[233] of 2005, introduced by James Sensenbrenner (R-WI) and backed by John Conyers (D-OH).  This bill would require that analog conversion devices must preserve digital content security measures, and proposed that the Veil Rights Assertion Mark anticopying technology[234] [235] be required on all new consumer devices that handle analog video content.  The movie industry applauded the bill, but computer experts generally opposed the bill as severely limiting the customer’s ability to make fair use of copyrighted material[236].  Since the analog hole makes it possible for people to make fair use of digital media without circumventing digital locks, this legislation to close down the analog hole would further erode fair use. 

 

The one-size-fits-all Veil standard mandated by the bill has not undergone any public or even any inter-industry scrutiny and the standard is secret.  In his Freedom to Tinker blog, Ed Felten of Princeton University criticized[237] the requirement that all devices that accept analog video inputs have to implement a technical specification that is kept secret.  It is dangerous to rely on a copy protection standard that is secret and not accessible to industry and expert examination—who knows if it won’t cause catastrophic failures of computer hardware and software or even if it will work at all.  Perhaps even a beginning computer science student can easily defeat it.  Since the standard is a secret standard, we just don’t know.

 

The Great DRM Controversy

 

DRM is one of the most controversial issues in computers and media today.  There are two extremes in the debate.  One side is represented by those who believe that all information should be free.  They are opposed to rights management in any and all forms.  At the other extreme are those that believe that copyright should be absolute and that everything should be copy-protected.  Some people characterize the debate as left versus right, or liberal versus conservative, but this is probably a mischaracterization, since some people on the right side of the political spectrum oppose DRM and some people on the left support it.  Most people fall somewhere in between. 

 

On the pro-DRM side are authors, content producers and rightsholders who don’t want their stuff to be pirated on a large scale.  Movie producers certainly don’t want their DVDs or BluRays to be duplicated in a pirate factory in China and sold out of the back of a truck on the street in New York City.  Record labels want to make a profit on their music releases and they don’t want their recordings to be available for free downloading on peer-to-peer networks.  Top recording artists want to get paid for their music—there will probably be fewer recordings made if people could always get them for free.  Cable TV premium content providers like HBO or Showtime certainly don’t want non-paying customers watching their shows.  Software vendors don’t want their customers letting their relatives and friends install their product on their computers without paying.   High-Definition TV (HDTV) broadcasters don’t want people to send copies of their shows over the Internet to their friends.  It is probably true that very few companies can stay in business for very long if their product can be obtained for free. 

 

In addition, most content producers will probably require some sort of DRM be in place before they release their content on any sort of digital media, especially before making it available over the Internet or over High-Definition TV (HDTV).  Unchecked piracy, uncontrolled leakage to the Internet, and unauthorized viewing will result in declining sales and fewer paying customers, which will cause creative output to decrease and the overall quality of media to decline.  Advocates of DRM argue that the creators of digital works should have the right to control the distribution or replication of copies of their works and that they should be able to have some control over the use of such copies.  Without this level of control, piracy might run rampant and there might be a chilling effect on creative efforts in digital media.

 

On the negative side is the fear that large corporations could abuse DRM technology and use it to lock in monopolies in entertainment, hardware, and software.  A software vendor like Microsoft or Apple could use DRM to make sure that their customers use only those tools or capabilities that they have approved or those in which they have financial interests.  Online music vendors could use DRM to require that their customers listen to their music only on players that are owned or approved by them.  Since just about everything now has a computer chip in it, DRM could be used by vendors to force their customers to use only those parts and components which they approve—for example, an inkjet printer manufacturer could use DRM to prevent their customers from using a competitor’s inkjet cartridge.

 

DRM makes it possible to impose restrictions on media use that go way beyond any restrictions imposed by copyright law, and could let media producers impose just about any silly rule they wished on their viewers and listeners.   DRM could make it possible for vendors to enforce the terms of restrictive “shrink wrap” licenses not only on software but also on just about any sort of digital entertainment medium.  The copyright holder could, if they wish, use DRM to prevent you from making backup copies, could prevent you from making copies of small parts, could prevent you from skipping certain parts, could prevent you from lending or selling the product to someone else, and could even use the Internet to track your use of the product.   DRM could be used to prevent you from copying a HDTV program onto the hard drive of your computer and could prevent you from sharing short clips of an HDTV program with your friends.  DRM could be used to “lock” a CD or video disk to a particular user or even to a particular player or computer, so that the disk couldn’t be sold or lent to someone else.  These additional restrictions come on the sole discretion of the media distributor or copyright holder, and many of them commonly remove or nullify fair use and first sale rights that would certainly otherwise be allowed in the analog world.  

 

Many fear that DRM will result in a reduction in freedom of expression because it will interfere with review, commentary, scholarship, or parody.  Many have expressed alarm that copyright owners could use DRM technologies to erode capabilities that had previously been permitted to the public under the fair use or first sale doctrines.  A DRM-equipped media and a DRM-compliant playback device, no matter how cleverly they are built or how well they are programmed, are just machines.  A machine cannot distinguish between legal and illegal copying—it cannot tell whether the purpose of the copying is for scholarship, educational or review use and hence probably permissible under the fair use copyright exceptions, or whether the intention is to produce a copy for illegal distribution on a peer-to-peer file-sharing network.  Hardware and software cannot tell the difference between these uses—it simply blocks them both.  Critics charge that hardware and software will now make judgments about legal questions that heretofore were left up to judges and courts to decide—a computer simply obeys the rules of its program and can’t tell whether what you are doing is actually protected under fair use. 

 

DRM has the potential to allow vendors and copyright owners to impose a “pay per view” or “pay per use” regime on their customers.   For example, a software vendor could require that their customers use the product only while connected to the Internet, which would make it possible to charge their customers’ credit card a small amount every time they used the product.  Every mouse click could in principle result in a payment to somebody.  A music label could use DRM to make it possible for a user to be charged a fee every time they listened to the music.  Every time you watched a DVD  or BluRay movie, listened to a song on a CD, or used your computer, you would be aware that a tiny meter was running somewhere, adding steadily to your monthly credit card bill or depleting your bank account.  In the future, perhaps video disks will be sold that can be viewed only once, and would, like the disks in the old TV show Mission Impossible, self-destruct afterwards.  Alternatively, video disks might contain software that would require that the user had to contact the vendor via the Internet and ask permission to view it a second time, paying an extra fee.  Under such a regime, you won’t really own the media that you purchase, but you will only have a license to use it, subject to a long list of restrictions that are designed with the vendor’s convenience in mind, not yours.  A “pay per view” environment creates an atmosphere under which knowledge becomes just another economic commodity, one in which material that was previously available free of charge (for example, in the library) now requires a payment to somebody for access. 

 

DRM could even be used to spy on you.  A system might be possible that could track every media source that you use—ever website you visit, every recording you play, every movie you watch—so that you could be targeted for advertisements.  A system might be devised that could charge a lower micropayment if you watched a movie on a cheap TV purchased at WalMart and a higher payment if you watched the same move on a top-end large-screen plasma TV.  You might be charged a lower micropayment if you watched commercials before you viewed a DVD movie and a higher payment if you skipped the commercials.  A system might even be devised that would charge you a different amount for viewing movies or listening to music, based on your income or your perceived wealth.   You might be charged more for watching The Dark Knight if you drove a BMW or a Mercedes than if you drove a Kia.  If you went out and purchased something deemed by the tracking system to be “upscale”, you would be aware that the price you paid for entertainment might be ratcheted upward by some computer that was running somewhere.

 

It has been argued by its supporters that although DRM isn’t perfect and can be rather annoying to the customer, it simply creates a technological “speed bump” that keeps ordinary people honest when they are watching or listening to digital media.  However, the excessive use of DRM will probably have the main effect of causing your customer to get mad at you, since it will interfere with their legitimate use of your product.   If DRM is mindlessly applied, it will probably antagonize the customer and drive people into illegitimate activities, such as the peer-to-peer file-sharing services.

 

There is increasing pressure on Congress to mandate DRM standards by legislative edict, forcing all vendors and content producers to use a common DRM system on their media.  At the current level of the state of the art, this is probably asking for the impossible, sort of like the government trying to mandate a uniform standard for time travel.  However, even if it were possible to come up with a set of DRM standards that are backed by regulatory mandates imposed by Congress, this is not necessarily a good thing.  For one, there is no guarantee that a mandated uniform DRM system would really work at all, that it couldn’t easily be cracked by relatively unsophisticated people, that it wouldn’t cause legal playback devices to crash, or that it wouldn’t have unanticipated side effects on legal media use.  In addition, there is a great risk that a set of government-mandated DRM standards could be abused by the content industry and used to create artificial barriers to competition and innovation, under which it would become effectively impossible or even illegal to introduce new services, competing products, or new and different creative ways of experiencing media.   DRM standards developed by “inter-industry” coalitions should be treated with a special suspicion, since they could result in the formation of anticompetitive cartels that are more interested in locking in monopolies and blocking competition than they are in fostering innovation. 

 

DRM applications are forever—once they are applied to a creative work, they stay on there for good.  After a certain amount of time, all copyrighted works eventually move into the public domain, and are free for anyone to use in any manner whatsoever.  However, even after a work has moved into the public domain, the DRM restrictions will still be there and there is no mechanism in place to remove them.  Copyright owners can now make the duration of their copyrights effectively last forever.  Imagine what would have happened if DRM were in place during Shakespeare’s day—it would be impossible today to sell or copy his plays, even though they have long been in the public domain.  Works not protectable under copyright law—things that do not have originality or creativity such as the white pages of the telephone book—could be given a protection essentially equivalent to that of copyright by the application of copyguards and encryption, thus giving them a degree of protection that current copyright law does not entitle them to.  DRM has also been added to material that is already in the public domain--an oft-cited example is the release in 2000 by Adobe on its eBook of Lewis Carroll’s Alice’s Adventures In Wonderland, a work long in the public domain but with DRM controls[238] on it that disallowed the reading of the book aloud, would not allow you to copy any text selections to the clipboard, would not allow you to print it, and would not allow you to lend or give it to anyone else.

 

 

The Digital Millennium Copyright Act

 

The Digital Millennium Copyright Act (DMCA) is a controversial law passed in 1998 to address copyright issues in the digital era.  The purpose of the DMCA is to help the content industry prevent unauthorized access to, or use of, copyrighted works. The act criminalizes production and dissemination of technology that can be used to circumvent measures taken to protect copyright, and heightens the penalties for copyright infringement on the Internet.  It was originally supported by the software and entertainment industries, but was strongly opposed by scientists, librarians, and academics.

 

The law implements two 1996 World Intellectual Property Organization (WIPO) treaties.  It originated in a 1994 government-sponsored study of content industry concerns about copyrighted material being downloaded online.   That study took a radical approach, asserting that every reading or viewing of a work on a computer should be considered as being a reproduction for purposes of copyright law. It also recommended the development of technological means by which unauthorized copying could be prevented.

 

The DMCA law makes an attempt to address the copyright issues raised by the advent of digital computers.  Just about every time you use a computer, you are making a copy—that is how computers work.  In fact, you really can’t do much of anything with a computer without making a copy.  When you look at a website, you are actually downloading a copy of the website onto your hard drive.  Most web browsers can be set to keep a copy of the original web page in a “cache” while the browser goes on to visit other sites. When you send an e-mail to your friend you first send a copy of the mail to your e-mail provider’s server, which in turn sends another copy to the your friend’s e-mail server, and in turn yet another copy is downloaded onto the friend’s hard drive.  The Google search engine works by making local copies of the websites that it indexes, making the search work much faster.  A broadcast radio or television station often makes a copy of a recording during the process of transmission.  All of these copies are temporary and generally exist only for a short time, and when they have served their purpose, they are erased. 

 

How are these ephemeral, transitory copies to be treated in copyright law?  Can I sue every time someone clicks on my website and downloads a copy to their computer without my permission?  Is my e-mail service provider liable for copyright infringement lawsuits when it saves my e-mail on its servers?  Can Google be sued for copyright infringement when it makes copies of websites on its servers for search purposes?  Is it possible that an actionable copy is made every time something is loaded into a computer’s random access memory without the copyright owner’s express permission?

 

The law also attempts to address the copyright issues involved in the making of digital copies.  In analog copying, such as taping a TV program off the air or recording a song on the radio onto a magnetic tape, the quality of the copy is not as good as that of the original.  If a copy is made of the copy, that copy is poorer still, so that by the time the fourth- or fifth-generation copy is made, the copy is probably virtually unusable.   I once had a pirate tape of Raiders of the Lost Ark that was so bad and full of so much snow that it was almost unwatchable.  Consequently, because of the generally poor quality, analog copying is probably not that much of a threat to the content industry, although analog videocassette recorders and digital video disk players are equipped with the Macrovision system that prevents you from copying a commercial movie video onto an analog tape. 

 

Digital copies are another matter—when a digital copy is made, the copy is just as good as the original, and there is no degradation in quality no matter how many generations of copies are made.  Since it is possible for a computer to make a digital copy that is identical to the original, this has a profound implication in copyright law, since it is now possible to make a perfect copy of a CD, of a DVD or Blu-ray, of computer software, or of a HDTV program.  Making a copy on a computer is very easy to do—a single mouse click is all that is necessary.  And digital copying is really inexpensive—almost free.  And it is quite easy and convenient to transmit these digital copies all over the world via the Internet—you can often use a click of your mouse to obtain a copy of just about any song you ever heard in just a few minutes, and over a fast broadband connection it is possible to download the latest Hollywood movies.  Very often, Hollywood movies are available on the Net before they are released in the theaters.  The possibility of cheap, easy and effective digital copying has copyright holders worried and is a real threat to their business models.

 

The DMCA also attempted to address the issue of how the transmission of digital material over the Internet was to be handled in copyright law.  Previously, copyright law only gave copyright owners control over transmissions that resulted in public performances, but not over those that resulted in private performances.  Playing a Metallica recording over the telephone to your friend would count as a private performance, and hence would not be a copyright infringement.  But what if you sent a digital copy of the same recording to your friend via e-mail?  Your friend could then burn the copy onto a CD, which would be just as good as the original recording, so good in fact that it might substitute for your friend going out and buying the Metallica recording at a record store, and hence would eat into the profits of the group’s recording label.  Should this sort of transmission be treated as a copyright infringement?  Should a transmission by which the user obtains a digital copy of a protected work still be immune from charges of infringement under the first sale doctrine, or should the law be amended so that the first sale doctrine does not apply at all to any transmission of digital material? 

 

One way that content producers can prevent unauthorized viewing, copying, or transfer of their media is to place robust DRM measures on the media that prevents users from doing such things in the first place.  However, just as soon as a DRM measure is introduced by a software vendor or by a media company, it seems that almost immediately there appears on the web a software package or an actual physical device that makes it possible to remove or disable such technological restrictions, enabling users to view or copy copyrighted materials against the wishes of the copyright owner.  How should the copyright law handle such technological DRM circumvention measures? 

 

Another issue addressed by the DMCA was how Internet Service Providers (ISPs) were to be treated under copyright law.  Can they be held liable for what their subscribers do online?  Are ISPs liable for contributory copyright infringement if their subscribers post infringing material on their websites?  Are ISPs liable if their subscribers use their networks for the transmission of infringing files?  Communications networks such as the telephone system are regulated by the Federal Communications Commission (FCC) and are considered as common carriers, which means that they transmit information without ownership of or responsibility for the information being transmitted.  This means that the telephone company cannot be held liable for what its subscribers do on the phone—if a telephone subscriber discusses a drug deal over the telephone, it is the subscriber who is legally responsible, not the telephone company.  But ISPs are not regulated by the FCC and are not considered as being common carriers, which has led to a legal approach that addresses network liability on a case-by-case basis, avoiding any classification of common carriage. 

 

The DMCA[239] [240] is a complex law that has several major provisions[241]:

 

 

 

 

 

 

 

 

While the law provides a way for individuals to object to the removal of their materials by the ISP, it does not require that the service providers notify those individuals before their allegedly infringing materials are removed.  By the time the subscriber is informed of the takedown notice, the offending material usually has already been removed from his website.  The subscriber then has the opportunity to respond to the notice and takedown by filing a counter notification.  After the subscriber serves a counter notification claiming that the material was removed by mistake or misidentification, unless the copyright owner files an action seeking a court order against the subscriber, the ISP must put the material back up. 

 

The law provides for penalties if there are material misrepresentations in the original takedown notice--for example if a copyright owner falsely claims that the material infringed their copyright, the copyright owner could be liable for damages and attorneys’ fees that are incurred by the alleged infringer.  

 

 

 

The DMCA does not require that the manufacturers of consumer electronics, telecommunications, or computing equipment have to respond or adhere to any particular technological digital copy protection measure.  However, it does require that analog VCRs conform to the Macrovision copy-protection system, and it prevents content producers from applying Macrovision to free over-the-air television or to basic and extended cable service.

 

The DMCA law limits the copyright infringement liability of nonprofit institutions of higher education when they serve as online service providers.  It also limits (under certain circumstances) liability of these institutions for copyright infringement even if the offender is a faculty member or a graduate student at the institution.

 

The law does provide for some exceptions to the circumvention prohibition measures.  The prohibition measures do not apply to law enforcement or intelligence activities of the government or agents acting on its behalf, including activities carried out in order to identify and address vulnerabilities of computer networks.  Circumvention is allowed for the sole purpose of identifying and analyzing elements of a computer program in order to achieve interoperability with other programs, to the extent that such acts are permitted under copyright laws.  Nonprofit libraries, archival, or educational institutions are allowed to circumvent access control measures solely for the purpose of making a good faith determination as to whether they wish to purchase or obtain authorized access to the work.  Circumvention is also permitted in encryption research, to assess product interoperability, and to test computer security systems.  Circumvention is also permitted for the purpose of testing the security of a computer, computer system, or computer network, assuming that the authorization of the owner or operator has been obtained.  Circumvention is permitted to detect and disable technology that collects and disseminates personal information about an online subscriber without authorization by the subscriber. 

 

However, the trafficking in circumvention devices and techniques is still illegal, no matter what their use, which means that if a person wants to take advantage of any of the exceptions listed above and go ahead and perform the circumvention, they have to figure out how to do all of this on their own.

 

The law creates an exemption for making a copy of a computer program that takes place while activating a computer for purposes of maintenance or repair.  It is still legal to make a copy of a computer program for purposes of maintenance, backup, or repair, provided, of course, that there isn’t a copyguard on it.  However, it would be illegal to remove or defeat the copyguard, even if your copying would otherwise be perfectly legal.

 

The law explicitly states that it does not affect any of the rights, remedies, limitations, or defenses to copyright infringement, including fair use.  However, if the copyright owner has technologically restricted access and if it is now illegal to interfere with any of these restrictions, how is it possible for the general public legally to exercise fair use?  The statement that the DMCA does not affect fair use is sort of a cruel joke, since it would be illegal for you to acquire or use the tools needed to circumvent a technological measure in order to take advantage of fair use. 

 

Periodic Reviews of the DMCA

 

The Librarian of Congress has the authority [242] [243] to periodically review the DMCA to determine if there are works that should be made exempt from the circumvention prohibitions of the law.  The purpose of these reviews is to determine if there are particular classes of works whose users are adversely affected in their ability to make noninfringing uses of the works by an overbroad application of the DMCA’s circumvention prohibition.  These reviews are held every three years, and any exemptions granted last for three years. 

 

The first set of exemptions was issued in 2000.  In that year, the Librarian of Congress announced that access to compilations of lists of websites blocked by filtering software applications (“censorware”), as well as access to works that are protected by damaged, malfunctioning, or obsolete access control systems should henceforth be exempt from the circumvention prohibitions. 

 

In 2003, the Librarian of Congress reaffirmed the two exceptions listed in 2000 and added an exception for computer programs that are protected by “dongles[244]” that have malfunctioned, have been damaged, or which are obsolete.  A dongle is a small piece of hardware that is attached to a computer, television, or other piece of electronic equipment in order to enable additional functionality such as copy protection, audio, video, games, data or other services.  These services are only available when the dongle is attached.  It now becomes legal to digitally disable the dongle if it is damaged or obsolete.  In addition, the Librarian of Congress also added an exception for literary works that are distributed in eBook format and that have access controls that prevent the enabling of the read-aloud functionality as well as those that have access controls that prevent the enabling of screen readers that can render the text into a specialized format.  This makes it legal for a blind person, for example, to circumvent the read-aloud prohibition that may be applied to an eBook.

 

In 2006, six exemptions were granted[245]. Some of these were renewals of earlier exemptions--blind people were still allowed to circumvent protections that prevented e-books from being read aloud, archivists were still allowed to do circumvention when it was necessary to preserve copies of old programs and computer games, and people were still allowed to work around broken hardware “dongles” that prevent access to software programs.  A new exemption was granted that allowed film and media studies professors to circumvent technological measures in order to make compilations of film and video materials for research and teaching purposes.   Wireless telephone customers are now allowed to alter the firmware on their cell phones so that they can switch their phones to a different wireless provider.  People are now allowed to study, test, or remove malware distributed on CDs in order to perform good faith testing, investigating, or correcting such security flaws or vulnerabilities.   However, the exemption for censorware research was not renewed[246] because its advocates did not re-request it.  In addition, the Copyright Office denied requests for exemptions for space-shifting (such as downloading content onto portable players such as iPods) or backing up digital media. 

 

In 2010, six exemptions were granted[247].  All of the exemptions were renewals of previous exemptions, but some of the classes were extended.   For example, the previous round of exemptions only allowed film and media studies professors to use decryption to make compilations of film clips for classroom instruction.  The exemption was extended to include all types of professors and students--professors in all fields and “film and media studies” students are now allowed to legally decrypt DVD content and incorporate them into lectures.  In addition, the circumvention of CSS controls for the incorporation of short portions of motion pictures into documentary films and noncommercial videos for the purpose of criticism and commentary is permitted, when the person during the circumvention reasonably believes that it is necessary to fulfill that purpose, recognizing that it is sometimes necessary to circumvent access controls on DVDs in order to make these kinds of fair uses.  The exemption also permits professors to use ripped content in non-classroom settings that are protected under fair use, such as presentations at academic seminars and conferences.  A lot of academics were actually doing this before the Librarian issued the exemption, the Motion Picture Association of America apparently not pursuing campus violators. 

 

However, only a few professors have the technical savvy and knowhow to do this decryption, and a majority would have to ask the library or tech support people for help.  In most case, librarians had refused to help because it wasn’t legal to do so--school librarians are often under heavy scrutiny by university lawyers and the fear of an expensive lawsuit was an effective deterrent.  It is now perfectly legal to do this[248].

 

In 2013, some of the earlier exemptions were reauthorized[249][250].  Circumvention was still allowed for electronically-distributed works so that they could be altered so as to permit people with disabilities to use screen readers and other assistive technologies.  A similar version of the exemption was offered in 2010, but that one allowed circumvention only if "all existing e-book editions of the work contain access controls" that inhibit disabled access.  It is still legal to enable the interoperability of software applications on smart phones, enabling them to run operating systems and applications from any source, not just those approved by the manufacturer (sometimes known as “jailbreaking”), but the exemption was not extended to include tablets or video game consoles.  It was still legal to circumvent DRM on video disks s in order to make use of short portions for purpose of criticism, and for educational uses by college and university faculty and students, as well as by kindergarten through 12th grade educators.   DVD disks can be altered so that players capable of rendering captions and descriptive audio for visually-impaired, deaf, or hard-of-hearing people.  But these same exemptions do not apply to breaking encryption on HD or Blu-ray disks.

 

But the Librarian did not allow circumvention for space-shifting purposes. While public interest groups had argued that consumers should be allowed to rip a video disk in order to watch it on an iPad that lacks a built-in video disk drive, the Librarian concluded that no court has found that such "space shifting" is a fair use under copyright law.  This is sort of curious, since it is perfectly legal for you to rip music off a CD and put it on your iPod.

 

It was ruled that the previous exemption which permitted users to unlock their smart phones so that they could take them to a new carrier was changing.  You can still unlock the mobile phones you already have, but phones purchased after January 2013 can only be unlocked with the carrier’s permission.  This may lead to a FCC ruling that legalizes cell phone unlocking, or perhaps to Congressional action. 

 

Even though these exemptions allow people to circumvent access protection technologies that are used to protect copyrighted works in order to achieve certain specialized purposes, the trafficking in circumvention devices and techniques is still illegal, and in order to take advantage of any of these exceptions you have to figure out how to do the circumvention all on your own.

 

Nasty Side Effects of the DMCA

 

The DMCA has had some rather nasty side effects[251], affecting areas that at first sight where the law would never have applied.  Here are some examples:

 

 

However, censorware was sometimes overzealous and sites were blocked that were completely unobjectionable, or sites were blocked simply because they opposed the entire concept of censorware.  There were even charges that a number of censorware systems were blocking sites with political content--web sites affiliated with Amnesty International, for example.

 

However, censorware companies considered the list of blocked sites as proprietary material, and customers were prevented by encryption from reading the list of forbidden sites.  In 1999, Eddy Jannson of Sweden and Matthew Skala of Canada decided that they wanted to test out a specific example of censorware known as Cyber Patrol, a product of the Mattel toy company[252].  They wanted to know what sites Cyber Patrol was blocking--their stated goal was to determine if Cyber Patrol had any hidden agenda in the sites that it blocked, because the Mattel company had a history of blocking criticism of their products and censoring links to competing products. Jannson and Skala wrote a program known as CPHack that could disable the encryption on Cyber Patrol so that one could see what sites it banned.  This would make it easier for sites unfairly blocked by Cyber Patrol to complain.  The source code for CPHack was posted in numerous places on the Web.  The source code was released under the General Public License, which specifically granted any recipient of the program an automatic license to copy it. 

 

Mattel immediately went on the attack.  The company brought suit in Canada and Sweden against the authors of CPHack.  The coders had supposedly violated the terms of the “shrink wrap” license under which Cyber Patrol was sold, which specifically forbade reverse engineering.  They had also violated Mattel’s copyright by bypassing the encryption, allowing users to determine which sites were blocked.  The suit also claimed that the company had suffered irreparable harm, which could render its software ineffective.  In addition, the breaking of the encryption was a violation of the DMCA. 

 

Within a couple of weeks, Mattel had obtained a worldwide injunction[253] [254] against the distribution of CPHack.   All websites having CPHack posted on them were required to take the material down or face charges of contempt of court. 

 

Just before the case was due to go to trial, Mattel purchased[255] the CPHack software from its creators--tired of fighting, the two creators had agreed to sell their product for one dollar, simply to get the lawyers to go away.  Mattel then dropped the lawsuit.  Now that Mattel owned CPHack, noone else could distribute it, even if the purpose were simply to criticize Mattel.  The final injunction enjoined the two authors from publishing either the source code or the binary executable file[256].

 

In 2000, the Librarian of Congress ruled that the removal of copyguards that prevented the viewing of sites blocked by censorware was legal, but in 2006, this ruling was reversed.

 

 

For example, a particular publisher might have disabled the read-aloud function of a particular eBook, and the software would make it possible for the reader to turn the read-aloud functionality back on, so that blind people could use the eBook.  The software also allowed one to change the format of an eBook for easier reading, printing, copying or rearranging.  Much of this would ordinarily qualify as fair use in the analog world, but under the DMCA it was a criminal offense if it were necessary to break digital encryption to do so.

 

Skylarov was jailed for several weeks and detained for five months in the United States.  Fearing a public backlash, Adobe urged federal prosecutors not to pursue the case.  He was ultimately allowed to return home, but the Justice Department[258] elected to proceed against his employer under the criminal provisions of the DMCA.  Charges against Skylarov were set aside in exchange for his testimony against his employers.

 

The trial went forward.  In December 2002, a jury acquitted[259] ElcomSoft of all charges, concluding that the company had not intended for its reader to be used for copyright violation.

 

 

The RIAA also wanted to make sure that any digital protection format that was used would be universal.  They were worried that individual record labels might pursue different technological protection schemes that would produce incompatibility problems for customers, and which might possibly result in a format war between different music providers.

 

The team that SDMI created pursued a watermarking strategy for the technological protection of digital music against infringement.  SDMI came up with a first cut of its proposed watermarking scheme in September of 2000.  They felt sufficiently confident in the robustness of their system that they issued a public challenge to technologists to try and defeat the watermarking technologies that were being designed to protect digital music against illicit copying.   SDMI posted six copies of a watermarked MP3 song file on a website, and people were challenged to try and remove the watermarks without degrading the quality of the music.  A prize of $10,000 was offered for anyone who succeeded. 

 

A team headed by Prof. Edward Felten of Princeton University took up the challenge and succeeded in removing the watermarks in about two weeks of work.  He and his students used the challenge as a class project. 

 

Rather than submitting their results for the prize money, the Felten team wrote a scientific paper for presentation at a conference.  Before the team could present[262] [263] the results of their work at the conference, SDMI representatives, along with the RIAA and Verance Corporation, sent out a cease and desist letter that threatened the researchers with legal liability under the DMCA.  The charge was that by presenting the paper, Felten and his team would be violating a confidentiality agreement that they had accepted as a condition of entering the contest.    Violating this agreement might make his team liable under federal contract law, as well as being a possible violation of the DMCA for revealing how to circumvent a technological protection measure.  After conferring with lawyers, the Felten team withdrew their paper from the conference. 

 

Top scientists, prominent academics, software programmers, and conference organizers complained about the stifling effect of the DMCA on scientific research and freedom of expression.  Felten (with help from the Electronic Frontier Foundation) sued the SDMI group, requesting a declaratory judgment ruling that publication of the paper would be legal under the First Amendment.

 

SDMI later backed off its legal threat and the Felten case was dismissed[264] for a lack of standing.  However, some of the research was eventually published, after the Justice Department offered assurances to the Felten team that any legal threats against them were invalid.  Felten and his team then decided not to appeal the dismissal of their case. 

 

Ed Felten today runs a blog website known as Freedom to Tinker[265], in which issues surrounding computer and network security are discussed.

 

The SDMI initiative ultimately failed in the marketplace.  Sony actually tried to market an MP3 player[266] with some of the SDMI watermark copyright protections built into it.  However, no SDMI watermarked music was ever released, and the Sony device would play unwatermarked music just fine.  Reviewers criticized the device for the presence of these SDMI restrictions, and customers were reluctant to purchase the player, fearing the possibility of future restrictions that would make their player unusable.  Sony later pulled the player from the market, replacing it with a similar player without the SDMI restrictions built in.  The SDMI organization later closed up shop, concluding that it could reach no consensus for the adoption of any particular protection technology.

 

 

Several other prominent computer scientists expressed concerns about traveling to the USA, and some even advocated boycotting conferences held in the USA.  A number of conference planners decided to move their conferences to offshore locations, fearful of the DMCA. 

 

 

Their members protested vehemently, and IEEE eventually removed all mention of the DMCA from its publication submission policy. 

 

 

WalMart sent a takedown notice to FatWallet’s ISP under the safe harbor provisions of the DMCA, requesting that the list of prices be removed from the website, under the argument that the price listings were copyrighted materials and that posting them without permission constituted copyright infringement.   The price listings were obligingly removed. 

 

WalMart also submitted a special DMCA subpoena to FatWallet that sought the identity of the individual who had provided the sales information.  FatWallet objected to the subpoena on the ground that mere facts cannot be copyrighted, and that WalMart was attempting to use allegations of copyright infringement to silence speech.  Using another provision of the DMCA, FatWallet also demanded that WalMart pay damages for making a knowingly frivolous and false assertion of copyright.  WalMart eventually dropped its request for the name of the poster.

 

·         Benjamin Edelman[271], a law student at Harvard University and a researcher at the Berkman Center for Internet and Society, conducts research for the American Civil Liberties Union (ACLU) on “censorware”, which is software that blocks websites with objectionable material.  He had testified in court challenges to the constitutionality of the Children’s Internet Protection Act, which mandates that public libraries receiving federal funds must install such censorware. 

 

Edelman was doing research on the censorware provided by N2H2 Inc, a Seattle-based Internet filtering company, looking to see if there were any flaws in how its product operated.  One of the questions that he encountered was which websites the software was actually blocking.  Was the software too strict or too lenient—did it prevent access to sites that should not be blocked or did it fail to block many sites that it should?  However, the list of blocked sites was considered as proprietary information by N2H2, and the list was encrypted and could not be examined without actually breaking the encryption code.  N2H2’s “shrink-wrap” license also explicitly prohibited any reverse engineering of their product, which is what Edelman would have to do if he wanted to look at the list of blocked sites.

 

Edelman saw very soon that his research was leading him straight into a legal minefield.  Anxious to avoid risking civil and criminal penalties[272] [273] under the DMCA if he continued his research, Edelman went to federal court to clarify his legal rights.  In cooperation with the ACLU, he filed a lawsuit in July 2002 against N2H2 Inc to establish his First Amendment and fair use rights to examine the full list of sites contained in the company’s internet blocking program and to share his research tools and results with others.  Edelman sought a declaratory judgment that would prevent N2H2 from suing him under the anticircumvention provisions of the DMCA.  He also asked to be shielded from lawsuits alleging that he violated the terms of N2H2’s shrink-wrap license and that he had misappropriated trade secrets.  Edelman was concerned that the DMCA had made it unsafe to conduct this kind of research, even though it is clearly in the public interest. 

 

On April 9, 2003, the district court dismissed[274] the case, holding that Edelman did not have standing to sue, since he had not yet completed the research that may violate the DMCA.  The threat of a lawsuit or prosecution was considered too remote for the court to step in.

 

·         Lexmark is a well-known manufacturer of laser printers[275].  An important component of a laser printer is the toner cartridge, which carries the material that is used to imprint the image on the paper.  Toner cartridges are rather expensive, and when they are empty they must be replaced by another toner cartridge.  Consequently, printer manufacturers often make more money on the replacement cartridges than they do on the printer itself.    It is almost like the Polaroid camera, which they practically gave the camera away to you, and then they soaked you for the film.

 

Because of the high cost of replacement toner cartridges, a market niche has opened up for companies that can refill empty toner cartridges and then resell them for a price that is significantly lower than that for a brand new replacement cartridge.  These are known as aftermarket cartridges, and are designed to undercut the laser printer manufacturer’s price for a new toner cartridge.

 

The Lexmark toner cartridge (and the cartridges for many other printers as well) has a chip in it that tells the printer when it is empty, and the printer is designed so that it will not accept another manufacturer’s cartridge, or even a Lexmark cartridge that has been refilled by a third party vendor.  Competing cartridges are thus frozen out.  This is almost as if an automobile manufacturer were to forbid you from using the “wrong” brand of gasoline in your car, or to keep you from putting the “wrong” brand of tires on your, car, or to require that you use only their parts to fix your car.

 

In order to make their aftermarket cartridges work in a Lexmark printer, the refillers used a chip that mimics the authentication sequence that is used by Lexmark.  The chip “fools” the printer into accepting the aftermarket cartridge, thus “circumventing the technological measure that controls access to the toner loading program and the printer engine program”.

 

In December of 2002, Lexmark file a complaint[276] against Static Control Components (SCC), an aftermarket cartridge vendor, alleging that their product violated the anti-circumvention provisions of the DMCA.  In addition, Lexmark argued that the computer programs residing on its printer chip and in the printer itself were copyrighted works and that SCC’s actions constituted copyright infringement.  In response, SCC countersued, accusing Lexmark of illegally monopolizing the toner cartridge market and falsely representing their products.

 

A district court in Kentucky issued a temporary injunction preventing SCC from marketing their refill cartridge.  SCC appealed the ruling.  In October of 2004 a federal appeals court judge overturned[277] [278] the district court ruling, arguing that Lexmark cannot use the DMCA to prevent a competitor from creating aftermarket printer cartridges.   The court ruled that the toner loading program was not a copyrightable work, since it was merely functionality and not a work of creative expression.  Even if those programs were copyrightable, SCC’s copying of protected portions of the work would still fall under fair use. The court rejected the argument by Lexmark that SCC had provided unauthorized access to Lexmark’s onboard computer since the consumer’s purchase of the printer had already effectively established such access and that the program was readily accessible to read electronically in memory every time a new cartridge was mounted in the printer.  SCC’s action constituted a legal replacement of Lexmark’s cartridges. 

 

The court argued that it was wrong to interpret the DMCA as a tool to protect monopolies—the law was designed to prohibit the pirating of copyright-protected works such movies, music, and computer programs, not to create monopolies for replacement parts.

 

The Supreme Court chose not to hear Lexmark’s appeal, so the lower court ruling stands.

 

·         Slashdot is an Internet forum[279] [280] that hosts discussions of various computer and Internet-related subjects.  In the spring of 2000, there was a spirited discussion in the forum about Microsoft’s proprietary implementation of an open security standard known as Kerberos.   Several participants on Slashdot had charged that Microsoft had changed the open, non-proprietary Kerberos specification in order to prevent competing servers from interacting with Windows 2000, forcing them to purchase Microsoft server software. 

 

Microsoft responded to these charges by republishing its Kerberos specification, but it conditioned access to the specification on agreement with a “click-through” license that specifically forbade disclosure of the specification.  Slashdot posters then responded by republishing the Microsoft specification and Microsoft then invoked the DMCA, demanding that Slashdot remove the republished specification. 

 

Critics[281] claimed that the DMCA made it possible for a publisher or software vendor to censor commentary about their products simply by invoking access and disclosure restrictions.

 

·         The administrators of an online bulletin board known as AVSforum.com[282] were forced to censor all discussion of a software program that permitted TiVo users to move video from their recorders onto the hard drives of their computers.  Once the video was transferred to the computer hard drive, it became very easy to share it with others via the Internet.  TiVo was anxious to discourage discussion of the video extraction process, lest it anger copyright owners.

 

·         Blizzard is a popular vendor of video game servers, which interact with Blizzard video games online.  Three software programmers created the BnetD game server, which was free, open-source software that lets gamers play Blizzard games as well as games by other vendors on the platform of their choice.  Blizzard argued that the programmers who wrote BnetD violated the DMCA’s anti-circumvention provisions because the BnetD software did not implement the code that is designed to prevent the use of illegal copies of their games, and that the programmers also violated the terms of Blizzard’s EULA which prohibited reverse engineering.

 

A district court held that programmers are not allowed to create free software that is designed to work with commercial products.  It is unlawful to reverse engineer commercial software programs, making it impossible to create new programs out of older ones.  The 8th Circuit Court of Appeals held [283] that the reverse engineering and emulation of the Blizzard software was illegal.  The court held that the DMCA prohibited the reverse engineering needed to create the program, and that shrink-wrap or click-through licenses are legally enforceable to prevent reverse engineering.

 

·         CNET reporter Declan McCullagh happened to find[284] some publicly available documents on the Transportation Security Administration (TSA) website.   The website said that these documents contained information about airport security procedures.  Although no password was necessary to download the documents, they were distributed in encrypted form and a password was required to open and read them.  McCullagh obtained the passwords from an anonymous source, but he did not actually read the files out of fear of DMCA liability.  Ironically, any foreign journalist or terrorist out of the reach of the DMCA would be free to use the password and read the documents.

 

·         321 Studios was a company sold a product known as DVD Copy Plus, which allowed owners of DVDs to make personal backup copies of their movies onto CD-ROMs or onto blank DVD-R disks.  The software used DeCSS, a decryption technology that lets users copy DVD movies despite the CSS encryption placed on the disks to prevent this sort of copying.  

 

Knowing that the major movie studies would certainly object to DVD Copy Plus, the 321 Studios company filed suit against several movie producers, asking the court to declare that their product does not violate the DMCA.  They argued in their lawsuit that their product has substantial non-infringing uses, that its use constitutes fair use since it is perfectly legal for a customer to make a backup copy of their own DVD.  MGM et. al. counter sued[285] for damages and asked for a permanent injunction against the sale of the 321 Studios product.

 

A US district court ruled that the DVD Copy Plus software was indeed illegal under the DMCA.   Although a DVD purchaser is certainly allowed to view a DVD that they have purchased, they are not allowed to decrypt it, since the only entities allowed to decrypt DVDs are those that have legally licensed CSS keys from the Content Control Authority. 

 

Although 321 Studios had argued that CSS wasn’t really a copy-control mechanism because it only limited access, not copying, the court ruled that the purpose of that controlled access was indeed to prevent copying, since the content on the DVD could not be copied until it was first decrypted.  Therefore CSS was a copy-control measure and thus fell under the DMCA.  Although the actions of purchasers of the DVD Copy Plus program might be protected under fair use, the actions of the manufacturer were not, since trafficking in circumvention technologies is banned under the DMCA.  The court also ruled that DMCA was not unconstitutional.

 

The decision still permits users to make fair-use copies of protected works, but it makes it difficult for users to obtain tools that will make it possible for them to do so.  It now becomes virtually impossible for consumers to obtain the tools to make fair use copies of DVDs, even when it would be perfectly legal for them to make such copies.  Even if a public domain work were issued on an encoded DVD, it would be impossible for the consumer to make copies of the work without using illegally distributed software.  This provides content providers with what is essentially an eternal copyright, which is in violation of the limited times requirement of the intellectual property clause of the US Constitution.

 

·         Macrovision is a company that licenses copy protection software that is designed to prevent the analog copying of videos.  Most commercial VHS tapes as well as video disks have Macrovision copy-protection on them, which prevents you from using your VCR to make analog copies of these tapes.  The 321 Studios company sold backup software, which worked by stripping off the Macrovision copyguard so that an analog copy of the video disk could be made onto a VHS magnetic tape.  Macrovision filed a lawsuit against 321 Studios, alleging that it had violated Macrovision’s patents and that it had violated the anti-circumvision provisions of the DMCA.

 

In May of 2004, a federal judge issued an injunction barring 321 Studios from selling the various versions of its copying software.  In August of 2004