When are video games unlike movies – when publicity rights are at stake

In a 2-1 vote, the Third Circuit Court of Appeals reversed a district court ruling in favor of EA Sports, finding that the publicity rights of Former Rutgers football player, Ryan Hart, were violated by depicting Hart in the videogame NCAA Football in 2004-06. The decision is a step forward for collegiate players seeking compensation from the exploitation by the NCAA and its licensing partners. The suit highlights the inability for players to receive compensation even after they have left college and NCAA eligibility rules no longer bar them from receiving payment.

The decision is step backwards for free speech advocates who seek clearer and more consistent protection from claims of publicity rights when celebrities and athletes are depicted in communicative works like films and video games. While the decision provides a thoughtful roadmap through the various legal tests applied to publicity rights, the court’s application of New Jersey law is at odds with the same test’s application in California. This will likely lead to increased confusion and more rounds of litigation until new statutes are enacted or cases decided.

The decision focuses on the exactitude of the video game in reproducing the player but unfortunately pays less attention to the exactitude of the Supreme Court/s recent decision in Brown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729 (2011). The Third Circuit quoted Brown on the protection afforded video games under the First Amendment. “[V]ideo games communicate ideas — and even social messages — through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player’s interaction with the virtual world).”

Although the court recognizes that “video games enjoy the full force of First Amendment protections,” it highlights the limits of those rights. “As with other types of expressive conduct,” the court explains, “the protection afforded to games can be limited in situations where the right of free expression necessarily conflicts with other protected rights.”

Seeking to apply the best balancing test between the First Amendment and state publicity rights, the court reviews and rejects both the “Predominant Use Test” and the “Rogers Test.” Under the Predominant Use Test, the Missouri Supreme Court held that “[i]f a product is being sold that predominantly exploits the commercial value of an individual’s identity, that product should be held to violate the right of publicity and not be protected by the First Amendment,   even   if   there   is   some ‘expressive’ content in it that might qualify as ‘speech’ in other circumstances.” Unfortunately the Missouri Supreme Court then treated a comic book as such a commercial product and found the use Tony Twist’s likeness a commercial misappropriation when transformed into the evil Anthony “Tony Twist” Twistelli. The Third Circuit correctly rejected this application of such a test.

By our reading, the Predominant Use Test is subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics. These two roles cannot co-exist.

The Third Circuit similarly rejected the Rogers Test, which relies on trademark considerations.

In analyzing the right of publicity claim under Oregon law, the Second Circuit noted Oregon’s “concern for the protection of free expression,” and held that Oregon would not “permit the right of publicity to bar the use of a celebrity’s name in a movie title unless the title was wholly unrelated to the movie or was simply a disguised commercial advertisement for the sale of goods or services.”

The application of the Rogers test to the content of a work almost leads to a finding of free speech, although the content would violate the test where the content was really an advertisement. For example, where the paid ad were an advertorial, a newspaper column of paid content, or in the case of a TV episode which was little more than an infomercial for a forthcoming product. In these cases the content was also a disguised commercial advertisement for sale of goods or services. Unless the content were an advertisement, the Rogers Test would permit the publisher to succeed over the publicity rights.

The Third Circuit adopted the Transformative Use Test developed in California, which is based upon the Copyright Act’s fair use standard. Specifically, that court, in Comedy III Prods., Inc. v.  Gary Saderup, Inc., 21 P.3d 797, 804-08 (Cal. 2001), adopted the first fair use factor, “the purpose and character of the use,” as the sole determinant test to balance the publicity rights claims and free speech claims. In Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)), the Supreme Court explained the meaning of this fair use factor:

whether the new work merely “supercede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”

The Transformative Use Test has been applied inconsistently in California:

  • Tee-shirts depicting The Three Stooges to be insufficiently transformative to protect the free speech rights of the artist.
  • Comic books depicting Johnny and Edgar Winter as “villainous half-man, half-worm creatures, both with long white hair and albino features” sufficiently transformative to be free speech.
  • Video game depicting musician Kierin Kirby sufficiently transformative to protect Sega’s free speech rights to incorporate her image in a video game.
  • Avatars depicting No Doubt in video game Band Hero were life-like depictions and therefore violation of contractual limitation on publicity rights was a violation of those rights.

The Third Circuit applied this transformative test and in a 2-1 decision found that the literal depiction of Hart’s avatar was insufficiently transformative to protect the free speech rights of the video game makers. The dissent emphasized the video game’s creative and transformative elements as a whole rather than the particular depiction in isolation.

Unfortunately both the majority and dissent ignored this highly inconsistent and arbitrary nature of the Transformative Use Test. Like the Predominant Use Test rejected by the court, the application of the Transformative Use Test remains a rather arbitrary rule. Since both the Hart decision and the Kierin Kirby decision were summary judgment decisions, the courts were basing their decisions on stipulations that the individuals were depicted in the games.

More troubling, if the First Amendment decision of Brown is to be given full effect, then this analysis should apply to television coverage of sports as well. If Hart’s image is exploited in a video game, is it not also exploited when broadcast? The NCAA cannot make any claim to the publicity rights of its former players or players who are no longer eligible under its rules. (Whether the nation’s colleges should be able to strip undergraduates of their privacy and publicity rights as a condition of college eligibility is a broader question best left to a different analysis.) I cannot distinguish between’ Hart’s avatar and a Tina Fey sketch on Saturday Night Live depicting Sarah Palin. Frankly, judges should be empowered to make that distinction either.

I have advocated for a different outcome,[1] based more closely on the Rogers Test of the Second Circuit that emphasizes that publicity rights only exist when the name or likeness is used for a commercial transaction. As such newspapers, news broadcasts, comic books and video games are immune from publicity rights claims unless they are used to promote a commercial transaction, in other words, they are a disguised advertisement for sale of a good or product.

In addition, a second category of commercial appropriation similarly exists when substantially then entire person’s act is exploited. Thus if a news station were to broadcast all of a concert under the guise of covering that concert, it would steal the commercial exploitation of the work itself. That approach accommodates the Supreme Court decision in Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562 (1977). In Zacchini, the entire act of the Human Cannonball was broadcast on the news and Zacchini sued for damages as a result. The Supreme Court explained that free speech rights must provide balance with state publicity rights, agreeing that a cause of action for Zacchini’s right of publicity was appropriate under Ohio law.

When a publisher of communicative content takes a substantial portion of the commercial work, then a fair use style balancing is essential to be sure that the communicative work has not usurped the marketplace of the commercial work. Such a test will protect the magicians, comedians, musicians, poets, and trapeze artists of the world. Depicting an athlete in a video game or in a fantasy sports league hardly usurps the athlete’s entire performance; it remains communicative rather than a product or service. It should not matter whether the depiction is accurate or transformed, for that decision is precisely an aesthetic decision inappropriate for determination by judges and courts.

The Hart decision may increase the importance of the Transformative Use Test outside of California, but it does not provide a more thoughtful or more predictable distinction between free speech and publicity rights. The time for a uniform state statute is finally at hand.


[1] Garon, Jon M., Beyond the First Amendment: Shaping the Contours of Commercial Speech in Video Games, Virtual Worlds and Social Media (November 20, 2011). Available at SSRN: http://ssrn.com/abstract=1962369 or http://dx.doi.org/10.2139/ssrn.1962369;

Garon, Jon M., Playing in the Virtual Arena: Avatars, Publicity and Identity Reconceptualized through Virtual Worlds and Computer Games (March 26, 2008). Chapman Law Review, Vol. 11, No. 3, 2008. Available at SSRN: http://ssrn.com/abstract=1334950 or http://dx.doi.org/10.2139/ssrn.1334950.

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Comprehensive Copyright Review – The First Steps of a Very Long Journey

House Judiciary Committee Chairman Bob Goodlatte has announced that the Judiciary Committee will conduct a comprehensive review of U.S. copyright law over the coming months. The comprehensive review is not any particular legislative agenda, but it will serve as an open invitation to content industries, technology industries, and the public in a way that likely never occurred in any of the Copyright Act’s prior legislative reforms.

Chairman Goodlatte emphasized the evolution of technology and media in his remarks:

The discussions during the early 1900’s over the need to update American copyright laws to respond to new technology were not the first time such discussions occurred and they will certainly not be the last. Formats such as photographs, sound recordings, and software along with ways to access such formats including radio, television, and the Internet did not exist when the Constitution recognized intellectual property. My Committee has repeatedly held similar discussions about new forms of intellectual property as they arose and enacted laws as appropriate. Driven by new technologies and business models, a number of changes to copyright law went into effect in 1976.

copyright officeNo one should expect immediate legislation. As Register of Copyrights, Maria Pallante noted in her recent congressional testimony “a major portion of the current copyright statute was enacted in 1976. It took over two decades to negotiate, and was drafted to address analog issues and to bring the United States into better harmony with international standards, namely the Berne Convention.” Even there, the effective date for U.S. adherence to the Berne Convention took until March 1, 1989.

In the decades of negotiation over copyright reform in the past, the tension was primarily between commercial interests of the content industries – film, television, music, and publishing industries with the trade unions, authors, and creative interests. But that focus has shifted dramatically with the rise of the information age.

The defeat of SOPA highlighted the tension between the technology industries – led by the ISPs, Google, Apple, Microsoft, eBay, Facebook, and Wikipedia with the content industries. In this fight, the content industries continue to lose. They could not push ACTA and they have lost in the courts over first sale in Kirtsaeng v. John Wiley & Sons, secondary liability in Viacom Int’l v. YouTube Inc. and Tiffany v. eBay, Inc., and many others.

Even more importantly, the rise of social media and the role copyright now plays – or interferes – in the daily lives of ordinary citizens means that the public’s interest in this debate will be higher than ever. Organized by social media companies like Facebook, LinkedIn, Twitter, Google and hundreds of others, the public will be exhorted to be heard every time they log on or check in. This is a great change for democracy. But we shouldn’t forget that those intermediaries are also the very technology companies that have their own stake in the outcomes.

Register Pallante has indicated some of the critical issues before the Judiciary Committee (though the explanation and approach is mine, not Register Pallente’s):

  • First sale doctrine – which could include both (i) a review of Kirtsaeng (2013) which internationalized first sale, and (ii) technologies that allow for a digital forward-and-delete that mimics first sale in the online environment;
  • Orphan works – questions about how to handle works for which the ownership information or the transfers of ownership have been lost;
  • Library exceptions – addressing digital collections and the ability to gain far greater usage out of far fewer copies;
  • Statutory licensing reform – on rate setting and rates;
  • Federalization of pre-72 sound recordings – resolving the issues involving retroactive pseudo-copyright protection for these works and the implications on the public domain;
  • Resale royalties for visual artists – addressing the conflict with those states which provide these rights and potentially creating national legislation;
  • Copyright small claims procedure or courts – adding a mechanism for copyright to be enforceable for small scale claims; and
  • Mass digitization of books – addressing the myriad of problems triggered by the intermediate copyright violations of works, the fair use of showing snippets, the procedural issues in the project, and many other concerns.

This list does not include many other potential areas for reform, including some of my preferred topics:

  • Explicit free speech and human rights accommodations for the statute, since copyright and First Amendment issues increasingly intersect;
  • Expanded fair use or copyright exemptions codified under Section 110 for digitization, reverse engineering, comparative advertising, and others;
  • Anti-circumvention (DMCA) reform to prohibit its use for use in commercial products – such as cars, printers, garage doors, and other goods;
  • Expanded registration requirements so that most of the economically insignificant works people create daily are outside of the copyright regime;
  • Statutory Damage Reform to tie statutory damages more closely to actual damages and separate commercial infringers from consumers;
  • Mandatory cease-and-desist system so that no one can be sued for copyright damages unless they have been notified directly the conduct is infringing and continue, after a reasonable opportunity to cure has been provided; and
  • Broader non-commercial exceptions to copyright analogous to the public/private distinction of the 1909 Act.

Copyright needs to continue to adjust to address these issues. While the system is not broken, there are many strains. Again, from Chairman Goodlatte:

There is little doubt that our copyright system faces new challenges today. The Internet has enabled copyright owners to make available their works to consumers around the world, but has also enabled others to do so without any compensation for copyright owners. Efforts to digitize our history so that all have access to it face questions about copyright ownership by those who are hard, if not impossible, to locate. There are concerns about statutory license and damage mechanisms. Federal judges are forced to make decisions using laws that are difficult to apply today. Even the Copyright Office itself faces challenges in meeting the growing needs of its customers – the American public.

It will be important to be heard on these issues and to think carefully about a system that is good for today’s issues, tomorrow’s challenges and the decades of unanticipated changes the new law will cover.

Finding an Audience can cost Documentary Filmmaker’s their Reporter’s Privilege

In a recent New York Times business article about documentary film distribution, Tanzina Vega described how producers of the upcoming film Girl Rising have crafted a tailored marketing campaign.

To promote the new film, and demonstrate the impact that documentaries can have on audiences, they will rely on technologies often used by more traditional advertisers, including personalized ads for employees of companies viewing them online.

Girl Rising produced by 10×10, “journeys around the globe to witness the strength of the human spirit and the power of education to change the world.” 10×10 describes itself as a “global movement for girls’ education; a film and social action campaign. People working together to change girls’ lives.”

Funding documentary filmmaking requires collaboration and creativity. Financing and distribution partnerships, therefore, provide a useful approach. The distribution strategy is echoed by docuMentors, providing tips on how to distribute documentaries “in a changing world.” Among the good advice are themes consistent with the New York Times advertising coverage:

1. Design a Customized Distribution Strategy: Every film needs a customized distribution strategy. This strategy should be designed as early as possible, increasing funding options. To create this strategy, you must understand your goals & priorities, identify your core audience, identify / plan different versions of your film (theatrical, TV, DVD, foreign, educational), determine your distribution avenues and release sequence, identify potential partners, and determine on- and off-line positioning. Your strategy should be flexible and assessed and redefined.  …

9. Partner with Non-Profits and Online Communities: Non-profits can be indispensable distribution partners. They can build awareness among key core audiences by hosting screenings or promoting on their websites or in publications. Online communities can also increase buzz, audience, and sales.

Despite the sound advice this provides regarding the distribution of a documentary film, it may have a surprising and unintended consequence to the characterization of the documentary film as a work of journalism entitled to a qualified privilege from subpoena or civil discovery.

The Reporters Committee for Freedom of the Press provides an excellent summary of the Reporter’s Privilege. In forty states, journalists are protected by statutes that limit the ability of courts to issue subpoenas or civil discovery orders. These protect the confidential sources and journalist’s work product. These protections are highly qualified, however, often basing the protection on the professional journalistic role of the individual seeking the privilege. They also vary considerably from state to state – and even differ between federal and state rules within the same state.

Oversimplifying the mosaic of state laws and constitutional protections – the core basis of protection is the obligations of the journalist’s neutrality and the ongoing professional need to obtain the news-gathering information. As a result, these rules may extend to documentary filmmakers, bloggers, book authors and others, but the extension beyond traditional journalism is inconsistent and easily lost. In addition, the reporter’s privilege does not extend to eye witness evidence, so footage captured that includes commission of a crime is unlikely to receive any privilege.

When the documentary filmmaker becomes an advocate, the privilege is likely to be forfeit. An example of this came from Joe Berlinger’s documentary Crude. A cut of the documentary had been shown to the plaintiffs in the lawsuit which was the subject of the documentary. The plaintiff’s lawyers asked that one scene be deleted from the movie. Even though the decision to remove it was the filmmaker’s, the court found the relationship was no longer that of an independent journalist and the shield laws no longer applied. Despite support from the documentary film community, the New York Federal Courts found that a relationship between the plaintiffs in the litigation and the filmmaker which made the filmmaker an advocate rather than journalist. Berlinger had to turn over his 600 hours of unused footage as well as all documents and correspondence.

More recently, New York City attorneys have demanded Ken Burns provide footage related to interviews conducted in association with The Central Park Five, his documentary film focusing on the conviction and exoneration of five African American teens who had been convicted of raping a women in New York’s Central Park. The film documents the wrongful conviction. Despite confessions from four of the men, DNA evidence proved that a different person had committed the crime. City officials have taken the position that Burns is an advocate for the exonerees and their families, which negates the neutrality and the privilege. The city is fighting civil liability for the wrongfully convicted men. The demand is still pending.

For filmmakers seeking financial or distribution support from nonprofits and social action organizations, the filmmaker should understand that one cost of that support is the elimination of independence in the eyes of the courts. Even if the filmmaker is not under any contractual or actual control by the social action organization, the agreement may be enough to void any claim of neutrality, making the filmmaker’s footage and files open to the courts and the attorneys.

While documentary filmmakers must be creative in funding their work, care must be given to balance support with independence. The alternative can be very costly.

Foretelling the Future of the Book Business; Turow says leverage comes at too high a cost for the literary market

A student of the publishing industry would be amazed at the transformation which has taken place in the last decade. According to the Association of American Publishers, “[t]he eBook phenomenon continued in 2011 with eBooks ranking, for the first time, as the year’s #1 individual format for Adult Fiction.”

This transformation comes at a time when the battle over tablet readers has suddenly heated up. Apple’s lead in tablet computing has slipped to a paltry 50.4% – still the global majority, but a 15% decline in the last quarter. Which of course is before the new Microsoft marketing push for its competing Windows 8 products. Using Google’s Android OS, Samsung has taken away the majority of that market share away from Apple.

An increase in book reader form factors to include Apple, Microsoft, Google powered Samsung (and maybe Sony) does not suggest a fragmented market. (Both Amazon and Barnes & Noble are pushing branded tablets as well.) Instead it suggests that the dominant computer companies are rolling from video games and music distribution into consumption of the publishing industry.

Perhaps this is why antitrust actions continue. The Department of Justice plans to press its case against Apple and publishers MacMillan and Penguin over restraint of trade in the pricing of ebooks on the iTunes platform. Former publishing defendants Hachette Bok Group, HarperCollins Publishers and Simon & Schuster have settled identical charges.

Notably absent from the list of defendants was Random House. Instead of arranging pricing structures with its competitors through a standardized iTunes license, Random House instead elected to grow more powerful by acquiring Penguin. As the New York Times describes the merger, it “narrows the business to a handful of big publishers, and could set off a long-expected round of consolidation as the industry adapts to the digital marketplace.”

The merger combines two European publishing giants – Bertelsmann’s Random House and Pearson’s Penguin, reducing the “big six” by at least one. It may trigger even more. Again from the New York Times:

[T]he major publishers have been expected to join together, getting smaller in number and bigger in size. The other four houses among the so-called Big Six are also owned by larger media conglomerates: HarperCollins, which is part of News Corporation; Macmillan, owned by Georg von Holtzbrinck of Germany; Hachette, whose parent company is Lagardère of France; and Simon & Schuster, a division of CBS. They could all now face increased pressure to consolidate in response to a combined Penguin Random House.

In the blog from Authors Guild (of which I am a member), Scott Turow had this to say:

“Survival of the largest appears to be the message here,” said Scott Turow, Authors Guild president. “Penguin Random House, our first mega-publisher, would have additional negotiating leverage with the bookselling giants, but that leverage would come at a high cost for the literary market and therefore for readers. There are already far too few publishers willing to invest in nonfiction authors, who may require years to research and write histories, biographies, and other works, and in novelists, who may need the help of a substantial publisher to effectively market their books to readers.”

Still, the lesson may be that big wins. The Google Book scanning project has been in litigation for seven years with apathy and partial settlements derailing most of the importance of the litigation. In October 2012, the publishers capitulated and settled. The arrangement involved the Association of American Publishers, along with McGraw-Hill Companies, Pearson Education, Penguin, John Wiley & Sons and Simon & Schuster. The Authors Guild continues to fight, though the relevance of the litigation seems to be waning. The actual use of the digitized books has become more constrained and falls into fair use activities like text searches and archival backups. As a result, the Authors Guild was handed a stunningly lopsided defeat in its action against the HathiTrust, the partnership between Google and the university libraries that allowed digitization of their collections.

These concerns are a far cry from the monopoly concerns leveled at national book retailers a decade ago. In 2011 Borders Books was the latest mega-book retailer to disappear in bankruptcy. (Waldenbooks was a subsidiary disappeared as well.) Crown Books, once the third largest retailer, collapsed a decade earlier. This leaves only Barnes & Noble and Books-A-Million as bookstore retail chains, though Walmart, Costco, and Target sell mass retail. Online Amazon, Barnes & Noble, and Books-A-Million dominate sales.

It has never been easier for an author to publish materials for the world to see or even to place works into national distribution. The only thing the new publishing order lacks is infrastructure to support nurturing talent and carefully editing works. Larger publishers rely more on backlists and less on new authors. Fewer editors spend less time on more manuscripts. Research and factual works are mined by researchers using word searches and shoddy research that diminishes the need to acquire actual copies of those works.

Arbitrary legal barriers to the transformation are irrelevant or even counter-productive. Antitrust suits will simply change who will dominate the new, concentrated landscape. Nonetheless, it is important to note the passing of an era even if nothing can be done save mourn its passing.

So, in keeping with the season, sing along – with feeling:

Five major publishers, four ebook sources, three mass market chains, two national bookstores … and just Amazon for all our online needs!

Copyright Anti-circumvention provisions published; jailbreaking for phones okay but not tablets; access to DVDs for comment and criticism in education and documentary filmmaking increase

In 1998 Congress updated the copyright law with the Digital Millennium Copyright Act with hopes that it provided a forward-looking approach to the rapidly changing technologies affecting movies, music, television, publishing, the artists and all manner of creative endeavors. Among its two key provisions are the Section 512 take-down provisions[1] and the Section 1201 anti-circumvention provisions.

Section 1201(a)(1)(A) makes it a crime (and a tort) to “circumvent a technological measure that effectively controls access to a work protected” by copyright. Put another way, if a work protected by copyright is accessed through a digital lock, such as encryption or a digital authentication handshake, then the steps to get around that process violate sec. 1201. The law has some specific exemptions built in for library research, law enforcement, reverse engineering, and encryption research. But these exemptions are highly limited. As a result, Congress also called upon the Librarian of Congress, in consultation with the Register of Copyright to provide a review every three years to publish a list of additional exemptions.

The fifth such list has just been published: Section 1201 Rulemaking: Fifth Triennial Proceeding to Determine Exemptions to the Prohibition on Circumvention. A copy of the final rule is here.

To be successful, an applicant seeking an exemption had to establish by a preponderance of evidence on a factual record that  “(1) uses affected by the prohibition on circumvention are or are likely to be noninfringing; and (2) as a result of a technological measure controlling access to a copyrighted work, the prohibition is causing, or in the next three years is likely to cause, a substantial adverse impact on those uses.”

In most cases, the exemptions are modification of the petitioner’s actual request. Here is a summary of approved exemptions:

  1. Literary works distributed electronically – assistive technologies: Literary works, distributed electronically, that are protected by technological measures which either prevent the enabling of read-aloud functionality or interfere with screen readers or other applications or assistive technologies for the blind or persons with a disability under 17 U.S.C. 121.
  2. Wireless telephone handsets – software interoperability: Jailbreaking of smartphones – but not tablets – to allow for apps from outside the provider app store.
  3. Wireless telephone handsets – interoperability with alternative networks: phone unlocking to allow a handset to be redeployed on another phone network.
  4. Motion picture excerpts – commentary, criticism, and educational uses: circumventing the DVD Content Scrambling System for the traditional fair use purposes of comment and criticism where “where circumvention is undertaken solely in order to make use of short portions of the motion pictures for the purpose of criticism or comment in the following instances: (i) in noncommercial videos; (ii) in documentary films; (iii) in nonfiction multimedia ebooks offering film analysis; and (iv) for educational purposes in film studies or other courses requiring close analysis of film and media excerpts, by college and university faculty, college and university students, and kindergarten through twelfth grade educators.” The exemption for motion picture capture makes fairly clear that screen capture is not a circumvention prohibited by the statute. The Register also supported the exemption because “[d]espite the commercial aspect of uses by documentary filmmakers and multimedia ebook authors, … when a short excerpt of a motion picture is used for purposes of criticism and comment, even in a commercial context, it may well be a productive use that serves the essential function of fair use as a free speech safeguard.”
  5. Motion pictures and other audiovisual works – captioning and descriptive audio: permits the circumvention of motion pictures and other audiovisual works contained on DVDs or delivered through online services to facilitate research and development of players capable of rendering captions and descriptive audio for persons who are blind, visually impaired, deaf, or hard of hearing.

In addition to this list, the report specifically identified a number of categories of works that did not earn an exemption.

Works in the public domain

Of greatest note is the ongoing refusal to provide an exemption to circumvent a digital protection measure to obtain a work in the public domain. The Register correctly notes that it is not a violation of section 1201 to circumvent a technological protection measure unless there is a copyright work being sought. Therefore no exemption is required.

This is more than parsing language. To create an exemption would suggest an expansion of section 1201 that is unwarranted. As a result, the report that the exemption is not needed provides ample protection to the public.

Space-shifting for DVDs

The other significant rejection was the space-shifting of DVD content to devices without DVD players such as iPads and other tablets. The U.S. has been behind Europe in providing that non-physical versions of movies are generally offered in streaming mode rather than download format. The ability to acquire a second format of the same content is also generally sold at a premium price. An exemption to section 1201 would have put significant pressure on the motion picture industry regarding this transition. It is likely that this will become of greater economic and legal importance by the next rule-making.

Jailbreaking Limited to Phones – No Tablets, Video-Game Consoles or Computers

The report also rejected the desire to permit video game console interoperability. Much like the rejection of tablet jailbreaking, the report refused to exempt console jailbreaking so that lawful third-party games could be used on a particular platform. In both instances, the Register rejected the evidentiary record on the matter. There is likely little evidence to be developed because the practice may be quite common and the benefits of enforcement are too limited.

The report similarly rejected a desired exemption for jailbreaking computers to allow installation of unauthorized operating systems. This appears to fail for the reasons stated in the other jailbreaking proposals. In contrast to the smartphone app stores, the Register takes the position that the other categories of interoperability limitation have not developed sufficient economic concerns to merit an exemption.

Taken together, the rule-making continues to reflect a very conservative, incremental approach to the development of new technology and the appropriateness of anti-circumvention self-help. The Register has made great strides regarding fair use in the educational and documentary filmmaking environments but was probably overly conservative on iPads and tablet computers.

Conclusion

As a whole, the report is thoughtful and predictable. The process restarts with each triennial review.

In each rulemaking proceeding, the Register and Librarian review the proposed classes de novo. The fact that a class previously has been designated creates no presumption that redesignation is appropriate. While in some cases earlier legal analysis by the Register may be relevant to analyzing a proposed exemption, the proponent of a class must still make a persuasive factual showing with respect to the three-year period currently under consideration. When a class has been previously designated, however, evidence relating to the costs, benefits, and marketplace effects ensuing from the earlier designation may be relevant in assessing whether a similar class should be designated for the subsequent period.

As the Register describes the process, it becomes clear how important the evidentiary record and the economic significance of the particular issue must be. Unless Congress has itself shown a preference for a class of users, such as persons with disabilities, the exemptions are limited to very large classes of users.

Of course, if you did not get what you wanted, start preparing your petition for rule-making VI – coming in just two years.


[1] Known as the DMCA Takedown Provisions, section 512 provide ISPs immunity from copyright liability if the ISP provides an effective method of accepting copyright infringement notice allegations and responds to those notices in a timely manner. Though highly criticized by some organizations, these provisions do not have a triennial review process.

Georgia State Electronic Reserves and Copyright Ruling

Guest Blog by John Schlipp,[*] Intellectual Property Librarian, W. Frank Steely Library; schlippj1@nku.edu 

Not too long ago, headlines in the news reported of college students and homemakers taken to court by the recording industry for noncommercial file sharing of a small number of MP3 music files. Although officially illegal, some of these cases could be considered small change compared to piracy and copyright infringement issues of greater magnitude. Please understand that I am not condoning piracy. However, from a business point of view, one might question the return on investment by the Recording Industry Association of America for pursuing minor infringements. Indeed, discussions from intellectual property scholarly communities have debated whether these and other types of alleged infringements constitute piracy or fair use. One need only read the headlines to see that academia is not immune from the copyright piracy debate: “Are College Professors and Librarians Digital Pirates?;” “Professors get ‘F’ in copyright protection knowledge;”  and most recently a triumph for educators as, “Judge sides with GSU on copyright fight.”

As an intellectual property librarian directing the new IPAC (Intellectual Property Awareness Center) at Northern Kentucky University’s Steely Library, I have been following Cambridge University Press et al. v. Patton et al, the GSU (Georgia State University) case, since its inception in 2008.[i] For those unfamiliar, this case deals with the practice of librarians posting class readings for instructors as electronic reserves on password restricted content management sites such as Blackboard and determining at what point such postings are fair use rather than infringement. On May 11 2012, Judge Orinda Evans of the U.S. District Court for the Northern District of Georgia ruled that virtually the entire alleged infringements in this case were fair use. This is a victory largely for librarians, educators, and fair use, but a defeat for publishers.  Since librarians and educators must still work with publishers for the content they need, it is almost certain that the publishers will appeal this case.

I coach instructors about fair use and copyright in the classroom, as well as copyright from a creator point of view. Usually their preconceived beliefs about fair use and instruction range from excessively cautious (as they are intimidated by some misleading copyright notices posted by publishers and other media producers) to overly oblivious (believing that everything copied is fair use for education). Moderation is the exception. This tells us that, on the one hand a larger group of educators relinquish much of their lawful fair use opportunities for instruction, while others defy the fair use doctrine which could result in copyright infringement.[ii]

Kenneth Crews (legal copyright expert) and author of Copyright Law for Librarians and Educators, suggests that we can only benefit from fair use by taking control and understanding our legal rights as copyright owners and copyright users. With this awareness, we can be familiar with alternatives that the law allows and make choices about copyright that best advances our objectives as teachers, learners, and information professionals.[iii]

The doctrine of fair use within Section 107 U.S. Copyright Law, allows an unspecified limited reproduction of copyrighted materials related to classroom use. Those of us in education often refer to fair use guides from authorities such as Kenneth Crews at the Copyright Advisory Office of Columbia University Libraries http://copyright.columbia.edu/copyright/ which provides a defacto checklist to determine whether or not our educational use is fair use.

How does all of this apply to librarians?  As more college students receive their class supplemental readings from library electronic reserves on online content management systems, such as Blackboard, librarians and faculty are under scrutiny from publishers. A growing number of educators have gone so far as to create and promote Open Access journals (often with Creative Commons notices) to share their works for classroom instruction or other noncommercial applications. Textbooks may not be too far behind this new distribution model as discussed in an opinion piece targeted to Academic Publishers about Open Access in the Chronicle of Higher Education in April 2012 @ http://chronicle.com/article/Hot-Type-An-Open-Letter-to/131397/ .

Guidelines have existed to support librarians and educators since 1976 when the Agreement of Guidelines for Classroom Copying in Not-for-Profit Educational Instructions with Respect to Books and Periodicals were published in House Report 94-1476. Since then other guidelines, such as the American Library Association’s Model Policy Concerning College and University Photocopying for Classroom, Research and Library Reserve Use in 1982 and the 1991 federal court decision in Basic Books, Inc. v. Kino’s Graphic Corp., 758 F. Supp. 1522, 1526 (S.D.N.Y. 1991), have codified conservative safe harbors which most educators follow. Other guidelines for the digital world have also been introduced, such as CONFU (Conference on Fair Use associated with a 1995 report on the National Information Infrastructure), which never garnered the same support from publishers as the former guidelines.
A new Code of Best Practices in Fair Use for Academic and Research Libraries from the Association of Research Libraries (ARL) was introduced earlier this year. It crafts a new guide to address digital needs unthought-of when the earlier guidelines were created. Many fair use scholars have criticized the previous guidelines as too restrictive for educational use, whereas others argue that the newer Code is too laissez-faire. Hopefully the recent GSU case decision and the Code will offer educators a basis to make an informed decision and risk analysis that considers the law’s fair use flexibility for librarian and educators.

Why should educators be concerned about copyright and other intellectual property issues?

  • Virtual presence on the Web places small-to-midsized colleges at risk with larger institutions of higher education.
  • Educators must set an example for our students to respect intellectual property.
  • To protect our colleges and faculty/staff from lawsuits and other legal inconveniences.
  • The awareness of copyright compliancy with fair use (and the TEACH Act for online courses) are good preventive measures for all of us, including our students.
  • Respecting copyright ensures resource innovation and protection for both creators and consumers of copyrighted works.

To foster these points, more colleges are offering their faculty and students support with institutes such as the NKU Chase Law & Informatics Institute and Steely Library’s new IPAC. The IPAC will educate creators and consumers of intellectual property about issues such as copyright & fair use, plagiarism, patents & trademarks, and other resources and support related to the legal and ethical aspects surrounding intellectual property. Diverse campus and community constituents served may include, but are not limited to, students, educational instructors and librarians, authors and researchers, entrepreneurs and small business owners, inventors and scientists, musicians, visual artists, and others.

The new IPAC plans to accomplish its mission by providing associated information resources, workshops, conferences, an online intellectual property discussion support group, social networking access, and basic updates on legal intellectual property developments to support educators and the community. Why not help us with a survey as we build our new IPAC at Steely Library? Your input and specific needs count.  Tell us what programs and resources would support your intellectual property awareness needs. See http://creativethinking.nku.edu/ to complete our brief survey. As educators, we continue to inform our campuses and regional communities about the dual aspects of intellectual property (as creators and as consumers). In doing so, we build awareness and respect for the intellectual works of everyone.


[i]  Howard, Jennifer, “Publishers Sue Georgia State U. for Copyright Infringement,” Chronicle of Higher Education, April 16, 2008, http://chronicle.com/article/Publishers-Sue-Georgia-State/40816, accessed May 17 2012. There are two other federal copyright cases which librarians and educators are also watching very closely: Association For Information Mediat and Equipment et al v. The Regents of The University of California et al; and Authors Guild et al. v. HathiTrust et al. These cases deal with similar instructional issues which involve video content streaming for classroom support and a public accessible virtual collection of over nine million digitized works from college libraries. Including GSU, these cases will ultimately affect how educators utilize fair use and follow related copyright laws in the classroom.

[ii] John Schlipp, “Coaching Teaching Faculty: Copyright Awareness Programs in Academic Libraries,” Kentucky Libraries 72 (Summer 2008): 18-22.

[iii] Kenneth D. Crews, Copyright Law for Librarians and Educators: Creative Strategies and Practical Solutions,(Chicago: American Library Association, 2012), page xii.

[*] John Schlipp is an Associate Professor of Library Services and manager of the new IPAC (Intellectual Property Awareness Center) at Steely Library, Northern Kentucky University (Highland Heights). Formerly he served as Patent & Trademark Librarian at the Public Library of Cincinnati. Prior to receiving his MSLS from the University of Kentucky in 2000, he worked in the communications industry for 15 years. Schlipp’s contributions include: articles and book reviews; an intellectual property awareness program for teens and young adults entitled Creative Thinking; associate editor of the Encyclopedia of Northern Kentucky (University Press of Kentucky, 2009), and a chapter in the textbook Distributed Learning Librarianship (Sharon Almquist, ed., Libraries Unlimited, 2011).

New fair use code helps libraries expand research with confidence

Patricia Aufderheide and Peter Jaszi of American University have provided critical guidance on fair use for documentary filmmaker, artists and other creative industries.  They have done it again with a new tool for academic libraries. Today, the Association of Research Libraries (ALR) announced the release of the next project to be developed in partnership with the Center for Social Media and the Washington College of Law at American University.

The Code of Best Practices in Fair Use for Academic and Research Libraries provides a guideline of fair and reasonable approaches to fair use developed by and for librarians. The Code is not a legal brief so much as a statement of reasonable use practices developed by scholars and researchers to help clarify the legal issues.

As with other areas of copyright fair use, the seemingly byzantine rules can be rationalized when viewed in the context of a particular industry. Moreover, many of the fair use rules are highly normative, meaning that the very reasonableness of the use is dependent on how others in the same market view such unauthorized copyright exploitation. Against this practical reality, the Code will provide a powerful statement of accepted practices that will provide guidance for libraries and a significant barrier to any rights holder that seeks to be overly aggressive in the protection of its rights.

The ALR announcement describes the scope of the project:

The Code deals with such common questions in higher education as:

  • When and how much copyrighted material can be digitized for student use? And should video be treated the same way as print?
  • How can libraries’ special collections be made available online?
  • Can libraries archive websites for the use of future students and scholars?

The Code identifies the relevance of fair use in eight recurrent situations for librarians:

  • Supporting teaching and learning with access to library materials via digital technologies
  • Using selections from collection materials to publicize a library’s activities, or to create physical and virtual exhibitions
  • Digitizing to preserve at-risk items
  • Creating digital collections of archival and special collections materials
  • Reproducing material for use by disabled students, faculty, staff, and other appropriate users
  • Maintaining the integrity of works deposited in institutional repositories
  • Creating databases to facilitate non-consumptive research uses (including search)
  • Collecting material posted on the web and making it available

In the Code, librarians affirm that fair use is available in each of these contexts, providing helpful guidance about the scope of best practice in each.