Copyright Laws and Cases
Sony v Universal City Studios
Cariou v Prince
The Napster Model and Film
MGM v Grokster
Viacom v YouTube
Server-based Filesharing revisited
probably 2001 or 2002
Part of the original Napster file-sharing business model was that the RIAA
wouldn't ever bother to sue individual music-file-sharers. But when
file-sharing continued after Napster was closed down, the RIAA felt forced
to do just that.
File-sharing software works by sharing your
files too; advertising your music folder(s) online when you join the
service. Investigators look for these, by participating in online
file-sharing networks. They record your IP address and the listed songs;
they also generally download a few of the songs.
Different software works different ways.
Kazaa shows a "share" folder. bittorrent shows your connection to a
torrent "tracker" site, but there's no notion of "shared files".
Step 1: The RIAA files a "John Doe"
lawsuit against your ISP. They issue a subpoena to your ISP, asking for your
name, and, if relevant, the MAC address of your computer. These subpoenas
are almost always in a group, asking for multiple customer names.
One legal criticism of RIAA lawsuits has been over joining together of
multiple individuals in one ISP lawsuit. Normally you can't do that unless
you believe the cases are related. In some recent cases, judges have
rejected this strategy (see the quotes below from Judges Lloyd and Baker).
Prior to December 19, 2003, the RIAA didn't need to sue ISPs: it could
subpoena ISP records without a
lawsuit, under a provision of the DMCA. But then a court ruled that this
DMCA provision did not apply to RIAA-type cases. [RIAA v Verizon]
The ISP usually complies, usually without contacting you. However, it is
possible for either the ISP or you (if the ISP contacts you) to file in
court to "quash" the subpoena. You do need a reason for that, however. It is possible to file to quash without
giving up your identity, but you have to hire a lawyer.
Step 2: the RIAA now sends you a
settlement letter, offering you a chance to settle before the lawsuit is
filed. The settlement offer is usually something like $500-1000 per track.
The RIAA may or may not distinguish between tracks that showed up in your
directory, and/or tracks that they actually downloaded.
You can refuse to settle. However, in that case the RIAA will almost
certainly go to Step 3.
Once the possibility of a lawsuit
is raised, destroying evidence becomes both a civil and criminal offense.
Step 3: The RIAA files a lawsuit.
They are likely to ask for a forensic copy of your hard drives (they may ask
for the hard drives themselves, but you're under no obligation to give them
up). An independent forensic examiner will copy the drive, and determine
whether or not the songs are there. (The MAC address from Step 1 plays a
role here in determining whether they've got the right computer; so does
other identifying information about KaZaa, etc.)
The cost of settlement typically goes up a little at this point.
One legal tool on the RIAA's side is statutory
damages. A plaintiff in a copyright-infringement lawsuit can ask
either for actual damages ($1/track) or statutory damages, which are between
$750 and $30,000 per "work" (that might be for an entire CD, but if you copy
20 songs from 20 different CDs then you might get hit with a $600,000
judgment). The original legal theory behind statutory damages was that
you're suing a bootleg publisher and you can't figure out how many copies he
or she sold. Should these apply in individual lawsuits?
The RIAA won a verdict against Limewire, and at one point they were asking
for statutory damages of $75
trillion. They eventually
settled for $105 million, 0.00014% as much.
Some defenses that have NOT helped:
- the ISP is your school, and releasing school records is illegal.
(releasing names is not
- you didn't know it was against the law.
Yes you did. Come on.
But it doesn't matter.
- you already owned the tracks on CD.
See the Gonzalez case; www.eff.org/wp/riaa-v-people-years-later.
Copyright law allows you to make a backup copy of what you bought; there
is no provision for receiving your backup copy from someone else.
Some possibly valid defenses in court:
The problem with all these is that you don't want to be going to court, and
the RIAA does not have to consider these when settling.
It wasn't your computer or even your ISP
Typically this is due to the ISP's misidentification of you. Sometimes it's
because someone jacked your wi-fi. In this case the forensic examination of
your computer might help. Alas,
the organization suing you may have absolutely no interest in settling.
Before giving up on these lawsuits entirely, the RIAA had come around to
actually looking at the evidence. But later litigants start from scratch
Your roommate used your computer or your
Your problem here is proving that this is the case. In civil cases, the
burden-of-proof requirement for the plaintiff is much more modest than in
Your kids used your computer
There is a very limited legal doctrine of parental responsibility.
Originally, the RIAA did sue parents, or made them settlement offers. More
recently, after some reversals, the RIAA has been suing the minors
themselves. This is a little tricky; the court must appoint an attorney,
often at the RIAA's expense. Also, in Capitol_v_Foster, Deborah Foster
eventually won $68,000 in legal fees from the RIAA. Foster's daughter did
the downloading. (The case was brought in 2004; the RIAA dropped their suit
a year later but Foster continued with her countersuit. The judge eventually
ordered the award for legal costs without a full trial.)
You didn't actually download any songs
What the RIAA has, as evidence, isn't evidence of downloading. All they have
is evidence that you "offered" songs for downloading. At this point it might
matter a great deal whether the RIAA actually tried downloading anything
from your computer.
Jammie Thomas-Rasset case
Jammie Thomas-Rasset had her case go to trial (the first RIAA case to reach
a jury trial; Tenenbaum's July 2009 trial was the second) and she lost and
was ordered to pay $222,000. But Judge Michael Davis rethought this issue,
and in in September 2008 rejected the "offered for distribution" theory, and
ordered a new trial. Alas, the new trial reached a judgment against Thomas
of $1.9 million ($80,000 per song). The judge then lowered the amount to a
total of $54,000, and the RIAA allegedly offered to settle for half that.
But Thomas-Rasset did not, and in November 2010 there was a third trial
leading to a total damage award of $1.5 million. In July 2011 the judge
reduced this to $54,000. The RIAA appealed this decision to the Eighth
In September 2012 the Eighth Circuit ruled that the large damage award --
when compared to the actual damages -- was constitutional. The
Eighth circuit apparently did not rule on whether the "offered for
distribution" theory (now sometimes known as the "making available" theory)
was actually grounds for infringement. The Eighth Circuit also reinstated
the original $222,000 judgment. The Supreme Court refused to hear the
appeal, leaving this $222,000 award apparently final.
Thomas-Rasset has since indicated she intends to declare bankruptcy.
In later, post-RIAA cases, there has been much more controversy as to
whether the "making available" theory is sufficient.
Joel Tenenbaum case
Joel Tenenbaum was caught downloading files by the RIAA, and was offered
their past settlement offer, typically about $5000. He chose to fight. He
got Harvard Law professor Charles Nesson to take his case pro
bono; Nesson also involved his law-school class. They put up a
vigorous and spirited defense before Judge Nancy Gertner.
When it came time to assess damages (July 31, 2009), the jury decided
$22,500 per track was fair, for a
total of $675,000. Oops.
Actually, a core part of Tenenbaum's defense, and the central part of his
appeal, is that the damages (and settlement offer) were disproportionately
high, and not tied to actual
damages. Normally, when you sue someone, all you can ask for is actual
damages. Actual retail cost of music tracks is about $1. Tenenbaum got
socked with 22,500 times actual damages!
Tenenbaum's case was the second RIAA case to go to trial. Jammie
Thomas-Rasset was first; in her first case the verdict was $222,000.
Thomas-Rasset got a new trial; the second verdict was $1,920,000.
Moral: think hard about settling early.
Tenenbaum's music downloading appeared to be both intentional
and egregious; he had actually been sharing some 800 songs. However,
it was done when he was a student.
An interesting point about the case is how the judge dismissed the fair-use
claim based on the legal theory that fair use could not apply after
Apple opened its iTunes store; that is, once it became possible to buy
individual tracks, file-sharers lost any claim to fair use. That is, the
underlying justification for "fair use" was that mp3 tracks were otherwise
unavailable. Tenenbaum's appeal in part is about the idea that until iTunes
dropped DRM its music tracks were still not really comparable to downloaded
What do you think of this Fair Use argument?
and the links at the end to earlier articles.
Judge Gertner reduced the damage award by 90%. Judges usually do this
through a process known as remittitur,
meaning that the damage award was simply too high. Gertner, however, argued
that the full award was unconstitutionally
high. The First Circuit dismissed this argument, and sent the case back to
the District Court with the remittitur option open.
Gertner retired in September 2011.
The Supreme Court on May 21, 2012 refused to hear Tenenbaum's appeal that
Gertner's constitutional argument should not have been dismissed. So the
case is back in what would have been Gertner's court, except that Gertner
had by then been replaced by Judge Rya Zobel.
In August 2012, Zobel upheld the original verdict. Zobel, clearly much less
sympathetic to Tenenbaum than Gertner, pointed out in her opinion that the
penalty was low for willful infringement and "even" in the range for
In June 2013 the First Circuit upheld the award.
Tennenbaum declared bankruptcy in 2015.
One of the Tennenbaum legal team's arguments was that the original
$30,000-per-infringement statutory penalty was written back in the days when
copyright violations were perpetrated by for-profit bootleggers, not
individuals. This turns out to be false. In 1999, Congress passed the
Digital Theft Deterrence and Copyright Damages Improvement Act, raising the
statutory ceiling for non-willful infringement from $20K to $30K and for
willful infringement from $100K to $150K. Congressional testimony about the
bill made it clear that the goal was to stop individual piracy.
However, note that the bill was passed before Napster; there was very little
individual music file-sharing at that point. There are some indications that
Congress was primarily concerned with software privacy.
It's really hard to generate much sympathy for the RIAA methods.
Consider, though, the theory that file sharing is a violation of their
copyrights, and that such individual lawsuits are the ONLY way to proceed.
What is unfair about this process? What is fixable, within the constraints
of the US legal system?
Some things to think about:
There is a good blog about these lawsuits by Ray Beckerman, attorney,
Here's a quote there by Judge Lloyd of San Jose, CA:
- statutory damages for infringement
- rules for defendants who cannot afford an attorney
- rules of evidence
the court will not assist a plaintiff who
seems to have no desire to actually litigate but instead seems to be using
the courts to pursue an extrajudicial business plan against possible
infringers (and innocent others caught up in the ISP net). Plaintiff seeks
to enlist the aid of the court to obtain information through the
litigation discovery process so that it can pursue a non-judicial remedy
that focuses on extracting "settlement" payments from persons who may or
may not be infringers. This the court is not willing to do.
As we shall see, the RIAA has moved on from these lawsuits, but the movie
industry is picking up the slack.
The RIAA has officially given up on filing lawsuits against infringers, at
least for now; they announced this policy in December 2008, just after the
Tenenbaum case (lawsuits still in the pipeline will continue). The new
policy is to work with ISPs to
- notify users of infringement for the first offense
- cut off their internet access (perhaps slowing it for a while, first)
Why would ISPs want to go along with this plan? Here are a few reasons:
- file-sharers are also huge bandwidth hogs. This one was once
important, but everybody streams content now, so maybe not as
- The ISP might get sued. They would probably win, but it would be an
- It's the Right Thing To Do. Knowingly cooperating with copyright
infringement is wrong.
- The RIAA might decide to sue only customers of ISPs that have not
cooperated with the cutoff proposal. This is potentially a very big
- Eventually, the RIAA is likely to press for laws requiring
ISPs to cooperate. Better get started now. Think about SOPA-2 (a
mandatory ISP-cooperation rule was not actually part of SOPA-1).
- The content owner might offer the ISP a cut of any settlements
collected; Rightscorp apparently did this to get Cox to agree to send
infringement notices to its customers. See http://torrentfreak.com/rightscorp-offered-internet-provider-a-cut-of-piracy-settlements-150525/.
- There is a clause in the DMCA that suggests this might be
mandatory (17 USC 512(i)). Somewhat surprisingly, this hasn't been
Conditions for Eligibility.—
(1)Accommodation of technology.—The limitations on liability established by this section
shall apply to a service provider only if the service provider—
(A) has adopted and reasonably implemented, and
informs subscribers and account holders of the service provider’s system
or network of, a policy that provides for the termination in appropriate
circumstances of subscribers and account holders of the service
provider’s system or network who are repeat infringers;
(B) accommodates and does not interfere with standard
See also Rightscorp below.
ISPs and copyright infringement
Apparently ISPs are signing up for the RIAA-2 strategy, though in
somewhat limited ways.
Whether this will solve the problem remains to be seen, but warnings are a
Remember: your wired ISP is also likely your cable provider. They do not
want you watching free stuff.
New Zealand has passed a law mandating the ISP-cutoff approach to
file-sharers. See here.
France had a three-infringement-strikes-and-you're-disconnected law, known
as HADOPI. In October 2009 a judicial-review provision was added. As of
October 2011, 60 French users had reached their third strike: http://torrentfreak.com/60-french-isp-account-holders-on-their-third-strike-for-internet-piracy-111003.
However, it remains unclear whether anyone was ever disconnected. In
December 2011 the membership of the HADOPI commission apparently fell below
the necessary quorum for further actions; if so, new appointees would need
to be approved before disconnections. In July 2013 the French government
repealed the law.
England now has a similar law, which in March 2012 survived a Court
of Appeal challenge.
In all these cases, the subscriber
can be cut off for infringing activities by some other user.
That said, the subscriber does get (usually) three notices.
Residential fiber service, with speeds of up to 1 Gbps, has content owners
worried. Content owners have a long history of conflicts with Google.
Perhaps to allay fears, Google Fiber has taken to forwarding
settlement-demand letters to its subscribers, even when it does not identify
the subscriber. See http://torrentfreak.com/google-fiber-sends-automated-piracy-fines-to-subscribers-150520/.
Generally, if your ISP hasn't turned over your name, you're still safe, but
forwarding on the settlement offers is still very odd.
The RIAA model today
While the RIAA has officially gotten out of the business of suing everyone,
the US Copyright Group (USCG) has stepped up to the plate, having begun
operations in early 2010. They follow the RIAA model, suing ISPs for the
identities of subscribers and then sending settlement letters. USCG does
this at the behest of individual movie producers; they have gone after
downloaders of The Hurt Locker,
for example. Many of the Hurt Locker
cases were later dropped, likely over jurisdictional issues.
This program ran into a snag when, in March 2011, US District Court Judge
Harold Baker (Central District, Illinois (Urbana)), in the case VPR
Internationale v Does, ruled that "an IP address is not a
person", and that he would not
grant subpoenas of user names associated with given IP addresses. The ruling
not to grant the subpoena was issued in March, but the explanation was not
entered until April 29. Judge Baker cited FBI raids on child-pornography
suspects, who turned out to be innocent but who had had their wifi hijacked.
It remains to be seen whether other District Court judges go along with this
approach. The ruling closes with a technical legal point:
In its order denying the motion for
expedited discovery, the court noted that until at least one person is
served, the court lacks personal jurisdiction over anyone. The court has
no jurisdiction over any of the Does at this time; the imprimatur of this
court will not be used to advance a "fishing expedition by means of a
perversion of the purpose and intent" of class actions.
Note that VPR Internationale is an adult-film publisher; it is likely that
part of their strategy was that users contacted would settle promptly in
order to avoid public embarrassment.
In May 2011, some 23,000 users were receiving settlement offers for
downloading the movie The Expendables.
Many if not all these users were likely discovered before Judge Baker's
As with the RIAA lawsuits, usually someone must be serving as an upload
point in order to have their IP address captured. Bittorrent users generally
do that automatically. You can prevent that, but if all the uploaders are
gone then nobody can download.
In December 2013, federal Judge Stephanie Rose, in Iowa, issued a ruling
that a copyright plaintiff could not use a single lawsuit to try to discover
the subscribers corresponding to multiple IP addresses; each IP address had
to have its own lawsuit. This, of course, makes subscriber discovery much
more -- possibly prohibitively -- expensive. The legal theory in including
multiple IP addresses in a single suit is called joinder,
and rests on the assumption that the infringements have something in common.
Such rulings have been made before, but Judge Rose took the time to
understand how bittorrent works at the technical level, and crafted a
careful analysis of the issue. In particular, she ruled that it was not
enough that the various users were downloading a file from the same original
source. You can read more at http://dietrolldie.com/2014/01/29/bittorrent-hash-file-alone-is-insufficient-to-justify-mass-joinder-cases-sdia-judge-413-cv-00271/.
Since this ruling, there have been other cases dismissed due to "improper
While on the subject, the site DieTrollDie.com
is a good source of information about these cases, despite their
inflammatory name. Another site devoted to news about copyright lawsuits is
TorrentFreak.com. But my own favorite
is copyright attorney Ray Beckerman's blog RecordingindustryvsPeople.blogspot.com.
The strategy of Righthaven appeared to be to make copyright lawsuits into a
profit center; see https://www.eff.org/deeplinks/2010/09/righthavens-own-brand-copyright-trolling.
Righthaven allegedly scoured the internet for newspaper articles posted by
bloggers, and then contacted the publisher to buy
the rights to the story involved. They then sued the blogger.
This was clearly an attempt to use copyright lawsuits for profit.
Note that when bloggers post articles, they usually have at least some claim
to Fair Use; they are essentially never posting articles to get around
Righthaven now appears to be bankrupt, after losing a case and owing the
defendant's legal fees.
The domain righthaven.com
was sold to a group specializing in "spineful" web hosting!
The adult-film industry has also begun going after filesharers, as in the
VPR Internationale case mentioned above. Here they rely in part on the
embarrassment factor to urge defendants to settle. The EFF has been fighting
some these lawsuits on privacy grounds. The usual problem is the economical
discovery of the identities of large numbers of internet users known only by
IP address. See https://www.eff.org/cases/west-virginia-copyright-troll-lawsuits;
dismissals due to "improper joinder" are strategically important.
Despite claims in the press, it is not clear that the adult-film industry
lawsuits in fact represent an attempt to profit from user
filesharing. However, the attempt to consolidate thousands of user
identifications in a single lawsuit suggests that the lawsuits may be much
less attractive if the plaintiffs are required to file the lawsuits
Malibu Media is another adult-oriented site that has taken to copyright
litigation; in 2013 they apparently filed about 1300 lawsuits, amounting to
a third of all US copyright cases. There is an
article here, which claims that Malibu Media generally files one
lawsuit per IP address, and quotes their attorney as saying that "Malibu
Media drops a suit if there's any hint of a mistake".
Malibu Media has been sanctioned in Wisconsin, by Judge Stephen Crocker. In
their court complaints, Malibu Media listed the titles of a bunch of
pornographic films that were not even theirs (although they may have been
downloaded to the same IP address). Apparently this is because Malibu Media
is in fact a "high-end" erotica studio, with boring titles such as "Red
Satin" and "Tuesday Morning"; they may have included other, (much) more
salacious titles in their complaints for the embarrassment effect.
The Chicago law firm of Steele Hansmeier, aka Prenda
Law, has been pursuing multiple such
claims (usually but not always pornography-related). Here is a copy of the settlement letter
they were sending in 2011. Note the second paragraph on the second page:
In light of these factors, we believe that
providing you with an opportunity to avoid litigation by working out a
settlement with us, versus the costs of attorneys' fees and the
uncertainty associated with jury verdicts, is very reasonable and in good
Later on in the FAQ section, they write
Q: I haven't infringed on a copyright, why
did I receive a notice?
A: ...In any of these scenarios [spouse, child, roommate, employee,
wifi-jacker] the Internet Service Provider (ISP) account holder may be
held legally responsible for the infringement(s) and settlement fees.
Q: What if I have an unsecured wireless network/router?
A: The Internet Service Provider (ISP) account holder is responsible for
securing the connection and may be legally responsible for any
infringement(s) that result from an unsecured wireless network/router.
This 'defense' has been raised in many criminal matters regarding such
crimes as child pornography, and the courts have generally rejected this
defense. As far as we are aware, this defense has never been successfully
argued, in multiple contexts, including child pornography and civil
copyright infringements actions.
The idea that the account owner is responsible has in fact never been established by any court. This is not
to say that the Steele-Hansmeier letter is wrong; for civil infringement no
case has ever gone to trial where this defense was raised (Deborah Foster
raised the defense and the RIAA dropped the case; she later won damages).
As for child-pornography cases, these are criminal, and prosecutors (though
not police!) need more evidence than that your IP address was involved in
downloading. Barry Ardolf was sentenced to 18 years in July 2011 for hacking
his neighbors' wi-fi and framing them as child pornographers. In that case,
Ardolf was intentionally framing someone; there are many other cases where
the police showed up at someone's doorstep investigating them for
child-pornography downloads, only to realize after a forensic examination of
the equipment that it was some wifi-jacker instead. See http://www.huffingtonpost.com/2011/04/24/unsecured-wifi-child-pornography-innocent_n_852996.html
(this article also claims that in Germany it is
illegal to have an unsecured wi-fi network, though the penalty is modest).
The bottom line: if someone raises the wifi-jacking defense in court, it is
likely irrelevant as the prosecutors have more than just that.
In spring 2013, Prenda Law got themselves into very hot water before Los
Angeles District Court Judge Otis Wright. Some of Judge Wright's issues have
to do with the "legal extortion" aspect that is fundamental to this type of
lawsuit, but there are particulars to the case that may make it different
from other such cases. For example, in some respects Prenda Law appears to
be its own client, in that they may have purchased the rights to some of
Judge Wright wrote, in his May
6, 2013 order,
Plaintiffs can only show that someone, using
an IP address belonging to the subscriber, was seen online in a torrent
swarm. But Plaintiffs did not conduct a sufficient investigation to
determine whether that person actually downloaded enough data (or even
anything at all) to produce a viewable video. Further, Plaintiffs cannot
conclude whether that person spoofed the IP address, is the subscriber of
that IP address, or is someone else using that subscriber's Internet
access. Without better technology, prosecuting illegal BitTorrent activity
requires substantial effort in order to make a case. It is simply not
economically viable to properly prosecute the illegal download of a single
Note that Judge Wright is thus aligning himself with the "making available"
defense that got Jammie Thomas-Rasset her new trial: that it wasn't enough
to prove "offering for download"; the plaintiffs had to prove that material
was actually downloaded. But Judge Wright wants to apply this even at the
evidence-gathering stage. On the one hand, at this stage there is even less
reason to believe a case against an alleged downloader will develop; this
would argue for Judge Wright's position. On the other hand, one could also
argue that a more relaxed position on subpoenas should apply, as there is
evidence that a user's account was used for infringement.
The comment about spoofed IP addresses is probably not accurate technically.
One can dispute the final sentence here, although Judge Wright's larger
issue appears to be that even with statutory damages of $30,000 for one
video, that is too little for a reasonable case.
Judge Wright fined Prenda Law $81,319.72, and noted the amount was
"calculated to be just below the cost of an effective appeal", just like the
settlement amount in Prenda Law's "extortion" letters.
But many of Judge Wright's issues with Prenda Law had nothing to do
with the basic model of suing infringers. Prenda may have purchased
some of the copyrights they were suing over, and failed to disclose that.
There is now some evidence that they uploaded the original copies, in hopes
of ensnaring downloaders (http://arstechnica.com/tech-policy/2013/06/prenda-seeded-its-own-porn-files-via-bittorrent-new-affidavit-shows/),
although this is still a pending action. The principles also refused to
testify in Wright's court.
Prenda Law dissolved itself in 2013, although they may be back in business
under another name.
See also the following on adult-film attorney Evan Stone: http://arstechnica.com/tech-policy/news/2011/09/sanctioned-p2p-lawyer-fined-10000-for-staggering-chutzpah.ars
Rightscorp is a legal company which works with several music and movie
publishers, in particular BMG. According to Wikipedia, they were under
contract to enforce 1.5 million copyrights in 2014. Their basic strategy is
to collect IP addresses of bittorrent seeders.
Rightscorp's model is, at least initially, not to sue the downloaders, but
to work with the downloaders' ISP to send notification letters. Many (but
far from all) ISPs agree to do this; Rightscorp estimated at one point that
only 15% of US Internet users are customers of ISPs who are willing to
forward the letters.
In many of the notification letters, there is a settlement offer. The
Rightscorp offers are usually in the range of $20 for first offenses,
however, a far cry from the RIAA initial offers. If users don't pay, and
continue to infringe, they are the target of a lawsuit.
Rightscorp has gone back to attempting to use DMCA subpoenas against ISPs;
courts have differed on whether this is a legitimate tactic. The "standard"
tactic is to sue the individual John Doe user first, but that is expensive.
In November 2014, BMG sued cable-Internet provider Cox Communications (BGM
Rights Management v Cox Communications) for failing to forward its
notification letters, and for failing to terminate accounts of repeat
infringers, thus forfeiting DMCA protections for ISPs. The DMCA does indeed
have some language that suggests that ISPs might qualify as "service
providers" under the meaning of the OCILLA part of the DMCA law. In the
past, ISPs have tended to assume they have blanket immunity.
The actual law (Section 512 of Title 12) is here.
One portion states that
[The limitations of
liability apply to an ISP provided it] has adopted and reasonably
implemented ... a policy that provides for the termination in
appropriate circumstances of subscribers and account holders of the
service provider's system or network who are repeat infringers.
There is no legal definition of "repeat infringer"; some suggest it means
anyone who has infringed twice while others suggest that it means someone
who has been legally determined to be an infringer in the past. But Cox
appears not to have taken "repeat infringer" seriously at all, and
"terminations" were simply account suspensions; accounts were
reactivated upon customer request.
Cox had a policy of refusing to forward infringement notices that contained
settlement offers. But the real legal issue appears to be their refusal to
terminate permanently the accounts of persistent infringers. Ironically, Cox
apparently thought they had a "reasonable" policy; the DMCA does not spell
out that termination must be "permanent", or cannot be appealed. Nor does
the DMCA spell out what evidence of infringement is necessary.
In December 2015 a jury returned a $25 million judgment against Cox in this
case, for vicarious infringement. It was the failure of Cox's
account-termination policy that led to their loss of the DMCA shield; this
is the mysterious section (i) in OCILLA [DMCA]. In
February 2018 the Fourth Circuit upheld this decision, but ordered a new
trial, so we don't yet know what the final story will be.
This case may mean that other ISPs start taking repeat infringers much more
seriously. The Ninth Circuit ruled in 2018 that the account-termination
policy didn't have to be written down anywhere (torrentfreak.com/repeat-infringer-policy-doesnt-have-to-be-spelled-out-appeals-court-rules-180324)
See below at server
Fair Use is the right to publish or distribute copyrighted material,
without permission. Generally speaking, Fair Use has to be rather limited
use. There are two broad theories as to why we need Fair Use:
- Fair Use represents the minimum public access needed to make copyright
law workable in situations where requiring permission is likely to have
adverse effects. For example, if reviewers have to have permission to
quote brief passages of a book being reviewed, the integrity of the
reviewing process is undermined. This is the "limited" view.
- Fair Use represents the public's "share" of a copyright. A use
qualifies as Fair Use whenever the public's rights outweigh those of the
creator. This is the "expansive" view.
Legal basis for Fair Use
One of the rights accorded to the owner of copyright is the right to
reproduce or to authorize others to reproduce the work in copies or
phonorecords. This right is subject to certain limitations found in sections
107 through 118 of the copyright act (title 17, U.S. Code). One of the more
important limitations is the doctrine of "fair use." Although fair use was
not mentioned in the previous copyright law, the doctrine has developed
through a substantial number of court decisions over the years. This
doctrine has been codified in section 107 of the copyright law.
Section 107 contains a list of the various purposes for which the
reproduction of a particular work may be considered "fair," such as
criticism, comment, news reporting, teaching, scholarship, and research.
Section 107 also sets out four factors to be considered in determining
whether or not a particular use is fair:
Question: does the First Amendment imply some sort of fair-use right to
quote other works? Or does Fair Use solely derive from the Copyright Clause?
Or does it have no constitutional basis at all, and simply come from 17 USC
§107? Most often, Fair Use is seen as following from the "to promote useful
knowledge" social-contract justification under the Copyright Clause of the
- the purpose and character of the use,
including whether such use is of commercial nature or is for nonprofit
- the nature of the copyrighted work;
- amount and substantiality of
the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential
market for or value of the copyrighted work.
The standard example of Fair Use is quotes used in a book review. Such
quotes are essential to provide an example of the author's style, which may
be a central issue in the review. However, asking permission clearly
sacrifices the critic's impartiality.
Factor 1 relates to how you are using
the work, and is not exclusively tied to the commercial/nonprofit issue. It
may help, for example, if your use is transformative:
transforming the original work into something new and at least partially
Factor 1 is traditionally used to justify all photocopying by schools, but
this is clearly overbroad.
PARODIES are also often considered as a Factor 1 fair-use exemption,
although you should be parodying the work in question and not just using the
work in a parody of something else. (Maybe not always; see 1964
MAD case below) Here are a few parodies:
Generally the creator of a parody does NOT need permission of the original
author. To an extent, the parodies Fair Use exception may simply reflect the
reality that original authors will usually not agree to parodies.
- South Park (almost any episode)
- Weird Al
- Bored of the Rings
- 2 Live Crew and the Campbell
Factor 2 relates to the work itself: is it fiction?
Nonfiction? Text? Video? Music? A performance? Fundamental news facts (and
even sometimes images, eg individual frames from the Zapruder film of the
Kennedy assassination) have been ruled "Fair Use". (The Zapruder film itself
is still under copyright, held now by the Sixth Floor Museum.) Sports scores
are still debatable, though copyright claims for these appear to have waned.
Factor 3 is not specific, but "one chapter" is probably way
over the Fair-Use boundary. Quoting 300 words from Gerald Ford's biography
was ruled not fair use; however,
the 300 words in question were those where Ford explained his pardon of
Nixon. The district court described the 300 words as "the heart of the
The Ford case reached the Supreme Court as Harper & Row v Nation Enterprises
in 1985. The Nation magazine tried to defend its quotation on
the grounds that Ford was a public figure, but the court rejected that.
Another significant issue is that The Nation had published its
article before the actual book was released, and the right of first
publication is taken quite seriously. Also, the quotations amounted to
more than an eighth of The Nation's article, if only 0.15% of
Music sampling, in the sense of 1-2 second
snips used in another work, might
be Fair Use. 10-20 seconds is a lot longer.
In Vanderhye v iParadigms LLC [the latter is the owner of
Turnitin.com], the fourth circuit ruled that Turnitin's making copies of
entire student papers is fair use.
Factor 4 is the big one. See Sony v Universal. A tricky
problem with Factor 4, however, is that while there might not be a market now for the use in question, such a
market could potentially develop. That is, a market for music sampling
rights might develop (has developed!) if sampling were not claimed as fair
use. A market for prerecorded television shows has definitely developed.
Later we'll consider a case in which the plaintiff claimed that they were
considering marketing thumbnail images, and thus images.google.com's
"republication" of thumbnail images was not Fair Use.
On 4e page 207, "Safe harbor in the cloud?", Baase writes:
Cloud storage raises copyright issues. Is
copying legally purchased files to and from the cloud a fair use?
Is there an issue here with private
cloud storage? Apparently by the 5th edition Baase decided this wasn't an
important question; the cloud is just computer space you lease. See also the
Sony v Universal City
SCOTUS decision: http://www.law.cornell.edu/copyright/cases/464_US_417.htm,
by Justice Stevens.
This is the "Betamax" case, to at least some degree about Fair Use.
Universal Studios sued Sony for selling the betamax VCR, on the theory that
Sony was thus abetting copyright violation, and profiting from it.
District court found for Sony
Appellate court (9th circuit) found for Universal Studios
Supreme court, 5-4 decision, found for Sony
Paragraph 12 of the Supreme Court decision (emphasis added), addressing the
Four Factors of Fairness:
The District Court concluded that
noncommercial home use recording of material broadcast over the public
airwaves was a fair use of
copyrighted works and did not constitute copyright infringement. It
emphasized the fact that the material was broadcast free to the public at
large, the noncommercial character of the use, and the private character
of the activity conducted entirely within the home. Moreover, the court
found that the purpose of this use served the public interest in
increasing access to television programming, an interest that "is
consistent with the First Amendment policy of providing the fullest
possible access to information through the public airwaves. Even when an
entire copyrighted work was recorded, the District Court regarded the
copying as fair use "because there is no accompanying reduction in the
market for 'plaintiff's original work.'"
Is that part about "broadcast free to the public" and the "private
character" explicit in the Four Factors? What about the part about "serving
the public interest"? Note the consideration of the effect on the market.
Note also that in 1984 there was no market for recordings of TV shows; there
The Supreme Court decision then went on to introduce the doctrine of Substantial Non-Infringing Uses, which
is still with us today and sometimes abbreviated SNIUs.
This case apparently legalized taping of TV programs for later viewing (but
NOT archiving). Universal did not show how it was damaged, which didn't help
their case any (presumably they thought it was obvious?). Under the doctrine
of SNIU, Substantial Non-Infringing Uses, a distributor cannot be held
liable for users' infringement (that is, for contributory infringement) so
long as the tool is capable of substantial noninfringing uses. The precise
role of "Fair Use" in the court's reasoning is not as clear as it might be,
but this certainly DID play a role. It was actually the District Court that
made that case.
The Supreme Court did not spell out a "Fair Use"
four-factor analysis, though they hint at it in the section "Unauthorized
Time-Shifting" (paragraph 46). It was the District Court that came to the
Fair Use conclusion (quoted above in the SCOTUS decision).
The following sentence is rather odd (from Paragraph 54):
One may search the Copyright Act in vain
for any sign that the elected representatives of the millions of people
who watch television every day have made it unlawful to copy a program for
later viewing at home
There is also the following very interesting line from the Sony decision, in
Although every commercial
use of copyrighted material is presumptively an unfair exploitation of the
monopoly privilege that belongs to the owner of the copyright, ...
This is a remarkably strong statement about commercial use! The Supreme
Court has backed away from this considerably in later decisions.
Fred Rogers testified in favor of Sony
Harry Blackmun, Thurgood Marshall, Lewis Powell, and William Rehnquist
The case was apparently a near miss; originally it looked like the vote
would be 6-3 against Sony
[wikipedia, based on Thurgood Marshall's papers]. The four dissenters were
solidly against Sony, taking a view that the primary
function of the betamax VCR was copyright infringement. Even after the 5-4
Sony final decision, it seems clear that a majority on the court (perhaps
the original 6-3 majority) still felt that personal home copying was not fair use; ie was in fact
infringement. Justice Stevens played a major role in the shift; Justice
White also played a role in getting the court to realize that the issue was
not whether such copying was infringement, but whether the betamax should be
prohibited because of it.
There was also some concern on the court about to what extent Universal City
Studios should have to prove actual harm. They did not do so, but that was
largely because there was no market for home videos (think about it: how
could there have been?) and they would have been left to prove that the
existence of taped movies cut into advertising revenue for movies shown on
TV (most of you won't have experienced when that was sometimes a big event).
Requiring the plaintiff in a copyright case to prove actual harm remains
controversial; see the Perfect 10 case (later). In Blackmun's dissent, he
[The copier] must demonstrate that he had
not impaired the copyright holder's ability to demand compensation from
(or to deny access to) any group who would otherwise be willing to pay to
see or hear the copyrighted work.... Even a showing that the infringement
has resulted in a net benefit to
the copyright holder will not suffice. [emphasis added]
Harry Blackmun, Thurgood Marshall, Lewis Powell, and William Rehnquist
dissented, holding that Sony's new device should not
be allowed. Blackmun wrote "there can be no question that under the
[copyright] Act the making of even a single unauthorized copy is
prohibited." Contrast this with Stevens' "One may search the Copyright Act
in vain for any sign that the elected representatives of the millions of
people who watch television every day have made it unlawful to copy a
program for later viewing at home". Why do you think Stevens said this? And
got four other justices to sign on to his opinion?
Blackmun also stated the following regarding fair use (emphasis added):
Fair use may be found when a work is used
"for purposes such as criticism, comment, news reporting, teaching, . . .
scholarship, or research." ... other examples may be found in the case
law. Each of these uses, however, reflects a common theme: each is a productive use, resulting in some
added benefit to the public beyond that produced by the first author's
"Productive" use seems to be a slightly lower standard than "transformative"
use (more on that below), but in Blackmun's mind it was not Fair Use if you
were just making an outright copy ("consumptive" use). You had to be adding
something to society, somehow.
Where would we be if the Sony decision had gone the other way? It seems
likely (though not certain) that the 1999 RIAA v Diamond case about the Rio
mp3-player would then have gone the other way. And if that happened, Apple
would likely never have introduced the iPod or iTunes (and it seems pretty
clear nobody else would have both the vision and the clout to create
something like iTunes), and perhaps not the iPhone or iPad. And Apple pretty
much created the smartphone market with the iPhone, earlier competitors
notwithstanding; the cellular phone industry remains very conservative.
Although phones make excellent mp3 players, it is not at all clear the
telecommunications industry would have figured this out.
Noted IP-law commentator Pamela Samuelson wrote in her paper "The
Generativity of Sony v Universal:
The Intellectual Property Legacy of justice Stevens"
Sony has been highly influential in new
technology cases, such as those permitting reverse
engineering of computer programs and development of add-on
software, and those limiting liability
of Internet service providers and search
engines. Digital access initiatives, such as the Internet
Archive and Google's Book
Search Project, rely on Sony as a key supporting precedent. Had
Justice Blackmun's fair use analysis prevailed in Sony, few, if any, of
these developments would have survived copyright challenges.
Justice Stevens had a long history of feeling that the public was a
significant stakeholder in the decision to grant the "copyright monopoly",
and was inclined to take the public's interests seriously. Harry Blackmun,
despite his universally acknowledged liberalism (he was, after all, the
author of Roe v Wade), argued
strenuously here against the rights of the public. Why? Likely he saw the
rights of creators as on the table
here, challenged by a big corporation (Sony) that wanted to take them away.
Ironically, a different Sony outcome thus might have made file-sharing more
prevalent; without iTunes there would be no alternative to CD purchases.
In 2003, following the successful shutdown of Napster -- whose Sony
defense was rejected by the Ninth Circuit -- the RIAA sued Aimster, a
similar music-sharing site, and made the following list of arguments
intended to refute Aimster's SNIU defense [from Samuelson]:
Judge Posner of the Seventh Circuit wrote that none of the above applied,
but that Aimster was in trouble anyway because [emphasis added - pld]
"Aimster has failed to produce any evidence that its service has ever
been used for a noninfringing use, let alone evidence concerning the
frequency of such uses."
- The primary use of the defendant's system was for infringement
- Aimster was providing a service rather than a piece of hardware
- There was an ongoing relationship between Aimster and its customers
- Aimster's service enabled not only home copying, but distribution
- The system was specifically designed to enable infringement
Posner then wrote his own anti-Sony proposal, in the form of a cost-benefit
argument, suggesting that the SNIU model be replaced with an analysis of the
legitimate benefits of the new technology versus the social costs, and
taking into account the cost of adding technology to support the interests
of content owners. Unless that cost were prohibitively high, manufacturers
would be expected to take steps to minimize the potential for infringement.
Posner's cost-benefit model for this particular situation has not really
gone anywhere. Posner is noted in legal circles for these kinds of economic
analyses; some are more successful.
Recording broadcasts remains controversial. Under FCC rules, HDTV receivers
are to respect the "broadcast flag" and limit the copying of TV broadcasts
when indicated by the broadcaster. The limit can be temporal (eg the copy
must be viewed within seven days); another idea is to limit replay to the
original device. However, the courts have struck down this rule because it
was not based on actual legislation from Congress. To date, Congress has not
passed legislation mandating adherence to the broadcast flag, and the FCC
retracted the rule in August 2011.
Criminal copyright violations
In 1994 David LaMacchia ran a "warez" site as an MIT student; that is, he
created an ftp site for the trading of (bootleg) softwarez.
He did not profit from the software downloads; in this, his site was a
precursor of today's file-sharing systems. Because of the lack of a profit
motive, the government lost its case against him. The NET act was passed by
congress to address this in future cases. It criminalizes some forms of noncommercial copyright infringement,
which until then hadn't apparently been illegal. (Copyright owners like the
RIAA, or in LaMacchia's case Microsoft, could still go after you).
17 U.S.C. § 101
§ 101. Definitions
Add the following between "display" and
The term "financial gain" includes
receipt, or expectation of receipt, of anything of value, including the
receipt of other copyrighted works.
Does this cover peer-to-peer filesharing? What if you are just distributing
music you love?
17 U.S.C. §§ 506 & 507
§ 506. Criminal offenses
(1) In general. Any person who willfully
infringes a copyright shall be punished as provided under section 2319 of
title 18, if the infringement was committed
(A) for purposes of commercial advantage
or private financial gain [see note above - pld];
(B) by the reproduction or distribution, including by electronic means,
during any 180-day period, of 1 or more copies or phonorecords of 1 or
more copyrighted works, which have a total retail value of more than
(C) by the distribution of a work being prepared for commercial
distribution [that is, a work not yet released -- pld],
by making it available on a computer network accessible to members of
the public, if such person knew or should have known that the work was
intended for commercial distribution.
(2) Evidence. For purposes of this subsection, evidence of
reproduction or distribution of a copyrighted work, by itself, shall not
be sufficient to establish willful infringement of a copyright
The or in part 1 is a little confusing! In theory it could
be used to claim that the $1,000 threshold was not necessary, in
that the "financial gain" clause of part (A) was met, but as far as I know
this argument has never been made.
How does the NET act affect file-sharing?
Note that the law includes both reproduction and
Note the retail $1000 cutoff. Arguably that is 1,000 tracks. So far,
prosecutors have been loathe to apply the NET act to music file-sharers.
This is partly due, no doubt, to the added burden of proving "willful"
infringement: the law states that file sharing itself is not sufficient to
establish "willfulness" (infringement "with knowledge of or 'reckless
disregard' for the plaintiffs' copyrights" -- arstechnica.com).
In 1994, mp3 file sharing had not yet become significant.
Congress continues to consider stronger measures for criminalizing
infringement (eg SOPA and PIPA), though these have not passed, and my guess
is that including personal
downloading as criminal will not happen anytime soon. The goal of proposed
legislation like SOPA and PIPA, however, is to go after server-based
filesharing: to create the legal tools needed to shut down these sites.
Unfortunately, such tools usually have heavy-handed negative consequences
for ordinary users, as we shall see.
See Baase 4e p 192 / 5e p 206: "Sharing music: the Napster case"
Napster was started June 1999. It acted in effect as a search engine for
content held by members; actual copying was always member-to-member.
Napster's own legal theory was that they were in the clear because they
weren't doing any copying; they also figured that the RIAA could never sue
every individual user.
Content owners promptly sued, and Napster lost in federal district court in
2000. The Ninth Circuit appeals court then agreed to hear the case. They
granted an injunction allowing Napster to continue operating until the case
was decided, because they took seriously Napster's arguments that Napster
might have "substantial non-infringing uses" and that Napster was only a
kind of search engine while the real copyright violators were the users. The
Ninth Circuit eventually found that Napster did indeed have Substantial
Non-Infringing Uses, but they ruled against Napster by January 2001. After
some negotiating, Napster was ordered in March 2001 to remove infringing
content, which they technologically simply could not do, and so they shut
down in July of that year.
Bottom line: the Betamax videotaping precedent was rejected because,
although SNIUs existed for Napster, Napster had actual knowledge of specific
infringing material and failed to act to block or remove it. Also, Napster
did profit from it.
However, the court refused to issue an injunction for quite a while; it was
clear that the Betamax precedent was being taken very seriously. What
similarities to the Sony case do you see? What differences?
Napster itself is gone (though someone bought the trademarked name), but the
Napster model -- that content will
be free and that performers make money only from live performances and
showings -- lives on. Note that signed and indie musicians fare very
differently under the napster model!
Also note the long-term implications for "future fans"
Is napster at all like radio?
Is the Napster model realistic? Is it fair?
Is it "just life"?
Is this a case of "harm" being unequal to "wrong"?
Question: is it ethical to cause harm? What about economic harm?
This is widely done in the music industry, sometimes as an homage to the
original artists, sometimes to connect a new musical work with an older one,
sometimes as a form of social commentary, and sometimes, well, we don't
Consider the following news item, from http://origin.avclub.com/articles/guns-n-roses-sued-for-uncredited-ulrich-schnauss-s,33744:
This may be an atypical example, partly because the sample is so blatant and
so long and partly because it seems possible that GnR simply had no idea it
was music (stylistically, GnR and Schnauss are about as far apart as you can
get). It's also just about copying a snippet of the original performance,
rather than combining that sample with other material, or modifying the
Here are links (working Feb 2012) to the two compositions:
At issue is the opening ~20 seconds. It's not the best example of sampling,
because it's a rather atypical sound for GnR (why did they include it?), and
it's also rather long. Note that GnR used this opening only on their CD
release; I did not find it in any of their live-performance examples on
YouTube. GnR has insisted that they did nothing wrong.
A musician who does nothing but
sample (or perhaps "remix" is a more accurate term) is Gregg Gillis, aka
Girl Talk; see myspace.com/girltalk/music.
There are many other examples at whosampled.com.
Sampling can vary in degree. Here are a few possible categories:
- rap "remixes" that use someone else's entire song
- musical "references" to other songs, meant as an homage
- "mosaic" sound made up of many tiny samples
Note that GnR and Schnauss do not appear to fall into any of these
categories. Some of Gillis' work seems to fall into the first category;
some into the third.
There is a good deal of material that is borrowed and re-performed; this is
quite different although the Fair Use question is similar. Kanye West is
often in the news about this.
In 1991,in Grand
Upright Music v Warner, a district court ruled that clearly
recognizable sampling constituted infringement. Judge Duffy wrote
It is clear that the defendants knew that
they were violating the plaintiff's rights as well as the rights of
others. Their only aim was to sell thousands upon thousands of records.
This callous disregard for the law and for the rights of others requires
not only the preliminary injunction sought by the plaintiff but also
Ironically, it is also clear that the sampling here was not going to affect
The Bridgeport Case
In the case Bridgeport
Music v Dimension Films, the Sixth Circuit ruled in 2005 that use
without permission of a 2-second chord from a song by the Funkadelics
constituted infringement. More specifically, they ruled that the de
minimus defense (ie that the sample was "too small to matter") did
not apply. The Court famously wrote
Get a license or do not sample. We do not
see this as stifling creativity in any significant way.
However, the court left open the possibility of a Fair Use defense. They
left this open because the defendants did not raise
the Fair Use defense at the trial level, and new defenses cannot be
The original Funkadelics album came out in 1975; the NWA album in question
came out in 1990. At that point, serious sampling was just beginning, and
the Grand Upright case had yet to be filed. Somehow, ~15 years later this
sample became an issue for someone.
Let's take a look at just what was sampled.
Here is the two-second guitar riff from the Funkadelics: cs.luc.edu/pld/ethics/funkadelic_riff.wav
And here is where the sampling occurred in the NWA's 100 Miles and Runnin':
The lyrics are as follows; the sampling starts at the point in bold:
[Chances] are usually not good
'Cause I freeze with my hands on a hot hood.
And gettin' jacked by the you-know-who.
When in a black and white the capacity is two.
We're not alone, we're three more brothers, I mean
Now wearin' my dyes, 'cause I'm not stupid, mutherfuckers.
They're out to take our heads for what we said in the past.
Point blank - They can kizz my black azz.
I didn't stutter ...
At this point, I can see why the NWA defense team thought their de
minimus argument would win.
Question: why did the NWA sample at all here? Funk music is dance music; it
had a great influence on disco. The NWA is gangsta rap. The sample could as
easily be musical sarcasm as an homage.
Here are a few observations from the actual Bridgeport decision:
1. NWA apparently did have permission to use the part of the composition
of "Get off your ass and jam". Alas, they lacked permission to use the recording.
The recording copyright was actually held by Westbound, a co-plaintiff with
2. Actually, the lawsuit was about the use of "100 miles and runnin'" in a
film, I Got the Hook Up, about the sale of cellphones.
3. In 2001, Bridgeport and co-defendants filed "nearly 500 counts against
approximately 800 defendants for copyright infringement and various state
law claims relating to the use of samples without permission in new rap
4. The district court described the guitar riff as follows:
The portion of the song at issue here is an
arpeggiated chord -- that is, three notes that, if struck together,
comprise a chord but instead are played one at a time in very quick
succession -- that is repeated several times at the opening of "Get Off."
The arpeggiated chord is played on an unaccompanied electric guitar. The
rapidity of the notes and the way they are played produce a high-pitched,
whirling sound that captures the listener's attention and creates
anticipation of what is to follow.
In the context of the NWA recording, I am not sure the sound can fairly be
said to "capture" or "create" anything.
5. The District Court considered sampling from a recording to be the same as
sampling from a composition, and accepted the de minimus defense.
The Circuit court felt that sampling from a recording was quite a different
6. The Circuit Court wrote:
The music industry, as well as the courts,
are best served if something approximating a bright-line test
can be established. Not necessarily a "one size fits all" test, but one
that, at least, adds clarity to what constitutes actionable infringement
with regard to the digital sampling of copyrighted sound recordings.
7. Finally, here is the controversial line of the decision in context:
To begin with, there is ease of enforcement.
Get a license or do not sample. We do not see this as
stifling creativity in any significant way. It must be remembered that if
an artist wants to incorporate a "riff" from another work in his or her
recording, he is free to duplicate the sound of that "riff" in the studio.
Second, the market will control the license price and keep it
within bounds. The sound recording copyright holder cannot
exact a license fee greater than what it would cost the person seeking the
license to just duplicate the sample in the course of making the new
recording. Third, sampling is never accidental. It is
not like the case of a composer who has a melody in his head, perhaps not
even realizing that the reason he hears this melody is that it is the work
of another which he had heard before. When you sample a sound recording
you know you are taking another`s work product.
What do you think of the market-price argument?
Both courts seemed to side with the "copying is presumptively bad" school of
legal thought, rather than the "society has an interest" school of thought.
The industry line here is that any use of
copyrighted material requires permission; this gives the rights-holder the
opportunity to set a fee limited only by the law of supply and demand.
Fair Use is the one exception to the copyright law's strict assignment of
rights to the creator. Note that sampling
clearly has no effect on the market for the original.
On the other hand, there
might be (and in fact is) a "secondary" market for
sampling rights that is affected.
The copyright law itself only refers (§107(4)) to "the effect of the use
upon the potential market for or value of the copyrighted work", without
making it entirely clear whether the market for the entire work is meant
(though the phrase "the copyrighted work" certainly seems to suggest the
entire work). If the secondary-market theory is legitimate, then music
samplers have a harder time claiming Fair Use. On the other hand, if the
secondary-market theory is legitimate then essentially all claims
of Fair Use are undermined, as content owners can set up artificial markets
for any fractional use.
Whether or not the Fair Use sampling argument will ever prevail in court,
there is definitely a serious social issue here that cannot be written off
as theft. Music is generally built on the musical influences of others.
Before sampling this would be limited to a melody, or an accompaniment line,
or a particular guitar style; all that sampling does is allows for musicians
to sample without re-performing. Is this taking advantage of the original
artist? Certainly not in a financial
sense. But a performer is entitled to feel that they do not want their work
serving as the larger component of a remix that is done in a very different
style (it is hard to see how this would apply to ~2-second samples).
Samples can always be licensed,
but sometimes licensing rates are exorbitant. Rights for a few small samples
can easily amount to 100% of royalties, which makes further sampling
The site whosampled.com includes
in its masthead the phrase "exploring and discussing the
DNA of music", suggesting that sampling is how music evolves
nowadays. Others feel that musical evolution is not hindered by the simple
rule that samples must either be licensed or be re-performed.
Classical musicians have long based their works on traditional hymns and
folk melodies, a form of non-recording sampling. Classical musicians have
also often borrowed melodies from one another; the whole "variations" format
is based on this. Brahms, for example, wrote a piece called Variations
on a Theme by Haydn; Fernando Sor wrote Variations on a Theme by
Mozart, and Ralph Vaughan-Williams wrote Fantasia on a Theme by
Thomas Tallis. There are also all kinds of shorter borrowings,
typically to establish a reference (eg the use of a national anthem to
emphasize an operatic character's nationality). See the Wikipedia article on
One of the oddest examples is Georges Bizet's use of what he thought was an
anonymous folksong "El Arreglito" in his opera Carmen. Later he discovered
the song had a composer, Sebastián Iradier, who had died recently. At that
point Bizet credited Iradier in his score.
Look at the recent case Cariou v Prince, below, for
an important and relevant fair-use case in the visual arts.
Public Enemy's song Caught: Can We Get A Witness, from their 1988
album It Takes a Nation of Millions to Hold Us Back, is about
Caught, now in court cause I stole a beat
This is a sampling sport
But I'm giving it a new name
What you hear is mine
I found this mineral that I call a beat
I paid zero
I packed my load cause it's better than gold
People don't ask the price, but its sold
They say that I sample, but they should
Sample this my pit bull
We ain't goin' for this
They say that I stole this
This was before the 1991 Grand Upright case, but clearly sampling was
already an issue.
In a 2004 interview, Public Enemy's Chuck D explained 1988-era sampling this
Sampling basically comes from the fact that
rap music is not music. It's rap over music. So vocals were used over
records in the very beginning stages of hip-hop.
The 1988 recording is at http://www.youtube.com/watch?v=pdrkPBEalkc.
The Amen Break
A very famous sample, used widely, is the Amen Break, by drummer Gregory
C Coleman (1944-2006). It is famous enough that it has its own
Wikipedia page, at http://en.wikipedia.org/wiki/Amen_break.
You can also listen on YouTube: https://www.youtube.com/watch?v=qwQLk7NcpO4.
The Economist did an article
on this drum break, and the many times it was sampled. They discussed
the sampling with saxophonist and band-mate Richard Spencer:
Spencer is not interested in the digital age
and its remix culture. He dismisses the music spawned by the track as
"plagiarism" and "bullshit", considering it another chapter in the
plundering of African-American cultural patrimony. "[Coleman's] heart and
soul went into that drum break," he says. "Now these guys copy and paste
it and make millions."
They don't make millions from the drum break, however. And we don't
actually know what Coleman himself thought of all the times he was
Drake vs Estate of Jimmy Smith: A Fair Use victory. Sort of.
The rap musician Drake used a sample from a recording by Jimmy Smith on
his track Nothing Was the Same / Pound Cake. The judge ruled in 2017 this
was Fair Use. Sort of; Drake in fact had obtained a license to sample. See
Smith's track was spoken, not sung. It was the final track of his jazz
CD. Smith originally said "Jazz is the only real music that’s gonna
last.". Drake edited the words so they said "Only real music is gonna
last". Here is Smith's original; underlined passages were used by Drake
Good God Almighty, like back in the old
You know, years ago they had the A&R men to tell you what to play,
how to play it and you know whether it’s disco rock, but we just
told Bruce that we want a straight edge jazz so we got the fellas together
Grady Tate, Ron Carter, George Benson, Stanley Turrentine.
Stanley was coming off a cool jazz festival, Ron was coming off a cool
jazz festival. And we just went in the studio and we did it.
We had the champagne in the studio, of course, you know,
compliments of the company and we just laid back and did it.
Also, Grady Tate's wife brought us down some home cooked chicken and we
just laid back and we was chomping on chicken and having a ball.
Jazz is the only real music that's gonna last. All that
other bullshit is here today and gone tomorrow. But jazz was,
is and always will be.
We may not do this sort of recording again, I may not get with the fellas
again. George, Ron, Grady Tate, Stanley Turrentine.
So we hope you enjoy listening to this album half as much as we enjoyed
playing it for you.
Because we had a ball.
The full edited passage Drake used, 35 seconds long, is here:
Good God Almighty, like back in the old days.
You know, years ago they had the A&R men to tell you what to play, how
to play it and you know whether it’s disco rock, but we just went in the
studio and we did it.
We had champagne in the studio, of course, you know, compliments of the
company, and we just laid back and did it.
So we hope you enjoy listening to this album half as much as we enjoyed
playing it for you. Because we had a ball.
Only real music is gonna last, all that other bullshit is
here today and gone tomorrow.
Smith said only jazz was going to last. Drake disagrees. (It is
not clear of the change from "that's" to "is" in the last line represented
the patching in of a copied "is" from somewhere else, or if it's just a
variant of transcription, with the underlying sound unchanged.)
Drake's team had obtained a license to sample from
Smith's recording. But they did not have a license to sample
from Smith's composition. The only argument Smith's estate had
was that Drake used a sufficiently large amount of Smith's track that they
needed a composition license too.
One way to look at this is to argue that the situation would be the same
if Drake had simply copied Smith's words in print. As a
quotation. Who would care about that?
Judge William Pauley gave a careful Fair-Use four-factor analysis,
ultimately ruling that Drake's use was transformative. On the
purpose of the use factor (the first factor), Drake's legal team had
argued that Drake's track (and Drake's message) was quite different:
- Drake changed the meaning considerably, by dropping the reference to
- Drake dropped all references to Jimmy Smith's own musical work
- Drake added background music and generally completely changed the
"feel" of the piece.
The judge regarded points 2 and 3 as making Drake's track a derivative
work, but felt that point 1 rose to the level of "transformative".
The judge felt that factor 2, "the nature of the work", was slightly in
favor of Jimmy Smith.
For factor 3, the amount of the work used, the judge cited Cariou v
Prince (remember essentially all of Cariou's original photo was
For factor 4, the effect on the market for the original, Judge Pauley
writes "There is no evidence in the record to suggest that Pound Cake
usurps any potential market for JSR or its derivatives". This is, for
sampling (and especially for small-scale sampling), almost always the
case. Judge Pauley did note that Smith's work "targets a sharply different
primary market" than Drake's. That probably should not be
relevant to a factor-4 conclusion, but there it is.
"Transformative use" is use of copyrighted material where the "purpose ..
of the use" (factor 1) is wholly different from the purpose of the
original. Typically it may be important that the new use offer something
to the public that was otherwise unavailable.
Parodies are often considered transformative use. Note, however, that
permission to parody is often refused, so many parodies might not exist if
it were not for Fair Use.
Another example comes from Diebold v Online Policy Group, and some
Swarthmore students. The students and OPG were originally suing Diebold;
the students had posted some internal Diebold memos about flaws in
electronic voting machines, and Diebold was wildly filing DMCA takedown
notices. The students and OPG, and the EFF, felt these were an abuse of
the DMCA process.
From the judge's opinion:
Finally, Plaintiffs' ... use was transformative:
they used the email archive to support criticism that is in the public
interest, not to develop electronic voting technology. Accordingly, there
is no genuine issue of material fact that Diebold, through its use of the
DMCA, sought to and did in fact suppress publication of content that is
not subject to copyright protection.
Search engines often (and often successfully) raise the
transformative-use defense when the alleged infringement comes up in the
course of making search available. For example, Google caches whole pages
of other sites, and also makes entire images available on
images.google.com. The transformative-use argument is based on the idea
that Google is not publishing articles or images to compete
directly, but rather to provide its search service to the public. See the
Perfect 10 case below.
A claim of transformative use might be raised for music
sampling, especially if the sampled sound is digitally modified, but
generally speaking it is the intent that matters when use is
transformative. The Online Policy Group's purpose in publishing Diebold's
internal memos about flaws in their voting machines was to further
democracy, not to make competing voting machines.
When Google copies articles (and, as we shall see below, photographs) as
part of maintaining its search engines, the purpose is to enable search,
not to compete as a publisher. (One can take a cynical view that Google
does indeed try to compete as a publisher, but the idea is still that
search brings to the public something that was fundamentally absent
before.) Baase 4e §4.3 / 5e §4.4 is devoted to this topic of search
engines and copyright.
Is music sampling a transformative use? Is it transformative in some
cases? If so, what cases?
The Kelly and Perfect
10 cases, next, address this doctrine of "transformative". We'll
return to the Diebold case under "Free Speech"
Kelly and Perfect
Kelly v Arriba Soft: 2002 (Baase 4e §4.3 / 5e §4.4)
Perfect 10 v Google: 2006 -- ??
Kelly was a photographer incensed that Arriba Soft's "ditto.com" search
engine was displaying thumbnails of his images. (There still is a ditto.com,
but I have no idea whether it is connected to the original one.) The Ninth
Circuit ruled thumbnails were fair
use, but not links to full-sized images. They later reversed that last
- Purpose and Character: use is transformative
- Nature of work:
creative work on internet;
"slightly in favor of Kelly"
- Amount & Substantiality: irrelevant; whole image must
- Effect on
court found no harm to Kelly's market; in fact, by helping people find
Kelly's images they might help him. Use of thumbnails
weighed heavily here: they aren't nearly as attractive as originals.
Now to the Perfect 10 case. Perfect 10 sold nude images; they claimed to
have a business plan to sell thumbnail images to cellphone users. Note that,
on the face of it, this last point undermines the Kelly
reasoning on effect on the market.
This question goes pretty much to the heart of Google's ability to provide
images.google.com is an image-based
search engine; it frames full-sized images, and caches thumbnails.
P10's images came up on google only when some third party posted them (at
some third-party site), apparently without authorization.
The District Court ruled that links
were ok, but thumbnails were not.
More precisely, the court granted an injunction
against the thumbnails, but not against the links. The case is still not
decided completely (and probably won't be).
[What do you think of the links issue?]
Wikipedia documents the District Court ruling in http://en.wikipedia.org/wiki/Perfect_10_v._Google_Inc.
Here is Judge Howard Matz's Fair Use analysis (emphasis added):
The first, second, and fourth fair use
factors weigh slightly in favor of P10. The third weighs in neither
party's favor. Accordingly, the Court concludes that Google's creation of
thumbnails of P10's copyrighted full-size images, and the subsequent
display of those thumbnails as Google Image Search results, likely do not
fall within the fair use exception. The
Court reaches this conclusion despite the enormous public benefit that
search engines such as Google provide. Although the Court is reluctant
to issue a ruling that might impede the advance of internet technology,
and although it is appropriate for courts to consider the immense value
to the public of such technologies, existing judicial precedents do not
allow such considerations to trump a reasoned analysis of the four fair
Note that Judge Matz does not believe that value to the public has priority
over the fair-use factors.
Google then appealed the case to the Ninth Circuit.
In 2007 the Ninth Circuit then reversed, issuing a preliminary ruling that
all of Google's use is likely enough
fair use that P10 lost their injunction. Their preliminary decision is at Perfect10vGoogle9thCir12-2007.pdf.
The bottom line was that Google's use was transformative.
Google might still be liable for contributory infringement. However, it
appears that P10 has abandoned the case.
Appeals court ruling points:
From the preliminary decision:
- Google DMCA defense
- P10's "display right" and "distribution right" are at issue.
- Server test: whose server are the images really on?]
Applying the server
test, the district court concluded that Perfect 10 was likely to
succeed in its claim that Google's thumbnails constituted direct
infringement but was unlikely to succeed in its claim that Google's
in-line linking to full-size infringing images constituted a direct
infringement. Id. at 84345. As explained below, because this analysis
comports with the language of the Copyright Act, we agree with the
district court's resolution of both these issues. [15458 (15), last ⁋]
Google isn't doing it (the server test):
 Google does not, however, display a copy
of full-size infringing photographic images for purposes of the Copyright
Act when Google frames in-line linked images that appear on a user's
computer screen.[15460 (17)]
Contributory infringement is not at issue.
Perfect 10 incorrectly relies on Hotaling
v. Church of Jesus Christ of Latter-Day Saints and Napster
for the proposition that merely making images "available" violates the
copyright owner's distribution right. [15463 (20)]
Isn't this "making available" a core issue for file sharers?
At this point the appeals court turns to Google's Fair Use defense
In applying the fair use analysis in this
case, we are guided by Kelly v. Arriba Soft Corp., ... In Kelly, a
photographer brought a direct infringement claim against Arriba, the
operator of an Internet search engine. ... We held that Arriba's use of
thumbnail images was a fair use primarily based on the transformative
nature of a search engine and
its benefit to the public. Id. at 818-22. We also concluded that
Arriba's use of the thumbnail images did not harm the photographer's
market for his image. [15466 (23)]
Recall the District Court judge's reluctance to put much stock in "benefit
to the public"
Purpose and Character: the Ninth Circuit held that the use was
transformative. Very much so.
District Court: this was diminished, in terms of Google's use of thumbnails,
by P10's plan to sell thumbnails. Also, google's use is commercial.
Ninth Circuit Circuit: "In conducting our case-specific analysis of fair use
in light of the purposes of copyright,":
this is an explicit acknowledgement of the Copyright Clause. [15470 (27), ⁋
starting in middle of page]
Bottom line: Purpose & Character goes from DC's "slightly in favor of
P10" to Ninth's "heavily in favor of Google"
Also note, same paragraph:
The Supreme Court, however, has directed us
to be mindful of the extent to which a use promotes the purposes of
copyright and serves the interests of
One of the cases cited as evidence of this directive is Sony.
Another is the 1993 Campbell case
(about a 2 Live Crew parody of the Roy Orbison song Pretty
Woman), in which the Supreme Court stated that "the more transformative
the new work, the less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair use". [15471 (28)].
Recall that a major element of the Campbell
case was that the Supreme Court backed away from the idea that commercial
use would seldom qualify as "Fair use"; compare this with the earlier Sony quote "although every commercial
use of copyrighted material is presumptively an unfair exploitation of the
monopoly privilege that belongs to the owner of the copyright,...."
we note the importance of analyzing fair use
flexibly in light of new circumstances [15471 (28)]
Nature of work: no change; still "slightly
in favor of Kelly". Part of the "slightly" was that the images were already
Amount & Substantiality: irrelevant; whole image must
be copied; see [15473 (30)]
Effect on market: P10 did not prove their market for thumbnail images was
harmed. So this didn't count. But how would they ever do that?? More
precisely, "the district court did not
find that any downloads for mobile phone use had taken place."
[15470 (27), last line of page]. There were echoes of this issue in the Sony case: Universal Studios did not
prove that they were harmed, because the market for home sales of movie
videotapes did not exist, because Sony's Betamax was the first VCR on the
Whoa! Is that last issue really fair? Did the District Court even consider
More at [15474 (31)], end of 1st and 2nd paragraphs
We conclude that Google is likely to succeed
in proving its fair use defense and, accordingly, we vacate the
preliminary injunction regarding Google's use of thumbnail images."
Note how the appellate court sort of finessed the "effect on the market"
Another option: why were P10's images ever found? Because users uploaded
them illegally. There is another path here: to allow google to provide
thumbnails and links only so long as the originals are present. Then, P10
can go after the originals.
An interesting question: if P10 had been selling something more socially
acceptable than soft-core pornography, might this decision have gone the
other way? There's an old legal saying that "bad cases make bad law"; is
this an example?
The Hotaling v Church of Jesus Christ of Latter Day Saints case
mentioned above, by the way, is decidedly weird. Hotaling published a
geneology reference; the LDS library bought one copy on microfiche and
duplicated it. They then made copies and distributed them to their branches.
Upon notification by Donna Hotaling, they recalled all the copies and
destroyed them, intending to keep the original. But then it turned out that
they had destroyed the original; their one remaining copy was one of the
copies they made.
When the Hotalings found out the library still had a copy, they
sued. The District Court granted summary judgment to the church, but the 4th
Circuit overruled. They decided
In this appeal we hold that a library
distributes a published work, within the meaning of the Copyright Act, 17
U.S.C. §§ 101 et seq., when it places an unauthorized copy of the work in
its collection, includes the copy in its catalog or index system, and
makes the copy available to the public.
Never mind that the church had paid for one copy and had only one copy
The 4th Circuit essentially ruled that offering to distribute an
unauthorized copy to the public constituted infringement. Compare
that to Jammie Thomas-Rasset's defense.
Judge Butzner, in his dissent, pointed out that the copyright law does not
make all distribution an infringement. In fact, the law spells out
that infringment means
"to distribute copies ․.. of the copyrighted
work to the public by sale or other transfer of ownership, or by rental,
lease, or lending [.]" 17 U.S.C. § 106(3).
The LDS library certainly did not rent or lease the copies. In fact they did
not even "lend out" copies; it was a research library with no checkout
Cariou v Prince
This case about photography was a rather substantial win for Fair Use, and
in some ways a surprising one. Richard Prince used photographs by Patrick
Cariou in what might be called a collage, but which might also be
called trivial editing. Some of Prince's work can be seen here: http://www.gagosian.com/exhibitions/richard-prince--may-08-2014/exhibition-images.
Cariou won at the District Court level, but the Second Circuit reversed. In
their decision, they argued that the first factor was the most important:
how the material was being used, and whether the use was "transformative".
The court cited this precedent: "For a use to be fair, it 'must be
productive and must employ the quoted matter in a different manner or for a
different purpose from the original.'" The district court had said that for
Fair Use to apply the new work must explicitly comment on the original work,
and Prince's images do that only indirectly.
Thirty images were in question. The Second Circuit found Fair Use very clear
in 25 of them (the other five were sent back to the District Court for
further consideration; Prince and Cariou then agreed to a sealed financial
These twenty-five of Prince's artworks
manifest an entirely different aesthetic from Cariou's photographs. Where
Cariou's serene and deliberately composed portraits and landscape
photographs depict the natural beauty of Rastafarians and their
surrounding environs, Prince's crude and jarring works, on the other hand,
are hectic and provocative....
In [the twenty-five artworks], Prince has not presented the same material
as Cariou in a different manner, but instead has "add[ed] something new"
and presented images with a fundamentally different aesthetic.
Cariou argues that ... we are not to
consider how Prince's works may reasonably be perceived unless Prince
claims that they were satire or parody. No such rule exists, and we do not
analyze satire or parody differently from any other transformative use
The court also looked at the commercial/noncommercial distinction. Prince
was selling his work; that makes it "commercial". However, the court noted
"nearly all of the illustrative uses listed in the preamble paragraph of §
107 [the Fair Use law], including news reporting, comment, criticism,
teaching, scholarship, and research... are generally conducted for profit."
So is music sampling, but it is also "artistic".
For the third factor, amount and substantiality, the Second Circuit followed
the lead of the Ninth Circuit in the Perfect
10 v Google case: the rule doesn't really make sense for images.
The court also considered the fourth factor, effect on the market. Despite
cancellation of a Cariou show based on the pictures, after Prince's work
became known, the court found little direct impact.
This case may have relevance to music sampling. Note that the fact that
Prince made money by using Cariou's work (and in fact made a lot more than
Cariou earned in total for his Rastafarian photographs) did not matter
Prince has recently done a show based on images taken from ordinary people's
Instagram accounts. Many of these images sold for $90,000. See http://www.washingtonpost.com/blogs/style-blog/wp/2015/05/25/a-reminder-that-your-instagram-photos-arent-really-yours-someone-else-can-sell-them-for-90000/.
See also Author's Guild v Google.
A related 2017 case concerns a Star-Trek-related fan film titled Axanar,
about Captain Kirk's hero Garth of Izar, and the Four Years War with the
Klingon Empire. The proposed film incorporates a large number of Star Trek
background concepts, including Klingons, the Klingon language, and Vulcans.
But the story of the Four Years War was never told by Paramount or CBS,
owners of the Star Trek copyrights, and the fan film would not include any
established Star Trek characters. Should the film developers be entitled to
a Fair Use defense? The film would clearly have no effect on sales of
existing Star Trek content. See https://www.washingtonpost.com/news/volokh-conspiracy/wp/2017/01/09/copyright-in-klingon/.
However, creating fan fiction that fits into an established series is often
The judge rejected the Fair Use argument. The parties then reached a
settlement, announced January 2017, in which the movie can go ahead subject
to the following rules:
- It must fit into two 15-minute segments (eg YouTube segments)
- They can't use the name Star Trek in the title
- They can't earn advertising revenue from online showings
Given that the original plan was for a ~2-hour movie, 30 minutes is
something of a letdown.
Author JK Rowling has similarly cracked down on fan fiction
related to Harry Potter.
Search Engines generally
Being a search engine is not a blanket exemption from claims of
copyright-infringement inducement. In one sense, thepiratebay.org is simply
a search engine for torrents; essentially nobody in the legal establishment
believes it has a legitimate public role. Google routinely removes unlawful
copyrighted content from its search results; Google search is not likely to
turn up examples of file-shared material.
Meltwater News, which considers itself a reputation-management service,
tried to set up a system where you could use their site as a portal for
searching for AP news articles. The idea was that corporate subscribers
could find out what was being said about them by the press. Meltwater
claimed they were just a search engine, but the courts did not buy it.
How, exactly, is Meltwater different from Google? For one thing, they are a
fee-based service. For another, they only searched a limited set of news
sites. Finally, most subscribers did not click on the Meltwater links to the
original AP stories for follow-up; they apparently regarded the Meltwater
report as an end in itself.
Sony and Reverse engineering
Many reverse-engineering cases are based on copyright, and on the Sony
v Universal case in particular. (Note the irony that Sony, then on
the side of copyright infringers, is now involved in aggressive legal
attempts to ban software and hardware that enables infringement of PS3
Sega Enterprises v Accolade, Ninth Circuit, 1992: Accolade made copies of
the Sega ROM and reverse-engineered it. Accolade won.
Sega argued that all four Fair Use factors were in their favor. The Ninth
Circuit dismissed much of this, pointing out that copies of Sega's program
were not being distributed at all, and were not even being used
for infringing game play within Accolade. The copies were made only to
create new games; Accolade's only "harm" to Sega was as competitor. The
Ninth Circuit did cite the Sony
decision regarding the possibility that an entire copy might in some cases
be fair use, and that "[w]hen technological change has rendered its literal
terms ambiguous, the Copyright Act must be construed in light of this basic
purpose [to stimulate artistic creativity for the general public good]" (in
turn quoting an earlier copyright case).
Atari Games v Nintendo, 1992: another reverse-engineering case; also won by
Sony Computer v Connectix, 2000: Connectix copied Sony BIOS and reengineered
it so that Sony Playstation games could be played on a computer.
Bottom line: the courts have had a pretty strong history of not
allowing copyrights to interfere with reverse engineering. Note that these
cases are about pre-DMCA copyright law (the DMCA officially acknowledges a
right to reverse engineering, §1201(f)), and are also not about license
claims made by the plaintiff (that is, that the license terms of the
software forbid reverse-engineering).
A note on the 2010 Sony hack
In January 2010, George "geohot" Hotz (first to jailbreak the iPhone)
published the root key for the
PlayStation 3. In general, all playstation software must be signed with this
key. Having the root key allows third-party developers to create software
unlicensed by Sony, but it also allows for the playing of pirated games.
(Sony licensing is not cheap.)
Sony sued, alleging violation of the DMCA among other things. They settled
in April 2011; Hotz is required not to engage in PS3 code disassembly or
reverse-engineering, and not to discuss the settlement beyond that. In the
course of the lawsuit, Sony asked for the IP address of everyone who had
viewed Hotz's YouTube post about the hack.
Another group, fail0verflow, has also been hacking the PS3.
Hotz's technique involved using the "OtherOS" feature of the PS3 that
allowed running linux; Sony promptly removed that. Sony's action in turn
appeared to have triggered a widespread hacking effort against Sony (not by
Hotz), with the group "Anonymous" in the forefront (another group was
Lulzsec). Anonymous was apparently responsible for obtaining the names (and
email addresses and other information) of ~75 million customers. They may
also have been responsible for the tampering that led Sony to shut down the
PlayStation Network for over a month beginning in April 2011.
In September 2011, Sony supposedly modified their Terms of Service for the
PlayStation Network requiring users to waive their rights to class-action
lawsuits in the event that their personal information held by Sony is
Are individuals and groups such as Hotz and Anonymous criminals? Is Sony's
response heavy-handed? Or is it a legitimate effort to protect the
intellectual-property rights of third-party developers?
Bill O'Reilly on Intellectual Property (also on
Hmm: it seems to have moved to https://www.youtube.com/watch?v=cZiJQnIMV_s.
Ignore the opening text ad.
O'Reilly is actually talking about the person who downloaded (and
publicized) Sarah Palin's email, during the 2008 election. However, many
of O'Reilly's points apply to how the term "intellectual property" can be
a misleading concept.
The perpetrator of the Palin hack was eventually identified as David
Kernell, and was later convicted and sentenced to 366 days in jail.
Bill's correspondent is attorney Megyn Kelly. Kelly acknowledges that it
is indeed a "federal offense to access email without authorization", but
goes on to say that the web site is probably ok [~2:00 minute mark].
O'Reilly responds with "they're trafficking in stolen merchandise" and
compares it to if "you steal somebody's car".
The relevant Supreme Court case is Bartnicki v Vopper, which established
that one has a first-amendment right to publish illegally recorded
conversations, provided you were not a participant in the illegal act.
At 3:13, he says there is "no difference between taking a person's letter
out of the mailbox and taking someones email off their internet site".
Is there a difference?
Michael Eisner, CEO
of Disney, testifying before Congress in June 2000: (as included in
Halbert & Ingulli, CyberEthics,
Eisner's statement remains a pretty clear example of a particular point of
view, even if some of his concerns are a bit dated. He does use
"intellectual property" as if you're just supposed to assume it's the same
as physical property. His comments about "Pirates of Encryption" are a bit
odd, especially considering that the goal of many encryption crackers was
and is the ability to play purchased DVDs on arbitrary (eg linux) systems.
Note that he appears to equate that with credit-card theft.
[Although Eisner's remarks supposedly are from 2000, he refers to the 2003
movie Pirates of the Carribean.]
- Theft is theft. (Is this a deontological sentiment?)
- Movies cost a lot
- music downloading is as bad as credit card theft
- Everyone has to play by infringement rules
- distributing a DVD is no different from stealing newspapers
- THEFT IS THEFT
- [creators are entitled to] FULL RIGHTS OF OWNERSHIP
- "Today's Internet pirates try to hide behind some contrived New Age
arguments of cyberspace"
Disney believes in technology
1. legislative mandate for technological fixes
2. international protection
3. public education - many don't know it is wrong
4. use appropriate technological measures
5. appropriate pricing
copying drive down prices?
DISCUSSION: Do you agree with Mr Eisner?
Conversly, does Disney engage in theft by overpricing (cf Eisner's 5th rule)
Some side issues:
- What if anything was iCrave.com doing wrong? Apparently they were
simply streaming broadcast TV to the internet in real time; who loses?
They were wrapping the content
in banner ads.
- How closely is file-sharing related to credit-card fraud and
endangerment of children?
Can the FILM industry survive on the napster
Here we get into ECONOMICS. Thirty years ago, the movie industry income from
selling recordings was zero, and
the industry did fairly well. That said, it seems likely that going back to
those days would be impossible.
From 2002 to 2008, the film industry grossed more in DVD sales than at the
box office. However, that trend reversed in 2009, and seems to be
continuing. It is not clear whether filesharing is a significant factor, or,
for that matter, legal on-demand downloads (which are not counted as DVD
sales). (TV rights in the past were often as large as box-office; I do not
know if that trend has continued but I doubt it.)
Figures in billions (http://www.reuters.com/article/2010/01/05/us-dvd-idUSTRE5BU0HS20100105):
|DVD, other sales
|rental (all forms)
Here are some more box-office figures, from http://www.statista.com/statistics/187069/north-american-box-office-gross-revenue-since-1980/
and from https://docs.google.com/spreadsheet/ccc?key=0Aqe2P9sYhZ2ndEtDWmVXNi1FWmN5ei0yMlUwdXBIZ1E&hl=en_GB#gid=1.
Box-office revenue is widely available; non-box-office revenue (DVDs,
Blu-ray, streaming, rental) is less so. Numbers are in billions.
|US box office
|all US sales/rental
It is impossible to tell if the slow decline in sales & rental depicted
here is due to file-sharing, or if it is due to the rise of streaming.
Other ethics/economics questions:
Check out http://thepiratebay.org. O
brave new world!
- What is the FAIR amount of money to pay for something?
- Can people be EXPLOITED by receiving too low an income?
- Is HARM to other people ever justified, aside from ECONOMIC HARM?
- Are there limits to justifable ECONOMIC harm?
Oh, wait, you can't, from within Loyola. How about https://www.mousematrix.com/,
and enter thepiratebay.se in the PHProxy box
Napsterized Video Games
What about the market for video games that run on a general-purpose
computer, rather than a console, and which do not require a subscription fee
to access a central server? Supposedly the main reason this market has all
but collapsed is that it is much too easy to defeat copy protection, and
with games running $50 each, there is considerable incentive to do this.
If this is true, it would be an example of how inability to enforce
copyrights led to collapse of a market.
Console games represent, in a sense, a move by game makers to hardware-based
(To be sure, game consoles also offer a standardized hardware platform and
guarantee high-performance graphics, but most personal computers these days
have high-performance graphics. Many of the most successful PC-based games
in fact involve registration and monthly fees (Second Life (which can be
played for free), World of Warcraft).)
The "Napsterization" of film is not quite the whole story. Most people in
the US get their wired Internet from a cable company, and cable companies
are also in the business of selling access to content. Comcast has largely
taken to bundling Internet and TV packages. And if you
have one of the latter, you get Comcast's "TV Everywhere" option which
allows you to watch online, over the Internet, most of the video content
that comes with your cable service, all at no additional cost. In
other words, the incentive to download unlawfully is greatly reduced, as the
marginal price of most streamed legitimate online video is zero.
Of course, the TV Everywhere video service competes head-to-head with
netflix.com and hulu.com. There are "net neutrality" issues when Comcast
imposes bandwidth caps on the use of the latter, but not the former.
While we're on the subject, when Netflix negotiated their streaming rates,
they were a niche player. Now they're one of the dominant ways for people to
get access to streaming video, and some in the film industry think Netflix
should pay a lot more. Of course, the cable industry thinks Netflix is using
their internet infrastructure to compete with the cable side of the
business, and so they are against Netflix too.
Broadcast TV Sharing
The broadcast TV signal is copyrighted; you cannot just redistribute it (via
cable or the internet) without permission. Generally, cable operators must
pay the network a retransmission-consent fee. These fees
were permitted by the 1992 Cable Television Consumer Protection and
Competition act; as with any copyrighted material, the cable operator had to
have the consent of the network, and this usually involved
payment. The 1992 act forbade fees in the reverse direction: cable-system
operators may not charge networks to carry the network's
Slingbox model: this forwards your TV signal via the
internet from a point of origin. But you have to "own" the point of origin.
That is, you can watch your own home TV connection from work, or
while on vacation, but it's not a new way to receive TV at home.
Aereo took this strategy
to a new level, starting in early 2012. Everyone is allowed to receive
broadcast TV over the airwaves. So in a server room somewhere with excellent
TV reception, each subscriber leases a little antenna. The video signal
received by your own little antenna is then forwarded, slingbox-style, to
your home, over the Internet. Actually, the antennas are reassigned
dynamically; you don't lease a specific antenna. And the show can
be "parked" for a while on Aereo's servers, so you can watch it later at
Aereo's strategy has its roots in a Cablevision DVR idea: when you wanted to
record a show, they would store it on their server, and stream it
to you later. Making one copy of a TV program and streaming it to multiple
users has long been viewed as copyright infringement, but Cablevision made a
separate copy for each user. Thus, you "owned" your own copy. The
Cablevision strategy passed muster by the 2nd Circuit in 2008.
Aereo also allows you to record a TV show at Aereo's server farm and stream
it to your home later.
Sometimes there is conflict under the law between the "technicalities" view
of the law, and the "big picture" view. Is Aereo violating the "big-picture"
rule that a provider can't rebroadcast TV over the internet? Or is the
no-rebroadcasting concept fundamentally broken, because receiving broadcast
TV is, after all, free. In other words, is what they are doing a "technical
workaround", in violation of the spirit of the law? Or is it just good
business? Is the law simply obsolete, trying to make technical distinctions
that make no sense?
In recent years, TV networks (Fox, CBS) have been pushing hard for much
higher fees from cable operators for the right to carry their signal. Aereo
completely undermines that.
The root of the issue is the so-called retransmission-consent fee paid by
cable operators to networks. These fees were mandated by the 1992 Cable
Television Consumer Protection and Competition act, which forbade fees in
the reverse direction: charged by cable-system operators to networks to
carry the network's programming.
Aereo won its District Court case filed by a consortium of broadcasters.
They appealed. On April 1, 2013, the Second Circuit issued its decision in
favor of Aereo: Aereo's video streams were not "public performances" under
the meaning of copyright law or the 1992 Cable Television Consumer
Protection and Competition Act (in which "Protection" does not apply to
"Consumer", but never mind).
A competitor of Aereo, FilmOn, lost a very similar suit in District Court in
California. That case is now on appeal to the Ninth Circuit. Federal
District-Court Judge Rosemary Collyer of the District of Columbia issued an
injunction against FilmOn's antenna-farm service, binding throughout the
Ninth Circuit region.
In January 2014 the Supreme Court agreed to hear the Aereo case.
During oral arguments on April 22, the Court seemed very concerned that a
verdict in ABC's favor could also undermine the broader concept of
cloud-based content storage. After all, Aereo's basic business model is to
allow you to lease a small antenna in New York City and record your
favorite broadcast-TV shows on your own cloud space. You
can then watch them at your leisure. Is there some way in which this is
different from storing your purchased content in the cloud?
ABC's attorney tried to describe Aereo as a provider of "new content". Of
course, it is not. What Aereo does is transfers content from the airwaves to
the cloud, on a per-subscriber basis.
How can the Court separate the leased-antenna concept from the
Justice Roberts said "I'm just saying your technological model is based
solely on circumventing legal prohibitions that you don't want to comply
with". Though he immediately added, "which is fine. I mean that's -- you
know, lawyers do that".
Also Justice Sotomayor owns a Roku.
The court ultimately ruled that Aereo bore an "overwhelming likeness to
cable companies", and so the Cable Television Consumer Protection and
Competition Act should apply. This law requires permission of the
broadcaster for retransmission. The court also described Aereo's
retransmissions as a "public" performance. Aereo promptly ceased operations.
Digital Restrictions Management
(aka Digital Rights Management)
How does DRM fit into the scheme here? Is it a reasonable response, giving
legitimate consumers the same level of access they had before? Or is it the
case that "only the legitimate
customers are punished"?
The general idea behind DRM is to have
The last point is the sticky one: the software must act on behalf of the
far-away content owner, rather than on behalf of the person who owns the
hardware it is running on. Open-source DRM software is pretty much
impossible, for example; anyone could go into the source and add code to
save the decrypted stream in a DRM-free form. Windows too has problems:
anyone cat attach a debugger to the binary DRM software, and with enough
patience figure out either what the decryption key actually is, or else
insert binary code to allow saving the decrypted stream.
- encrypted media files, with multiple possible decryption keys
- per-file, per-user licenses,
which amount to the encrypted decryption key for a given file
- player software (the DRM agent)
that can use some master decryption to decrypt the per-file decryption
key and then decrypt the licensed file. The
DRM agent respects the content owner's rights by not allowing the user
to save or otherwise do anything with the decrypted stream other than
iPods, iPads, kindles, nooks, DVD players, and other closed
platforms are best for DRM. Under windows, DRM is one of the issues leading
Microsoft towards "secure" Palladium-style OS design under which some
processes can never have a debugger attached. ("Protected processes" were
introduced into Vista/win7.)
Most DRM platforms allow for retroactive
revocation of your license (presumably they will also refund your money).
This is creepy. Content providers can do this when your device "phones
home", when you attempt to download new content, or as part of mandatory
Note that the music industry, led by iTunes, no longer focuses on DRM sales.
E-book readers, however, are still plunging ahead. One iPad market-niche
theory is that the machine will provide a good platform for DRM-based movies
Some older DRM mechanisms are based on the "per-play phone-home" model: the
DRM agent contacts the central licensing office to verify the license. This
allows, of course, the licensing office to keep track of what you are
watching and when. This raises a significant privacy concern. I have not
heard of any recent systems taking this approach.
Another major DRM issue is that different vendors support different
platforms. DRM might require you to purchase, and carry around with you,
several competing music players, in order to hold your entire music library.
Perhaps the most vexing real-world DRM problem is that licenses
are inevitably lost, sooner or later. Keeping track of licenses is
hard, and moving licensed content from one iPod to the next (eg to the
replacement unit) is nontrivial. If the first iPod is lost or broken, and
Apple no longer supports the license, your content is lost. When Wal*Mart
switched to selling non-DRM music a year ago, they also dropped support for
the DRM music they'd sold in the past, meaning that those owners would see
their investment disappear whenever their current hardware platform needed
to be replaced. They would not get
automatic upgrades to DRM-free versions.
Traditional CDs have a shelf life of (it is believed) a few decades, and
traditional books (at least on acid-free paper) have a shelf life of
centuries. Compare these to DRM lifetimes.
Digital music sales are currently
often without DRM, probably because everyone wants their music library to be
"portable". Movies, however, usually are
subject to DRM (and sometimes pretty onerous DRM); nobody really thinks you
need to have a portable movie
In February 2014 Adobe announced that as of July 2014 they would no longer
support their own older DRM formats, known as ACS 4 and RMSDK 9. What this
means in practice is that if a user has an older e-book reader, it will have
to be upgraded in order to read new ebook downloads or even ebooks
previously purchased but then re-downloaded as part of a backup/restore.
Many older readers, however, are not upgradeable, either by design or
because the vendor has gone out of business.
See also http://xkcd.com/488.
General copyright law rules
Different categories may be (and usually are) subject to different rules.
for (voluminous) examples.
A local copy is at http://pld.cs.luc.edu/ethics/copyright2007.pdf.
There is a good overview (intended for paralegals) at http://nationalparalegal.edu/public_documents/courseware_asp_files/patents/menu_patents.aspx.
The examples here are mostly from the legal mainstream, avoiding
bleeding-edge controversies such as Viacom v YouTube.
Rules for theatrical performances are tricky: these are ephemeral
performances! Videotaping a performance may violate actors' rights.
The usual issue is rights of the director.
Copyright is held by the creator unless:
- the work is sold
- the work is a Work For Hire
Copyright covers expression, not
Famous case: Feist Publications v Rural Telephone Service:
(Feist v Rural) (1991, Justice O'Connor): the phone book
is not copyrightable.
(some European countries DO have "database protection". Gaak!!)
More info on Feist below
Note that if you buy a copy, you have right of private performance (so to
speak; there's no special recognition of it), but not public.
First Sale doctrine: after you buy
a copy, you can re-sell it. Copyright law only governs the "first sale".
There is an exception for software, but not for music and movies.
Who owns the copyright? The creator, unless it is a "work for hire", or the
copyright is sold.
This idea goes back to the constitution: the public has some rights to
copyrighted material. Fair Use grants a limited
right of copying for reviews, etc
Good-faith defense protects schools, libraries, archives, and public
broadcasts (but not me and Joel Tenenbaum); this limits statutory damages to
$200 IF infringement was "reasonably believed" to be fair use. Note that, in
the real world, this strategy doesn't usually apply (though it probably
means that schools don't get sued much; it's not worth it.) Section
In other cases, statutory damages may
be reduced to $200 if the "infringer was not aware and had no reason to
believe that his or her acts constituted an infringement of copyright".
Statutory damages are a flat amount you can ask for at trial instead of
actual damages. See Section 504. Part of the theory is that by asking for
statutory damages, you do not have to prove the number of copies made. But
note the effect on the RIAA cases: actual damages might be in the range of
$1/track, if you're downloading for personal use, while statutory damages go
up to $30,000/track. Statutory damages were created in an era when
essentially all copyright cases that reached the legal system involved bulk
commercial copying. If a DVD street vendor is arrested, statutory damages
make sense, because of the likelihood that a rather large number of copies
have been sold in the past. But file-sharing is about single
Statutory damages were introduced in the 1909 copyright act, which stated
they "shall not be regarded as a penalty". Many have read this as meaning
that they were simply meant as compensation to the rightful copyright owner.
However, this is not as clear as it might be; the article washingtonpost.com/news/volokh-conspiracy/wp/2017/02/10/statutory-damages-in-copyright-law-on-forgetting-how-to-read-a-statute
interprets this phrase, with good historical evidence, as meaning that
statutory damages shall not be regarded as criminal fines, with the
attendant much stricter burden of proof, but that they were still meant to
Certainly the RIAA uses these enormous statutory damages to discourage
file-sharing by others.
Title 17 United States Code, Chapter 5, Section 504, Paragraph (c) Statutory
(1) Except as provided by clause (2) of this
subsection, the copyright owner may elect, at any time before final
judgment is rendered, to recover, instead of actual damages and profits,
an award of statutory damages for all infringements involved in the
action, with respect to any one work, for which any one infringer is
liable individually, or for which any two or more infringers are liable
jointly and severally, in a sum of not less than $750 or more than $30,000
as the court considers just.
This was written to address large-scale commercial copyright infringement. Should it apply to personal use? The
legal objection is usually the huge disconnect between actual damages and
Laws (highlights only):
1790 copyright act: protected books and maps, for 17 years. "The earth
belongs in usufruct to the living": Thomas Jefferson [the earth is for the
use of the living]
1909 copyright act: a copy has to be in a form that can be seen
and read visually. Even back then this was a problem: piano rolls
were the medium of recorded music
back then, and a court case established that they were not copyrightable
because they were not readable.
1972: Sound recordings created in 1972 and after were brought under
Copyright. Coverage was not retroactive, but state
copyright coverage is allowed to remain in effect until 2067. Pre-1972
recordings are therefore never in the public domain unless the copyright
holder has placed them there.
1976 & 1980 copyright acts: mostly brings copyright up to date. The 1976
act formally introduced the doctrine of Fair Use, previously carved out by
court cases, and formally covers television broadcasts.
1988: US signed the Berne Convention, an international copyright treaty. We
held out until 1988 perhaps because Congress didn't believe in some of its
requirements [?]. The1989 Berne Convention Implementation Act brought the US
into conformance with Berne convention; its most famous consequence was
perhaps no longer requiring a copyright notice on works.
[Berne Convention has since become WIPO: World Intellectual Property
Organization, a U.N. subsidiary.
WIPO: one-state-one-vote + north-south divide => rules harming interests
of poor countries were blocked. Example: pharmaceutical patents
As a result, some international IP agreements are now under the jurisdiction
of the WTO (World Trade Organization), which the first-world nations control
Who has jurisdiction over IP law could be hugely
important: the third world is generally against
tight IP law, while the first world is generally for
it (at least governments are)
Brief comment on treaty-based law: A judge may work harder to find a
way not to overrule a treaty, than to find a way not to overrule an ordinary
1996: Communications Decency Act: not really about copyright, but it will be
important to us later.
- indecency v obscenity and the Internet
- Section 230
1997: No Electronic Theft act: David LaMacchia case (above); criminalizes
noncommercial copyright infringement if the value exceeds $1000 and the
infringement was willful.
In 1994, mp3 file sharing had not yet become significant.
1998: Digital Millennium Copyright Act (DMCA) passes. the two best-known
and/or most-controversial provisions:
2005: recording movies in a theater (with a compact video camera) was made a
- anticircumvention prohibition: it is illegal to help someone in any
way to circumvent copy protection
- safe-harbor / takedown
2008: Pro IP act
The "compilation clause" was eventually deleted during the legislative
debate; it might have lead to an
increase in statutory damage claims by allowing plaintiffs to count each
track of an album as a separate infringement; without this change, albums
can only count as a single infringement. In practice, nowadays this is
This law may also make it easier
for rights-holders to sue owners of a computer for infringement even when
some third party is known to have done the infringing without the consent or
knowledge of the computer owner; this describes the situation of Deborah
Foster, sued unsuccessfully in 2004 by the RIAA, who was able to convince
the judge that the downloading was likely done by her estranged adult
The 2008 Pro IP act does allow the Justice Department to sue infringers on
behalf of copyright holders; to date, the DoJ has shown no interest in suing
individual infringers for personal use. If someone steals a physical CD,
then the DoJ (or, more likely, the state in question) can bring criminal
proceedings, not just a lawsuit.
Some Famous Copyright Cases
Wikipedia famous copyright cases:
Copyright and traditional music
A quote from http://www.edu-cyberpg.com/Music/musiclaw2.html:
John and Alan
Lomax, who also devoted themselves to collecting and preserving
traditional folk music, took the controversial step of copyrighting in
their own names the songs they collected, as if they had written the songs
themselves. They even copyrighted original songs collected from other
singers, such as Leadbelly's "Good Night Irene."
The Leadbelly incident occurred under the pre-Berne rules, where
first-to-register meant something, even if you were registering the
copyright of someone else's work.
1964: Irving Berlin et al. v. E.C. Publications, Inc.: "Mad Magazine
Mad Magazine published "sung-to-the-tune-of" alternative
lyrics for popular songs.
District court ruled in MAD's favor on 23 of 25 songs.
2nd Federal Circuit decided in MAD's favor on all 25
Sony v Universal City Studios, 1984,
1985, Dowling v United States,
473 U.S. 207
Paul Dowling ran a bootleg record company, as an Elvis fan. SCOTUS agreed
with his claim that what he did was not "theft" in the sense of "interstate
transportation of stolen property", or fraud in the sense of "mail fraud".
This was an important case in establishing that copyright infringement was
legally not the same as theft (or, more specifically, that the illegal
copies could not be equated with "stolen property"). However, the
distinction was rather technical, addressing only whether a federal law on
interstate transport of stolen property could be applied.
From the Supreme Court decision, http://laws.findlaw.com/us/473/207.html
The language of 2314 [the
interstate-transportation-of-stolen property act] does not "plainly and
unmistakably" cover such conduct. The phonorecords in question were not
"stolen, converted or taken by fraud" for purposes of 2314. The section's
language clearly contemplates a physical
identity between the items unlawfully obtained and those eventually
transported, and hence some prior physical
taking of the subject goods. Since the statutorily defined
property rights of a copyright holder have a character
distinct from the possessory interest of the owner of simple "goods,
wares, [or] merchandise," interference with copyright does not easily equate with theft,
conversion, or fraud. The infringer of a copyright does not assume
physical control over the copyright nor wholly deprive its owner of its
use. Infringement implicates a more complex set of property interests than
does run-of-the-mill theft, conversion, or fraud
It follows that interference with copyright
does not easily equate with theft, conversion, or fraud. The Copyright Act
even employs a separate term of art to define one who misappropriates a
copyright: ... 'Anyone who violates any of the exclusive rights of the
copyright owner ... is an infringer of the copyright.'
Dowling's criminal copyright-infringement conviction still stood. Note that
Dowling's case clearly met the first item of USC §506(a)(1),
(A) for purposes of commercial advantage or private
This was the standard that the courts ruled did not
apply in the David laMacchia case.
1991, Feist Publications v Rural
(Feist v Rural) (1991, Justice O'Connor; decision: http://www.law.cornell.edu/copyright/cases/499_US_340.htm)
phone book is NOT copyrightable.
This case concerns the interaction of two
well-established propositions. The first is that facts are not
copyrightable; the other, that compilations of facts generally are.
The decision then goes on to explain this apparent contradiction. First, the
essential prerequisite for copyrightability is that the matter be original.
Some compilations are original, perhaps in terms of selection criteria or
presentation. The phone book displays no such originality. There is more
starting at ⁋ 22 (subsection B); Article 8 of the Constitution is referenced
in ⁋ 23. The gist of O'Connor's opinion is that, yes, copyright law does go
back to the Constitution, and has to be considered. In ⁋ 26, she writes,
But some courts misunderstood the statute.
..These courts ignored § 3 and § 4, focusing their
attention instead on § 5 of the Act. Section 5, however, was purely
technical in nature....
What really matters is not how you
register your copyright, but whether your work is original.
In ⁋27, O'Connor directly addresses
the Lockians among us: she explicitly refutes the "sweat
of the brow" doctrine (which, at the time of the Feist decision,
was a popular theory in legal circles and even a precedent in some cases).
Making matters worse, these courts developed
a new theory to justify the protection of factual compilations. Known
alternatively as "sweat of the brow" or "industrious collection," the
underlying notion was that copyright was a reward for the hard work that
went into compiling facts.
Instead, O'Connor held that it was originality
In ⁋ 32: "In enacting the
Copyright Act of 1976, Congress dropped the reference to "all the
writings of an author" and replaced it with the phrase "original
works of authorship.""
⁋ 46 states exactly what Feist did [emphasis added]. You can do it too.
There is no doubt that Feist took from the
white pages of Rural's directory a substantial amount of factual
information. At a minimum, Feist copied the names, towns, and telephone
numbers of 1,309 of Rural's subscribers. Not
all copying, however, is copyright infringement. To establish
infringement, two elements must be proven: (1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original.
Bottom line, ⁋ 50:
The selection, coordination, and arrangement
of Rural's white pages do not
satisfy the minimum constitutional standards for copyright protection. As
mentioned at the outset, Rural's white pages are entirely typical. ... In
preparing its white pages, Rural simply takes the data provided by its
subscribers and lists it alphabetically by surname. The end product is a
garden-variety white pages directory, devoid of even the slightest trace
Pamela Samuelson wrote in her paper "The
Generativity of Sony v Universal:
The Intellectual Property Legacy of justice Stevens"
The Register of Copyrights characterized
Feist as having "dropped a bomb" on U.S. copyright law 17 because it upset
settled expectations of publishers of directories and databases who had
long relied on "sweat of the brow" copyright caselaw.
The Feist case is related to a much-later summary-judgment decision in favor
of the defendants in BanxQuote v Costco, a federal
copyright case in New York. Costco and other defendants had quoted a figure
calculated and published online by BanxQuote for the average return on
5-year bank certificates of deposit: 3.95%. BanxQuote sued, claiming their
results were copyrighted. Judge Kenneth Karas wrote, after hearings on some
of the facts,
But now the evidence is in, and, on
cross-motions for summary judgment, the Court determines that, even
drawing all reasonable inferences from the evidence in Plaintiff's favor,
the averages are unprotectable because they are uncopyrightable facts,
because they are too short to be copyrighted, and because the so-called
merger doctrine -- which applies where there is "only one ... or so few
ways of expressing an idea, that protection of the expression would
effectively accord protection to the idea itself," -- bars copyright
Had the case gone the other way, there would have been an immediate question
as to whether 3.949999.... was also copyrighted.
This is reminiscent of an attempt a few years earlier by the NFL to claim
that football scores were copyrighted. Feist established, in essence, that
compilations of facts are generally not copyrightable.
1991: Basic Books, Inc. v. Kinko's Graphics Corporation
Federal District Court, NY
Just because it's been published in a book does not
mean you can use it freely in teaching a course. This was considered
relatively obvious; nobody appealed.
1993: Campbell v Acuff-Rose Music, relating to the 2 Live Crew parody of Roy
Orbison's Pretty Woman. 2 Live Crew tried to get a license, but were denied;
they then decided they did not need one. The District Court found for 2 Live
Crew and the Circuit Court found for Acuff-Rose.
The Supreme Court agreed that the parody was Fair Use, but
apparently not on general principles; they explicitly stated that parody
was not automatically Fair Use. However, they found for Fair Use
despite the statement in the Sony decision that commercial use was
presumptively UnFair Use. Much of the decision dealt with the four-factor
analysis: the parody song used the tune of the original, and its first line.
As for the Effect on the Market factor, the Supreme Court recognized that
parodies seldom if ever compete with the original. The Supreme Court sent
the case back for resolution of some details, at which point the case was
settled. Apparently 2LC did end up
paying a licensing fee. It also appears that the Campbell song was intended
to some degree to poke fun directly at Orbison's song, not to be general
1999: Estate of Martin Luther King, Jr., Inc. v. CBS, Inc.
MLK's "I have a dream" speech is not
in the public domain. The legal issue was that the speech was
delivered in 1963, before the 1989 Berne Convention Implementation Act;
however, the copyright was not registered until after
the speech. In the pre-Berne era, publication before copyright could make
copyright impossible. The technical issue: did giving the speech
constitute "general" publication or "limited" publication?
2000: UMG v MP3.com
Federal District Court, NY
The court implicitly rules that you can't download copies even
if you already own a copy, but that might not have been the central
MGM v Grokster, 2005
StreamCast, purveyor of morpheus,
was another defendant. Limewire was not, but they shut down soon after the
decision was announced. (Limewire recently lost a contributory-infringement
case; damages ended up at $105 million after the RIAA had at one point asked
for $75 trillion).
This decision introduced the doctrine of copyright inducement.
This case left the Sony SNIU
framework intact, despite MGM's arguments against it. Indeed, the justices
took pains to argue that the Grokster situation was very different than
for a lengthy article analyzing the decision.
The decision syllabus is at http://www.law.cornell.edu/supct/html/04-480.ZS.html,
with links to Souter's opinion.
Note that the District Court and the Ninth Circuit granted summary judgment
to Grokster! That is, they felt Grokster's case was very strong under the Sony doctrine.
As for the Supreme Court, the decision points out [emphasis added]
The record is replete with evidence that
when they began to distribute their free software, each of them clearly
voiced the objective that recipients use the software to download
copyrighted works and took active steps
to encourage infringement.
Justice Souter then opened his decision with the following:
Held: One who distributes a
device with the object of promoting its use to infringe copyright, as
shown by clear expression or other affirmative steps taken to foster
infringement, going beyond mere distribution with knowledge of third-party
action, is liable for the resulting acts of infringement by third parties
using the device, regardless of the device's lawful uses.
This is known as the theory of copyright
inducement, or contributory
infringement; the intentional encouragement of infringement.
Contributory infringement is similar to "aiding and abetting" liability: one
who knowingly contributes to another's infringement may be held accountable.
The Sony precedent might have
blocked this, but if your stated primary
goal is unlawful (as was Grokster's), you lose.
Justice Souter also raised the possibility of vicarious
liability: profiting from the infringement of others while not
interfering with it. Vicarious liability is derived from the same legal
principle that holds an employer responsible for the actions of its
Despite offsetting considerations, the
argument for imposing indirect
liability here is powerful, given the number of infringing downloads that
occur daily using respondents' software. When a widely shared product is
used to commit infringement, it may be impossible to enforce rights in the
protected work effectively against all direct infringers, so that the only
practical alternative is to go
against the device's distributor for secondary liability on a theory of
contributory or vicarious
It is not clear whether vicarious liability played a role in the Grokster
ruling per se, or whether the
Supreme Court was holding it out as an option for future cases.
Unlike copyright inducement, vicarious liability would apply even if
Grokster had not been actively encouraging copyright infringement. Note that
part of the issue here is the practicality
(or lack thereof) of going after individual users.
"Filtering" argument: if an ISP fails to implement blocking or filtering,
they have vicarious liability.
MGM had been hoping to get Sony v Universal overturned. In this they failed.
Paragraphs (b) and (c) in the syllabus addresses the Sony
precedent. The bottom line is that, while the Sony SNIU doctrine remains,
Grokster went further (paragraph c):
The rule on inducement
of infringement as developed in the early cases is no different today.
Evidence of active steps taken to encourage direct infringement, such as
advertising an infringing use or instructing how to engage in an
infringing use, shows an affirmative intent that the product be used to
infringe, and overcomes the law's
reluctance to find liability when a defendant merely sells a commercial
product suitable for some lawful use.
But nothing in Sony requires courts to
ignore evidence of intent if there is such evidence, and the case was
never meant to foreclose rules of fault-based liability derived from the
Note that paragraph (d) begins: "On the record presented, respondents'
unlawful objective is unmistakable."
Finally, the court was unanimous in ruling that Grokster was liable for
inducement. The 5-4 split was over whether Sony
needed formal modification, with the answer being no for the time being.
What if Grokster had not actively
induced users to engage in copyright infringement? Would that have gotten
them off the hook? The site vidtomp3.com
allows people to rip the sound from YouTube videos. Mostly this is
infringing. But vidtomp3 has the following disclaimer:
This tool is designed to be used in
compliance with each sites ToS and local and national copyright laws. We
do not support piracy. Only rip the sound or use youtube downloader from
Does this get them off the Grokster hook? Because, although everyone knows how to use their site for piracy,
vidtomp3.com doesn't actually say
Baase points out that the DMCA has eroded this doctrine of SNIUs-make-it-ok;
under the DMCA, circumvention of copy protection is illegal even
if it has SNIUs. But this applies only to
circumvention, not other potentially infringing uses.
In the sidebar "Analogies and Perspectives" on 4e page 200 / 5e p 215, Baase
points out that it is not just computer technology that leads to societal
debates about whether the technology should be banned. Drugs, guns, and
power tools are also in this category. However, computer technology can
often be spread at zero cost, with no clearly identifiable responsible
"manufacturer", and sometimes there is a Free Speech issue as well.
2006-07 Da Vinci Code case:
(actually filed in England, which has different laws): authors Leigh &
Baigent of the 1982 book Holy Blood, Holy
Grail lost their suit against Dan Brown. They had introduced the
theory that Mary Magdalene was the wife of Jesus and that Mary and Jesus
have living heirs. This was a major plot element used in Brown's 2003 book The Da Vinci Code. Did Dan Brown
Not if it was a "factual" theory, which is what the judge ended up ruling.
This law extends copyright to boat hulls. Who paid for that?
1301. (Though note that US copyright law still does not extend to typefaces).
Perhaps the primary focus is to implement the WIPO treaty of the year
The DMCA provides legal protection for
copy protection; it provides (severe) penalties for even speaking
about circumvention (eg supplying online explanations); these are called
'anti-circumvention measures' (a circumvention method is a way around copy
See §1201(a)(1)(A), and also §1201(a)(2):
person shall manufacture, import, offer
to the public, provide, or otherwise traffic in any technology,
product, service, device, component, or part thereof, that
[We will return to these later under the topics of
"speech" and "rights of computer owners"]
The DMCA provides limited
exceptions for those doing "legitimate" encryption (not
"security") research. See Section 1201g.
Note in particular 1201(g)(2)(C) (making a good-faith effort to obtain
authorization), and 1201(g)(3): Factors in determining exemption (especially
The DMCA mandates Macrovision-brand copy-protection for VHS tape
Allows petitioning the Library of Congress to approve exceptions to the
anti-circumvention rules; in cases where these have seriously impacted non-infringing use. Examples: when
equipment to support the anti-circumvention measure (eg dongle, certain disk
drive, certain hardware platform) is obsolete.
Dmitry Sklyarov was arrested on July 16, 2001 after his DEFCON
presentation related to breaking Adobe's e-book copy-protection measures. He
was held in prison for three weeks (until August 6), and then required to
remain in the US until December 13, 2001.
His Russian employer, Elcomsoft, sold software that allowed users to bypass
Adobe's copy protection on e-books. Sklyarov was charged for this. Adobe
issued a press release stating that "the prosecution of this individual in
this particular case is not conducive to the best interests of any of the
parties involved or the industry."
On December 17, 2002, a Federal jury found Elcomsoft not guilty.
Note that at no time did the US government allege that any of Sklyarov's or
Elcomsoft's activities were carried out within the US. This is not an
uncommon situation regarding jurisdiction.
See also the case of David Carruthers
DMCA Contains OCILLA: Online Copyright Infringement Liability Limitation
Act. Generally, this is 17 USC Section 512 (c)"Information Residing on
Systems or Networks At Direction of Users". A few later sections are also
involved, eg for the "putback" provision.
This act protects ISPs from claims when users put up infringing material. It
establishes the legal framework for "takedown notices", and also for
"putback notices", but there are more stringent rules for the latter.
Who is Loyola's Takedown agent? See the small "Copyright & Disclaimer
2009" link at the bottom of the main luc.edu page, leading to http://luc.edu/info/copyright_disclaimer.shtml,
and then to a mailto: link to "our DMCA agent".
Summary of Takedown/Putback process
Takedown request must have
The ISP must take down material "promptly", and notify the user. The user
can respond with a putback request,
which must contain the following:
- description of infringing material
- good-faith claim that use is not legal
- sworn statement requestor is authorized to act by copyright holder
The ISP then can put material back after 10 business days (to give original
complainant time to file a lawsuit); the content must be put back
after 14 days. If a suit is filed,
the material stays down until the judge involved issues a preliminary
decision. If a suit is filed at that time or later, it will be filed against
the user and not the ISP.
- description of material
- good-faith claim use is
legal, subject to perjury
- acknowledgement of court jurisdiction
OCILLA does not protect end-user in
any way; in fact, it puts a burden on the end-user. It does protect the ISP
OCILLA also specifies rules about subpoenas to ISPs for end-user identity;
these were what the RIAA first used.
Why do you think blackboard is so popular? Hint: not because it's easy
There's a part of OCILLA here that has, historically, not been widely
understood, which is the following:
(1) Accommodation of technology.—The limitations on liability established by this section
shall apply to a service provider only if the service provider—
(A) has adopted and reasonably implemented, and
informs subscribers and account holders of the service provider’s system
or network of, a policy that provides for the termination in appropriate
circumstances of subscribers and account holders of the service
provider’s system or network who are repeat infringers;
(B) accommodates and does not interfere with standard
This has been used to argue that ISPs are "service providers" and so are
liable unless they have a policy for dealing with repeat infringers. The
problem here is that all the "limitations on
liability established by this section" have essentially nothing to do
with ISPs; they apply only to content-hosting sites. But some ISPs do
also host content.
It is now common practice for large content producers to scour the web and
send automated takedown notices for anything they find that appears to be
infringing. This is often criticized on Fair Use grounds.
Github[!] has received takedown notices for open-source projects
from publishers who have not bothered to verify that their content is not
actually present: https://torrentfreak.com/google-porn-takedowns-carpet-bomb-github-150107/.
Chillingeffects.org has agreed to self-censor the DMCA takedown notices it
publishes because those very notices contain a list of URLs of pirated
This is not entirely unreasonable, but odd nonetheless.
One of the strangest takedown stories is described at https://torrentfreak.com/fox-stole-a-game-clip-used-it-in-family-guy-dmcad-the-original-160520/.
The producers of Family
Guy found a video-game clip on YouTube and used it in an episode.
Later, and probably automatically, Fox TV demanded that the original clip be
taken down on the grounds that it had appeared in Family Guy.
Mail & Guardian
The Mail and Guardian, a South African
weekly newspaper, published an article on June 21, 2019, which suggested
that Njock Ajuk Eyong was engaged in some form of fraudulent or corrupt
business. On Sept 10, the M&G received a notice from their online
hosting provider, Linode.com, that a
takedown notice had been received about the article, and that M&G had
96 hours to remove it. When the 96 hours elapsed, Linode shut their entire
site down, despite M&G's furious arguments. M&G said "[o]ur
questioning the veracity of the complaint did not seem to make any
difference". This is true; under US law it does not make a difference.
M&G reluctantly removed the article, and service was restored.
The takedown notice was ostensibly from a blogger who claimed to have
published the same content on June 3; the blogger's only date verification
was the date entered into the blog. See mg.co.za/article/2019-09-15-censored.
What could M&G have done? Two things, I suppose:
1. Modify the content and repost the article. They did that, in effect,
by reposting the article to Twitter, but the takedown notice sent to
Linode applied only to the original article. So they should have been able
to repost a modified version on their Linode site as well.
2. File a DMCA putback request. But this means the article is offline for
at least 10 days, which can be critical in the news cycle. It also means
that M&G would be agreeing to the jurisdiction of the US courts; while
this is sometimes a consideration for non-US publishers, it would not
likely have been an issue here. (M&G may have done this; they may also
not have known it was possible.)
17 USC 512(f) contains a clause making it illegal to file a false
takedown notice. So the M&G can in principle pursue the blogger. But
it is likely the blogger simply does not exist.
It does seem that Linode could have been more helpful.
Cases related to DMCA/OCILLA
YouTube was founded in early 2005 by Chad Hurley, Steve Chen and Jawed
Karim. The original model was as a forum for funny home videos, but this did
not quite attract the attention for which the founders had hoped. YouTube
has been sued by both Time-Warner and by Viacom for hosting clips of
YouTube's core defense is that they are happy to take down whatever is
requested, but that they cannot monitor everything. According to court
documents in the Viacom lawsuit (below), 24 hours of video were uploaded
every minute; costs to monitor all that video for infringing potential are
Is YouTube an example of "good" sharing or "bad" sharing??
Should YouTube be placed in the same category as MegaDownload.com, which was
pretty clearly a server-based-filesharing site, despite the fact that it
makes the same DMCA shield argument and abides by takedown notices?
Youtube was sued in 2007 by Time-Warner; Youtube has apparently
agreed to the principle of some kind of cut of revenues, and the suit
appears closed. In December 2008 [?], Warner was back to demanding that its
music videos not be available. (I'm not completely certain of the dates). On
August 19, 2009, the parties announced a settlement that would allow Warner
to post lots of their clips on Youtube, subject to the following:
It looks like Warner finally gave up on the last item, or at least it was a
- Selections would be at Warner's discretion
- Warner would control the advertising, and receive all revenues
- They would be played through a special player provided by Warner
How does http://www.vidtomp3.com
affect this issue? Does it matter where vidtomp3.com is? Are they
the bad guys here? Should we even be discussing vidtomp3.com?
IO Group v Veoh Networks
Veoh was a lot like YouTube: users could upload video (although Veoh also
tried to license commercial video). IO Group found its videos there, and
sued in 2006. There was no evidence Veoh had encouraged the uploading of
copyrighted videos, although they did remove an option (directed at third
parties) to "report possible copyright infringement". IO apparently felt
that the fact that their copyrights were registered meant that Veoh should
have known about them.
The District Court granted summary judgment to Veoh.
Veoh went on to bankruptcy (Chapter 7) in 2010, and general withdrawal from
the user-posted-content market.
They were sued around that time by UMG; see below.
Viacom v YouTube
This case was filed in March 2007. Note that the case is now Viacom v
Google, as Google has purchased YouTube.
Viacom also sued YouTube, and held out for more than Warner. This case
apparently has not yet come to trial (though that a. Google (Youtube's
owner) has cited OCILLA in its defense; Viacom is still trying to claim
statutory damages. Question: does YouTube try to "induce" users to upload
protected stuff? This remains a major unsettled issue; see MGM v Grokster.
Here's a July 2008 BusinessWeek article on the case:
Here's a January 2009 blog on the case:
Here's a March 2009 blog, addressing (among other things) the fact that
Viacom's discovery motions involve in excess of 12 terabytes
of data: http://www.digitalmedialawyerblog.com/2009/03/controlling_discovery_in_digit.html.
Here's a March 2010 story, including several internal youtube emails about
how aggressive they should be on rejecting copyrighted content: http://www.dailyfinance.com/story/company-news/viacom-v-youtube-google-a-piracy-case-in-their-own-words/19407896.
On July 19, Chen wrote to Hurley and Karim:
"Jawed, please stop putting stolen videos on the site. We're going to have
a tough time defending the fact that we're not liable for the copyrighted
material on the site because we didn't put it up when one of the
co-founders is blatantly stealing content from from other sites and trying
to get everyone to see it." Four days later, Karim sent a link to the
other founders, and Hurley told him that if they rejected it, they needed
to reject all copyrighted material. Karim's reply: "I say we reject this
one but not the others. This one is totally blatant."
A July 29 email conversation about competing video sites laid out the
importance to YouTube of continuing to use the copyrighted material. "Steal it!" Chen said , and got a reply
from Hurley, "hmmm, steal the movies?" Chen's answer: "we have to keep in
mind that we need to attract traffic. how
much traffic will we get from personal videos? remember, the only
reason our traffic surged was due to a video of this type."
Here's another March 2010 blog, which makes some interesting points about
how time is on Youtube's side, and how Viacom has made some major tactical
First, YouTube has repositioned itself over the years from "video grokster"
to Good Internet Citizen, with
Predominately Non-Infringing Uses:
Perhaps more importantly, the intervening
time has been good to YouTube as a business and as a brand. In this sense,
compare Grokster to YouTube. At the time of the Grokster cases, it was
still very much an open question whether Grokster would ever evolve into a
tool where legitimate activity dominated. While we might still have had
that same question about YouTube in 2006, by 2010 YouTube has answered
that question resoundingly. YouTube's business practices have matured,
everyone has had positive legitimate experiences with YouTube (even
behind-the-curve judges), and it's clear that major legitimate players
have adopted YouTube as a platform for their legitimate activities. For
example, YouTube's brief makes the point that all of the 2008 presidential
candidates published YouTube videos as part of their campaign. I'm
guessing no 2004 presidential candidates used Grokster for campaign
But Viacom has tremendously undermined their case that Youtube should have
been able to tell which Viacom videos were forbidden, by being unable to
In YouTube's case, I could not get over that
Viacom has TWICE withdrawn clips from its complaint. I thought the
first time Viacom did that
was embarrassing and damaging to Viacom's
case, but then Viacom admitted that it didn't catch all of its errors on
the first withdrawal and therefore had to make
a second withdrawal of clips
. WTF? How
hard it is for Viacom to accurately determine which clips it has not
permitted to show on YouTube?
Whether it intended to or not,
Viacom has answered that question to its detriment: hard enough that an
entire brigade of extremely expensive lawyers obligated to do factual
investigations by Rule 11 can't get the facts right the first OR SECOND
time. For me, this undercuts Viacom's credibility to its core. ...
Viacom's failings have proven
to the judge that it's too hard: too
hard for lawyers charging upwards of $1k an hour despite having
unrestricted access to accurate information in their clients' possession,
and clearly too hard for YouTube's slightly-above-minimum-wage customer
support representatives with no such information advantages.
Finally, here is a claim from Zahavah Levine, Chief Counsel for YouTube,
that goes a long way towards explaining why Viacom could not produce an
accurate list (emphasis added by pld):
For years, Viacom continuously and secretly
uploaded its content to YouTube, even while publicly complaining about its
presence there. It hired no fewer than 18 different marketing
agencies to upload its content to the site. It deliberately "roughed up"
the videos to make them look stolen or leaked. It opened
YouTube accounts using phony email addresses. It even sent employees to
Kinko's to upload clips from computers that couldn't be traced to Viacom.
And in an effort to promote its own shows, as a matter of company policy
Viacom routinely left up clips from shows that had been uploaded to
YouTube by ordinary users. Executives as high up as the president of
Comedy Central and the head of MTV Networks felt "very strongly" that
clips from shows like The Daily Show and The Colbert Report should remain
on YouTube.Viacom's efforts to disguise its promotional use of YouTube
worked so well that even its own employees could not keep track of
everything it was posting or leaving up on the site. As a result, on
countless occasions Viacom demanded the removal of clips that it had
uploaded to YouTube, only to return later to sheepishly ask for their
reinstatement. In fact, some of the very clips that Viacom is suing us
over were actually uploaded by Viacom itself.
The point here is that Viacom not only benefited from having its content on
YouTube, but actively sought that benefit. Alas for Viacom, this
strategy on their part enormously undermines their claim that YouTube should
have known the Viacom material was uploaded unlawfully.
What do you think of the OCILLA defense here? One point that has been made
is that, while OCILLA might block a financial claim, it might not
block a Viacom request for a court restraining order that Youtube desist
completely. But that was before Viacom's mistake, above.
Now consider www.vidtomp3.com. Many
bands allow music videos to be uploaded to youtube, as "advertising", likely
on the assumption that the music will be difficult to download; Youtube has
certainly (and intentionally) chosen a setup to make downloading of video
nonobvious. But vidtomp3.com makes downloading easy! It is true that the
encoding rate is usually relatively low (64kbps?), but it's still a great
Also note vidtomp3's disclaimer:
This site is in no way associated with
myspace, youtube or any of the other video sites we support. This tool is
designed to be used in compliance with each sites ToS and local and
national copyright laws. We do not support piracy. Only rip the sound or
use youtube downloader from none-copyrighted sources.
Is this an honest sentiment, or is it a "grokster defense"?
Finally, note that vidtomp3 has run into significant problems in recent
years (since 2010 sometime?) with unrestrained advertisers. One strategy is
advertisers who display a button that says click
here to download, which is either more prominent than the actual
button or entirely obscures it.
Viacom v Google District Court ruling, June 2010
US District Court, Southern District of New York
Dated June 23, 2010
Summary Judgment was granted to Google (owner of Youtube): Viacom's case
cannot continue. (The Second Circuit has now overturned this part of the
From the decision (at viacom_v_youtube_sj_2010.pdf)
From plaintiff's submissions on the motions,
a jury could find that the defendants
not only were generally aware of, but welcomed, copyright-infringing
material being placed on their website. Such material was
attractive to users, whose increased usage enhanced defendants' income
from advertisements displayed on certain pages of the website, with no
discrimination between infringing and non-infringing content.
Plaintiffs claim that .. "Defendants had 'actual knowledge' and were
'aware of facts or circumstances from which infringing activity [was]
apparent,' but failed to do anything about it."
However, defendants designated an agent, and when they received specific
notice that a particular item infringed a copyright, they swiftly removed
it. It is uncontroverted that all the clips in the suit are off the
YouTube website, most having been removed in response to DMCA takedown
Thus, the critical question is whether the statutory phrases "actual
knowledge that the material or an activity using the material on the
system or network is infringing," and "facts or circumstances from which
infrining activity is apparent" in §512(c)(1)(A)(i) mean a general
awareness that there are infringements (here, claimed to be widespread and
common), or rather mean actual or constructive knowledge of specific
and identifiable infringements of individual items.
Here is §512(c)(1)(A)
of the copyright act:
Residing on Systems or Networks at Direction of Users.:
general. : A service provider
shall not be liable for monetary relief, or, except as provided
in subsection (j), for injunctive or other equitable relief, for
infringement of copyright by reason of the storage at the direction of a
user of material that resides on a system or network controlled or
operated by or for the service provider, if
the service provider -
(A)(i) does not have actual knowledge that the material or
an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or
circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to
remove, or disable access to, the material;
(B) does not receive a financial benefit directly
attributable to the infringing activity, in a case in which the service
provider has the right and ability to control such activity; and
(C) upon notification of
claimed infringement ... responds expeditiously to remove... the material
that is claimed to be infringing [the takedown]
All three of A, B, C must be met. C is the takedown part; that's easy.
Viacom has argued that YouTube violated B by being advertising-supported.
Most sites are advertising-supported; should clause B be interpreted to mean
such sites should not receive immunity? Or should not automatically
receive immunity, which is a major problem in that the "safe harbor" is no
longer very safe?
Still, Viacom's primary claim is that Youtube violated (A): they did
have actual knowledge that infringing was going on. The logic of (A) is
tricky: YouTube is ok if they don't have actual knowledge, and
are not aware of facts or circumstances from which infringing is apparent, and if they find out about infringing,
they remove it.
The judge ruled that YouTube/google did
meet the standard of (A)(i) and thus were not liable: actual knowledge
doesn't mean that you know it's going on wink wink nudge nudge, but that you
have knowledge of specific infinging items.
In other words, the judge upheld the OCILLA takedown defense very broadly.
Here are some notes on the decision. The House Report on the OCILLA part of
the law described clause A(ii) as follows:
Subsection (c)(1)(A)(ii) can best be
described as a 'red flag' test. A service provider need not monitor its
service or affirmatively seek facts indicating infringing activity. However, if the service provider
becomes aware of a 'red flag' from which infringing activity is apparent,
it will lose the limitation of liability if it takes no action.
This could be interpreted as a
looser standard than "actual knowledge [of specific infringing content]"
test of part (i), that Google prevailed on. Later [p 13], again quoting the
Under this standard, a service provider
would have no obligation to seek out copyright infringement, but it would
not qualify for the safe harbor if
it had turned a blind eye to "red flags" of obvious infringement.
YouTube/Google did just that. But then [p 14], quoting the House Report,
The important intended objective of this
standard is to exclude sophisticated "pirate" directories -- which refer
Internet users to other selected Internet sites where pirate software,
books, movies, and music can be downloaded or transmitted -- from the safe
harbor. Such pirate directories ... are obviously infringing because they
typically use words such as "pirate", "bootleg', or slang terms in their
URLs and header information to make their illegal purpose obvious to ...
Internet users. ... Because the
infringing nature of such sites would be apparent from even a brief and
casual viewing, safe harbor status ... would not be appropriate.
So what does a "red flag" have to be? YouTube was not "obviously" a pirate
site, but certainly the existence of infringing content was very well known.
Although parts of the Congressional Reports quoted above do suggest that
YouTube/Google had met the "red flag" test, existing case law generally
suggests otherwise. And a "safe harbor" provision is of little use if it
does not come with an "objective standard" (a term used in the Congressional
On page 15, Judge Stanton concludes from all this that
The tenor of the foregoing
provisions is that the phrases "actual knowledge that the
material or an activity" is infringing, and "facts or circumstances"
indicating infringing activity, describe knowledge of specific and
identifiable infringements of particular individual items. Mere
knowledge of prevalence of such activity in general is not enough. ... To
let knowledge of a generalized practice of infringement in the industry,
or of a proclivity of users to post infringing materials, impose
responsibility on service providers to discover which of their users'
postings infringe a copyright would
contravene the structure and operation of the DMCA.
Page 17: "if investigation of 'facts and circumstances' is required to
identify material as infringing, then those facts and circumstances are not
'red flags'." In other words, to be a red flag the infringing has to be obvious.
On page 20 of the decision the judge says
General knowledge that infringement is
'ubiquitous' does not impose a duty on the service provider to monitor or
search its service for infringements.
As of this point in the proceedings, Google had spent $100 million on legal
Appellate Court 2012
The Second Circuit handed down its ruling partially reversing Judge Stanton
on April 5, 2012. Judge Stanton had granted YouTube summary judgment; the
Second Circuit argued that there was enough evidence that YouTube had indeed
known of specific instances of infringement that the case should go to a
The Second Circuit upheld the
District Court's decision that Viacom would have to prove that YouTube had
"knowledge or awareness of specific infringing activity"; that is, YouTube
would have had to know about some specific
items, not just that infringing videos were being uploaded. They
in part from A(iii) above, where to remove something it has to be, well,
specific. The Second Circuit also affirmed that the Safe Harbor provision
would, if it applied, block all
claims against YouTube, including for contributory infringement.
But the Second Circuit felt that the question of whether YouTube did in fact
have actual knowledge of infringing should go to a jury. The Court was
impressed by YouTube's own data that 60% or more of the content was
copyrighted, with only 10% of that being authorized. Even this, though, was,
by itself, not enough. But there was substantial circumstantial evidence
that YouTube was definitely aware of specific infringing content it hosted.
There were internal company rankings of content, and surveys of infringing
content for which YouTube was bidding on the legitimate rights. And there
were all those emails. Here's another from Karim:
As of today [,] episodes and clips of
the following well-known shows can still be found [on YouTube]: Family
Guy, South Park, MTV Cribs, Daily Show, Reno 911, [and] Dave Chapelle
[sic]." Karim further opined that, "although YouTube is not legally
required to monitor content . . . and complies with DMCA takedown
requests, we would benefit from preemptively removing content that is
blatantly illegal and likely to attract criticism.
Many other emails identify specific clips that the founders believed to be
But then the Second Circuit went on to consider the doctrine of "willful
blindness", apparently based roughly on the "blind eye" language of the
Congressional Report. A blind eye
test might in practice be rather different from a red
flag test, even though both phrases are in the same sentence in the
Congressional Report. A red flag is something you have to look for (or can
be expected to notice readily); a blind eye is intentionally not following
up on reasonable suspicions. Willful blindness is stronger. The Second
Circuit has asked the District Court to determine whether YouTube "made a
'deliberate effort to avoid guilty knowledge'".
Although Viacom has made much of this "willful blindness" clause, it does
not seem to play a major role in the decision. If the District Court (and
jury) finds at trial that there was no specific knowledge of infringement
after all, then it seems to me that finding willful blindness would be even
Finally, the appellate court rejected Viacom's arguments that YouTube's
thumbnail creation, conversion of uploaded files to uniform formats and
similar automated activity constituted
beyond "storage at the direction of a user". This may be an important issue:
the ruling states that what matters is that users initiate
the content uploading, not that there isn't some later post-processing.
Back to the District Court 2013
The case returned to District Court Judge Stanton, who on April 18 2013 again
granted summary judgment in favor of YouTube. Stanton's decision is here.
Stanton's dismissal of the first claim
Whether, on the current record, YouTube had
knowledge or awareness of any specific infringements
is perhaps surprising: he seems to have ignored the Second Circuit's
recommendation that a jury decide this. Yet on the other hand Stanton's
decision contains a careful argument that Viacom cannot point to any
specific "clips-in-suit" that it alleges YouTube knew about! Instead of
providing such a list, Viacom had claimed
It has now become clear that neither side
possesses the kind of evidence that would allow a clip-by-clip assessment
of actual knowledge. Defendants apparently are unable to say which
clips-in-suit they knew about and which they did not (which is hardly
surprising given the volume of material at issue) and apparently lack
viewing or other records that could establish these facts.
Alas for Viacom, Stanton is a firm believer that a confused situation
(implicitly acknowledged above by Viacom!) means YouTube wins on safe-harbor
grounds: it is Viacom's responsibility to name specific infringing clips.
And this they simply did not do.
Judge Stanton's latest decision was again appealed, but then on March 18,
2014, the parties settled (as a flock of
flying pigs migrated northwards?) Industry rumors suggest that
Google paid no damages, but did let Viacom in on the advertising revenue. In
other words, Viacom caved completely.
A Posner-style view of Viacom v YouTube
Here's a blog that identifies the principle
of least-cost avoidance as a general legal rule:
The idea is that, given the conflict between Viacom and Google, the judge
should consider who can address the situation more economically, along the
legal-economics lines championed by our own Seventh Circuit's Richard
Posner. For Google, denying OCILLA protection would mean that they would
have to review every post to YouTube. For Viacom, it would mean that they'd
have to review those posts on YouTube which turned up in tag searches for
Viacom content. Viacom has less work; ergo, they lose.
What do you think of this rule?
And is it even true, in this particular case?
Are there other legal principles at stake? What about the "least-disruptive
solution"? Should we count disruption to users who while away their days
Tiffany v Ebay
Judge Stanton in the Viacom v Google case cited this one, from the Second
Circuit. EBay merchants sold counterfeit Tiffany merchandise on the site.
Tiffany sued them, and also eBay.
Should eBay be liable here? How on earth would they police the authenticity
of all merchandise offered?
How is this different from Viacom
v YouTube? Do the similarities override the differences?
One problem with Tiffany v Ebay as a standard is that eBay apparently does
have a significant (read: expensive) mechanism in place to watch out for the
sale of counterfeit merchandise. Should YouTube have had an anti-piracy
mechanism in place?
The court ruled that the burden of protecting a trademark falls properly
on the mark holder: policing is a job that comes with the territory. Also,
in this case, it is hard to see what eBay might have done differently.
Another subtle issue, not addressed here, is that Tiffany (like most
manufacturers of high-end consumer goods) would really
like to ban eBay entirely. High-end manufacturers generally only sell to
stores that agree to charge "list price" (sometimes sales are allowed, but
they are generally tightly regulated, which sometimes leads to "storewide
sales" with fine print listing brands that could not be discounted). Still,
there is a vast "grey market" out there, where vendors purchase luxury (and
not-so-luxury) items from distributors, from bankruptcy sales, and oversees,
and resell them. Disallowing such sales strikes at the heart of the free
market, but note that such online
sales have no clear jurisdictional boundaries.
UMG v Veoh
In 2007 the UMG group sued the Veoh network for hosting their music videos,
and for allegedly turning a blind eye to evidence of infringement. The case
was heard by the Ninth Circuit in 2013 (decision
here), after the Second Circuit's decision above in the Viacom v
YouTube case. The Ninth Circuit mostly agreed with the Second Circuit that
the DMCA Safe Harbor provision meant that Veoh was not liable.
UMG tried to argue that the DMCA takedown provision was meant to cover only
companies which provide hosting services to third-party websites, rather
than websites that host content uploaded by users. The Ninth Circuit
disagreed with that position.
The Ninth Circuit addressed the "who should be responsible" theory with the
Copyright holders know precisely what materials they own,
and are thus better able to efficiently identify infringing copies than
service providers like Veoh, who cannot readily ascertain what material is
copyrighted and what is not.
One peculiar point in the decision addresses Veoh's handling of an email
from UMG to former Disney CEO Michael Eisner, then a major shareholder of
Veoh. The court ruled this email did not constitute a takedown notice,
because it was not identified as such, even though Eisner responded to it as
a takedown notice and had the offending material removed. The Ninth Circuit
If this notification had come from a third party, such as a Veoh
user, rather than from a copyright holder, it might meet the red flag test
because it specified particular infringing material.
This is something of a peculiar position, though the Ninth Circuit appeared
to consider it hypothetical. In a similar example, an email from a genuine
Veoh user whose upload had been denied complained that other users had
successfully uploaded copyrighted material.
The Ninth Circuit dismissed this as "red flag" knowledge of infringement
only because UMG had failed to show Veoh did not in fact take down the
In light of these concerns about third-party notification, the Wikimedia
Foundation in February 2016 removed
The Diary of Anne Frank from its online collection. So even if the
Ninth Circuit was speaking hypothetically, the third-party-notification
theory has had some impact.
Peer-to-peer filesharing grew out of the idea that a server that hosted
copyrighted content would be a sitting duck for lawsuits. But this turns out
not to be quite true.
If content is user-posted, and if the site responds
promptly to "takedown notices" as spelled out in the DMCA, they may be
For the basic business strategy of such sites, see here.
The idea is not to sell the content, but to sell bandwidth. Or server space.
Or initial access. They also must create some incentive for uploaders.
Then they argue that "it's not our fault users are exchanging copyrighted
content" and "we don't allow that".
At one point, YouTube seemed to be based on this model, though without
selling anything except advertisements. Viacom, as we saw above, sued. While
Viacom won some important concessions, the lawsuit overall did not go well
MegaUpload.com was shut down by the feds in 2012 for criminal copyright
infringement; basically the FBI seized the domain. But the case has not
really gone anywhere since; site owner Kim Dotcom has put up a significant
defense. Was the goal of the site to profit from copyright
infringement? At one point MegaUpload stated, in their FAQ:
Activity that violates our terms of service
or our acceptable use policy is not tolerated, and we go to great lengths
to swiftly process legitimate DMCA takedown notices.
But nobody believed that. MegaUpload was eventually accused of the
- Not being a real cloud-storage site, because continued storage
depended on other users downloading the content.
- Download users often paid for "premium" bandwidth or search
- Their business model was based on advertising, and ads were shown only
- MegaUpload was in fact successful at blocking child-abuse content,
suggesting that they in fact could have blocked infringing
- Users who uploaded infringing content never had their accounts
- Users who uploaded popular content received rewards, either in cash or
in increased bandwidth for downloads
- When takedown notices were received, only the link to the
file was removed. The file itself would remain, available via other
links. There are legitimate reasons for this; for example, the other
links may represent personal, non-shared copies of the content in
- MegaUpload may have been wilfully slow at handling takedown
notices, at least at some times. There does seem to be agreement that,
eventually, they handled most takedowns on a timely basis. It
is possible that the "slowness" issue refers to the fact that MegaUpload
removed links rather than files.
For MegaUpload's purported side to this, see www.hangthebankers.com/10-facts-about-the-megaupload-scandal.
and PIPA laws were proposed largely to deal with server-based
filesharing. They failed to pass, after Google and other Internet companies
launched an Internet-dark-for-a-day protest in January 2012. Two of the most
serious problems with these laws were that
- they might allow seizure of domain names without due process
- they might gut the DMCA user-posted-content safe harbor
Either of these, while effective for taking down filesharing servers,
would radically change the Internet as we know it.
In light of Viacom v YouTube, how can Big Content fight the filesharing
servers like MegaUpload.com? The latter claim the same DMCA safe-harbor
defense, and many of them abide by the DMCA takedown-notice process. It's
just that, as with YouTube in the early days, taken-down content promptly
reappears, and there is simply too much of it for Big Content to keep track
Filesharing servers often charge for some form of "premium access"; does it
matter that YouTube makes its money only by advertising? Filesharers often
offer incentives to encourage "members" to upload content; does this matter?
YouTube did have procedures in place from the beginning to make it
difficult to make permanent copies of content: the length was limited, and
it remains difficult to download the underlying video file from YouTube.
YouTube also responded, relatively early on, with "fingerprinting" software
that detected most attempts to upload copyrighted content. This software
often snags arguably legitimate uploads, however; for example, pet/baby
videos with copyrighted music playing in the background.
Big Content has had trouble fighting sites like thePirateBay.org, despite
the fact that the latter did not claim to abide by the
DMCA, and in fact bragged about its determination to flout it.
Does the "willful blindness" standard help here?
Suppose we agree that, in order to stop these sites, the DMCA takedown
process needs to be overhauled? What then happens to Wikipedia? What happens
to free personal web pages? What about all the other forms of user-posted
content? If hosting sites are liable, will such content simply disappear?
Most of the time, it's pretty hard to post text that is likely to
infringe on copyright, though some fan-fiction falls into this category. But
users post copyrighted photos all the time, and there are lots of sites
intended to support user-contributed music and, to a lesser extent, video.
It remains, in other words, very hard to distinguish "good" content from
SOPA and PIPA
SOPA and PIPA would both have made it easier to seize suspicious domains,
like "thepiratebay.org", "rapidshare.net" and "wikipedia.com". It's not
clear how much easier; already there are cases in which domains have been
seized with no notice to the original domainholder at all. See
On the face of it, domain-name seizures do make sense as an attack against
filesharing sites. Unfortunately, this strategy is only effective if the
US-based domain-name system remains in charge. There is nothing, however, to
prevent users from configuring their browsers so as to use "alternative"
domain-name servers. Once this is done, domain seizures have no effect
whatsoever. (There is still the possibility of IP-address blocks,
but those have their own problems.)
Some sites once devoted to file-sharing and copy-protection technologies:
dontbuycds.org: Now also gone.
Somebody new took over in 2008, but never got around to any updates and
apparently stopped renewing the domain in 2011.
Oh, and check out darknoisetechnologies.com
(oops, how about http://news.cnet.com/SunnComm-buys-music-antipiracy-company/2100-1027_3-5153609.html)
Original idea was to add some subaudible "hiss" to recordings. It was
subaudible when you listened directly, but when you tried to save a copy, or
even record with a microphone from your speakers, the music would be ruined.
Project Gutenberg: http://gutenberg.org
Eldred v Ashcroft: Eric Eldred maintained a website of public-domain books
unrelated to Project Gutenberg's, although he did do some scanning/typing
What does it mean for copyrights if Congress extends their term
Amazon has now scanned in most of the books they sell, and offers full-text
search of the book contents. This is intended as providing an online
equivalent of browsing in a
physical bookstore. They apparently did not get a lot of publisher
permissions to do this.
Apparently, however, no major lawsuit has ever been filed by the publishers!
Though some authors have been quite upset.
Note that what Amazon has done arguably earns them zero
DMCA shield: they've actively scanned the books, and keep the images on their servers.
Clearly, "effect on the market" must be presumed POSITIVE. However, see http://www.authorslawyer.com/c-amazon.shtml.
How music copyrights are "supposed" to work: ASCAP (the American Society of
Composers, Authors, & Publishers). See ascap.com.
ASCAP: collects on behalf of all members, = original songwriters.
To perform, you need a license from ASCAP, BMI, & third one (SESAC?).
See ascap.com/licensing. Even if
you write your own songs and perform only them, you still may be asked to
show you have these licenses! While that sounds appalling to some, it's
based on the not-implausible idea that the nightclub/venue where you play is
the entity to actually pay the fees, and they
have no guarantee you won't whip out an old Beatles song. [Richard Hayes
Phillips, a musician who plays only his own and traditional material, did
apparently beat BMI here. But not without a prolonged fight.]
Blanket performance licenses are generally affordable, though not
Generally ASCAP licenses do not
That is, a university with regular chamber-music concerts (not covered by
copyright) must pay ASCAP just as if these were copyrighted music.
- selection of lower-cost (eg older) works, in order to save money
- proving that a significant fraction of the music played was non-ASCAP,
in order to save money.
You need a license to play recorded music at public places, too. You
do not get this right automatically
when you buy a CD. Nor does purchasing sheet music provide you with any
ASCAP collects your money, keeps about 12%, and sends the rest off to its
members. At one time this was in
proportion to their radio play, which meant that if you play music
no longer found on the radio, the original songwriters will get nothing. The
rules have changed, however; now, ASCAP licensees have to supply information
about what was played in order to ensure proper crediting.
ASCAP and BMI continue to support the idea of a strict difference between
public and private listening. While there are grey areas here, it is hard to
see that technology or file-sharing has contributed any new ambiguities.
They are very concerned about web radio, and have had reasonable success in
making it unaffordable for any but commercial stations with traditional
Sita Sings the Blues
The above is the name of an animated film by Nina Paley, about the
relationship of Rama and Sita in the Indian epic the Ramayana. It is
available at http://www.sitasingstheblues.com,
along with Ms Paley's discussion of the copyright woes she encountered in
creating the film (most of that discussion is actually at http://www.sitasingstheblues.com/faq.html).
The animation itself was entirely Paley's own work. However, she used
recordings of 1920's jazz singer Annette Hanshaw (here is a link to Hanshaw
singing Mean to Me). Hanshaw
was chosen for her ability to sing about heartbreak without rancor (Hanshaw
is amazing at this), and for her remove from both today and from ancient
India. Hanshaw's songs were traditionally copyrighted; normal licensing fees
would have been $220,000. Paley cut a deal for $50,000, but the budget for
the rest of the film was zero. So these fees are disproportionately large.
Copyright on the Hanshaw recordings themselves was not renewed long ago, and
so these are not covered. However, the musical compositions are
still covered by copyright. These are the rights Paley had to pay for.
Dozier Internet Law, http://www.cybertriallawyer.com
1. Lots of solid mainstream copyright cases:
advertising work (sitforthecure.com)
stolen websites for:
2. Their AMAZING user agreement:
We do not permit you to view such [website
html] code since we consider it to be our intellectual property.
Where are they coming from?
3. Dozier Internet Law and Sue Scheff
Sue Scheff was a client of Dozier
Internet Law. She won an $11.3 million dollar verdict in her
internet-defamation case; she later wrote a book Google
Bomb. The defendant was Carey Bock of Louisiana.
But see http://www.usatoday.com/tech/news/2006-10-10-internet-defamation-case_x.htm.
It turns out Ms Bock couldn't afford an attorney, as she was at the time of
the case a displaced person due to Hurricane Katrina, and she
did not appear in the case at all.
So we don't really know what happened. However, it is clear that at this
point Ms Scheff has become a master at reversing being google-bombed; if you
google for her name, her multiple blogs touting her book will likely lead
The kindle is intended primarily for letting people read e-books. However,
it also has a feature to read the book to
you, using a synthesized voice. This potentially affects the audiobook
The Authors Guild has protested vehemently. But they apparently did not
actually file a lawsuit against Amazon.
- Book publishers have already agreed to kindle distribution
- the synthetic voice has no inflection or emotion
- The synthetic voice does not constitute a "performance"
- No copy is made [is this a
- Amazon is a leading seller of audiobooks; arguably they don't see a
negative effect on the market.
- what about reading for the blind?
- what about conventional-text-to-braille scanners?
- existing audiobook formats (CDs) are unsatisfactory
- use is transformative
- The kindle infringes on the right to create audio recordings of books
- creation of a spoken "performance" is not a right that was granted by
purchasing the text.
- publishers thought this was a text-only deal
- people who buy e-books to listen to while driving now may not buy the
Authors Guild v Google
The Google Books Project began in 2004 as a way to support searching
within books (some have suggested that Google wanted to prevent Amazon
from becoming the default book-searching site). Google, with the
cooperation of a consortium of university libraries, began scanning
millions of books into its database; the total eventually reached 30
million. Users of books.google.com could search this database for words
As many of these titles were still under copyright, the Authors Guild
sued. Google reached a tentative settlement agreement with the Authors
Guild in 2008; this was amended in 2009. This agreement allowed Google to
sell digital editions of the books, with compensation to the authors. US
District Court judge Denny Chin, Southern District NY,
ruled in March 2011 against this agreement,
arguing at the time that it was unfair to authors. Chin had by that time
been appointed to the Second Circuit, but was still finishing up with some
of his previous District Court cases.
Librarians were often against the draft agreement because of Google's
lack of respect for the principle of patron privacy, and out of fears that
library rates for access to the Google Library would be excessive.
The parties went back to negotiation. Google began an argument before the
court that their scanning amounted to Fair Use, and so they did not need
authors' permissions at all.
Two and a half years later, in November 2013, an odd
thing happened. Judge Chin now ruled that Google's book-scanning project
was indeed Fair Use. No author permission was needed.
In my view, Google Books provides significant
public benefits. It advances the progress of the arts and sciences, while
maintaining respectful consideration for the rights of authors and other
creative individuals, and without adversely impacting the rights of
Overall, the decision is a straightforward Fair Use analysis. The fact
that Google copied the entire book counts "slightly" against it, but it
does not display the entire book to users, and the transformative nature
of being able to provide the search feature counted heavily in Google's
favor. The fact that search can lead new readers to a book appears to
count even more heavily. (Recall that Justice Blackmun wrote in his Sony
dissent "Even a showing that the infringement has resulted in a net
benefit to the copyright holder will not suffice".)
Sometimes Google's search is considered "commercial", because Google
profits from the associated advertising. Google stopped advertising on its
"About the Book" pages, however, possibly with this issue in mind.
Google divides each book page into eight snippets. When a phrase is found,
Google usually displays the snippet containing the phrase and two others
(probably the preceding and following snippets). But some snippets are
never displayed, and some entire pages are never displayed, making it
impossible to obtain an entire book this way. One can obtain a large
majority of it, though.
For some books, such as reference works and poetry, readers are often
content with just a few pages. The proposed (and now moot) settlement had
mechanisms in place to protect against this; the recent ruling appears to
make no mention of it.
Why did Chin change his mind?
After the breakdown of the initial agreement, the Authors Guild upped the
ante by pressing their parallel case against the Universities who had
partnered with Google. This case was Authors Guild v Hathitrust. In October
2012, District Court judge Harold Baer (also
of the Southern District NY, but a different judge was assigned because it
was theoretically an unrelated case) ruled that the book scanning was Fair
Baer gave a detailed Fair Use analysis in his ruling, which Chin no doubt
But there is one other point of interest: one of the defenses of the
Google Books project was its enormous benefit to the blind. Judge Baer was
clearly influenced by this (and in fact Section 107 of the Copyright Act,
defining Fair Use, gives as an example the creation of copies for the
In an eloquent oral argument ... Defendant
Intervenors spelled out where blind scholars stood before digitalization:
"Prior to the development of accessible digital books, the blind could
access print materials only if the materials were converted to braille or
if they were read by a human reader, either live or recorded.". Absent a
program like the [Google Books project], print-disabled students accessed
course materials through a university's disability student services
office, but most universities are able to provide only reading that
was actually required.
Judge Baer is quite sensitive to the needs of the handicapped. Judge Baer
The Hathitrust defendants may have been more sympathetic than Google:
they are unarguably noncommercial.
Did the Authors Guild commit a strategic blunder by pursuing its case
against the Hathitrust?
The Authors Guild v Google case was appealed to the Second Circuit. Judge
Chin did not sit on the panel that heard the case. In October 2015 the
Second Circuit upheld Chin's decision:
Google’s unauthorized digitizing of
copyright-protected works, creation of a search functionality, and display
of snippets from those works are non-infringing fair uses. The purpose of
the copying is highly transformative, the public display
of text is limited, and the revelations do not provide a significant
market substitute for the protected aspects of the originals. Google’s
commercial nature and profit motivation do not justify denial of fair use.
The Authors Guild wants to appeal to the Supreme Court, but their problem is
that at some level they are simply "stuck" on the idea that it is "wrong"
for someone else to make money from an author's book.
The Second Circuit had earlier issued its decision in the appeal in Authors
Guild v Hathitrust. They upheld the creation of a searchable database of the
books in question as Fair Use, though by that point a search would yield
only the page numbers and not the actual passages.
They did rule that a use was not transformative just because it made an
important contribution to society, such as enabling access by the visually
impaired. Recall that the District Court judge, Baer, was particularly
concerned about this as he has a significant hearing impairment. The Second
[A] transformative use is one that
communicates something new and different from the
original or expands its utility...
[T]ransformative use adds something new to the copyrighted work and does
not merely supersede the purposes of the original creation.
The Second Circuit compared the database's enabling of access for the blind
with a translation's enabling of access to a book for non-English readers.
Translations have never been regarded as Fair Use, because the Copyright Act
lists them as derivative works. But at the end of the argument,
the Second Circuit did agree that, for other reasons, the access
for the blind here was Fair Use.
They agreed, on the other hand, that the search feature was "a
quintessentially transformative use". " There is no evidence that
the Authors write with the purpose of enabling text searches of their
The Second Circuit spoke vaguely to the sampling controversy when it wrote
"Lost licensing revenue counts under Factor Four only when the use serves as
a substitute for the original." Generally, the music industry has argued
that lost sample-license revenue makes sampling not Fair Use; the Second
Circuit here appears to disagree with that but exactly what was meant by
"substitute for the original" is unclear; book search is much less a
"substitute for the original" than is music sampling.
The Authors Guild was dismissed from the suit: "the Copyright Act does not
permit copyright holders to choose third parties to bring suits on their
On April 18, 2016 the Supreme Court rejected the authors' appeal, making the
Second Circuit's ruling final: http://arstechnica.com/tech-policy/2016/04/fair-use-prevails-as-supreme-court-rejects-google-books-copyright-case/.
Did we somehow all lose after all?
The case firmly settled that book scanning was in the public interest for
search, and thus was fair use.
But the other part of the original agreement was that it would have
allowed Google to sell digital copies of books, with payment to
the author (and probably to the publisher), if the author was alive or if
copyright information could be found. Google would give away access to
public-domain books. As theatlantic.com/technology/archive/2017/04/the-tragedy-of-google-books/523320
You were going
to get one-click access to the full text of nearly every book that’s ever
been published. Books still in print you’d have to pay for, but everything
else—a collection slated to grow larger than the holdings at the Library
of Congress, Harvard, the University of Michigan, at any of the great
national libraries of Europe—would have been available for free at
terminals that were going to be placed in every local library that wanted
Fair Use isn't going to allow this, however; just the search.
The proposed agreement would have settled how to make accessible both orphan
works -- books that had no known copyright status -- and out-of-print
works, which were still under copyright but not actively
available. As things stand now, no one can legally distribute works in
either category; they might as well have been burned. Which is why the
Atlantic article above is titled "torching the modern-day library of
Congress could act, of course, but won't. And, as the Google agreement
appears to be completely dead, our best chance at solving the access
dilemma appears to be lost.
Google itself has largely abandoned the book project, except for search.