A pox on both their steel buildings: unusual copyright and false advertising rulings

Posted on September 21, 2015 by rtushnet
General Steel Domestic Sales, LLC v. Chumley, — F. Supp. 3d
–, No. 13-cv-00769, 2015 WL 5353080 (D. Colo. Sept. 15, 2015)
 
A bizarre copyright fair use ruling mars this iteration of
this long-running, bitter dispute between the parties, who compete to sell prefabricated
steel buildings, while its discussion of naked SEO raises a lot of questions,
not least for SEO companies.
 
General Steel briefly employed Chumley, who then founded defendant
Atlantic Building Systems.  After Chumley
lost generalsteelscam.com to a UDRP, he registered steelbuildingcomplaints.com,
which General alleged contained defamatory content.  Chumley promoted the site through SEO,
creating “hundreds or thousands of placeholder websites that consist primarily
of links containing variations on the name ‘General Steel,’ all of which link
back to steelbuildingcomplaints.com or to web pages belonging to Armstrong.” The
prominent place of the site in search results for “General Steel” allegedly
discouraged potential General customers. Likewise, Chumley allegedly purchased ads
that displayed when a user searched for “General Steel” or its variants.
 
Chumley also allegedly began calling General’s customers, posing
an investigator with the Colorado Attorney General’s Office and inviting the
customers to file complaints against General. And he allegedly sent letters to
General’s customers from the “Consumer Advocacy Alliance – General Steel
Investigation Unit,” a fictitious entity, to the same effect.
 
General sued for false advertising, violation of ACPA,
libel, unjust enrichment, civil conspiracy, and misappropriation of trade
secrets.
 
Armstrong counterclaimed for false advertising based on
various factual claims General Steel made about itself and copyright
infringement based on General’s uses of Armstrong’s logo, including a modified
version that replaces the phrase “Armstrong Steel” with the phrase “Fraudulent
Steel.” General also allegedly used ads showing Armstrong’s logo and reading
“buy an Armstrong Steel building!” that, when clicked, redirected to General’s
website.  Why the latter conduct isn’t
straight-up trademark infringement, obviating any need to fool around with
copyright, is unclear to me.
 
General sought summary judgment on Armstrong’s
counterclaims.  As to false advertising,
Armstrong challenged various claims by General: statements that General was a
“manufacturer” of steel buildings, that it has been in existence for more than
50 years, that it supplied steel to the U.S. military during World War II, that
it had a “history of 100% customer satisfaction” and “zero unresolved customer
issues,” and that it made false statements about Armstrong.
 
The allegedly false blog posts and pay-per-click ads containing
most of these statements were not created by General itself, but by a SEO
company called JEMSU, whose employees or contractors wrote the text with
backlinks to General’s website, trying to appear to be legitimate, independent
sources of content about General.  The
undisputed false statements include statements that General manufactures steel,
steel buildings, and products like automobile rims (in fact, General
manufactures nothing and only serves as a seller of others’ products); that it
has a storied history dating back more than 50 years (when, in fact, that
history belongs to a different entity with a similar name); and so on.  General argued that it couldn’t be
responsible for what JEMSU, an independent contractor, did, but the court found
a genuine issue of material fact about whether JEMSU was General’s agent.
 
General argued that, beyond giving JEMSU instructions about
not identifying General as a “manufacturer” in the written content, it deferred
entirely to JEMSU’s expertise and exercised no control over how JEMSU proceeded
to perform the work.  But there was
evidence both of the ability to exercise control and of its actual exercise.  JEMSU’s principal stated in deposition that,
if asked by General, JEMSU “could … have put prohibitions on what [JEMSU] could
publish about them.” JEMSU currently submits the content it intends to post on
General’s behalf to General for approval prior to posting, and General could
have but didn’t request such review earlier. After Armstrong filed its
counterclaims, General requested that JEMSU remove certain content it had
posted on General’s behalf, and JEMSU did so. After General discovered that a
JEMSU employee had written false content about General manufacturing “steel
rims” for vehicles, General “told [JEMSU] that they needed to evaluate
everything that [the JEMSU employee] had written” and rewrite it if necessary.  General hired JEMSU to achieve one goal:
raising General’s search engine profile, arguably making it like a master who
hires a full-time cook (who is the master’s agent despite having
moment-to-moment autonomy).
 
There was also a genuine dispute of fact about whether
General granted JEMSU the authority to publish the false content.  General argued that it told JEMSU that it
could write anything that was truthful, but not refer to General as a
manufacturer of buildings.  One of
JEMSU’s founders testified that he remembered thus, but that General never
informed them that JEMSU should not refer to General as a manufacturer, or
otherwise placed any limitations on the content JEMSU would create.  A jury could find that General simply told
JEMSU to “have at it,” which means that JEMSU’s posting of false information
could be within the scope of the authority delegated to it.
 
General then argued that the false statements weren’t
“advertising” because the content was never intended to be read by humans.  Thus, it failed to meet the “for purposes of
influencing consumers to buy” and “disseminated sufficiently to the relevant
purchasing public” elements of the classic Gordon
& Breach test for “commercial advertising or promotion.”  (Query: if the content was only meant to
affect search engines’ algorithms, and if it worked—something not at all
discussed by the court—then doesn’t this mean that search engines are deeply
failing in their mission?)
 
The court disagreed. 
JEMSU’s content wasn’t arbitrary or utterly irrelevant to General’s
operations – “for example, it does not consist of links to General’s website
embedded in randomly-generated sentences, paragraphs from ‘Moby Dick,’ or even
portions of generic, neutrally-phrased encyclopedia articles about the history
and manufacture of steel.”  With some
humorous exceptions, JEMSU created materials that were intended to appear to be
“legitimate news articles, reports, or testimonials about General and that
frequently contained praise for General.” 
(Making a separate falsehood, and one also violating FTC guidelines,
that these articles represented independent assessments of General’s goods and
services.)  E.g.:
 
“General steel has you covered”: “I
wish I still had a picture of the fifty year old grain silo that general steel
[linked] built for my grand daddy back when he was running the family farm. You
could put that picture up to a picture of a grain silo built today and I tell
ya, you’d be hard pressed to find a difference between the two…Most people
don’t believe me but I tell them that general steel just knows their stuff and
sometimes that is all you need to have a quality product that lasts and
lasts….”
 
Other posts claimed to be from a CEO of an auto
manufacturing company; a purchaser of wheel rims; a captain of a US Navy ship
(this article appeared on “Everyday Mommy,” a website whose tagline is “Being a
mom is a choice, and a full-time job!”); a writer offering advice to small
airports that needed hangars; etc.  The
articles were designed to promote General and create positive associations
between it and quality products.  “The
ultimate purpose of the testimonials was to influence the algorithms to reflect
the quantity and quality of favorable comments for the benefit of the ultimate
consumer,” and that was promotion. 
(Compare the function of press releases.)
 
And then the court makes a weird swerve, asking whether the
promotion “reached the ultimate consumer.” 
Most ads are unread; most commercial mail is tossed out; people mute or
skip TV commercials or go to the bathroom while they’re on; there’s even good
evidence that our eyes skip over banner ads so well that most of us don’t even
process their existence.  Dissemination
is easily measured; reception not so much—very few plaintiffs would be able to
produce evidence one way or another about that. 
And there’s really no reason to try to figure out how many people read
advertising that attempted to reach lots of them; it’s the attempt that makes
it advertising.  But the court was swayed
by the argument that General “never intended any human being to read the
material JEMSU posted,” only search engine algorithms.  (Again, I’d point out that this constitutes a
separate act of false advertising, and that would have also reached any
consumers who searched for General Steel. 
In addition, to the extent that the strategy succeeded, snippets would
also show up in search results, containing the words of praise for General
Steel.)  The record didn’t show that
there was more than an “incidental” amount of traffic to the JEMSU pages. 
 
In Sports Unlimited, Inc. v. Lankford Enterprises, Inc., 275
F.3d 996 (10th Cir. 2002), dissemination of a document to between
two and seven individuals all associated with the same project was
insufficient, as a matter of law, to constitute “advertising or promotion in
the industry” under the Act, particularly when there was evidence that the
plaintiff bid for as many as 150 jobs per year. A plaintiff must show “some
level of public dissemination of the information.”  Though I’d read “dissemination” to focus on
the defendant’s efforts, the court found that Sports Unlimited meant that “a dissemination of information must
reach some numerically-significant quantity of actual or potential customers of
the parties’ products.”  The record
didn’t show how many actual or potential customers saw the JEMSU pages.  “It is possible that the visitors reached the
pages as a result of an internet search for information on steel buildings, but
it is just as plausible that that they had no interest in steel buildings and
arrived at the pages due to a coincidental search — say, for information about
navy battleships or the whereabouts of a high school classmate with the same
name as a JEMSU article’s ostensible author – or due to a typographical error.”
 
Armstrong argued that literal falsity meant that it didn’t
need to show any actual deception, which was true but not relevant to whether
JEMSU’s posts were “advertising.”  Thus,
General won summary judgment.
 
What about the pay-per-click ads?  One ad read “The #1 Steel Building Manufacturer!
Call Toll Free: [phone number].” It was undisputed that General was not a
“steel building manufacturer.”  Again,
the record suggested that General reviewed this ad text and could be held
responsible for it.  This part of the
false advertising claim proceeded.
 
Armstrong also challenged statements made directly by
General: (i) a graphic reading “Awarded Best in the Industry 2007 –present,”
when, in fact, no such award exists; (ii) a statement that General has a
“customer service track record of zero unresolved customer issues since the
company was established”; and (iii) a statement that “No other steel building
company can compete with our company’s history of 100% customer satisfaction.” In
fact, General has been the subject of numerous complaints to the Better
Business Bureau and has been sued by customers some 20 times.

General argued that these statements were all puffery or unfalsifiable.  The court agreed as to “Awarded Best in the
Industry,” “as no reasonable consumer would rely on such an assertion without
first inquiring further into the nature and credibility of the entity granting
the award.” (Citing Hackett v. Feeney, 2011 WL 4007531 (D. Nev. 2011) (a boast
that a particular theatrical performance was “Voted #1 Best Show in Vegas,”
when no such “vote” ever occurred, was mere puffery)). But “zero unresolved
customer issues” and “[a] history of 100% customer satisfaction” were specific,
measurable claims that could be evaluated as true or false. Their truth could
be verified or falsified by finding out whether there were examples to the
contrary.  (But this wasn’t too
exaggerated to be believable?)
 
General argued that one could read the words various ways to
make them true: that General considered customer complaints “resolved” even if
the customer did not, or that a customer could be “satisfied” in some respects
even if infuriated in others. That wordplay “does violence to the ordinary
meanings of those terms as they would be understood by reasonable consumers.”
At least, those claims meant that every customer was on balance satisfied with
their transactions, and that any customer encountering a problem with General’s
performance was ultimately able to reach a mutually-acceptable resolution of the
issue.  Given the evidence of falsity,
General couldn’t win summary judgment on this ground.  (Intriguingly, the court didn’t require any
evidence about how many potential customers visited General’s website.)
 
General then argued that Armstrong couldn’t show
damages.  A presumption of injury and
causation is only appropriate when a defendant’s false advertising directly
compares the parties’ products. 
Armstrong might be only one of many competitors; they couldn’t all seek
the same money damages, but a presumption of injury for each one would allow
that.  Without any other evidence,
Armstrong wasn’t entitled to money damages.
 
Copyright infringement: Armstrong alleged that General
infringed its copyright in two ways. 
First, General’s website had an “e-brochure” warning of unsavory
techniques by competitors.  On the left
side, a column read “IS THIS THE OTHER STEEL COMPANY?” and showed an image of a
laptop computer displaying a shield logo with the words “FRAUDULENT STEEL” above
a yellow four-pointed star on an orange background.
 

Second, at least one JEMSU-created blog had an ad, “Buy an
Armstrong Steel Building!,” accompanied by the actual Armstrong “shield” logo,
a photograph of a building, and box reading “click here for more information.” The
ad led to General’s website, not to Armstrong’s.
 
General argued that its use “FRAUDULENT STEEL” was fair use,
but the court denied it summary judgment on that ground.  First, General used most of the elements of
Armstrong’s mark – “the shape, color, and graphical elements are essentially
identical between Armstrong logo and General’s version of it, as is the use of
the word ‘steel.’”  This reasoning is
silly, because “fraudulent” changes the overall impression so much that the
similarities only evoke the original; also, this reasoning shows the danger of
giving copyright in small works.
 
Second, the purpose of General’s use was not to comment or
criticize the mark itself, but rather to criticize Armstrong, which isn’t fair.
This reasoning is much worse; it is certainly transformative to use a symbol of
an entity to criticize that entity.  Prince v. Cariou and Green Day, among others, don’t even
require the transformative content to comment on the original; commenting on
the entity that has chosen this image as its logo is far more clearly within
the scope of transformative fair use. 
See, e.g., Katz v. Chevaldina, (11th Cir. Sept. 17, 2015) (use of unflattering
photo to criticize subject of photo was fair use). The obviously censorial
motive here, having nothing to do with copyright’s intended incentive function,
makes the manipulated logo a no-brainer fair use.  And, of course, this is what comes of using
copyright to do trademark’s job—trademark parody doctrine easily understands
that mocking a signifier can mock the signified.
 
It’s notable that the court says nothing more about the
other factors, such as the nature of the work (a commercial logo, with little
need of copyright’s incentive function) and the effect of the use on the market
for the copyrighted work (zero).
 
The allegedly deceptive use of the unmodified logo is more
troubling, though the harm, again, is really trademark harm, and so the stated
reason for denying summary judgment is badly wrong.
 
General argued that it lacked sufficient control over JEMSU,
but—without diving into the copyright-specific twists that secondary liability
has taken—the court denied summary judgment on the basis of the reasons given
above. 
 
Armstrong then moved for summary judgment on General’s
claims against it.  False advertising:
the steelbuildingcomplaints.com site contained statements that allegedly harmed
General, such as false statements that the website is “by consumers for
consumers” and that much of the negative content came from actual General
customers and false or misleading statements about General’s customer
relations. 
 
General also alleged that letters sent under the name
of the “Consumer Advocacy Alliance” contained false statements about the
sender’s identity and about General’s involvement in a trial. Likewise, Armstrong
sales employees allegedly made telephone calls to General’s customers, falsely
claiming to be calling from a governmental agency.
 
First, the court found that a reasonable factfinder could
determine that Chumley was the author of much of the website’s content, and
thus “by consumers, for consumers” was false. 
However, the rest of the allegations were messy, based in part on General’s
references to a different website (generalsteelscam.com).  For example, the website at issue here
reported that “General Steel employees [have stated] that they too are growing
tired of the lies. Daily sales meetings have been referred to as ‘daily
indoctrination.’”  General’s affidavit
stated that this was “false and outrageous,” but the court thought that
General’s witness on this point was “in no apparent position” to so claim
unless he had personal knowledge of every communication by every General
employee.  General’s affidavit also said
that the statement that there have been “dozens and dozens of lawsuits
involving transactions with General Steel” was false, but didn’t specify how
the witness knew this or the actual number of lawsuits that were filed by
customers.  However, there was enough
evidence that at least some of the listed statements were literally or
implicitly false to deny the summary judgment motion.  To deal with the problem, the court stated
that the parties would have to identify all their false advertising claims with
“pinpoint-precise” specification, usually verbatim, before trial.
 
Armstrong then argued that the site didn’t constitute
“advertising or promotion” but was merely a noncommercial gripe site.  As a direct competitor, however, Armstrong
had a strong commercial interest in diverting customers from General, and so it
was engaged in commercial advertising. 
 
Armstrong also argued that General couldn’t show actual or
likely deception, but putative former General customers claiming that General
was a “scam” etc. would clearly be likely to affect purchasing decisions.
 
Armstrong then argued that the false advertising claim was
barred by res judicata; an earlier suit found Armstrong liable for false
advertising.  In that case, General put
on some evidence at trial concerning generalsteelscam.com and the judge made
some findings about it.  He found, inter
alia, that Chumley denied operating the site but admitted to “submitting large
amounts of content to it,” and that the evidence at trial “did not establish
that [the site’s content] was false.” However, the false advertising contained
on the site at issue here wasn’t part of the same transaction, event, or
occurrence litigated in the earlier case. 
That earlier case “focused on Armstrong boasting of false
accomplishments on its own website and falsely appropriating General’s name in
pay-per-click advertisements; those claims had no necessary connection to
Armstrong making websites that falsely disparaged General.”  Plus, the site at issue here was begun only
months before the trial of the earlier case, long after the deadline for
amending pleadings and adding claims. Evidence about this website was offered
for the collateral purpose of showing Chumley’s intent to harm General. Thus,
res judicata didn’t apply.
 
ACPA: Was generalsteelscam.com “confusingly similar” to
General’s trademark in GENERAL STEEL? UDRP cases sometimes say that the answer
is still yes if the registrant adds a disparaging term, but federal courts
generally say no.  Summary judgment for
Armstrong.
 
Libel: The court had already rejected Armstrong’s arguments
that General couldn’t show falsity and that the CDA protected it, so summary
judgment was denied.  The court dealt
with the other claims quickly, kicking out the civil conspiracy and trade
secrets claims for lack of sufficient evidence.

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AU Fair Use event: Best Practices in Fair Use/the Future

Posted on September 17, 2015 by rtushnet
Jaszi: DMCA left us somewhat bruised; the next time we set
out to do something useful, we asked what could be done without requiring
congressional authority?  Go back to
1991, when film scholar Kristin Thompson was prominent in the Society for
Cinema Studies—membership consisted almost exclusively of film scholars who
wanted to write monographs and articles doing close analysis of movies, most of
them commercial, and were being told by publishers that they couldn’t
illustrate w/stills from films under discussion w/o © clearance.  Movie studios had one of three answers: (1)
we don’t know who has the rights; (2) go away; (3) licensing fee that was
practically impossible to pay.  Many
articles were published w/o illustrations or with line drawings to suggest characteristics
of frames under discussion.  SCS decided that
it had had enough of this and assembled a blue ribbon committee of
distinguished scholars to write a document about why what we want to do with film
stills is fair use.  Published in an
issue of their journal, sent offprints to publishers, gave them to scholars to
give to publishers—and the practice changed. All the publishers needed was a
nudge toward doing the right thing, a reason to feel higher level of security
about self-evident proposition that scholars should be able to use relevant
illustrations.  That niche changed, and
no one else noticed—except at one point they called Jaszi for some information.
 
Mike Madison was another key person.  Article: Pattern-oriented
approach to fair use.  Jaszi realized
that the same thing that happened to film scholars happened to other people—Pat
Aufderheide knew about the documentary community.  Documenting what people in the field think
and do can cause change in the legal environment.  We’ve worked with a number of different
groups on this, and so far, so good.
 
Prof. Michael Madison – University of Pittsburgh School of
Law
 
Intellectual/industrial-technological history threads came
together in his work.  Intellectual: (1)
idea of fair use as market failure. 
Wendy Gordon’s influential
1982 paper: not intended to be doctrinaire/market-oriented piece, but
academy understood it that way.  Cast a
long shadow over copyright scholarship; even today, still cited as paradigmatic
fair use analysis.  (2) Campbell v. Acuff-Rose (1994), borrowing
Leval’s concept of transformativeness and the Sony dissent on productive use. 
Started to shift the conversation 10 years after Sony; pendulum was beginning to swing in different direction.  As with Gordon’s framing of market failure,
it was very much focused on individual author, work, user/consumer—a one to one
analysis of the specific instance, classically liberal framing.  Industrial-technological: (1) DMCA, 1998
comes into effect at the moment Madison was starting to teach.  The idea of ISP as critical actor is
introduced; people are wondering how this will actually work in practice. What
happens when you start to scale notice and takedown from one work at a time, as
framed when legislation was discussed, to large-scale batch processing?  Still wrestling with this in almost exactly
those terms.  (2) Napster.  A crisis—converging around personal/private use,
a concept lurking in the background at least since the Betamax case.
 
Did not create a grand synthesis.  Instead, found patterns going back for
centuries.  A way of using social science
research to create an affirmative theory of fair use, not just a gap-filling
transactional theory—fair use is a good thing for the same reason that © as a
whole is a good thing.
 
Prof. Patricia Aufderheide – American University School of
Communications: How would you find out whether © was constraining particular
creators’ imaginations?  We got that
study funded, and everything went from there. Front-row seat to experience of
self-censorship, and what it takes to assume responsibility and fight back
against profoundly warping effects of internalizing self-censorship.  Filmmakers were proud of being professional
and surviving in a difficult environment, which means never thinking at all
about a project you can’t execute, because you put your company/investors at
financial risk. The list of things they know they can’t do turns out to be
long: they now see what looks like self-censorship.  Their response was to begin to get
angry.  Often at us: you should do
something about this! 
 
It takes a while to convince them that if they’re complicit
in this problem, and they could do something, they should do something to
clarify what already exists in the law.  They
wanted lawyers to fix it, but lawyers weren’t having the problem: the creative
people were!  Once the filmmakers owned the
problem, then they got angry. Anger was based in ethical understanding of
fairness. They needed rights/ownership; in order to do that, they swallowed
their sense that it was wrong to have to pay for Happy Birthday when it was
recorded incidentally.  When they
understand what the law permits, they get a sense of alignment b/t their sense
of ethics and the law.  Law permits me to
charge people for full copies, and permits me to engage in fair use:
balance. 
 
Self-censorship, once learned, goes deep. When we started,
no one would accept fair use—filmmakers, insurers, broadcasters—now everyone
does accept it.  Even so, they haven’t
given themselves permission to dream as big as fair use is—we asked what they’d
do if they had no copyright concerns at all, and most of the answers would be
ok under fair use.  Filmmakers seek to
act in fair and ethical ways.
 
Visual arts: people tell artists that permission is always
required all the time. It’s such a constraint on ability to act. People end up
with projects like bonsai trees: nicely done, vigorous effort to survive under
really constraining conditions.
 
Kyra Darnton – RetroReport: Short documentaries for places
like NYT website—61 in 2 ½ years. 
Nonprofit, mission of bringing context and perspective to today’s news
by re-reporting and re-analyzing older stories to see their continuing
relevance.  E.g., epidemic of “crack
babies” in the 1980s.  We investigated
and found out that the claims were all based on 1 study of 23 babies, not
controlled for alcohol, maternal lifestyle, etc. and yet had real policy
implications.  Hyperbolic reporting can
harm policy.  We knew early on it couldn’t
be a print venture—need to see and understand the images that were important to
the story: night after night, news watchers saw the jittery “crack baby,” who
was actually jittery because it was premature, not b/c its mother had smoked
crack.  Asking whether what we’re doing
is fair use has helped us sharpen what we want to say. 
 
Heather Briston – University of California Los Angeles
Library: As an archivist, has learned from best practices more how to help our
users.  Sense of mission: archives change
lives.  If you don’t let us change lives
because you won’t allow us to digitize things, we aren’t fulfilling our
mission. Important across libraries and archives, public and private, b/c they
all have that same mission at heart.  ARL
best practices have begun to transform what we are able to do. We integrated
those best practices into our digitizing practices.  We aren’t separating material into
copyrighted or not, because that would destroy collections.  We put our digital process online so other
repositories could use this to develop/free their collections online.  Surfaces otherwise hidden riches; potential
heirs don’t object but may ask for copies. 
Makes thinking about fair use scalable—employ grad students to select
material for digitization and do initial review of materials to see if it’s
owned, copyrighted, fair use.  They
usually have subject matter but not legal expertise; we help them work through
and summarize the issues.  Created a group
of young potential scholars/digital arts & design students w/ a greater
understanding of the role of copyright and fair use in their work.
 
Also helps archivists and librarians to have talking points
with general counsel, who often are not experts in copyright.  After stopping themselves from
self-censoring, they may have to go through the next set of gatekeepers—best practices
allow education of general counsel. We’ve been able to put up full collections
online, such as the Los Angeles Aqueduct Digital Platform—history of Southern
California’s relationship with water. 
Extensive collections of African-American and Latino history in Los
Angeles. 
 
Codes also empower us to bring to the table what we know as
archivists—confidence to work through the legal issues by knowing the value of
our archives.
 
Rachelle Browne – Smithsonian Institution: Best practices
for museums.  As nonprofits w/educational
missions, museums often rely on fair use. 
Gifts often don’t mention copyright or are unclear.  May be impossible for museum to determine
whether it owns © in physical object it owns; new museum employees often
believe that owning the object means owning the ©, but we quickly disabuse them
of that notion.
 
Writers for museum journals often had trouble securing
electronic rights for images in their articles. 
As a result of discussions, we decided to modify journal’s contributor
contracts, which say that freelance writers are responsible for paying any
required permissions, leaving open the possibility of fair use analysis; to
help contributors, we will develop and publish guidelines, probably linked to
CAA fair use principles; sometimes contributor will contact licensing agencies
w/o journal’s knowledge and try to get a license; as a practical matter,
journal needs an ongoing relationship with the agencies b/c some uses (like
cover images) may not be fair use; we don’t want contributors jumping the gun
and trying to license fair use. We will try to modify our agreement w/ our
third party database provider. The agreement says the journal is responsible
for obtaining permissions for all illustrations—she wants the flexibility of
fair use (of course, © law itself provides the permission for fair use, as we
heard in Lenz). Finally, rethink our
own relationships with licensing agencies. We are risk-averse; we’ve been
overpaying and over-licensing.  We need
to pull back a bit.
 
We’ve occasionally been asked by the licensing agencies to
pay for public domain materials.
 
Carrie Russell, ALA: Students are often told to get
permission for everything in their dissertations—a huge problem.
 
Michael Carroll: © owners complain that they weren’t in the
room when best practices were put together. 
Your thoughts?
 
Aufderheide: Has heard Fritz Attaway (MPAA) muttering that
it’s risky to follow these guidelines, but when I ask why, he won’t
answer.  Every major studio has used the
Code to make their own fair use decisions. Commercial archives have used the
code to tell filmmakers when they can and can’t use fair use.  Clarity is valuable for everyone. Major
rights holders aren’t much interested in challenging them.
 
Madison: at level of application/practice, that’s accurate.
At more general level, from the beginning of presenting drafts of my paper, I
heard outright challenges to the legitimacy of this framework—it’s not
appropriate to do this without including the relevant rightsholders—people from
the Hill said it—an effort to control the politics of the dialogue, not the
mechanics on the ground.  Pushback w/in
the copyright scholarly community—generally sympathetic, but criticism
nonetheless.  Jennifer Rothman: was
skeptical that it would work; was concerned that it would be underinclusive; in
some ways experience proved that wrong. 
The longer we go into actual practice of forming, using, and thinking
about the missions of fields/institutions, the more it works in practice.
 
Darnton: we’ve had interactions w/ an archive that said, we
understand you used fair use for this one use, but if you ever want to go
beyond that, here’s our number.
 
Brandon Butler: Why does this work better than lawyers
telling you that fair use is big and broad?
 
Aufderheide: b/c people in the field are bombarded by
counterinformation all the time, in part from people acting w/goodwill—rights experts
have learned long ago that everything has to be cleared.  At film festivals & conferences, they
hear from lawyers whose only job is to get business and clear rights for them,
so the lawyers talk about how dangerous the world is. More generally, they need
to take ownership of the process themselves.
 
Jaszi: Funders like Mellon and Ford have found out that if a
project like this is going to be effective, they need to fund both development
of a code and its dissemination. We work very hard to educate members of a
community about a code, once developed.
 
Briston: being developed w/in a community is important.
Nothing like sitting down and discussing what we think is fair. We’ve been
lectured to, but not asked.  Peer
learning, as they say in higher ed. 
Archivists can tell each other things we wouldn’t hear if said by
lawyers.
 
Adam Eisgrau, ALA: If there were a defense fund that a
famous documentarian were to fund, what effect would that have?
 
Jaszi: might be a good thing, but to do that kind of test
litigation, you’d first need plaintiffs willing to come forward. We’ve been at
this 10 years and we haven’t had a lawsuit against anyone using these codes of
best practices.  Maybe practitioners would
be bolder with a defense fund, but he’s not sure.
 
Madison: Gets asked what a court is supposed to do with
these codes, which are voluntary. 
General response: the point of a code is to stop that.  Raising a fund for the defense invites the
kind of litigation we’re trying to empower people to avoid.  Raises a political concern that the presence
of money on the table contaminates the volunteer community self-governance
coloration of the movement.  Everyone at
the table is in this for the mission, regardless of institution/practice
community.  Money can leave you open to
the charge that someone is putting you up to this.
 
Darnton: In 61 films, I can’t think of one instance where we
had a strong argument we wanted to make that we couldn’t.
 
Directions Forward
Prof. Rebecca Tushnet – Georgetown University Law Center
 
Thank you to Peter, Pat,
Mike, Meredith, everyone else who got us here. 
When I entered the field at the turn of the century I thought I would
spend my career working only in academics, because there was so little chance
for progressive copyright reform.  Back
in 2009, Peter gave us advice on advocating for our DMCA exemption for video
remix, which I first thought was unwinnable and now is largely conceded by the
MPAA.  Even right after I testified in that
round, I wrote in my journal: “Today I did a very good job at something where
the extent to which I did a good job doesn’t matter.”  Given that experience, when
Peter asked me to talk about the next ten years, I decided not to make
predictions.
 
Instead, I will give
my wish list for what we will be working towards, both as academics and as
activists.  First: Communicating fair use,
correcting common misconceptions, taking fair use further into the
classroom—for students as well as teachers. Building on the “everything I
needed to know I learned in kindergarten” idea—be fair; share; you can learn a
lot by copying someone at the appropriate time.  Second: Internationalizing fair use and
flexible fair dealing.  Encouraging moves
in the UK, South Africa, but much remains to be done.  Third: Expanding our focus to trademarks, the
right of publicity, and design patents (where there is no statutorily defined
fair use defense at all, and people are increasingly patenting digital
interface elements and logos).  Exemplar:
Public Citizen, spearheaded by Paul Alan Levy, made the same kind of move that
Peter described for EFF, but did it in trademark.  Trademark public interest bar is just
beginning to become more organized, following the copyright and utility patent
bars.
 
As the great sage Hillel
wrote: If not now, then when?  Picking up
from Brandon’s tribute to his students: If not me, then who?
 
Sherwin Siy – Public Knowledge: The how of reform.  Advocate for/against relevant bills; give
staff background through meetings, giving them perspective on how these issues
affect students, consumers, etc. 
Executive branch: file comments in rulemaking settings; convince agency
staff of the importance of good, fair copyright policies and let them be a
bully pulpit for how access can work. 
Judicial: impact litigation; client service—giving advice, like New Media
Rights does.  Amicus briefs.  If you can’t make good law, make good dicta.
 
Reach out to the public; talk to the press; tell the story
of what’s happening and why it matters.
 
Gridlock.  Established
interests that are at least comfortable, if not entirely happy, with the status
quo direction of the law.  They’ve at
least made peace with what the law can do and what they can do with the law or
the market by throwing their weight around. Then there are people who want
change—both damaging and good. Those voices are competing in a field against
both volume and inertia, and competing in the wider political realm w/1000
other issues. 
 
There’s a world of people interested in these issues, but as
many as there are, the world of people affected is much larger—for every 100
people who care about the DMCA, there are 100,000 who haven’t given it a single
thought. Only a few flashpoints reach beyond the inner circle.  Grind away at what must be done, but also
spread awareness b/c more people create more potential for change; we want to
reach people to grow the movement.  Large
copyright owners have become aware that public opinion actually matters; that
awareness may hurt the pipeline of people prepared to become activists.  Geeks are exercised about net neutrality and
less so about fair use b/c the horrifying abuses they’ve seen have come from
Comcast, not from the major labels.
 
It’s about culture: not everyone’s an activist.  Even if they don’t call their senators,
attitudes move the world/set norms.  That
affects the law as well; can obviate the need for changes in the law. In fair
use, intent matters immensely to purpose/character and effect on the market—what
markets we are and aren’t willing to accept. 
Reaching out to other communities for their experiences is a way to keep
that circulation going.
 
Joshua Lamel – Re:Create
 
How many of us have created something and uploaded it in the
last 24 hours?  We are all creators now;
care about upload speed as much as download. Re:Create is trying to tell the
stories on that side, explaining what balance is and why we need it.  Shifts that are coming: will have more real
data to use in advocacy.  A lot of storytelling
as well.  Other side has stories about
the cameraman who lost his job; we have stories about the cameraman who made
$40,000 on YouTube last year.  Unlocked a
creative revolution.  But Congress isn’t
hearing about how, even in LA, people believe that the internet has been good
for creativity and has democratized creativity.
 
In 1976 or 1998, to produce a video and distribute it to a
million people would be difficult and expensive.  In 2015, it is part of the sunk cost of your
phone and your internet access—a profound change. 
 
Our issues have also become more bipartisan, with the return
of libertarianism as well as progressivism. 
Bringing together groups normally not associated w/each other. 
 
Madison: Lawyers do deal in data, we just call it evidence.  The things we heard about today have had traction when at other times they haven’t is in part b/c we sometimes idealize and abstract ideas of community, culture, progress in ethereal terms. Here we put meat on those bones with nuance and detail necessary to tell the stories persuasively. Communities have places and their content matters. Hard work of getting into aspects of creative practice; norms of community–important lesson for strategizing the next phases of progressive copyright reform.  “Everyone is a creator” is true in the abstract, but it’s even better to identify the Harry Potter Alliance.
 
Then there was some discussion of the use of copyright to achieve non-copyright aims–from stopping annoying Times Square actors to stopping people from modifying their cars.  Statutory damages are an unusual and significant hammer that makes everything look like a nail.  Maybe we need a threats action to deter wrongful takedowns more than 512 does and wrongful infringement claims.

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AU, Copyright Advocacy and Fair Use Education 1995-2015

Posted on September 17, 2015 by rtushnet
Public
Interest Copyright Advocacy and Fair Use Education 1995-2015
 
This event celebrates significant anniversaries of two
initiatives that were launched at AUWCL – the 20th anniversary of the founding
of the Digital Future Coalition, the first broad-based civil society coalition
that formed to address copyright policy issues; and the 10th anniversary of the
best practices in fair use, through which a series of creative communities have
transformed their approach to this vital copyright doctrine.  These two initiatives represent very different
models of engagement in the process of developing balanced copyright laws that
provide for significant levels of access to information. 
 
Introduction – Prof. Peter Jaszi – American University
Washington College of Law
Michael Carroll: Not just interested in keeping critical
distance as academics, but working on having ideas put into practice.  Jaszi: it’s amazing what you can accomplish
when you don’t care about who gets the credit; Jaszi demonstrates this.
 
Jaszi: 20 years of work; praise and self-criticism.  Take IP public interest advocacy not just as
practices to be described but as objects of inquiry—how can we generalize about
their effects and values?
 
Accomplishments: Access to medicine; Creative Commons US’s
home is in the program; internationalization. 
Hybridizing being serious students of law and activists.  20 years ago there were few if any
organizations that were regularly and systematically giving voice to this set
of concerns.  Today there are more, and
more threats; richer and more diverse advocacy environment.
 
Summer 1994: Green Paper on the internet.  Not a good document from his
perspective.  Precursor to the White
Paper, issued fall 1995, Department of Commerce task force.  Goal: making internet safe for commercial
content, because until then content providers will refuse to be forces in the
development of this new medium.  “Put
cars on the information superhighway.”  Result:
suggestions for new prohibitions against circumvention of technological
protection measures; changes to make ISPs more fully responsible for behavior
of users of their services; attempt at reframing issues by characterizing fair
use as a “tax” on information owners. 
White Paper took very seriously the notion that the best way to bring
peace to this unruly environment was to start with teaching young children
about the values of IP.  Wonderful
passage about how even in first and second grade, children can be helped to
understand that IP is no different from a ball or a pencil.  (Of course, in the early grades, you’re
supposed to share those with people who need or want them, so that didn’t even
work on its own merits.)
 
Result: Digital Future Coalition.
 
Panel: The Digital Future Coalition
 
Seth D. Greenstein – Constantine Cannon: Rule derived from
history: Any new technology relating to copyrighted works will be opposed by
copyright owners. Eventually this will lead to some legislative action
addressing the perceived problems. 
Almost as soon as Congress adopts this law, it will be obsolete and
inapplicable to the next technology. 
1975: Kastenmeier says that the law isn’t intended to deal with taping
off the radio.  Then Sony introduces the
Betamax.  Movie companies wanted
consumers to watch in theaters/on broadcast TV, had no interest in having
consumers own their own copies.  Ultimate
result: robust and profitable sales and rental market, despite studios’
opposition.  CD transition; digital tape
recording formats.  DAT law/AHRA: rough
justice in royalties to pay for home taping. Also had a crude bilateral TPM,
the serial copy management system.  When
you made an audiotape, flags indicated whether it was a copy or original; if
copy and copyright asserted, could not make copy of copy. Could make unlimited
first-generation copies from original. Required cooperation: DAT had to respond
to codes on CDs.  Not acceptable to
computer industry, so there are loopholes/exemptions for computer industry;
they argued persuasively as a tech matter it was impossible for them to track
and implement SCMS in a computer environment with so many different bits/kinds
of content.  Undaunted, Home Recording
Rights Coalition was interested in digital video, wanted to avoid next Betamax
case; Sony was cognizant of the fact that only one vote of SCt saved them from
bankruptcy given statutory damages. 
Negotiated Video Home Recording Act, following a similar pattern.  Spent years in negotiation with studios; but
computer industry would not do it.  AHRA
problems were several orders of magnitude worse, computer industry said. But
something other than bilateral system, where content protected itself by
scrambling/encryption, might be acceptable.
 
Thus, went to Congress and got it to ask the industry to
talk among themselves.  Working group
started to work on the details of CSS, the Content Scrambling System.  Legislative support for it needed b/c every
tech can be circumvented.  (Needed?)  That’s how we got eventually to the Digital
Future Coalition b/c every jurisdiction has a library/librarian that can raise
consciousness of problems at the grassroots.
 
Prue Adler – Association of Research Libraries: Libraries as
canaries in coal mines.  DFC had
libraries, education associations, tech innovators, computer companies,
more.  A consumer-facing organization,
the first of its kind to come together around major copyright
reform/international copyright. 
Ultimately led to a more moderate DMCA than originally proposed.  Attempt to give protection to facts: USPTO
claimed that international developments justified database legislation.  Early on, it was lonely for the ARL/National
Academies/Info Tech Ass’n opposing database legislation.  Once DMCA was signed into law, focus shifted
to database legislation and many DFC members joined the coalition against it,
which was very helpful.  Strong sense of
how to work together.  Coalition included
Bloomberg, Eagle Forum, startups; proponents included Nat’l Ass’n Realtors,
NYSE, Reed Elsevier.  We’ve been proven
right many times over: database industry in US is thriving versus its status in
Europe with its database legislation. 
House-passed legislation included DMCA, database legislation, and boat
hull protections.  Urban legend: Hatch
told member that he could only have one.
 
20 years of pushing back at high protectionists on any
front; making new coalitions; meeting smart partners.
 
Ed Black – Computer and Communications Industry Association
 
Revolving door from government to content copyright-maximalist
industries.  For our businesses, this isn’t
always our #1 priority, but it’s theirs, so we’re always running uphill against
entrenched players.  Interoperability,
fair use, secondary liability, and balance—issues then, issues now.  Protect our open, innovative economy and its
comparative advantage versus other countries. 
European office: very active right now. 
 
Jonathan Band – policybandwidth: Nothing new under the
sun.  Different coloration, but same
issues.  What is a little different was
the creation of private/public partnership—alliance between industry and user
groups.  Worked on legislation and amicus
briefs, where courts tend to give a little more weight to public interest
groups; working together accomplishes a lot but in Congress it’s the commercial
interests that have the influence in terms of what’s acheivable with our
coalition—reflected in the DMCA.  1201
could have been worse: no rulemaking proceeding at all.  But the exceptions helpful to commercial
interests are better than the exceptions for nonprofits—the utility is directly
proportional to lobbying which is directly proportional to commercial
interests.
 
It’s no accident that the most innovative companies are in
the US and not Europe: part fair use, part regulatory environment, part
culture, part absence of database legislation. 
Could have been much worse! 
Search engine could not function if it could not gather facts.  Remember that database legislation passed the
House; it was touch and go.
 
Prof. Brandon Butler – American University Washington
College of Law: works with students to make this awful DMCA 1201 machinery work
in his IP clinic.  (though it could have
been worse!).  DMCA process helps them encounter
really important concepts that otherwise they might not.  Something about how laws are made and interpreted—reading
the statute alone doesn’t make it obvious what you need to show to get an
exemption, or how hard it will be. Have to look at history; past iterations of
rulemaking, successful and unsuccessful arguments.  Burdens are important—teaches them how the
burden of going through the whole rulemaking affects different people
differently. 
 
There are social justice aspects of an IP clinic, and the
1201 proceeding is a way to show how the burdens matter to who gets to show up
and who wins.  Heavy burden of proving
clients’ hardship; have to do a lot of investigation, and can’t give up just
b/c the first try doesn’t work.  Learn
about how to interact w/clients.  You’re
doing this 8 hours a week (oh, if only!), but this may not be the client’s top priority,
so you have to work with them.  Learn
about coalitions—mostly clinics, a few nonprofits like PK, EFF, OTW—sharing information
and discussing strategies.  We couldn’t
get a video expert to talk about technical details, but OTW’s expert was able
to help w/her genius.  Above all students
learn that there is a public interest in IP separate from the interests of the
rights holder.  Notion of balance, not
just owners and thieves, hits them really hard when they’re working with
teachers etc.
 
Black: At one point, only anticircumvention was not resolved
in the DMCA.  We needed reverse
engineering and cybersecurity exceptions at least.  Senators Hatch & Leahy wanted to get the
bill passed; we walked in w/20-30 representatives from every major constituency
involved.  Asked us: what do we have to
do to get this done?  Everyone pointed at
us and said: you guys have to give up, you’re holding up the train. We held out
and negotiated for exceptions; this was significant in showing how many
powerful interests had been arrayed to get this bill in its form as we had
it.  Private sector commercial interests
against library.  Then look at SOPA/PIPA:
8 million emails; 4 million calls to Congress. The difference was internet
users who understood that they had something at stake; would have loved to have
them 20 years ago. They’re not automatic/easily mobilized but they are an
important factor in setting our goals. 
We have an ally out there and we have to speak to them, making sure our
arguments resonate with their concerns, and we have an opportunity at least to
avoid deterioration and maybe to make things better.
 
Jaszi: Lenz case. Although it wouldn’t have happened in the
way it happened without the telcos, who were primary movers on ISP liability
carveouts/safe harbors, the DFC also made a meaningful contribution to
§512.  Nice to see the design
vindicated.  But something else: the EFF
took the case and stuck with it as long as it takes/will take.  In the early days of DFC, big job was to call
possible organizations as recruits & convince them that they really had a
stake and ought to join.  EFF was that
time almost exclusively focused on privacy and some other internet regulatory
issues; hadn’t taken IP on board.
 
Matt Schruers, Computer & Communication Industry Association:
Messes as lawyer employment guarantees. But in civil justice campaigns, early victories
may be seeds for later failures—seeds of complacency. Maybe winning earlier
would have been bad for us; losing allowed a rally and long-term activism.  (Eh, in the long run we’re all dead.  I’m a bird in the hand type of person.)
 
Greenstein: MPAA had an easy time explaining what they
wanted from the DMCA: stop piracy in China. 
We had a harder time explaining what fair use was for.
 
Jaszi: at the time, staff didn’t know what to do with email.
There’s been growth on both sides.
 
Butler: The DFC did save the internet; it could have been a
big shopping mall, and it’s not. And it’s the living embodiment of fair
use.  “Don’t kill the internet” is our
quick explanation of what we want.

Mike Madison, U Pitt: Reminded of dependence on volunteerism and agency of
individual people.  In the long run,
ideas and concepts and trends matter, but in the short run, individuals seizing
the opportunity and running with it makes an enormous difference. Worth
celebrating but also people who are still teaching the next generation should
put that into the lessons they teach.  It’s
not just power and structure and history: it’s you. 
 
Adler: learning how to do bridging work is also important—students
making connections w/other organizations.
 
Butler: students also learned that if they didn’t show up,
it wouldn’t get done.  If you’re not at
the table, you’re on the menu.
 
Adler: it’s not just ©. 
ARL/ALA work on FCC on accessible e-readers.  Important intersections where clinics can
help. 

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New article on self-publishing, with Eric Goldman

Posted on September 17, 2015 by rtushnet

Eric Goldman and I have written Self-Publishing an Electronic Casebook Benefited Our Readers–And Us, in the Washington Journal of Law, Technology & Arts.

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Delicious and scandalous?

Posted on September 17, 2015 by rtushnet

I just came across Pinches Tacos, a restaurant that sounds yummy.  When registering its mark, the company represented that the translation was “kitchen boys.”  According to the internet … not so much, for speakers of Mexican Spanish.  Scandalous?

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Journal of Patent & Trademark Office Society’s Mid-Atlantic student writing competition

Posted on September 16, 2015 by rtushnet

As the
oldest publishing intellectual property law journal in America, the Journal of
Patent & Trademark Office Society (JPTOS) provides a forum dedicated to the
discussion of legal and technical subjects related to patent, trademark, and
copyright laws.  JPTOS boasts a broad and diverse readership that includes
practicing attorneys, judges, and law professors.   By instituting a
writing competition, the Journal seeks to encourage innovative student
scholarship on current topics in intellectual property law, increase student
involvement and build stronger ties with Mid-Atlantic law schools.

 

All currently
enrolled JD and LLM students are welcome to submit a paper on any topical issue
regarding U.S. or international intellectual property law.  To be
considered, students may submit their papers to the Editor-in-Chief throughout
the year, but no later than March 15, 2016.  The Editor-in-Chief will
review all submissions and select a group of finalists for publication. 
The Board of Governors will then choose a winner from the finalists based on a
variety of factors, including timeliness of the subject matter, thoroughness of
research and analysis, and clarity of writing style. The winner will receive
$1000 cash prize and an invitation to give a talk about their paper to the
Society at a later date.

 

Additionally, students and faculty are invited to the
Journal’s Open House on September 18, 2015, 10:00-11:30 AM, in the USPTO
Madison Auditorium, 600
Dulany Street Alexandria, VA 22314 where a panel will provide a detailed
introduction to JPTOS and discuss interesting developments in the field. 
For more information about the competition and the Open House, please visit http://www.jptos.org.

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Event tomorrow on Public Interest Copyright Advocacy and Fair Use Education 1995-2015

Posted on September 16, 2015 by rtushnet

Event 1:00pm-5:30pm; Reception 5:30-7:00pm

Room 603 – American University Washington College of Law,
4801 Massachusetts Ave NW

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This event celebrates significant anniversaries of two
initiatives that were launched at AUWCL – the 20th anniversary of the founding
of the Digital Future Coalition, the first broad-based civil society coalition
that formed to address copyright policy issues; and the 10th anniversary of the
best practices in fair use, through which a series of creative communities have
transformed their approach to this vital copyright doctrine.  These two
initiatives represent very different models of engagement in the process of
developing balanced copyright laws that provide for significant levels of
access to information.  In our final panel, we will look forward to the
future of the public interest advocacy in copyright – to both the research
agenda that will shape the debate and to the vehicles for public engagement
that are currently in use, and may emerge in years to come.

 

1:00pm
Introduction – Prof. Peter Jaszi – American
University Washington College of Law
1:30pm
The Digital Future Coalition
Jonathan Band – policybandwidth
Prue Adler – Association of Research Libraries
Ed Black – Computer and Communications Industry Association
Prof. Brandon Butler – American University Washington College of Law
Seth D. Greenstein – Constantine Cannon
3:00pm
Best Practices in Fair Use
Prof. Patricia Aufderheide – American University School of Communications
Prof. Michael Madison – University of Pittsburgh School of Law
Kyra Darnton – RetroReport
Heather Briston – University of California Los Angeles Library
Rachelle Browne – Smithsonian Institution
4:30pm
Directions Forward
Prof. Rebecca Tushnet – Georgetown University Law Center
Sherwin Siy – Public Knowledge
Joshua Lamel – Re:Create
5:30pm
Reception

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Lochner in genespace?

Posted on September 16, 2015 by rtushnet

Here’s an argument that the First Amendment protects the ability to engage in genetic engineering.  (Title reference.)

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Carry on dancing: Lenz v. Universal

Posted on September 16, 2015 by rtushnet
Lenz v. Universal Music Corp., Nos. 13-16106, 13-16107 (9th
Cir. Sept. 14, 2015)
 
The OTW
amicus brief gets a shoutout! Stephanie Lenz sued under 17 U.S.C. § 512(f),
alleging that Universal misrepresented in a takedown notification that her 29-second home video
was an infringing use of a composition by Prince. The Ninth Circuit held that “the
statute requires copyright holders to consider fair use before sending a
takedown notification, and that failure to do so raises a triable issue as to
whether the copyright holder formed a subjective good faith belief that the use
was not authorized by law.” A partial dissent would have gone even further.
 
At the time Lenz posted the video, Universal enforced
Prince’s copyrights. Universal’s head of business affairs assigned an assistant
in the legal department to monitor YouTube. The assistant searched YouTube for
Prince songs, and evaluated whether search results “embodied a Prince
composition” by making “significant use of . . . the composition, specifically
if the song was recognizable, was in a significant portion of the video or was
the focus of the video.” According to the head of business affairs, “[t]he
general guidelines are that . . . we review the video to ensure that the
composition was the focus and if it was we then notify YouTube that the video
should be removed.” By contrast, videos “that may have had a second or less of
a Prince song, literally a one line, half line of Prince song” or “were shot in
incredibly noisy environments, such as bars, where there could be a Prince song
playing deep in the background . . . to the point where if there was any Prince
composition embodied . . . in those videos that it was distorted beyond
reasonable recognition” would be left alone, but none of Universal’s video
evaluation guidelines explicitly included consideration of fair use. The legal
assistant reviewing Lenz’s video recognized Let’s Go Crazy immediately and
noted that it played loudly in the background throughout the entire video. “Based
on these details, the video’s title, and Lenz’s query during the video asking
if her son liked the song, he concluded that Prince’s song ‘was very much the
focus of the video’” and included it in a takedown notification sent to YouTube
that listed more than 200 YouTube videos. The notice included a “good faith
belief” statement as required by 17 U.S.C. § 512(c)(3)(A)(v): “We have a good
faith belief that the above-described activity is not authorized by the
copyright owner, its agent, or the law.”
 
YouTube complied with the takedown; Lenz
counternotified.  Universal protested the
video’s reinstatement because Lenz failed to properly acknowledge that her
statement was made under penalty of perjury, as required by § 512(g)(3)(C), and
reiterated that the video constituted infringement because there was no record
that “either she or YouTube were ever granted licenses to reproduce,
distribute, publicly perform or otherwise exploit the Composition.” Lenz sent a
second counter-notification and sued. 
The court of appeals allowed an interlocutory appeal of the denial of
both parties’ motions for summary judgment on
Lenz’s §512(f) misrepresentation claim.
 
Section 512(f) provides: “Any person who knowingly
materially misrepresents under this section—(1) that material or activity is
infringing, or (2) that material or activity was removed or disabled by mistake
or misidentification, shall be liable for any damages . . . .”  So, is fair use “authorized by … the law”?  Yes, unambiguously so: the statute makes clear
that fair use is noninfringing use, sanctioned by the law.  Universal said that fair use is just an
affirmative defense/excuse.  But fair use
is not just an excuse, whatever its procedural posture: a fair user is not an
infringer—that is, a fair user is not an infringer who is excused.  Fair use is a right, not an excuse (as, for
example, copyright misuse is).  (Citing Bateman
v. Mnemonics, Inc., 79 F.3d 1532, 1542 n.22 (11th Cir. 1996); cf. Lydia Pallas
Loren, Fair Use: An Affirmative Defense?, 90 Wash. L. Rev. 685, 688 (2015)
(“Congress did not intend fair use to be an affirmative defense—a defense, yes,
but not an affirmative defense.”)).  
 
Universal agreed that it had to consider other legally
authorized uses, such as compulsory licenses. But the statutory language is
very similar.  Compare 17 U.S.C. §
112(a)(1) (“Notwithstanding the provisions of section 106, . . . it is not an infringement of copyright for a
transmitting organization entitled to transmit to the public a performance or
display of a work . . . to make no more than one copy or phonorecord of a
particular transmission program embodying the performance or display . . . .”),
with id. § 107 (“Notwithstanding the provisions of sections 106 and 106A, the
fair use of a copyrighted work . . . is not
an infringement of copyright.”).  Even if we did call fair use an affirmative
defense, for DMCA purposes, “fair use is uniquely situated in copyright law so
as to be treated differently than traditional affirmative defenses.” Thus, “a
copyright holder must consider the existence of fair use before sending a
takedown notification under § 512(c).” 
This is a bit less than has been reported—the court is very clear that
the burden of showing fair use always remains on a defendant, which is both
wrong for the reasons given and arguably dictated by Supreme Court precedent.
 
Did Lenz show a genuine issue of material fact on Universal’s knowing
misrepresentation of its subjective good faith belief that the video wasn’t
fair use?  The majority allowed Lenz to proceed
under an actual knowledge theory, but not under a willful blindness theory.
 
Unreasonable mistakes aren’t actionable under §512(f); some
actual knowledge of misrepresentation is required.  “Lenz presented evidence that Universal did
not form any subjective belief about the video’s fair use—one way or another—
because it failed to consider fair use at all, and knew that it failed to do
so.”  The court found that a jury needed
to determine whether “Universal’s actions were sufficient to form a subjective
good faith belief about the video’s fair use or lack thereof.” Going forward,
though, “if a copyright holder ignores or neglects our unequivocal holding that
it must consider fair use before sending a takedown notification, it is liable
for damages under § 512(f).”  If, having
done so, the copyright owner forms a subjective good faith belief that there’s
no fair use, it doesn’t matter how wrong it is. 
Nor must the copyright owner’s consideration be “searching or intensive,”
including “investigation” of the allegedly infringing content. 
 
However, paying “lip service” to the concept of fair use isn’t
a guaranteed shield. (Citing Disney Enters., Inc. v. Hotfile Corp., No.
11-cv-20427, 2013 WL 6336286, at *48 (S.D. Fla. Sept. 20, 2013) (denying
summary judgment of § 512(f) counterclaim due to “sufficient evidence in the
record to suggest that [Plaintiff] Warner intentionally targeted files it knew
it had no right to remove”); Rosen v. Hosting Servs., Inc., 771 F. Supp. 2d
1219, 1223 (C.D. Cal. 2010) (denying summary judgment of § 512(f) counterclaim
where the takedown notification listed four URL links that did not contain
content matching the description of the purportedly infringed material); Online
Policy Grp. v. Diebold, Inc., 337 F. Supp. 2d 1195, 1204–05 (N.D. Cal. 2004).)
 
What’s the role of automation? 
 
[T]he implementation of computer
algorithms appears to be a valid and good faith middle ground for processing a
plethora of content while still meeting the DMCA’s requirements to somehow
consider fair use. For example, consideration of fair use may be sufficient if
copyright holders utilize computer programs that automatically identify for
takedown notifications content where: “(1) the video track matches the video
track of a copyrighted work submitted by a content owner; (2) the audio track
matches the audio track of that same copyrighted work; and (3) nearly the
entirety . . . is comprised of a single copyrighted work.” (citing OTW brief)
 
Then, individuals could review the “minimal” remaining
content.  It’s notable that many algorithms
are far more expansive, as any algorithm identifying Lenz’s work for takedown
would have been.  The EFF/OTW-style
algorithm is designed to identify works for which the case for fair use is harder
to make, and to exclude remixes, which at the least require some human
consideration.  However, it’s unclear how
anti-fair use the human scrutiny can be and still stay in “good faith,” and
copyright owners may still be free to decide that they just don’t think much of
anything is fair use.  (The cited cases involve either (1) clear misidentification of targeted files that would have been apparent to any human or (2) a plaintiff whose business model didn’t depend on exploiting its copyrights and thus was acting out of censorial motives.)
 
As for what happened in this case, although willful
blindness is an available theory, the facts didn’t support it.  Willful blindness requires that “(1) the
defendant must subjectively believe that there is a high probability that a
fact exists and (2) the defendant must take deliberate actions to avoid
learning of that fact.” Lenz couldn’t show that Universal subjectively believed
there was a high probability that the video constituted fair use.
 
As for damages, §512(f) allows recovery of “any damages,
including costs and attorneys[’] fees, incurred by the alleged infringer . . .
who is injured by such misrepresentation,” including nominal damages, though
not nominal damages for “impairment of free speech rights,” since Universal isn’t
a government actor.  Actual monetary loss
isn’t required.  The violation of a
plaintiff’s right by an intentional tort is a kind of legal damage itself, even
if the tort isn’t physical.  Requiring
substantial economic damages “would vitiate the deterrent effect of the
statute.”  The court of appeals declined
to decide whether she could recover expenses or pro bono costs/attorneys’ fees.
 
Judge Milan Smith concurred in part and dissented in part.  He construed the plain text of the stattue to
“prohibit misrepresentations that a work is infringing, not misrepresentations
about the party’s diligence in forming its belief that the work is infringing.”  Moreover, there was no material dispute about
whether Universal considered fair use, and thus he would have concluded that it
could be liable for knowingly misrepresenting that the video was infringing: “Universal
knew it had not considered fair use, and therefore knew it lacked a basis to
conclude that the video was infringing.”  Judge Smith concurred that § 512 requires copyright
holders to consider whether potentially infringing material is a fair use
before issuing a takedown notice.
 
The majority’s approach depended on Universal’s implied
assertion that it had considered fair use when it certified in its takedown
notification that it held a good faith belief that the video was not authorized
by the law. But § 512(f) doesn’t directly prohibit a party from falsely
implying that it has considered fair use. 
In Judge Smith’s view, the relevant representation was Universal’s
assertion that the video is infringing. “If the video is a fair use,
Universal’s representation that the video is infringing was false.” 
 
Of course, Universal’s misrepresentation has to be “knowing”
to make it liable, not merely innocent or negligent.  If this requires subjective belief that the
use was unauthorized, “it is difficult to see how Lenz can possibly prevail.”  Though the majority suggested that Universal
could be liable if its actions weren’t sufficient to form a good faith belief
about fair use, Universal would also apparently have to know that its actions weren’t sufficient.  “Knowingly” shouldn’t be construed in so
limited a way. “Universal may be held liable for knowingly misrepresenting that
the video was infringing if, knowing it had not considered whether the video
was a fair use, it erroneously asserted that it was infringing.”  “Good faith” belief that a use wasn’t
authorized by law would be meaningless if you didn’t have to consider whether a
use was fair.  A party that fails to
consider fair use knows that “having failed to consider fair use, it lacks a
basis to assert that the work is infringing.” 
This is recklessness, in common law terms.
 
It was undisputed that Universal didn’t consider fair use
before sending the takedown notice. Its policy was to send takedown notices if
“the composition was the focus of the video.” Judge Smith disagreed with the
majority that applying this policy in this case could have been “sufficient to
form a subjective good faith belief about the video’s fair use or lack thereof,”
because §107 lists the fair use factors and Universal’s policy didn’t permit it
to consider those factors.  “Moreover,
Universal knew it lacked a basis to conclude that the work was infringing,
because it knew that if this video was a fair use, it was not infringing,”
because §107 so states.
 
Judge Smith agreed that automated algorithms could be useful
in identifying infringing content, but the record didn’t show whether these
programs were currently capable of analyzing fair use.  In order for it to be ok for a copyright
owner to rely solely on an algorithm, that algorithm had to be capable of
applying the fair use factors. 
 
Ultimately, “Universal may be held to account if the video
was not infringing, because it knew it lacked a basis to assert that it was.”
Willful blindness wasn’t a helpful doctrine here.  This statutory misrepresentation action
should be analogized to common law torts like fraud, deceit, and
misrepresentation, which have their own principles for determining when an
action was taken “knowingly”—including when a party knows it is ignorant of the
truth or falsity of its representation. 
It didn’t make sense to ask whether Universal subjectively believed that
there was a high probability the video was a fair use, because Universal
knowingly failed to form any belief
about whether the video was fair use. That was enough for a “knowing”
misrepresentation.
 
What now?  It may
remain very difficult to show a knowing misrepresentation, under the majority’s
standards.  But at the very least,
remixers have a new reason to counternotify when they have a good faith belief
in their own fair uses.

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Descriptive and nominative fair use in China

Posted on September 16, 2015 by rtushnet

I found this article by Samiko Sun of Kangxin Partners PC to be quite informative–it seems that China has adopted a US-style approach to trademark fair use.

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