Earlier this month, a district court in Michigan handed down such a decision in yet another “course pack” case in that state.  There was a twist this time, however, which the court chose to ignore.  In this case, brought by Blackwell, Elsevier, Oxford, Sage and John Wiley publishers, the copy shop received photocopied course packs from professors, than handed them to individual students who made copies for their own use.  Amazingly, the court found that this practice constituted direct infringement by the copy shop of the copyright holder’s exclusive rights of reproduction and distribution.

The problem, of course, is that no employee of the copy shop took any action that actually implicated either of these rights.  The shop, owned by Excel Research Group, actually made no copies of any of the material over which the suit was brought.   Judge Avern Cohn contemptuously dismisses this point, asserting that “the fact that the students push a button on a copier in the manner described is of no significance.”  But such facts are exactly what are significant in legal reasoning, and the judge offers no principled reason for ignoring this fact other than his apparent desire to see the plaintiffs win their case.

Even more troubling was the treatment of the distribution right, which the court said was infringed by the shop handing out the course packs it was given.  For this to be true, those copies would have to be unlawfully made, so that the doctrine of first sale did not apply to them.  But Judge Cohn made no such finding; he simply noted that the packs were brought to the shop by professors who assigned the readings to their students.  Again, the judge seems disinterested in either the details of the law or the facts before him; he simply appears anxious to arrive at the conclusion he thinks is desirable.

This startlingly bad reasoning serves a purpose for both the court and the publishers, of course.  It is the only way, albeit one that requires ignoring both law and facts, to hold the copy shop liable without also saying that the copies made by faculty members and students were themselves infringing.  The shop’s liability, if any, is clearly contributory to direct infringement by students and their instructors.  But the court did not want to hold this way, and I am sure the publishers did not ask them to.  To find direct infringement would be so obviously to attack the basic necessities of education, and would so clearly contravene the intention of Congress when they included “multiple copies for classroom use” in the list of examples of fair use, that it was too politically dangerous.  And publishers would fear, no doubt, a decision that would suggest to their customers that their products truly are unusable. So rather than find direct infringement by teachers and students so as to hold the copy shop indirectly liable, the court rendered an incoherent decision in which Excel is held liable for directly infringing copyright without making a single copy.

There is some excellent analysis of this decision by Peter Hirtle here and by Shourin Sen here.

The result of this case is similar to what we have been decrying for some time now — a creeping expansion of the exclusive rights in copyright way beyond the boundaries Congress set for them.  Here that expansion has been abeted by a judge who apparently sees his role as a kind of knight-errant, righting every wrong he perceives, regardless of the legal foundation.

The second fair use factor – the nature of the copyrighted work – is usually treated very mechanically by courts, and sometimes is ignored altogether. When it is discussed, it is in a few sentences addressed to only two issues – whether the work is published or not and whether it is creative or factual. Kasunic, who is Principal Legal Advisor to the Copyright Office, suggests that this treatment seriously undervalues the importance of this part of the fair use analysis. He argues convincingly that the second factor, when examined carefully, offers a wealth of information that could improve consideration of all of the fair use factors. Indeed, one of his major points is that the fair use factors are a guide for fact-gathering, not a mechanical “tally sheet” or scorecard.

If courts pursued the probing questions about the nature of an original work that Kasunic suggests when considering a claim of fair use, the result for academic work would be, I think, truly revolutionary, because those courts would learn how much more leeway should be accorded to academic work than would be appropriate for other types of work. Kasunic argues that part of the scrutiny that should be applied to the original work would ask what the particular incentive structure for that type of work is. When the purpose of copyright law is understood properly, as a mechanism to give incentives for creation, the expectations of the authors and creators are really the only guide for what uses should be compensated and what uses need not be. Thus it is important to ask what the normal incentives for creators of that particular type of work are and what markets supply those incentives. Unexpected markets, or markets that benefit only secondary owners of copyrights rather than authors, are not relevant in deciding if a particular use is fair or not.

When academic work is considered, it is clear that the scope of fair use would be very broad under this more sensitive and sensible analysis. Academics are usually not paid for their most frequent works of authorship, journal articles, and compensation for books authors is meager. Thus the protection of various markets s not necessary for this type of work in order to effectuate the purpose of copyright; incentives for authors clearly come from some place else. Also, it is usually a secondary copyright holder who is trying to protect those markets, which further reduces their value as an incentive for creation. Finally, secondary markets, such as permission fees for electronic reserves and course packs are usually wholly unexpected, and therefore have no incentive value, from the point of view of academic authors. In fact, I once had a faculty author ask me if a check from the Copyright Clearance Center was some kind of scam, so unexpected was the tiny windfall he was being offered.

As Kasunic points out, different types of authorship receive different rights under our copyright law; it is logical, therefore, to also think about fair use differently depending on the specific facts that surround the creation of a particular category of work. Academic works would, in such a fact-specific analysis, be subject to much more fair use than a commercial novel, film or song. Indeed, Kasunic selects as the example with which he closes his article the case of academic authors and fair uses claims for course packs and electronic reserves. Although he does not spell out a conclusion, it is clear from his discussion that the facts uncovered by the searching analysis he recommends would greatly favor a liberal application of fair use for that type of work.

Since an actual case such as Kasunic describes is currently being litigated – the lawsuit against Georgia State University alleging copyright infringement in the distribution of electronic course readings – it is hard to resist reading his article with that case in mind. Kasunic presents, to my mind, a compelling argument that the court should look very careful at why the works in question were created in the first place and focus a fair use finding on the incentives for creation and not extraneous claims for windfall profits made by secondary copyright holders. This would be a sensible application of a factor that has largely been treated as unimportant; it would take seriously the intent of Congress and their instructions to courts when they codified section 107. And it would dramatically increase the likelihood that many of the uses in question at Georgia State (at least those uses that involve academic writings) would be found to be fair use.

There are two obvious problems with the checklist, it seems to me.  First, it can encourages a falsely mechanical view of fair use, where a “score” of seven pro versus six con, for example, means something is definitely fair use, while a one-digit reversal means it is not.  That, of course, is not how fair use really works, and no score card can actually predict the results of a judicial evaluation of the fair use factors.  Second, the checklist would be pretty easy to manipulate so that it tends toward the result someone is seeking.  There has been some discussion, for example, about whether or not there needs to be an equal number of check boxes on each side (favoring fair use v. disfavoring fair use) in order for the checklist to itself be fair.  Although this seems plausible, it is important to remember that courts have not necessarily articulated an equal number of circumstances to be considered on each side of the argument, and the checklist seeks to guide its user through the considerations that are actually in play, not some artificial list created without regard to case law for the sake of balance.

Against these two problems, both of which can be quite real, there are also a couple of sound reasons for using the checklist.  First, the very mechanical nature that makes it an imperfect tool also makes it one that can be used quickly and without an entire course in copyright law by staff and faculty.  These are the major groups that need to make fair use decisions day in and day out; the checklist is a way to at least be sure that they think about all of the factors that are relevant.  There are many people on college campuses that seem to believe that any educational use is a fair use, and the checklist helps counter that simplistic belief and remind all of its users of the full-range of necessary considerations.  Second, the checklist provides documentary evidence that a full fair use analysis was undertaken.  Since part of the “remedies” section of the copyright act gives college and university employees partial protection from damages for infringement when they make a good faith fair use decision, even if they turn out to be wrong, evidence of detailed analysis helps protect the institution from potential liability.

These two arguments in support of using a checklist may help explain the ambivalence that the publishers have shown toward its use.  The Association of American Publishers has announced support for several university policies that include the checklist, including Cornell’s and Syracuse’s, but they have lately seemed more hostile towards it.   It is easy to see why, really.  On the one hand, it is in publisher’s interest to have university employees get beyond a simplistic view of fair use, which is usually too generous, and look more closely at the full range of considerations that need to be taken into account (this explains, I think, the use of a version of the checklist by the Copyright Clearance Center as well).  On the other hand, that deeper consideration will, itself, make universities less attractive targets for litigation, which seems to be the chosen weapon in the battle to narrow educational fair use.

I have to admit that I too feel a good deal of ambivalence toward the checklist, albeit for somewhat different reasons.  I would like every staff and faculty member who must make fair use decisions to have a complete and nuanced view of the doctrine they are applying.  But I recognize how impossible that is.  Until our campuses are populated entirely by IP lawyers (may that day never come!), I will continue to believe that the fair use checklist is a highly imperfect, but even more highly necessary, tool for navigating the traitorous waters of contemporary fair use.

First there was the fair use argument.  In a very similar case involving a retelling of the the story of “Gone With the Wind” from the point of view of one of the slaves at Tara, the Eleventh Circuit Court of Appeal correctly recognized that the new work was a fair use of material copied from “Gone with the Wind.”  And in the recent decision finding that “The Harry Potter Lexicon” was not a fair use,  Judge Robert Patterson, in the same judicial district as Judge Batts, went out of his way to make clear that an author of an original work cannot control all sequels, prequels and reference works.  Judge Patterson even writes, citing other precedents in the Circuit, that “a work is not derivative, however, simply because it is “based upon” the preexisting work.” (p. 39)  But that erroneous conclusion is exactly the foundation of Judge Batts’ decision.

Judge Batts seems to know only one fair use precedent — the “Oh Pretty Woman” case from the Supreme Court — and she applies it slavishly.  Since she does not think that the new book is an actual parody of the original, she holds that it is an infringing derivative work.  But it should be clear to anyone who is a federal district court judge that there are other kinds of fair use than parody; indeed, a quick read of section 107 itself would get one that far.

The real problem, however, is that this should not have been decided as a fair use issue.  In the two cases cited above, there was a substantial amount of material that was actually copied from an original into the new work.  In the case of the “Wind Done Gone,” specific dialogue was reproduced, with commentary and perspective from the “new” protagonist.  In the case of “Coming Through the Rye,” there seems to be no evidence of actual expression that is copied in the sequel.  Judge Batts focuses her objection on the conclusion that “Holden Caufield is delineated by words” and that therefore Holden is copyrighted.  But this ignores the fundamental distinction between expression, which is protected by copyright, and ideas, which are not.  All ideas are delineated by words, but that does not give the ideas themselves, even the idea of a solipsistic teenager who inevitably grows up, copyright protection.  Even before she reads section 107, Judge Batts needs to read section 102(b) of the Copyright Act.

Indeed, her decision is so unaccountable that its leads this commentator at TechDirt to question whether there really is an idea/expression dichotomy in copyright law at all.  But that dichotomy carries a lot of weight in US law; it is frequently cited, including by the Supreme Court, as one of the basic concepts (along with fair use) that keeps copyright law from becoming an infringement of free speech.  Now that Judge Batts has read the distinction out of the law (or failed to read the law at all), the conflict with free speech becomes all too apparent, when a new book can be banned in the US because an old author doesn’t like it.

So what good can come from this ridiculous decision?  First, it should be, and very likely will be, overturned on appeal.  But more importantly, it should prompt Congress to look again at the exclusive right, granted in copyright law, to prepare derivative works.  That right has not always been part of copyright; there was a time when even abridgments and translations were held not to infringe on an original.  The pendulum has now swung the other way, and we grossly overprotect some original works from legitimate reuse because we think those new creations are derivative works.  As is frequently pointed out, Shakespeare could not have written his plays under today’s copyright regime in the US.  It is time for clearer definition of what is and, more importantly, what is not a derivative work that is entitled to protection.  If outrage over Judge Batts’ decision can prompt such clarity, some good might come from this very bad ruling.

As far as the copyright issue is concerned, it seems pretty clear that the professor does not really have a claim here, at least not if all he did was to pose a problem for his students to solve.  Ideas, we must recall, are not protected by copyright, only expression is.  Computer code is protected by copyright from the moment it is fixed; the Copyright Office considers software a “literary work.”  That protection is vested in the author, and no interest is owned by a person who merely set the parameters of the work or suggested ideas which might be used.  Patents, which are also available for software, do protect ideas, and perhaps the SJSU professor is confusing the two very different kinds of protection (although there is no indication that anyone has sought a patent).  Unlike a patent, there is no need to apply for copyright protection.  That protection is owned by the author of the expression.

Which brings me to the most important reminder to be taken from this case.  It is that students own the copyrights in the works they create at our institutions.  As the digital age offers new opportunities to disseminate scholarship, including student scholarship, we need to remember that students own their copyrights (just as professors own theirs) and formulate appropriate policy to respect those rights and facilitate use and sharing as needed.

On the plagiarism charge, I think it is clear that SJSU was correct to affirm the ability of students to share their work.  If open access sharing is thought to be a problem because of the mere potential for plagiarism, all publication would pose a similar threat.  And especially in the area of computer science, where open source code is a common norm, it is important for students to learn the value of sharing in terms of the ability of a community to review and improve a scholar’s work, and to develop judgment about when a particular work is ready to be shared.

There are many reasons to share scholarship, and very few reasons to keep it secret.  Scholarship that is not shared has very little value, and the default position for scholars at all levels ought to be as much openness as is possible.  There are a few situations in which it is appropriate to withhold scholarship from public view, but they should be carefully defined and circumscribed.  After all, the point of our institutions is to increase public knowledge and to put learning at the service of society.  And there are several ways in which scholars benefit personally by sharing their work widely.  The SJSU student hoped that potential employers would see his work and be impressed; how can a university object to that hope?  Indeed, it reflects the professional ambitions of most scholars, and they, like our student, benefit in that ambition if they share their work as openly as possible.  Openness should be the default for academic work, and closed access only an alternative when there are clear and coherent reasons that justify it.  In this case, the student has something important to teach the professor about the important values of academia.

An approprate way to close this reflection is to point to the web site for the Open Student organization, where students are working constantly to remind the academy that openness and public access are key elements to embodying our educational mission.

So what did Professor Horacio Potel do?  He made Spanish language translations of some 20th century classic works in philosophy (Heidegger, Derrida and Nietzsche) available to his students.  He asserts that such versions simply are not available for purchase to his students.

Unfortunately for Professor Potel, lack of availability is not really a defense against copyright infringement.  In a country with a fair use provision (US, Japan, Israel), such unavailability might help with the forth fair use factor, the impact (or lack thereof) on markets for the original.  Rights holders, however, often point out that this factor includes potential markets, and asset that it should be their option whether and when to exploit a particular market.  Thus the answer to Professor Potel’s dilemma from those who hold the rights in these works is basically that his students are out of luck.  For those following the debate about whether copyright laws do more harm than good at The Economist, this instance where copyright is being used to enforce the unavailability of educational resource ought to weigh heavily on the harm side of the balance. (By the way, the voting on the motion showed 71% agreeing that the law did do more harm than good, while 29% felt it was more beneficial).

It is worth noting, while looking at an international infringement case, that the principle international treaty on copyright law, the Berne Convention for the Protection of Literary and Artistic Works, does not contain the same broad exclusive right for “derivative works” that is found in US law.  This is probably a good thing, since it is sometimes very difficult to define exactly what is a protected derivative work.  Leaving that definition up to individual countries seems like a good idea, but it really won’t help Professor Potel.  The Berne Convention does mandate that its members protect two specific derivatives — translations, in article 8 (sorry, Professor) and cinematic adaptations in article 14.  I have little doubt that Argentinian law includes those exclusive rights, so Prof. Potel must, I fear, base his defense on social utility and lack of market harm, two claims that don’t seem to carry much weight these days.

The heart of the case, and the major issue affirmed by the Fourth Circuit Court of Appeals, is that Turnitin makes a fair use of submitted papers when it copies and stores them to be compared with later submissions.  On this issue, I have been convinced; the 4th Circuit opinion has put to rest my earlier doubts.  I still don’t think Turnitin is a particularly useful tool, especially for higher education, but the reasoning of the court on the fair use issue is so clear and compelling that I cannot resist their conclusion.  Besides, I really wanted to agree with them on this point all along.

There are two important points that I want to emphasize in the appellate decision that really help explicate fair use.  First, the Court is very clear that a work can be transformative, and so a favored candidate for fair use, even when the second work does not add anything to the original, but merely copies it for a different “function or purpose” that that for which the original was created.  Here is the conclusion of the Court:

“The use of the copyrighted work need not alter or augment the work to be transformative in nature.  Rather, it can be transformative in function or purpose without altering or actually adding to the original work.”

The Ninth Circuit has made similar rulings regarding Internet indexing in Kelly v. Arriba Soft and Perfect 10 V. Amazon, but it is nice to see this conclusion, which really broadens the scope of the transformative use analysis, arise in another circuit as well (especially in the one in which I live and work).  This is a significant advance in the analysis of transformative uses over its original discussion by the Supreme Court in the “Oh Pretty Woman” case, and it offers grounds for hope that many of the innovative uses of copyrighted materials that new technology make possible could be considered transformative.

Even more exciting to me, is this remark made by the Court as it considered the second fair use factor, the nature of the original copyrighted work:

if the disputed use of the copyrighted work “is not related to its mode of expression but rather to its historical facts,” then the creative nature of the work is mitigated… the district court concluded that iParadigms’ use of the plaintiffs works “related solely to the comparative value of the works” and did not “diminish the incentive for creativity on the part of the students.”

This specific holding would benefit only a fairly limited class of uses, I think, but it is significant to me because it involves the Court’s recognition that the incentive structures for different kinds of works differ.  Since the incentive structure for academic work is significantly different from that of commercial production, I would argue, the scope of transformative fair use for academic work should be broader than it might be for Disney films or songs by U2.  The reasoning of the Fourth Circuit here, its willingness to ask how this specific use impacts the incentive for these specific authors, takes a step toward that kind of argument.

In general this decision is a very comprehensive and cogent fair use analysis that deserves to be widely read.  So why am I still feeling ambivalent?  Because the Court never did address the issue that troubled me most in the lower court’s ruling, the assertion that the “click-wrap” license that the plaintiffs had to agree to in order to get access to the site was valid and enforcable, even thought the plaintiffs were minors and took steps to indiccate that they did not agree to the non-negotiable terms.  The appellate ruling, based as it was on fair use, never needed to address this holding, but I continue to think it was a mistake.  The fact that courts will give such weight to contracts that users can neither negotiate nor avoid suggests to me that this is a problem in need of a legislative solution.  I would like to see the copyright law ameded to state that non-negotiable contracts do not preempt copyright law; that is, that consumers cannot give away their statutory rights as users of copyrighted content unless they have a meaningful chance to do so intentionally and with forethought.  If we could add such a provision to the federal law, my ambivalence about the Turnitin case would vanish altogether.

But several commentators, such as this one from Slashdot, have noted that the legal page of this database appears to suggest that there is copyright to be reckoned with in these documents.  As Slashdot notes, since some of these materials are over 8,000 years old, this sounds like an unprecedented claim.  It seems worthwhile to take a minute and try to sort out what is being said on this page, and what might lie behind it.

First, it is worth noting that the language the UN uses about copyright is very general and indeterminate.  It merely says that the country that contributed the material is the proper source for copyright information and that it is the responsibility of the user to determine what copyright issues, if any, need to be addressed.  This is pretty much just “cover your (self)” language designed to permit the UN to say “we warned them” if any disputes should arise.  But are there really any possible disputes?

I know of no national copyright law per se that could claim an interest in materials this old for any person.  But that is not to say that governments themselves might not claim such an interest, perhaps under laws designed to protect “national patrimony.”

Another possibility, depending on how the UN site is structured, would be a claim under a database protection law.  Although the United States pretty well rejected database protection in the Supreme Court’s Feist v. Rural Telephone Service case, it is a fact in other countries.  The US Supreme Court said that no copyright protection is available for “sweat of the brow,” so a database that merely compiles public domain documents or facts in an obvious and unoriginal way (like a phone book) is not entitled to protection.  The Feist ruling would probably include a database like the World Digital Library if US law were applied.  But other countries have taken measures to protect “sweat of the brow” by adopting special legislation that gives copyright-like protection to those who compile databases.  The European Union’s Directive on the Legal Protection of Databases is one such law.  If that law applied, and it could well apply to a dispute arising about materials from one of the EU member countries, certain uses of the material in the database would be prohibited.  It is not at all clear that these database laws would prohibit isolated copying of ancient documents found therein, but they would certainly bar wholesale or systematic copying.

The area of database protection is a complex and contested one.  There have been recent protests in Europe arguing that the database directive is ineffective and stifles innovation.  In the US, there have been abortive attempts to introduce similar legislation, but they seem to have subsided, at least for now.  Anyone who would like to know more about the nature and scope of database protection in the United States cannot do better than read Prof. Mike Carroll’s recent blog post on the subject, “Copyright in Databases.”

In setting the context for his discussion of fair use, Falzone made the fairly common point that copyright is a monopoly, which is something we usually disapprove of in the US as economically and socially inefficient and harmful.  Jamie Boyle, in his book on The Public Domain, discusses the reluctance felt by Jefferson and Madison over copyright for this very reason.  But Falzone went a step further to stress that copyright is a monopoly over speech.  For me this fell into the category of things I knew but had not fully considered; Tony helped my really think about what it means to give someone a monopoly over expression in a nation where free expression is the first guarantee in our Bill of Rights.

The message I came away with is that fair use is not really primarily about who has to pay whom, when and how much.  Rather, fair use is a safety valve that protects one of our most fundamental values.  Do we really want a copyright owner, for example, suppressing an expression of political speech such as the Barack Obama HOPE poster or the Ben Stein movie Expelled?  From this perspective, fair use is a fundamental and absolutely necessary part of the fundamental structure of copyright in the context of American values.  It is an incentive for creative expression just as much as the exclusive rights themselves are.  Without fair use, I asked myself, would copyright’s monopoly be unconstitutional?

At the very end of his lecture, Falzone returned to this emphasis to ask his audience to get involved.  Specifically, he remind us that our practices, as librarians and academics, help shape the norms about copyright use.  And courts do consider these norms within various industries and user groups as they rule on copyright matters.  This is why statements of best practices are so important.  Falzone ended his talk by asking us to exercise fair use, especially those transformative uses that are becoming more common in a digital age and which courts tend to favor when deciding fair use cases.  These transformative uses (parody, criticism and comment, as well as all kinds of remixes and mash-ups) are precisely where new creative expression is born; they are wonderful opportunities for teaching and learning.  Here more clearly than anywhere else, fair use serves both the mission of education and the fundamental purpose of copyright law to support new creation.  The message is not that “anything goes,” but that in higher education especially we must not allow the “chilling effects” of fear give us cold feet about creative and socially beneficial fair uses.

Street artist Shepard Fairey seems to admit that his used a photograph taken by an AP photographer to create his image of Barak Obama inscribed with the word “HOPE.”  The image became downright iconic during and immediately after the election.  The work has certainly had an impact on Fairey’s career, both positive and negative.  Just yesterday I saw a commercial-like feature about him on the USA Network; he is, they say, “character approved.”  In the spot Fairey comments on the thrill of being a street artist and, as he says, doing something he is not supposed to do.  According to this story, the thrill caught up with Fairey on Friday when he was arrested in Boston, apparently for defacing public property, although the nature of the warrants is not clear.

As the story about his arrest notes, Fairey is also being sued by AP over his use of the photograph to create those famous Obama posters one sees everywhere.  AP is asking for credit and compensation from sales of the image; Fairey is asserting fair use.  Which brings me back to Anthony Falzone, who is defending Fairey in the copyright suit.  Although he acknowledges that fair use is to be the defense, Falzone has otherwise said little, which is the appropriate course for a lawyer in an ongoing case.

Anthony Falzone will be talking, however, about the other high profile copyright cases he has litigated, when he speaks at Duke and at the University of North Carolina on March 2 and 3.  Many of his cases involve both fair use and free speech issues, and they often either directly involve scholarship or have grave implications for scholars.  Some of his previous cases have included helping James Joyce scholar Carol Schloss win agreement that her use of letters in a scholarly book was fair, in spite of objections from the Joyce estate, and successfully defending filmmaker and conservative pundit Ben Stein on fair use grounds when Yoko Ono objected to a brief clip of “Imagine” use in the film “Expelled.”  Perhaps Falzone’s most widely-publicized case was his defense of the publisher of “The Harry Potter Lexicon” against a coyright infringement claim from JK Rowling and Universal Pictures.  About all of these cases, Falzone will have much to say when he visits the Research Triangle.

Falzone’s lecture at Duke is called “From James Joyce to Yoko Ono to Harry Potter: the Impact of Fair Use on Scholarship and Free Speech.”  It will be at 5 pm on March 2, in the Center for Interdisciplinary Engineering, Medicine, and Applied Sciences (CIEMAS) Auditorium A on West Campus.  A reception will follow the talk.  This promises to be an exciting and timely discussion of the role fair use plays in supporting both scholarship and the fundamental values of free expression.  Hopefully many people in the Duke community will come out to hear Falzone, either on March 2 or the next day at UNC.