The Volokh Conspiracy

Judge Stanton in the SDNY has granted Youtube’s motion for summary judgment in in the long-running copyright infringement lawsuit brought by Viacom (and, in a nice soccer-related twist, The English Football Association’s Premier League was another (losing) plaintiff). [The full text of the decision is here]

The case was/is enormously important — Youtube was asserting that it was immune under the Digital Millennium Copyright Act (specifically, Sec. 512(c)) from copyright infringement claims arising out of user postings. Sec 512(c) sets up a “notice-and-takedown” scheme under which website owners are immune from third-party infringements as long as they “respond expeditiously” when notified of specific infringements by copyright holders. Viacom was relying on a portion of the statutory immunity, which denies the immunity if the website operator has “actual knowledge that the material or an activity using the material on the system or network is infringing” OR if “in the absence of such actual knowledge, [it is] aware of facts or circumstances from which infringing activity is apparent . . .”

The critical question in the case was: given that it is a matter of common knowledge that there’s lots and lots and lots of infringing activity on Youtube, does that mean that “infringing activity is apparent” and that, accordingly, the 512(c) immunity is unavailable for Youtube? The court — correctly, in my view — said no, that’s not what it means. The “facts and circumstances” to which the statute refers must be of “specific and identifiable infringements of particular items. Mere knowledge of prevalence of such activity in general is not enough.” Sec. 512, and the other immunities provided in the Act for online conduct, “place the burden of policing copyright infringement — identifying the potentially infringing material and adequately documenting infringement — squarely on the owners of copyright. We decline to shift a substantial burden from the copyright owner to the provider . . .”

One could easily argue that these copyright immunities in the DMCA were a critical feature allowing “Web 2.0″ and “user-generated content” sites (like Youtube, Facebook, Myspace, and many, many others) to flourish. This opinion (though it will probably be appealed) goes a long way to protecting those sites from further attack by the copyright police. Nice work, Judge Stanton!

[Thanks to Justin Gordon for the pointer]

I’ve been remiss, as the VC’s (sort-of) copyright/Internet law guy, in not commenting previously about a truly outrageous bit of executive branch over-reaching on Hollywood’s behalf. I am referring to the ongoing negotiations about ACTA, the multilateral “Anti-Counterfeiting Trade Agreement.” [See Jonathan Adler's posting earlier today about ACTA here] The US Trade Representative’s office has been conducting these negotiations entirely in secret (on some ridiculous trumped-up ‘national security’ rationale) for several years now on this Agreement; a current draft was recently leaked to the press, and it confirms many peoples’ worst fears. Here’s my attempt at a summary of what’s going on — if you’re interested in more details (and I hope you are), I’ve listed at the end of this posting some excellent sources of further information.

ACTA’s goal is to tighten up global intellectual property enforcement. Though it’s labeled an “anti-counterfeiting” agreement, which might make you think that it’s about international trade in counterfeit goods (fake Louis Vuitton handbags, unauthorized Viagra tablets, and the like), it covers much, much more than this; what it is really about is the tighter enforcement of copyright law on the Net. It is outrageous in substance, and in process.

Process first. There are many divergent views, of course, about what should be done about international copyright law and copyright enforcement in the Internet age. Some reasonable people believe that copyright needs strengthening; other reasonable people (like me) disagree. But that’s just the normal give-and-take of debate over a contentious issue, and it can only (and should only) be resolved the way such debates are always resolved in a democratic society — i.e., openly and with full public comment and discussion. It’s hard to know, then, which is more appalling: the fact that the Obama Administration has conducted the ACTA negotiations in secret, or that it has indicated that it plans to adopt the final Agreement as an “Executive Order,” one that does not require submission to or ratification by the Senate (or any Congressional action whatsoever) to become effective.

I cannot imagine what justifications the Administration might proffer for this affront to our constitutional law-making schemes. [Larry Lessig and Jack Goldsmith have an op-ed in today's Washington Post about this, which was the subject of Jonathan's earlier posting]. Those of us who follow copyright law have been here before, and we know what’s coming: the President signs the Agreement, and then changes to US Copyright law are introduced into the Congress and supporters will say something to the effect that the changes are required in order to bring our law into harmony with international norms and with our international obligations. It happened during the run-up to the 1998 Digital Millennium Copyright Act, and it will, I promise you, happen again here. It amounts, in effect, to presidential law-making, and if it isn’t (as Lessig and Goldsmith argue) unconstitutional, it damn well should be.

None of this would be of too much concern were the Agreement — as far as we can tell, given the veil of secrecy the Administration has thrown around it — full of substantively bad ideas and lousy law. Margot Kaminsky, over on Balkinization, has a good summary of the major points of the Agreement. Among them:

1) Paragraphs 2 and 3 mandate a statutory damages provision in civil copyright law, as under US law — so that copyright holders, even without the need to demonstrate any measurable harm whatsoever, can recover awards thousands of times greater than any possible damage they may have suffered.

2) ACTA Art. 2.5 mandates an especially swift response from courts in copyright infringement cases — nice for Hollywood, not so nice for everyone else.

3) IP Enforcement at the Border. The current draft contains a number of provisions that will allow – and in some cases mandate — more vigorous searching (of laptops, iPods, etc.) and seizing of devices containing copyright infringing material. The de minimis threshold for the quantity of goods that can be seized at the border, as set forthin the the TRIPS Agreement (the “Trade-Related Intellectual Property” treaty that became part of the GATT Trade Agreement) will be lowered; a potentially injured party may apply for the suspension of the release of potentially infringing goods for one year from the date of application; the Agreement also permits Ex Officio action at border crossing (i.e., seizure of goods by customs officials without any complaint being filed); mandating the release of “personally identifying information” of suspected infringers to copyright holders, even without any finding of actual infringement.

4) Expanding the definition of Criminal Copyright Infringement. ACTA expands the international definition of criminal copyright infringement to explicitly include Internet “piracy” done for personal benefit alone. Under TRIPS, countries must hold a person to have committed an act of criminal copyright infringement if he or she has willfully infringed on a “commercial scale”, which was understood to mean involving sale to others. ACTA expands the international definition of “commercial scale” to include “private financial gain,” and explicitly includes “significant willful infringements that have no direct or indirect motivation of financial gain.” Insofar as it is VIRTUALLY IMPOSSIBLE TO DO ANYTHING ON THE INTERNET WITHOUT INFRINGING SOMEONE’S COPYRIGHT, this will play serious havoc with the international legal system. Oh yes — and it mandates that “penalties that include actual sentences of imprisonment as well as monetary fines.”

5) ACTA member countries will be required to provide for third-party (Internet Intermediary) liability. This is not required by any of the major international IP treaties – not by TRIPS, nor the WIPO Copyright and WIPO Performances and Phonograms Treaty. However, US copyright owners have long sought this. (For instance, see page 19 of the Industry Functional Advisory Committee report on the 2003 US- Singapore Free Trade Agreement noting the need for introducing a system of ISP liability). (Previously available at http://www.ustr.gov/new/fta/Singapore/advisor_reports.htm.)

Second and more importantly, ACTA will include some limitations on Internet Intermediary liability. Many ACTA negotiating countries already have these regimes in place: the US, EU, Australia, Japan, South Korea. To get the benefit of the ACTA safe harbors, Internet intermediaries will need to follow notice and takedown regimes, and put in place policies to deter unauthorized storage and transmission of allegedly copyright infringing content. However, contrary to current US law and practice, the US text apparently conditions the safe harbors on Internet intermediaries adopting a Graduated Response or Three Strikes policy — disabling Internet access for anyone found to have been infringing three times (whether or not that was a judicial finding or merely in an administrative proceeding)

There’s more (see below). But even this summary makes it clear that, once again (see Clinton Administration) the Democratic Party has caved in to Hollywood’s demands regarding intellectual property enforcement. As David Fewer of the Canadian Internet Policy and Public Interest Clinic and the University of Ottawa noted, “if Hollywood could order intellectual property laws for Christmas what would they look like? This is pretty close.”

It’s time to fight back. There are some wonderful resources out there coordinating what one hopes will become a global effort to beat this monster back. Here are some of the better sites I’ve found:

AU’s Program on Information Justice and Intellectual Property has a major collection of papers, reports, and other ACTA-related items here

Michael Geist, up in Canada, has been following the ACTA debates for some time and has a number of useful contributions on his blog, e.g. here and here

Public Knowledge’s ACTA Page

Electronic Frontier Foundation’s ACTA page

Harvard’s Jack Goldsmith and Lawrence Lessig have an interesting op-ed in today’s Washington Post arguing that it woudl be constitutionally dubious for President Obama to adopt the Anti-Counterfeiting Trade Agreement (ACTA) as an executive agreement. Here’s a taste:

The president has no independent constitutional authority over intellectual property or communications policy, and there is no long historical practice of making sole executive agreements in this area. To the contrary, the Constitution gives primary authority over these matters to Congress, which is charged with making laws that regulate foreign commerce and intellectual property.The administration has suggested that a sole executive agreement in this instance would not trample Congress’s prerogatives because the pact would not affect U.S. domestic law. Binding the United States to international obligations of this sort without congressional approval would raise serious constitutional questions even if domestic law were not affected. In any event, an anti-counterfeiting agreement made on the president’s own authority could affect domestic law in at least three ways:

First, the noncriminal portions of this agreement that contemplate judicial enforcement can override inconsistent state law and possibly federal law. Second, the agreement could invalidate state law that conflicts with its general policies under a doctrine known as obstacle preemption, even if the terms are not otherwise judicially enforceable. Third, a judicial canon requires courts to interpret ambiguous federal laws to avoid violations of international obligations. This means courts will construe the many ambiguities in federal laws on intellectual property, telecom policy and related areas to conform to the agreement.

As part of my continuing efforts to explain — both to myself, and to others — why it is that copyright law as we know it is so grotesquely unsuited to the global network, I gave a talk recently at a joint meeting of the NYC chapters of the Copyright Society of the US and the Internet Society (and interesting combination for this purpose) on the subject, and the folks at ISOC have posted the video of the talk here. FYI, in case you’re interested (and with all the usual self-abnegating apologies for shameless self-promotion — hey, buy my book!)

[PS - if you want to see the Larry Lessig video that I displayed at the talk - the video within the video, as it were -- it's available here]

As most people are well aware, a variety of copyright and trademark disputes have prevented the online distribution of the most valuable catalogue of musical recordings known to humanity — viz., the songs of the Beatles, whose value in the online marketplace surely exceeds a billion dollars. So imagine everyone’s surprise when the online seller Bluebeat.com began selling remastered Beatles tracks for $0.25 each a couple of weeks ago. Four for a buck!! Christmas in July (er – October, anyway)!

Alas, it was not to be – or at least not to be for too long. Bluebeat.com had not, in fact, beaten the industry giants like iTunes and Amazon.com to the rights to the Beatles’ songs. Instead, it claimed the right to distribute the songs without any permission from the copyright holders because the songs had been re-recorded using the technique of “psycho-acoustic simulation,” described by Hank Risan, head of Media Research Technologies (owner of the Bluebeat site) as “”my synthetic creation of that series of sounds which best expresses the way I believe a particular melody should be heard as a live performance.” Risan described the technique to the LA Times this way:

“Make a single copy. Analyze it. Destroy it. Create a new simulation based on parametrics of sound. You’ll be shocked at how the brain, in terms of its perceptual coding in the central nervous system, turns these sounds into electrical impulses, which then affect your mood, your cognizance, etc. Pyschoacoustic simulation exploits aspects of perception that are not present in the original work. It’s an art. The first simulations we did were awful. It’s an art. It’s not a copying at all.”

Uh-uh. Nice try. The copyright holders were not amused — EMI and Capitol Records, among others, rushed into federal court and, on November 9, obtained a temporary restraining order against Bluebeat forbidding any further distribution oof the Beatles’ songs. The problem for Bluebeat is not simply that “psycho-acoustic simulation” sounds like a crock of nonsense — people who heard the recordings being distributed claim that they sound exactly like the Beatles’ originals. The problem is that even if it’s not a crock of nonsense, there’s still an obvious copyright infringement in what Bluebeat is doing. Each of the Beatles’ recordings, like virtually all recorded music, contains two separate copyrighted works: the “musical work” (i.e., covering the song itself, music and lyrics) and the “sound recording” (covering the actual sounds placed on tape by the performers). Now, even assuming that psycho-acoustic simulation is a real technique that creates new sounds expressing the underlying musical work, that would just mean that distribution of the recordings wouldn’t infringe the sound recording copyrights; you’re allowed, under US law, to re-create the sounds of a recording and avoid infringement liability to the owner of the sound recording copyright. But there’s still the musical work copyright to consider, and there’s no argument on the planet that is going to help Bluebeat avoid infringement liability on that score.

Too bad, I guess – along with maybe 200 million or so others, I’m still waiting for those classic tunes to make it to iTunes or the equivalent. Guess I’ll just have to find my old LPs and start ripping . . .

[Thanks to Ed Butkovitz and Jerry Lewis for the pointer]

The BBC reports:

A shop assistant who was told she could not sing while she stacked shelves without a performance licence has been given an apology.

Sandra Burt, 56, who works at A&T Food store in Clackmannanshire, was warned she could be fined for her singing by the Performing Right Society (PRS)….

CNN reports that “A coalition of top musicians, including R.E.M. and Pearl Jam, want to know if their music was used by the U.S. military as part of controversial interrogation methods at the detention facility at Guantanamo Bay, Cuba.” I don’t know whether such information is discoverable using the Freedom of Information Act, but my correspondent (David Cavanagh) and I noticed that there’s talk of possible copyright infringement liability:

It is unclear if any of the artists plan to pursue legal action, but [Kate] Doyle said she’d be “surprised if some of them weren’t thinking about it.”

And I do know something about copyright law, so I thought I’d speak to that. Copyright law gives the owners of copyrights in musical compositions — basically, the lyrics and the tunes — the right to control public performances of the work. (Performances here includes simple playing of CDs and the like.) But it doesn’t give copyright owners the right to control private performances. If the music was played to just one terrorist at a time (or even a few at a time), there’d be no infringement of the public performance right.

If the music was played to the entire prison (which I doubt), that might be a public performance, defined as a performance “at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.” I suspect that the Guantanamo detainees don’t qualify as “a normal circle of a family and its social acquaintances.” Then the question would be whether the military has a blanket license for public performances of this music, for instance via ASCAP and BMI — quite possible, given that the military doubtless performs music in other venues, though one would need to see whether that license covers all uses or only particular ones. But even if the military was infringing the copyrights, through an unlicensed public performance (and I stress again that the likely playing of the music was probably in a private setting), the remedies for federal government infringements of copyrights are limited to actual damages — here, probably a modest licensing fees — or the minimum statutory damages of $750/work; and even that could only be collected for infringements within the past three years. (Of course, there would also be the question whether the infringement took place within the U.S., and is therefore governed by U.S. copyright law in the first place; that returns us to the question of whether Guantanamo is U.S. territory, which the Court answered affirmatively as to habeas corpus, but which I’m sure has never been definitively resolved as to copyright law.)

So here’s a cute little copyright (or trademark?) problem (or, depending on your viewpoint, an outrageous rip-off). According to Entertainment Weekly (and the Gateway Pundit) start-up publisher OR Books has announced plans to publish Going Rouge: Sarah Palin An American Nightmare, a collection of essays about the former Alaska governor with a title — and cover design — remarkably similar to Palin’s upcoming memoir (entitled Going Rogue: Sarah Palin, An American Life). And the OR paperback will be released on Nov. 17, the same day that Palin’s book is scheduled to hit the shelves.

As Thom Geier at EW puts it: “don’t these jackets look too similar to be, well, fully kosher? At the very least, might some hockey-mom-loving conservatives be confused enough to pick up the wrong book? You betcha!” It may not be fully kosher, but it’s not infringement, as I see it — copyright law doesn’t protect people against “confusion,” it protects against copying. There’s a long-standing tradition in copyright law that book titles are not protected, so the going Rogue/Going Rouge similarity is not actionable. And if you look at the two covers carefully, you’ll see that actually not much else (other than the picture of Palin, about which she surely has no copyright complaint) has actually been copied. (And, if there were a viable copyright infringement claim, OR might well have a very strong fair use/parody defense).

A claim sounding in trademark (or its close state law cousin, unfair competition) might have a somewhat better chance of success here. The Lanham Act, the federal trademark statute, imposes liability on:

“Any person who . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . .”

I’m no trademark expert, but I would think there’d be a reasonable case here that the use of the similar title+typeface+coverdesign, plus the release of the book on the same day as Palin’s is intended to (and likely to) cause confusion among consumers as to the “origin” or “sponsorship” of the goods.

[Thanks to Angela Canney for the link]

VC readers in New York City might be interested in this talk I’m going to be giving at lunchtime this coming Thursday, Oct. 22. It’s co-sponsored by the Copyright Society of the US and the Internet Society’s NYC chapter, and is my (latest) attempt to get people to think about how we might fashion a copyright law for the Internet age that actually makes some sense (as opposed to the copyright law we actually have, which doesn’t). [Oh yeah, it's about my book, too - and why Jefferson sent a moose to Paris, and how we find a "moose" for the Net that will do for us what Jefferson's moose did for him]. I gave a version of this talk last week at the University of Virginia Law School, and I think I can guarantee you a pretty lively discussion — in fact, I’ll be a tad disappointed if fisticuffs do not break out in the audience as a result of some of the ideas I propound.

You probably read about the little copyright flare-up that accompanied the recent posthumous release of Michael Jackson’s new single, “This is It.” The song is, apparently, almost identical to an earlier song “I Never Heard,” co-written by Jackson and rock-and-roll legend Paul Anka many years ago but never released. Anka immediately gave an interview in which he was quoted as complaining that he hadn’t been consulted or given his permission, and saying “They have a major, major problem on their hands, [and] they will be sued if they don’t correct it.”

It looked pretty straightforward. When you think about it, though, it’s not at all clear what Anka was complaining about. Jackson’s estate, as co-owner of the copyright, is perfectly within its rights to license the distribution of the song, with or without Anka’s permission or even his knowledge – that’s what copyright co-ownership entitles you to. And secondly — I’m a songwriter, and if I found out that Sony Records released a song that I had co-written with Michael Jackson (ok, it’s a null set, but just suppose . . .), I’d get down on my knees and sing Hallelujah — estimates of the royalties that will accrue as a result of this distribution run into the tens of millions of dollars, and Anka, as co-owner of the copyright, is entitled by law to half of those. Now, I know that Paul Anka is a very rich man, but even very rich men, ordinarily, do not complain about making more money. What was he so upset about?

Apparently, what he was angry about was the omission of his name from the song-writing credits. Understandable, perhaps – but that’s one thing he does not have the right to under the statute – copyright owners do not (with some exceptions not relevant here) have the right to insist on “attribution” of authorship. So the whole thing was pretty strange – he was getting everything he was entitled to under the law, and not getting something he wanted but which he was not entitled to. it makes for a nice copyright hypothetical/exam question — if I didn’t think that some of my Intro to IP students are trolling on this blog, I’d use it myself.