Principles for Deciding
Hard Copyright Cases
The media have gone from print to the internet, and copyright is
in crisis. Works of the mind are accessed with increasing ease, while creators
receive decreasing returns. Hence our thought-experiment: try out the following
ten principles in hard cases.[1]
In English, we speak of “copyrights”;
in most languages, of “authors’ rights.” In instituting such rights, lawmakers
pursue aims that range from enhancing cultural wealth to recompensing
flesh-and-blood creators equitably.[2] We shall here not opine on copyright or like laws,
but rather deviate from such settled laws as are embroiling us in hard cases.
Accordingly, let us ask: What authors’ rights could lead courts to resolve such
cases best?[3]
Copyright laws initially recognized authors’ rights to make their
works public in print and on stage.[4] With progress, more powerful media have been
dispersing cultural goods more widely and rapidly. Statutes assure authors’
rights for more or less specific media; treaties extend their “umbrella” rights
over communication and making available.[5] Under our first principle here, we propose the core right of dissemination to entitle creators
to control transmitting or making their works accessible or, absent control, to
be paid for reception. But could they assert any such far-reaching right
without some finding themselves pitted against others?[6]
Imagine a case of such tensions. From Hiroshige’s woodblock
prints, Van Gogh made studies in oil paint. Check out their landscapes: the Flowering
Plum Tree and the Bridge
in the Rain. Hypothesize that Hiroshige prepared his prints recently
and that Van Gogh is painting his studies at present. Copyright laws could vary
in resolving the issue: Should Hiroshige have the right to have Van Gogh
prohibited from reworking his prints into paintings?[7] The core right, delineated here, would entitle the
prior artist to determine whether, and to some extent how, his works reach
others. In such a right, Hiroshige would find no basis on which to have Van
Gogh compelled to cease merely painting studies of his prints. To begin scoping
out Hiroshige’s rights, ask: What could Van Gogh do with his studies outside of
his studio? Above all, should he be free to show or sell exemplars on the open market?[8]
Vary our case for a moment. Suppose that, from woodblocks for
Hiroshige’s prints, a workshop he had not engaged made further prints, using
his color scheme, and sold them. Now, an artist may have her author's right
enforced to prevent such publication of mechanically made exemplars, often
called “copies.”[9] Refocus on our quite different case just
hypothesized: Van Gogh has chosen patterns and colors out of Hiroshige’s prints
and woven them into his own studies that mere routines could not have then
generated. Strikingly, from the prints to the studies, staged planes have been
articulated into active strokes, the palette has been selectively shifted from
muted to intense, and tenor turned from contemplative to impassioned. Under our
first principle here, no law should entitle any creator, in our case Hiroshige,
to have another summarily stopped from enhancing culture. Rather, courts would
refrain from barring any later creator, here Van Gogh, from releasing a
significantly recast work publicly. But under our third
and fourth principles, the prior creator may be granted
other relief.[10]
Our core right, as do most laws on point,
protects a creative work whether or not it is fixed in any “hard copy.”[11] Consider members of a jazz
group improvising live in an unrecorded jam session, often making music as a
team, but with some of them at times riffing solos by themselves. The members’
contributions, including tunes, harmonies, and rhythms, attract copyright to
the extent that these are creatively pulled together into a self-standing work
or works.[12] More generally, texts, as
well as visual or aural images, are protected insofar as they make new sense in
contexts that they furnish one another within some work.[13]
Performers find opportunities in scripts or
scores to imbue works with fresh meanings. It might then prove misleading to
impose any dichotomy between “faithfully” performing a work and “originally”
authoring another version.[14] In particular, actors,
musicians, directors, or other executants, amplifying on some notation or
scheme, can present works with their own shadings, cadences, or other turns,
even overall consistencies. Under our second principle here, performers, like
the jazz musicians in our foregoing example, could be treated as creators to
the extent that their own rendition took on some significantly new tenor.
Instead of trying to disentangle the overlapping notions of “performers” and
“authors” in theory, we shall ask how to grant such creators relief in
practice. Our approach to copyright remedies, set out under our third and fourth principles,
frames this problem.[15]
Industrial designs raise issues straddling
copyright and industrial property. Compare distinct designs by Alva and Amino
Aalto and by Charles
and Ray Eames. The Altos were pioneers in making chairs out of plywood
pressed into simple curves. The Eames developed chairs using techniques for
molding plywood into compound curves. How to protect such creations that,
recognized as original and beautiful, were shaped with novel methods? Copyright
protects materials like texts or images creatively brought together into
meaningful works; design or patent rights protect innovatively useful products
or processes.[16] Suppose that a
manufacturer, while following the configuration of one of the Eames’ designs,
improved on techniques to fabricate chairs similar to theirs, but more durable
under rough use. What could occur in the marketplace if the Eames asserted
copyright in their design against this manufacturer for exploiting its improved
chairs? If successful, they could constrain competitive uses of techniques for
making products like furniture in the light of ergonomics. Such control would,
under copyright laws, last longer than under design or patent laws and escape
priority conditions in these laws. To avoid such results, our second principle
here would preclude enforcing copyright in what techniques sufficed to
generate.[17]
How to disentangle creations from technical
implementations? Copyright is claimed in what we blithely term “expressions,”
as opposed to “facts” or “ideas.” To focus on works created out of such
materials as these weasel words label, let us analyze how authors use literary
or artistic techniques.[18] For example, with authors’
rights, Gerard Manley Hopkins could control publishing his poems as worded,
and Georges Seurat could control publicly displaying his Sunday on the Grande
Jatte as painted. But Hopkins could not have others stopped from
imparting their own poems drafted with the sprung rhythm he had found in common
speech; nor could Seurat bar others from showing their own pictures painted in
the pointillist mode he had devised from impressionism. Moreover, dramatists
may stage tragedies in which new plays are contrived from stock plots, like
that classically set out in the “idea” of having a hero act with hubris
and fatefully fall from a high position. Indeed, writers may promulgate myriad
texts that they unfold out of story lines, character types, etc., and artists
may circulate myriad images that they configure with compositional schemes,
color or tonal palettes, etc. Accordingly, under our second principle here,
copyright should not be enforced in materials that techniques alone have
produced. These range from know-how and literary or other artistic devices to
algorithms coupled with data.[19]
What
ought courts do when specific rights might be or are violated? They may order
parties not to do certain acts or to do others, and they may award money. They
have to tailor remedies case by case by taking account of diverse variables,
including the parties’ risks of irreparable harm and their compensable losses
or relative gains. Within such equitable parameters, what relief to fashion for
authors’ moral and economic rights in hard cases?[20]
Return to
our hypothetical case of Hiroshige’s prints “copied” in Van Gogh’s studies of the Flowering
Plum Tree and of the Bridge
in the Rain. Though artists
had long trained by emulating each other’s exemplars, Van Gogh had “scruples of
conscience” that his studies approached “plagiarism.”[21] There is a larger question
here: How could we appreciate Hiroshige’s graceful prints in muted shades if we
knew them only from Van Gogh’s striking studies in oil? We might miss or
confuse the accomplishments of these artists if we did not learn who had
created the prints, and who the studies, or if we did not accurately access
these works. Copyright laws variously provide relief for authors’ moral rights
to be named as creators of their works and to maintain their works intact.[22]
We shall here explore remedies for moral
rights.[23] Start with the right to have
authorship of one’s work attributed to oneself. Each creator, while free to
release her work anonymously, may require references to her name or pseudonym,
as well as to her work itself, identifying her as author of the work. Such
references, whether on or with a work or by links online, can forestall harm
risked from disseminating the work in any unattributed or misattributed or
otherwise misleading guise.[24] But, as seen in the jazz
example which we set out in broaching our second principle,
creators’ diverse contributions might more or less coalesce in some work, so
that attribution of multiple authorship may be in order. What if a work were
made public, but without authorship duly credited or with it misattributed? The
creator could be awarded damages for resulting losses or restitution of a
plagiarist’s gains.[25]
Creators have rights to maintain the
integrity of their works. Suppose that, as released without any author’s
consent, a work is inaccurately presented, say, in a truncated or diluted
iteration. Insofar as the work, in this distorted guise, displayed no further
creativity, there would be neither any later author’s claims nor eventual
audiences’ needs to weigh: a court could enjoin disseminating the work in its
defective variant.[26] In appropriate cases,
judges may accommodate such claims or needs, for example, by disallowing
routine distortions or other hack changes in a work or by conditioning how any
creatively reworked version reaches the public. Imagine another historical
case: Beaumarchais wrote the play which Mozart adapted into his opera The
Marriage of Figaro, in which Da Ponte rewrote the original text into
Italian, with an ear to the music and an eye to evading censorship. Our first principle would have courts refrain from simply
blocking access to the later work without taking any account of its creativity.
In our case, the court should not prohibit outright either the public staging
of the opera or publication of its libretto taken from the play. But the prior creator could have himself
and his discernibly underlying play referenced to avoid confusion as to authorship
and version.[27]
Remedies become hard to tailor when some
rare instance of a work risks being obfuscated, mutilated, or destroyed.
Consider a single manuscript or art object, one out of a short run of prints,
or a data set uniquely encrypted. Authors’ rights might then get caught in
tensions with other rights or interests, like the property claims of whoever
possesses any such exemplar at risk. Our third principle here would leave
courts with the Solomonic task of reconciling such opposing private interests,
while taking account of public interests.[28] For example, in one case,
a sculptor created The
Tilted Arc for a common space, but people frequenting the space wanted
it removed. On appeal, the administrative decision to relocate this sculpture,
outside its installation, was upheld.[29]
Creators devote talent and energy to writing
texts and to making images in sight or sound. But authors or other
rightholders, including enterprises with whom they contract, risk having others
free-ride on their achievements or investments. After the advent of print,
copyright was instituted to protect writers and artists, as well as their
publishers, against losing markets to pirates who reset type or plates quickly
and sold reprints cheaply.[30] Upon advances like
recording and broadcasting, lawmakers enumerated rights to exploit works in
markets that such media opened up. Depending on the case, rightholders may seek
orders to restrain threatened or ongoing infringement. They may also sue for
damages for losses, or for restitution of gains, arising from infringement.[31]
Copyright infringement occurs, it is here
submitted, as materials like texts or images, conveying some overall sense of a
protected work, are disseminated without due consent.[32] But to the extent that
such materials are creatively made over into another work, our first
principle would direct courts to allow the author of this ensuing work to
make it public. Requested to issue any sweeping order to the contrary, a judge
should distinguish between routine reiterations and creative reworkings, at
times translations or transformations. Contrast a computer-generated
translation, mechanically rephrasing a commonplace text, with a human’s
insightful translation of a work as linguistically rich, say, as one of Mallarmé’s
poems. A court should not deny this flesh-and-blood translator the chance
to enhance culture, even with her interpretive work rearticulating what is
protected in the prior work. What if a rote or slavishly produced “copy,” with
nothing but hack changes or clichéd twists, clumsily abridges or tritely
renders claimant’s work?[33] A court may enjoin the
infringing dissemination of such a counterfeit if equitable criteria,
decisively that of averting irreparable harm, are met. There would be good
reason to prevent any obvious substitute for the work at issue from entering
the marketplace. There would be less need to bar a distinctly reforged work
that could not usurp any market allegedly at risk.[34]
An author or other rightholder may claim
damages or restitution for copyright infringement. Hard cases often turn on the
question: What share of the marketplace may copyright entitle an author alone
to exploit?[35] To assess actual damages,
a court has to gauge harms, typically losses resulting from infringement on any
such market. On the one hand, given a de minimis taking, there would be
no evident origin from which to start tracing such causation.[36] On the other hand, even
given a manifest taking, damages could be accorded only for harm to some market
subject to copyright. But what about some audience a work does not address, for
example, that for an animated film with a character which reappears as a toy?
Perhaps the film might do all the better on the overall marketplace because
more people want to see it once the toy is widely advertised. Apart from
damages, an author or other rightholder may seek the recovery of such
enrichment as has arisen from infringement. To
quantify such restitution, the court has to sort out what is protected in the
work at issue and trace net gains achieved only from infringing with protected
materials.[37] Consider Dashiell
Hammett’s novel The Maltese
Falcon,
with its suspenseful plot and snappy dialogue, which John Huston rather
literally followed in his film of the same name. Hammett’s story took on new
life in Huston’s motion picture, thanks to creativity in directing actors, in
shooting and editing the film, and in otherwise putting the story on screen.
Suppose, now hypothetically, that the studio exploiting this motion picture had
not first contractually obtained rights to exploit the novel cinematically.[38] Under our fourth principle
here, the studio could, if it made the film public without such consent, have
risked facing the novelist’s action to share in its gains. In such a suit,
infringement analysis would inform accounting estimates of how far the illicit
taking of a protected text contributed to the success of a film.[39]
Much ink has been spilled, not least in
copyright jurisprudence, in appreciating “creativity” in literature and the
arts.[40] Courts, however, need not
reach such evaluations in absolute terms once and for all, even in disposing of
hard cases. In assaying how creatively one work has been redevised into
another, it might suffice to check the initial and later works against
technical developments and literary or artistic conventions.[41] Findings on point may cut
many ways: in challenging the creativity of an adversary’s putative work, each
party could support or object to relief that a court should grant or not to
protect or allow this work. Suppose that a plaintiff seeks an order to prevent
the dissemination of any translation into English substantially similar to that
she made of a French text which she alone is licensed to exploit in English.
But what if defendant demonstrated that an adequately programmed computer could
draw plaintiff’s version out of this French text, putting it into English terms
virtually identical to hers? To start, such machine translation could be argued
to implement linguistic “facts” and “ideas” technically, thus to yield no
protectable “expression,” as we theorized wrapping up our second
principle.[42] Further, if users en
masse applied the requisite software to the French text claimant
translated, they could all offer an English version like hers, making it hard
to enjoin them all. Finally, as translations became freely available, any
market for them, key to assessing damages or restitution, would be undercut.
Effective remedies could then become impracticable.[43]
How
far should authors’ rights extend? In hard cases, prospective but occasional users
of works might incur onerous transaction costs in obtaining consent for their
uses, or claimants might encounter tensions with overriding laws or
difficulties of enforcing copyright. In response, lawmakers may exempt some
uses of works from remedies: to that extent, consent may not be due for these
uses; as well, statutes may delimit the duration of rights. How, effectively,
to construe and apply such exceptions and limitations?[44]
What if no rightholder’s consent is readily
available for redisseminating protected materials for some critical or
informational use?[45] For example, a scholar might not have resources to obtain permissions to illustrate
a book on art history with photographs of art objects. Or a reporter might not
have time to license showing a painting hung in the background of news about to
be aired. Or a teacher might not find it feasible to obtain advance
authorization to hand out texts to a class. Copyright laws tend to allow such
redisseminations, but in complex, varying exceptions. These we shall rethink in
terms of common sense.[46]
Copyright laws become unworkable when they
fail to tell laypeople how to comply with them. Such users should not have to
seek legal advice whenever they are about to make another’s work, much less
excerpts, available to others. Return to acts of redissemination that, as we
just canvassed them, make a point or aid inquiry with some passing or partial
reiteration of a work. Laypeople often cannot verify whether, with such acts,
they fulfill provisions for exceptions that might allow uses in theory but are
not cogent in practice. One treaty provision would have us confirm that any
colorably exempted use does not “conflict with a normal exploitation of the
work” and does not “unreasonably prejudice the legitimate interests of the
right holder.”[47] But most users are not in
any position, on the one hand, to gauge harms they might cause across complex
markets or, on the other, to appreciate authors’ or other rightholders’ claims
at stake in redisseminations they contemplate. Our third
principle would entitle creators to require references to themselves as
authors of their works; our fifth principle here would exempt, from injunctions
and damages, such redissemination of protected materials as is reasonable for
critical or informational uses. To make exceptions workable, courts should
allow parties invoking them to comply with this last condition of reasonable
use by consulting only common sense on point.[48]
Note how this criterion shifts perspectives.
Our third and fourth principles call for criteria to guide judges
fashioning relief in copyright cases.
But the test of common sense would not entail the judicial task of weighing
such equitable factors as harmful “effect” on any “potential market” or some
more or less creative, “transformative” use.[49] Rather, it would have both
courts and users ask: Would we, relying only on common sense, find the
redissemination of the protected materials at issue reasonable as a critical or
informational use in the case at hand? For example, a scholar may keep quotes
of texts or images to sizes that merely fit into her contexts, a journalist may
fleetingly convey a whole work in reporting on news, or a teacher may give a
small class access to samples of works. Suppose that such a party shows that
her redissemination, while duly referencing any author with her work or like
source, serves some critical or informational use. This party would be liable
for damages caused by her use only insofar as it exceeded what common sense
would find reasonable in her case.[50] But even excused uses
might in turn feed more massive redisseminations, notably those carried out in
large-scale networks. In any event, restitution, imposed judicially or by
statute as equitable remuneration, could be due for redissemination.[51]
Authors’
economic rights run as long as treaties or statutes specify, while moral rights
may last longer under some laws. Whichever type of right is asserted, if it has
not lapsed, courts may take the passage of time into account in appropriate
cases.[52] In particular, a judge may hedge or even refuse remedies for an
author’s claims that, after her death, have waned in urgency with time. For
example, in a suit on the moral right of integrity of Victor Hugo, who had been
dead well over a century, French courts declined to enjoin sequels to his
classic Les Misérables.[53]
Overriding
laws, in hard cases, may delimit how far authors’ rights justify specific
remedies or other measures of enforcement. Treaties, as well as constitutional
and related laws, protect basic interests, for example, in privacy, free
expression, or open information.[54] Consequently, a court should keep relief within the parameters of such
overriding laws as bear on any case at bar, while it proportionately disposes
of pertinent claims.[55] In copyright cases, courts could avoid impairing basic interests, inter
alia, by tightening up proof of infringement, by broadly construing
exceptions or other defenses, or by closely fitting remedies to the facts at
hand.[56] Consider, for example, the parodies Alcolix and
Isterix of protected comic-strip characters: to safeguard artistic freedom,
German courts allowed these parodies to the extent that they significantly
diverged from the underlying works at issue.[57]
Few
hard cases reach the courts. Indeed, most disputes are handled elsewhere. Under
our seventh and eighth principles, we turn to private
transactions, suggesting that contracts might not fully settle tensions between
creators and enterprises in unequal bargaining positions. At network levels,
intermediaries from broadcasters to internet services often arose as private enterprises,
but many have secured dominant positions in far-flung markets, empowering them
publicly.[58] How far to charge such institutions with reconciling, on the one hand,
usually private claims for copyright relief and, on the other, most notably,
free expression in the public sphere? Under our ninth principle, we shall address such problems in shifting from particular claimants’ infringement
suits to self-help measures now being tested against online uses.[59]
Authors enjoy rights in the works which they
respectively create. They share economic rights equitably in any work they create
together or with any principal. Further, they may agree to have others exploit
their works, and the law may also effectuate transfers of rights. Who, finally,
should have rights in a work?[60]
Under
our first and second principles, flesh-and-blood
creators originally have authors’
rights in their works. But many creators might contribute, for example, to a
dictionary or to a feature film, as collaborators, in a team, or as agents. How
to allocate copyright in some creation with multiple authors, who are often
directed by an employer or other principal? The very fact that a work
culminated out of the parties’ diverse contributions and transactions, whether
creative or administrative, points to their consensus. Our seventh principle
here complements rules of law that would initially vest rights in such works.
It would lead courts to effectuate the parties’ consensus as to their economic
rights.[61]
Contrast
a work created by many authors on their own with a work made under someone
else’s direction.[62] Suppose, on the one hand, an interactive game created by an ad hoc
team of globally networked contributors. Assume that no contract governed these
authors’ economic rights in the game in so many words and that no principal
directed them. Our seventh principle here would have courts equitably construe
the creators’ consensus in legally allocating such rights among them. For
example, their course of conduct, their informal agreements, or contract terms
typically used in network circles could inform thus effectuating some
approximately common intention.[63] Suppose, on the other hand, contributions to a work created for a
principal, like an employer or a commissioning party. But on engaging the
contributors to this work, did this principal have much more bargaining power
than they? If so, any putative consensus, inferred into a tacit agreement,
should be restrictively construed. For example, a court could ask to what
allocation of rights creators would reasonably have agreed.[64]
How
can creators earn their livings in rapidly evolving media markets? For payment,
authors may assign economic rights to others, or they may license others more
or less exclusively to disseminate their works.[65] But it is often hard to anticipate how creations might be eventually
exploited: among other things, they can be elaborated into diverse works
appealing to unexpected audiences, and media progress can open up unforeseen
markets. Contractual models out of the past are not likely to have been
appropriately formulated for future media: for example, agreements to publish
“hard copies” might have little relevance for streaming works online.[66] It would be disingenuous to presume that creators always contracted
their rights away without being leveraged by enterprises with greater
bargaining power than they. How then to construe, even enforce, older
contractual language purporting to alienate “all” eventual copyrights? Did
terms to transfer such rights adequately warn authors of the full range of
benefits they were to give up? With any flaw like lack of free assent or of
full notice, overreaching contracts could be equitably cut back in effect.[67]
Indeed,
contracts crystallize fewer consensual deals in markets dominated by fewer
parties. Over centuries, media industries have emerged, starting in publishing
houses and going on to the major recording and film studios. Such enterprises,
regularly producing works with authors and performers on contract and on staff,
accumulated copyright interests in their repertories. Many of them have since
shifted from production to extracting revenues from old works on new media, and
some have been taken over by financiers mining copyright assets for capital, in
either event shedding prior relations with creators.[68] At much the same time, royalty-collecting societies, labor
organizations, and other such regimes have lost leverage to optimize
compensation for authors and performers, notably online. The inquiry may be
opened: How could creators achieve equitable remuneration for their works and
performances increasingly exploited on internet platforms?[69]
Under
our seventh principle, only flesh-and-blood
creators are originally vested with authors’ rights in their own works. Any
other party would need to have chain of title running from the creator or
creators of a work up to and including herself in order to assure whatever
copyright she would assert in the work. What if, at the start of chain of
title, no author had effectively consented to cede her rights to anyone else?
Suppose, as well, that no author’s right has been transferred by law to another
party. By default, whoever created the work would retain rights over its
dissemination.[70]
How
to extend chain of title to copyright, even across borders? One may transfer
economic rights by contract: under most laws, if the holder of an exclusive
right initially assigns it to one party and later to another, the first
transfer takes effect as against the other.[71] Caveats might arise: for example, some laws allow one transferee to
prevail over another by giving notice, often by recording the grant on some
designated public register, but such local regimes are not globally
coordinated.[72] As well, transfers of copyright may be made by law, for example, those
effectuated in creative teams or employment, in marital communities or
inheritance, in corporate successions, etc. In any event, it would be prudent
to require a claimant, optimally one with sufficient financial means, to
warrant title to any copyright interest this party purports to hold or grant.
Not only could pertinent transactions, even as checked with due diligence, fail
to lock in chain of title worldwide, but no treaty regime systematically
dictates which laws would govern transfers of such copyrights as respectively
apply in different countries. Diverse laws, bearing on chain of title claimed
in these rights across borders, could conflict in hard cases.[73]
Copyright
is supposed to induce authors to market their works openly. Optimally, market
players ought not distort competition by abusing their leverage on the
marketplace, which itself needs good data to function.[74] In particular, holders of exclusive rights, in dominant positions, may
not frustrate the redissemination of works by arbitrarily rebuffing prospective
users. For example, a court may reject such a rightholder’s refusal to
negotiate any reasonable license to redisseminate protected materials that it
controls in a specific market.[75] Suppose that an author had assigned copyright in her work to one party
who both published it and reassigned this copyright to another party who has
since disappeared from view, no longer marketing the work. Users of this
“orphan” work, lacking ready information to find the rightholder with whom to
deal, could raise equitable defenses against at least some relief.[76] However, parties disseminating protected works, with neither consent
nor any defense, could owe authors or other rightholders compensation. For
example, thus profiting from such materials online, an enterprise facilitating
access could be enjoined or held liable.[77]
Controlling access to works tends to become more
complex as media increase in power. For example, claimants can code digitized
data containing works, and intermediaries can channel such data worldwide. How
to enforce authors’ rights in growing networks? Which laws to apply to works
crossing borders?[78]
9. ENFORCEMENT:
Courts may protect authors’ rights by imposing self-help measures only to
remedy infringement, by granting civil awards only for harms caused by
infringing acts or for net gains made from such acts, or by criminally
sanctioning only such acts as statute specifies.
Self-help
measures can operate at diverse media levels. Private rightholders can encrypt
works before publicly releasing them. Intermediaries can avoid liability by
disabling access to suspect contents online.[79] Claimants may apply to courts, notably to forestall the circumvention
of such technical measures or to have internet services minimize copyright
infringement. Self-help measures, thus ranging from private to public levels,
could arguably keep the costs of judicially enforcing copyright from spiking,
but not without putting basic interests at risk. To avert such risks, courts should decline to give such measures
effects stronger than suffice to remedy violations of authors’ rights.[80]
Authors
or other such rightholders ordinarily sue named parties case by case for
exploiting works or performances that claimants specify. But on the internet,
users massively share protected materials in private, undercutting copyright
markets, and intermediaries aggregate such materials cheaply in making them
public. How far, in cyberspace, can authors or other rightholders defend their
interests, given such modes of wide-ranging exchanges or exploitation as resist
judicial scrutiny or relief?[81] Notice-and-takedown procedures have paralleled those for injunctions
of infringing releases of works in that claimants giving notice have had to
identify works at issue. Now, accelerating traffic online is prompting efforts
to block access to questionably defined materials upon black-box approximations
of infringement. Courts may try, procedurally, to empower interested parties to
inquire into, even to challenge, such computerized measures.[82] Still, it remains unclear how, given the stretch and speed of the
internet, to hold these measures to legal standards. To reword an old inquiry
for new media: How to police any often-elusive cyber-police?[83]
Consider
the worst-case scenario: Rube Goldberg machinery would impact
authors’ rights helter-skelter. Computerization could upset creators’ control
of our access to their works online. Internet aggregators could distract us
from humanly created works with artificially simulated texts or images, and our
searches could be deflected to such ersatz versions.[84] Computers can be programmed to filter out access to works made
available without apparently due attribution or consent, but they might at
times also unobtrusively deny legitimate access. In any event, the computerized
interference with contents in cyberspace, if arbitrary or perplexing, risks
weakening creators’ readiness to release works to the public or inhibiting them
from exercising their core right.[85] To obviate chilling effects, courts could employ criteria that they
have refined case by case for enforcing authors’ rights, especially in imposing
injunctions. Under our fourth
principle, courts may enjoin only routine reiterations of any work at issue upon
some risk of irreparable harm. On this criterion, self-help measures would not
pass muster if they threatened access to creative reworkings for niche markets.
We have illustrated this threat with Hiroshige’s Flowering Plum Tree and the Bridge in the Rain as “copied” by Van Gogh. In such cases, decision-makers should discipline extra-judicial enforcement to avoid
crimping authors’ styles.[86]
A
court exercises the State’s powers in civilly enforcing authors’ rights. It
does so as well, often more harshly, in criminally punishing copyright
infringers. But civil remedies risk becoming punitive, for example, as monetary
awards lose proportion with actual damages or unjust enrichment. Imperatively,
pursuant to the principle of legality, the State has to inform the members of
the public, in statutory terms clear to all, of legally punishable acts. How to
respect this general principle of legality in the special field of copyright,
with all its open-ended notions to which courts resort in coping with protean
creativity?[87] Words such as “copy” and “facts” or “ideas” make for hard cases in
which copyright laws should be construed closely to avoid any unpredictable
exposure to criminal measures. In addition, punitive sanctions normally target
parties violating private rights or public rules while harboring culpable
states of mind or scienter, so that the State penalizes only malicious
or obviously harmful acts. But uncertainties in criteria of what takings would
arguably constitute copyright infringement could complicate defining such
states of mind. Thus, copyright statutes have to define which acts, releasing
specified materials to others, violate penal law. Absent which, no award beyond
harms caused by, or net gains from, infringement may be imposed.[88]
With
media progress, copyright transactions increasingly cross borders.[89] We have ventured principles for authors’ rights, while attempting to
rethink notions making for hard cases. Our principles may be tested by how well
they lead courts to fashion relief that resolves or defuses conflicts of
copyright or like laws arising as infringement globalizes.[90] Faced with apparent conflicts, a court may ask: Could enforcing laws
applicable to the case at bar achieve aims for some of these laws but frustrate
aims for others? To the extent that such tensions are absent from the case, no
true conflict of laws troubles disposing of it. Otherwise, converging or
complementary remedies may often settle lingering conflicts.[91]
Hypothesize
one more case. Suppose that a mime, within the United States, creatively
improvised a pantomime work live.[92] Suppose also that, without the mime’s consent, another party covertly
recorded her improvisation on the spot and posted the resulting video online,
making her work accessible worldwide, and that she sued this party and his
internet service in a U.S. court. What if, parochially choosing only forum law
to govern the case, this court dismissed our mime’s copyright claims on finding
that she never, pursuant to U.S. law, fixed her work or had it fixed, say, in a
score or video?[93] The court would thus ignore most copyright laws worldwide that,
effective where the work at issue could be received, would protect this work;
as noted under our second
principle, most laws would do
so without authorized fixation in any
“hard copy.” Now suppose, varying our case, that the U.S. court, taking
jurisdiction over our mime’s suit, holds such copyright laws abroad to be
applicable to her claims country by country.[94]
Amplifying
our hypothetical, we reach the issue on which cross-border cases may turn: How
to dispose of such conflicts as appear among copyright or like laws of diverse
jurisdictions? Judges might be tempted to stick to forum law, and lawyers to
shop for a court likely to choose law favoring their clients.[95] The copyright-treaty regime, with its basic principle of national
treatment, should discourage such choice-of-law roulette. This treaty principle
entitles qualified claimants to benefit from the copyright law of a treaty
country to remedy infringement threatened or suffered within that country.[96] The pertinent laws of such countries may justify enjoining infringing
acts that risk yielding irreparable harm in their respective audiences or
markets. By the same token, the law of such a country may call for monetary
awards for damages or for restitution if it protects the work at issue enjoyed
there. The treaty regime has harmonized copyright in authors’ minimum rights
that we have encapsulated into our core right to guide courts in hard cases.[97] In the hypothetical case of our author, this core right would support
enjoining access to her pantomime where diverse laws converged to protect this
work. Monetary awards would complement each other insofar as they were granted
under specific laws in effect where actionable harms or gains took place.[98]
Now that
we have unpacked our principles, let us look at them all together. Click on
each principle set out immediately below to return to explanations offered for
it above.
The
mustachioed, not the bearded, Marx quipped: “Those are my principles; and, if
you don't like them, well, I have others.”[99] Our willingness to move
beyond current premises differs perhaps from his. We have just experimented
with notions key to authors’ rights at stake in hard cases. Such rights call
for new remedies, for example, for computer-simulated texts or images and for
the file-sharing or aggregation of works online. But how to recompense creators
for enriching the public with cultural goods, even as these become freely
accessible and enforcement costs prohibitive? Not without rethinking copyright
to keep up with media trends![100]
© Paul Edward Geller 2024
[1] For the initial version, see Paul Edward Geller, Beyond the Copyright Crisis: Principles for Change, Journal of the Copyright Society of the USA, vol. 55 (2008), 165.
[2] How such aims enter into tensions or converge may vary, not only among copyright laws, but case by case. For another analysis, see Tim Wu, On Copyright's Authorship Policy, University of Chicago Legal Forum, vol. 2008, no. 1, 335.
[3] For critical analysis of “best” here, also cited below, see Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3 (with French and Spanish translations), published in longer form as Must Copyright Be For Ever Caught Between Marketplace and Authorship Norms?, in Of Authors and Origins: Essays on Copyright, eds. Brad Sherman and Alain Strowel (Oxford University Press, 1994), 159.
[4] For analysis of the emergence of copyright laws and authors’ rights, see Paul Edward Geller, Copyright History and the Future: What's Culture Got to Do With It?, Journal of the Copyright Society of the USA, vol. 47 (2000), 209, at 210-35.
[5] See WIPO Copyright Treaty, art. 8
(1996); WIPO Performances and
Phonograms Treaty, arts. 10 and 14 (1996). See, e.g., Society
of Composers, Authors and Music Publishers of Canada v. Entertainment Software
Association, 2022 SCC 30, esp. paras. 8, 86, and 108. The Supreme Court of
Canada here confirmed that dissemination may “engage” statutory rights, while
it construed such rights, some separately couched in terms of old media, to
avoid “gaps in protection.”
[6] For critical analysis of tensions in theory underlying such disputes endemic in practice, see Paul Edward Geller, Delimiting Intellectual Property: Distinct Approaches to Spillovers, in Spory o własność intelektualną: Księga jubileuszowa dedykowana Profesorom Januszowi Barcie i Ryszardowi Markiewiczowi, eds. Andrzej Matlak and Sybilla Stanisławska-Kloc (Wolters Kluwer Polska, 2013), 293.
[7] See, e.g., U.S. Copyright Act, 17 U.S. Code § 106(2) (Dec. 2022); the German Urheberrechtsgesetz (in English translation), § 23(2) (June 23, 2021). U.S. law institutes the right “to prepare [emphasis added] derivative works based upon the copyrighted work”; German law limits such control to the possibly public production of specified types of derivative works.
[8] For prior, more detailed analysis of this
and like cases, see Paul Edward Geller, Hiroshige
v. Van Gogh: Resolving the Dilemma
of Copyright Scope in Remedying Infringement, Journal of the Copyright Society of the USA, vol. 46 (1998), 39.
[9] Why the scare-quotes around the term “copies”? This vague notion risks misleading courts: for example, a translation is not literally a “copy” in that its words differ from those of the work which the translator converts into another language. For another analysis, see Abraham Drassinower, Copyright is Not About Copying, Harvard Law Review Forum, vol. 125 (2012), 108.
[10] Under these principles, we shall explore
remedies that an initial author may obtain for a later author’s work, such as a
translation or transformation, which the latter has derived from the prior
author’s work and disseminates without due consent.
[11] Few laws condition the protection of authors’ rights on “fixing” works in some stable or tangible medium. For further analysis, see Ysolde Gendreau, Le critère de fixation en droit d’auteur, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 111 (with English and Spanish translations).
[12] See, e.g., Tempo Music, Inc. v. Famous Music Corp., 838 F. Supp. 162 (S.D.N.Y. 1994). Here a U.S. trial court declined to deny copyright in Billy Strayhorn’s contributions of harmonic aspects to a jazz piece on which he collaborated with Duke Ellington. Our seventh principle elucidates the consensual allocation of rights in any work created by many authors.
[13] For analysis of any work as some relatively self-standing sign in which texts, images, etc., contextualize one another, see Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3, at 51-59. For analysis of how, outside any one literary work, other sets of texts known to readers might bear on meanings of the work, see Michael Riffaterre, Intertextuality vs. Hypertextuality, New Literary History, vol. 25 (1994), 779.
[14] It remains theoretically controversial, though variable in practice, how fully a script or score, indeed any such “writing,” can determine a work or, rather, a performance reinterpret or even redevise the work. For example, for diverging analyses in the field of music, see Nelson Goodman, Languages of Art: An Approach to a Theory of Symbols (Bobbs-Merrill Co., 1968), 179-92 passim; Philip Alperson, On Musical Improvisation, Journal of Aesthetics and Art Criticism, vol. 43 (1984), 17.
[15] We shall here explore calibrating relief with the creativity of works at issue. Performers may obtain remedies for authors’ rights insofar as they creatively contribute to works. For other analyses, see Richard Arnold (Justice), Reflections on The Triumph of Music: Copyrights and Performers’ Rights in Music, Oxford I.P. Seminar, Oct. 20, 2009 (Intellectual Property Institute, 2010); Rebecca Tushnet, Performance Anxiety: Copyright Embodied and Disembodied, Journal of the Copyright Society of the USA, vol. 60 (2013), 209.
[16] For analysis of the interface between
copyright and industrial property, including design and patent rights, see
Jerome H. Reichman, Legal
Hybrids Between the Patent and Copyright Paradigms, Columbia Law Review, vol. 94 (1994), 2432.
[17] See, e.g., Baker v. Selden, 101 U.S. 99, 100-02 (1879). The U.S. Supreme Court here refused to enforce copyright in accounting forms following a “plan” of “ruled lines and headings.” The Court reasoned that no such right may justify barring diverse uses of this plan, declaring rather that the case fell into “the province of letters-patent, not of copyright.”
[18] For critical analyses, see Paul Edward Geller, Copyright in Factual Compilations: U.S. Supreme Court Decides the Feist Case, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 22 (1991), 802; Pamela Samuelson, Reconceptualizing Copyright's Merger Doctrine, Journal of the Copyright Society of the USA, vol. 63 (2016), 417.
[19] See, e.g., Bsiri-Barbir c. sté. Haarmann et Reimer, Cass., 1e ch. civ., no. 02-44.718, June 13, 2006, translated in [2006] European Copyright and Design Reports [E.C.D.R.] 380; Telstra Corporation Pty. Ltd. v. Phone Directories Company Pty. Ltd., [2010] FCAFC 149, esp. paras. 89-92. In the former case, the French Supreme Court denied copyright in “the fragrance of a perfume” attained by implementing “know-how.” In the latter, the Full Federal Court of Australia affirmed the refusal of copyright in telephone directories “overwhelmingly” compiled by “the automated processes” of computer systems.
[20] Hard cases at times prompt courts to take account of substantively overriding laws. For example, our sixth principle invokes basic interests protected by treaties, constitutions, or other higher laws that could compel the close fashioning of proportionate relief in some cases. Our ninth principle entails comparable limits to the judicial enforcement of technical and other self-help measures that, especially online, could impact other parties beyond those to any private suit. For another analysis, see Maayan Perel, Digital Remedies, Berkeley Technology Law Journal, vol. 35 (2020), 1.
[21] Letter of February 1, 1890 (no. 850), in Vincent van Gogh, The Letters, eds. Leo Jansen, et al. (Van Gogh Museum and Huygens Institute, 2009). He also wrote here of “translating” other artists and of his fear of their “bothering or obstructing me under the pretext that I’m manufacturing copies.”
[22] Other rights, not falling under copyright, may also come into play here, albeit with differences in subject-matters and scopes. The right to privacy, for example, entitles anyone to restrain disclosure of her personal expression, whether it is creative or not. For the classic analysis of such rights, see Samuel D. Warren and Louis D. Brandeis, The Right to Privacy, Harvard Law Review, vol. 4 (1890), 193, at 198-213 passim.
[23] For background analysis, see Stig Strömholm, Droit Moral – The International and Comparative Scene from a Scandinavian Viewpoint, Scandinavian studies in law, no. 42 (2002), 217, initially published here: International Review of Industrial Property and Copyright Law [I.I.C.], vol. 14 (1983), 1.
[24] See Berne Convention (Paris, 1971), art. 6bis. Presumably, absent an author’s claim for another or no attribution, the name appearing on her work, as she last released it to the public, would suffice. Berne articles 10 and 10bis require references to “the source” of works used under exceptions these provisions set out, most crucially to the author unless she released her work anonymously. Our fifth principle below incorporates this requirement, calling for reference to the source of any work redisseminated under any exception for critical or informational uses. Given duly authorized, anonymous dissemination, recourse may be made to such sources as editors, publisher, etc.
[25] However, evidence supporting such awards, for
example, of harm to reputation, can be hard to marshal, prompting recourse to
relief calling for less onerous showings. See,
e.g., Agence
France Presse v. Morel, Case 10-cv-2730 (AJN) (S.D.N.Y. Aug. 13, 2014). The
U.S. trial court here awarded statutory damages for the removal of protected
data indicating authorship.
[26] See, e.g., the Serafino decision, Tribunale, Rome, May 30, 1984, Diritto di Autore (1985), 68, reversed in part, Germi c. Soc. Reteitalia, Corte d’Appello, Rome, Oct. 16, 1989, Foro Italiano, vol. 112 I (1989), 3201. The Italian court of first instance enjoined “spot” advertisements to prevent these from misleadingly interrupting television broadcasts of a film work, while it contemplated equitably adjusting such ad-breaks, for example, to fit them within the plot of the work. On the appeal of this case, the intermediate court simply banned ad-breaks.
[27] See Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3, at 73-85. But see Bob L.T. Sturm, et al., Artificial Intelligence and Music: Open Questions of Copyright Law and Engineering Praxis, Arts, vol. 8 (2019), 115. Here the question is raised: Should public notice be given that works or matters ostensibly authored by humans have rather been wrought by artificial so-called intelligence?
[28] See,
e.g., William Eden c.
Whistler, Cass. civ., no. 49.16, March 14, 1900, D.P. 1900, 1, 497.
In this historic case, the artist J.M. Whistler refused to deliver a portrait which Lord Eden had
commissioned him to paint of his wife. The French Supreme Court refused to
overturn the decision allowing the artist to retain the painting, ordering him
to return payment for it, awarding damages for his failure to provide it, and
forbidding him from using it in any version recognizable as that commissioned.
For his account of the suit, see Eden
versus Whistler: the baronet & the butterfly (R.H. Russell, 1899).
[29] Serra v. U.S. General Services Admin., 847 F.2d 1045 (2d Cir. 1988). The U.S. appellate court here, acknowledging “that the sculpture is site-specific and may lose its artistic value if relocated,” still allowed the work to be moved to another spot.
[30] Note the exhaustion doctrine: tangible property, once relinquished, say, on the first sale of a “hard copy,” may be freely alienated. But see, e.g., Land Nordrhein-Westfalen v. Dirk Renckhoff, C.J.E.U., 2nd ch., Case C-161/17, Aug. 7, 2018, ECLI:EU:C:2018:634. The E.U. Court of Justice here held that, after an author allowed access to a work on one website, he could control reposting the work on another site.
[31] In theory, it is unclear whether, or how far,
such awards may accumulate. In practice, distinct bodies of law vary in sorting out damages and restitution in the
cases. See Francesco Giglio, Restitution
for Wrongs: a Comparative Analysis, Oxford
University Comparative Law Forum (2001), 6.
[32] See, e.g., Authors Guild v. Google, Inc., 804 F.3d 202, 225 (2d Cir. 2015); Kadry v. Meta Platforms, Inc., Case 23-cv-03417-VC (N.D. Cal. Nov. 20, 2023). In one case, the U.S. appellate court reasoned that putting scattered snippets of text online would not infringe copyright in “expressive content.” In the other, the U.S. trial court dismissed claims of infringement by computer outputs that failed to evidence protected inputs, but did not rule on copying into computers. Under our second principle, texts or images are protected as they are creatively brought together into some self-standing work. Processing such materials in a computer piece-meal, as in “training” artificial so-called intelligence, need not infringe. See Oren Bracha, The Work of Copyright in the Age of Machine Production, University of Texas Law, Research Paper (Sept. 24, 2023).
[33] See, e.g., Folsom v. Marsh, 9 Fed. Cas. 342 (C.C.D. Mass 1841); Dickens v. Lee, (1844) 8 Jurist 183 (Ch), reported in E.T. Jaques, Charles Dickens in Chancery (Longmans, Green and Co., 1914), 67-70 and 84-89. In the first case, U.S. Justice Story, after analyzing a recontextualized but verbatim selection of Washington’s collected letters, enjoined its publication. In the second case, a U.K. court of equity, finding no significant change in a cheaply published rewrite of Dickens’ Christmas Carol from the original, ordered the “piracy” to cease pending trial. For further analysis, see Mark Rose, Dickens v. Lee (1844): A Christmas Tale of Two Experts Testifying, Cardozo Arts and Entertainment Law Journal, vol. 41 (2023), 227.
[34] See eBay Inc. v. MercExchange, 547 U.S. 388, 393 (2006), citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10 (1994). Here the U.S. Supreme Court stressed equitable criteria for issuing injunctions in cases of intellectual property, invoking the argument in its prior opinion, which it cited, that “the goals of the copyright law [...] are not always best served by automatically granting injunctive relief” and that in some hard cases “the copyright owner's interest may be adequately protected by an award [...] for whatever infringement is found.”
[35] For
critical analysis, see Paul Edward Geller, Opening
Dialogue on Intellectual Property, in Juriste
sans frontières: Mélanges Ejan Mackaay, ed. Stéphane Rousseau (Éditions
Thémis, 2015), 341, esp. 370-80.
[36] As explained under our second principle, performers at times author creative versions of prior works. But when de minimis samples from one recorded performance are released to the public as taken into another, without threatening the market for the prior performance, there is no obvious need to enjoin dissemination of the latter. See, e.g., VMG Salsoul v. Ciccone, 824 F.3d 871 (9th Cir. 2016). The U.S. appellate court here applied an “audience” test to refuse relief in a case of sampling.
[37] For
another analysis, see Wendy J. Gordon, Of
Harms and Benefits: Torts, Restitution, and Intellectual Property, Journal
of Legal Studies, vol. 21 (1992), 449.
[38] See Warner Brothers Pictures, Inc. v. Columbia Broadcast System, Inc., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955). The U.S. appellate court here allowed Hammett to elaborate the main character of The Maltese Falcon in sequels, though he had contractually alienated copyright in this novel, in particular to authorize filming it. Our seventh principle favors the restrictive construction of such contracts.
[39] See, e.g., Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45 (2d Cir. 1939), affirmed, 309 U.S. 390 (1940). The U.S. appellate court here held that plaintiff may share in defendant’s gains imputable to taking what is protected in the former’s play into a film, but found that the latter’s contributions to the success of its film, for example, its costs apportionable to development or distribution, may be factored out.
[40] For illustrative analysis of conceptions of “creativity” in flux, see Umberto Eco, Innovation & Repetition: Between Modern & Postmodern Aesthetics, Daedalus, vol. 134, no. 4 (2005), 191. For critical analysis of current legal commentary on point, see Julie E. Cohen, Creativity and Culture in Copyright Theory, U.C. Davis Law Review, vol. 40 (2007), 1151.
[41] See, e.g., Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1263-68 (10th Cir. 2008); Gray v. Hudson, 28 F.4th 87, 97-102 (9th Cir. 2022). U.S. appellate courts declined to protect, in one case, computer models simulating already existing automobiles and, in the other, a common “ostinato” in music, finding it “rooted in the genre’s tradition” and contextualized in a “manifestly conventional arrangement.”
[42] See, e.g., Acohs Pty. Ltd. v. Ucorp Pty. Ltd., [2010] FCA 577, esp. paras. 53-61 and 81-85. The Federal Court of Australia here recognized no copyright in machine-generated code configuring information on computer screens, refusing both to deem programmers of any underlying system to be “authors” of its outputs and to find discrete data to make up any “work.”
[43] Arguably, claims for equitable relief, if need
be with bases outside copyright law, could be raised for feeding protected
works into computerized devices simulating texts or images. But see, e.g., Andersen v.
Stability AI Ltd., Case 23-cv-00201-WHO (N.D. Cal. Oct. 30, 2023). The U.S.
trial court held such claims, notably for unfair competition, preempted as
pleaded.
[44] On the one hand, our first principle disfavors enjoining any derivative work insofar as it is creatively drawn from the work at issue. On the other hand, our second principle disentangles rights at the interface between copyright and industrial property. We presuppose such analyses, delimiting rights, in considering exceptions and other limitations to authors’ rights here.
[45] Pitfalls await outside copyright law. For example, for one party to disseminate another’s expression licitly, must this other party have already publicly released it or agreed to such release, waiving her right to privacy? See, e.g., HRH Duchess of Sussex v. Associated Newspapers Ltd., [2021] EWCA Civ 1810, esp. paras. 99-103. The U.K. court of appeal here upheld judgment against unauthorized publishers of family letters. It imposed no copyright exception or limitation allowing dissemination.
[46] For analysis of transaction costs prompting copyright exceptions, see Wendy J. Gordon, On the Economics of Copyright, Restitution and “Fair Use”: Systemic Versus Case-by-Case Responses to Market Failure, Journal of Law and Information Science, vol. 8 (1997), 7, esp. 20-21. As hinted there and argued under our fifth principle here, transaction costs also arise out of hard cases when lawmakers tinker with rules of thumb, like those for “fair use,” that fail to guide laypeople.
[47] Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), art. 13 (1994, as part of the Agreement Creating the W.T.O.). The criteria set out in this treaty provision posit desiderata for public legislation. They hardly seem appropriately formulated to govern private parties’ decisions.
[48] Article 10(1) of the Berne Convention allows “quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose [...]”: such uses may be construed to encompass many exempted here. For another analysis, see Tanya Aplin and Lionel Bently, Displacing the Dominance of the Three-Step Test: The Role of Global Mandatory Fair Use, in The Cambridge Handbook of Copyright Limitations and Exceptions, eds. Shyamkrishna Balganesh, Ng-Loy Wee Loon, and Haochen Sun (Cambridge University Press, 2021), 37.
[49] For critical analyses of exceptions predicated on “balancing” such factors case by case, see David Nimmer, “Fairest of them All” and Other Fairy Tales of Fair Use, Law and Contemporary Problems, vol. 66 (2003), 263; Richard Epstein, Sequential Uses of Copyrighted Materials: Transforming Transformative Use Doctrine in Andy Warhol Foundation v. Goldsmith, Michigan State Law Review, vol. 2022 (2023), 1041.
[50] Common sense might falter in hard cases, notably
of parodies that unusually distort prior works. Under our sixth
principle, the legally protected interest in freedom of expression may
still justify limiting relief. See, e.g.,
Tom
Jensen v. Edvard Eriksens Arvinger, Højesteret, Case no. BS-24506/2022-HJR,
May 17, 2023, translated in [2023] E.C.D.R. 417. Here the Supreme
Court of Denmark, in cases of images of the sculpture of the Little Mermaid, one masked against the
COVID infection and the other with a “zombie-like face,” denied relief for
infringement. To the extent that these changes were mundane, the exception for
parody, subject to common sense, may have sufficed to excuse the “copies.” With
a nod to E.U. case law, the court also invoked the interest in freedom of
expression.
[51] See, e.g., the Eidgenössische Technische Hochschule Zürich decision, ATF 140 III 616, Nov. 28, 2014, esp. 625-29. The Swiss Federal Tribunal here allowed a public service to send entire articles to private parties, without regard for their purposes, but subject to remunerating rightholders.
[52] For another analysis, see Justin Hughes, Fair Use Across Time, U.C.L.A. Law Review, vol. 50 (2003), 775.
[53] Plon S.A. c. Pierre Hugo, Cass., 1e ch. civ., no. 04-15.543, Jan. 30, 2007, R.I.D.A., no. 212 (2007), 249, followed, Cour d’appel, Paris, 4e ch., Dec. 19, 2008, R.I.D.A., no. 220 (2009), 444. The French Supreme Court overturned a decision on point for violating treaty-recognized “creative freedom” and for failing to specify how sequels “altered” the classic work or led to confusion about “authorship.” On remand, relief was refused.
[54] For analysis of trends in global regimes, see
Laurence R. Helfer, Human Rights
and Intellectual Property: Mapping an Evolving and Contested Relationship,
in The Oxford Handbook of Intellectual Property Law, eds. Rochelle C.
Dreyfuss and Justine Pila (Oxford University Press, 2018), 117.
[55] See, e.g., Queneau c. Boue, Trib. Gr. Instance, réf., Paris, June 10, 1997, J.C.P. 1997, II, 22974, translated in [2000] E.C.D.R. 343; Flavus v. Russia, Eur. Ct. H.R., 3rd sect., June 23, 2020, App. nos. 12468/15, et al. In the former case, a French court declined to enjoin a research team from sharing copyright-protected texts in their privately firewalled intranet. In the latter case, the European Court of Human Rights ruled that blocking entire websites, beyond contents that the law clearly precluded from releasing, disproportionately impaired web-posters’ freedom of expression and the public’s access to information.
[56] See,
e.g., the Germania
3 decision, BVerfG, 1 BvR 825/98, June 29, 2000, GRUR 2001, 149; Opéra de
Munich c. Gilles Bernanos, Cass., 1e ch.
civ., nos. 15-28.467 and 16-11.759, June 22, 2017, Juris-Data no. 2017-012338. In the initial decision, the German
Constitutional Court, invoking “artistic freedom,” as recognized in the German
“Basic Law,” and stretching the copyright exception for excerpts, dissolved an
order barring the publication of a drama which “collaged” extensive “quotes”
from Brecht’s plays. In a later case, the French Supreme Court, “equilibrating”
treaty-assured “creative freedom” with authors’ moral rights, overturned an
injunction stopping the dissemination of a “staging” which retained the music
and text of an opera but resituated its final scene.
[57] The Alcolix and Asterix-Persiflagen decisions, BGH, I ZR 263/91, and I ZR 264/91,
March 11, 1993, GRUR 1994, 191,
translated in I.I.C., vol. 25 (1994), 605. The Federal Court here
directed trial courts to gauge divergences in question between parodied and
parodying works from the standpoint of readers conversant with works such as
those at issue. For analysis
distinguishing this case law from that on U.S. fair use, see Paul Edward
Geller, A
German Approach to Fair Use: Test Cases for TRIPs Criteria for Copyright
Limitations?, Journal of the
Copyright Society of the USA, vol. 57 (2010), 553, at 555-60.
[58] For other analyses, see Rebecca Tushnet, Power Without Responsibility: Intermediaries and the First Amendment, George Washington Law Review, vol. 76 (2008), 101; Orit Fischman-Afori, Online Rulers as Hybrid Bodies: The Case of Infringing Content Monitoring, University of Pennsylvania Journal of Constitutional Law, vol. 23 (2021), 351.
[59] Under this principle, we shall refine judicial standards for reviewing the enforcement of copyright online and differentiate between criteria for civil relief and for criminal sanctions.
[60] This issue may be distinguished from: Who has standing to sue? See Paul Edward Geller, International Copyright: The Introduction, § 6[2][a], in International Copyright Law and Practice, ed. Lionel Bently (LexisNexis, 2018).
[61] Consensus on the spot may be bolstered by
norms, such as rules assuring freedom from coercion, that are applicable
locally or across borders. For further analysis, see Gralf-Peter Calliess, The
Making of Transnational Contract Law, Indiana
Journal of Global Legal Studies, vol. 14 (2007), 469.
[62] Analytically, this distinction simplifies a miscellany of hard cases. For examples, notably multiplayer-online games, see Kim Barker, MMORPGing – The Legalities of Game Play, European Journal for Law and Technology, vol. 3 (2012), 1; Shani Shisha, Fairness, Copyright, and Video Games: Hate the Game, Not the Player, Fordham Intellectual Property, Media & Entertainment Law Journal, vol. 31 (2021), 694.
[63] See Axel Metzger, Transnational Law for Transnational Communities: The Emergence of a Lex Mercatoria (or Lex Informatica) for International Creative Communities, Journal of Intellectual Property, Information Technology and Electronic Commerce Law [JIPITEC], vol. 3 (2012), 361.
[64] For theoretical analysis, see Paul Edward Geller, Preassignments of Creators’ Rights: An Adhesion Analysis, COMM/ENT, A Journal of Communications and Entertainment Law, vol. 2 (1979), 1. For current practice, see Orly Lobel, The New Cognitive Property: Human Capital Law and the Reach of Intellectual Property, Texas Law Review, vol. 93 (2015), 789.
[65] In closing our fifth principle, we noted that equitable remuneration may be due creators for some exempted uses.
[66] For specific analysis of this shift, see Ruth Towse, Dealing with digital: the economic organisation of streamed music, Media, Culture & Society, vol. 42 (2020), 1461.
[67] Interests arising from reasonable reliance may be protected, for example, by equitable licenses. For another analysis, see F. Jay Dougherty, Not a Spike Lee Joint? Issues in the Authorship of Motion Pictures Under U.S. Copyright Law, U.C.L.A. Law Review, vol. 49 (2001), 225, esp. 313-34 passim.
[68] For critical analysis, see Andrew deWaard, Financialized Hollywood: Institutional Investment, Venture Capital, and Private Equity in the Film and Television Industry, Journal of Cinema and Media Studies, vol. 59 (2020), 54.
[69] For sample analyses, see Centre National de la Musique, Étude relative à l’impact du passage à l’UCPS par les services de musique en ligne, assisted by Deloitte France (Jan. 2021); Edona Elshan, Christian Engel, and Philipp Ebel, Opening the Black Box of Music Royalties with the Help of Hybrid Intelligence, Proceedings of the 54th Hawaii International Conference on System Sciences (2021), 5525; Shuwen Qu, David Hesmondhalgh, and Jian Xiao, Music streaming platforms and self-releasing musicians: the case of China, Information, Communication & Society, vol. 26 (2023), 699.
[70] Statutes may preclude transfers of certain rights. See, e.g., the Verlegeranteil decision, BGH, I ZR 198/13, April 21, 2016, GRUR 2016, 596, translated in I.I.C., vol. 48 (2017), 98. The German Federal Court here barred a collecting society from diverting inalienable authors’ royalties to publishers.
[71] See, e.g., Griggs Group Ltd. v. Evans, [2004] EWHC 1088 (Ch), affirmed, Griggs Group v. Raben Footwear, [2005] EWCA Civ 11. In this case, an author granted a first party copyrights respectively effective at home and abroad and later purportedly assigned such rights formally to a second party who had notice of the prior transfer. A U.K. court of equity enforced the transfer of domestic and foreign copyrights to the first party as against the second, citing British and foreign rules on point.
[72] For critical analysis of distinct U.S. recordation regimes in international contexts, see Raymond T. Nimmer and Lorin Brennan, Modernizing Secured Financing Law for International Information Financing: A Conceptual Framework, Houston Business and Tax Journal, vol. 6 (2005), 1.
[73] For analysis of conflicts of laws bearing on
copyright transfers, see Paul Edward Geller, International
Copyright: The Introduction, §§ 6[2][b]-[c] and 6[3], in International Copyright Law and Practice,
ed. Lionel Bently (LexisNexis, 2018).
[74] But see, e.g., Berklee Institute for Creative Entrepreneurship, Fair Music: Transparency and Money Flows in the Music Industry (2015). This report indicates how market leverage has enabled media enterprises to obfuscate data pertinent to remunerating creators for online access to their music.
[75] See, e.g., the Magill decision, Radio Telefis Eireann (RTE) and Independent Television Publications Ltd. (ITP) v. Commission of the European Communities, E.C.J., Joined Cases C-241/91 P and C-242/91 P, April 6, 1995, paras. 47-58 and 90-101, ECLI:EU:C:1995:98. The European Court of Justice here confirmed that television stations, dominating a specific marketplace, had to license a television-guide service to publish their program listings on reasonable terms.
[76] For another analysis, see Tun-Jen Chiang, Trolls and Orphans, Boston University Law Review, vol. 96 (2016), 691, esp. 708. Arguably, estoppel or another equitable defense could preclude at least injunctive relief against posting works online that copyright holders have otherwise left unavailable to the public, for example, by taking “back-listed” works off the market.
[77] See, e.g., the Perlentaucher decision, BGH, I ZR 12/08, Dec. 1, 2010, GRUR 2011, 134, translated in I.I.C., vol. 42 (2011), 978; TuneIn Inc. v Warner Music UK Ltd., [2021] EWCA Civ 441. In the former case, the German Federal Court remanded for sorting out infringement on a site aggregating excerpts of protected materials. In the latter, the U.K. Court of Appeal confirmed an online platform’s liability for knowingly enabling the unlicensed dissemination of protected music for profit.
[78] Our ninth principle guides regulating computerized devices for enforcing copyright across more or less global networks. It predicates a regime which, protecting basic interests in privacy, free expression, and open information, entails laws that may vary in applying territorially. Our last, tenth principle outlines a regime for resolving conflicts of copyright laws arising in cross-border infringement. These distinct regimes might not always mesh well, at times triggering hard cases.
[79] For another analysis, see Alexander Peukert, Transnational Intellectual Property Governance on the Internet, in The Law of Global Digitality, eds. Matthias Kettemann, Alexander Peukert, and Indra Spiecker gen. Döhmann (Routledge, 2022), 50.
[80] See, e.g., Stevens v. K.K. Sony Computer Entertainment, [2005] HCA 58, paras. 45-47. The Australian High Court here refused to bar the circumvention of technical measures that prevented users from changing how they played computer games. The court sought “to avoid” extending “the copyright monopoly rather than match it,” especially given the “penal character” of the statutory regime, which was later amended.
[81] For sample
analyses of pertinent media and market shifts, see Stefan
Larsson, et al., Law,
Norms, Piracy and Online Anonymity –
Practices of de-identification in the global file sharing community,
Journal of Research in Interactive Marketing, vol. 6, no. 4 (2012), 260;
Jonathan M. Barnett, The
Costs of Free: Commoditization, Bundling and Concentration, Journal of
Institutional Economics, vol. 14 (2018), 1097.
[82] See, e.g., UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH, C.J.E.U., 4th ch., Case C-314/12, March 27, 2014, esp. paras. 56-57, ECLI:EU:C:2014:192. Here the E.U. Court of Justice left internet services some margin of discretion to sift out materials illicitly posted online, while it contemplated procedures for questioning such measures as overreaching.
[83] For analysis of ensuing tensions, especially in E.U. law, see Luca Belli and Cristiana Sappa, The Intermediary Conundrum: Cyber-Regulators, Cyber-Police or Both?, Journal of Intellectual Property, Information Technology and Electronic Commerce Law [JIPITEC], vol. 8 (2017), 183.
[84] For examples, see Jeremy Wade Morris, Music Platforms and the Optimization of Culture, Social Media+ Society, vol. 6, no. 3 (2020). Arguably, human creators’ or disseminators’ constitutionally protected interests in free expression do not extend to fully automated outputs. For further analysis, see Dan L. Burk, Asemic Defamation, or, the Death of the AI Speaker, First Amendment Law Review, vol. 22 (2024) (forthcoming).
[85] For critical analysis, see Guido Westkamp, Two Constitutional Cultures: Technological Enforcement and User Creativity: The Impending Collapse of the EU Copyright Regime?, International Review of Intellectual Property, and Competition Law [I.I.C.], vol. 53 (2022), 62.
[86] For critical analyses, see Annemarie Bridy, Copyright’s Digital Deputies: DMCA-Plus Enforcement by Internet Intermediaries, in Research Handbook on Electronic Commerce Law, ed. John A. Rothchild (Edward Elgar, 2016), 185; João Pedro Quintais, et al., Copyright Content Moderation in the European Union: State of the Art, Ways Forward and Policy Recommendations, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 55 (2024), 157.
[87] For analyses in copyright contexts, see Jonathan Griffiths, Criminal Liability for Intellectual Property Infringement in Europe: The Role of Fundamental Rights, in Criminal Enforcement of Intellectual Property, ed. Christophe Geiger (Edward Elgar, 2012), 191; Laura Tammenlehto, Copyright and Trademark Crimes in the Nordic Countries: Analysis from the Perspective of the Principle of Legality, Bergen Journal of Criminal Law and Criminal Justice, vol. 8 (2020), 18.
[88] But punitive provisions all too often vary opportunistically in laws of intellectual property. For another analysis, see Irina D. Manta, Explaining Criminal Sanctions in Intellectual Property Law, Journal of Law & Innovation, vol. 1 (2019), 16.
[89] Under our eighth principle, we broached conflicts of laws applicable to transfers of copyrights that are effective in different countries. For analysis of “pan-E.U.” rights, these arguably muddling conflicts and transfer issues, see Mireille M. M. van Eechoud, Territoriality and the Quest for a Unitary Copyright Title, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 55 (2024), 66, esp. 70-76.
[90] Under our sixth
principle, overriding laws assuring basic interests, as in privacy, free
expression, or open information, may come to bear on enforcing copyright laws
in cross-border cases. How to resolve tensions arising between such higher
laws, on the one hand, and applicable copyright laws in conflict, on the
other hand? For analysis, see Paul Edward Geller, The Celestial Jam
Session: Creative Sharing Online Caught in Conflicts of Copyright Laws,
European Intellectual Property Review
[E.I.P.R.], vol. 37 (2015), 490.
[91] For further analysis of sorting out such conflicts of laws, see Paul Edward Geller, International Copyright: The Introduction, §§ 1[3][c] and 3[1], in International Copyright Law and Practice, ed. Lionel Bently (LexisNexis, 2018).
[92] Our hypothetical here varies the scene in Diva, the film Jean-Jacques Beineix directed (1981), in which a “bootleg” recording is made of the performance of an operatic aria.
[93] See U.S. Copyright Act, 17 U.S. Code §§ 101 and 102(a) (Dec. 2022). The definition here calls for an “embodiment” which, made “by or under the authority of the author,” can be “communicated for a period of more than transitory duration.”
[94] See, e.g., London Film Productions Ltd. v. Intercontinental Communications, Inc., 580 F. Supp. 47 (S.D.N.Y. 1984); Levitin v. Sony Music Entertainment, 101 F. Supp. 3d 376 (S.D.N.Y. 2015). In the prior case, at a time when the United States did not yet belong to the Berne Union, a U.S. trial court took jurisdiction over a suit for infringement abroad and, invoking Berne provisions, contemplated applying foreign copyright laws to such infringement. In the later case, while local uses were licensed, the U.S. trial court took on a suit to apply foreign copyright laws to infringement abroad.
[95] Forum-shopping has dubious mixes of reasons. Courts may vary, inter alia, in taking jurisdiction, in resolving conflicts of laws, and in granting relief. For example, some judges might hesitate to issue orders calling for enforcement abroad, and U.S. juries may assess awards. For critical analysis of “territoriality” here, see Paul Edward Geller, International Intellectual Property, Conflicts of Laws, and Internet Remedies, Journal of Intellectual Property Rights (NISCAIR), vol. 10 (2005), 133. For guidelines for lawyers, see Paul Edward Geller, How to Practice Copyright Law Internationally in Perplexing Times, Journal of the Copyright Society of the USA, vol. 60 (2013), 167, esp. 182-99; Marketa Trimble, The Territorial Discrepancy Between Intellectual Property Rights Infringement Claims and Remedies, Lewis & Clark Law Review, vol. 23 (2019), 501.
[96] Article 5(1) of the Berne Convention (Paris, 1971) assures authors of nationally effective rights, bolstered by Berne minimum rights, “in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin” of whatever work is at issue.
[97] The treaty regime has harmonized copyright laws by formulating minimum rights in open-ended notions. See Paul Edward Geller, Legal Transplants in International Copyright: Some Questions of Method, U.C.L.A. Pacific Basin Law Journal, vol. 13 (1994), 199. We have here tried to define our core right in remedial terms to tighten up such notions.
[98] For another analysis, putting jurisdictional and choice-of-law trends to the test of increasingly complex cases online, see Eleonora Rosati, The Localization of IP Infringements in the Online Environment: From Web 2.0 to Web 3.0 and the Metaverse, a WIPO study (Sept. 2023), esp. 31-35.
[99] For more of such Marxist surrealism, more on
point, see Groucho Marx, On
copyright and Warner Brothers (1946).
[100] For a realist analysis of how “trouble-cases” can put settled law into question, see Karl N. Llewellyn, The Normative, the Legal, and the Law-Jobs: The Problem of Juristic Method, Yale Law Journal, vol. 49 (1940), 1355, at 1359-67 passim.
