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The Lost Tradition of Fair Use in English and Colonial Copyright Law, Comments on Ariel Katz, Fair Use 2.0

Ariel Katz, Fair Use 2.0: The Rebirth Of Fair Dealing In Canada (Draft, Jan. 24, 2013)

In previous work I have highlighted the English origins of the modern fair use doctrine in abridgement cases from 1710 to 1841 (“The Pre-History of Fair Use” (2011) 76:4 Brooklyn Law Review 1371). The question that I failed to address is, if fair use was part of the English copyright law tradition, why do England and her former colonies now adhere to a much narrower concept of fair dealing? Ariel Katz’s new paper gives us some answers this question.

Conventional wisdom holds that in Commonwealth jurisdictions like England, Australia, New Zealand and Canada fair dealing cannot apply beyond the explicitly enumerated purposes. In the U.S. by contrast, the statutory purposes are just illustrations. Thus we are left with (in Katz’s words) an “omnipresent flexible fair use regime in the United States, and a seemingly rigid and restrictive fair dealing tradition in the Commonwealth countries.”

Katz’s bold claim is that the conventional wisdom is wrong!

“…the history of fair use and fair dealing and shows that … the enactment of the Imperial Copyright Act of 1911 [was] not designed to cause any major alteration in the common law of fair dealing, and the explicit recognition of five enumerated purposes in the (then) newly-enacted fair dealing provision was not intended to limit the principle of fair dealing exclusively to those five purposes.” (page 3)

Katz makes a strong argument that University of London Press, Ltd. v. University Tutorial Press, Ltd. (1916), 2 1916 Ch 601, the first reported case on the newly enacted English “fair dealing” provision of the 1911 Copyright Act may have been misread over the years. But I think that the strongest parts of the paper are his treatment of the legislative history of the 1911 Act and its contemporary reception.

The legislative history of the Imperial Copyright Act of 1911

The 1911 Act provided that: “Any fair dealing with any work for the purposes of private study, research, criticism, review, or newspaper summary” shall not constitute an infringement of copyright. Arguing that there was indication in the legislative history that the 1911 Act was meant to curtail fair use or freeze it in time. Katz has studied the introduction of the bill in Parliament and the House of Lords, he notes (at page 26) that

“If the Bill contemplated major reform with respect to fair dealing, it would have been expected that such change would be mentioned, but it was not. Nor did Viscount Haldane, who introduced the Bill to the Lords, mention any contemplated change with respect to fair dealing.”

Quite the contrary, Viscount Haldane in the House of Lords stated:

“All we propose to do is to declare that for the future the principle of fair dealing which the Courts have established is to be the law of the Code. … The principle of fair dealing is a principle which the Courts have applied with the greatest care. … All that is done here is to make a plain declaration of what the law is and to put all copyright works under the same wording.”

Why codify fair dealing if no change to fair use was intended?

Katz notes (page 25) that

“a simple explanation [for the codification of fair dealing] might be that since the 1911 Act was mainly a project of consolidation of different acts and codification of different common law rules, it seemed prudent not to leave fair use without any statutory basis. … Another explanation … if the Act only recognized the expansion of the copyright but remained silent about limitations to those expanded rights, court might have interpreted that as a signal that Parliament had decided to abolish fair use.”

Katz argues that it is even possible that the fair dealing provisions in the 1911 Act may even have been an attempt to expand fair use.

“… it is possible that the purpose of specifying the five categories was not only to remove any doubts that fair dealing applied to those already recognized in the case law, but also to ensure that it applied to those who lacked solid grounding in the case law. In particular, the addition of ‘newspaper summary’ and ‘private study’, categories that had no direct precedent in the case law, can support this explanation.” (pages 25-26).

Reaction of Treatise Writers

Katz also does a wonderful job of surveying the contemporary reaction of copyright treatise authors to the 1911 Act. He summarizes (at page 30)

“… if by enacting the fair dealing provision Parliament had intended to modify the existing doctrine of fair use by confining it to five enumerated categories exclusively, most of the contemporaneous commentators failed to notice that intention.”

Some examples lifted from Katz’s paper:

J.M. Easton, Copinger on Copyright, 5th edition.

“[a]ny fair dealing, with, any work for the purposes of private study, research, criticism, review, or newspaper summary is also expressly permitted by the Act.”

“fair dealing for other purposes has always been … permitted and, presumably, it was not intended to cut down the rights of fair user previously enjoyed under the old law.”

JB Richardson, The Law of Copyright (London: Jordan & Son, 1913)

“The passing of The Copyright Act, 1911, has completely recast the Law of Copyright, at any rate those parts which depend primarily on Statute Law, such as the term of protection and ownership of copyright. Only those parts of the law which are practically judge-made—such as the questions as to infringement by a new work other than an exact copy—have remained to any great extent unaltered, and even they are not untouched.”

LCF Oldfield, The Law of Copyright (London: Butterworth & Co., 1912)

“[w]hat is fair dealing with a work depends upon the circumstances of each particular case”

How did the restrictive view of the 1911 Act come to dominate?

In terms of copyright law treatises, Katz’s research indicates that “[t]he view that Parliament had intended to restrict fair dealing to the five enumerated purposes began appearing later. … In 1927, the sixth edition of Copinger was published. This edition was no longer authored by Easton, but penned by F. E. Skone James and published by a different publisher.” (page 30)

Katz argues that University of London case of 1916 which is treated as confirming the narrow scope of fair dealing has long been misunderstood. If he is correct, what deserves further exploration is why such a misunderstanding should have taken such firm hold of copyright law in England, Australia, New Zealand … and until recently, Canada.

 

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Embracing the Digital Economy – the 2013 Australian Digital Alliance Copyright Forum

The Australian Digital Alliance will hold its 2013 annual copyright forum, ‘Embracing the Digital Economy: creative copyright for a creative nation’. The forum will considers how Australia’s copyright framework fits in with the ‘digital world’. A timely contribution given that the Australian Law Reform Commission is in the middle of an Inquiry into Australia’s copyright framework, to determine whether existing exceptions are adequate and appropriate in the digital environment.

Australia’s copyright framework has not kept pace with technology or society. The digital age has profoundly changed to the nature of creation and distribution. The divide between ‘producers’ and ‘consumers’ has been blurred in some cases and eliminated all together in others. The production and distribution of creative works is more democratic and more chaotic than ever before.

The ADA forum explores a variety of new technologies, business models and education and cultural services being provided online, and how they fit into our existing copyright framework.

I am honored to be presenting one of the keynote addresses at this important event. The other keynote will be New Zealand internet law expert and District Court Judge David Harvey. I plan to discuss the results of my empirical study of fair use litigation, Predicting Fair Use.

This year’s forum takes place at the National Portrait Gallery in Canberra on Friday 1 March 2013 from 8:30am – 4:30pm, with pre-forum drinks on the evening of Thursday 28 February at the National Library of Australia.

More info is available at http://digital.org.au/content/2013-australian-digital-alliance-copyright-forum

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2012 Global Congress on Intellectual Property and the Public Interest #gcongress

The Global Congress on Intellectual Property and the Public Interest is part of an attempt to define a positive agenda for policy reform in IP by building a global network of scholars and advocates.

I attended the Congress as part of the “Global Network on Copyright Limitations and Exceptions” an international group of copyright law experts that is drafting a set of exceptions and limitations to copyright law that (ideally) any country to use to modernize its law, comply with international obligations such as the Berne Convention and TRIPs and take advantage of the under-utilized flexibility those agreements allow. Our objective is

“to promote discussion of employing ‘open-ended’ limitations in national copyright legislation” and to support “the development of binding international agreements providing for mandatory minimum limitations and exceptions.”

Our view is that balancing mechanisms and user rights are an integral part of the copyright policy, not an afterthought.

We were also extremely privileged to have a whole day of private meetings with Marcos Souza, Head of Copyright, Brazil Ministry of Culture. In this meeting members of the L&E Network discussed proposals to amend Brazil’s copyright with Brazilian copyright scholars and officials.

  • Model Flexible Use Clause, Version 4.0 (PDF)
  • Introduction to Text (PDF)
  • Appendix I: Presumptively Lawful Purposes (PDF)
  • Appendix II: Examples of Flexible Limitations and Exceptions from Existing and Proposed Laws (PDF)
  • Appendix III: Responding to Frequently Asked Questions About Flexible Use Provisions (PDF)

Sean Flynn, Michael Carroll, Peter Jaszi and Meredith Jacobs from American University have done a fantastic job coordinating this.

Other L&E Network members include: Ahmed Abdel Latif, Alberto Cerda Silva, Allan Souza, Andrew Rens, Bruno Lewicki, Carlos Affonso, Carolina Botero, Caroline Ncube, Denis Barbosa, Gwen Hinze, Hong Xue, Jennifer Urban, Jonathan Band, Leon Felipe Sanchez Ambia, Matthew Sag, Niva Elkin-Koren, Oliver Metzger, Pedro Mizukami., Pedro Paranagua, and Pranesh Prakash.

These people are all awesome!

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The Authors Guild Does Not Speak for Academic Authors

Academic authors are being asked to stand by an watch as the Authors Guild litigates against their wishes and interests, but supposedly on their behalf.

This hubris is not exactly unprecedented. The plaintiffs in Hansberry v. Lee 311 U.S. 32 (1940) sought to enforce a racially restrictive covenant on behalf of a broad class of landowners including African-American’s who would be harmed by enforcement and whites who simply objected. Like the land-owners in Hansberry many academic authors disagree with Authors Guild’s crusade against book digitization. The Supreme Court did not allow the plaintiffs to hijack the class in Hansberry, hopefully the Second Circuit will not allow the Authors Guild to do so in Authors Guild v. Google. 

Pamela Samuelson and David Hansen (both of the University of California, Berkeley – School of Law) have filed a very important amicus brief on behalf of over 150 academic authors* in the Second Circuit Court of Appeals in Authors Guild v. Google. (Available on ssrn)

The brief in support of defendant-appellant Google argues that class certification should have been denied by the District Court because the named plaintiffs don’t represent the interests of academic authors who comprise a large proportion of the class.

The Authors Guild cloaks its lawsuit in the mantel of authorship, yet in reality it represents only a small fraction of the the class it has constructed. Most of the books that Google scanned from major research library collections were written by academics.

The basic problem is that the three individual plaintiffs who claim to be class representatives are not academics and do not share the commitment to broad access to knowledge that predominates among academics.

The plaintiffs’ request for an injunction to stop Google from making the Book Search corpus available would be harmful to academic author interests. The only way for the interests of academic authors to be vindicated in this litigation, given the positions that the plaintiffs have taken thus far, is for Google to prevail on its fair use defense and for the named plaintiffs to lose.

As we explained in the Digital Humanities Amicus Brief in the district court, “[m]ass digitization, like that employed by Google, is a key enabler of socially valuable computational and statistical research (often called “data mining” or “text mining”),”  which allows researchers to discover and use the non-copyrightable facts and ideas that are contained within the collection of copyrighted works themselves.

The Authors Guild are bad representatives of the interests of academic authors because

  1. Academic authors would generally prefer their books be findable using Google Book Search.
  2. If the Authors Guild wins, academic authors will be deprived of a valuable resource, in the form of the Google Book Search Engine and the HathiTrust Digital Library.
  3. If the Authors Guild wins, text mining — the most basic tool of the Digital Humanities — will have been declared to be prima facie illegal.
* I was one of the signatories.

 

 

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My CELS Comments on “Standards of Proof in Civil Litigation: An Experiment from Patent Law”

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“Standards of Proof in Civil Litigation: An Experiment from Patent Law” by David L. Schwartz (Chicago-Kent College of Law) and Christopher B. Seaman (Washington and Lee University School of Law)

I commented on this excellent paper at the 7th Annual Conference on Empirical Legal Studies Paper at Stanford yesterday (November 9, 2012). The authors ran an online experiment to try to parse out the effect of a recent U.S. Supreme Court case, Microsoft Corp. v. i4i Limited Partnership.

In i4i the Court held that a patent’s presumption of validity can only be overcome by clear and convincing evidence, but, the Court also explained that the jury should be instructed that it may be easier to satisfy this standard when the party challenging the patent’s validity offered evidence that was not previously been considered by the U.S. Patent & Trademark Office.

The experiment tested the same fact pattern on 500 respondents, assigning them into three groups. Each group was asked to apply a different standard of proof. The clear and convincing evidence standard resulted in far fewer findings of obviousness – no surprise there. But the authors main finding of interest was that a mock jury instruction directed by the i4i decision was not statistically different from the (lower) preponderance of the evidence standard explicitly rejected by the Court.

To try to understand this puzzling result, I took their data and produced some graphs to show the extent of disorder in the three experiment conditions. In the figures below, each bar is a single response. The more red on the image, the more respondents thought the patent in question was invalid due to being obvious in light of the prior art. If subjects were being consistent, all the red bars should be on the right and all black bars on the left.

[Updated and revised November 10, 2012]

 

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An Open Letter to Chicago’s Department of Business Affairs & Consumer Protection (BACP)

Dear Sirs,

I write to express my profound dismay that Chicago is considering regulating Uber out of existence. Uber is an middleman that connects limo drivers to customers in a way that is convenient, flexible and safe. The Uber rating system keeps limo drivers on their best behavior: this benefits riders, but also the wider community because safe driving saves lives!

Chicago taxis are a disgrace to our great city. I realize that the city tries to monitor drivers but it does not have the resources to pursue anything but the gravest complaints. I walk around the city every day, either with my dog or to and from my office. Almost every day without exception I see taxis driving unsafely  — running lights, not yielding to pedestrians before turning, straddling lanes, changing lanes without indicating, stopping abruptly, etc.

The mission of the BACP is to ensures a fair and vibrant market place for both businesses and consumers. Your mission is not to simply protect incumbent taxi companies from competition. If Uber is a threat, it is a threat to raise standards! One of the great things about Uber is that it empowers the passenger to monitor the driver’s performance. Drivers know this and in my experience, they lift their game accordingly. Uber is efficient. Uber is good for drivers. Uber empowers consumers. Uber saves lives. Please don’t make the mistake of protecting the status quo at the expense of consumers and competition.

Please Remove the No Measured Rates Provision.

Sincerely,

Matthew Sag
(in my personal capacity)

Associate Professor, Loyola University Chicago School of Law
Associate Director for Intellectual Property of the Institute for Consumer Antitrust Studies
Download my research at http://ssrn.com/author=461043
Follow my tweets at http://twitter.com/matthewsag
My website is www.matthewsag.com

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HathiTrust and the Future of Orphan Works

The U.S. Copyright Office is taking another look at the problem of orphan works under U.S. copyright law.

As the Copyright Office notice explains that the Copyright Office is “interested in what has changed in the legal and business environments during the past few years that might be relevant to a resolution of the problem and what additional legislative, regulatory, or voluntary solutions deserve deliberation.” Comments are due by 5:00 p.m. EST on January 4, 2013. Reply comments are due by 5:00 p.m. EST on February 4, 2013.

Assuming it is not reversed by the Second Circuit, does the HathiTrust win on October 10, 2012 take some of the urgency out of the orphan works issue? After all, digitization for non-expressive use such as text mining and building a search engine has now been confirmed as fair use. In addition, digitization in the service of expanding access for the print-disabled is also now clearly fair use.

Or, does the HathiTrust win simply set the stage for addressing general purpose expressive access to orphan works? The district court in HathiTrust did not reach the merits of the copyright claims with respect to the universities’ Orphan Works Project and gave very little signal how it would decide such an issue.

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HathiTrust Wins on Fair Use, and just about everything else

Landmark Fair Use Win

Yesterday, District Judge Harold Baer, Jr., handed down his decision in Authors Guild v. HathiTrust, a case that spins out of the long-running Google Books dispute. The decision is a landmark win for the HathiTrust, the University defendants, people with print-disabilities, Google, the Digital Humanities and, I would argue, for humanity in general.

Essential Background

The HathiTrust is a digital repository of millions scanned university library books that became available to various universities by virtue of the Google Books project.  About 3/4 of the books are still in copyright. In 2011 HathiTrust announced plans to embark on an innovative orphan works program (OWP), but dropped (or at least shelved) the plan soon after in light of criticism as to its implementation. Spurred into action by the OWP, in September 2011 the Authors Guild filed a copyright lawsuit against HathiTrust, five universities, and multiple university officials.

The Authors Guild suit alleged that library digitization for any purpose amounts to copyright infringement. The purposes specifically under attack in this case were (i) preservation; (ii) to enable non-expressive use such as conducting word searches; and (iii) to facilitating access by persons who are blind or visually impaired.

There is a key fact in this case that media reports will probably get wrong. This is not about scanning books to make extra copies for the public at large. As the Court explained, “No actual text from the book is revealed except to print-disabled library patrons at [University of Michigan].” Authors Guild v. HathiTrust, p 16. This case was about library digitization for three specific purposes, preservation, disabled access and non-expressive uses such as text searching and computational analysis.

The Score Card

Here is quick and dirty summary of the key copyright issues:

  • Digitization to provide access for the print-disabled held to be transformative use and, on balance, fair use.
  • Digitization to provide for print-disabled students held to be (i) an obligation of universities under the ADA, (ii) fair use under section 107 of the Copyright Act and (iii) enabled by section 121 of the Copyright Act.
  • Section 108 the Copyright Act was held to expand the rights of libraries, not limit the scope of their fair use rights in any way, shape or form. Given the text says “Nothing in this section . . . in any way affects the right of fair use as provided by section 107” any ruling to the contrary would have been pretty shocking.
  • Digitization to create a search index held to be a transformative use, and, on balance, fair use.
  • Alleged security risks created by library digitization — dismissed as speculative and unproven. The judge noted the strong evidence to the contrary. It is still an open question whether the risk of subsequent illegal act by a third party could ever render an initial lawful copy not fair use. The whole notion strikes me as rather odd.
  • The market effect of library digitization — the court found there was none to speak of in this case. The court rejected the CCC’s magic toll-booth arguments — i.e., there were some wild assertions about future licensing revenue that the court rejected as “conjecture”.
  • The court also notes that a copyright holder cannot preempt a transformative market merely by offering to license it.
  • The market effect of enabling print-disabled access to library books — the court found there was no market for this under-served group, nor was one likely to develop.

Did the authors Guild win anything?
Not really, but two issues could have been even worse.

  • The court held that the issue of the Orphan Works Program was not ripe for adjudication. This was inevitable in my opinion, but the judge could have added unfavorable dicta indicating that the AG had no case here either. Wisely, the judge said only what needed to be said.
  • On the issue of library digitization for the purpose of preservation, the court found that the argument that “preservation on its own is transformative is not strong.”

The Digital Humanities

The court appeared to accept the arguments in the Digital Humanities amicus brief, written by Matthew Jockers, Jason Schultz and myself with the assistance of many others. The brief extended arguments I made in Orphan Works as Grist for the Data Mill, 27 Berkeley Technology Law Journal (forthcoming) and Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009).

Following Second Circuit precedent, the court explained that

“a transformative use may be one that actually changes the original work. However, a transformative use can also be one that serves an entirely different purpose.”

The court concluded that

“The use to which the works in the HDL are put is transformative because the copies serve an entirely different purpose than the original works: the purpose is superior search capabilities rather than actual access to copyrighted material. The search capabilities of the HDL have already given rise to new methods of academic inquiry such as text mining.”

The court even cites an illustration from our brief!

“Mass digitization allows new areas of non-expressive computational and statistical research, … One example of text mining is research that compares the frequency with which authors used “is” to refer to the United States rather than “are” over time. See Digital Humanities Amicus Br. 7 (“[I]t was only in the latter half of the Nineteenth Century that the conception of the United States as a single, indivisible entity was reflected in the way a majority of writers referred to the nation.”).”

Google Ngram Visualization Comparing Frequency of “The United States is” to “The United States are”

You can reconstruct the figure on Google Ngram yourself!

The court also cites our brief for the proposition that the use of metadata and text mining “could actually enhance the market for the underlying work, by causing researchers to revisit the original work and reexamine it in more detail”

Non-expressive use is fair use

The court did exactly what the amicus briefs urged it to do. As Matthew Jockers, Jason Schultz and I argued in our recent article in Nature last week (Digital Archives: Don’t Let Copyright Block Data Mining, 490 Nature 29-30 (October 4, 2012))

“It is time for the US courts to recognize explicitly that, in the digital age, copying books for non-expressive purposes is not infringement.”

Courts have already applied this logic in internet search engine cases and in a case involving plagiarism detection software. As we hoped, Judge Baer’s ruling demonstrates that digitization for text mining and other forms of computational analysis is, unequivocally, fair use.

“Plaintiffs assert that the decisions in Perfect 10 and Arriba Soft are distinguishable because in those cases the works were already available on the internet, … I fail to see why that is a difference that makes a difference.”

This was not a close case

“Although I recognize that the facts here may on some levels be without precedent, I am convinced that they fall safely within the protection of fair use such that there is no genuine issue of material fact. I cannot imagine a definition of fair use that would not encompass the transformative uses made by Defendants’ MDP and would require that I terminate this invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA.”

 

A significant win for the National Federation for the Blind

My focus in this case has always been on the technological side, that is my academic interest. However,the most important issue in this case is not about search engines, the digital humanities or non-expressive use, it is about reading, humanity and expressive use. I am of course referring to those aspects of the decision relating to fair use and persons with disabilities.

“[m]aking a copy of a copyrighted work for the convenience of a blind person is expressly identified by the House Committee Report as an example of a fair use, with no suggestion that anything more than a purpose to entertain or to inform need motivate the copying.”

As Kenny Crews summarizes:

“The opinion provides a strong opinion about fair use as applied to serving persons with disabilities, especially when an educational institution is mandated to serve needs under the Americans With Disabilities Act.  The court goes further and resolves a long-time quandary that arose under Section 121 of the Copyright Act.  That statute permits an “authorized entity” to make formats of certain works available to persons who are visually impaired.  An “authorized entity” is one that has a “primary mission” to serve those needs.  Libraries and universities have many functions, so is that service a “primary mission”?  The court said yes.”

 

Some useful links:

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Google Book Search: Digital Humanities still needs answers

Google has settled with the publishers, but not the Authors Guild. This is good news for the Digital Humanities because it means that we may still get a substantive ruling on the big fair use question underlying the entire litigation.

Human life is short, none of us can hope to read more than a smattering of the literary record, but fortunately massive digitization efforts like those undertaken by Google allow scholars to apply large-N computerized methods to millions of works. Computational and statistical analysis of literature will be a big part of humanities research for years to come. However, legal actions like those of the Authors Guild could bar scholars from studying as much as two-thirds of the literary record.

In a comment published in Nature today [paywall] [Nature Vol. 490, pages 29–30 (04 October 2012) doi:10.1038/490029a], Matthew Jockers (an English professor), Jason Schultz (a law professor) and myself (also a law professor) explain why the the Association for Computers and the Humanities and a large group of scholars chose to file an amicus curiae brief on behalf of the digital humanities in the Authors Guild v. Google and Authors Guild v. HathiTrust cases.

In the brief we explain why U.S. courts should recognize that copying books for non-expressive purposes is not infringement.

My view is that the settlement between Google and the publishers makes such a ruling more likely because it provides further evidence that the ability to make non-expressive uses of copyrighted books works hand in hand with the commercialization of expressive uses which is what copyright law is all about.

For more on this topic, see https://matthewsag.com/projects/google-book-copyright-the-digital-humanities/