New empirical study of IP litigation in US District Courts

IP Litigation in United States District Courts: 1994 to 2014

I have just posted a new empirical study of IP litigation in US District Courts to SSRN. At the moment it has a very boring title: “IP Litigation in United States District Courts: 1994 to 2014”, but I am open to suggestions. [download it here]

What is this article about?

The article undertakes a broad-based empirical review of Intellectual Property (IP) litigation in United States federal district courts from 1994 to 2014.

Why would anyone want to read it?

Unlike the prior literature, this study analyzes federal copyright, patent and trademark litigation trends as a unified whole. It undertakes a systematic analysis of more than 190,000 individual case filings and examines the subject matter, geographical and temporal variation within federal IP litigation over the last two decades.

What is the payoff?

Well, for a start, it is full of cool graphs, figures and tables!

But if you interested in substance, I think that the article makes a number of significant contributions to our understanding of IP litigation.

  • It analyzes time trends in copyright, patent and trademark litigation filings at the national level, but it does much more than simply count the number of cases; it explores the meaning behind those numbers and shows how in some cases the observable headline data can be positively misleading.
  • Exploring the changes in the distribution of IP litigation over time and their regional distribution leads to a number of significant insights (see below).
  • Just as importantly, the article  frames the context for more fine-grained empirical studies in the future. The results demonstrate the dangers of basing empirical conclusions on narrow slices of data from selected regions or selected time periods.

Notable findings

  • The rise of Internet filesharing has transformed copyright litigation in the United States.

More specifically, to the extent that the rate of copyright litigation has increased over the last two decades, that increase appears to be entirely attributable to lawsuits against anonymous Internet file sharers. These lawsuits largely took place in two distinct phases: the first phase largely consisted of lawsuits seeking to discourage illegal downloading; the second phase largely consists lawsuits seeking to monetize online infringement.

  • In relation to patent litigation, the apparent patent litigation explosion between 2010 and 2012 is something of a mirage

However there has been a sustained patent litigation inflation over the last two decades the extent of which has not been fully recognized until now. The reason why this steady inflation was mistaken for a sudden explosion was that the true extent of patent litigation was disguised by permissive joinder.

  • The data and analysis presented in this study provides a new way of looking at the astonishing ascendancy of this district and the problem of form shopping in patent law more generally.

 In relation to the geography of IP litigation, it appears that filings in copyright, patent and trademark litigation are generally highly correlated. The major exceptions to that correlation are driven by short term idiosyncratic events in copyright and trademark litigation—these are discussed in detail—and by the dumbfounding willingness of the Eastern district Texas to engage in forum selling to attract patent litigation. The popularity of the Eastern District of Texas as a forum for patent litigation is a well-known phenomenon.


#Aereo was always doomed to fail

and today it filed for Chapter 11 bankruptcy.

I have added some final thoughts on fair use to my review of the Aereo decision. You can download the Article from ssrn at this link ( …).

The main addition to my post from a few days ago is the following paragraph:

Unlike Cablevision’s remote-DVR, Aereo was an unlikely candidate for fair use. Holding that a remote DVR is fair use would be logical extension of the Supreme Court’s 1984 Sony Betamax decision. Like a VCR, a DVR simply allows the consumer to do that which they were already authorized to do more conveniently. No doubt, Aereo would make the same argument with respect to its service, but there is one critical difference. Judge Chin’s intuition that Aereo’s design was a mere “Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act,” was spot on; however a technological contrivance should not be the foundation for a legal contrivance. The very fact of Aereo’s contrivance to avoid the public performance right is the reason why it’s fair use claim should fail. Congress amended the Copyright Act in 1976 to make the retransmission of free to air television broadcasts an additional copyright tolling point. There could not be a better argument against fair use than the fact that Aereo’s service was designed to defeat the purpose of the statute. There was no need for the Supreme Court to adopt such a tortured and opaque reading of the transmit clause of the public performance right. Aereo could have been decided as simple fair use case.

Comments on Joseph Fishman, “Creating Around Copyright” Harvard Law Review, Vol. 128, Forthcoming.

Joseph Fishman presented his forthcoming paper, Creating Around Copyright at the UCLA Entertainment, Media, and Intellectual Property Colloquium Workshop this weekend. The paper argues that rather than seeing copyright as a system of access costs that create incentives, we should recognize that copyright may actually spur additional creativity by virtue of the very constraints it establishes.

I like this paper a lot, but the treatment of copyright as a singular constraint that just varies by questions of degree seemed a bit reductionist to me. The constraints copyright imposes are in fact quite uneven. For example, the fair use doctrine privileges transformative uses, however it is much easier to be confident that a reuse that criticizes the original is transformative compared to one that is simply a new work. Thus, at the margins, copyright encourages criticism, not necessarily creativity. Furthermore, the idea-expression distinction encourages differentiation at the level of superficial characteristics, but allows the uncreative recirculation of ideas. Thus Westside Story is less likely to infringe Shakespeare’s (non-existent) copyright than is the far more creative Rosencrantz and Guildenstern Are Dead.

This is undoubtably a clever and well-written article although some of its claims to significance may be inflated. If some all-knowing accountant were to tally up the costs and benefits of copyright, it seems quite unlikely that the generativity of constraint would count for very much in the grand scheme of things.

The Uncertain Scope of the Public Performance Right After American Broadcasting Companies v. Aereo, Inc.

Professor Matthew Sag, Loyola University of Chicago School of Law.  November 18, 2014

This post is based on a summary I wrote for the ABA IP Litigation Roundtable


The Supreme Court’s recent majority decision in American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498 (2014) holds that a service allowing consumers to watch broadcast television programs over the Internet virtually simultaneously with the original over the air broadcast directly infringes the copyright owners the exclusive rights to “perform the copyrighted work publicly.”[1] The majority overrules the Second Circuit ruling in the same case,[2] and throws into doubt one of the central holdings in the Second Circuit’s Cablevision decision.[3]


Aereo’s service is just one of a long sequence of technologies raising conflicts between the interests of content owners and technology companies. In the late 1960’s and early 1970’s community antenna television (CATV) systems challenged the incumbent television broadcasters by retransmitting television signals to CATV subscribers. The CATV provider in Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968) placed antennas on hills above the cities and used coaxial cables to carry the signals received by the antennas to the home television sets of its subscribers. The CATV provider in Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974) carried broadcast television programming into subscribers’ homes from hundreds of miles away. In both these cases the Supreme Court held that the CATV systems were more like a viewer than a broadcaster and thus were not themselves engaged in a public performance.

There is no doubt that the revised definitions of what it means to perform and to perform a work publicly in the Copyright Act of 1976 were motivated in part by a desire to reverse the outcome of the CATV cases. However, the language Congress adopted to that end is anything but clear, and the actual scope of the public performance right has been a controversial question for some time.


Aereo offered consumers the ability to watch live television over the internet and to pause, rewind and fast-forward programming. Aereo provided this service by receiving free to air television signals on a vast array of micro-antennae. Each antenna was dedicated to an individual subscriber, but only when the subscriber tuned in. The receivers were thus under the subscribers’ individual control. The television signals so received were reduced to individual copies of individual programs, but only if a subscriber indicated an intention to watch the program. These copies were then transmitted to Aereo’s subscribers at their command, either in real time with a very slight lag, or asynchronously like other remote DVR services.

The Second Circuit

On appeal from the denial of a preliminary injunction, the Second Circuit held that Aereo’s system did not implicate the copyright owners’ public performance rights under the Copyright Act because each transmission was from a single fixed copy to a single end-user. Consistent with its ruling in the Cablevision remote DVR case, the Second Circuit held, although Aereo’s system may transmit any given program to a large number of end-users, Aereo did not perform publicly within the meaning of the Copyright Act because it did not transmit “to the public.” Rather, each time Aereo streamed a program to a subscriber, it sent a private transmission that was available only to that subscriber. Judge Chin dissented, arguing that “Aereo’s “technology platform” is, however, a sham. The system … is a Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act and to take advantage of a perceived loophole in the law.”

The Supreme Court

— Who is the performer?

Aereo’s service was evidently designed to take maximum advantage of the precedents holding that the provider of an automated service does not engage in the volitional conduct required for direct copyright liability.[4] There is no obvious engineering reason to give each subscriber their own micro-antenna, however, this design choice emphasizes that it is the user, not Aereo, that choses to receive the broadcast signal, transcode (or reformat) that signal, make a copy of the selected program and ultimately transmit the program by pressing the “watch” button on their internet connected device. Relying on the volitional conduct cases, Aereo argued that it was not directly liable under the public performance right because it merely provided the equipment that its subscribers used and controlled.

Writing for a six Justice majority, Justice Breyer acknowledged that

“the language of the Act does not clearly indicate when an entity ‘perform[s]’ (or ‘transmit[s]’) and when it merely supplies equipment that allows others to do so.”[5]

The majority opinion does not engage with the distinction between direct and contributory copyright liability, nor does it directly address the cases on the ‘volitional conduct doctrine’ (see more below). The majority simply holds that cable systems perform and Aereo is like a cable system, thus Aereo performs. More specifically, the majority holds that in view of the legislative history and the manifest intention of Congress to make cable retransmission services liable for copyright infringement,[6] “an entity that acts like a CATV system itself performs, even if when doing so, it simply enhances viewers’ ability to receive broadcast television signals.”[7]

This broad construction of performance does not demand a rejection of the volitional-conduct doctrine in general. Indeed, the holding may be limited to services that “act[] like a CATV system”. Even in Cablevision the court recognized that “our conclusion … that the customer, not Cablevision, ‘does’ the copying does not dictate a parallel conclusion that the customer, and not Cablevision, ‘performs’ the copyrighted work.”[8]

Justice Scalia, in dissent, argued that the expanded definition of performance under the 1976 Act was still consistent with the volitional-conduct requirement. Unlike the CATV services in Fortnightly and Teleprompter, the Aereo system did not send a constant transmission stream to its subscribers. Instead, the system remained inert until a subscriber sent the ‘watch’ command. Only then, and quite automatically, would the Aereo system activate an antenna and begin to transmit the requested program. Thus, even though both sender and receiver of a conventional broadcast could be said to ‘perform’ because both engage in an affirmative volitional act, only the user of an automated system performs when she alone initiates and receives a transmission.[9]

The majority dismissed this argument noting that the “sole technological difference between Aereo and traditional cable companies” was invisible and meaningless to Aereo’s subscribers and to Aereo itself.

But this difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into ‘a copy shop that provides its patrons with a library card.’[10]

— Public Versus Non-Public Transmissions

Aereo argued, and the Second Circuit agreed, that it did not perform the plaintiff copyright owners works “publicly,” within the meaning of the so-called ‘Transmit Clause’. In addition to the general definition of performance, the 1976 Act contains a two-part definition of what it means to “perform or display a work ‘publicly’”.[11] Subsection (1) guides courts as to where the draw the line between public and non-public places. Subsection (2) of that definition, which is generally simply referred to as the Transmit Clause, provides that an entity performs a work publicly when it “transmit[s]… a performance … of the work … to the public.”

Justice Breyer was willing to assume arguendo (although with some skepticism) that the relevant performance referred to in the Transmit Clause is not the copyright owners’ initial broadcast, but the new performance created by Aereo’s act of transmitting.

That performance comes into existence when Aereo streams the sounds and images of a broadcast program to a subscriber’s screen. … Thus, for present purposes, to transmit a performance of (at least) an audiovisual work means to communicate contemporaneously visible images and contemporaneously audible sounds of the work.[12]

Nonetheless, Justice Breyer argued that Aereo’s attempt to sidestep liability for public performance by interposing discrete copies did not distinguish its service from that of a cable system in terms of Congress’s regulatory objectives. Justice Breyer noted that the behind-the-scenes technical details of how Aereo delivered television programming to its viewers did not change Aereo’s commercial objectives or its subscribers’ user experience.[13] Traditionally copyright law has relied upon secondary liability to address attempts to evade liability that nonetheless are clearly at odds with Congress’s regulatory objectives.[14] However, the Aereo majority indicated that the defendant’s intervening user-specific copies could simply be regarded as an elaborate “device or process” by which the company made its transmissions. The majority has thus converted the broad by any “device or process” language in the Act into an anti-avoidance provision.[15]

While accepting that the relevant performance under the transmit clause was the new performance created by the act of transmission, Justice Breyer nevertheless concluded that “when Aereo streams the same television program to multiple subscribers, it ‘transmit[s] … a performance’ to all of them.”[16] The Transmit Clause indicates that that one may transmit a performance to the public capable of receiving it at the same time or at different times. For Breyer, this necessarily implies that “an entity may transmit a performance through one or several transmissions, where the performance is of the same work.”[17] Previous case law had seemed to require that for such asynchronous transmissions to be aggregated, they had to be made from the same copy of a work.[18] In contract, Justice Breyer concluded that

when an entity communicates the same contemporaneously perceptible images and sounds to multiple people, it transmits a performance to them regardless of the number of discrete communications it makes.[19]

However, Justice Breyer added an important qualification to the foregoing: whether a group of people constitutes ‘the public’ depends upon their relationship to the underlying work.

an entity that transmits a performance to individuals in their capacities as owners or possessors does not perform to “the public,” whereas an entity like Aereo that transmits to large numbers of paying subscribers who lack any prior relationship to the works does so perform.[20]

Uncertainty in the Wake of Aereo

In re Cellco Partnership,[21] the district court held that downloading a ringtone to a cell phone is a reproduction but not a public performance. The clearest implication of the Aereo decision is that the Supreme Court has maintained this distinction between downloading and streaming (the former being a copy, the latter being a performance). The majority insisted that “an entity only transmits a performance when it communicates contemporaneously perceptible images and sounds of a work.”[22] That issue aside, Aereo leaves open a wide range of follow-up questions.

Remote DVRs

1.  Most obviously, copyright owners may now wish to relitigate the legality of remote DVR services. The Second Circuit’s Cablevision decision relies on the volitional-conduct doctrine in relation to copies made at the direction of DVR subscribers and the non-aggregation of transmissions made from separate copies of the work in relation to the question of public performance. Each of these pillars may be challenged in the wake of Aereo. However, I expect that even if the reasoning changes, lower courts will not find remote DVR services liable for direct infringement. There is enough language in Aereo to limit its holding two services that are primarily focused on simultaneous retransmission.

Remote DVRs that let you pause and rewind live tv

2.  The decision also leaves open the question of services that are primarily intended to act as remote DVR’s but which could also be used for near simultaneous viewing of live television. Moreover, cable companies will take heart from the Court’s suggestion that whether a group of people constitutes the public depends upon their relationship to the underlying work. Cable services are authorized to retransmit broadcast television under the terms of a statutory license. The public at large is authorized to receive unencrypted broadcast television signals — at least within the ordinary transmission range of such signals — so it is unclear whether cable TV customers really have a different relationship to the underlying work than Aereo’s subscribers did.

Does the cloud look like a cable system?

3. More broadly, if separate asynchronous transmissions originating from distinct copies of a work are to be aggregated for the purpose of copyright’s public performance right, what does this mean for cloud computing services? The Second Circuit’s interpretation of “to the public” made it quite clear that video-on-demand services would implicate the public performance right, but that online cloud storage providers such as Dropbox and Amazon Cloud Drive would not.

The majority’s ‘looks like a cable system’ approach makes the public performance right almost incomprehensible. Is the aggregation transmissions from distinct copies limited to services directly analogous to cable retransmission? Is it limited to services engineered to avoid public performance liability? The majority’s comment that the legislative history compelled the determination that Aereo performs but that “it does not determine whether different kinds of providers in different contexts also perform” suggest either of these might be possible.[23]

What is it about cable systems that is important?

4.  If future public performance cases turn on the resemblance of an accused service to cable television, which characteristics of a cable service will courts deem to be most relevant? Justice Breyer’s decision indicates that courts will be more focused on commercial motivation and user experience than specific technical details.

Technological neutrality: effects vs. function

5.  Aereo raises fundamental questions about copyright and technology neutrality. If technological neutrality is a question of the effect of a given technology, then Aereo was, in effect, a retransmission system and thus it was, in effect, engaged in public performance. But if technologically neutrality is a question of function, then Aereo was in fact an elaborate copying service and not the originator of public performances. Like Judge Chin’s dissent at the Second Circuit Court of Appeals, Justice Breyer’s majority opinion takes an effect-based perspective. Will the Court use an effects-based approach to expand other exclusive rights under the Copyright Act?

What happened to Aereo?

On October 23, 2014, the Federal Southern District Court of New York granted an injunction against Aereo “barring Aereo from retransmitting programs to its subscribers while the programs are still being broadcast”.[24] The plaintiffs sought an injunction against Aereo’s fully time-shifted transmissions, the district court did not rule this out, but merely said it would “not reach the issue at this preliminary stage of the litigation.”


[1] 17 U.S.C. § 106(4).

[2] WNET, Thirteen v. Aereo, Inc., 712 F.3d 676 (2013).

[3] Cartoon Network LP, LLLP v. CSC Holdings, Inc. 536 F.3d 121 (2008).

[4] See Fox Broadcasting Co. v. Dish Network LLC, 747 F.3d 1060, 1066-1068 (C.A.9 2014); Cartoon Network, supra, at 130-131 (C.A.2 2008); CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 549-550 (C.A.4 2004). Religious Technology Center v. Netcom On-Line Communication Services, 907 F.Supp. 1361 (N.D.Cal.1995). See also Parker v. Google, Inc., 242 Fed.Appx. 833, 836-837 (2007) (per curiam) (3d Cir. Unpublished)

[5] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2504 (2014).

[6] The drafters of the Copyright Act of 1976 clearly intended to include both the sender and the receiver of a traditional broadcast within the definition of ‘to perform’ and thus overturn contrary Supreme Court authority. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975) (“those who listen to the broadcast through the use of radio receivers do not perform the composition”). See also Fortnightly Corp. v. United Artists, 392 U. S. 390 (1968) and Teleprompter Corp. v. CBS, 415 U. S. 394 (1974).

[7] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2506 (2014).

[8] Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F. 3d 121, 134 (2d Cir. 2008).

[9] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2512-13 (2014).

[10] Id. at 2507.

[11] 17 U.S.C. §101.

[12] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2508 (2014). If the Court had held otherwise it would have not only overturned Cablevision, but also United States v. American Soc. of Composers, Authors and Publishers, 627 F.3d 64, 73 (2d Cir. 2010) (holding that a download of a work is not a performance because the data transmitted are not “contemporaneously perceptible”).

[13] “Why would a subscriber who wishes to watch a television show care much whether images and sounds are delivered to his screen via a large multisubscriber antenna or one small dedicated antenna, whether they arrive instantaneously or after a few seconds’ delay, or whether they are transmitted directly or after a personal copy is made?” Id. at 2509-10.

[14] See e.g. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

[15] The Copyright Act aims for neutrality in that the public performance right is defined to include the right “to transmit or otherwise communicate a performance… to the public, by means of any device or process.” § 101. But it is far from clear that the “by means of any device or process” language means that non-public transmissions should be rendered into public transmissions simply because they have the same effect as technology we recognize as implicating the public performance right.

[16] Id. at 2509.

[17] Id.

[18] Columbia Pictures Industries, Inc. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984) Defendant operated a video rental store with a number small private booths. Patrons would select a film, enter the booth, and close the door. An employee would then load a copy of the requested movie into a bank of VCRs at the front of the store and push play, thereby transmitting the content of the tape to the television in the viewing booth. By showing a single copy repeatedly to different members of the public the defendant engaged in a public performance.

[19] Id.

[20] Id. at 2510.

[21] 663 F. Supp. 2d 363, 371–74 (S.D.N.Y. 2009).

[22] Id.

[23] Id.

[24] American Broadcasting Companies, Inc. v. Aereo, Inc., (SDNY 2014).

Tyler Ochoa on Flo & Eddie v. Sirius XM Radio

Professor Tyler Ochoa has written a great post explaining the implications of Flo & Eddie v. Sirius XM Radio. 

Follow this link to Eric Goldman’s blog: A Seismic Ruling On Pre-1972 Sound Recordings and State Copyright Law.

“A federal court in California has held that a California statute, Civil Code §980(a)(2), protects sound recordings fixed before February 15, 1972 against unauthorized public performance.  The ruling is a … huge victory for sound recording copyright owners and a big defeat for broadcasters, one that threatens to undo a 75-year-old consensus that state law does not provide a public performance right for sound recordings. …”

 Kienitz v. Sconnie Nation — transformative uses and derivative works. #Fairuse

Some additional thoughts on the 7th Circuit’s decision in Kienitz v. Sconnie Nation LLC, No. 13-3004 (7th Cir. Sept. 15, 2014).

Judge Easterbrook expressed some skepticism today over the Second Circuit’s decision in Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013) because …

asking exclusively whether something is “transformative” not only replaces the list in §107 but also could override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2).

Easterbrook complains that

Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).”

Ok, so let me explain.

First, Cariou and its predecessors don’t say that every transformative use is fair use. Second, more importantly, transformative use and derivative work are both important terms of art in copyright law. They are not the same thing. Nobody thinks they are.

Section 106(2) of the Copyright Act gives copyright owners an exclusive right to prepare derivative works based on the copyright owner’s original work. As defined in the statute, a derivative work takes a preexisting work and “recasts, transforms, or adapts” that work. The kind of transformations referred to here are not necessarily ‘transformative’ as that term was intended by the Supreme Court in the context of fair use. And yes, obviously, using a word that is not a stem of ‘transform’ would have helped. 

A transformative work, in the fair use sense, is one which imbues the original “with a further purpose or different character, altering the first with new expression, meaning, or message.” [Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (internal citations omitted).] Thus, the assessment of transformativeness is not merely a question of the degree of difference between two works; rather it requires a judgment of the motivation and meaning of those differences.

The difference between a non-infringing transformative use and an infringing derivative work can be illustrated as follows: if Pride and Prejudice were still subject to copyright protection, the novel Pride and Prejudice and Zombies, which combines Austen’s original work with scenes involving zombies, cannibalism, and ninjas, would be considered a transformative parody of the original, and thus fair use rather than infringement. In contrast, a more traditional sequel would merely be an infringing derivative work.

The term transformative use has been applied to cases of literal transformation where it overlaps with the kinds of manipulations that might also create a derivative work. Thus in Suntrust Bank v. Houghton Mifflin Co, substantial copying of a novel in the service of criticism was regarded as transformative.

The term transformative use has been applied to cases of copying without modification, but for a good reason. For example in  Savage v. Council on American-Islamic Relations, Inc., the Islamic organization copied and distributed anti-Islamic statements made by Michael Savage as part of a fund-raising exercise. Recontextualization without modification from one expressive context to another was seen as transformative Bill Graham Archives v. Dorling Kindersley Ltd.

In addition to these cases, courts have also found a number of non-expressive uses to be transformative. In particular, several cases have held that automated processing and display of copyrighted photos as part of a visual search engine is a transformative and thus a fair use. In A.V. v. iParadigms, LLC, the Fourth Circuit found that the automated processing of the plaintiff students’ work in defendant’s plagiarism detection software was fair use). More recently, Authors Guild v. HathiTrust (SDNY), Authors Guild v. HathiTrust (2d Cir) and Authors Guild v. Google (SDNY) held that library digitization to create a search engine was transformative use and fair use.

Maybe we would be better off with different words for all these situations. David Nimmer suggests that in the hands of some judges, transformative use has no content at all and that it is simply synonymous with a finding of fair use. According to Pamela Samuelson, a better approach would be to distinguish transformative critiques, such as parodies, from productive uses for critical commentary. Samuelson also suggests that courts should not label orthogonal uses—uses wholly unrelated to the use made or envisaged by the original author—as transformative uses. But she does think that these are good candidates for fair use.

My personal preference would be for the term transformative use to be confined to expressive uses of copyrighted works and that non-expressive use (as exemplified by search engines, plagiarism detection software, text mining, etc) should be recognized as a distinct category of preferred use. Nonetheless, transformative use is the term of art most courts use and we should probably learn to live with it.

Further Reading

  • David Nimmer, Nimmer on Copyright § 13.05[A][1]
  • Matthew Sag, Copyright and Copy-Reliant Technology, 103 Nw. U. L. Rev. 1607 (2009)
  • Pamela Samuelson, Unbundling Fair Uses, 77 Fordham L. Rev. 2537 (2009).

Even when Judge Easterbrook is right, he is wrong. #fairuse #copyright #blaaah

I have been wanting to blog about the 7th Circuit’s appalling decision in Kienitz v. Sconnie Nation LLC, No. 13-3004 (7th Cir. Sept. 15, 2014) since I read it — exactly seven twenty minutes ago. However, two fifteen minutes ago I discovered that Prof. Rebecca Tushnet (Georgetown Law) has already said most of what I wanted to say.

The case is about the transformative use of a photo. The case for transformation is pretty easy here because there is both substantive transformation (see below) and an obvious shift in purpose in that the original photo is a PR shot of politician opposed to a street party and the new use is a caricature of the same politician on tee-shirts and tank tops.


The court of appeals took this easy case as an opportunity to try to unsettle the law of fair use by casting stones at the concept of transformativeness. The court notes that  transformativeness doesn’t appear in the statute, and says it was “mentioned” it in Campbell.  What the Supreme Court actually said in Campbell was  “The central purpose of this investigation is to see  whether the new work merely supersedes the objects of the original creation,  or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.'”  Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994). (internal citations and quotations omitted)

This is a bit more than a mention.

Now I’ll just quote Rebecca:

…Having not quoted either the Supreme Court or the Second Circuit’s definition of transformativeness (which might allow one to assess whether there is too great an overlap with the derivative works right, or for that matter with the reproduction right since that’s what the majority of Second Circuit transformativeness findings deal with), the Seventh Circuit tells us to stick to the statute.  But it doesn’t tell us what the first factor does attempt to privilege and deprivilege. Instead, the court goes to its own economic lingo-driven test: “whether the contested use is a complement to the protected work (allowed) rather than a substitute for it (prohibited).”  Where this appears in the statute is left as an exercise for the reader, though by placement in the opinion we might possibly infer that it is the appropriate rephrasing of factor one, as opposed to inappropriate transformativeness (though the court later says that factor one isn’t relevant at all).  However, complement/substitute requires some baseline for understanding the appropriate scope of the copyright right—the markets to which copyright owners are entitled—just like transformativeness does.

The Seventh Circuit reached the right result, but its reasoning shallow, its disagreement with the Second Circuit is captious, and its wanton disregard of the jurisprudence of the last twenty years (beginning with the Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc) is profoundly unfortunate. These are smart judges who could have helped further develop and clarify the law, but chose not to.



Copyright and Pornography — Is now the time to panic?

There were 2004 copyright lawsuits filed in federal district courts in the United States in the period from January 1st to June 30th 2014. Just under 48% of these suits were filed by copyright owners against anonymous IP addresses accused of copyright infringement online. This is not surprising given the extent of online piracy, but what is more than a little surprising is that almost all of these lawsuits relate to pornographic films. Lawsuits alleging illegal file sharing of pornography were virtually non-existent before 2010, they now (Jan-Jun 2014) account for than 41% of all copyright suits filed.


In my talk tomorrow at the 14th Annual Intellectual Property Scholars Conference at Berkeley Law School I will address this phenomenon and answer three fundamental questions: (1) When did this happen? (2) How did it happen? and (3) Is now the time to panic?

Here are some of the slides from my talk (below), the full paper is available here (download    Copyright Trolling, An Empirical Study)







Slide10 Slide11


Why digital humanities researchers support google’s fair use defense

I posted a guest-blog over at the Authors Alliance explaining why digital humanities researchers support google’s fair use defense in Authors Guild v. Google.  The  Authors Alliance supports Google’s fair use defense because it helps authors reach readers. In my post, I explained another reason why this case is important to the advancement of knowledge and scholarship.

Earlier this month a group of more than 150 researchers, scholars and educators with an interest in the ‘Digital Humanities’ joined an amicus brief urging the Second Circuit Court of Appeals to side with Google in this dispute. Why would so many teachers and academics from fields ranging from Computer Science, English Literature, History, Law, to Linguistics care about this lawsuit? It’s not because they are worried about Google—Google surely has the resources to look after itself—but because they are concerned about the future of academic inquiry in a world of ‘big data’ and ubiquitous copyright.

For decades now, physicists, biologists and economists have used massive quantities of data to explore the world around them. With increases in computing power, advances in computational linguistics and natural language processing, and the mass digitization of texts, researchers in the humanities can apply these techniques to the study of history, literature, language and so much more.

Conventional literary scholars, for example, rely on the close reading of selected canonical works. Researchers in the ‘Digital Humanities’ are able to enrich that tradition with a broader analysis of patterns emergent in thousands, hundreds of thousands, or even millions of texts. Digital Humanities scholars fervently believe that text mining and the computational analysis of text are vital to the progress of human knowledge in the current Information Age. Digitization enhances our ability to process, mine, and ultimately better understand individual texts, the connections between texts, and the evolution of literature and language.

A Simple Example of the Power of the Digital Humanities

The figure below, is an Ngram-generated chart that compares the frequency with which authors of texts in the Google Book Search database refer to the United States as a single entity (“is”) as opposed to a collection of individual states (“are”). As the chart illustrates, it 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. This is a trend with obvious political and historical significance, of interest to a wide range of scholars and even to the public at large. But this type of comparison is meaningful only to the extent that it uses as raw data a digitized archive of significant size and scope.

The United States is/are

There are two very important things to note here. First, the data used to produce this visualization can only be collected by digitizing the entire contents of the relevant books–no one knows in advance which books to look in for this kind of search. Second, not a single sentence of the underlying books has been reproduced in the finished product. The original authors expression was an input to the process, but it was not a recognizable part of the output. This is the fundamental distinction that the Digital Humanities Amici are asking the court to preserve–the distinction between ideas and expression.

Will Copyright Law Prevent the Computational Analysis of Text?

The computational analysis of text has opened the door to new fields of inquiry in the humanities–it allows researchers to ask questions that were simply inconceivable in the analog era. However, the lawsuit by the Authors Guild threatens to slam that door shut.

For over 300 years Copyright has balanced the author’s right to control the copying of her expression with the public’s freedom to access the facts and ideas contained within that expression. Authors get the chance to sell their books to the public, but they don’t get to say how those books are read, how people react to them, whether they choose to praise them or pan them, how they talk to their friends about them. Copyright protects the author’s expression (for a limited time and subject to a number of exceptions and limitations not relevant here) but it leaves the information within that expression and information about that expression “free as the air to common use.” The protection of expression and the freedom of non-expression are both fundamental pillars of American Copyright law. However, the Author Guild’s long running campaign against library digitization threatens to erase that distinction in the digital age and fundamentally alter the balance of copyright law.

In the pre-digital era, the only reason to copy a book was to read it, or at least preserve the option of reading it. But this is no longer true. There are a host of modern technologies that literally copy text as an input into some larger data-processing application that has nothing to do with reading. For want of a better term, we call these ‘non-expressive uses’ because they don’t necessarily involve any human being reading the authors original expression at the end of the day. 

Most authors, if asked, support making their works searchable because they want them to be discovered by new generations of readers. But this is not our central point. Our point is that if it is permissible for a human to pick up a book and count the number of occurrences of the word “whale” (1119 times in Moby Dick) or the ratio of male to female pronouns (about 2:1 in A Game of Thrones Book 1—A Song of Ice and Fire), etc., then there is no reason the law should prevent researchers doing this on a larger and more systematic basis.

Game of Thrones Pronouns Etc

Digitizing a library collection to make it searchable or to allow researchers to analyze create and analyze metadata does not interfere with the interests that copyright owners have in the underlying expression in their books.

Who knows what the next generation of humanities researchers will uncover about literature, language, and history if we let them?

You can download the Brief of Digital Humanities and Law Scholars as Amici Curiae here.