Stephen Lyons, a friend and attorney at Klieman & Lyons, asked me to guest-lecture the Law & Technology class he is teaching at MIT this semester. I only had one class period, so I decided to focus on the 2014 Supreme Court Aereo case. Although the slides are not “stand-alone” they are somewhat self-explanatory. I am sharing them below.
MIT Copyright Seminar 3-13-2015 (Reduced File Size) by gesmer
The fact that the Supreme Court has asked the Obama Administration (via the Office of the Solicitor General) to comment on Google’s application for certiorari in Oracle v. Google* has focused renewed interest on this case – not that it needs it. The case, if the Supreme Court accepts it, could be a replay of Lotus v. Borland, an important software copyright case the Supreme Court tried but failed to decide in 1996, when the Court deadlocked 4-4 (one justice abstaining).
*Note: For detailed procedural and substantive back ground on this case see these earlier posts: How Google Could Lose on Appeal; Oral Argument in Oracle v. Google: A Setback for Google?; CAFC Reverses Judge Alsup – Java API Declaring Code Held Copyrightable; Google Rolls the Dice, Files Cert Petition in Oracle Copyright Case. I also made a presentation to the Boston Bar Association on this case before the CAFC decision, slides here.
The issue is this: computer software — both source code and object code — is protected by copyright law so long as it meets copyright’s statutory requirements, the most important of which, for purposes of the case discussed in this post, is originality. At issue are the 7,000 lines of “declaring code” of Oracle’s Java API software. This software was copied by Google when it implemented the Android smartphone operating system. The Java API declaring code clearly satisfies copyright law’s requirement of “originality.” The issue, therefore, is why this code should not be protected by copyright.
*Note: APIs are specifications that allow programs to communicate with each other. A computer program designed to be compatible with another program must conform to the API of the first program, which establishes rules about how other programs must communicate information so that the two programs can work together to execute specific tasks.
The argument Google has made to the Supreme Court is that the software a “method of operation”* that should be denied copyright protection?
*Note: The Copyright Act states that “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b)
This issue has bedeviled the courts in this case. A federal district court judge in California held that Oracle’s Java API was an unprotectible method of operation. The Court of Appeals for the Federal Circuit reversed, holding that copyright protects the expression of a method of operation, and therefore the Java API is protected by copyright.
Now the software industry and copyright lawyers are eager to learn whether the Supreme Court is likely to accept review of this case, and the Court’s request that the Obama Administration weigh in thickens the plot by suggesting that the Court is giving Google’s appeal serious consideration.
The Supreme Court takes about 1% of the petitions filed with it, and despite its request to the Office of the Solicitor General I don’t think this case is likely to make the cut. Why is that so?
Setting aside the question of copyright fair use (which remains pending and will be retried on remand if the Supreme Court denies cert.), the core question is whether the Java API — 7,000 lines of programming code — is protected by copyright law.
The question is, why would the 7,000 lines Google copied from the Java API not be copyrightable? Google argues that the API code is not copyrightable because it is a “method of operation,” a category the Copyright Act expressly excludes from copyright protection. Google is inviting the Court to pick up, once again, an issue it proved unable to decide in 1996. In that case, Lotus v. Borland, decided by the First Circuit Court of Appeals based in Boston, the First Circuit held that a menu command hierarchy in a user interface (“File,” “Print,” “Copy” ….) was a “method of operation,” and therefore excluded from copyright protection, regardless of whether it is original. The menu commands were the “means by which a person operates something” — in that case a computerized spreadsheet — and therefore the commands were not protected by copyright.
The Supreme Court accepted review of that case, but one justice recused himself, and the remaining eight judges voted 4-4, leaving the case undecided at the Supreme Court and affirming (by default) the decision of the First Circuit, where it has stood as controlling law ever since (but only in the First Circuit).
No other federal circuit court has adopted Lotus v. Borland wholesale, and several courts have finessed the issue. In addition to the Federal Circuit’s decision in the current case, at least one circuit court has expressed disagreement, but that was in 1997, eighteen years ago. In other words, this is not an issue that has been burning up the federal courts since 1996. Google does its best to elevate this to a clear circuit split (one sure way to attract the attention of the Supreme Court is to present a circuit split), but frankly its effort is not entirely convincing given the infrequency with which the the issue has reached the appeals courts.
The amicus brief filed by the Electronic Frontier Foundation and a host of computer scientists (77 scientists) is no more convincing. The scientists based their argument on the need for compatibility. They argue that “copyrightable APIs would discourage innovation by creating potential liability for the mere act of writing a compatible program.” The problem with the scientists’ “compatibility/interoperability” argument is that it goes to fair use, an issue that neither the district court nor the Federal Circuit decided. At the trial of this case the jury deadlocked on the issue, and therefore absent intervention by the Supreme Court the case will be remanded for a retrial on this defense. While the scientists argue that the need for compatibility should lead the court to take the case and hold that APIs are uncopyrightable, their argument does not clearly address the “method of operation” argument made by Google.
Moreover, the scientists ignore the fact that the Google Android-Java API is not compatible with the Oracle API, a fact that Google has conceded.
If the Supreme Court is looking for the Office of the Solicitor General to help them decide whether this case is review-worthy, Google is likely to be disappointed. First, there is no reason to believe this is an issue of interest to the Obama administration – it hardly falls within any of the social action categories the administration is focused on. Second, the case can be appealed to the Court in the future by whichever party loses the retrial on fair use. Perhaps the case will settle, or the losing party will not appeal, saving the Court (and the Solicitor General) the effort. Lastly, as noted, while there may be a split of opinion among the federal circuit courts, the decisions that create the split are spread out over two decades. This hardly amounts to a cry for help from divided federal courts. Rather, this seems to be an obscure issue which could lie dormant for another ten or twenty years. If events prove otherwise, the Supreme Court will have another opportunity to take up the issue in a future case.
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The parties’ briefs filed with the Supreme Court:
Google Petition for Certiorari
Computer Scientists’ Amicus Filing in Support of Google
Oracle Opposition to Google’s petition
Update: The Supreme Court did not accept this case for review
Second Update: On re-appeal, following a trial and second appeal on fair use, the Supreme Court accepted Google’s appeal of this case. See my Oracle v. Google Resource Page here.
On October 22nd I wrote a detailed post discussing Flo & Eddie’s (owner of the Turtles’ pre-1972 sound recordings) suit against Sirius XM, and specifically the holding of a California federal district court that Sirius’s satellite radio broadcast and webcasting of these recordings was subject to a claim under California state law. (See The Kerfuffle Over Copyrights in Pre-1972 Sound Recordings). As I noted in that post, when sound recordings were added to the federal Copyright Act in 1972 pre-1972 sound recordings were not included – these works were not preempted by the federal copyright statute, and were left to be regulated under state law until (drum roll ….) 2067.
I also mentioned that Flo & Eddie had a separate case pending in federal court in New York, claiming copyright infringement of their pre-1972 recordings under New York common law.
On November 14, 2014, the federal judge handling the New York case issued a decision similar to that reached by the court in California. Although, unlike California, New York does not have a specific statute that protects the public performance right in pre-1972 sound recordings, the court upheld Flo & Eddie’s suit under pre-1972 New York state copyright common law, which protects “any original material product of intellectual labor” in which the artist invests “time, effort, money, and great skill.” Clearly, a great deal of pre-1972 music satisfies that test.
The court rejected Sirius XM’s arguments that (i) the owners of pre-1972 sound recordings lacked an exclusive right to the public performance of those works, (ii) Sirius’s broadcast of the recordings is protected by fair use, (iii) upholding Flo & Eddie’s claims would violate the Commerce Clause, and (iv) Flo & Eddie’s claims were barred by laches.
This is very bad news for Sirius XM. One decision against Sirius on this issue is bad; two may prove catastrophic.
After the California decision was issued commentators asked why the court’s ruling wouldn’t apply with equal force to analog broadcasters (radio and TV stations) and retail businesses that play music, such as bars, restaurants and stores. This decision makes that question even more pressing – not only does a second federal court decision upholding pre-1972 state law copyright rights validate the first case (making it less likely to be an outlier), but it forces legal advisors to ask how non-digital businesses are any different than satellite radio or webcasting for purposes of analyzing this legal issue. Why would the logic of the two Sirius XM cases not apply to them as well?
It’s the case that these decisions create more questions than answers. For example, assuming the decisions survive appeal, the courts may have a difficult time arriving at a measure of damages. Since the recordings are not covered by the Copyright Act, statutory damages are not available, and “actual” damages are an open question. Flo & Eddie may have a difficult time proving it lost any sales as a result of the infringements (in fact, it may have gained sales from the exposure). And, it will be difficult to determine the extent to which Sirius XM profited by playing them, or how to determine a “reasonable royalty” for a license to play them that’s any different from the compulsory license established by the Copyright Royalty Board for post-1972 sound recordings. Things are further complicated by the fact that both the New York and California cases are styled as class actions, and are seeking damages on behalf of all owners of pre-1972 sound recordings that have been broadcast by Sirius.
In the meantime, this decision should add to the pressure on Congress to clean up this mess by amending the copyright statute on pre-1972 sound recordings. Leaving them to be regulated by state law for another 53 years, until 2067, may have made sense in the early ’70s’s but it makes no sense now, especially in light of these cases. As the district court judge in the New York case stated, the enforcement of common law copyrights by the states raises “the specter of administrative difficulties in the imposition and collection of royalties,” and could “possibly make broadcasts of pre-1972 recordings altogether unavailable.” In other words, broadcasts of music by The Beatles, The Doors, Jimi Hendrix and Janis Joplin (to name just a few) could disappear altogether from satellite broadcasters and webcasters like Sirius and Pandora, as well as from traditional radio stations.
Legislation like the RESPECT bill that was introduced in the House in May, and which was referred to the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet in July, could resolve this issue, at least moving forward.
If these cases are not reversed or a law like RESPECT is not enacted, we are likely to hear a lot less pre-1972 music for the next five decades. And that would be everyone’s loss.
Over the last 100 years the musical licensing business has evolved into a complicated system! This is a consequence of the evolution of technology, business practices and copyright laws. A picture is worth a thousand words, and I’ve been meaning to post this attempt by the U.S. Copyright Office to create a graphic that illustrates how music licensing operates. The copyright office published this graphic earlier this year, as part of its Musical Licensing Study – one of three active policy studies in progress at the Copyright Office. Click on the image to expand it.
Here is Professor Fisher’s attempt to illustrate some of this in his 2014 CopyrightX course. This is a screenshot at approximately 11:00 in this CopyrightX video.
One of the thorniest issues under the present U.S. copyright system is the law’s failure to accommodate the problem of “orphan works” – works whose owners can’t be identified or located. In many cases copyright holders have died, gone out of business or simply stopped caring. This makes it difficult or impossible to obtain terms for the use of works that likely represent the majority of 20th century cultural artifacts, including songs, pictures, films, books, magazines and newspapers.
Mass digitization technologies and the Internet have created opportunities to make these works widely accessible, but they have also created risks for copyright owners – for example, many digital photos that should be protected have had their metadata stripped before being posted on the Internet, creating a risk that protected works may be mistakenly misclassified as orphans.
No one knows for sure how many bona fide orphan works there are, but estimates range between 25% and 40% of all books eligible for copyright. The number seems to be particularly high in library and archive collections.
However, because copyright protection has become “automatic” (no notice or registration required) and the term more difficult to ascertain (life-of-the-author-plus-70-years – when did the author die?), the user of an orphan work risks an infringement action. This is the risk that Google Books encountered in its attempt at mass digitization of books. Google had hoped it had found a solution to this problem when, in the context of a class-action copyright infringement suit, it proposed a settlement that would have allowed Google to provide digital access to entire books (including orphan works), subject to the right of a copyright owner to “opt out.” However, the court rejected a settlement that was based on an opt-out system, and as a result Google currently restricts orphan works to “snippet views”.
In other words, there is a huge volume of published and unpublished material, some of it dating back as far as 1923, which may technically be subject to copyright protection in the U.S., but which is unavailable to the public, despite the fact that copyright owners would have no objection to it being used.*
*note:Before the 1976 Copyright Act, when the law required copyright owners to renew their their copyright registrations after 28 years to obtain a second 28 year term, only 15% of registrations were renewed. The unrenewed 85% entered the public domain. (Copyright Law Revision, Studies 29-31, p. 221)
The U.S. Copyright Office has recognized that there is tremendous social value in making orphan works available to the public, even on a restricted basis. In 2006 the Copyright Office issued a “Report on Orphan Works,” in which it explored the issue in depth and proposed that Congress enact legislation that would reduce the risk of digitizing orphan works by limiting the remedies available against good faith users. (See also Marybeth Peters, The Importance of Orphan Works Legislation (2008)).
Legislation that would have made orphan works more accessible under U.S. copyright law was proposed in 2006 and 2008 (1, 2), but was not enacted.*
*note: In 2012 the Copyright Office continued to focus on orphan works, issuing a Notice of Inquiry requesting public comments. The Internet Policy Task Force urged reexamination of this issue in the July 2013 “Green Paper.”
However, each country has its own copyright laws, and the situation in some countries is not as grim as it is here. In addition to several non-EU individual country solutions, in October 2012 the EU adopted an Orphan Works Directive, to be implemented by the 28 member states by October 29, 2014 (although that implementation seems to be behind schedule in many countries). The Directive allows public interest entities* to make limited use of specified categories of orphan works “only in order to achieve aims related to their public-interest missions, in particular the preservation of, the restoration of, and the provision of cultural and educational access to, work and phonograms contained in their collection.”
*note: “Public interest entities” are publicly accessible libraries, educational establishments and museums, as well as . . . archives, film or audio heritage institutions and public-service broadcasting organizations.”
The Directive still requires a search to identify the copyright owner of each work, and therefore is not friendly to mass digitization of orphan works. However, once a work is deemed orphaned in one country, it will be treated as orphaned throughout the EU, and a list of orphan works will be maintained in a single registry.
The UK, while a member of the EU and participating under the EU Directive, has gone a big step beyond the relatively narrow Directive. Effective October 29, 2014 (the same date the EU Directive took effect) it made all types of orphan works available for commercial, as well as cultural, bodies. The system will be administered by the UK Intellectual Property Office,* which will maintain a searchable electronic registry.
*note: See: “How to Apply for a License to Use an Orphan Work” on gov.uk. A more detailed “Orphan Works Licensing Scheme Overview,” is also available. As of the date of this post, it appears that the online electronic registry has yet to process any orphan work applications.
Both systems — the EU Directive and the more permissive UK licensing system — are highly controversial. How the systems will work in practice remains to be seen. Questions remain about many aspects of the systems, including how rigorous a “diligent search” will have to be before a work can be deemed “orphan,” whether works have had copyright identifying information stripped away, thereby incorrectly moving them into orphan status, and whether escrowed royalties (to be claimed by owners who show up later) will be set at adequate levels.
The United States — which has hung at the back of the pack — will be watching and, perhaps, picking up the know-how necessary to loosen the law on orphan works here.
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