by Lee Gesmer | Feb 26, 2014 | Copyright
An old legal saw warns that “hard cases make bad law.” The Ninth Circuit Court of Appeals decision in Garcia v. Google may be a good example of this maxim.
The issue facing the Ninth Circuit was whether an actress can claim a copyright interest in her performance in a film and, if so, under the unusual circumstances in this case, whether the actress could use that copyright to compel Google to remove the film from Youtube.
The facts in this case were very hard. The plaintiff, Cindy Garcia (pictured on left) was paid $500 to act in an independent film for a few days. She was told she was acting in an adventure film set in ancient Arabia. However, the film turned out to be an anti-Islamic movie, and her voice was overdubbed so that she appeared to be asking, “is your Mohammed a child molester?” The movie, titled “Innocence of Muslims,” let to a fatwa, and Garcia received death threats.
After Youtube (owned by Google) refused Garcia’s request to takedown the film (rejecting multiple DMCA notices from Ms. Garia), she brought suit for copyright infringement, make a novel legal argument. Rather than arguing that the film was a joint work under copyright law (which might have entitled her to a share of profits, but wouldn’t have achieved her goal of forcing Youtube to remove the film), she argued that she retained a copyright interest in her contribution. Calling this “a rarely litigated question,” Chief Judge Alex Kosinski, writing for a divided 3-judge panel, avoided the question whether Garcia qualified as a joint author of the film (it seems clear that, under Ninth Circuit precedent such as the Aalmuhammed case, she would not). Instead, he wrote that “nothing in the Copyright Act suggests that a copyright interest in a creative contribution to a work simply disappears because the contributor doesn’t qualify as a joint author of the entire work.”
The opinion concludes that Ms. Garcia may claim a copyright interest in “the portion of the film that represents her individual creativity.”
The court rejected Google’s argument that Ms. Garcia’s performance was a work made for hire (she was not an employee), or that she had granted the filmmaker an implied license (her participation had been induced by fraud, precluding that argument). And, Ms. Garcia had never assigned her rights to the filmmaker in a written document.
Lastly, the court found that Ms. Garcia had suffered irreparable harm (“death is an irremediable harm, and bodily injury is not far behind”), and that she had satisfied the causation requirement. The court “rejected Google’s preposterous argument that any harm to Garcia is traceable to her filing of this lawsuit.”
The district court had denied an injunction, which the Ninth Circuit reversed, ordering Youtube to take down all copies of “Innocence of Muslims.”
It’s difficult to predict whether this case will be a significant legal precedent. The idiosyncratic facts were sympathetic to Ms. Garcia, who appears to have been the victim of a fraudulent filmmaker, and who suffered unusual harm as a consequence. However, independent of these facts, the Ninth Circuit has held that an actor or actress owns an independent copyright interest in a film performance, reminding every non-fraudulent film producer to obtain a written copyright assignment from every performer.
Garcia v. Google, Inc. (9th Cir., February 26, 2014)
by Lee Gesmer | Feb 25, 2014 | Copyright
[Catch-up Post] In an unusual application of the copyright fair use doctrine, on January 27, 2014, the Second Circuit held that Bloomberg’s copy of an investor conference call by Swatch was protected from copyright infringement under the fair use doctrine.
The facts are unusual. Swatch transmittd, recorded and promptly registered the copyright for a 2011 earnings call. Bloomberg recorded the call separately. Swatch claimed that Bloomberg’s recording infringed Swatch’s recording.
Although, technically speaking, Bloomberg did not copy Swatch’s copy of the call (it recorded it simultaneously, an issue I’ll return to below), the district court judge based his decision of non-infringement on fair use and the Second Circuit affirmed.
Analyzing fair use utilizing the four statutory fair use factors,* the Second Circuit held that Bloomberg’s purpose was to deliver important financial information to investors, and that this was analogous to news reporting, an activity often favored under the fair use doctrine. The fact that Bloomberg’s reproduction was not transformative was not an obstacle to a finding of fair use since, as the Second Circuit said, cases of news reporting favor “faithfully reproduc[ing] an original work rather than transform[ing] it.”
*note: Abbreviated, the factors are (1) the purpose and character of the use;(2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of the use upon the potential market fo the copyrighted work. 17 U.S.C. 107.
Second, while the work was technically unpublished under the Copyright Act’s definition of “publication,” a fact that usually cuts against fair use, the court held that because the contents of the recording were transmitted during the conference call, “the publication status of the work favors fair use.” Third, although Bloomberg copied the entire recording (again, a factor that typically weighes against fair use), it didn’t help Swatch in this context. The court held that “copying the entirety of a work is sometimes necessary to make a fair use,” and that was the case here.
Fourth, the Second Circuit held that the fact that there is no commercial market for the resale of financial earnings calls favored fair use.
Swatch v. Bloomberg is a significant case in the evolution of fair use case law, which has been quite active as of late (see, for example, Google Books, Cariou v. Prince).
It’s worth pointing out that the Second Circuit dodged an unusual copyright issue on this appeal. One of the fundamental precepts of copyright law is that the work for which copyright is claimed must be “fixed in a tangible medium of expression,” such as a book, film or a digital storage device. In this case Swatch’s audio was recorded simultaneously with its transmission, satisfying the all-important “fixation” requirement. However, Bloomberg received the transmission simultaneously with Swatch’s receipt and fixation of the call, and therefore fixation had not taken place at the instant Bloomberg made its recording. Accordingly, Bloomberg argued, no copyright-protected work existed at the moment Bloomberg recorded the transmission.
This issue was addressed in the lower court opinion, decided in April 2011. Swatch’s response, which the federal district court accepted, relied on Section 101 of the Copyright Act, part of which states that “a work consisting of sounds, images, or both, that are being transmitted, is ‘fixed’ for purposes of this title if a fixation of the work is being made simultaneously with its transmission.” The district court applied this section of the statute, and held that copyright law creates a legal fiction that the simultaneous fixation occurs before the transmission. This ruling allows the unauthorized recording of sounds that are transmitted live and recorded simultaneously to be the subject of a copyright infringement claim.
Bloomberg sought to challenge this interpretation of the copyright statute on appeal, but the Second Circuit refused to address the issue based on a procedural defect in Bloomberg’s appeal. This leaves the lower court decision on a rare and obscure issue of copyright law intact.
The Swatch Group Mgt. Services Ltd. v. Bloomberg, L.P. (2nd Cir. Jan.27, 2014)
by Lee Gesmer | Feb 21, 2014 | Copyright
It’s difficult to believe that so many judges and lawyers could disagree over what would appear, at first blush, to be a straightforward issue of copyright law. Can a company legally copy over-the-air TV broadcasts and transmit them to subscribers over the Internet, as long as it stores and transmits a separate copy for each customer?
Two companies have adopted this technology,, Aereo and FilmOn X (fka “BarryDriller.com”). Two federal courts have held that this does 
not violate the copyright rights of broadcasters (New York’s Second Circuit and a Massachusetts district court), and three courts have held it does (the California, D.C. and Utah district courts). Thus far, all of the rulings have arisen in the context of preliminary injunction motions, and until the Utah court’s ruling on February 19, 2014, Aereo had survived two challenges (New York and Massachusetts). FilmOn X had suffered the two losses (California and D.C.). Before the Utah decision, the Supreme Court had accepted review of the New York case, an unusual development given the fact that none of these cases involved a final judgment on the merits.
The Utah decision may prove to have tipped the balance, in more ways than one. Not only is the count now 3-2 in favor of the broadcasters in judging the legality of the “individual copies” technology, but Utah Federal District Court Judge Dale Kimball — a 17 year judicial veteran and former law professor — may have finally cut through the massive volume of verbiage surrounding this issue.
The section of the Copyright Act at issue, the “Transmit Clause,” states:
To perform or display a work “publicly” means—
to transmit or otherwise communicate a performance or display of the work … by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.
When confronted with the same issue that had been presented to four federal district courts and the Second Circuit, and which will be decided by the Supreme Court this term, Judge Kimball made short work of the local broadcaster’s motion for a preliminary injunction:
The plain language of the 1976 Copyright Act support Plaintiffs’ position. The definitions in the Act contain sweepingly broad language and the Transmit Clause easily encompasses Aereo’s process of transmitting copyright-protected material to its paying customers. Aereo uses “any device or process” to transmit a performance or display of Plaintiff’s copyrighted programs to Aereo’s paid subscribers, all of whom are members of the public, who receive it in the same place or separate places and at the same time or separate times.
After recapping the legislative history of the Transmit Clause, Judge Kimball stated:
Aereo’s retransmission of Plaintiffs’ copyrighted programs is indistinguishable from a cable company and falls squarely within the language of the Transmit Clause. It is undisputed that Plaintiffs license its programming to cable and satellite television companies and through services such as Hulu and iTunes. These companies and services are providing paying customers with retransmissions of copyrighted works. Similarly, Aereo uses “any device or process” to transmit a performance or display of Plaintiff’s copyrighted programs to Aereo’s paid subscribers, all of whom are members of the public.
Judge Kimball was not impressed with the reasoning of the Second Circuit in the Cablevision case (Cartoon Network v. CSC Holdings), the 2008 case that created the copyright “loophole” on which Aereo and FilmOn X have built their businesses:
To reach its conclusion that the recorded copies for later playback did not require an additional license as a separate public performance, the Second Circuit proceeded to spin the language of the Transmit Clause, the legislative history, and prior case law into a complicated web. The court focused on discerning who is “capable of receiving” the performance to determine whether a performance is transmitted to the public. However, such a focus is not supported by the language of the statute. The clause states clearly that it applies to any performance made available to the public. Paying subscribers would certainly fall within the ambit of “a substantial number of persons outside of a normal circle of a family and its social acquaintances” and within a general understanding of the term “public.”
However, the Cablevision court appears to discount the simple use of the phrase “to the public” because it concludes that the final clause within the Transmit Clause – “whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times”– was intended by Congress to distinguish between public and private transmissions. This court disagrees. The entire clause “whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times” appears to actually be Congress’ attempt to broaden scope of the clause, not an effort to distinguish public and private transmissions or otherwise limit the clause’s reach. The term “whether” does not imply that the ensuing clause encompasses a limitation. Rather, the introduction of the clause with the word “whether” implies an intent to explain the broad sweep of the clause and the many different ways it could apply to members of the public. Reading this final clause expansively is consistent with Congress’ intent to have the entire Transmit Clause apply to all technologies developed in the future.
Judge Kimball challenged an interpretation of the law that lies at the very heart of the Cablevision decision:
The Cablevision court’s analysis also appears to have changed the wording of the Transmit Clause from reading “members of the public capable of receiving the performance” to “members of the public capable of receiving the transmission.” Therefore, instead of examining whether the transmitter is transmitting a performance of the work to the public, the Cablevision court examined who is capable of receiving a particular transmission. This court agrees with Plaintiffs that the language of the Transmit Clause does not support such a focus.
Judge Kimball concluded that:
Based on the plain language of the 1976 Copyright Act and the clear intent of Congress, this court concludes that Aereo is engaging in copyright infringement of Plaintiffs’ programs. Despite its attempt to design a device or process outside the scope of the 1976 Copyright Act, Aereo’s device or process transmits Plaintiffs’ copyrighted programs to the public.
Based on this analysis the court enjoined Aereo from providing its service in the six states in the Tenth Circuit (Colorado, Kansas, New 
Mexico, Oklahoma, Utah and Wyoming). He declined to stay the injunction pending the Supreme Court’s review of the issue, ordering that the preliminary injunction go into force at once.
This case, and the fact that it is Aereo’s first courtroom loss, just adds to the drama over the upcoming Supreme Court hearing and decision on this issue. Will the Supreme Court perceive the issue to be a simple as Judge Kimball, or will it, to use Judge Kimball’s phrase, “spin the language” of the Transmit Clause to come out the same way as the Second Circuit ?
And, while this line of cases may be of academic interest to copyright lawyers, it is of immense practical interest to untold numbers of consumers who may want to use the Aereo/FilmOn X services to help them “cut the cord” of the expensive cable services. For this reason, pressure on the Supreme Court from consumer rights advocates in favor of Aereo’s technology is likely to be intense. The extent to which this will influence the Supreme Court may never be known, but few will deny that it will be a factor.
by Lee Gesmer | Feb 11, 2014 | Copyright, DMCA/CDA
A couple of weeks ago I returned to the offices of the URBusiness Network to discuss the Digital Millennium Copyright Act (DMCA). This was my second trip to the URBusiness Network, an online radio network with a wide range of business shows.
The subject of the first show, recorded last October, was web site liability for third party postings under the Communications Decency Act (CDA). However, the CDA does not protect web sites for user postings that violate copyright law, so copyright liability and the DMCA were the topics of the current show.
Once again it was a pleasure to be interviewed by Ruck Brutti, who was joined on this occasion by co-host Nathan Roman.
You can listen to the new show here.
by Lee Gesmer | Jan 26, 2014 | Copyright, DMCA/CDA
[This is part 2 of a 2-part post. To read part 1, click here]
[Update: Viacom v. Youtube was settled before the Second Circuit rendered its decision on the appeal discussed in this post]
After the events described in part 1, Kevin Kickstarter, founder of YouPostVid, meets with his lawyer, Mr. Jagger, to discuss whether YouPostVid needs to change its approach to managing copyrighted videos posted by users of the site. In preparation for this meeting Kevin has read the decisions in Viacom v. YouTube, and Mr. Jagger* has familiarized himself with YouPostVid’s compliance practices under the DMCA.
*[Note] Mr. Jagger’s name is a play on the infamous lawyer in Great Expectations, by Charles Dickens.
Kevin Kickstarter: Mr. Jagger, what I don’t understand is this – we comply with valid DMCA takedown notices. We take down thousands of video clips a month in response to takedown notices.
However, the DMCA also says that we can lose our immunity if we have “actual knowledge” of infringement, or if we are “aware of facts or circumstances from which infringing activity is apparent” — what you call “red flag” knowledge — or if we engage in “willful blindness,” a concept I don’t understand at all. At the same time the DMCA says that we have no obligation to monitor for infringement. How can I run a business based on this confusing set of rules?
And, as if this were not enough, I see that in the first appeal in the YouTube case the Second Circuit said that we could lose immunity if we have induced infringement. And, I read some of the briefs filed in the second appeal, and I see that Viacom is arguing that web sites don’t have to take any actions to “induce infringement” – this can be found based on the owner’s intent or state of mind. I’m totally confused. It seems that in terms of protecting YouPostVid the DMCA has more holes than swiss cheese.
Mr. Jagger: You’re right, Kevin – this is a confusing statute, and if Viacom gets its way in this appeal, the DMCA’s protection of Internet service providers will be narrowed. You need to play it safe in anticipation of an adverse ruling in this case. OK?
Kevin: Yes, I understand. But this is an intolerable situation for my company, and I hope the Second Circuit is able to clarify the law, and soon. We need to know what the rules are. I can’t believe that the online industry doesn’t have clear rules for web site liability based on user generated content 15 years after this law was passed.
Lets get going – I have a hard stop at 3:00 today.
Mr. Jagger: OK. Let me begin by reminding you that there are a lot of ways that you can lose DMCA protection that are easy to avoid. We know that your company has registered an agent to receive takedown notices, and that you have a repeat infringer policy, both of which are essential under the DMCA. You’ve also told me that you have told your employees that they may not upload videos to YouPostVid, since the DMCA only protects uploads by third parties. More than one video sharing site has been caught doing this and denied DMCA protection for employee uploads. You monitor for pornography and hate speech, but you don’t monitor for copyright infringement by means of employee monitoring or automated blocking software, and the law is clear, you have no obligation to do so, although whether you should use blocking software is something we’ll touch on at some point today.
These are all areas of the DMCA that are relatively clear. However, there are additional ways to lose the DMCA’s “safe harbor” protection that are at issue in the Viacom case and other cases pending in the federal courts in New York, and that are not so clear. I want to talk about those.
Kevin: OK, but make it quick – I don’t have much time today. I have a business to run.
Induced Infringement
Mr. Jagger: Understood. Lets start with what I think, in your company, is the easiest issue, “induced infringement.” You know that Viacom has argued, based on the Supreme Court’s 1995 Grokster decision, that it is illegal to distribute a device (including software, and by implication a web site), “with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement.” There is no question that this is true – a service provider that “fosters” or encourages infringement risks copyright liability for acts of infringement by third parties who use its software, and cannot rely on the DMCA as a defense.
However, I think Viacom is overreaching on this issue – it argues that the service provider’s state of mind or “secret intent” is a factor in determining whether there has been inducement. In effect, it is arguing that YouTube should lose immunity under the DMCA safe harbor based on a “thought tort.” This argument seems particularly weak where, as in YouTube’s case and in your company, the service has substantial non-infringing uses.
I think that the Second Circuit will hold that an Internet service provider must engage in purposeful expression or conduct — affirmative steps — to induce infringement, and you have never done that.
But, better safe than sorry. I’m going to suggest that you hedge your bets – no emails like the ones you showed me in which you tell employees that popular, copyrighted videos are good for business. In fact, I recommend you stop emails discussing the pros and cons of various clips altogether – they have been YouTube’s worst enemy, and they can be your worst enemy.
Kevin: OK, I understand, I’ll do that. I hope you’re right. We have never encouraged or “fostered” copyright infringement in any way. Should I destroy the emails you’re referring to?
Mr. Jagger: No, I think it’s too late for that. The publisher we met with had its lawyer send me a letter demanding that we preserve internal communications, and you have to comply with that. Sorry.
Kevin: Darn ….
Actual or “Red Flag” Knowledge
The next two ways to lose protection involve what the law calls actual knowledge and “red flag” knowledge. As you noted, the law doesn’t actually use the term “red flag,” it uses the expression “facts and circumstances,” but “red flag” is a common shorthand. And, it’s difficult to separate these two concepts, so I’m going to discuss them together.
What a lot of people don’t appreciate is that since the Second Circuit’s first ruling in Viacom v. YouTube in April 2012 DMCA protection has actually narrowed. Courts in New York applying the Second Circuit decision have held that a website can lose DMCA protection if it becomes aware of a specific infringement, or if it is aware of facts that would make it “obvious to a reasonable person” that a specific clip is infringing. Rather than go into the legal theory I’m going to tell you what this means as a practical matter.
- First, if you receive a valid takedown notice you must act on it. We have discussed what a valid takedown notice is in the past, so I won’t repeat that here, but you might want to review the rules on that.
- Second, if you receive any information from a non-copyright owner — for example, the “good samaritans” you told me about that have sent you emails informing you that there are specific infringing works on your site — you must investigate and remove those specific clips if you find that they were copied without the permission of the owner. In other words, something less than a formal takedown notice may establish “red flag” knowledge, requiring a site owner to investigate whether the clip is copyrighted, and if so whether it has been posted with permission.
- Third, and perhaps most difficult, if you or any employee becomes aware of a specific clip where it would be objectively obvious to a reasonable person that the work is copyrighted, you must investigate whether it is an authorized or an illegal copy. The courts have held that if an employee of a web site “interacts” with a copyrighted clip — views the clip, “likes” it, features it or promotes it to a different location on the site — the site must apply the “objectively obvious” test. If it doesn’t, and the owner sues for copyright infringement, the site may not be protected by the DMCA.
Kevin: Whoa, Mr. Jagger, hold on a minute, hold up, please. I don’t get it. This makes no sense.
We have no obligation to look for copyrighted clips, but if we’re told about one, or one of my employees becomes aware of one, we need to take it down? This makes no sense. I understand that we need to investigate these “good samaritan” emails identifying infringing clips, but I don’t get the second piece of this. If an employee becomes aware of a specific clip I need to decide whether it would be “objectively obvious to a reasonable person” that the clip is infringing? If that’s the case I’m going to have to tell my employees not to browse the site. Is that what the law requires? You’ve got to be kidding me!
Mr. Jagger: I agree with you, Kevin, but I do not make the laws, would that I did. I am reminded of the comment by Mr. Bumble in Oliver Twist, “If the law supposes that the law is a ass – a idiot.”
Kevin: Mr. Jagger you are always quoting Dickens, or some other long-dead writer, most of whom I have never heard of. Stop your literary peregrinations, and get to the point, please! I haven’t had a migraine in years, but I feel one coming on now ….
Mr. Jagger: Sadly, I often hear this from my clients. I am sorry.
Kevin: Proceed, sir, please. Get this over with. This is worse than a root canal procedure.
Mr. Jagger: Very well. Yes, the safest legal course of action is to tell your employees to limit their viewing of uploads to your site.
Kevin: But our employees organize clips by subject, and move popular clips to the home page and various topic pages. They have to look at the clips to do that. Are you suggesting we stop this? That we can’t even look at video uploads on our own site? That what we’ve done in the past could lead to liability?
Mr. Jagger: I am afraid so. If you don’t you will need to train your staff to recognize copyrighted works under the “objectively obvious” test, and you will need to take down clips that satisfy that test, at least until the law is further clarified.
Kevin: You want me to provide legal training to my staff? Half of these people are high school students, interns, engineers . . . They aren’t lawyers; I can’t possibly ask them to apply this test.
Besides, this is not as simple as you — or these courts — appear to assume What if the clip uses copyrighted material but it falls under fair use? What if the clip is just a bunch of kids lip dubbing a song? Is that illegal or fair use? What if its a home-made video that uses only 20 or 30 seconds of a copyrighted song – is that infringement or fair use? How about an amateur music lesson of a copyrighted song? What if its a creative video mashup? You expect me to tell my employees that they need to make these kinds of distinctions? They are not lawyers, and frankly I’m not convinced that even lawyers could sort infringing from fair use clips, given the confusing court decisions on fair use!
Mr. Jagger: You can, and you must, or you must tell them not to view clips on the site, unless you are willing to risk a lawsuit. Or, of course, you can license Audible Magic. I can give you guidelines on how to apply the “objectively obvious” test or identify fair use, and when they are in doubt you can send a link to the clips to me, and I’ll advise you.
Kevin: I bet you will ….
Mr. Jagger: So, shall we continue? I’m afraid I have more bad news …..
Kevin: Before you do that Mr. Jagger, let me just point out how ridiculous this has become. I know enough about copyright law to know that not only are network and cable shows and Justin Bieber songs and music videos copyrighted, but the fact is that almost every video clip on my site is protected by copyright law. If someone creates a cat video, or a baby video, isn’t that automatically protected by copyright law? Isn’t the Charlie Bit My Finger video copyrighted? How am I supposed to apply this “red flag” standard when almost every video on my site is copyrighted? Even Audible Magic won’t block those videos. You’re telling me that I, the founder and owner of this company, can’t look at my the video clips on the site without applying the “red flag” test to every clip I view?
Mr. Jagger: You are 100% correct, Kevin. Very likely, all of those videos are protected by copyright law. It’s difficult to reconcile the “notice and takedown” parts of the law with the “actual knowledge”/”facts or circumstances” sections. I think that this is the key issue the Second Circuit will have to deal with in the Viacom/YouTube appeal, and in an appeal in a case involving Vimeo, presenting this precise issue. In that case the court held that Vimeo had to weigh the type of music (professional v. amateur), how well-known the artist is, and other factors that could be used to distinguish amateur material from professional material. The court seems to assume that amateur material has been posted with the consent of the owner, but professional material has not. The court held that a “recognizable song,” played essentially in its entirety and in unedited form triggers the red flag, and the website owner must either take it down, or investigate to confirm it is not a copyright violation. And songs that are lip synced or mashups are no exception.
Unfortunately, the court ignores the fact that what is immediately “recognizable” to one person may not be recognizable in the least to another, so for now the best rule of thumb is, “if in doubt, take it down.” You cannot be liable for taking down a clip (the DMCA expressly states this), but you can be liable if you make the wrong decision and leave it up.
I know we are past your 3:00 stop time, but I should also mention that the Second Circuit in Viacom stated that a web site could be liable for “willful blindness” where the site owner is “aware of a high probability of the fact of infringement and consciously avoids confirming this fact.” However, it’s not clear how this is different from “red flag” knowledge, so I suggest we leave it be until the courts provide more guidance.
Kevin: Thanks Mr. Jagger, are we done.
Mr. Jagger: I do have one more issue I need to warn you about. One federal district court in New York has held, in the MP3Tunes case, that the DMCA safe harbor applies to sound recordings — in other words music — recorded before February 15, 1972. However, more recently a different court in the same district, in the Vimeo case, held that the DMCA does not apply to pre-1972 sound recordings. The judge in the Vimeo case has authorized the parties to ask the Second Circuit to decide this issue while the Vimeo case is still pending — an “interlocutory” appeal — but there’s no guarantee the Second Circuit will exercise its discretion and hear this issue at this point in the case. This is obviously a question of great importance, but at the moment the law is not clear.
Kevin: Wait a minute – if we don’t take down pre-1972 sound recordings we risk liability, but if we review our clips to try to find pre-1972 recordings, we have to evaluate every clip we review to determine if it is an infringing copy? This is a catch-22 that we just can’t win.
Mr. Jagger: I agree ….
Kevin: Mr. Jagger, let me ask you a question – what do you see as the big picture here? Where are the courts trying to guide companies like mine with this ridiculous line of cases.
Mr. Jagger: I will tell you my theory, Kevin. Under the language of the DMCA the courts cannot force web sites like yours to use filtering software like Audible Magic, or ContentID, a system developed by Google. However, they can use the law to make it so difficult to avoid liability that, as a practical matter, that will be the only option. I think that, in the not too distant future, we may see an Internet in which almost every significant site that allows a significant number of uploads will either have some form of licensing agreement with content owners, or will use filtering software to block most copyrighted works. Other than renegade sites that can’t be reached by the courts, the early days of sites like YouTube, Vimeo, Veoh and MP3Tunes will become as much a distant memory as 5 1/4 inch floppy disks.
Kevin: I need to go. I think I can sell my company for a decent profit before the forces of darkness you describe put me out of business.
Mr. Jagger: Good luck, Kevin . . ..
by Lee Gesmer | Jan 13, 2014 | Copyright
On Friday the U.S. Supreme Court granted review in American Broadcasting Companies, Inc. v. Aereo, Inc.
I wrote a 4-part post on this case in the Spring of 2013. Part I of the series begins here. The series begins as follows:
Aereo is a company that has developed a system that captures over-the-air television (broadcast TV) and retransmits it to subscribers over the Internet. Subscribers are able to watch broadcast TV on their computers, tablets and smart phones. Even better, Aereo acts as a remote digital video recorder (a remote DVR) so subscribers can record programs and stream them at another time. Aereo launched in New York City in early 2012, but it has announced that it is expanding to 21 other cities in 2013.
Is this a problem for broadcasters? You bet it is. . . . . continue reading
by Lee Gesmer | Dec 28, 2013 | Copyright, DMCA/CDA
[This is the first of what will be a two-part post on Viacom v. YouTube]
[Update: Viacom v. Youtube was settled before the Second Circuit rendered its decision on the appeal discussed in this post]
It seems unlikely that the drafters of the DMCA — a law enacted in 1998, the same year Google was incorporated — anticipated how difficult the courts would find application of this complex, near-5,000-word statute. There may be no better case to illustrate this than Viacom’s long-running suit against YouTube (a company owned by Google). As of November 2013 briefs had been filed in the second appeal in Viacom v. YouTube, and the case is likely to be scheduled for oral argument before the Second Circuit sometime in the first few months of 2014.*
*[Note]: I have written about Viacom v. YouTube several times during its long history (the case was filed in 2007). See, e.g., YouTube Scores Big Victory on Remand in Viacom DMCA Copyright Case; Second Circuit to YouTube (i.e., Google): Remanded for Trial; Decision in Viacom v. YouTube: Dog Bites Man (Mark Cuban was wrong).
To say that the appeal briefs are a hard slog would be an understatement. The parties and the courts have immersed themselves in legal obscurities that will be of almost no interest to most non-lawyers, and which are likely to be incomprehensible to lawyers unwilling to bury themselves in the nuances of the DMCA. (If you are tempted to bury yourself, the EFF has collected most of the briefs here).
This being the case, I concluded that it would be best to present my observations on this case in a different format than my typical blog posts. Rather than a discussion of the legal issues, I have composed a hypothetical case example (which closely follows the facts in the actual case), to be followed by a simulated discussion between the “client” and the client’s “lawyer.” This should make the issues palatable to most readers.
This post will set the stage by presenting the hypothetical fact situation, and the second post (which is forthcoming), will present the client-lawyer discussion.
Kevin Kickstarter Creates YouPostVid
(no, this was not removed – I purposefully inserted this image)
Kevin Kickstarter has started a YouTube-like company called “YouPostVid.” YouPostVid’s business is simple – it operates a “you post, we host” web site that enables users outside the company to upload video clips. YouPostVid’s sole revenue source is click-through advertising. The business is a success, and Kevin has hired several employees.
Based on good legal advice YouPostVid plays it straight, and does nothing that could be construed to invite users to upload copyrighted videos. In addition, Kevin takes the proper steps to register with the copyright office and identify an agent to receive DMCA notices of copyright violations. The company promptly deletes video clips based on notices that comply with the DMCA “notice-and-takedown” system. It also devises and enforces a reasonable “repeat infringer” policy that bars repeat infringers from uploading to the site.
Kevin is told by his lawyer, Mr. Jaggers, that he has no legal obligation to monitor the site for copyright infringements, and that in fact the less he does the better. And, unless a DMCA notice complies with the specific requirements of the law, he doesn’t need to implement a takedown.
However, YouPostVid does implement a “community flagging” program that allows users to report videos that include pornography or any form of hate speech, and these reports are checked and often deleted by YouPostVid.
YouPostVid Begins to Encounter Problems
All is well with YouPostVid, at least at the start. However, eventually a few things occur that cause Kevin concern. First, YouPostVid starts receiving emails, not from copyright holders, but from “good samaritans,” notifying Kevin that his site is rife with infringing videos. One good samaritan informs him that the site has copies of almost every Seinfeld episode, and even identifies the shows by name. (“The Soup Nazi,” “The Contest” ….). Others report other video clips which, they claim, fall under copyright protection. Several good samaritans suggests that YouPostVid expand its community flagging program to allow users to flag clips that infringe copyrights.
However, YouPostVid takes no action with respect to these communications.
Although Kevin has told his small staff of employees not to review the site for potentially infringing uploads, one employee has sent him several emails stating, in general terms, that users are uploading vast quantities of apparently copyright-infringing clips to the site, and asking whether he should take these clips down when he comes across them. In this email the employee estimates that as many as 30% of the clips on the site are copyrighted and have been uploaded illegally. Kevin responds, instructing his employees to remain “hands off” any material they suspect infringe copyrights. Kevin tells the employees that while people may be uploading infringing clips to the site, these clips are attracting viewers, and thereby supporting the site’s advertising revenues. Kevin tells them, “we have a legal obligation to respond to formal DMCA takedown notices, period. No more, no less. We have no idea who uploaded these clips – for all we know it was done by the copyright owners themselves, or with their consent. We don’t know. And, they are good for business.”
YouPostVid Is Accused by a Large, Angry Publisher
Then, a large copyright holder demands a meeting, and informs YouPostVid that it will have its lawyer present. At the meeting, Kevin is told that despite
the takedown notices this publisher is sending YouPostVid, copyrighted clips are going up at a rate faster than the takedowns. The publisher tells Kevin that it is tired of playing this expensive, losing game of “whack-a-mole,” and it demands that Kevin install an automatic filtering system such as Audible Magic to identify and bar copyrighted videos. The publisher tells Kevin that YouPostVid is building its business based on rampant infringement of copyrighted works, and that by limiting its response to takedown notices it is intentionally, and improperly, turning a blind eye to massive infringement on the site.
After the Meeting …
After the meeting Kevin has a heart-to-heart with his lawyer, Mr. Jaggers, and although Kevin admits that it seems to be the case that his site has thousands of copyright-infringing videos, Kevin emphasizes that he has done nothing to encourage this. He does not want to install Audible Magic, or any other form of automatic filtering system or community flagging. He has found an inexpensive off-shore company to handle takedowns, and he wants to simply continue requiring copyright holders to provide takedown notices that comply with the DMCA, and nothing more. However, Kevin asks his lawyer to advise him on whether the copyright holders have a case against him based on any recent developments in copyright law or under the DMCA. As he puts it, “how thin is the ice on which I’m standing, Mr. Jaggers?”
Jaggers informs Kevin that a case raising the issues facing YouPostVid — Viacom v. YouTube — is pending before the Federal Court of Appeals for the Second Circuit, based in New York. Jaggers asks Kevin (who attended two years of law school before dropping out to start YouPostVid) to read the three court opinions in this case: the district court’s first decision from 2010, the opinion of the Second Circuit on the first appeal, in 2012, and the district court’s second decision in 2013 (following remand by the Second Circuit). After he does this they will meet to discuss the implications of this case for YouPostVid, and whether YouPostVid needs to take any additional steps to avoid liability for copyright-protected works posted on the site.
Click here to continue to Part 2 of this post ….
by Lee Gesmer | Dec 10, 2013 | Copyright
On November 26th I published a post titled “Oracle v. Google: How Google Could Lose on Appeal.”
Oral argument before the Court of Appeals for the Federal Circuit was held on December 4, 2013, and a recording of the oral argument has been released.
Based on comments and questions from the bench, the hearing went poorly for Google. The very points I raised in my post were raised by the judges in questions to the attorneys for the parties.
As I commented in my post, District Court Judge Alsup’s order ruling that the Java declaring code copied by Google was not copyrightable was vulnerable because Judge Alsup seemed to rely on factors and cases relevant to copyright fair use (specifically interoperability) to justify a finding that the Java declaring code was not protected by copyright. And never, the CAFC judges rightly observed, may the two mix. It is quite correct to say (as Oracle has argued) that a finding that a work is not protected by copyright must stand on grounds independent from a finding that copying was permitted by fair use.
The Federal Circuit seemed eager to seize on this confusion in Judge Alsup’s decision. To wit (comments from the CAFC judges):
“As I read the trial judge’s opinion I’m confused about how he viewed fair use because it seems to me he was merging it with the question of copyrightability.”
“I specifically agree with you that the district court imported fair use principles into the upfront portion of the analysis, which was wrong.”
“So why shouldn’t we relegate those discussions — I’m not saying they’re not relevant factors — why shouldn’t they be considered in the context of fair use rather than crammed into the copyrightability [analysis]”
“What is the expectation standard? . . . You’re supposed to make the determination of copyrightability at the time that the creative act occurs, correct? Does copyrightability get lost because it becomes popular?
Comments by the CAFC judges suggested that Google’s best argument (perhaps its only viable argument) was based on the First Circuit’s 
decision in Lotus v. Borland. In fact, the CAFC hearing in 2013 bore an uncanny similarity to the Supreme Court 1995 hearing in Lotus v. Borland – in both cases the judges tried to find a standard the courts can use to separate functional computer code not entitled to copyright protection from expressive code that is entitled to protection. The Supreme Court Justices voted 4-4 in that case (one justice abstaining), leaving Lotus as the law in the First Circuit, but nowhere outside the First Circuit. However, the CAFC is not bound by this case (it must apply Ninth Circuit law), and it seems a thin reed for Google to rely upon in its attempt to preserve Judge Alsup’s order.
In addition, the appeals court judges were very interested (surprisingly) in trying to find a way they could avoid requiring the district court to retry the case on fair use (a defense the jury hung on at the first trial). This interest seemed to take Google’s lawyer by surprise, and indicates that the court is leaning in the direction of limiting a retrial to the issue of damages (if it finds no fair use as a matter of law) or dismissal altogether (if it finds fair use as a matter of law). A “snatching victory from the jaws of defeat” outcome for Google could be that the Java declaring code is copyrightable, but that Google did not infringe by reason of fair use.
However, this aspect of the argument didn’t give a clear impression of which way the judges were leaning.
It is true that Google’s counsel was on the defensive during much of his argument, while Oracle’s counsel seemed to be cruising. However, any attempt to “read the bench” in a case like this is little more than reading tea leaves. Misdirection from judges is an everyday occurrence; recall how the country misinterpreted questions from the Supreme Court bench during oral argument for the Affordable Care Act (ObamaCare).
Nevertheless, if I had to make a prediction today, based on nothing more than the oral argument, it would be that this case is heading back to the district court for further proceedings. Exactly what those will be, I’m not sure.
by Lee Gesmer | Dec 4, 2013 | Copyright
“[Google Books] could be the most important contribution to the spread of knowledge since Jefferson dreamed of national libraries. It is an astonishing opportunity to revive our cultural past, and make it accessible.” – Lawrence Lessig
“The scale of Google’s plans boggles the mind.” Prof. James Grimmelmann
” Letting Google organize all of the world’s information makes as much sense as letting Halliburton organize all of the world’s oil.” Evgeny Morozov
Be admonished: of making many books there is no end; and much study is a weariness of the flesh – Ecclesiastes 12:12
________________________
As most people with an interest in copyright law, book publishing or Google are aware, Google has undertaken a Herculean task. It’s goal is to digitize and index every word in the world’s books. All 130 million of them, from the Dead Sea Scrolls to the most recent Jack Reacher book by Lee Childs. As to the U.S. books it will provide electronic access differentially, depending on whether the book is in-copyright or in the public domain.
This undertaking has caused consternation in some corners of the publishing industry, leading to copyright infringement lawsuits against Google. The most important of these cases — The Authors Guild v. Google — has been pending in the Federal District Court for the Southern District of New York since 2005, a near-Dickensian eight years. (The EFF summarizes the procedural background of the case here).
After much wrangling, interim appeals and other legal whatnot, on November 14, 2013, Judge Denny Chin, who was a district court judge when the case began and who retained the case after he was elevated to the Second Circuit, issued, a by-the-book copyright fair use decision (no pun intended) holding that the copyright doctrine of fair use protected Google from copyright infringement. Given the magnitude and implications of this decision, and the long time it took for it to arrive, the opinion itself was almost anticlimactic.
There has never been a copyright case like The Authors Guild v. Google, and it seems unlikely there ever will be again. While Judge Chin’s decision neatly ticked off and applied the factors necessary to evaluate a fair use defense, the decision left unanswered the question whether copyright law is even the right tool by which to evaluate a for-profit company’s full-text copying and digitization of every existing book published in the United States.
Copyright fair use is largely “judge-made” law, and it has evolved in the context of cases where one (or a small number) of copyrighted works were modified (transformed), parodied, copied only in part for commercial purposes, or copied in whole for non-commercial purposes. As the Guild argued to Judge Chin, “a case such as this, which involves the digitization and use of millions of works, is vastly different than the typical fair use case, which involves the use of one or a small handful of preexisting copyrighted works in the creation of a new work.” No copyright case — much less a fair use case — comes close to helping a court decide whether it is a copyright violation for a market-dominant, for-profit company like Google to obtain what is likely to become a perpetual monopoly on the digitization of the entire corpus of U.S. books.
While there may be legal or legislative tools in addition to copyright infringement that could be used to challenge Google Books, to date challenges have been limited to claims under copyright law. And, although Judge Chin did his best to squeeze square blocks into round holes, ultimately he decided what could be the most important fair use case in U.S. history sui generis.*
*Note: However, the pressure on Judge Chin to be a modern day Solomon may be lessened by the virtual certainty of an appeal to the Second Circuit and, ultimately, to the Supreme Court. And, as I have noted elsewhere, of late the Second Circuit has not been shy in disagreeing with Judge Chin on important matters of copyright law .
Google’s fair use defense was uncomplicated. As it argued to Judge Chin in its summary judgment brief:
Google Books gives people a new and more efficient way to find books relevant to their interests. The project makes tens of millions of library books searchable by words and phrases and (in some cases) returns snippets showing the context in which the user’s search term appears. The tool is not a substitute for the books themselves—readers still must buy a book from a store or borrow it from a library to read it. Rather, Google Books is an important advance on the card- catalogue method of finding books. The advance is simply stated: unlike card catalogues, which are limited to a very small amount of bibliographic information, Google Books permits full-text search, identifying books that could never be found using even the most thorough card catalog. Readers benefit by being able to find relevant books. Authors benefit because their books can be more readily found, purchased, and read. The public benefits from the increase of knowledge that results.
Under the application of the fair use doctrine today, the starting point for any advocate claiming fair use is to argue that its use of a copyrighted work is transformative, and Google was right on the beat: “Google made digital copies of books in order to create a searchable index linking each word found in any book to all books in which that word appears. That index provides a wealth of new information, allowing a user to find every book mentioning a particular topic or using a particular phrase … Like a paper index or a card catalogue, it does not substitute for reading the books themselves, and Plaintiffs do not contend that it does.”
Google also emphasized the absence of economic harm to authors: “Plaintiffs have adduced no evidence that Google Books has displaced the sale of even a single book.”*
*Note: Google’s legal arguments rested heavily on a seminal law review article by federal Judge Pierre N. Leval (Toward a Fair Use Standard), and a limited number of fair use cases, specifically Bill Graham Archives v. Dorling Kindersley Ltd., and Perfect 10, Inc. v. Amazon.com, Inc.
The Authors Guild had valid responses to Google’s argument. The Guild argued that the verbatim copying of millions of book is not transformative in the sense that copyright law has applied that concept — the alteration of the original with new expression or meaning. In fact, it argued that Google’s verbatim copying is the definition of untransformative. Google Books is a commercial project intended to benefit Google’s search business — it is not non-profit and it is not altruistic.
In addition, the Guild hinted at an issue never, to my knowledge, made before in a copyright fair use case, but one that I raised in my first post on Google Books in November 2005, only two months after the case was filed. This is what the Guild calls (variously), the “huge security risks,” the “all too real risks of hacking, theft and widespread distribution” and the “unacceptable security risk.” The Guild leaves nothing to the imagination: “just one security breach could result in devastating losses to the rightholders of the books Google has subjected to the risk of such a breach by digitizing them and placing them on the Internet.” In addition to copyright fair use analysis, the Guild argued, the more important question may be whether society is prepared to trust Google with a cultural asset of this importance.
In his November 14, 2013 opinion Judge Chin reached the following conclusions regarding Google’s fair use defense:
- Google Books is transformative since it facilitates searching, education and research, and facilitates access to new audiences. And, the fact that Google’s use is commercial is of little significance since Google is not directly commercializing the works.
- The fact that Google engages in full-work reproduction does not weigh heavily against fair use where the copying is necessary for the transformative indexing and search function and where Google’s search restrictions (limited access to “snippets”*) prevent users from accessing the full text of the books.
- Google Books does not have a negative effect on the market for the works. The Guild could not show that the use is a substitution for the original work; to the contrary, facilitating searches actually increases sales by making more readers aware of the work and enabling links to booksellers.
*Note: In Google Books a “snippet” is one-eighth of a page. A search returns 3 snippets. One snippet on each page is “blacklisted,” meaning it is not shown, and 10% of all pages are blacklisted in full. Judge Chin concluded that this system would make it impractical for a user to access most of a book by means of multiple searches, and impossible for a user to access an entire book. The rights-holder of an in-copyright work can fine-tune the amount of text available for viewing (all the way down to no preview at all) through the Google Books “Partner Program.”
The heart of his decision is his findings that (a) Google Books is a valuable research tool; (b) it is impractical to assume that anyone would be able to recreate a book (or most of a book) by searching for and compiling the “snippets” Google makes available; and (c) the ability to find books using Google Books actually improves sales (rather than replacing book sales). Interestingly, Judge Chin made no mention of the benefit of providing access to orphan works — books whose owners are unknown or cannot be found — access to which favored Google’s fair use defense. Nor did he comment on the Guild’s concerns that the database of books might be hacked and stolen.
Judge Denny Chin
The implications of this decision, and even the extent to which it will be extended beyond its facts, are difficult to predict. Because the sheer magnitude of the Google Books database plays such a significant role in creating its research and educational value, smaller databases may not present as strong a case for fair use, limiting the case to its unusual (and perhaps unique) facts.
The decision also disregards the enormous market power the ruling grants to Google. Google’s existing dominance in Internet search, its eight year head start, its relationships with libraries and publishers and the depth of its backlist, all make it difficult to imagine anyone creating a competing digitized database of this magnitude. Thus, although the decision doesn’t leave Google with the judicially-approved monopoly it would have had under the class action settlement (which Judge Chin rejected), it may leave Google with a de facto monopoly for an indefinite period of time. One can only imagine what Google Books will look like — and what it will have been transformed into — hundreds of years in the future, assuming that Google has not sold it to Walmart or Reed Elsevier in the meantime.
Finally, while this decision is important, the case is not over. While the technology press has claimed this a huge victory for Google, as usual it seems oblivious to the fact that big wins can be taken away on appeal. The Guild is likely to appeal to the Second Circuit (it has already said it plans to do so), and the losing side of that decision is likely to seek review by the Supreme Court. Appellate review of fair use cases is notoriously fickle, and it is far from certain that the appellate courts will weigh the fair use factors the same way Judge Chin did, or find Google Books to be “transformative” in the way that concept has traditionally been applied in copyright law. In the event of a reversal, the case will be back in the morass of class certification and re-appeals on that issue (this is part of the “legal whatnot” mentioned above), in which case it may continue for another eight years.
The Authors Guild, Inc. v. Google Inc. (S.D.N.Y. November 14, 2013)
For my post presenting a more personal view of this case click here.
by Lee Gesmer | Nov 26, 2013 | Copyright
I recently had the privilege of making a presentation on the Oracle v. Google copyright case at the Boston Bar Association (slides here), and although how Google could lose on appeal wasn’t the focus of the talk, that’s what I found myself thinking about after the program. Argument before the Court of Appeals for the Federal Circuit (CAFC) in Washington, D.C. is scheduled for December 4, 2013, and a decision is likely by late summer or early fall, 2014.
I view the core issues that threaten Judge William Alsup’s order holding that the structure of the Java API “declaring code” (but not the “implementing code”) is not copyrightable to be the following.
1. Was Judge Alsup Wrong to Include “Interoperability” In His Analysis of Copyrightability?
The heart of the court’s decision that the structure of the Java declaring code (7,000 lines of code) is not copyrightable centers around the conclusion that Google’s use of this code in Android is necessary for third-party partial interoperability with Java. As the judge stated in his order, “Millions of line of code had been written in Java before Android arrived … Such code was owned by the developers, not by Oracle. In order for at least some of this code to run on Android, Google was required to provide the same command system.” The judge went on to state that “Google was free to duplicate the command structure for [the Java API] in Android in order to accommodate third-party source code relying on the [API] (taking care to write its own implementations).”*
*Note: Java was developed by Sun Microsystems beginning in the mid-1990’s. Oracle acquired Sun, and Java along with it, in 2010. For convenience, references are to Oracle, even when referring to time periods before Oracle acquired Sun.
However, Oracle has a good argument that interoperability is properly raised in connection with a copyright fair use defense, not to determine whether the plaintiff’s work is copyright-protected in the first instance. In fact, the two key cases relied on by Judge Alsup, Sega v. Accolade (9th Cir. 1992) and Sony v. Connectix (9th Cir. 2000), point strongly in this direction.
Judge Alsup relied on the first of these cases, Sega, for the proposition that a software company may copy functional aspects of an existing program to the extent that copying is necessary for compatibility. While Judge Alsup described Sega as a “close analogy” to Oracle/Google, it is difficult to see how this is the case.
Sega involved intermediate copying* of computer code as an initial step in the development of a competing product, and the court analyzed the defendant’s conduct under principles of copyright fair use, not copyrightability.
*Note: “Intermediate copying” describes a process of reverse engineering a program (typically by decompiling object code), and using the knowledge gained to create a compatible, non-infringing program.
Sega held that the defendant’s reverse-engineering and copying of a computer game’s short “lock out” code was fair use where it was necessary to bypass the lock out code to develop compatible game cartridges. The lock out code was 20 bytes long, which the Sega court described as de minimis, and the use of the code was the only way that the defendant could enable its game cartridges to operate on the plaintiff’s game machine.
Importantly, whether Sega’s code was copyrightable was not the focus in Sega v. Accolade. The issue in that case was whether Accolade’s intermediate copying was protected as fair use. The Ninth Circuit never focused on whether the plaintiff’s (Sega) code was protectible, although it did observe, in passing, that the 20 byte code was “functional,” and that no creativity and originality went into its design.
By contrast, in Oracle v. Google it is undisputed that the structure of the Java API is creative and original, that it does not fall under the de minimis doctrine (7,000 lines of code vs. 20 bytes), and that it was not implemented for purposes of compatibility, but rather for the more general purpose of making Google’s Android OS more easily adaptable to programmers who already were familiar with Java.
The second case relied on by Judge Alsup, Sony v. Connectix (also described by him as a “close analogy”), seems even more remote to the issues in Oracle/Google. Judge Alsup held that Sony (like Sega) stands for the proposition that “interface procedures” required for compatibility are not copyrightable.
However, in the Sony case, while Connectix reverse-engineered the Sony basic input-output system (BIOS) in order to duplicate the “interface procedures” of the Sony PlayStation, there is no indication that the resulting Connectix program was an infringement of the Sony program, and therefore the coyrightability of the Sony system was not at issue. The case involved a fair use analysis of reverse engineering, which is not relevant to the issue decided by Judge Alsup: whether the structure of the 7,000 lines of Java code copied by Google is protected by copyright law in the first instance.
Oracle v. Google is not an “intermediate copying” case, and Oracle has a strong argument that both Sega and Sony are weak authority (if they are authority at all), upon which to support the conclusion of the Java API’s non-copyrightability reached by Judge Alsup. If the CAFC agrees, this could serve as the basis for reversal and remand either to reconsider the issue based on the correct principles of law, or to proceed directly to the damages phase of the copyright case, along with a retrial of Google’s fair use defense.
2. Under Computer Associates v. Altai, Does Filtration Based on Interoperability Apply “Ex Post” to the First Author’s Work?
A closely related issue arises under Computer Associates v. Altai, decided by the Second Circuit in 1992. This case established the “abstraction – filtration – comparison” test, which remains the gold standard in software copyright law. The key component of this test is filtration, according to which the court “filters out” non-copyrightable components of the first author’s (typically the plaintiff) computer program. One factor identified by the court in Altai was “compatibility requirements or other programs with which a program is designed to operate.”
Although Judge Alsup did not explain how Altai supported his conclusion in Oracle/Google, he discussed the decision at length, Google relies on it implicitly in its appeal brief, and the CAFC is free to use it to uphold Judge Alsup’s decision.
However, under Altai it is the first programmer’s work (in this case Oracle) that is filtered, not the alleged infringer’s work (in this case Google), and the filtration is performed as of the time the first work is created (ex ante) not as of the date of infringement (ex post). When Oracle created the Java API it did not do so to meet compatibility requirements of other programs. Thus, copyright protection of the Java API was not invalidated by compatibility requirements at the time it was created.
In order to uphold judge Alsup’s ruling that the Java API declaring code’s later-acquired popularity caused it to lose copyright protection, the CAFC would have to conclude that while Oracle may have owned a copyright-protected program when it developed Java in 1995 (and subsequent versions in later years), it lost that copyright protection based on the subsequent popularity of Java. This is analogous to a trademark losing protection when it becomes generic, an extension of Altai that no court has adopted.
Oracle’s argument may be made stronger by the fact that Google’s Android OS is only partially compatible with Java. In fact, Google does not market Android as Java-compatible. As Oracle argued, Google did not create the Android OS so that it could market it as compatible with Java, it was “just trying to make Android more attractive to programmers who know the Java API conventions.” This may make it more likely that the CAFC will conclude that interoperability goes to the issue of fair use, not the copyrightability of the Java API in the first instance.
Again, the CAFC may conclude that this argument could serve as a defense for Google under the fair use doctrine, but that it does not go to the issue of whether the Java API is copyright-protected in the first instance. This would result in the CAFC issuing an order that includes some combination of the following: reversing Judge Alsup’s order on copyrightability (with instructions to either reconsider the issue or to reinstate the jury verdict of liability), and remanding the case for a retrial on fair use.
3. Will the CAFC Reject the District Court’s Reliance on Lotus v. Borland?
Finally, Judge Alsup gave heavy weight to the First Circuit’s 1995 decision in Lotus v. Borland. This important and controversial case held that a menu command hierarchy that serves as the method by which a program is operated is an uncopyrightable “method of operation” under 17 U.S.C. §102(b).* Lotus has never been applied by the Ninth Circuit (whose copyright law is controlling in this case). However, Judge Alsup concluded that while the Java API may resemble a “creative … original taxonomy … it is nevertheless a command structure, a system of method of operation … of over six thousand commands to carry out pre-assigned functions. For that reason it cannot receive copyright protection ….” In fact, a close reading of Judge Alsup’s decision in Oracle/Google could lead one to conclude that this was the sole basis on which Judge Alsup found the structure of the Java API declaring code to be uncopyrightable, and therefore affirmance or reversal may depend on whether the CAFC concludes that Judge Alsup properly applied Lotus in Oracle/Google.
*Note: 17 U.S.C. §102(b) provides that “In 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 ….”
The CAFC may be unpersuaded by Judge Alsup’s decision to apply Lotus, based either on its limitation to First Circuit law, or based on facts that could serve to distinguish it in this case. It is not a stretch to think that the CAFC could hold that while Java’s system of commands may embody a method of operation that falls under §102(b), under Ninth Circuit law the court is required to determine whether any separable expression is entitled to copyright protection, an analysis that Judge Alsup did not perform.
The CAFC could even reject Lotus outright, and hold that a system of commands is not a “method of operation” under §102(b). Both the Third and Tenth Circuits have indicated that the fact that the words of a program are used in the implementation of a process should not affect their copyrightability, and the CAFC could conclude that this is the appropriate approach under Ninth Circuit law.
Bottom line: Google has its work cut out for it to persuade the CAFC to uphold Judge Alsup’s ruling on the copyrightability of the Java API declaring code. The judge’s decision does not give Google a lot to work with, and leaves some gaping holes for Oracle to aim for. The outcome is far from certain, and the resulting decision has the potential to be a watershed event in the development of software copyright law.
by Lee Gesmer | Nov 15, 2013 | Copyright
When I began this blog in 2005 I discovered that I had one loyal reader: my father, Bennett Gesmer. After he passed away on July 4, 2010, just shy of age 90, I found a folder with printouts of all my posts in his desk.
My father was a member of the “Greatest Generation.” He was an Air Force captain in WWII. He spent two years in the Philippines, and the current tragedy there would have deeply saddened him.
My father graduated from MIT with a degree in chemical engineering after the war, and spent his life in that business. He was an “intellectual-without-portfolio” whose heroes were Albert Einstein and Richard Feynman (he overlapped with Feynman at MIT before the war). Like most people trained in science he knew almost nothing about the law. His initial reaction to my blog posts was one of surprise. “The law is that unclear?” he asked me. “Even judges don’t agree on the law?” In his mind the law was codified, and all a lawyer had to do was look up the answer, which would be clear as day. He was surprised to learn that often the law is as clear as mud.
Of all the cases I wrote about he expressed real interest in only one: Google Book Search. After I published the first of several posts on this case in November 2005, he told me that if Google Books passed legal muster it would be one of the most amazing advances in human history. “Just imagine,” he said, “if I had been able to use Google Books to perform the research I was forced to do by hand at MIT in the 1940s.” “Just imagine if I had been able to search all the books in the world during my lifetime. It would have changed my life and the world I lived in!”
My father didn’t live to see the decision Judge Chin issued yesterday holding, after eight years of litigation, that Google Books is protected from copyright infringement by fair use. He didn’t live to see Judge Chin write:
In my view, Google Books provides significant public benefits. It advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders. It has become an invaluable research tool that permits students, teachers, librarians, and others to more efficiently identify and locate books. It has given scholars the ability, for the first time, to conduct full-text searches of tens of millions of books. It preserves books, in particular out-of-print and old books that have been forgotten in the bowels of libraries, and it gives them new life. . . . all society benefits.
If Judge Chin’s decision withstands appeal (which seems likely), November 14, 2013 is likely to be remembered, at least by some, as the day that not only access to knowledge changed, but in some fundamental and profound way the nature of knowledge itself changed, perhaps forever. How my father would have relished that if he had lived to see it!
by Lee Gesmer | Nov 14, 2013 | Copyright
Here are the slides from a presentation I made at the Boston Bar Association on November 13, 2013. The slides are embedded below, and a direct link to the file is here.
[scribd id=183983032 key=key-2mpmquvle7g3678b55y9 mode=scroll]
