Principles for Deciding
Hard Copyright Cases
Paul Edward Geller
The media have advanced from print to the internet. Copyright
laws are now in crisis: they have become more complex, but less adequate to their
tasks. For example, works of the mind are increasingly accessed, while creators
receive decreasing benefits. Authors’ rights need rethinking, as we shall
venture in unpacking ten principles below, to guide
deciding hard cases.[1]
In English, we speak of
“copyrights”; in most languages, of “authors’ rights.” In instituting such
rights, lawmakers pursue aims that range from enhancing cultural wealth to
recompensing flesh-and-blood creators equitably.[2] We shall at points deviate from settled copyright
laws, but only to the extent that these are embroiling us in hard cases.
Accordingly, let us ask: What authors’ rights could lead courts to resolve such
cases best?[3]
Copyright laws initially recognized authors’ rights to make their
works public in print and on stage.[4] With progress, more powerful media have been making
cultural creations more widely and rapidly accessible. Statutes assure authors’
rights for specific media; treaties extend their “umbrella” rights over communication
and making available.[5] In our first principle, we propose the core right of dissemination to entitle
creators to control the release of their works throughout the public or, absent
control, to be paid for reception. But could they assert any such far-reaching
right without some finding themselves pitted against others in court?[6]
Imagine a case of such tensions. From Hiroshige’s woodblock
prints, Van Gogh made studies in oil paint. Check out their landscapes: the Flowering
Plum Tree and the Bridge
in the Rain. Hypothesize that Hiroshige prepared his prints recently and
that Van Gogh is painting his studies at present. Copyright laws could vary in
resolving the issue: Should Hiroshige have the right to have Van Gogh
prohibited from reworking his prints into paintings?[7] The core right, delineated here, would entitle the
prior artist to determine whether, and to some extent how, his works reach
others. In such a right, Hiroshige would find no basis on which to have Van
Gogh compelled to cease merely painting studies of his prints. To begin scoping
out Hiroshige’s rights, ask: What could Van Gogh do with his studies outside of
his studio? Above all, should he be free to show or sell exemplars on the open market?[8]
Vary our case for a moment. Suppose that, from woodblocks for
Hiroshige’s prints, a workshop he had not engaged made further prints, using
his color scheme, and sold them. Now, an artist may have her author's right
enforced to prevent such publication of mechanically made exemplars, often
called “copies.”[9] Return to our quite different case just hypothesized:
Van Gogh has chosen patterns and colors out of Hiroshige’s prints and woven
them into his own studies that mere routines could not have then generated.
Strikingly, from the prints to the studies, staged planes have been articulated
into active strokes, the palette has been selectively shifted from muted to
intense, and tenor turned from contemplative to impassioned. Under our first
principle, no law should entitle any creator, like Hiroshige, to have another
quite simply stopped from enhancing culture. In particular, courts would
refrain from barring any later creator, like Van Gogh, from releasing a
significantly recast work to the public. But under our third
and fourth principles, the court could grant the prior
creator other relief.[10]
Under our core right, following most laws on
point, a work need not be fixed in any “hard copy” to be protected, but has to
be perceptible to others.[11] Consider a jazz group
improvising live in an unrecorded jam session, audibly creating music as a
team, with only some members distinguishably riffing by themselves at times.
Their inputs, for example, rhythms, harmonies, or tunes, attract copyright to
the extent that these are creatively pulled together into some self-standing
work or works.[12] That is, matters such as
texts or as aural or visual images are protected insofar as they express sense
in contexts they furnish one another within such a work.[13]
Performers find opportunities in scripts or
scores to imbue works with their own meanings. It might then, at times, prove
misleading to impose any dichotomy between “faithfully” performing a work and
“originally” authoring another version.[14] Actors, musicians,
directors, game-players, or other executants, amplifying on some notation or
scheme, can present works with their own shadings, cadences, or like turns,
even overall consistencies. Under our second principle, performers, for
example, in our jazz group, could be treated as authors to the extent that they
reforged some prior work with their inputs, distinguishing their own
renditions. Instead of trying to disentangle the overlapping notions of
“performers” and “authors” in theory, we shall ask how to grant such creators
relief in practice. Our approach to copyright remedies, set out under our third and fourth principles,
frames this problem.[15]
Industrial designs raise issues straddling
copyright and industrial property. Compare distinct designs by Alva and Amino
Aalto and by Charles
and Ray Eames. The Altos were pioneers in making chairs out of plywood
pressed into simple curves. The Eames developed chairs using techniques for
molding plywood into compound curves. How to protect such creations that,
recognized as original and beautiful, were shaped with novel methods? Copyright
protects cultural materials creatively brought together into meaningful works;
design or patent rights protect innovatively useful products or processes.[16] Suppose that a
manufacturer, while following the configuration of one of the Eames’ designs,
improves on techniques to fabricate chairs similar to theirs, but more durable
under rough use. What could occur in the marketplace if the Eames asserted
copyright in their design against this manufacturer for making and exploiting
its improved chairs? If successful, they could constrain competitive uses of
techniques for making products like furniture in the light of ergonomics. Such
control could, under copyright, last longer than under design or patent laws
and escape priority conditions in these laws. To avoid such results, our second
principle would preclude enforcing copyright in what techniques sufficed to
generate.[17]
How to disentangle creations, attracting
copyright, from technical implementations? Cultural materials, like language
and musical or artistic forms, have long been articulated with special
techniques. Envisage further hypothetical cases, to start of historic creators,
but once again as if their works were now still protected.[18] With authors’ rights,
Gerard Manley Hopkins could control publishing his poems as worded,
and Georges Seurat could control publicly showing his picture Sunday on the Grande
Jatte as painted. But Hopkins could not thus have others precluded from
circulating their own poems drafted with the sprung rhythm he had found in
common speech; nor Seurat bar others from displaying their own pictures painted
in the pointillist mode he had devised from impressionism. It is often blithely
said that copyright covers “expressions” but not “facts” or “ideas”; a court
must decide how far to protect texts or images thanks to creativity they
manifest within works, as distinct from mere information or methods these
evince.[19] For example, dramatists may
stage tragedies in which they contrive new plays from stock plots, like that
classically set out in the idea of having a hero act with hubris and
fatefully fall from a high position. Indeed, writers may promulgate myriad
texts that they unfold out of story lines, styles, etc., and artists may
circulate myriad images that they configure with compositional schemes, tonal
or color palettes, etc. Accordingly, under our second principle, copyright
should not be enforced in material that techniques have produced. These range
from know-how and literary or artistic devices to algorithms coupled with data.[20]
What
ought courts do when specific rights might be or are violated? They may order parties
not to do certain acts or to do others, and they may award money. They have to
tailor remedies case by case by taking account of diverse variables, including
the parties’ risks of irreparable harm and their compensable losses or relative
gains. Within such equitable parameters, what relief to fashion for authors’
moral and economic rights in hard cases?[21]
Return to
our hypothetical case of Hiroshige’s prints and of Van Gogh’s studies of the Flowering
Plum Tree and of the Bridge
in the Rain. Though artists
had long trained by emulating each other’s exemplars, Van Gogh had “scruples of
conscience” that his studies approached “plagiarism.”[22] There is a larger question
here: How could we appreciate Hiroshige’s graceful prints in muted shades if we
knew them only from Van Gogh’s striking studies in oil? We might miss or
confuse the accomplishments of these artists if we did not learn who had
created the prints, and who the studies, or if these works were not accessed
intact. Copyright laws variously provide relief for authors’ moral rights to be
named as creators of their works and to forestall prejudicial changes to their
works.[23]
We shall here explore remedies that, for
moral rights, may complement each other.[24] Start with creators’
rights to have authorship of their respective works attributed to themselves.
Each may require references to her name or pseudonym and to her work itself, if
need be, to identify her as author of the work. Such references can minimize
harm risked from disseminating her work in any misattributed or otherwise
misleading guise.[25] But, as seen in the jazz
example broached under our second principle, any creative
input by one author might so coalesce with those of others, or be so reworked
by them, that it becomes hard to disentangle respective contributions. In that
event, multiple attributions of authorship may be in order; or if prior inputs
are sufficiently eclipsed, only creators of discernibly released works need be
referenced.[26] What if, without reference
to any original creator, the work were released to the public largely
unchanged, but with authorship attributed to a plagiarist? The creator could be
awarded damages for her losses or restitution of the plagiarist’s gains.[27]
Creators have rights to maintain the integrity
of their works. Suppose that, as released without any author’s consent, a work
is incorrectly presented, say, in a truncated or diluted iteration. Insofar as
the work, in this distorted guise, displayed no further creativity, there would
be neither any later author’s claims nor eventual audiences’ needs to weigh: a
court may enjoin disseminating the work in its defective variant.[28] In appropriate cases,
judges should accommodate such claims or needs: for example, their orders may
minimize distortion by disallowing hack changes in works or allow creatively
reworked versions to reach the public. Imagine another historical case:
Beaumarchais wrote the play on which Mozart and Da Ponte based the opera The
Marriage of Figaro, with the text of his play rewritten in their
version to adapt it into musical form and to evade censorship. Our first principle would have courts refrain from simply
blocking access to the later work without taking any account of its creativity.
In our case here, a court should not stop the public staging of the new opera
or publication of its libretto rearticulating the play. But the prior writer could have herself
and her work referenced together to avoid public confusion as to authorship and
version.[29]
Remedies become hard to reconcile when some
rare embodiment of a work, like a single art object, risks being obfuscated,
mutilated, or destroyed. Authors’ rights can then get caught in tensions with
other rights or interests, often with the tangible property of whoever owns any
exemplar at risk. Our third principle would leave courts with the Solomonic
task of reconciling such opposing rights, while taking account of public
interests.[30] For example, in one case,
a sculptor created The
Tilted Arc for a common space, but people frequenting the space wanted
it removed. On appeal, the administrative decision to relocate this sculpture
was upheld.[31]
Creators devote energy and talent to writing
texts and to making images in sound or sight. But authors or other
rightholders, including enterprises with whom they contract, risk having others
free-ride on their achievements or investments. After the advent of print,
copyright was instituted to protect writers and artists, as well as their
publishers, against losing markets to pirates who reset type or plates quickly
and sold reprints cheaply.[32] Upon advances like
recording and broadcasting, lawmakers enumerated rights to exploit works in
markets that such media opened up. Depending on the case, rightholders may then
seek orders to restrain threatened or ongoing infringement. They may also sue
for actual damages for losses, or for restitution of gains, arising from
infringement.[33]
Copyright infringement occurs, as some case
law explains, insofar as protected matters, expressing some sense of the work
at issue, are disseminated without due consent.[34] But to the extent that
such matters are creatively made over into another work, our first
principle would direct courts to allow the author of the ensuing work to
make it public. Requested to issue any sweeping order to the contrary, a judge
should distinguish between routine reiterations and creative reworkings,
including translations, transformations, or adaptations. Contrast a
computer-generated translation, mechanically rephrasing a commonplace text,
with a human’s creative translation of a work as linguistically rich, say, as
one of Mallarmé’s
poems. A court should not deny this flesh-and-blood translator the chance
to enhance culture, even with her interpretive work which rearticulates matters
protected within a prior work. But what if a slavishly or arbitrarily produced
“copy,” with nothing but hack changes or rote twists, clumsily abridges or
tritely renders a work?[35] A court may enjoin the
infringing dissemination of such a counterfeit if equitable criteria,
decisively that of averting irreparable harm, are met. There would be good
reason to prevent any obvious substitute for the work at issue from entering
the marketplace. There would be less need to bar a distinctly reforged work
unlikely to usurp any market that claimant would exploit.[36]
An author or other rightholder may claim
damages or restitution for copyright infringement. To assess actual damages, a
court has to gauge harms that have foreseeably resulted from infringement,
typically market losses.[37] But what about some market
that a work does not address, for example, where a character in an animated
film reappears as a toy? Perhaps the film might do all the better on the
marketplace because more people want to see the film once the toy is widely advertised.
Apart from damages, an author or other rightholder may seek the restitution of
such enrichment as has arisen from infringement.[38] To
reckon the amount of such recovery, the court has to focus on matters protected
in the work at issue and, in turn, trace gains achieved from infringing with
these matters. Consider Dashiell Hammett’s novel The Maltese
Falcon,
with its suspenseful plot and snappy dialogue, which John Huston rather literally
followed in his film of the same name. Hammett’s story took on new life in
Huston’s motion picture, thanks to creativity in directing actors, in shooting
and editing the film, and in otherwise putting the story on screen. Suppose,
altogether hypothetically, that the studio exploiting this motion picture had
not first contractually obtained rights to exploit the novel cinematically.[39] Under our fourth
principle, the studio could, if it made the film public without such consent,
have risked facing the novelist’s action to share in its gains. In such a suit,
infringement analysis would inform accounting estimates of how far the illicit
taking of an underlying text contributed to the success of a film.[40]
Much ink has been spilled, not least in
copyright jurisprudence, in appreciating “creativity” in literature and the
arts.[41] Courts, however, need not
reach such evaluations in absolute terms once and for all, even in disposing of
hard cases. In assaying how creatively one work has been redevised into another,
it might suffice to check the initial and later works against technical
developments and literary or artistic conventions.[42] Findings on point may cut
many ways: in challenging the relative creativity of an adversary’s putative
work, each party may lay the basis for objecting to remedies that, as the court
tailored them, would protect or allow this work. Suppose that a plaintiff seeks
an order to stop the dissemination of any translation into English
substantially similar to that she made of a French text which she alone is
licensed to exploit in English. But what if a defendant here demonstrated that
an adequately programmed computer could draw plaintiff’s version out of this
French text, putting it into English terms virtually identical to hers? In wrapping
up our second principle, we hinted that such machine
translation would only technically implement linguistic “facts” and “ideas,”
but not create protectable “expression.”[43] Put the theoretical
question into suspense: Could any such argument preclude a human’s translation,
even if creative when made, from attracting copyright? By hypothesis, anyone
using the requisite software on the French text plaintiff here translated could
access an English version like hers. Hence the practical consequence: Were the
software widely available, granting effective relief would become harder.[44]
How
far should authors’ rights extend? In hard cases, prospective but occasional users
of works might incur onerous transaction costs in obtaining due consent for
their uses, or claimants might encounter tensions with overriding laws or
difficulties of enforcing copyright. In response, lawmakers may exempt some
uses of works from remedies: to that extent, consent may not be due for these
uses; as well, statutes may delimit the duration of rights. How, effectively,
to construe such exceptions and limitations?[45]
What to do if no rightholder’s consent is
readily available for redisseminating copyright-protected matters for some
critical or informational use?[46] For example, a scholar might not have resources to obtain permissions to
illustrate a book on art history with many photographs of art objects. Or a
reporter might not have time to obtain clearance for a tune played, or a
painting hung, in the background of news about to be shown. Or a teacher might
not find it feasible to license in advance texts to be given a class. Copyright
laws tend to allow such redisseminations, but in complexly varying exceptions.
These we shall rethink in terms of common sense.[47]
Copyright laws become unworkable when they
fail to tell laypeople how to comply with them. Such users should not have to
seek legal advice whenever they are about to make another’s work, much less
excerpts, available to others. Return to acts of redissemination that, as we
just canvassed them, make a point or aid inquiry with some passing or partial reiteration
of a work. Laypeople often cannot verify whether, with such acts, they fulfill
provisions for exceptions that might allow uses in theory but are not cogent in
practice. One treaty provision would have us confirm that any colorably
exempted use does not “conflict with a normal exploitation of the work” and
does not “unreasonably prejudice the legitimate interests of the right holder.”[48] But most users are not in
any position, on the one hand, to gauge harms they might cause across complex
markets or, on the other, to appreciate authors’ or other rightholders’ claims
at stake in disseminations they contemplate. Our third
principle would entitle creators to require references to themselves as
authors of their works; our fifth principle would exempt, from injunctions and
actual damages, such redissemination of protected matters as is reasonable for
critical or informational uses. To make exceptions workable, courts should
allow parties invoking them to comply with this last condition of reasonable
use by consulting only common sense on point.[49]
Note how this criterion shifts perspectives.
Our third and fourth principles set out criteria to guide judges
fashioning relief in copyright cases.
But the test of common sense would not entail the judicial task of weighing
such equitable factors as harmful “effect” on any “potential market” or some
more or less creative, “transformative” use.[50] Rather, it would have both
courts and users ask: Would we, as a matter of common sense, find the
redissemination of the protected matters at issue reasonable as a critical or
informational use in the case at hand? For example, a scholar may keep quotes
of texts or images to sizes that fit neatly into her contexts, a journalist may
fleetingly convey a whole work in reporting on news, or a teacher may give a
small class access to samples of works. Suppose that such a party shows that
her redissemination, while duly referencing the work used and any author or
like source, serves some critical or informational use. This party would be
liable for damages foreseeably caused by her use only insofar as it exceeded
what common sense would find reasonable in her case.[51] But even excused uses
might in turn feed more massive redisseminations, notably those carried out in
large-scale networks. Restitution, imposed judicially or by statute as
equitable remuneration, could be due for such redissemination.[52]
Authors’
economic rights run as long as treaties or statutes specify, while moral rights
may last longer under some laws. Whichever type of right is asserted, if it has
not lapsed, courts may take the passage of time into account in appropriate
cases.[53] In particular, a judge may hedge or even refuse remedies for an
author’s claims that, after her death, have waned in urgency with time. For
example, in a suit on the moral right of integrity of Victor Hugo, who had been
dead well over a century, French courts declined to enjoin sequels to his
classic Les Misérables.[54]
Overriding
laws, in hard cases, may delimit how far authors’ rights justify specific
remedies or other measures of enforcement. Treaties, as well as constitutional
and related laws, protect basic interests, for example, in privacy, free
expression, or open information.[55] Consequently, a court should keep relief within the parameters of such
overriding laws as bear on any case at bar, while it proportionately disposes
of pertinent claims.[56] In copyright cases, courts could avoid impairing basic interests, inter
alia, by tightening up proof of infringement, by closely fitting remedies
to the facts at hand, or by broadly construing exceptions or other defenses.[57] Consider, for example, the parodies Alcolix and
Isterix of protected comic-strip characters: to safeguard artistic freedom,
German courts allowed these parodies to the extent that they significantly differed
from the underlying works at issue.[58]
Few
hard cases reach the courts. Indeed, most disputes are handled elsewhere. Under
our seventh and eighth principles, we turn to private
transactions, suggesting that contracts might not fully settle tensions between
creators and enterprises with unequal bargaining powers. At network levels,
intermediaries from broadcasters to internet services often arose as private
enterprises, but many have acceded to increasingly global reach, empowering
them publicly.[59] How far to charge such institutions with reconciling, on the one hand,
usually private claims for copyright relief and, on the other, most notably,
free expression in the public sphere? Under our ninth principle, we shall address such problems in shifting from particular claimants’
infringement suits to technical measures now being tested against online uses.[60]
Authors enjoy rights in their own works once
they create them. They share economic rights equitably in any work they create
together or with any principal. Further, they may agree to have others exploit
their works, and the law may also effectuate transfers of rights. Who, finally,
should have rights in a work?[61]
Under
our first and second principles, flesh-and-blood
creators originally have authors’
rights in their works.[62] But many creators might contribute, for example, to a dictionary or to
a feature film, as collaborators, in a team, or as agents. How may lawmakers
allocate copyrights in creations arising out of multiple efforts or with
direction by some employer or other principal? The very fact that some work
culminated out of such parties’ diverse inputs and transactions, whether
creative or administrative, points to their consensus. Our seventh principle
complements rules of law that would initially vest rights in such works. It
would lead courts to effectuate the parties’ consensus as to their economic
rights.[63]
Contrast
a work created by many authors on their own with a work made under someone
else’s direction.[64] Suppose, on the one hand, an interactive game created by an ad hoc
team of globally networked contributors. Assume that no contract governed these
authors’ economic rights in the game in so many words and that no principal
directed them. Our seventh principle would have courts equitably construe the
creators’ consensus in allocating such rights among themselves. For example,
their course of conduct, their informal agreements, or contract terms typically
used in network circles could inform thus effectuating some approximately
common intention.[65] Suppose, on the other hand, contributions to a work created for a
principal, like an employer or a commissioning party. But on engaging the
contributors to this work, did this principal have much more bargaining power
than they? If so, any putative consensus, say, terms inferred into a tacit
agreement, should be restrictively construed. For example, a court could ask to
what allocation of rights creators would reasonably have agreed.[66]
How
can creators earn their livings in rapidly evolving media markets? For payment,
authors may assign economic rights to others, or they may license others more
or less exclusively to disseminate their works.[67] But it is often hard to anticipate how creations might be eventually
exploited: among other things, they might be elaborated into diverse works
appealing to unexpected audiences, and media progress might open up unforeseen
markets. Indeed, past contractual models are not likely to have been
appropriately formulated for future media: for example, agreements to publish
“hard copies” could have little relevance for streaming works online.[68] It would be disingenuous to presume that creators always contracted
their rights away without being leveraged by enterprises with greater
bargaining power than they. How then to construe, even enforce, older
contractual language purporting to alienate “all” eventual copyrights? Did
terms to transfer such rights adequately warn authors of the full range of
benefits they were to give up? With any flaw like lack of free assent or of
full notice, overreaching contracts could be equitably cut back in effect.[69]
Indeed,
contracts crystallize fewer consensual deals in markets that ever-fewer parties
dominate. Over centuries, culture industries have emerged, starting in publishing
houses and going on to the major recording and film studios. Such enterprises,
regularly producing works with creative freelancers on contract and authors for
hire, accumulated copyright interests in their repertories. Many of them have
since shifted from production to extracting revenues from old works on new
media, and some have been taken over by financiers mining copyright assets for
capital, in either event shedding prior relations with creators.[70] At much the same time, royalty-collecting societies, labor
organizations, and other such regimes have lost leverage to optimize
remuneration for authors and performers, notably online.[71] At rare junctures, a popular artist with bargaining power might assert
claims to exploit her own works by challenging past copyright transfers. A
broader inquiry may be opened: How else could creators achieve equitable terms
on markets now consolidating on internet platforms?[72]
Holders
of authors’ rights may alone exercise these rights. Under our seventh principle, only flesh-and-blood
creators are originally vested with such rights in their own works.
Accordingly, any other party would need to have chain of title running from the
creator or creators of a work up to and including herself in order to assure
whatever copyright she would assert in the work. What if, at the start of chain
of title, no author had effectively consented to cede her rights to anyone
else? Suppose, as well, that no author’s right has been transferred by law to
another party. By default, whoever created the work would retain rights over
its dissemination.[73]
How
to extend chain of title to copyright, even across borders? One may transfer
economic rights by contract: under most laws, if the holder of an exclusive
right initially assigns it to one party and later to another, the first
transfer takes effect as against the other.[74] Caveats might arise: for example, some laws allow one transferee to
prevail over another by giving notice, often by recording the grant on some
designated public register, but such local regimes are not globally
coordinated.[75] As well, transfers of copyright may be made by law, for example, those
in creative teams or employment, in marital communities or inheritance, in corporate
successions, etc. In any event, it would be prudent to require a claimant,
optimally one with sufficient financial means, to warrant title to any
copyright interest that this party purports to hold or grant. Not only could
pertinent transactions, even as checked with due diligence, fail to lock in
chain of title worldwide, but no treaty regime systematically dictates which
laws would govern transfers of such copyrights as respectively apply in
different countries. Diverse laws, bearing on chain of title claimed in these
rights across borders, could conflict in hard cases.[76]
Copyright
is supposed to induce authors to market their works openly. Optimally, market
players ought not distort competition by abusing their leverage on the
marketplace, which itself needs good data to function.[77] In particular, holders of exclusive rights, in dominant positions, may
not frustrate the redissemination of works by arbitrarily rebuffing prospective
users. For example, a court may overturn such a rightholder’s refusal to
negotiate any reasonable license to redisseminate matters that it controls in a
specific market.[78] Suppose that an author had assigned copyright in her work to one party
who both published it and reassigned this copyright to another party who has
since disappeared from view, no longer marketing the work. Users of this
“orphan” work, lacking ready information to find the rightholder with whom to
deal, could raise equitable defenses against at least some relief.[79] However, parties disseminating protected works, with neither consent
nor any defense, could owe authors or other rightholders compensation. For
example, thus profiting from such matters online, an enterprise facilitating
access could be enjoined or held liable.[80]
Controlling access to works tends to become
more complex as media increase in power. For example, claimants can code
digitized data transmitting works, and intermediaries can channel such data
worldwide. How to enforce authors’ rights in growing networks? Which laws to
apply to works crossing borders?[81]
9. ENFORCEMENT:
Courts may protect authors’ rights by imposing self-help measures to remedy infringement,
by granting civil awards for harms foreseeably caused by infringing acts or for
gains made by such acts, or by criminally sanctioning such acts as statute
specifies.
Private
parties can themselves restrict access to works. They can resort to self-help,
notably technical measures, for example, to encrypt works. Intermediaries can
avoid liability, typically by disabling access to contents that appear to be
illicitly posted online.[82] Claimants may apply to courts, for example, to forestall the circumvention
of technical measures or to have intermediaries employ them to police contents.
Such measures could arguably keep the costs of enforcing copyright from rising
ever faster, but not without putting basic interests at risk. Under our ninth
principle, courts should decline to give technical measures effects stronger
than suffice to remedy violations of authors’ rights.[83]
Authors
or other rightholders have usually sued named parties case by case for
exploiting their particular works or performances. Now, online, users massively
share works, more or less privately, and intermediaries aggregate protected
matters publicly, often profiting from ensuing dissemination. How far, in
cyberspace, can authors or other rightholders exercise their rights, or users
enjoy exceptions, given such modes of wide-ranging exploitation as resist
judicial scrutiny?[84] So far, notice-and-takedown procedures have paralleled those for
injunctions of infringing releases of works in that claimants giving notice
have had to identify works at issue. But accelerating internet traffic is now
prompting efforts to deny access to questionably defined contents upon
potentially black-box approximations of infringement. Courts may well
procedurally enable interested parties to inquire into, even to challenge, such
computerized measures online.[85] Still, it remains unclear how, given the stretch and speed of the
internet, these measures might be consistently held to legal standards. To
reword an old inquiry for new media: How to police often-elusive cyber-police?[86]
Consider
the worst-case scenario: Rube Goldberg machinery would impact
authors’ rights helter-skelter. Artificial so-called intelligence could
erratically upset creators’ control of the dissemination of their works online.
Computers might, for example, deflect searches to ersatz versions or
swamp humanly created works with algorithmically simulated texts or images.[87] Computer programs do filter out ostensibly suspect access to works
across the internet, for example, those posted without apparently due
attribution or consent. But the computerized interference with contents in
cyberspace, if arbitrary or perplexing, risks inhibiting creators’ exercise of
their core right or weakening any inducement for them to release works.[88] To ward off such chilling effects, courts could employ criteria that
they have refined case by case for enforcing authors’ rights, especially in
imposing such coercive remedies as injunctions. Under our fourth principle, courts may enjoin only
routine reiterations of any work at issue upon some showing of the risk of
irreparable harm. For example, technical measures might not pass muster if they
squelched access to creative reworkings. We have illustrated such recast works
with Hiroshige’s Flowering Plum Tree and Bridge in the Rain as “copied” by Van Gogh. In such cases,
decision-makers should discipline extra-judicial enforcement to avoid crimping
authors’ styles.[89]
A
court exercises the State’s powers in civilly enforcing authors’ rights. It
does so as well, often more harshly, in criminally punishing copyright
infringers. But civil remedies risk becoming punitive, for example, as monetary
awards lose proportion with actual damages or unjust enrichment in hard cases.
Imperatively, pursuant to the principle of legality, the State has to inform
the members of the public, in statutory terms clear to all, of legally
punishable acts. How to respect this general principle of legality in the
special field of copyright, with all its open-ended notions to which courts
resort in coping with protean creativity?[90] The words “copy,” “facts” or “ideas,” and similarly flexible terms
make for hard cases in which copyright laws, endemically formulated in such
nomenclature, should be construed closely to assure predictable exposure to
criminal measures. In addition, punitive sanctions normally target parties
violating private rights or public rules while harboring culpable states of
mind or scienter, so that the State penalizes only malicious or
obviously harmful acts. But uncertainties in criteria of what takings would
arguably constitute copyright infringement could complicate defining such
states of mind. Thus, statute has to apprise users of what copyright protects,
while it specifies how releasing such matters to the public violates penal law.
Insofar as such notice is not given, no sanction beyond civil liability for
copyright infringement may be imposed. In effect, the State has to be precluded
from policing citizens arbitrarily.[91]
With
media progress, copyright transactions increasingly cross borders.[92] We have ventured principles for authors’ rights with an eye to
treaty-harmonized laws, while attempting to rethink notions making for hard
cases. Our principles may be tested by how well they lead courts to fashion
relief that defuses or resolves conflicts of copyright laws arising as
infringement globalizes.[93] To factor out more or less apparent conflicts, a court may ask: Could
enforcing laws applicable to the case at bar achieve aims for some of these
laws but frustrate aims for others? To the extent that such tensions are absent
from a case, there would be no true conflicts of laws to resolve. Or, if need
be, converging or complementary remedies could avoid or settle more or less
false conflicts.[94]
Hypothesize
one more case. Suppose that a mime, within the United States, creatively
improvised a pantomime work live.[95] Suppose also that, without the mime’s consent, another party covertly recorded
her improvisation on the spot and posted the resulting video online, making her
work accessible worldwide, and that she sued this party and his internet
service in a U.S. court. What if, parochially choosing only forum law to govern
the case, this court dismissed our mime’s copyright claims on finding that she
never, pursuant to U.S. law, fixed her work or had it fixed, say, in a score or
video?[96] The court would then ignore most copyright laws worldwide that,
effective where the work at issue could be received, as noted under our second principle, would
protect this work even if the author had not fixed it in any “hard copy.” Now
suppose, varying our case, that the U.S. court, taking jurisdiction over our
mime’s suit, holds such copyright laws abroad to be applicable to her claims
for reception country by country.[97]
Thus
amplifying our hypothetical, we reach the issue key to cross-border cases: How
to dispose of such conflicts as appear among copyright laws of diverse jurisdictions?
Judges might be tempted to stick to forum law, and lawyers to shop for a court
likely to choose law favoring their clients.[98] The copyright-treaty regime, with its basic principle of national
treatment, should discourage such choice-of-law roulette. This treaty principle
entitles qualified claimants to benefit from the copyright law of a treaty
country to remedy infringement threatened or suffered within that country.[99] Copyright laws of such countries may justify enjoining infringing acts
that risk yielding irreparable harm in their respective audiences or markets.
By the same token, the law of such a country may call for monetary awards for
damages or for restitution if it protects the work at issue enjoyed there. The
treaty regime has harmonized copyright in authors’ minimum rights that we have
articulated into some core right to guide courts in hard cases.[100] In the hypothetical case of our author, this core right could support
enjoining access to her pantomime where diverse laws converged to protect this
work. Monetary awards would complement each other insofar as they were granted
under specific laws in effect where actionable harms or gains took place.[101]
Now that
we have unpacked our principles, let us look at them all together. Click on
each principle set out immediately below to return to explanations offered for
it above.
The
mustachioed, not the bearded, Marx quipped: “Those are my principles, and if
you don't like them ..., well, I have others.”[102] Our readiness to
experiment with basic conceptions differs perhaps from his. We here critiqued
notions key to copyright laws bearing on proliferating hard cases. For example,
computer-simulated texts and images, as well as the file-sharing and
aggregation of works online, call for new remedies for authors’ rights. Media
trends thus keep challenging us to rethink our copyright principles.[103]
© Paul Edward Geller 2024
[1] For the initial version, see Paul Edward Geller, Beyond the Copyright Crisis: Principles for Change, Journal of the Copyright Society of the USA, vol. 55 (2008), 165.
[2] How such aims enter into tensions or converge may vary, not only among copyright laws, but case by case. For another analysis, see Tim Wu, On Copyright's Authorship Policy, University of Chicago Legal Forum, vol. 2008, no. 1, 335.
[3] For critical analysis of “best” here, also cited below, see Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3 (with French and Spanish translations), published in longer form as Must Copyright Be For Ever Caught Between Marketplace and Authorship Norms?, in Of Authors and Origins: Essays on Copyright, eds. Brad Sherman and Alain Strowel (Oxford University Press, 1994), 159.
[4] For analysis of the emergence of copyright laws and authors’ rights, see Paul Edward Geller, Copyright History and the Future: What's Culture Got to Do With It?, Journal of the Copyright Society of the USA, vol. 47 (2000), 209, at 210-35.
[5] See WIPO Copyright Treaty, art. 8
(1996); WIPO Performances and
Phonograms Treaty, arts. 10 and 14 (1996). See, e.g., Society
of Composers, Authors and Music Publishers of Canada v. Entertainment Software
Association, 2022 SCC 30, esp. paras. 8, 86, and 108. The Supreme Court of
Canada here confirmed that dissemination may “engage” statutory rights, while
it construed such rights, some separately couched in terms of old media, to
avoid “gaps in protection.”
[6] For critical analysis of tensions in theory underlying such disputes endemic in practice, see Paul Edward Geller, Delimiting Intellectual Property: Distinct Approaches to Spillovers, in Spory o własność intelektualną: Księga jubileuszowa dedykowana Profesorom Januszowi Barcie i Ryszardowi Markiewiczowi, eds. Andrzej Matlak and Sybilla Stanisławska-Kloc (Wolters Kluwer Polska, 2013), 293.
[7] See, e.g., U.S. Copyright Act, 17 U.S. Code § 106(2) (Dec. 2022); the German Urheberrechtsgesetz (in English translation), § 23(2) (June 23, 2021). U.S. law institutes a general right “to prepare [emphasis added] derivative works based upon the copyrighted work”; German law limits such control over the making of derivative works to specified types of cases of the possibly public production of certain works.
[8] For prior, more detailed analysis of this
and like cases, see Paul Edward Geller, Hiroshige
v. Van Gogh: Resolving the Dilemma
of Copyright Scope in Remedying Infringement, Journal of the Copyright Society of the USA, vol. 46 (1998), 39.
[9] Why scare-quotes bracketing the term “copies”? This open-ended notion risks misleading courts: for example, a translation, with different words than the text which a translator converts into another language, is not literally a “copy.” For another analysis, see Abraham Drassinower, Copyright is Not About Copying, Harvard Law Review Forum, vol. 125 (2012), 108.
[10] Under these principles, we shall explore
remedies that an initial author may obtain for a later author’s work, such as a
translation or transformation, which the latter has derived from the prior
author’s own work and disseminates without consent.
[11] Few laws condition the protection of authors’ rights on “fixing” works in some stable or tangible medium. For further analysis, see Ysolde Gendreau, Le critère de fixation en droit d’auteur, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 111 (with English and Spanish translations).
[12] See, e.g., Tempo Music, Inc. v. Famous Music Corp., 838 F. Supp. 162 (S.D.N.Y. 1994). Here a U.S. trial court declined to deny copyright in Billy Strayhorn’s contributions of harmonic aspects to a jazz piece on which he collaborated with Duke Ellington. Our seventh principle elucidates the consensual allocation of rights in any work created by many authors.
[13] For analysis of any work as some relatively self-standing sign in which texts, images, etc., contextualize one another, see Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3, at 51-59. For analysis of how, outside any one literary work, other sets of texts known to readers might bear on meanings of the work, see Michael Riffaterre, Intertextuality vs. Hypertextuality, New Literary History, vol. 25 (1994), 779.
[14] It remains theoretically controversial, though variable in practice, how fully a script or score, indeed any “writing,” can determine a work or, rather, a performance reinterpret or even redevise the work. For example, for diverging analyses in the field of music, see Nelson Goodman, Languages of Art: An Approach to a Theory of Symbols (Bobbs-Merrill Co., 1968), 179-92 passim; Philip Alperson, On Musical Improvisation, Journal of Aesthetics and Art Criticism, vol. 43 (1984), 17.
[15] We shall here explore calibrating relief with the creativity of works at issue. Performers may obtain copyright remedies insofar as they creatively contribute to works. For other analyses, see Richard Arnold (Justice), Reflections on The Triumph of Music: Copyrights and Performers’ Rights in Music, Oxford I.P. Seminar, Oct. 20, 2009 (Intellectual Property Institute, 2010); Rebecca Tushnet, Performance Anxiety: Copyright Embodied and Disembodied, Journal of the Copyright Society of the USA, vol. 60 (2013), 209.
[16] For analysis of the interface between
copyright and industrial property, including design and patent rights, see
Jerome H. Reichman, Legal
Hybrids Between the Patent and Copyright Paradigms, Columbia Law Review, vol. 94 (1994), 2432.
[17] See, e.g., Baker v. Selden, 101 U.S. 99, 100-02 (1879). The U.S. Supreme Court here refused to enforce copyright in accounting forms following a “plan” of “ruled lines and headings.” The Court reasoned that no such right may justify barring diverse uses of this plan, declaring rather that the case fell into “the province of letters-patent, not of copyright.”
[18] For analyses of historical interplays between developing cultural techniques and creating works, see Walter Benjamin, On Some Motifs in Baudelaire, trans. Harry Zohn, in Selected Writings, Volume 4: 1938-1940, eds. Howard Eiland and Michael W. Jennings (Harvard University Press, 2003), 313; Roland Barthes, Writing Degree Zero, trans. Annette Lavers and Colin Smith (1953; Hill and Wang, 1968), esp. 55-88.
[19] As illustrated under our fourth principle, courts do reconstrue such open-ended notions as “facts” or “ideas” to focus relief. For critical analyses, see Paul Edward Geller, Copyright in Factual Compilations: U.S. Supreme Court Decides the Feist Case, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 22 (1991), 802; Pamela Samuelson, Reconceptualizing Copyright's Merger Doctrine, Journal of the Copyright Society of the USA, vol. 63 (2016), 417.
[20] See, e.g., Bsiri-Barbir c. sté. Haarmann et Reimer, Cass., 1e ch. civ., no. 02-44.718, June 13, 2006, translated in [2006] European Copyright and Design Reports [E.C.D.R.] 380; Telstra Corporation Pty. Ltd. v. Phone Directories Company Pty. Ltd., [2010] FCAFC 149, esp. paras. 89-92. In the former case, the French Supreme Court denied copyright in “the fragrance of a perfume” attained by implementing “know-how.” In the latter, the Full Federal Court of Australia affirmed the refusal of copyright in telephone directories “overwhelmingly” compiled by “the automated processes” of computer systems.
[21] Hard cases at times prompt courts to take account of substantively overriding laws. For example, our sixth principle invokes basic interests protected by treaties, constitutions, or other comparably higher laws that compel the close fashioning of proportionate relief in some cases. Our ninth principle entails comparable limits to the judicial enforcement of technical and other self-help measures that, especially online, might impact other parties beyond those to any private suit. For another analysis, see Maayan Perel, Digital Remedies, Berkeley Technology Law Journal, vol. 35 (2020), 1.
[22] Letter of February 1, 1890 (no. 850), in Vincent van Gogh, The Letters, eds. Leo Jansen, et al. (Van Gogh Museum and Huygens Institute, 2009). He also wrote here of “translating” other artists and of his fear of their “bothering or obstructing me under the pretext that I’m manufacturing copies.”
[23] Other rights, not falling under copyright, may also come into play here, albeit with differences in subject-matters and scopes. The right to privacy, for example, entitles anyone to restrain disclosure of her personal expression, whether it is creative or not. Arguably, it includes the right to remain anonymous while making texts or images public, whether these are protected by authors’ rights or not. For the classic analysis of such rights, see Samuel D. Warren and Louis D. Brandeis, The Right to Privacy, Harvard Law Review, vol. 4 (1890), 193, at 198-213 passim.
[24] For background analysis, see Stig Strömholm, Droit Moral – The International and Comparative Scene from a Scandinavian Viewpoint, Scandinavian studies in law, no. 42 (2002), 217, initially published here: International Review of Industrial Property and Copyright Law [I.I.C.], vol. 14 (1983), 1.
[25] See Berne Convention (Paris, 1971), art. 6bis. Presumably, absent an author’s claim for another or no attribution, the name appearing on her work, as she last released it to the public, would suffice. Berne articles 10 and 10bis require references to “the source” of works used under exceptions these provisions set out, most crucially to the author unless she released her work anonymously. Our fifth principle below incorporates this requirement, calling for reference to such source of any work redisseminated under any exception for critical or informational uses. Given duly authorized but anonymous dissemination, recourse may be made to such sources as editors, publisher, etc.
[26] For analysis of complex authorship akin to that at issue in the Tempo Music case cited above, see Björn Heile, Who wrote Duke Ellington’s music? Authorship and collective creativity in ‘Mood Indigo’, in Concepts of Music and Copyright: How music perceives itself and how copyright perceives music, ed. Andreas Rahmatian (Edward Elgar, 2015), 123.
[27] On what facts base such awards? An author may
claim actual damages, inter alia, for
harms resulting to her reputation. And she may sue for restitution, notably of
another’s benefits accrued from falsely referencing himself as creator. But
evidence supporting such awards can be hard to marshal, prompting recourse to
relief calling for less onerous showings. See,
e.g., Agence
France Presse v. Morel, Case 10-cv-2730 (AJN) (S.D.N.Y. Aug. 13, 2014). The
U.S. trial court here awarded extensive statutory damages for the removal of
copyright-management information indicating authorship.
[28] See, e.g., the Serafino decision, Tribunale, Rome, May 30, 1984, Diritto di Autore (1985), 68, reversed in part, Germi c. Soc. Reteitalia, Corte d’Appello, Rome, Oct. 16, 1989, Foro Italiano, vol. 112 I (1989), 3201. The Italian court of first instance enjoined “spot” advertisements to prevent them from abusively interrupting television broadcasts of a film work, while it contemplated equitably adjusting such ad-breaks, for example, to fit them within the plot of the work. On the appeal of this case, the intermediate court simply banned ad-breaks.
[29] See Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3, at 73-85. Under our second principle, algorithmically simulated signs would not be protected as humanly created, obviating any claim for attribution of authorship. But see Bob L.T. Sturm, et al., Artificial Intelligence and Music: Open Questions of Copyright Law and Engineering Praxis, Arts, vol. 8 (2019), 115. Here the question is raised: How far should changes in works wrought by artificial so-called intelligence be made publicly transparent?
[30] See,
e.g., William Eden c.
Whistler, Cass. civ., no. 49.16, March 14, 1900, D.P. 1900, 1, 497.
In this historic case, the artist J.M. Whistler refused to deliver a portrait which Lord Eden had
commissioned him to paint of his wife. The French Supreme Court refused to
overturn the decision allowing the artist to retain the painting, ordering him
to return payment for it, awarding damages for his failure to provide it, and
forbidding him from using it in any version recognizable as that commissioned.
For his account of the suit, see Eden
versus Whistler: the baronet & the butterfly (R.H. Russell, 1899).
[31] Serra v. U.S. General Services Admin., 847 F.2d 1045 (2d Cir. 1988). The U.S. appellate court here, acknowledging “that the sculpture is site-specific and may lose its artistic value if relocated,” still allowed the work to be moved to another spot.
[32] Note the exhaustion doctrine: tangible property, once relinquished, say, on the first sale of a “hard copy,” may then be freely alienated. But see, e.g., Land Nordrhein-Westfalen v. Dirk Renckhoff, C.J.E.U., 2nd ch., Case C-161/17, Aug. 7, 2018, ECLI:EU:C:2018:634. The E.U. Court of Justice here held that, after an author allowed access to a work on one website, he could control reposting the work on another site.
[33] In theory, it is unclear whether, or how far,
such awards may accumulate. In practice, distinct bodies of law vary in sorting out damages and restitution in the
cases. See Francesco Giglio, Restitution
for Wrongs: a Comparative Analysis, Oxford
University Comparative Law Forum (2001), 6.
[34] See, e.g., Authors Guild v. Google, Inc., 804 F.3d 202, 225 (2d Cir. 2015); Kadry v. Meta Platforms, Inc., no. 23-cv-03417-VC (N.D. Cal. Nov. 20, 2023). In one case, the U.S. appellate court reasoned that putting scattered snippets of text online would not infringe copyright because these did not “re-present the protected aspects of the original work, i.e., its expressive content.” In the other, the U.S. trial court dismissed claims of infringement by computer outputs that did not adequately evidence protected inputs, but did not rule on infringement by copying into computerized devices. Under our second principle, matters are protected insofar as they are creatively brought together into some self-standing work. Processing such matters in a computer piece-meal, as in “training” artificial so-called intelligence, would not necessarily infringe. See Oren Bracha, The Work of Copyright in the Age of Machine Production, Univ. of Texas Law, Research Paper (Sept. 24, 2023).
[35] See, e.g., Folsom v. Marsh, 9 Fed. Cas. 342 (C.C.D. Mass 1841); Dickens v. Lee, (1844) 8 Jurist 183 (Ch), reported in E.T. Jaques, Charles Dickens in Chancery (Longmans, Green and Co., 1914), 67-70 and 84-89. In the first case, U.S. Justice Story, after analyzing a recontextualized but verbatim selection of Washington’s collected letters, enjoined its publication. In the second case, a U.K. court of equity, finding no significant change in a cheaply published rewrite of Dickens’ Christmas Carol from the original, ordered the “piracy” to cease pending trial. For further analysis, see Mark Rose, Dickens v. Lee (1844): A Christmas Tale of Two Experts Testifying, Cardozo Arts and Entertainment Law Journal, vol. 41 (2023), 227.
[36] See eBay Inc. v. MercExchange, 547 U.S. 388, 393 (2006), citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10 (1994). Here the U.S. Supreme Court stressed equitable criteria for issuing injunctions in cases of intellectual property, invoking the argument in its prior decision, which it cited, that “the goals of the copyright law [...] are not always best served by automatically granting injunctive relief” and that in some hard cases “the copyright owner's interest may be adequately protected by an award [...] for whatever infringement is found.”
[37] As explained under our second principle, performers at times author creative versions of prior works. But when de minimis samples from one recorded performance are released to the public as taken into another, without threatening the market for the prior performance, there is no obvious need to enjoin dissemination of the latter. See, e.g., VMG Salsoul v. Ciccone, 824 F.3d 871 (9th Cir. 2016). The U.S. appellate court here applied an “audience” test to refuse relief in a case of sampling.
[38] For
economic analysis, see Wendy J. Gordon, Of
Harms and Benefits: Torts, Restitution, and Intellectual Property, Journal
of Legal Studies, vol. 21 (1992), 449. But can any such approach closely
and coherently respond to the question: How much of the marketplace for
cultural goods ought copyright in a work entitle its author to control? For
critical analysis, see Paul Edward Geller, Opening
Dialogue on Intellectual Property, in Juriste
sans frontières: Mélanges Ejan Mackaay, ed. Stéphane Rousseau (Éditions
Thémis, 2015), 341, esp. 370-80.
[39] See Warner Brothers Pictures, Inc. v. Columbia Broadcast System, Inc., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955). The U.S. appellate court here allowed Hammett to elaborate the main character of The Maltese Falcon in sequels, though he had contractually alienated copyright in this novel, in particular to authorize filming it. Our seventh principle favors the restrictive construction of such contracts.
[40] See, e.g., Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45 (2d Cir. 1939), affirmed, 309 U.S. 390 (1940). The U.S. appellate court here held that plaintiff may share in defendant’s gains imputable to taking what is protected in the former’s play into a film, but found that the latter’s contributions to the success of its film, for example, its costs apportionable to development or distribution, may be factored out.
[41] For illustrative analysis of conceptions of “creativity” in flux, see Umberto Eco, Innovation & Repetition: Between Modern & Postmodern Aesthetics, Daedalus, vol. 134, no. 4 (2005), 191. For critical analysis of current legal commentary on point, see Julie E. Cohen, Creativity and Culture in Copyright Theory, U.C. Davis Law Review, vol. 40 (2007), 1151.
[42] See, e.g., Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1263-68 (10th Cir. 2008); Gray v. Hudson, 28 F.4th 87, 97-102 (9th Cir. 2022). U.S. appellate courts declined to protect, in one case, computer models simulating already existing automobiles and, in the other, a common “ostinato” in music, finding it “rooted in the genre’s tradition” and contextualized in a “manifestly conventional arrangement.”
[43] See, e.g., Acohs Pty. Ltd. v. Ucorp Pty. Ltd., [2010] FCA 577, esp. paras. 53-61 and 81-85. The Federal Court of Australia here recognized no copyright in machine-generated code configuring information on computer screens, refusing both to deem programmers of any underlying system to be “authors” of its outputs and to find discrete data to make up any “work.”
[44] Arguably, claims for equitable relief, if need
be with bases outside copyright law, could be raised for feeding works into
devices algorithmically simulating other texts or images. But see, e.g., Andersen v.
Stability AI Ltd., Case 23-cv-00201-WHO (N.D. Cal. Oct. 30, 2023). The U.S.
trial court held such claims, notably for unfair competition, preempted as
pleaded.
[45] On the one hand, our first principle precludes enjoining any derivative work insofar as it is creatively drawn from that at issue. On the other hand, our second principle disentangles rights at the interface between copyright and industrial property. We presuppose such analyses, delimiting rights, in considering exceptions and other limitations to authors’ rights here.
[46] Pitfalls await outside copyright law. For example, for one party to disseminate another’s expression licitly, must this other party have already publicly released it or agreed to such release, waiving her right to privacy? See, e.g., HRH Duchess of Sussex v. Associated Newspapers Ltd., [2021] EWCA Civ 1810, esp. paras. 99-103. The U.K. court of appeal here upheld judgment against unauthorized publishers of family letters. It imposed no copyright exception or limitation allowing dissemination.
[47] For analysis of transaction costs prompting copyright exceptions, see Wendy J. Gordon, On the Economics of Copyright, Restitution and “Fair Use”: Systemic Versus Case-by-Case Responses to Market Failure, Journal of Law and Information Science, vol. 8 (1997), 7, esp. 20-21. As hinted there and argued under this fifth principle, transaction costs also arise out of hard cases in which lawmakers tinker with rules of thumb, like those for “fair use,” that fail to guide laypeople.
[48] Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), art. 13 (1994, as part of the Agreement Creating the W.T.O.). The criteria set out in this treaty provision posit desiderata for public legislation. They hardly seem appropriately formulated to govern private parties’ decisions.
[49] Article 10(1) of the Berne Convention allows “quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose [...]”: such uses may be construed to encompass many exempted here. For another analysis, see Tanya Aplin and Lionel Bently, Displacing the Dominance of the Three-Step Test: The Role of Global Mandatory Fair Use, in The Cambridge Handbook of Copyright Limitations and Exceptions, eds. Shyamkrishna Balganesh, Ng-Loy Wee Loon, and Haochen Sun (Cambridge University Press, 2021), 37.
[50] For critical analyses of exceptions predicated on “balancing” such factors case by case, see David Nimmer, “Fairest of them All” and Other Fairy Tales of Fair Use, Law and Contemporary Problems, vol. 66 (2003), 263; Richard Epstein, Sequential Uses of Copyrighted Materials: Transforming Transformative Use Doctrine in Andy Warhol Foundation v. Goldsmith, Michigan State Law Review, vol. 2022 (2023), 1041.
[51] Common sense might falter in hard cases of
parodies or like uses that creatively, indeed singularly, distort works at
issue. Under our sixth principle, the legally protected
interest in freedom of expression may come into play to compel limiting relief.
See, e.g., Tom
Jensen v. Edvard Eriksens Arvinger, Højesteret, Case no. BS-24506/2022-HJR,
May 17, 2023, translated in [2023] E.C.D.R. 417. Here the Supreme
Court of Denmark overturned infringement relief for images of the sculpture of
the Little Mermaid masked against the
COVID infection. It applied the exception for parodies to this case, while
invoking the protected interest in freedom of expression.
[52] See, e.g., the Eidgenössische Technische Hochschule Zürich decision, ATF 140 III 616, Nov. 28, 2014, esp. 625-29. The Swiss Federal Tribunal here allowed a public service to send entire articles to private parties, without regard for their purposes, but subject to remunerating rightholders.
[53] For another analysis, see Justin Hughes, Fair Use Across Time, U.C.L.A. Law Review, vol. 50 (2003), 775.
[54] Plon S.A. c. Pierre Hugo, Cass., 1e ch. civ., no. 04-15.543, Jan. 30, 2007, R.I.D.A., no. 212 (2007), 249, followed, Cour d’appel, Paris, 4e ch., Dec. 19, 2008, R.I.D.A., no. 220 (2009), 444. The French Supreme Court overturned a decision on point for violating treaty-recognized “creative freedom” and for failing to find that sequels “altered” the classic work or led to confusion about “authorship.” On remand, relief was refused.
[55] For analysis of trends in global regimes, see
Laurence R. Helfer, Human Rights
and Intellectual Property: Mapping an Evolving and Contested Relationship,
in The Oxford Handbook of Intellectual Property Law, eds. Rochelle C.
Dreyfuss and Justine Pila (Oxford University Press, 2018), 117.
[56] See, e.g., Queneau c. Boue, Trib. Gr. Instance, réf., Paris, June 10, 1997, J.C.P. 1997, II, 22974, translated in [2000] E.C.D.R. 343; Flavus v. Russia, Eur. Ct. H.R., 3rd sect., June 23, 2020, App. nos. 12468/15, et al. In the former case, a French court declined to enjoin a research team from sharing copyright-protected texts in their privately firewalled intranet. In the latter case, the European Court of Human Rights ruled that blocking entire websites, beyond contents that the law clearly precluded from releasing, disproportionately impaired web-posters’ freedom of expression and the public’s access to information.
[57] See,
e.g., the Germania
3 decision, BVerfG, 1 BvR 825/98, June 29, 2000, GRUR 2001, 149; Opéra de
Munich c. Gilles Bernanos, Cass., 1e ch.
civ., nos. 15-28.467 and 16-11.759, June 22, 2017, Juris-Data no. 2017-012338. In a key case, the German
Constitutional Court, citing constitutionally guaranteed “artistic freedom,”
dissolved an order barring the publication of a drama which “collaged”
extensive “quotes” from Brecht’s plays. In a later case, the French Supreme
Court, balancing treaty-recognized “creative freedom” and diverse authors’
moral rights, overturned an order banning dissemination of a “staging” of the Dialogues des Carmélites which retained
both music and text of this opera but resituated its final scene.
[58] The Alcolix and Asterix-Persiflagen decisions, BGH, I ZR 263/91, and I ZR 264/91,
March 11, 1993, GRUR 1994, 191,
translated in I.I.C., vol. 25 (1994), 605. The Federal Court here directed
trial courts to gauge any difference in question between parodied and parodying
works from the standpoint of readers conversant with such works. For analysis distinguishing such case law
from that on U.S. fair use, see Paul Edward Geller, A German
Approach to Fair Use: Test Cases for TRIPs Criteria for Copyright Limitations?,
Journal of the Copyright Society of the USA, vol. 57 (2010),
553, at 555-60. For analysis of E.U. law on point, see Eleonora Rosati, Just
a matter of laugh? Why the CJEU decision in Deckmyn
is broader than parody, Common Market
Law Review, vol. 52 (2015), 511.
[59] For other analyses, see Rebecca Tushnet, Power Without Responsibility: Intermediaries and the First Amendment, George Washington Law Review, vol. 76 (2008), 101; Orit Fischman-Afori, Online Rulers as Hybrid Bodies: The Case of Infringing Content Monitoring, University of Pennsylvania Journal of Constitutional Law, vol. 23 (2021), 351.
[60] Under this principle, we shall refine judicial standards for reviewing the policing of copyright online and differentiate between criteria for civil relief and for criminal sanctions.
[61] This issue may be distinguished from: Who has standing to sue? See Paul Edward Geller, International Copyright: The Introduction, § 6[2][a], in International Copyright Law and Practice, ed. Lionel Bently (LexisNexis, 2018).
[62] The exercise of moral and economic rights need
not entail similarly identifying an author with rights in a given work. For
example, one may release one’s work under a pen name and get paid royalties for
its use to an account in one’s legal name.
[63] Consensus on the spot may be bolstered by
norms, such as rules assuring freedom from coercion, that are applicable
locally or across borders. For further analysis, see Gralf-Peter Calliess, The
Making of Transnational Contract Law, Indiana
Journal of Global Legal Studies, vol. 14 (2007), 469.
[64] Analytically, this distinction simplifies a miscellany of hard cases. For examples, notably multiplayer-online games, see Kim Barker, MMORPGing – The Legalities of Game Play, European Journal for Law and Technology, vol. 3 (2012), 1; Shani Shisha, Fairness, Copyright, and Video Games: Hate the Game, Not the Player, Fordham Intellectual Property, Media & Entertainment Law Journal, vol. 31 (2021), 694.
[65] See Axel Metzger, Transnational Law for Transnational Communities: The Emergence of a Lex Mercatoria (or Lex Informatica) for International Creative Communities, Journal of Intellectual Property, Information Technology and Electronic Commerce Law [JIPITEC], vol. 3 (2012), 361.
[66] For theoretical analysis, see Paul Edward Geller, Preassignments of Creators’ Rights: An Adhesion Analysis, COMM/ENT, A Journal of Communications and Entertainment Law, vol. 2 (1979), 1. For current practice, see Orly Lobel, The New Cognitive Property: Human Capital Law and the Reach of Intellectual Property, Texas Law Review, vol. 93 (2015), 789.
[67] Under our fifth principle, we noted that equitable remuneration may be due creators for otherwise exempted dissemination that yields profits from protected matters.
[68] For specific analysis of this shift, see Ruth Towse, Dealing with digital: the economic organisation of streamed music, Media, Culture & Society, vol. 42 (2020), 1461.
[69] Interests arising from reasonable reliance may be protected, for example, by equitable licenses. For another analysis, see F. Jay Dougherty, Not a Spike Lee Joint? Issues in the Authorship of Motion Pictures Under U.S. Copyright Law, U.C.L.A. Law Review, vol. 49 (2001), 225, esp. 313-34 passim.
[70] For critical analysis, see Andrew deWaard, Financialized Hollywood: Institutional Investment, Venture Capital, and Private Equity in the Film and Television Industry, Journal of Cinema and Media Studies, vol. 59 (2020), 54.
[71] For sample analyses, see Patryk Galuszka, Music Aggregators and Intermediation of the Digital Music Market, International Journal of Communication, vol. 9 (2015), 254; Simone Schroff and John Street, The politics of the Digital Single Market: culture vs. competition vs. copyright, Information, Communication & Society, vol. 21 (2018), 1305; Centre National de la Musique, Étude relative à l’impact du passage à l’UCPS par les services de musique en ligne (Jan. 2021).
[72] For star- and service-specific analyses, see Emily Tribulski, Look What You Made Her Do: How Swift, Streaming, and Social Media Can Increase Artists' Bargaining Power, Duke Law & Technology Review, vol. 19 (2020), 91; Shuwen Qu, David Hesmondhalgh, and Jian Xiao, Music streaming platforms and self-releasing musicians: the case of China, Information, Communication & Society, vol. 26 (2023), 699.
[73] Statutes may preclude transfers of certain rights. See, e.g., the Verlegeranteil decision, BGH, I ZR 198/13, April 21, 2016, GRUR 2016, 596, translated in I.I.C., vol. 48 (2017), 98. The German Federal Court here barred a collecting society from diverting inalienable authors’ royalties to publishers.
[74] See, e.g., Griggs Group Ltd. v. Evans, [2004] EWHC 1088 (Ch), affirmed, Griggs Group v. Raben Footwear, [2005] EWCA Civ 11. In this case, an author granted a first party copyrights respectively effective at home and abroad and later purportedly assigned such rights formally to a second party who had notice of the prior transfer. A U.K. court of equity enforced the transfer of domestic and foreign copyrights to the first party as against the second, citing British and foreign rules on point.
[75] For critical analysis of distinct U.S. recordation regimes in international contexts, see Raymond T. Nimmer and Lorin Brennan, Modernizing Secured Financing Law for International Information Financing: A Conceptual Framework, Houston Business and Tax Journal, vol. 6 (2005), 1.
[76] For analysis of conflicts of laws bearing on
copyright transfers, see Paul Edward Geller, International
Copyright: The Introduction, §§ 6[2] and 6[3], in International Copyright Law and Practice,
ed. Lionel Bently (LexisNexis, 2018).
[77] But see, e.g., Berklee Institute for Creative Entrepreneurship, Fair Music: Transparency and Money Flows in the Music Industry (2015). This report indicates how market leverage has enabled media enterprises to obfuscate data pertinent to remunerating creators for online access to their music.
[78] See, e.g., the Magill decision, Radio Telefis Eireann (RTE) and Independent Television Publications Ltd. (ITP) v. Commission of the European Communities, E.C.J., Joined Cases C-241/91 P and C-242/91 P, April 6, 1995, paras. 47-58 and 90-101, ECLI:EU:C:1995:98. The European Court of Justice here confirmed that television stations, dominating a specific marketplace, had to license a television-guide service to publish their program listings on reasonable terms.
[79] For another analysis, see Tun-Jen Chiang, Trolls and Orphans, Boston University Law Review, vol. 96 (2016), 691, esp. 708. Arguably, estoppel or another equitable defense could preclude at least injunctive relief against posting works online that copyright holders have otherwise left unavailable to the public, for example, by taking “back-listed” works off the market.
[80] See, e.g., the Perlentaucher decision, BGH, I ZR 12/08, Dec. 1, 2010, GRUR 2011, 134, translated in I.I.C., vol. 42 (2011), 978; TuneIn Inc. v Warner Music UK Ltd., [2021] EWCA Civ 441. In the former case, the German Federal Court upheld an online aggregator’s duty to pay for protected matters it merely assembled on its site. In the latter, the U.K. Court of Appeal confirmed an online platform’s liability for knowingly enabling the unlicensed dissemination of protected music for profit.
[81] Our ninth principle tests algorithmic devices, namely for policing copyright across more or less global networks, against legal regimes protecting authors’ rights or more basic interests, but laws that such regimes entail vary in applying territorially. Our last, tenth principle outlines regimes for resolving conflicts of copyright laws arising in cross-border cases. These types of regimes might not mesh well, at times triggering hard cases.
[82] For another analysis, see Alexander Peukert, Transnational Intellectual Property Governance on the Internet, in The Law of Global Digitality, eds. Matthias Kettemann, Alexander Peukert, and Indra Spiecker gen. Döhmann (Routledge, 2022), 50.
[83] See, e.g., Stevens v. K.K. Sony Computer Entertainment, [2005] HCA 58, paras. 45-47. The Australian High Court here refused to bar the circumvention of technical measures that prevented users from changing how they played computer games. The court sought “to avoid” extending “the copyright monopoly rather than match it,” especially given the “penal character” of the statutory regime, which was later amended.
[84] For sample analyses
of emerging issues, see Stefan Larsson, et al., Law,
Norms, Piracy and Online Anonymity –
Practices of de-identification in the global file sharing community,
Journal of Research in Interactive Marketing, vol. 6, no. 4 (2012), 260; Edona Elshan, Christian Engel, and Philipp Ebel, Opening
the Black Box of Music Royalties with the Help of Hybrid Intelligence, Proceedings of the 54th Hawaii International
Conference on System Sciences (2021), 5525.
[85] See, e.g., UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH, C.J.E.U., 4th ch., Case C-314/12, March 27, 2014, esp. paras. 56-57, ECLI:EU:C:2014:192. Here the E.U. Court of Justice left internet services some margin of discretion to sift out matters illicitly posted online, while it contemplated procedures for questioning such measures as overreaching.
[86] For analysis of ensuing tensions, especially in E.U. law, see Luca Belli and Cristiana Sappa, The Intermediary Conundrum: Cyber-Regulators, Cyber-Police or Both?, Journal of Intellectual Property, Information Technology and Electronic Commerce Law [JIPITEC], vol. 8 (2017), 183.
[87] For examples, see Jeremy Wade Morris, Music Platforms and the Optimization of Culture, Social Media+ Society, vol. 6, no. 3 (2020). Arguably, human creators’ or disseminators’ constitutionally protected interests in free expression do not extend to fully automated outputs. For further analysis, see Dan L. Burk, Asemic Defamation, or, the Death of the AI Speaker, First Amendment Law Review, vol. 22 (2024) (forthcoming).
[88] For critical analysis, see Guido Westkamp, Two Constitutional Cultures: Technological Enforcement and User Creativity: The Impending Collapse of the EU Copyright Regime?, International Review of Intellectual Property, and Competition Law [I.I.C.], vol. 53 (2022), 62.
[89] For critical analyses of U.S. and E.U. developments, respectively, see Annemarie Bridy, Copyright’s Digital Deputies: DMCA-Plus Enforcement by Internet Intermediaries, in Research Handbook on Electronic Commerce Law, ed. John A. Rothchild (Edward Elgar, 2016), 185; Martin Husovec and João Quintais, Too Small to Matter? On the Copyright Directive’s Bias in Favour of Big Right-holders, in Global Intellectual Property Protection and New Constitutionalism: Hedging Exclusive Rights, eds. Jonathan Griffiths and Tuomas Mylly (Oxford University Press, 2021), 219.
[90] For analyses in copyright contexts, see Jonathan Griffiths, Criminal Liability for Intellectual Property Infringement in Europe: The Role of Fundamental Rights, in Criminal Enforcement of Intellectual Property, ed. Christophe Geiger (Edward Elgar, 2012), 191; Laura Tammenlehto, Copyright and Trademark Crimes in the Nordic Countries: Analysis from the Perspective of the Principle of Legality, Bergen Journal of Criminal Law and Criminal Justice, vol. 8 (2020), 18.
[91] Such risks are compounded by the fact that, across laws of intellectual property, criminal provisions all too often vary opportunistically. For another analysis, see Irina D. Manta, Explaining Criminal Sanctions in Intellectual Property Law, Journal of Law & Innovation, vol. 1 (2019), 16.
[92] Under our eighth principle, we broached conflicts of laws applicable to transfers of copyrights respectively effective in different countries. For analysis of fictively “pan-E.U.” rights, muddling conflicts and transfer issues in cases of electronic transmissions, notably those relayed by satellite, see Mireille M. M. van Eechoud, Territoriality and the Quest for a Unitary Copyright Title, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 55 (2024), 66, esp. 70-76.
[93] Under our sixth
principle, overriding laws assuring basic interests, as in privacy, free
expression, or open information, may come to bear on enforcing copyright laws,
even in cross-border cases. How to resolve tensions arising between such
overriding laws, on the one hand, and applicable copyright laws in conflict, on
the other hand? For analysis, see Paul Edward Geller, The Celestial Jam
Session: Creative Sharing Online Caught in Conflicts of Copyright Laws,
European Intellectual Property Review
[E.I.P.R.], vol. 37 (2015), 490.
[94] For further analysis of disposing of such cross-border cases, see Paul Edward Geller, International Copyright: The Introduction, §§ 1[3][c] and 3[1], in International Copyright Law and Practice, ed. Lionel Bently (LexisNexis, 2018).
[95] Our hypothetical here varies the scene in Diva, the film Jean-Jacques Beineix directed (1981), in which a “bootleg” recording is made of the performance of an operatic aria.
[96] See U.S. Copyright Act, 17 U.S. Code §§ 101 and 102(a) (Dec. 2022). The definition here calls for an “embodiment” which, made “by or under the authority of the author,” can be “communicated for a period of more than transitory duration.”
[97] See, e.g., London Film Productions Ltd. v. Intercontinental Communications, Inc., 580 F. Supp. 47 (S.D.N.Y. 1984); Levitin v. Sony Music Entertainment, 101 F. Supp. 3d 376 (S.D.N.Y. 2015). In the prior case, at a time when the United States did not yet belong to the Berne Union, a U.S. trial court took jurisdiction over a suit for infringement abroad and, invoking Berne provisions, anticipated applying foreign copyright laws to such infringement. In the later case, while local uses were licensed, the U.S. trial court took on a suit to apply foreign copyright laws to infringement abroad.
[98] Forum-shopping has erratic mixes of reasons. Courts may vary, inter alia, in taking jurisdiction, in resolving conflicts of laws, and in granting relief. For example, some judges might hesitate to issue orders calling for enforcement abroad, and U.S. juries may assess awards. For critical analysis of “territoriality” here, see Paul Edward Geller, International Intellectual Property, Conflicts of Laws, and Internet Remedies, Journal of Intellectual Property Rights (NISCAIR), vol. 10 (2005), 133. For guidelines for lawyers, see Paul Edward Geller, How to Practice Copyright Law Internationally in Perplexing Times, Journal of the Copyright Society of the USA, vol. 60 (2013), 167, esp. 182-99; Marketa Trimble, The Territorial Discrepancy Between Intellectual Property Rights Infringement Claims and Remedies, Lewis & Clark Law Review, vol. 23 (2019), 501.
[99] Article 5(1) of the Berne Convention (Paris, 1971) assures authors of nationally effective rights, bolstered by Berne minimum rights, “in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin” of whatever work is at issue.
[100] The treaty regime has harmonized copyright laws by formulating some minimum rights in open-ended notions. See Paul Edward Geller, Legal Transplants in International Copyright: Some Questions of Method, U.C.L.A. Pacific Basin Law Journal, vol. 13 (1994), 199. We have here tried to define our core right in remedial terms to tighten up such notions.
[101] For another analysis, putting jurisdictional and choice-of-law trends to the test of ever-more complex cases online, see Eleonora Rosati, The Localization of IP Infringements in the Online Environment: From Web 2.0 to Web 3.0 and the Metaverse, a WIPO study (Sept. 2023), esp. 31-35.
[102] For more of such Marxist surrealism, more on
point, see Groucho Marx, On
copyright and Warner Brothers (1946).
[103] For a realist analysis of how “trouble-cases” can put settled law into question, see Karl N. Llewellyn, The Normative, the Legal, and the Law-Jobs: The Problem of Juristic Method, Yale Law Journal, vol. 49 (1940), 1355, at 1359-67 passim.