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Copyright Principles:
An Ongoing Inquiry *
Paul Edward Geller
Older media tend to give way to newer media.
Think of word of mouth, writing and printing, audio and visual recording,
broadcasting, the internet .... In response to such progress, copyright law has
been made increasingly more complicated, while losing efficacy and cogency. In
the attempt to guide decision-making out of the resulting copyright crisis, we
shall here venture ten principles. Click here for all our
tentative principles set out together. They are explained and linked
to illustrations below.
Creators have rights. We say “copyrights” in
English. “Authors’ rights” is the term used elsewhere. Diverse rationales have
been offered for such rights. On the one hand, copyright is to enhance culture
by prompting creators to create and disclose their creations. On the other
hand, authors' rights are to do justice to creators’ economic and moral
interests in their creations. Hopefully in line with such aims, we shall here
subsume all such rights within a core creator’s right. To start, we shall ask:
Who initially holds this right? What conduct may it entitle a rightholder to
control? With regard to what subject-matters? Our initial pair of principles,
responding to these questions, will condition the further principles that
follow them.
Copyright law started by recognizing
creators’ rights to control the making and marketing of hard copies. It went on
to recognize creators’ rights to control live performances, broadcasts, and
other transmissions of their creations. With media progress, the means of
conveying creations to others have tended both to proliferate and to converge,
notably in the internet. The law has responded to these trends by multiplying
rights that may be subsumed within a right of communication to members of the
public.[1] In our first principle, we posit a
core right of dissemination, which entitles creators to control how their
creations reach members of the public. But how may diverse creators exercise
such a right without finding themselves pitted against each other?
Take a look at
Hiroshige’s prints and at Van Gogh’s studies of these prints. Hiroshige’s
prints, made with woodblocks, were copied when Van Gogh made studies of them in
oil paints. Imagine, hypothetically, Hiroshige working in the near past and Van
Gogh in the present: Should Hiroshige be entitled to have Van Gogh stopped from
making copies of his prints, however creatively? Bear in mind that creators,
asserting their core rights, may control only acts that have to do with the
dissemination of their own creations. In such a right, Hiroshige would find no
basis on which to have Van Gogh stopped from merely making studies of his
prints in private. To get to the crux of this creator’s core right, we have to
ask: What may Van Gogh do with his own studies outside of his studio? For example,
without Hiroshige’s consent, may Van Gogh or his heirs publicly display these
studies or publish copies? More generally, how may diverse creators exercise their
core rights to disseminate their “own” creations?
Consider applying set techniques or rules to
creations to generate what we shall here call “routine” copies. Suppose, for
example, that making prints with Hiroshige’s woodblocks takes only technical skill,
but not creativity: the resulting copies are routine. Hiroshige may invoke his
core right to stop the printer from disseminating such mechanically produced
copies, which represent only Hiroshige’s “own” creations. But we can tell
Hiroshige’s prints and Van Gogh’s studies apart at a glance: while copying the
earlier artist’s creation, the later artist has woven in materials that could
not have been routinely generated. From one’s prints to the other’s studies,
composition goes from static to dynamic, coloration shifts from muted to
intense, and emotional tone changes altogether. Under our first principle,
Hiroshige may not stop Van Gogh from disseminating the later studies, which
represent Van Gogh’s “own” creations. The law ought not entitle any prior creator
to have later creators ordered to cease contributing to our culture as they
rework older into newer forms. However, as we shall see, courts may award prior
creators compensation for their creative work from which further creations are
later derived.[2]
Who
initially holds this core right? Imagine members of a jazz group improvising in
a live jam session. Suppose that another person, without their consent,
recorded their session with a hidden microphone and transmitted the recording
to the public worldwide. Our second principle follows the majority of laws
worldwide in recognizing that creators have rights in their respective
creations the moment that these can be communicated to others. In our example,
the musicians may, from the moment of live improvisation, exercise creators’
rights over the dissemination of whatever creation others might enjoy in their
performance. Suppose that the group created most of its music playing as a team
but that single members created some of the music, improvising distinct
stretches quite alone. The creators’ rights then initially belong to the group
for music it improvises together and to individual members for their solo
riffs.[3]
To what subject-matters may creators’ rights
then apply? We just saw such rights protect a jazz improvisation as creative and able to
be disseminated. Let us define as protected by creators' rights whatever is created
in any disseminatable set of cultural materials. However, this definition
encounters limiting cases in the designs of certain products that incorporate techniques. Consider
this pair of modernist examples: Alvar
and Aino Aalto’s chairs and Charles
and Ray Eames’ chairs. The Aaltos were pioneers in designing chairs that were made of
laminated wood molded into simple curves. The Eames later designed chairs that
were made using techniques for molding wood into compound curves. May the Eames
invoke their creators’ rights in their own designs to stop others from using
the techniques they invented? While the letter of the law sometimes equivocates
on point, the better decisions have long answered in the negative. In a key
case in the United States, copyright was asserted in paper forms that
incorporated new accounting techniques. The U.S. Supreme Court declined to
recognize copyright in the forms, reasoning that patent law should govern their
use.[4] Our
second principle does not change this law, but rather crystallizes it.
Accordingly, creators’ rights
apply to creative cultural materials. Design and patent rights apply to
techniques as such, as well as to products generated by the routine use of
techniques. Which rights to apply when both creatively and technically
generated materials are found embodied in the same forms, say, of the Eames’
chairs? A competitor could, for example, take the Eames’ chairs as templates
for molding beautiful chairs to seat the human body comfortably. Suppose that
the competitor varied the Eames’ designs technically, but not creatively, to
develop cheaper manufacturing methods and to enhance structural solidity. What
result if the Eames could have copyright enforced in their designs to stop the
competitor from manufacturing and marketing its chairs? The Eames could thus
monopolize their techniques for molding materials into various pieces of
furniture in the light of ergonomics. Any such monopoly, if effectuated under
copyright law, would last longer than it would under design or patent laws.
Further, copyright law would not impose stringent conditions of priority as
would such laws of industrial property. Many provisions of law already prohibit
substituting copyright for such industrial property to protect techniques. Our
second principle does not allow creators’ rights to be applied to preclude the
use of techniques.[5]
All culture may be said to
ride on the tracks of techniques. A court then has to separate out cultural
creation from the use of techniques, not only in design cases, but in other
copyright cases. Consider, hypothetically, a pair of historical examples as if
they arose today, one in literature and the other in the arts. On the one hand,
armed with creators’ rights, Gerard Manley Hopkins could stop others from
republishing his poems,
just as Georges Seurat could stop others from selling routine copies of his
painting La Grande
Jatte. On the other hand, creators' rights would not entitle Hopkins to
stop others from writing with the sprung rhythm he developed out of common
speech, nor Seurat to stop others from painting with the pointillist method he
distilled out of impressionism. Just as dramatists can write myriad tragedies
following Aristotle’s rule of having a great person act with hubris and fall, writers can pen myriad texts using
standard story lines, stylistic devices, etc., and artists can make myriad
images using compositional schemes, color palettes, etc. There might be fewer options
in borderline cases: for example, maps can feature only a limited range of lines, colors,
and icons to chart locales, and directories can sequence names and contact information
into only so many easily consulted orders. Our second principle applies accordingly:
courts are not to protect such cultural materials as routines suffice to generate
fully.[6]
Courts enforce rights with
remedies. They order parties to stop doing certain acts or to do others, for
example, to pay money. Here we shall outline principles to guide fashioning
remedies for creators’ rights. Our purpose is to help courts to move more
coherently and cost-effectively from the rationales of these rights to relief.
How, in this process, to take account of our first and second principles,
which define the core right to control the dissemination of creations? As such
dissemination tends to reach larger publics, damages or profits tend to
increase, and civil remedies may be adjusted accordingly.[7]
Return to our example of Hiroshige’s
prints and Van Gogh’s studies. It has long been accepted in diverse
cultural traditions for artists to copy each other. Still, Van Gogh himself had
“scruples of conscience” that his exercises in freely imitating prior artists
might constitute “plagiarism.”[8] Indeed,
how could we appreciate Hiroshige’s graceful prints in muted shades if we
accessed them only through Van Gogh’s startling studies in oil with their
intense colors? Hiroshige’s prints were implicitly referenced in Van Gogh’s
studies; however, if we did not know that the prints were reworked in looking
at the studies, we could miss the altogether distinct accomplishments of these
different artists. In response to such concerns, courts in most of the world
protect creators' moral interests with rights of attribution and of integrity,
that is, the right to be named as creator of a work throughout the course of
its dissemination and the right to relief for prejudicial impairments of the
work. Subject to our first principle,
which precludes orders to stop the dissemination of others’ creations, our
third principle contemplates distinct remedies for moral rights. Such rights
may call for references, monetary awards, or further equitable measures.
In any case of creative
reworking, courts may fashion three types of remedies. First, to assure
attribution, courts may issue orders to have creators' names of choice,
as well as their roles, referenced when their creations are
disseminated. As a second remedy, to protect the integrity of creations
in the public mind, courts may issue orders to reference creators'
preferred forms of their own creations that are recognizably redisseminated in
versions creatively reworked by others. The relief proposed here would not go
so far as to include more restrictive orders that, to protect the integrity of prior
creations, many courts have issued to stop the dissemination of new creative versions altogether.
Imagine, hypothetically, another classic example: Beaumarchais wrote the play The
Marriage of Figaro,on which Mozart and Da Ponte based their opera
of that name, but with a text truncated to evade censorship. Should a court
protect the writer’s interest in maintaining the integrity of his play by
ordering the composer and librettist neither to stage their opera nor to
publish its text? We submit that courts should rather require that a prior
creator and creation be referenced when that creation is recognizably
disseminated in a creatively reworked form. But what if creators fail to obtain
timely orders compelling reference to themselves or their creations before
dissemination without due reference? Hence our third remedy: creators may
obtain damages caused by the failure to provide such references.[9]
In our third principle, we contemplate
further remedies in cases where a creation is disseminated in an impaired, but
not clearly creative, guise. What if the integrity of a creation is impaired,
for example, in the dissemination of routine copies of poor quality, in a
mechanical but misleading translation, or in another such derogatory form or
context? The court has to do justice to the prior creator’s moral interests
here; however, given no creative reworking, it does not have to consider the
interests either of a later creator in disseminating another creation or of the
public in enjoying any such further creation. Thus, in the easy case of a bad but
slavish copy, the court may order dissemination to stop; however, in hard cases
of somewhat reworked copies, the court will have to compare the prior creation
against a version that rearranges or reclothes it, say, with added, but not
strikingly creative, retouching. As cases thus become harder, the court may
require, in further dissemination, that any impairment be corrected, at least
to the extent that circumstances equitably allow, and award damages for any
actual harm.[10] Relief
becomes still harder to fashion in cases of only one or very few embodiments of
a creation, for example, of a single art object or short print run, that might
be modified or destroyed. Creators’ rights can then get entangled with other
rights, most often with the rights of tangible property of whoever owns the art
object at issue. Our third principle calls upon courts to exercise discretion
in undertaking the Solomonic task of reconciling resulting claims.[11]
Public interests may be at
stake in some cases. For example, Richard
Serra’s Tilted Arc was created for a public space, but people
frequenting the space wanted it removed. Equitable solutions may then turn on
such public interests as may outweigh, or reinforce, creators’ interests in
keeping their creations intact. Consider the Athenian Parthenon and Buddhist art along the Silk
Road: over time, sculptures have been damaged, and painting has faded. In
such cases, a court may have to consider public interests in preventing cultural
amnesia: for example, it may stop the destruction of a work.
Writers spend time and energy
making texts, as do composers making music, and artists making images. But,
unlike land or tangible and movable possessions, such creations tend to be hard
to fence or lock up: they are easily shared. For example, with the advent of
print, creators gave media enterprises manuscripts, musical scores, and
pictures to publish. But competitors could quickly reset type or plates and
flood the market with cheap reprints, thus depriving creators and enterprises
of prospects of recouping investments, much less of making profits. Today,
often without authorization, creations easily move back and forth between private
and public circles online, ultimately across the internet, where risks of
infringement of creators’ rights can proliferate globally. Under our fourth
principle, courts may accordingly provide creators with the following distinct,
but dovetailed, sets of remedies: They may fashion injunctions to stop the
unauthorized and prejudicial dissemination of unchanged or routinely changed
creations. They may also grant monetary awards for such dissemination of
creations, even in reworked forms, once it occurs.
Imagine routine copies about
to be made public without consent. Close but defective copies might bias a
market against the creator. Close but good copies might usurp a market that the
creation addresses. Either way there is a threat of irremediable harm that
calls for stopping dissemination. Given such threats, courts may issue
preventive orders; however, our fourth principle, allowing such relief, is
subject to our first
principle, which allows stopping the dissemination only of routine copies,
not of creative translations, transformations, or adaptations of prior
creations. To sort out enjoinable copies from any such creative reworking, a
court may ask: Could the allegedly infringing cultural production have been
fully generated from the prior creation at issue merely by using techniques? A
machine translation could accordingly be found to be a routine copy, and
therefore enjoined if not authorized, but an inspired translation of an
innovative text, say, one of Mallarmé’s poems,
could not be so treated. What if a derivative production is neither obviously a
routine copy, for example, where computer reprocessing mimics creativity, nor a
strikingly different version, as in a subtle parody? Courts may then ask: Would
dissemination of the production usurp a market that the creation at issue on
its face addresses? For example, could an abridged text or a small-scale
reproduction of an image substitute for enjoying the full text or image at
issue? If so, at least a provisional injunction may be in order at the outset
of suit; if not, no injunction may then issue.[12]
Once the unauthorized
dissemination of a creation has started, its creator may recover money. Our
fourth principle sets out the classic remedy: an order to pay actual damages,
usually for market losses. Since the creator’s core right is that of
dissemination, which usually goes from the private sphere to members of the public, damages
may begin to be measured by asking: How much of the public would no longer pay to enjoy
the creation at issue, and how much money has not been paid, because of the
infringement? But what about derivative markets, for example, when a character
creatively delineated in an animated film is used as the model for a toy sold
on the market? Here the market for the film might even be improved by the
infringement, since more members of the public might want to see the film once
they see the toy itself or advertising for the toy. Even in such cases, where no harm might arise,
it seems only fair to restitute to an earlier creator the market value of whatever he or she
creates that a later creator takes and even reworks, notably as evidenced by the
latter's profits.[13]
For example, Dashiell Hammett, in
his novel The Maltese Falcon, created tight dialogue, colorful
characters, and a suspenseful plot, all of which John Huston chose to adapt to film. But Hammett’s novel took on new life in Huston’s motion picture,
thanks to creativity in casting and directing actors, in visually articulating
action, and in otherwise putting the story on screen. Suppose, hypothetically,
that Huston’s studio had not obtained film rights to Hammett’s novel before making and releasing Huston’s
film based upon the novel. Under our fourth principle, the studio could later face the novelist’s suit for film profits
imputable to taking his creative materials from the novel.[14]
Of course, before investing in any such project, say,
to derive a film from a novel, a prudent enterprise would contractually obtain the rights to make
and exploit the derivative creation. The prospect of facing an action for infringement provides
a strong incentive to negotiate for such rights, since such an action would expose
the enterprise to the risks of having its earnings provisionally sequestered pending trial and
of paying the rightholder the court's assessment of damages or of a fair share
of profits. In our hypothetical example, a court would have had to
disentangle Hammett’s creative contributions to the profits earned by Houston's film, on the
one hand, from such contributions to film profits made by Huston and the rest
of the creative team of the film, on the other. The chances of paying such damages or shares of profits
as a court might estimate should prompt creators, as well as enterprises supporting them, to
obtain contractual authorizations before deriving one work from another.
How far does the
creator’s core right of dissemination extend? Copyright law has traditionally
excused a variety of marginal cases of redissemination. We shall try to
encapsulate the principle underlying such exceptions to economic rights. In
other regards, copyright law has often been made myopically, without full
regard for the law as a whole. We shall try to elaborate a principle that draws
attention to overriding laws that might compel limiting copyright in certain
cases. It shall refer to basic rights, for example, to privacy and to freedom
of expression.
A large range of critical and
informational uses often take place outside and inside marketplaces. For example,
a rap group had parodied the ballad Oh,
Pretty Woman, and the U.S. Supreme Court ruled that their commercial parody
could be excused.[15] The parodists had tried to negotiate with the owner of copyright in the ballad for
contractual consent to their use before engaging in it, but this overture was rejected. A critic or commentator
might similarly be frustrated when asking for consent to quote passages in
reviewing a book if the writer or publisher of the book expects the review to
be negative. A scholar might find it costly to obtain consent to illustrate,
for example, a book on art history with hundreds of photographs of art works. A
reporter might not have the time to obtain consent to include a tune played, or
a painting hung, in the background of a current event being covered. It might
not be feasible to seek advance consent to present excerpts to a research group
or a class as investigation or teaching proceeds. Copyright
laws worldwide tend to make exceptions for such uses, but they do so neither
clearly nor simply.[16]
Treaty terms compel lawmakers
to ask: How would exempting this or that use of creative materials impact
exploitation and creators' interests?[17] Our fifth
principle moves beyond such treaty terms by imposing a quite distinct requirement
on lawmakers: Exceptions benefiting critical and informational users should be
clear and cogent to laypeople. Consider typical users: parodists, commentators,
reporters and investigators, archivists and librarians, researchers and
teachers, or others who want merely to make a point, to preserve access to
data, or to learn or teach something. Such users are not often in any position
to assess the impacts that the redissemination each contemplates would have on
market exploitation, much less on most creators' interests, if the use were
generalized. Nonetheless, copyright law tends to allow their redisseminations
for a pair of reasons: such uses feed creativity, and the uses do not normally
substitute for entire creations on the marketplace. Users then need criteria of
exceptions that tell them what they may do in the light of their purposes and
circumstances, which they know first-hand and understand in terms of common
sense. Our fifth principle accordingly leads to a three-step test, with each
response subject to common sense: First, am I engaging in a critical or
informational use? Second, am I taking only such protected materials as the use
requires? Third, am I addressing only the audience the use concerns?[18]
Return to our examples. Our first principle
would have insulated the parody of Oh, Pretty Woman from any order to
stop publishing or performing, but not from a suit for damages or profits. Our
fifth principle leads users, if they are to escape all liability to pay
monetary awards, to assess how much of others’ creations to redisseminate and
how tightly to restrict their audiences, given their purposes and
circumstances. For example, a parodist or other appropriation artist can give
an entire text, tune and lyrics, or series of images such a new slant and form
that little, if any, of the materials taken are redisseminated to the public at
large in their original guise. Commentators, scholars, and others
illustratively redisseminating creations to the public can keep their quotes to
the point, or have sampled images down-sized, as instances in larger contexts.
Reporters can include entire creations, but only fleetingly, in news releases
to the public, while official inquiries can reference publicly available
creations or put unreleased creations under seal. By contrast, archivists,
researchers, or teachers might share larger excerpts, even entire creations,
with colleagues or with students, while proportionately limiting the size of
these groups.[19] Once a
user shows a redissemination to serve a critical or informational purpose, the
court has to ask whether this use goes beyond common sense in meeting this
purpose. Only to the extent that the use defied common sense in this regard
would it open the user to paying damages or profits based on economic rights.
Some limitations stem from the definition of the core creator’s
right itself. Under our first
principle, one creator’s right may not be invoked to
preclude other creators from exercising their rights. Under our second principle,
creators' rights may be asserted to control the dissemination of creative materials,
but not the use of techniques. Over time, creators’ interests in maintaining control
of dissemination tend to become so attenuated that more and more uses of their creations
may be left free. Indeed, copyright law usually has economic rights lapse fifty or seventy
years after a creator’s death; furthermore, even before any such expiration of rights,
our sixth principle would prompt courts to take the
passage of time into account in fashioning relief. While moral rights may in
theory last longer than economic rights, courts may in practice decline to
provide remedies to protect creators’ personal interests that, while long-ago
motivating moral rights, have waned with time. For example, the French Supreme
Court doubted that Victor Hugo’s moral rights should now allow for stopping a
sequel to his nineteenth-century classic Les Misérables.[20] In addition, in assessing monetary awards for
infringements of economic rights, courts may discount future and speculative
damages. Other considerations may also estop creators from asserting certain
rights that they have not exercised over time.[21]
Distinct types of overriding laws may, in specific
cases, call for limiting remedies for creators’ core rights to disseminate
creations throughout media networks. On the one hand, constitutions and other
framework laws may protect both creators’ and users’ basic rights, notably to
privacy and to freedom of expression. On the other hand, other laws may
regulate media networks in order, among other things, to assure open
communication and to provide citizens with free and equal access to media of
expression and to information. Focus, to start, on a case in which
constitutional limitations were brought to bear on relief relative to
particular creations: creative images of characters were lifted out of the Asterix
comic strips and then copied, while creatively ridiculed, in new parodic
stories in comic strips called Alcolix, Isterix, etc. The German Federal Court of
Justice, because the German Constitution guaranteed the parodists’ freedom of
art, adjusted infringement analysis of their creatively transformed versions
of the comic strips, reducing the chances that these versions could be enjoined.[22] Our first, third, and fourth principles also
avoid imposing injunctions that would stop the dissemination of creative
translations, transformations, and adaptations.
Shift from the level of specific creations
at issue in infringement suits to the level of the massive redissemination of
creations without authorization. Creators may use self-help measures, such as
encryption, to control how creations are thus disseminated across widespread networks.
But what if such efforts impacted more than the fate of creations, skewing how
networks function and threatening privacy, freedom of expression, or open
communication? For example, private initiatives could place online media on
notice of possible infringement and demand that media enterprises block or
filter allegedly infringing materials. However, a court may not order media
enterprises to block or filter content that the court itself could not enjoin
in enforcing creators’ rights.[23] Bear in mind that our first and second principles would
justify blocking the dissemination only of routinely made copies. Finally, in
cases of systematic impact across networks, courts may have to move beyond the
principles of the law of copyright alone. They may refer to overriding laws
often mandated in constitutions or emerging in spheres such as cyberspace.
Who holds creators’ rights? Our response, in our first and second principles is
simple: creators themselves. But this response calls for elaboration in cases
that often overlap: to start, when creators work either together or for someone
else or both; further, when creators contract with others to exploit their
creations; finally, when the law itself effectuates transfers. Who, in such
cases, may assert creators’ rights?
Think, for example, of dictionaries, of feature films, and of
software. Many creators might collaborate at once to make such creations.
Often, too, creations are made on someone else’s orders, for example, on the
job or on commission. Different laws
characterize such creations differently: some laws fictively make the person or
legal entity employing or directing a team of creators, or even a solitary
creator, the “author” of any resulting creation. Our seventh principle, by
contrast, holds to our first and second principles: flesh-and-blood
creators themselves alone initially have rights in their creations once these
can be disseminated. How then to allocate creators’ economic rights in
creations that arise out of collaboration or out of employment or other such
relationships? Our seventh principle allocates creators’ economic rights in
such creations by equitably construed consensus to the extent that no contract
clearly transfers such rights.
Consider distinct cases: a work made by creators alone, as
opposed to one made working for a boss. On the one hand, suppose that a
videogame or software is created worldwide on the internet by many creators
over time. Assume no employer or other director of this ad hoc team, nor any explicit agreement between its members.
Our seventh principle allows courts to give equitable effect to this team’s
implicit consensus to allocate its members’ creators’ rights among themselves.
For example, actual communications between members of the team, as well as
contracts that are commonly used in network circles, could serve as evidence of
the team’s consensus. On the other hand, turn to a creation made for an
employer or for some other party directing creative efforts: to the extent that
a contract did not expressly allocate rights in the resulting creation, equity
would apply. Economic rights would be reallocated according to how a court
understood the creators’ underlying relationships with their employer,
director, or other such principal. Of course, it would not be prudent to invest
in such a project without spelling out the allocation of creators’ economic
rights while negotiating contracts with the creators themselves.[24]
Creators may have their creations exploited across an
increasingly complex media universe. For this purpose, they may assign their
economic rights all at once or piece-meal, license uses more or less
exclusively, or waive rights relative to others. There are multiple reasons why
it can be hard to predict how creations might be used in the future: for example,
creations themselves are protean and can be reworked into versions that might
address unexpected markets, while media progress can also open up new markets
unpredictably. Given the potentially diverse and often-uncertain future uses of
creations, all contractual terms assigning rights or licensing uses to parties
outside a creative endeavor, that is, to parties other than to fellow creators
or to employers or other principals, are to be restrictively construed. The
burden lies on the assignees or licensees contractually to specify the rights
in future uses from which, in negotiating, they bargained to benefit. By parity
of reasoning, only specific contractual waivers could renounce rights.[25]
Given that commerce in creators’ economic rights grows more and
more far-flung and complex, what must a claimant show to obtain remedies for
such rights? In fashioning preliminary orders under our third and fourth principles, courts
may take account of showings of many factors, including the risks of imminent
infringement and harm, as well as the entitlements or representative capacities
of claimants. For any final monetary award, our fourth principle calls for
claimants asserting creators’ rights to make showings both of unauthorized
dissemination and of resulting damages or profits. Under our eighth principle,
to pocket monetary awards, such claimants also have to show either that they
are the creators initially vested with rights or that they are successors with
good chain of title from the creators.
What transfers forge such chain of title? The answer might
indicate how easy or hard it is to find parties entitled to authorize uses. In
most jurisdictions, if a party owning an exclusive right transfers it to one
party and then to another, the prior transfer trumps the later transfer.[26] But there are exceptions: many jurisdictions allow
a later transferee to prevail over a prior transferee if the later transferee
gives prior notice, notably by publicly recording the later transfer before the
prior transfer is thus recorded. There remains the task of using global media
to build up a networked system for giving notice of transfers of rights
worldwide and for harmonizing notice exceptions. In addition to contractual
transfers, the system could record transfers that have been effectuated by
legal proceedings, for example, by foreclosure, corporate succession, and
inheritance. The fact that no such system is available today inhibits the
global dissemination and enjoyment of creations by making it often hard to find
parties entitled to authorize uses.
An open market presupposes that rightholders do not arbitrarily
refuse to authorize uses. They may not thus abuse any dominant market position
that the rights in question would enable them to occupy.[27] Imagine a case of a so-called orphan work: for
example, a creator assigns all rights to a media enterprise to exploit a
creation, which is only briefly released to the public. Afterwards, the
enterprise assigns these rights to a third party who ceases to market the creation
publicly and gives no notice of its claims or whereabouts to the public, so
that prospective users cannot find anyone with whom to deal. Recall that, under
our fourth principle,
prospective users, by contractually acquiring authorization to make
contemplated uses, may avoid suit on a creator’s economic rights. By waiting in
the wings unknown, a rightholder effectively declines to negotiate
authorization of any uses, leaving prospective users with no contractual means
to avoid such suits. Our eighth principle equitably estops a rightholder, if absent
from the marketplace for an already released work, from suing such users for damages.[28]
As media networks globalize, different parties become implicated
in disseminating creations. Also, as such networks become computerized,
materials they convey, as well as their mechanisms, can be programmed to
control dissemination or to escape such control. Who, then, in this increasingly
complex media universe, may be liable for unauthorized dissemination? To which
laws should they be subject when transactions cross borders?
Creators, or claimants asserting their rights, may try
technologically to control dissemination, for example, through encryption or
blocking media access. Court orders to stop the circumvention of such
technological safeguards, or to compel media filtering, would have the State
impose creators’ self-help measures coercively. Under our ninth principle, in
deciding whether to grant any such order, a court has to comply with the same
criteria as our first as well as third and fourth principles dictate
for injunctions. That is, creators’ rights may not allow for judicially
enforcing self-help measures to bar disseminations that may not otherwise be
enjoined under the law. For example, the Australian High Court refused to stop
the circumvention of codes that kept users from changing how they played
videogames.[29]
Creators most often sue for the unauthorized dissemination of
their specific creations. Network technologies, however, can facilitate the
unauthorized dissemination of large numbers of creations. For example, users
who enjoy creations can make these available within widespread file-sharing
networks, into which it can sometimes be hard to apply judicial remedies to specific
participants.[30] May creators, or claimants asserting their rights,
petition to have injunctions or monetary liability civilly imposed against
software or service providers whose acts or omissions are implicated in such unauthorized
dissemination of creations? The criteria for imposing such remedies, whether in
cases of the unauthorized dissemination of specified creations or in cases of such massive
dissemination, have to allow all parties rationally to assess the risks that
their conduct might lead to the unauthorized dissemination of creations in the
media universe. General tort law provides such basic criteria: in theory, it
precludes imposing monetary awards for one's acts that are neither statutorily
defined nor foreseeably likely to lead to prejudicially impairing others’
rights. In practice, it remains unclear how such tort criteria should guide courts in
imputing liability for omissions that allow infringement to take place online,
for example, in file-sharing networks.[31]
A court exercises the State’s coercive powers in civilly
enjoining the infringement of creators’ rights. It also does so in criminally punishing an
infringer, notably by imposing deterrent sanctions, such as fines, punitive damages, or imprisonment.
Accordingly, the conditions for imposing civil injunctions would seem to form necessary, but not necessarily
sufficient, conditions for enforcing penal sanctions. In addition, the State, pursuant to the principle
of legality, has to warn citizens, in the letter of the law, of the specific acts that may lead
to penal sanctions. Our first as well as third and fourth principles
allow for civilly enjoining unauthorized dissemination if distinct
conditions, among others, are satisfied. First, routine copies of the creation
at issue are likely to reach the public; second, such dissemination gives rise
to a threat of irremediable harm. The first condition is precise enough, but
the second is vague, so that our ninth principle calls on legislators to detail it in
criminal laws. Such laws have to specify acts of dissemination to members
of a public that may trigger penal sanctions for violating creators’ rights. For example,
such a law should stipulate the minimum number of persons that constitute a public
for that purpose.[32]
The mustachioed, not the bearded, Marx was reported to have
quipped: “These are my principles. If you don’t like them, I have others.”[33] Indeed, besides the principles just adumbrated,
what about the wealth of “other” principles that underlie the diverse laws of
copyright and of authors’ rights worldwide? Creations are globally disseminated
more and more often, and courts will have to ask which of these diverse laws
apply to the cases of cross-border infringement that increasingly arise. Even
with some consensus on principles, courts may still have to apply laws that, in
different jurisdictions, do not resolve issues uniformly in any one concrete
case. Courts will then face conflicts of laws when laws of copyright and of
authors’ rights, in force in different jurisdictions, ostensibly apply to the
same case. How do our principles help to choose and enforce the laws that may
be invoked in such cases?
Confronted by a case of potentially worldwide infringement, a
court might be tempted to resolve many or all issues by applying a single law,
in particular its own law which it knows best. Suppose, however, that many
courts adopted this provincial tactic in such cases: they would thus invite
lawyers opportunistically to take their chances with any court that, as best
they could guess, would apply the law most favorable to their respective
clients. To avoid such choice-of-law roulette, we refer back to our first, third, and fourth principles that
protect creators’ moral interests in having their creations recognized as
theirs by given audiences and their economic interests in exploiting specific
markets; further, our fifth and sixth principles look to
users’ informational and other basic interests, such as privacy and freedom of
expression. Consistently with the international treaty regime, our principles
lead to governing any case of cross-border infringement by the laws of the
jurisdictions whose audiences and markets, and thus whose users, are
respectively targeted or impacted in the case.[34]
Any principled application of such laws has to take account of all
arguably applicable laws from the threshold of suit. Reconsider the case of a live improvisation, such as was hypothesized in
our second principle, but vary
it a bit. Suppose that a mime creation improvised live by a U.S. national on
U.S. territory were recorded and disseminated worldwide without the creator's
consent. If, in any suit that the mime creator brought for worldwide
infringement, a court were to start by applying only one law, particularly U.S.
law because the claimant was a U.S. national or her creation made or initially
released in the United States, it could arbitrarily preclude copyright relief
on the grounds that the creator herself did not authorize fixing her own
creation, as U.S. law requires. If the court rather considered the laws where
the mime improvisation is to be enjoyed worldwide, it would find that most of
these laws of authors’ rights protect this creation once it can be
communicated, even without any authorized fixation. But how may a court,
applying diverse laws country by country, each law governing imminent or actual
reception within a given territory, fashion relief coherently and
cost-effectively in a given cross-border case? The foregoing principles have
been offered to guide courts globally as they apply diverse laws to grant
creators such relief.[35]
Now that we have unpacked our principles a bit, let us take a
look at them all together. Click on each principle below to return to
explanations offered for it above.
Mere principles cannot stop media enterprises from trying to
monopolize culture on the internet or computer-savvy users from drawing others’
creations into the darknet. Our principles can only serve to guide courts in
fashioning relief in hard cases increasingly endemic in copyright law. But we
may still ask: Where would such jurisprudential developments lead? Here are a
few guesses, some moving beyond judicial action to touch on legislation.
Start with the core creator’s right. We have tried to articulate
remedies for this right that leave creators free to enhance culture. Moral
rights need no longer entitle earlier creators to censor later ones for reworking
their prior creations. Rather, creators may have themselves and their creations
referenced when these are recognizably disseminated, damages awarded for
failure to so reference, and further relief equitably fashioned in cases of
non-creative impairments. Economic rights need no longer entitle some creators
to have the dissemination of others’ derivative creations indiscriminately
stopped, but creators may have the unauthorized dissemination of routine copies
stopped if it threatens irremediable harm. They may also obtain actual damages
or equitable shares of profits for the unauthorized dissemination of their
creations, even when these are reworked.
Turn to exceptions to, and limitations of, creators’ rights.
Critical and informational uses may now be exempted from liability pursuant to
broad doctrines such as fair use or to specific, albeit complex, exceptions. To
make such doctrines and exceptions user-friendly, we propose to encapsulate
them in terms of the common-sense criteria: Am I engaging in a critical or
informational use? Am I taking only such protected materials as the use
requires? Am I addressing only the audience the use concerns? Further, courts
may cut back on remedies in specific cases where constitutional or other
overriding laws impose limitations to achieve aims such as privacy, freedom of
expression, or open communication. Finally, not only do legislators have to fix
terms of years after which rights lapse, but courts may take account of the
waning of creators’ protected interests over time when they tailor relief.
Next, ask who owns and may exercise rights. Suppose that many
creators contribute to the same creation as a whole. Or a creator contributes
to a creation working for another party, for example, an employer or director.
The consensus of the creators, along with any party for whom a creation is
being made, may be equitably construed to allocate rights. By contrast,
contracts by which creators transfer their rights to parties outside any
creative endeavor are to be restrictively construed. Entitlements to pocket
monetary awards should follow provable chain of title from creators to
claimants. A prior transfer of an exclusive right trumps any later transfer,
subject to exceptions in cases of prior notice. Users who try in good faith,
but in vain, to obtain authorization to use creations may defend against
monetary relief.
Liability also has to be imputed, often in complex network cases.
Courts may not enforce creators’ self-help measures
that block permissible uses. Nor may they impose monetary liability for any act
that does not foreseeably lead to the unauthorized dissemination of any
protected creation. Nor may they, given the principle of legality, impose
penalties for such conduct as statute does not specify.
The dissemination of creations increasingly
crosses borders. Courts have to apply the laws of the countries whose audiences
or markets are targeted or impacted in the cross-border cases of infringement
that then arise. The foregoing principles may help guide courts in
fashioning coherent relief even though they apply diverse laws in such cases.
* This work in progress revises, as of August
22, 2010, the following article: Paul Edward Geller, Beyond
the Copyright Crisis: Principles for Change,
Journal of the Copyright Society of the U.S.A., vol. 55 (2008), 165. This article thanks my
colleagues for comments on prior drafts, includes more extended notes to
sources, and starts with a methodological introduction. All
critiques are welcome: please send them to my email address specified on my résumé. ©
Paul Edward Geller 2010
[1] See WIPO Copyright
Treaty, art. 8 (concluded 1996). Under this treaty, the communication right
may be characterized as including other component rights under copyright, while
the treaty separately recognizes or reserves specific
component rights.
[2] In the
nineteenth century, copyright law came to include prior authors’ rights relative to
others’ subsequent creations, such as translations, transformations, or adaptations, that
are derived from their respective prior creations. In setting out our third and fourth principles
below, we shall explain how our first principle may guide courts in fashioning relief
for such creators’ translation, transformation, or adaptation rights.
[3] Our seventh
principle governs the allocation of rights in any creation made by creators
working either together or for someone else.
[4] Baker v. Selden, 101 U.S. 99 (1879). The
Supreme Court refused to apply copyright to accounting forms which followed a
“plan” of “ruled lines and headings” similar to that found in claimant’s forms.
Reasoning that the overall effect of providing remedies for such copying would
have been to preclude use, it declared that the matter fell into “the province
of letters-patent, not of copyright.” Id. at
100-02.
[5] This principle does not imply our acceptance
of the present regime of industrial property. Of course, we need some legal
regime to protect innovative techniques in appropriate fields and at
appropriate levels. But that regime, currently patent, design, and related
laws, lies outside the scope of the present analysis. For further analysis, see
Jerome H. Reichman, Of
Green Tulips and Legal Kudzu: Repackaging Rights in Subpatentable Innovation,
Vanderbilt Law Review, vol. 53 (2000), 1743.
[6] This principle is encapsulated in
diverse doctrines. For example, the maxim is often repeated to the effect that
creative expressions, but neither ideas nor facts, are protected by copyright.
As we shall see in setting out our third and fourth principles
below, courts may apply such doctrines at various stages of enforcing creators'
rights. They may do so, most notably, while deciding what to protect, analyzing
infringement, or fashioning remedies.
[7] Our ninth principle
calls for statutes specifically to define any public to which the unauthorized
dissemination of a creation may trigger criminal sanctions.
[8] The Letters of Vincent
Van Gogh, ed. Ronald de Leeuw and trans. Arnold Pomerans (Penguin Classics,
1996), 477.
[9] Note that creators are entitled to prevent unwanted
references. For example, creators could have their names removed from parodies
or other derogatory forms of their respective creations on demand. Damages,
however, are governed by the criterion of foreseeability set out in the ninth principle
here. Presumptively, reference would seem appropriate if it mentioned the name
that a creator publicly used.
[10] See Germi c.
Rizzoli e Reteitalia (the Serafino case),
Tribunale, Rome, May 30, 1984, Dir. Aut. 1985, 68, reversed, Corte di
Appello, Rome, Oct. 16, 1989, Dir. Aut. 1990, 98. The Italian trial court
directed broadcasters to keep from interrupting televised films with spot
commercials too often, at crucial points in plots, etc. However, the
intermediate court arbitrarily reversed this equitable solution, while it
enforced a right of integrity unconditionally subjected to the creator’s
intentions.
[11] In a key case, the French Supreme Court
illustrated such an equitable solution: William Eden c. Whistler, Cass.
civ., March 14, 1900, D.P. 1900, 1, 497.
The artist Whistler had refused to
deliver a portrait upon the demand of Lord Eden, who had paid to have it made
of his wife. The court allowed Whistler to retain the portrait, subject to the
following conditions: To protect the commissioning party, the artist had to make restitution of all payments received
and to pay damages for non-delivery. To protect the model, the artist had to
make her unrecognizable in any eventual display that he might make of the
painting. Thus the artist was allowed to control when and how his creation was
disclosed. At the same time, the model did not have her unapproved portrait
inopportunely disclosed.
[12] At the outset of suit, a provisional
injunction may be issued to forestall irreparable harm. At that point, the
market-substitute test proposed here allows for expeditiously serving this
purpose. At trial, expert testimony might better disentangle routine
reprocessing from creativity.
[13] For further analysis, see Wendy J. Gordon, Of
Harms and Benefits: Torts, Restitution, and Intellectual Property, Journal
of Legal Studies, vol. 21 (1992),
449, reprinted in McGeorge
Law Review, vol. 34 (2003), 541.
[14] In fact, Hammett’s authorization had been
contractually obtained. See Warner Bros. Pictures, Inc. v. Columbia
Broad. Sys., Inc., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S.
971 (1955). Note that our first principle
moots the issue of whether to enjoin any sequel in this case, and our seventh
principle compels the restrictive construction of any creator’s contractual
transfer, such as Hammett’s in this case, to parties outside his own creative
endeavor.
[15] Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569 (1994). But the Supreme Court called upon the lower court to complete its
analysis by inquiring into “the likely effect of 2 Live Crew's parodic rap song
on the market for a non parody, rap version.” Id. at 593.
[16] For illustrations from U.S. law, see Keith
Aoki, James Boyle, and Jennifer Jenkins, Tales from the Public Domain: Bound
by Law? (Duke Center for the Study of the Public Domain, 2006). A rich
case law in the United States interprets the doctrine of fair use, which limits
copyright rather broadly. Other laws of copyright or
of authors’ rights tend to codify exceptions in complex and cumbersome
statutory provisions. Rather than falling under one doctrine, hard cases then
collect in the nooks and crannies of these provisions, themselves hard to grasp
together.
[17] See Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPs), art. 13 (concluded 1994, as part of the
Agreement Creating the W.T.O.): “Members shall confine limitations or
exceptions to exclusive rights to certain special cases which do not conflict
with a normal exploitation of the work and do not unreasonably prejudice the
legitimate interests of the right holder.”
[18] Our fifth principle applies only
to economic rights. In the cases it covers, suit remains possible on moral
rights. Thus users for critical or informative purposes also have to ask: Am I,
under the third principle, referencing creators and sources, quoting accurately, or
paraphrasing fairly? Parodic and related critical uses may fall outside these
rules of thumb.
[19] See Queneau c. Boue, TGI Paris, réf.,
June 10, 1997, J.C.P. 1997, II, 22974, translated
in 2000 E.C.D.R. 343. The French trial court excused a
research team at the French National Center for Scientific Research for making
protected poetry available to its members on an intranet walled off from the
internet.
[20] Plon S.A. c. Pierre Hugo, Cass. civ.
I, Jan. 30, 2007, R.I.D.A. 2007, no. 212, 249. The Supreme Court remanded the
case to the intermediate court for inquiry into actual confusion regarding
authorship or actual distortion, while invoking “freedom of creation” as an overriding
consideration in the case. See Cour d’appel, 4e ch.,
Paris, Dec. 19, 2008, R.I.D.A. 2009, no. 220, 444. The intermediate court
allowed the sequel.
[21] For an example, see the case of orphan works
treated under our eighth principle.
[22] The Alcolix
decision, BGH, March 11, 1993, GRUR 1994, 206, translated in 25 I.I.C. 605
(1994). The Court of Justice remanded the case to have the intermediate court
assess whether a reader conversant both with the Asterix comics and with parodies such as Alcolix would find sufficient distance or attenuation between the original
and the parody to avoid a finding of infringement. In the Germania 3 decision, the German Federal Constitutional Court
(BVerfG, June 29, 2000, GRUR 2001, 149), confirmed this approach when it
overturned an injunction stopping the publication of a play which had
creatively incorporated extensive passages from Brecht’s plays. The
Court admitted that these takings were too large to excuse under a traditional
reading of the exception for quotation, but reasoned that freedom of art
compelled reading such exceptions broadly to allow publication in this case.
[23] For proposed guidelines for such filtering,
see the Electronic Frontier Foundation, et al., Fair Use
Principles for User Generated Video Content. For further analysis, see our ninth principle
below.
[24] Such a contract would be subject to equitable
construction, as contrasted with a contract transferring rights to a party,
which would be subject to restrictive construction. Return to the case of the Maltese Falcon, evoked in our fourth principle
above: Any contract between members of the creative team of the film and the
producer would be equitably construed. By contrast, any contractual transfer of
rights from the author of the preexisting novel to that producer would be
restrictively construed.
[25] For examples of such waivers, that let “others know exactly what they can and can't do with your
work,” see Creative Commons, License Your Work.
[26] See Griggs Group Ltd. v. Evans (No. 2)
2004 F.S.R. (48) 939 (High Court, Chancery), affirmed, Griggs Group v. Raben Footwear 2005 F.S.R. (31) 706 (Court of Appeal).
In this case, an author impliedly granted copyrights worldwide to a first
party, but he later formally assigned the same copyrights to a second party who
had notice of the prior contract. The British courts confirmed the first
party’s rights as against the second party, while considering both the British
and foreign rules to this effect.
[27] See P.R.T.E.
v. Commission and I.T.P. v. Commission (the Magill case), Joined Cases C-241/91 P and C-242/91, April 6, 1995, 1995
E.C.R. I-743. The European Court of Justice here compelled television stations
to license, on reasonable terms, program listings in which they claimed
copyright, but which the stations had refused to license, thus abusing their
market positions.
[28] In the case of an orphan work, the rightholder
has, by hypothesis, developed no market to harm, leaving no basis for actual
damages. But such a rightholder may still invoke its initial investment in
acquiring rights, of which a court may arguably take account by granting an
equitable share in users’ profits.
[29] Stevens v. K.K. Sony Computer Entertainment
2005 H.C.A. 58. The High Court here stressed the need “to avoid an overbroad
construction which would extend the copyright monopoly rather than match it.”
It was especially concerned to avoid this consequence because of the “penal
character” of the statutory scheme.
[30] For background, see Peter Biddle, Paul England, Marcus Peinado, and
Bryan Willman, The Darknet
and the Future of Content Distribution, in Digital Rights Management
Workshop 2002, ed. J. Feigenbaum (Springer, 2003), 155.
[31] For background, see Johan A. Pouwelse, Pawel
Garbacki, Dick Epema, and Henk Sips, Pirates and Samaritans: A
Decade of Measurements on Peer Production and their Implications for Net
Neutrality and Copyright, Telecommunications Policy Journal, vol. 32
(2008), 701.
[32] Without such statutory parameters, a court may
dismiss charges of criminal infringement if there is no showing of any attempt
at redissemination to the public at large without due authorization. See Fox c. Aurélien, Cour
d’appel, 3e ch. cor.,
Montpellier, March 10, 2005. The French intermediate court here dismissed
charges of criminal infringement, because the evidence in the case merely
showed that the accused shared downloaded recordings with a “few buddies.” But see Cass. crim., May 30, 2006,
R.I.D.A. 2006, no. 210, 326. The
French Supreme Court reversed the dismissal in this case,
albeit for reasons that might not pass muster under the principles proposed
here.
[33] For his more specific views on copyright, see
Groucho Marx, Letter to
Warner Brothers: A Night in Casablanca (1946).
[34] See Regulation
(EC) 864/2007 of the European Parliament and of the Council of 11 July 2007 on
the law applicable to non-contractual obligations, arts. 4(1) and 8(1), O.J.
2007 L 199.
[35] For further analysis, see Paul Edward Geller, Rethinking
the Berne-Plus Framework: From Conflicts of Laws to Copyright Reform, European Intellectual Property Review,
vol. 31 (2009), 391.
