Category: Law & Policy

Copyright Scholars Urge Reversal in SAS v. WPL

Fundamental copyright doctrines and procedures are presently on trial in the case of SAS Institute v. World Programming Limited, now on appeal at the Federal Circuit. Suffice to say, U.S. software developer SAS alleges copyright infringement by UK developer WPL, and these entities have been litigating on both sides of the pond for many years. But it almost doesn’t matter, for the purposes of this post, which entity ultimately deserves to prevail on the actual merits. Because according to a brief filed by ten copyright scholars, the district court in the Fifth Circuit bollixed up procedure and doctrine so badly that, if allowed to stand, the ruling would be harmful to copyright creators everywhere. And, as usual, the precedent would be highly prejudicial to small business and independent authors who are always at a disadvantage vis-à-vis the cost of enforcement of their rights.

At issue is one matter of settled copyright doctrine and one matter of settled court procedure, both of which the SAS court in Texas undermined with an unprecedented procedure of its own that it called a “Copyrightability Hearing,” which the scholars’ brief describes as “foreign to copyright law and threatens to impose additional costs and burdens on parties, moving the costs of vindicating their rights further out of reach for many creators and copyright owners.”

Doctrine: Unprotectable Elements Do Not Deprive Whole Works of Protection

It is axiomatic that nearly all copyrightable works contain unprotectable elements. For instance, the scholars’ brief cites nonfiction books as an archetypal subject matter that is unquestionably granted protection as whole works, despite comprising many facts, which are unprotectable. But to further illustrate the point, I would note that the average motion picture or TV series contains hundreds, if not thousands, of protectable elements intermingled with unprotectable elements.

In fact, the motion picture industry thrives on copyright’s limiting doctrines like the idea/expression dichotomy, merger, short phrases, and scènes-à-faire. Consequently, no filmmaker gets an exclusive to produce scenes depicting heroes running with guns or that first kiss as the music swells and the camera adjusts to reveal a romantic setting. But these limitations do not obviate copyright attaching to each motion picture as a whole work, or even segments of each film as original expressions of common ideas, themes, tropes, etc.

Now, imagine a trial in which the filmmaker alleges copyright infringement of a whole movie, or a substantial portion of the movie, but the defendant argues, “Well, the motion picture is full of unprotectable elements and is, therefore, deprived of all protection as a complete work.” Because that is essentially what WPL argued in its lawsuit with SAS, and the district court agreed, thus, upending doctrine by voiding copyright in the entire work. As the amici state:

The Court’s stated basis for rebutting the presumption of validity and holding the SAS copyrights invalid, i.e., that “at least some of the material is not entitled to protection,” is not only wrong, it is exactly the opposite of the correct standard. [Citation omitted]

I use the motion picture example to emphasize the point that if the only response required of a defendant were to recite a litany (as WPL apparently did in this case) of copyright doctrines  under which elements of a work may be unprotected,[1] much as I did a couple of paragraphs ago, in order to shift the burden to the plaintiff to re-prove protectability, that way lies madness. For instance, I happened to watch the new Suicide Squad this weekend and, even as a non-attorney, I could probably do ten pages or so breaking down the protectable and unprotectable elements just in Harley Quinn’s solo fight sequence.

But hypothetically placing the burden on the film’s producers to engage in such an exercise would be anathema to more than a century of legal doctrine and decades of court procedure. Yet, that is precisely what the court did in SAS when it found that, in general, the work at issue contained unprotectable elements and, therefore, the plaintiff bears the burden to re-prove copyrightability in that which is allegedly protectable.

Procedure:  Registration as Proof of a Valid Copyright

So, it is settled law that copyrightable works may comprise even large volumes of non-protectable elements and still meet the standard of originality for protection. Moreover, once a copyright application is approved, a certificate of registration issued by the Copyright Office is considered prima facie evidence of a valid copyright as a matter of law. In fact, the efficiency of this longstanding precedent is one of the key incentives to authors provided by Congress (in §410(c) of the copyright act) to register their works with the USCO. Here, the scholars’ brief argues that by shifting the burden to the plaintiff to re-prove copyright in its work, the district court has disturbed a presumption of copyright validity, stating:

This presumption is of vital importance to copyright owners, and is frequently cited as an inducement to register works although copyright protection attaches automatically upon fixation. The presumption is particularly important to individual authors and small entities who struggle to afford the costs of federal litigation to adjudicate copyright claims. Imposing the costs of a Markman-like evidentiary showing of originality in every litigation would effectively render even their timely-registered works judicially unenforceable.[2]

The Abstraction-Filtration-Comparison Analysis

A court may certainly write an opinion finding that a registered copyright in a work to be invalid, but not without thorough analysis and clear articulation of its reasoning. Here, the scholars’ brief argues that the district court compounded its errors by engaging in an incomplete and improper analysis of the work at issue and then exacerbated harm, not only shifting the burden to the plaintiff to re-prove copyrightability, but to do so within the context of this court’s erroneous analysis.

Not unlike the analyses for “substantial similarity,” the Abstraction-Filtration-Comparison (AFC) test is a judicial review which examines the work by filtering out the unprotectable elements and then comparing the remaining protectable elements to the allegedly infringing work. But here, the scholars’ brief notes examples whereby the court misconstrued features of the SAS work as a foundation for finding non-protection. One example cited is “open source elements,” which tends to confuse a lot of people because “open source” generally refers to software that is made freely available, but this attribute does not alter the copyrightability of the work. Thus, the scholars’ brief states:

…the Court’s attack on the protectability of SAS works is predicated on an alleged characteristic of the works that has nothing to do with copyrightability. Thus, by its own terms, the District Court filtered out what should be presumed to be copyrightable elements of Plaintiff’s work. This alone is reversable error.

As stated above, whether SAS or WPL should ultimately prevail on the true merits of each claim is immaterial to the issues raised in the scholars’ brief. And to be honest, I am not about to crawl through the thicket of facts, allegations, and responses presented in what looks like more than a decade of these two companies duking it out with one another. Some have referred to this case as a Google v. Oracle light, but at least in context to the brief discussed in this post, I would disagree.

In Google, the core copyrightability question (which the Supreme Court failed to adequately answer) was solely based on the merger doctrine, and whichever view one held of that argument, either could find purchase in the law. In SAS, it appears that the district court simply abandoned any foundation in law whatsoever. And for the sake of rightsholders working in all media, the Federal Circuit must reverse.

[1] The amici scholars refer to this litany as “the List” in their brief.

[2] Markman refers to judicial interpretations of specific words used in a patent description pursuant to a patent litigation.

Also see brief co-author Steven Tepp’s piece at IPWatchdog.

Photo by: AndreyPopov

Censorship in the ALI Restatement of Copyright Project?

Justice O’Connor, in Harper & Row v. Nation Enterprises (1985), called copyright “the engine of free expression.” This was not a novel idea. The Justice was merely summarizing a well-established relationship between an author’s copyrights and the freedom to express herself as she wishes. Freedom in artistic expression requires that the author have a degree of personal economic liberty, which obviates the need to appeal solely to state-run cultural institutions or to wealthy patrons, either of which may seek to censor or otherwise control creative expression. The American system, which grants any author a copyright and lets the market decide whether the work is desirable, has, in general, yielded a diverse bounty of creative works in which we see the speech right and copyright working in tandem.

Yet, despite the volume of empirical evidence that O’Connor’s summary is axiomatic, copyright skeptics, including the individuals who launched, and are leading, the ALI Restatement of Copyright Law, have grounded their skepticism partly on the belief that copyright is fundamentally at odds with the speech right. I have written enough posts taking issue with that assertion and will not repeat those arguments here. Instead, the purpose of this post is to call attention to hypocrisy. Because while the Reporters comprise those who so often claim to rescue speech from copyright, they are silencing dissent, even pretending it does not exist, among their own colleagues who’ve been working on the Copyright Restatement project.

On May 21, Register of Copyrights Shira Perlmutter wrote a letter to the ALI, announcing her resignation as an Adviser to the Restatement project, stating that in her new role as Register (since September 2020), it is no longer appropriate for her to be active in the project. But more importantly, Perlmutter reiterates key areas of concern that the Copyright Office has expressed with the Restatement since before her tenure as Register of Copyrights began. These are: 1) a lack of deference to the statutory text; 2) a lack of deference to the Copyright Office as the expert agency; and 3) a lack of transparency about the drafting and decision-making process. In short, the USCO questions the propriety, methodology, and process of the ALI’s first statutory Restatement project in its history. On the subject of the statutory text, Register Perlmutter states:

In the latest Tentative Draft, as in prior drafts, the “black letter” statement of the law at the beginning of each section sometimes quotes the applicable statutory provisions, but at other times rephrases them. In statutory interpretation, there is no substitute for the words of the statute itself. Rephrasing, however well-intentioned, inevitably introduces imprecision and interpretive choices. This is particularly true where the Restatement presents these statements as the law itself, not as interpretations of the law.

In essence, the Register of Copyrights is suggesting that the ALI is usurping and mislabeling the true “black letter” law—the Copyright Act. As I have described previously, the concept of “black letter” in Restatements developed as a method for restating common law. The ALI’s founders recognized the folly, indeed impropriety, of restating statutory text under the rubric of  “black letter” drafted by Reporters.[1]

A variation on this precise concern—the Restatement’s “failure to treat the text of the Copyright Act as blackletter rules”—was submitted as a proposed amendment to the Restatement, co-authored by Professors Shyamkrishna Balganesh, Jane Ginsburg, Peter S. Menell, and David Nimmer. (See full amendment text here.) For those not immersed in copyright law, these are some of the heaviest hitters in the game; they are scholars open to debate, but who should not be ignored. Nevertheless, the ALI intends to disregard their amendment, stating in an email to its authors that it will not even be considered because, “The ALI does not add to the drafts what various advisers or members think about different sections or the draft as a whole.”

In plain terms, key Advisers to the project—and the four named above are not the only ones—have repeatedly tried to emphasize the premise that embarking on a Restatement of a comprehensive federal statute requires a different approach than every other Restatement in ALI’s nearly one-hundred-year history. That approach should begin with the language in the statute and the legislative significance of every negotiated word in it. Not only has the ALI elected to ignore this advice, but it has apparently censored Advisers’ views on these fundamental questions, thereby confirming Register Perlmutter’s concerns about transparency.

ALI and the Reporters are not merely overriding dissent, they seem to want to pretend it doesn’t exist. For example, Professor Samuelson, who initiated the Restatement project, tweeted on 12/4/2019, “Five well respected scholars are the reporters and everything they say is closely reviewed by other experts, including judges.” This comment is consistent with what the scholars named above describe as ALI creating the appearance that a collective of high-octane experts is negotiating in good faith, while eliding the fact that many of those experts are dissenters.

In fact, I am told by the authors of the proposed amendment that one of the primary reasons for seeking its adoption is to stave off the perception that the mere presence of a diverse body of scholars, experts, and industry representatives (who serve as Advisers) means that the Restatement is being produced through a collaborative effort. On the contrary, their criticisms and others are apparently not being revealed to the full membership of the ALI, let alone to the public.

So, for those keeping score at home, follow the logic:  the folks who started the Copyright Restatement project are among those academics who assert that copyright must be weakened in deference to the speech right. Yet, in a process that is already dubious at inception and obfuscated for the general public by its arcane nature, the ALI and the Reporters seek to avoid acknowledging even the existence of opposition from many of the same colleagues whose credentials give the project the color of validity. Whether that meets the legal standard for compelled speech is for someone else to say, but it must feel that way to some of the Advisers.

[1] Am. Law Institute Report on Business Associations, 1924: “…it is obvious that the Restatement, if it deals with the subject [of statutory law] at all, must set forth the statutory provisions as Principles of Law or Comment.”

DMCA Review Should Be About Copyright, No?

On September 30, the House Judiciary Committee held a hearing to discuss the Copyright Office report, published in May, commenting on the efficacy of Section 512 of the Digital Millennium Copyright Act (DMCA). Section 512 provides conditional immunity to online service providers for copyright infringements conducted by users of their services. (For a basic summary of conditions, see page here.)

Reiterating the position that the USCO report fails to consider the interests of the general public in its analysis, Meredith Filak Rose, senior policy counsel at Public Knowledge, urged the committee to proceed with cautious awareness that in the years since 1998, the public has become profoundly dependent upon the internet for a broad range of ordinary and essential needs.

With due respect to Rose personally, and with deference to the many devil’s details implicated by her testimony, I shall, once again, take issue with the over broad context in which digital rights groups like Public Knowledge try to frame discussion about the DMCA. For instance, at the start of her testimony Rose states that, “229 million Americans use the internet each day. That’s 229 million American adults using the internet to work, worship, connect with family and friends, receive healthcare, consume and discuss the news, and organize political action each and every day.”

Aside from the fact that the mosaic of internet uses needs to be more diverse in order to present a clear picture (let’s not forget the mindless scrolling, the clickbait, the misinformation, or the porn), the salient point is that most ordinary internet use does not require the appropriation of copyrighted works. So, framing a conversation about a section of the copyright law by alluding to the scope of everyday internet traffic is both distracting and entirely beside the point. If Congress were discussing CAFE standards, and an oil industry representative testified that 229 million American adults drive to work, church, and the grocery store every day, this would be a meaningless prelude to an argument against mandates for more fuel-efficient cars.

The Fight Over Account Termination

So, let’s stipulate the obvious:  We all use the internet for myriad practical purposes all day long. And if anyone can show me the intersection between copyright infringement and a telemedicine appointment, I’ll take a look. But what Rose is really teeing up is advocacy for the status quo of DMCA §512(i) and the barely implemented requirement that ISPs eventually cancel the accounts of repeat copyright infringers. We cannot reconcile, Public Knowledge argues, a family’s fundamental need for broadband with the possibility that a teenager in the house might repeatedly infringe copyright, and the service provider will be required to terminate access for the entire household.

But the reality is not quite so binary or draconian, even if the statute has proven unclear to the point of futility. Congress’s decision in 1998 not to define “repeat infringer,” or to codify universally applicable guidance for termination policies, left the ISPs (access providers) and the edge providers (web platforms) free to maintain the practice of termination avoidance for repeat infringement by users. The concern of digital rights groups, therefore, is that somehow the service providers will have to comply with a 22-year-old condition they’ve largely evaded.

In the costly litigation COX v. BMG and that provider’s risible 14-strike policy, COX’s users received multiple warnings before not actually losing their accounts. And although copyright owners would certainly like to see more meaningful implementations of 512(i), they neither propose nor endorse a scenario in which a family wakes to find its broadband inexplicably terminated for repeat infringements of which the account holder was somehow unaware. This is not the way account termination happens now or has ever been envisioned to happen.

At the same time, although this is not the post for offering specific legislative recommendations, one policy that would alleviate some of the tension in 512(i) is site blocking, which has proven effective in foreign jurisdictions. If groups like Public Knowledge, EFF, et al were not so adamantly opposed to blocking enterprise-scale, foreign-based piracy sites, a compromise might be more easily found that would mitigate many of the concerns these groups identify with regard to account termination scenarios.

“Red Flag” Knowledge at the Heart of the Matter

This focus on the internet writ large reinforces the major internet companies’ efforts to conflate their commercial interest with the public interest. What many call the “free flow of information,” allegedly for our benefit, often has nothing to do with information. What this erudite sounding expression really means is that because the social sites are engineered to exploit vulnerabilities in human psychology in order to keep users addicted and active, the platform owners like to avoid legal obstacles like copyright, privacy, or anti-trust matters that may create friction between user and interface.

Consequently, today’s major platforms—all founded years after the DMCA was first hammered out between big telco and big media—read certain ambiguities in the statutes to mean that they are free to profit from chronic infringement by users, while doing the bare minimum to comply with the notice-and-takedown provision. Specifically, as discussed in my post about the first Senate-led review of DMCA, rightsholders hope that Congress will more clearly define §512(c), which states that providers will not be liable for infringement if …

(1) its operators do not have actual knowledge of infringement; (2) its operators are not aware of facts or circumstances from which infringing activity is apparent; and (3) upon obtaining knowledge of infringement, expeditiously removes the relevant material.  

Commonly referred to as the “red flag” knowledge section of the statute, a major point of contention for rightsholders, both in and out of court, is the extent to which service providers allege that they lack any knowledge of infringement sufficient to meet the liability standard. Even in a relatively recent case where plaintiffs presented emails that revealed site operators made affirmative decisions to leave material online they believed to be infringing, courts have misread §512(c) to mean that these operators would need legal and industry expertise to meet the “red flag” bar. This is inconsistent with the reasonable, ordinary person context in which this part of the statute was written, hence the hope by rightsholders that Congress will consider clarifying the language.

Because §512(c) is at the heart of the good-faith/shared responsibility intent of the DMCA, I have to say that I did a little spit-take when Rep. Lofgren raised the “red flag” subject and asked her first question of Meredith Rose, who replied that she is “not terribly familiar” with that part of the statute. This is not intended as a personal gotcha, but it is a rather serious matter when an organization purporting to represent the interests of “everyone who uses the internet” is unprepared to discuss one of the most problematic sections of the DMCA. In fact, the much broader question of what platform operators can know about the material on their servers, and what they should do about some of it, is the vexing challenge of the moment with regard to the effect social media are having on society. The knowledge question goes way beyond copyright.

The Dogeared Speech Argument

Historically, the internet industry’s shell game on the subject of what can and cannot be known is consistent with the kind of site management that has now proven to be the major catalyst in the dissolution of democracies worldwide. The same companies whose algorithms are allegedly so sophisticated that they can predict our choices before we make them, paradoxically claim an inability to parse data that ordinary, non-prescient humans can interpret. The manner in which the industry has exploited vagueness in the knowledge standard in the DMCA runs parallel to its history of shrugging “neutrality” when it comes to the moderation of harmful material like organized hate speech, conspiracy groups, and dangerous misinformation—a “neautrality” no longer acceptable to much of the public.

I cannot fathom how any reasonable person looks across the landscape at the ragged state of American democracy and, with a straight face, continues to exalt Web 2.0’s grand experiment in free speech as though it were not an appalling failure. The evidence is now clear, including testimony from a steady stream of defectors from the social media companies, that Facebook, Google, Twitter, Reddit, et al purposely designed their platforms to be digital crack. And it is no surprise that divisive politics and conspiracy garbage are potent ingredients in the drug cocktail that captures and retains the attention of millions.

Referring back to the 229 million users, it isn’t connecting to family or online banking or worshipping that is systematically destroying the American Republic; it’s the speech-a-palooza that organizations like Public Knowledge earnestly champion that has sown a motley patchwork of customized realities to the extent that we are now clinging to what remains of political common ground with our fingernails. Social media is a toxin coursing through the veins of the body politic with such deleterious effect that the most sober historians and political operatives are sincerely wondering if the Republic can survive another decade. It ain’t copyright enforcement that sends QAnon wackos to Congress.

Yet, to the tech-utopian, any effort to allow copyright owners to better protect their works online will unavoidably, and unacceptably, silence someone’s speech somewhere. In fairness, this is true. It is inevitable at times and must be remedied on a case-by-cases basis. Further, I see no reason why intentional abuse of DMCA to silence speech (e.g. criticism) cannot be more strongly proscribed through statutory reform if need be.

But citing “speech” as a generalized framework for debate is too broad and has little to show for itself as a social benefit to date. Aside from the fact that speech is silenced every minute online through many modes (e.g. bullying or platform moderation), there is no way that anyone can measure how much speech is currently silenced, or how much more or less would be silenced by improving the DMCA for rights holders. It’s counting grains of sand in the desert.

Ironically enough, Twitter announced over the weekend that it would delete tweets by anyone hoping the president dies from COVID-19. And while there are several reasons why this is sound policy for Twitter, it happens to be one of the few occasions when a platform would censor a prime example of protected speech. And, as one commenter rightly pointed out, Twitter has left intact volumes of missives hoping for the sexual assaults and deaths of women who speak out on various issues, including actual threats that transgress any claim to the speech right. So, we should dial down the speech rhetoric until it describes what the world actually looks like, not that Barlowian “home of mind” that never existed.

Into this long and repetitive debate, I think a fair market summary of the DMCA’s status quo is as follows: The major copyright owners enforce their rights through the use of some technological measures and the notice-and-takedown system, albeit with a ceaseless, dynamic, and expensive process that has little effect addressing the volume and rate of infringement. The small rightsholders barely enforce their rights at all through notice-and-takedown and generally give up trying. The user-generated platforms continue to profit substantially from third-party infringements against both small and large creators. And the 229-million of us Americans using the web comprise billions of transactions every day that have nothing to do with copyright.