©ollectanea

On January 18, 2012, major internet sites went dark to express their opposition to parallel bills in the House and Senate, the Stop Online Piracy Act (SOPA) and the PROTECT IP Act (Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (PIPA), whose purposes are to curb online piracy, particularly materials offered on foreign websites, beyond U.S. jurisdiction. Of course, no law-abiding citizen, organization, or other legal entity condones online piracy of intellectual property, but these bills are fatally flawed. They are overly broad and not sufficiently tailored to achieve their stated purposes without significantly damaging legitimate sites and the Internet as we know it. As written, an allegation that a site contains any infringing material, no matter how invalid or trivial, or that a site merely links to a another site with allegedly infringing material is enough to shut down access to the original,otherwise legitimate, site. Anyone with little more than a passing familiarity with copyright law understands that, under our Copyright Act and 300 years of copyright law, not every use of a copyrighted work requires permission. One could stand on the floor of the Senate tomorrow and present any number of scenarios depicting copyrighted material online lawfully pursuant to a Section 107 fair use defense. Because a fair use determination is hardly black and white, were our Senators asked to vote whether or not the depicted scenarios constituted fair use or not, the results would be far from unanimous. Without fair use, copyright's goal to promote the progress of science and the useful arts would never be realized.

Is the overly-broad, overreaching and unilateral decision-making (sometimes referred to as censorship) language of these bills really the limit of the authorship talents of the U.S. Congress or is it intentional? These are pretty much the choices:

1.There is an inability to craft a finely tuned piece of legislation to achieve arguably laudable goals or
2. The language was intended as written, but evidenced a lack of vision to foresee the enormous potential for abuse and crippling of the most entrepreneurial, equalizing, educational, productive information and communication network ever conceived to date.

Very discouraging. This, despite best efforts to educate Congress as to the extent and nature of the critical damage enabled by these bills. As usual, money talks. Loudly. "According to Congressional money watchdog Maplight.org, industries supporting SOPA have funneled more than $92 million to members of Congress since July 2009 -- or 13 times as much as those who oppose it." [source: Info World: "This Internet blackout has been brought to you by the U.S. Congress"] Since Congress appeared deaf or disbelieving and was proceeding with the legislation, major Internet sites were left with little choice but to demonstrate what could happen if this legislation passed and so, voluntarily blacked out their sites yesterday. Hardly a "stunt to punish their users or turn them into their corporate pawns", as characterized in a statement by the MPAA Chairman, Chris Dodd (winner of "the pot calling the kettle black" award for characterizing the blackout sites as "intentionally skewing the facts to incite their users" and engaging in "hyperbole and PR stunts" after their legendary leader's very public statements in the past that "the vcr is to the American film producer as the Boston Strangler is to the woman alone", [sourced Testimony to the U.S. House of Representatives (1982), Jack Valenti]), but rather a hope that a picture is indeed worth a thousand words.

Today (1/20/2012) it has been announced that the rapidly approaching January 24th Senate vote on PIPA has been delayed. It would appear, fortunately, that votes (sometimes referred to as the will of the people...) count as well. As reported by PC World in "Were SOPA/PIPA Protests a Success? The Results Are In" :

Four and a half million people,on one site on one day, signed a petition opposing the bills, 162 million people saw the protest on Wikipedia, and 8 million people used Wikipedia's search tool to look up the contact information for their representatives. Furthermore, Tumblr "censored" its users' content streams, and reported that its users averaged 3.6 calls per second to Congress through the company's Web site--nearly 90,000 total.

That's good news. Here's hoping that Congress can come up with a piece of legislation that puts out the forest fires without eliminating the entire forest.

Peggy E. Hoon, J.D.
2011-2013 CIP Intellectual Property Scholar

What's the Deal with Associational Standing?

As we all know by now, the streaming video/copyright infringement case (as it is casually known) against UCLA was dismissed earlier this fall on a number of procedural grounds and as such, the court was unable to rule on the merits of the case; that is, whether or not streaming entire videos within an accessed controlled online course constitutes copyright infringement, among other things. As the court said in its opinion, "Jurisdiction must generally be determined prior to a federal court considering a case on its merits", citing supporting case law.

Jurisdiction includes a number of concepts, including subject matter jurisdiction and whether or not a party has "standing" to sue. It's complicated. Indeed, for those of you who found something else to do for three years besides spending 10-12 hours a day reading case law, hornbooks, treatises, law review articles, and attending law school courses embodying an unusual amount of public humiliation, there are entire courses (multiple) devoted to the study of civil procedure. Having said that, I thoroughly disclaim expertise in said area of the law and haven't litigated in twenty years. I am completely open to being corrected or otherwise educated by my more experienced and knowledgeable colleagues.

However, since this case was so closely watched by the library and higher educational community (not to mention video producers and the motion picture industry in general), I became interested in why plaintiff AIME (Association For Information Media and Equipment) was thrown out of the lawsuit rather quickly (and apparently, not unexpectedly) for failure to achieve "associational standing." In the court's opinion, it was dealt with rather in a somewhat conclusory fashion, the court simply quoting three requirements for associational standing and stating that AIME failed the third. (more later) This result was noted by other bloggers with speculation that the Authors' Guild would suffer the same fate in its suit against Hathi Trust (although there are quite a few other plaintiffs in that case that do not suffer the same potential problem that the Guild might).

As I said, I am no associational standing expert but it seemed to me - and maybe you as well - that associations are suing over copyright infringement all the time. Think about it - all those lawsuits brought by the RIAA, or the MPAA, or the AAP. And what about associations like ALA, or ARL, or the EFF? How is it that they meet the associational standing test? Anyone?

According to the UCLA court, as well as pretty much most federal courts considering the question of associational standing, the association must meet three requirements:
1. Its members would have standing to sue on their own,
2. The interests it seeks to protect are germane to the organization's purpose, and
3. The case does not require the participation of individual members in the lawsuit. The seminal case setting forth these requirements is Hunt v. Washington State Apple Advertising Commission, 432 U.S. 333, 343 (1977).

AIME describes itself as "a non-profit membership organization offering copyright information and support to teachers, librarians, media center directors, producers and distributors of informational film, video, interactive technologies, and computer software and equipment. AIME serves as your organization's copyright resource." That's interesting - copyright information and support to teachers and librarians? Sounds familiar.

So, after spending a good amount of time looking up cases, it would appear that an association can bring suits on behalf of its members, but it depends on the nature of the lawsuit. In the case of a copyright infringement lawsuit, only the copyright holder can bring the action. Although the popular press frequently refers to copyright infringement lawsuits being brought by the AAP or the RIAA, etc. if you actually look up the case itself, the associations are not the plaintiffs. They may be funding the lawsuit, organizing the campaign, if you will, but they are not actually the named plaintiffs. Even the Google book project lawsuit,involving the mass copying of both in-copyright and out-of-copyright books by Google in university libraries, is actually brought by individual publishers that hold the copyrights at issue, rather than their trade association.

I finally found what I was looking for in the archives of Patry's excellent copyright blog , although the following quote is from the 2008 entry of Professor Peter Friedman of Case Western Reserve University who devised an assignment for his law students involving writing briefs on either side of a fictional copyright infringement lawsuit. His students' materials and more are still available on his What Is Fair Use? page.

To quote:

"Mr. Patry is correct in stating that the lawsuit does have to be brought in the copyright holders' names, but ASCAP can and often does bring it, in their names, on their behalf. Thus, though ASCAP should not nominally be a plaintiff in my fictional lawsuit, it could nevertheless be the party prosecuting the lawsuit on behalf of the copyright holders. In other words, ASCAP is often the driving force behind these lawsuits even if it is not named as a plaintiff. Thus, the fact ASCAP is actually named as a plaintiff in my fictional case is, for all practical purposes, a moot issue. Thus, the court in Ocasek v. Hegglund, 116 F.R.D. 154, 1987 U.S. Dist. LEXIS 5193, *7-8; 4 U.S.P.Q.2D (BNA) 1127; Copy. L. Rep. (CCH) P26,149, 157 (D. Wyo. 1987), explained:



"Yet for all of ASCAP's broad power to enforce its members' copyrights, it cannot bring an infringement suit in its own name. ASCAP's Achilles' heel, if it has one, is that it lacks standing to sue for infringement of its members' copyrights. See, e.g., Broadcast Music, Inc. v. CBS, 1983-2 Trade Cas. (CCH) P 65,661 (S.D. N.Y. July 20, 1983); Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 526 F. Supp. 1187, 1190 (S.D. N.Y. 1981), rev'd and remanded in part on other grounds, aff'd in part, 697 F.2d 27 (2d Cir. 1982).

"ASCAP's rather odd status as ghost-plaintiff is due to the combination of copyright and antitrust laws. The Copyright Act has always specified that only the copyright owner, or the owner of exclusive rights under the copyright, as of the time the acts of infringements occur, has standing to bring an action for infringement of such rights; a non-exclusive licensee does not have standing. 17 U.S.C. § 501(b). Prior to 1950, ASCAP did operate as an exclusive licensee of the copyright owners. However, in response to antitrust suits brought by some ASCAP licensees, the government amended a prior consent decree between ASCAP and itself (also in response to antitrust litigation) such that after 1950, ASCAP was prohibited from acquiring exclusive performing rights and was thus limited solely to non-exclusive rights. United States v. ASCAP, 1950-51 Trade Cas. (CCH) P 62,595 (S.D. N.Y. 1950); see also, Buffalo Broadcasting v. American Soc. of Composers, 744 F.2d 917 (2d Cir. 1984). The cumulative effect of these various laws and rights is that while ASCAP bears the primary responsibility for enforcing its members' copyrights and has authority to bring enforcing lawsuits on behalf of its members, it must remain a non-exclusive licensee and, therefore, cannot bring the suit in its own name. This dichotomy between ownership and enforcement of copyrights creates this rather unique situation wherein the plaintiff has little or no information about a lawsuit to enforce his or her rights while a non-party, ASCAP, is fully informed, available and responsible for the legal action."

While in many ways, it seemed obvious that AIME, not being a copyright holder, should not be able to bring a copyright infringement lawsuit, I had never had occasion to go behind many of the reports and articles discussing copyright infringement lawsuits brought by other associations, most prominently RIAA. Thus, my interest in why some associations apparently could sue, yet AIME was tossed out. I'm still not entirely sure I have the whole picture because I have the utmost respect for the plaintiffs' attorney, Arnold Lutzker, who has provided many an opinion on behalf of library associations as well as speaking and teaching us frequently on copyright topics. If he included AIME, there had to have been a reasonable argument.

As said before, I welcome comments, corrections, and enlightenment of all nature.

Peggy Hoon
IP Scholar

P.S. If you are having difficulty posting a response, you need to contact the Center for Intellectual Property. If you know me at all, you know the technical side of this site is not under my control.

For many months, the academic world has been keeping an eye on a potentially critical lawsuit brought by AIME (the Association for Media and Equipment) and Ambrose Video Publishing (Ambrose or AVP) against UCLA (or more specifically, the Regents and several named university officials in their administrative and individual capacity). The plaintiffs, AIME and AVP, sued UCLA because the institution was purchasing education dvds (some from AVP, others from AIME association members), circumventing the technological protections embedded in the dvds, and then streaming (transmitting) the entire movies in their online, password-protected course management system.

Additionally, and significantly, the AVP dvds were acquired by UCLA pursuant to a license agreement, a portion of which is reproduced below.

The watching world, extrapolated from this lawsuit fact scenario the following burning copyright questions(s):

1. Can a non-profit educational institution stream entire movies within an online, password protected course management system without violating copyright laws?

2. If so, which educational exceptions in the copyright act allow this? §107, known as Fair Use; §110(1) the face-to-face classroom performance exception and/or §110(2), the transmission of performance and display, a.k.a., the TEACH Act?

Legal scholars, library and educational associations, and copyright holders and their associations naturally differ in their answers to those questions. Blogs, opinion briefs, and talks came to life, all focusing on those two questions. And those are the questions we hoped for an answer from this case.

On October 3, 2011, the trial judge dismissed the case in a brief (13 page) order. At last, academia thought, an answer, or at least some copyright guidance. Instead of being a copyright case, however, this case became a civil procedure and contract case with copyright mentioned primarily for its characteristic of being a federal law.

The bottom line is that the copyright questions were not reached in the actual holdings. In her order granting defendant's motion to dismiss, the course never reached the copyright questions on their own merit. Any passing reference to copyright is at best hopeful dictum, which cannot be pulled out of context and mischaracterized as a "copyright win". It certainly does not stand for the proposition that streaming entire copyrighted films within password protected course management systems is lawful.

WHY NOT? WHAT HAPPENED?
That's the question we care most about. By definition, a Judge's decisions are not going to make everyone happy. That's not her job. It is also not her job to go beyond the facts of the case before her and decide questions prematurely simply because we want her to do so. There are procedural issues and requirements that must be met before a judge can get to the merits of any particular case. The case must present in the proper posture with qualifying parties pleading the requisite elements of any particular claim. Any failure in these early rounds and the case stops there. No view of the merits of the case can be inferred.

WHO SAID WHAT?
In the order dismissing the lawsuit, the court recites the facts of the case in a disturbingly brief manner and with a puzzling omission of key facts. For example, it is interesting that AVP is not identified as the copyright holder of some of the works at issue nor as a member of AIME. Perhaps the complaint was not specific enough, referring to AVP as a creator, rather than a copyright holder per se. It is also very interesting that the license between AVP and UCLA is barely mentioned; or perhaps, more accurately, that one section is heavily relied upon, ignoring other terms in the license. The complaints of the plaintiff are listed and importantly, since the court granted UCLA's motion to dismiss, the relevant defenses are listed:
1. UCLA et al is immune from suit;
2. AIME lacks standing, and
3. Plaintiffs failed to state a claim upon which relief can be granted.

FIRST THINGS FIRST
Our legal system has a LOT of rules governing lawsuits - who can bring them, when, where and what elements of any particular wrongdoing must be stated somewhere in the paperwork, with facts to back it up. Only after all these rules are satisfied will a court begin to look at the merits of the case.

This court decided the initial rules were not satisfied, which allowed her to dismiss the case without having to directly address our copyright streaming questions.

WHAT DID THE COURT HOLD?
1. You cannot sue a state agency for money damages for violating copyright law (including the DMCA, a part of copyright law), even if they fail to comply with copyright restrictions set forth in a license agreement. Signing these licenses purporting to abrogate or limit rights under the copyright act is not an implied waiver of state sovereign protection from suit. Therefore, one cannot sue a state agency (university) for violating the federal copyright statute by engaging in infringing conduct, even if that state university signed a contract specifically promising they would not infringe.

2. Can the state agency (university) be sued for breach of contract and other state law claims if the signed contract in question sets limits on what the university is allowed to do under the federal copyright act?

The AIME court stated, in Discussion III Failure To State A Claim d. State Law Claim that "The Copyright Act preempts claims that "are equivalent" to any of the exclusive rights within the general scope of copyright." 17 U.S.C. § 301(a); Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1089 (9th Circ. 2005). A state law claim is preempted if : (1) the work involved falls within the general subject matter of the Copyright Act, and (2) the rights asserted under the State law are equivalent to those protected by the Act. Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022m 1027 (N.D. Cal. 2003)

As made clear by the court, a state law breach of contract claim based on the exercise of rights set forth in the copyright act, even if prohibited by the contract, would fail because of Copyright Act preemption. For example, if a contract tried to prohibit ILL, an activity authorized by the Copyright Act, that part of the contract would be pre-empted. If the signatory institution, public or private, exercised their ILL rights, a state law breach of contract claim should fail. The private institution might still be sued for infringement of the federal copyright statute itself, but not because it may or may not have complied with a license.

For me, that is an amazing take-away. I've been engaged in licensing efforts by academic libraries for e-resources for decades. Over and over and over again, I've heard that contract law prevails over copyright law and one needs to be careful not to sign away fair use rights. Reading this order, you can't.

Sit for a minute and think about the implications for the thousands and thousands of e-resource licenses signed by U.S. academic libraries. Does this not change everything?

Comments are welcome

Peggy E. Hoon, J.D.
CIP IP Scholar

Next Up: Associational Standing and Overuse of the Sovereign Immunity Defense

Excerpt from Ambrose License
QUOTE FROM EXHIBIT 3 FROM PLAINTIFF'S COMPLAINT

Educational Television
For information and pricing regarding Education Television go to www.ambrosevideo.com/etv.cfm

Terms and Conditions

AMBROSE VIDEO PUBLISHING

Listed below are the basic terms and conditions that govern your use and purchase of precuts/programs from our website. Your use of the content purchased from Ambrose Video Publishing (AVP) constitutes your acknowledgment and agreement

AMBROSE VIDEO PULISHING

Listed below are the basic terms and conditions that govern your use and purchase of precuts/programs from our website. Your use of the content purchased from Ambrose Video Publishing (AVP) constitutes your acknowledgement and agreement to all of the terms and conditions contained below ("Terms of Use")

AVP is the licensor and you, the user, are the Licensee.

You hereby agree to the following Terms of Use:
1. Grant of License
AVP grants to the Licensee a limited, non-exclusive, recovable license to use the Content (as defined below) is an educational OR home video setting.

CUSTOMER ACKNOWLEDGES THAT THE PROGRAMS MAY NOT BE DUPLICATED, BROADCAST, TRANSMITTED BY CABLE OR OTHERWISE, ON ANY MULTI-RECEIVER OPEN OR INTERNET SYSTEM, OR DISPLAYED BEFORE THE PUBLIC, WHETHER OR NOT ADMISSION IS CHARGED. CUSTOMER SHALL EXHIBIT THE PROGRAMS ONLY AS HEREIN SPECIFIED AND USE THE PROGRAMS FOR NO OTHER PURPOSE.

Customer shall not sublicense, sublease or part with possession of any Program received by customer hereunder. Performing rights to music contained in any Program are not granted herein. Nothing herein shall derogate from any rights of Ambrose or any other copyright proprietor of any Program under the United State Copyright Law or any applicable foreign copyright laws.

Does this phrase sound familiar? It is one of the well-known Toddlers' Rules of Possession, a clever and, unfortunately, all too true, description of a toddler's sense of ownership over anything they see, like, want, need, or grab, whether it belongs to them or not. Other amusing rules in the list include:
If I can take it from you, it's mine
If it's mine, it can never appear to be yours in any way
If I (think) need it, it's mine
If I want it, it's mine
If I say it's mine, it's mine
If I think I can play with it better than you can, it's mine
If I play with it long enough, it's mine
And more, but ending with:
If it's broken, it's yours.

Anyone who has spent time working in the current scholarly communication system, working with university faculty authors/researchers on their journal publication agreements, working with university copyright ownership policy development, and/or having spent years involved with reviewing academic library electronic resources, already know how the Toddlers' Rules of Possession could end up in this blog.

Having recently recovered (nearly) from the unpleasant crush of the end of fiscal year library license negotiation review, I realized that I had faced repeatedly reading what uses the "LAWFUL COPYRIGHT HOLDERS" did or did not allow of their materials. Additionally, the indigent tone expressed frequently by the "LAWFUL COPYRIGHT HOLDERS" in Plaintiffs' pleadings in the Georgia State lawsuit, in particular, set me thinking about the wisdom of taking that tone and tenor, indeed, suing not only a member of your major customer base, but also the very creators of the only thing you have to sell: content, research results, ideas, data. All collected, discovered, invented, theorized, and written, not by the "lawful copyright holders". The "LAWFUL COPYRIGHT HOLDERS" could not generate the type of content their business relies upon if their lives depended on it. If the researchers, the scientists, the scholars, the authors, the artists, the poets, the suppliers and interpreters of content suddenly stopped submitting their works to the "LAWFUL COPYRIGHT HOLDERS", those "LAWFUL COPYRIGHT HOLDERS" would be joining many of their fellow Americans out on the street in no time.

The true creators are the researchers, the faculty, the scholars. They do not deserve to be called thieves and pirates by the very people who depend upon them for a living.

In fairness, let's look at how the creators are able to do what they do. The authors of journal articles do not make their discoveries, collect data, conduct experiments or develop and test theories in a vacuum. Research and innovative thinking is primarily conducted at some facility - an educational institution, a corporation, an institute - that supports the creator both monetarily and through the provision of the special type of milieu or environment where collaboration of smart people, provocative discussions, and the general rich soup of ideas and interaction stimulate creativity and discovery.

Someone or something is providing the financial support that enables creators to create. Someone or something is paying them salaries, giving them benefits, providing the physical spaces and equipment in addition to funding that may come from external sources and grants.

The result is that almost everything that makes that published article even exist is supplied and paid for by entities other than the publisher. Even essential peer-review is provided by other scholars, often free of charge.

What does the publisher contribute? There are any number of articles describing what the publisher does to the article - reviews it, edits it, gives suggestions for improvement and polishes it up for publication. Before e-journal internet capacity, the publisher played an even greater role in distribution.

And, because the scholars own promotion and tenure system developed to include consideration of articles published in prominent journals, journal acceptance became vital to a faculty member's promotion and tenure process.

Now, I know that you all know this system backwards and forwards. I'm hoping, though, to have you think about it in a new light. As follows: Even if you credit publishers fully with all the value they claim to add to the journal article after it comes to them - assuming all of the descriptions are completely true with no exaggerations - is their contribution, relative to the other investments in this work so all powerful that it warrants giving the publisher the entire intellectual property rights to it?

That is, the work is the result of:

• The imagination, intelligence, education of the scholar(s)/researcher(s) plus who knows how many hours, months or years of disciplined research, experimentation, data gathering, studies, surveys, field work, etc., plus their analysis, questions, theories, conclusions, observations condensed by them into a written article or monograph;
AND
• The overhead, salaried support, and investment of their employers who provide the equipment, lab, tools, support personnel, synergistic environment, not to mention salary, benefits, a job...
AND
• Perhaps even the financial investment of a grant funding entity, private or public, in the thousands or hundreds of thousands, even millions of dollars;
AND
• The time, experience, and expertise of the colleagues who peer review the work;
AND THEN FINALLY
• A company that is handed the results of the above contributions, edits it, formats it, manages it, packages it, and markets it...

Remembering also that today the internet is the greatest distribution system in history AND that preservation of the work has traditionally been the role of libraries -

Which of these contributions, assuming only one, is so essential, so important, so irreplaceable and unique that the entity responsible for that contribution ought to, deserves to own the intellectual property rights to the work? Honestly, think about it. All contributions are not equal. Which one should be able to profit from the work and completely control it? Tough, isn't it? Let's flip it then - maybe that's easier. Which contribution is, relatively speaking, the "least" in terms of time, talent, irreplaceability, imagination, and investment? Is that easier? It is for me.

I'm not saying that the publisher's activities don't improve the quality of the writing or presentation. But it doesn't significantly affect (or perhaps affect at all) the content and quality of the science or analysis. Let's say it does - somewhat. Does it still get one to the conclusion that the last contributor in the chain is entitled - for free - to the entire pie of intellectual property rights? And continuing, having somehow along history's path, convinced the other contributors that they should have all rights to the work, is it appropriate for that least contributor to effectively erase from memory all prior contributions to the origin and development of the work, and change from publisher to "LAWFUL COPYRIGHT HOLDER".

Then, as "LAWFUL COPYRIGHT HOLDER" (through the charity or inattention of the true copyright holders), to turn around and fence in and restrict access to the work from the very community it was intended to reach. To use their status of "LAWFUL COPYRIGHT HOLDER" to price their supplier, a.k.a., customer, right out of the market. Finally, to turn to the courts of law and courts of public opinion for sympathy and help in running to ground their supplier/customer/now "pirate" for attempting to make educational uses of "their" work.

This has been the system of scholarly communication for decades. It's architecture and basic characteristics as I've described developed mutually. The point we all know is that the system is dysfunctional and the relentless price increases by major publishers have received most of the credit or blame for the system's breakdown. I suggest here that common sense and fundamental fairness led to nowhere but the conclusion that the allocation of IP rights was ill conceived from the start. Failure to recognize their windfall (the transfer of copyright) and to exercise restraint in dealing with their benefactors with respect to pricing and licensing terms has arguably not only triggered our current situation but resulted in such polarized positions, opinions, and behavior that we seem to have slipped past the point of civil discourse and now face each other across the courtroom. It may be too little too late, but failure of the recipients of free, high quality intellectual property and its rights to tread with more care when dealing with their geese with golden eggs, as continually evidenced by current licensing terms, prices, and the almost righteous use of the phrase "LAWFUL COPYRIGHT HOLDERS", can only lead to the geese keeping their eggs.

By Peggy E. Hoon, J.D.
CIP IP Scholar
Scholarly Communications Librarian
University of North Carolina at Charlotte