Last Friday (May 11, 2012), Judge Evans of the Northern District of Georgia issued a long-awaited decision in the Georgia State e-reserves case entitled Cambridge Univ. Press v. Becker.  At a hefty 350 pages, the decision will generate a great deal of analysis and interpretation over the coming days. One-Sentence Summary: Judge Evans’ decision provides some guidance for institutions of higher education attempting to craft copyright policies and conduct fair use analyses, and holds that Georgia State University’s fair use defense failed in only five of the 99 instances of claimed infringement. Quick Background In 2008, three publishers (Cambridge University Press, Oxford University Press, and Sage Publications) sued members of Georgia State University alleging that the University’s e-reserves system – through which students could access electronic content posted by faculty – infringed copyrights held by the publishers. In response, the University reviewed their existing copyright policies and drafted a new Copyright Policy that took effect in 2009 and which included a “fair use checklist” to help faculty and students understand and apply the fair use doctrine. In February 2010, both sides filed summary judgment motions.  The Court denied the publisher’s motion in full, but granted the University’s motion in part as to the claims of direct and vicarious infringement (leaving open the claim of contributory infringement).  The Court also agreed with the University’s argument that only the infringement claims post-dating the 2009 Copyright Policy were relevant to publishers’ claims for injunctive and declaratory relief. The publishers were then required to show that there was ongoing misuse of the fair use defense by the University despite the 2009 Copyright Policy.  In March 2011, they introduced evidence detailing 99 alleged infringements (later reduced to 75 after trial).  The trial began on May 17, 2011.  At the close of the publishers’ case, the Court granted the University’s motion for judgment on the claim of contributory infringement, leaving only the claim that the 2009 Copyright Policy caused copyright infringement. For the past year, both sides have awaited Judge Evans’ decision. The Decision

1. Valid Copyright Not Proven

Judge Evans held that the publishers failed to establish that they owned a valid copyright in many of the 99 instances of claimed infringement.  For example, for several of the works the publishers were unable to produce either a registration certificate or an assignment from the author to the publisher.  The Court steadfastly refused to overlook the missing documentation.

2. The Fair Use Defense

In the decision, Judge Evans conducted an extensive analysis of each of the four factors in the fair use analysis:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

The Court immediately held that the first factor heavily weighs in favor of the University and that the second factor weighs in favor of the publishers (see below). Accordingly, the remainder of the decision hinged on the third and fourth fair use factors. While discussing “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” Judge Evans largely dismissed the 1976 Classroom Guidelines, emphasizing that they “were not prepared by the legislators” and noting that the Guidelines’ numerical caps on how much of a work a teacher may copy under fair use “stands in contrast to the statutory scheme described in § 107.”  Accordingly, whether the University adhered to the Guidelines was not dispositive to the fair use analysis. In a portion of the decision that will undoubtedly be extensively analyzed over the coming weeks, the Court provided the following conclusions regarding the third fair use factor:

“Where a book is not divided into chapters or contains fewer than ten chapters, unpaid copying of no more than 10% of the pages in the book is permissible under factor three…In practical effect, this will allow copying of about one chapter or its equivalent. Where a book contains ten or more chapters, the unpaid copying of up to but no more than one chapter (or its equivalent) will be permissible under fair use factor three. Excerpts which fall within these limits are decidedly small, and allowable as such under factor three. Access shall be limited only to the students who are enrolled in the course in question, and then only for the term of the course. Students must be reminded of the limitations of the copyright laws and must be prohibited by policy from distributing copies to others. The chapter or other excerpt must fill a demonstrated, legitimate purpose in the course curriculum and must be narrowly tailored to accomplish that purpose.”

Interestingly, the Court’s numerical cap of one chapter per ten-chapter books appears to be just as restrictive as the 1976 Classroom Guidelines that Judge Evans’ repudiated as being non-dispositive earlier in her decision.

3. Individual Analysis of Each Instance of Claimed Infringement

Following a 247-page analysis of 75 instances of claimed infringement, the Court concluded that only five instances of copying were not fair use and thus constituted copyright infringement.  For each instance the Court concluded that the instructor had copied more than a decidedly small amount of the book by making available more than one chapter of a book with more than ten chapters, and that the book made substantial revenues via licensing.  For example, for one of the books the Court found copyright infringement even where the two full chapters represented only 37 pages and 3.01% of the total work.

4. The 2009 Copyright Policy

Finding that unlicensed use of a total of 5 excerpts constituted copyright infringement, the Court next asked if the 2009 Copyright Policy caused those infringements.  It did, Judge Evans found, because the policy did not do the following:

• it did not limit copying “to decidedly small excerpts” (per the new 10% or one-chapter rule set forth by the Court in this decision);
• it did not “proscribe the use of multiple chapters from the same book;” and
• it did not “provide sufficient guidance in determining the “actual or potential effect on the market or the value of the copyrighted work” (factor four of the fair use analysis).

Interestingly, according to the Court the “only practical way to deal with factor four in advance likely is to assume that it strongly favors the plaintiff-publisher (if licensed digital excerpts are available).” Although Judge Evans found that the University tried to comply with the Copyright Act by enacting the 2009 Copyright Policy, the University’s intent was irrelevant to the infringement analysis. What’s Next? The parties will now brief the Court on injunctive and declaratory relief arising from the five instances of copyright infringement. The Way Forward for Universities The Court’s ruling may provide some guidance to institutions of higher education in similar circumstances who have adopted or are working to adopt copyright policies, although the impact of her decision remains to be seen.  Specifically, Judge Evans came to the following conclusions regarding the fair use analysis:

1. If the use is for teaching and research by a non-profit, the first fair use factor (the purpose and character of the use) weighs “heavily” in favor of the university;

2. If the works are non-fiction and educational in nature, the second fair use factor (the nature of the copyrighted work) weighs in favor of the university;

3. If the excerpt is less than 10%, or no more than one chapter of a book with more than ten chapters, then the third fair use factor (the amount and substantiality of the portion used in relation to the copyrighted work as a whole) weighs in favor of the university; and

4. If a university can readily obtain a license in the appropriate format at a reasonable price, the fourth fair use factor (the effect of the use upon the potential market for or value of the copyrighted work) favors the publisher.

It should be noted, however, that the ruling will probably be appealed and thus is likely not the last word on the subject.  Stay tuned to the Higher Education IP Law Report for the latest on this case and others like it. For More Information: Here are a few links for further analysis of the decision:

• “The GSU decision — not an easy road for anyone” by Kevin Smith at Duke University;
• “Inside the Georgia State Opinion” by James Grimmelmann of New York Law School; and
• “Some Leeway, Some Limits” at Inside Higher Ed.

 

In late March, the United States Copyright Office proposed increased fees for copyright registrations (the public notice in the Federal Register is available at: http://www.copyright.gov/fedreg/2012/77fr18742.pdf). In 1997, Congress amended the Copyright Act to allow the Register of Copyrights (currently Maria A. Pallante) to set fees for Copyright Office services (subject to Congressional review).  Any change in fees must be based upon the results of a study of costs incurred by the Copyright Office.  The most recent fee study was initiated in October 2011 and made available in the Register’s public report, ‘‘Priorities and Special Projects for the United States Copyright Office’’(available at http://www.copyright.gov/docs/priorities.pdf). The Proposed Fees Currently, registration fees are $35 for a basic application submitted online, and $65 for an application submitted using a paper form.  The Office proposes raising the fees for an online claim to $65, and the fee for filing a claim using a paper application to $100. The Office also proposes a new, reduced fee of only $45 for a single author who files an online claim in a single work that is not a work made for hire. It is currently unclear whether a group registration – such as a registration of a group of related photographs – will be considered “a single work” and therefore eligible for the $45 fee, or whether it will be subject to the regular $65 fee.  See more here. A full list of the proposed price changes is available in the table beginning on page 5 of the public notice. Public Comment Period As part of the fee setting process, the Copyright Office has requested public comment on the proposed changes before they are submitted to Congress for review.  Comments can be submitted at: http://www.copyright.gov/docs/newfees/comments. Comments should be submitted to the Copyright Office no later than May 14, 2012.

On March 20, 2012, a unanimous Supreme Court held that patents claiming methods for refining the dosage of drugs used to treat autoimmune diseases were directed to laws of nature and therefore not eligible for patent protection. Mayo Collaborative Servs. v. Prometheus Labs. (pdf), No. 2010-1150 (March 20, 2012). This is a signficant decision that is expected to have important implications in the medical and biotechnology industries. The Prometheus Patents The two patents at issue (6,355,623 and 6,680,302) were directed to an application of the correlation between the concentration of metabolites (byproducts created when the body breaks down a drug) and the toxicity and efficacy of that drug. If the concentration of byproducts in the bloodstream of a patient is too low, the current dosage of the drug may not be effective; if the concentration is too high, the dosage might be toxic. The claims of the patents involve two steps: (i) an “administering” step in which the drug is given to patients suffering from an autoimmune disease; and (ii) a “determining” step in which the concentration of the metabolites in the patient are determined. The patient’s metabolite concentration is then compared to claimed ranges, and the physician can increase or decrease the amount of drug given to the patient depending on the comparison. The Supreme Court’s Decision In its decision, the Supreme Court held that the claimed methods were directed to laws of nature. Specifically, the claims recited the natural and pre-existing relationship between the concentration of metabolites in the blood and the likelihood that the dosage of the drug that resulted in that concentration would be ineffective or harmful. This relationship, the Court commented, is purely a consequence of the natural processes by which the human body metabolizes the drug. With respect to the patents at issue, the Supreme Court viewed the “administering” step as simply referring to the relevant audience – doctors who treat patients with the drug. Similarly, the “determining” step simply tells the doctor to engage in conventional and routine activity that doctors had been doing long before the patent. Lastly, the “wherein” clauses only inform the doctor about the relevant natural laws and how to apply them when making a decision about drug dosage. “Well-Understood, Routine, Conventional Activity” According to the Supreme Court, “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.” “To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” The Supreme Court explained that a law of nature will typically not be patent-eligible if elements already well-known in the art are simply applied to that law of nature. Instead, the application of elements to the law of nature must involve an “inventive concept” which is not conventional or obvious. Accordingly, Prometheus could not transform a law of nature into patent-eligible subject matter simply by adding the well-known and routine step of measuring metabolite levels in a patient. Justice Stephen Breyer, who authored the decision, summarized the Court’s analysis as follows:

If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.

In other words, the Supreme Court appears to be saying “don’t dress a law of nature in sheep’s clothing” – such as claiming it with well-known elements or as part of a prior art process – and expect it to be patent eligible. A patent eligible claim must include more than than a general instruction to “apply a law of nature” – it must include activity that transforms a process “into an inventive application of the formula.” However, the Supreme Court’s decision does not provide clear guidance as to what types of activities will “transform” a process into an inventive concept that goes beyond a law of nature.

I recently posted "A Social Media Model Based on the Safe Harbor Provisions of the DMCA" about the copyright concerns currently being addressed by the social networking site Pinterest. Earlier this week, I had the opportunity to speak with Colin O'Keefe of LXBN about Pinterest and how it is trying to avoid allegations of copyright infringement.  While much of Pinterest's protection derives from the Digital Millenium Copyright Act, the company also attempts to shift responsibility to their users via their Terms of Use.

Pinterest is a relatively new social photo sharing website, and is currently one of the hottest spots on the Internet.  The site generates massive amounts of referral traffic, rivaling popular content sharing sites such as Twitter and YouTube.  There are roughly 11 million registered Pinterest users (a number that is growing extremely rapidly) with as much as 97% of active users being female. Users “pin” a photo to Pinterest from their own collection or from websites.  Once pinned, the photo sits inside the user's “boards,” which are organized around a particular topic such as 'home,' 'technology,' 'kids,' or 'crafts.'  When a viewer clicks the photo in Pinterest, he or she is redirected to the website from which the photo was pinned.  As a result, web-savvy businesses are using Pinterest as  traffic driver that directs highly-marketable consumers to their websites. Copyright Issues Some, however, have questioned Pinterest's model, asking whether the posting of photographs belonging to others is actually nothing more than copyright infringement.  See, for example, “Pinterest Might Be Enabling Massive Copyright Theft,” and “Pinterest: Is It A Facebook Or A Grokster?” Pinterest's Copyright Policy makes it clear that it is relying on provisions of the Digital Millennium Copyright Act of 1998 (“DMCA”) to insulate it from allegations of copyright infringement. Section 512(c) of the DMCA, for example, provides a safe harbor to online service providers (“OSP”) that store potentially-infringing material as long as they satisfy the following requirements:

• The OSP must “not receive a financial benefit directly attributable to the infringing activity;”

• The OSP must not have actual knowledge that it is hosting infringing material or be aware of facts or circumstances from which infringing activity is apparent; and

• The OSP must, upon receiving notice of copyright infringement from a copyright owner or its agent, act expeditiously to remove the purported infringing material.

Pinterest's copyright page describes the information required to put it on notice, and provides a form for reporting the alleged infringement. Pinterest Responds to Critics Aware of the copyright concerns, Pinterest recently responded to these concerns in a post on its blog entitled “Growing Up.”  In the post, Pinterest writes: “As a company, we care about respecting the rights of copyright holders. We work hard to follow the DMCA procedure for acting quickly when we receive notices of claimed copyright infringement. We have a form for reporting claims of copyright violations on our site here. Every pin has a flag to make reporting easier. We also know that copyright is a complicated and nuanced issue and we have knowledgeable people who are providing lots of guidance.” To further prevent inadvertent copyright infringement, the company also announced a snippet of code that blocks photos from websites containing the code from being pinned, although there are likely numerous ways to maneuver around the code. The Current Aftermath Pinterest's blog post has generated opinions on both sides of the issue, ranging from disbelief that the service can evade copyright infringement, to others that consider the site's policy to be “genius:”

• “Now Pinterest Is Defending Itself From Accusations Of Copyright Infringement”
• “The Genius of Pinterest's Copyright Dodge”
• “Pinterest's uneasy relationship with copyright law: what happens next”

Yet another viewpoint comes from a photographer and frequent Pinterest contributor, who argues that copyright holders should embrace the traffic driven by services such as Pinterest rather than focus on the copyright issues (see, “Why Photographers Should Stop Complaining About Copyright and Embrace Pinterest”). This viewpoint is one of the most common, as evidenced by the numerous companies and websites that encourage pinning and the resulting traffic boon regardless of the potential copyright issues involved.  Indeed, many sites have started adding a “Pin it” button to encourage the pinning of their copyright-protected photographs and graphics. The Future There's no question that Pinterest, like so many new services before it, pushes the boundaries of copyright law.  Although Pinterest's policies and prevention measures are unlikely to completely insulate it from copyright infringement lawsuits, they make it clear that the company is aware of the issues and is looking for ways to manage them. Reminder to the Higher Education Community Regarding the DMCA Much like Pinterest, most institutions of higher education qualify as an internet service provider (transmitting data) and/or an online service provider (storing data) under the DMCA.  Institutions must, however, establish and maintain the proper procedures in order to benefit from the safe harbor provisions of the DMCA.  For example, universities must have a procedure in place for receiving notice of copyright infringement from a copyright owner or its agent, and must act expeditiously to remove the purported infringing material once notice is received. Further, online service providers must designate – on its website and to the Copyright Office – an agent to receive notifications of claimed infringement.  If you’re unsure whether your university has designated an agent, the Register of Copyrights has a current directory of all designated agents available at the Directory of Service Provider Agents for Notification of Claims of Infringement.

Officials at California State University and University of California have recently instituted new policies that affect the ownership and sharing of notes taken in the classroom by students.  These new policies have raised questions about whether students or their instructors actually own the copyrights to class notes.  While the sale of class notes is clearly prohibited in California by both university policy and the California Education Code, some argue that it is the students who possess the copyright in their notes and that the policies unconstitutionally restrict the students’ free speech. Websites like Notehall, NoteUtopia, CollegeNoteShare, and Versity.com (now defunct) have allowed students to buy and sell their class notes online for years. Student Reported for Selling Class Notes According to reports, California State University recently sent a cease and desist to Notehall after at least one student was reported to student judicial affairs for selling notes on the website.  The cease and desist letter cites both the university’s policies and the California Education Code as prohibiting the selling, distributing or publishing class notes for a commercial purpose.  Following the letter, Notehall has blocked students from CSU and UC from registering with the website. New Policy at UC Berkeley In December, the University of California, Berkeley instituted a new policy (available here (pdf)) restricting the sale of course notes.  The policy, which went into effect last month, states that the instructor may have a copyright interest in the students’ class notes:

“class notes and recordings are based on the intellectual effort of the instructor, who has an interest in protecting this effort and ensuring the accuracy of any public representation of his/her work. When notes or other recording of instructors’ presentations are sold or shared, they may infringe on the copyrights of the instructors and may violate the campus prohibition on unauthorized commercial activity.”

While the policy does allow students enrolled in the same class to share their notes with others “currently enrolled” in the class, the instructor can specifically limit this sharing.  Further, the policy appears to prohibit the sharing of class notes from semester to semester. The policy also emphasizes the prohibition on commercializing class notes set forth by Section 66450 of the California Education Code.  This section of the code states that no one, including an enrolled student, can:

“prepare, cause to be prepared, give, sell, transfer, or otherwise distribute or publish, for any commercial purpose, any contemporaneous recording of an academic presentation in a classroom or equivalent site of instruction by an instructor of record. The prohibition applies to a recording made in any medium, including but not necessarily limited to, handwritten or typewritten class notes.”

UC Berkeley Cease and Desist Templates In addition to the new policy, UC Berkeley has also provided to instructors a set of cease and desist letter templates that can be downloaded, modified, and sent to students or third parties accused of selling class notes.  On the cease and desist website, the university more clearly sets forth its understanding of an instructor’s rights to a student’s class notes:

“As an instructor, you retain the copyrights to your class materials.  This right stems from Federal law and is dictated by the University of California Policy on the Ownership of Course Materials and UC Berkeley campus policy on Course Note-Taking and Materials. Unless you inform your students otherwise, students enrolled in a course may take notes and share them with other students enrolled in the class during the same semester.”

Notably, the cease and desist website does refer instructors to the Creative Commons if they are interested in instituting a less restrictive policy on class notes.

UC Berkeley Professor Questions With New Policy

According to Jason M. Schultz, an assistant clinical professor of law at UC Berkeley and director of the university’s Samuelson Law, Technology & Public Policy Clinic, this is an issue of federal copyright law and constitutional free speech, which trump the California Education Code and the university policies:

“Instructors have almost no intellectual property rights to what students write down in class, he said. Faculty members may have intellectual property in the books they write, articles they publish and even possibly in the lecture notes they write for themselves, but students own the copyright on their own notes, he said.”

(via Do Students Have Copyright to Their Own Notes?). Do Instructors Have a Copyright Interest in Student Notes? Whether the instructors and/or the students have any copyrights in class notes likely depends on the amount of original expression found in each student’s notes.  A student who is effectively transcribing the instructor’s lecture or presentation has contributed very little or no original expression or intellectual property to the transcription, and the instructor likely retains a copyright interest in these notes. On the other hand, if the student is simply writing or typing original thoughts (such as observations, conclusions, questions, hypotheses, derivations, etc...), as he or she listens to the lecture, the student alone likely possesses a copyright interest in these notes. In between the two is a continuum that includes, among others, the student that merely condenses or outlines the lecture, and the student that transcribes only portions of the lecture while adding the occasional original thought. Whether either students or the note-sharing websites will challenge the university policies or the California Education Code remains to be seen. For More Information:

• California universities make new moves in fight on notes
• CSU students banned from note-sharing site
• UC Berkeley’s New Policy on Student Note-Taking (Part 1) and (Part 2)
• Bad News from Berkeley

• Charles P. Nash, On the Ownership of Academic Presentations: The Evolution of California Education Code Sections 66450-66452, 35 McGeorge L. Rev. 205 (2004)

Today, websites, companies, and individuals around the country are participating in the largest online protest in history as they battle two proposed bills currently pending before Congress, the Stop Online Piracy Act (SOPA) and the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PROTECT IP Act or PIPA). Google, for example, has a black censorship box splashed over their logo today (pictured to the left), and Wikipedia has gone dark while providing information about how to contact you local representatives (if you just can’t live without Wikipedia today, the site is still available on mobile devices and smart phones, or by disabling JavaScript in your browser).  A full list of the many popular websites protesting SOPA and PIPA today is here. We’ve written before about SOPA and PIPA, and about how they’ve come under fire by mainstream media and civil liberties groups who believe the bills would shift too much responsibility onto ISPs, advertisers, and payment processors while also giving the U.S. government and trademark and copyright holders too much power to block allegedly infringing websites without sufficient due process. Despite the powerful opposition to the bills, both are still alive as of today, January 18, 2012.  Indeed, the Senate is set to vote on PIPA next week, and the House will resume their work on SOPA next month.  See here for more information about the bills, the background, and the next steps. The bills have strong supporters as well.  Chris Dodd, the chairman and CEO of the Motion Picture Association of America (MPAA), is one of these strong supporters and has stated that today’s online protest is “yet another gimmick, albeit a dangerous one, designed to punish elected and administration officials who are working diligently to protect American jobs from foreign criminals.”  See here for Dodd’s full statement. Whether today's online protest serves to raise awareness and alter the language or course of these bills, or merely serves as a "gimmick" remains to be seen, although it is clear that thousands or perhaps millions of people who have never heard of either SOPA or PIPA will discover at least some of the many issues surrounding the bills as they go about their day today.

I’ve written before about common law copyright protection of sound recordings made before February 15, 1972.  Although the Sound Recording Amendments to the 1909 Copyright Act extended federal copyright law to sound recordings, it only did so to sound recordings made on or after February 15, 1972.  Per the amendments, federal copyright law does not preempt state common law or statues regarding pre-1972 sound recordings until February 15, 2067. This has resulted in a meshwork of state common law copyright protecting – or not protecting – pre-1972 sound recordings.  In 2009, Congress instructed the Copyright Office to conduct a study on the “desirability and means” of extending federal copyright protection to pre-1972 sound recordings, and hearings on the subject were held throughout 2011. Late last month, the Copyright Office issued a report (“Federal Copyright Protection for Pre-1972 Sound Recordings”) recommending that pre-1972 sound recordings be brought under federal jurisdiction.  The Copyright Office asserted that not only is there very little information as to why Congress opted to omit pre-1972 sound recordings, bringing them under federal jurisdiction would “best serve the interest of libraries, archives and others in preserving old sound recordings and in increasing the availability to the public of old sound recordings.”  Further, it would bring clarity to this muddled area of copyright. A few interesting recommendations from the report regarding proposed terms of protection for pre-1972 sound recordings:

• The term of protection should be 95 years from publication or, if not published, 120 years from fixation, although no term should extend past February 15, 2067.

• In all cases, the term of copyright protection for all pre-1972 sound recordings cannot continue past February 15, 2067.

• Interestingly, for sound recordings published before 1923, the copyright owner would be able to obtain protection for 25 years from enactment of legislation that federalizes protection by: (i) making the work available to the public “at a reasonable price” and (ii) filing with the Copyright Office notice of the owner’s intent to secure protection.  This means that pre-1923 works will by default go into the public domain unless the copyright owner actively pursues protection.

• For sound recordings published between 1923 and 1972 and which are scheduled to expire before February 15, 2067, the copyright owner would be able to extend the term through 2067 by: (i) making the work available to the public “at a reasonable price” and (ii) filing with the Copyright Office notice of the owner’s intent to secure protection until 2067.  For example, a work published in 1925 would expire in 2020 under the federal scheme.  The copyright owner, however, could extend the term through 2067 by completing the listed steps.

For the fifth time, the Librarian of Congress (currently James Hadley Billington), upon the recommendation of the Register of Copyrights (currently Maria Pallante,), will conduct a rulemaking proceeding to determine whether certain prohibitions of the Digital Millennium Copyright Act (“DMCA”) adversely affect users of copyrighted works. Anti-Circumvention Provisions of the DMCA Among the many provisions of the DMCA, enacted in 1998, is a provision (17 U.S.C. § 1201(a)) which prohibits the circumvention of technological measures which control access to works protected by the DMCA.  For example, the anti-circumvention provision prohibits the use of software to bypass DVD encryption which prevents illicit copying. However, the same section of the DMCA provides that the anti-circumvention provision does “not apply to persons who…adversely affected by virtue of such prohibition in their ability to make noninfringing uses of that particular class of works under this title…”  In other words, the anti-circumvention provision will not apply to certain groups of people who are unable to make a valid noninfringing use of a work due to the technological measures, so long as the group is one of the groups identified by the Librarian of Congress. Triennial DMCA Rulemaking Proceedings Accordingly, the Librarian of Congress must “make the determination in a rulemaking proceeding…of whether persons who are users of a copyrighted work are, or are likely to be in the succeeding 3-year period, adversely affected by the [anti-circumvention] prohibition…in their ability to make noninfringing uses under this title of a particular class of copyrighted works.”  In other words, every three years the Librarian of Congress must determine and publish which classification(s) of people it has identified as unable to make a valid noninfringing use of a work due to technological measures controlling access to works. Since enactment of the DMCA, four such determinations have been made.  Following the most recent determination, the Librarian of Congress published on August 6, 2010 the following classifications of people exempt from the anti-circumvention provision of the DMCA:

• DVDs protected by a Content Scrambling System, when circumvention is to incorporate short portions into a new work for the purpose of criticism or comment, and where the circumvention is for: (i) an education use by college and university professors or film and media studies students; (ii) documentary filmmaking; or (iii) noncommercial videos;

• Computer programs enabling wireless telephone handsets to execute software applications for the sole purpose of enabling interoperability of such applications;

• Computer programs that enable used wireless telephone handsets to connect to a wireless telecommunications network;

• Testing for or investigating security flaws or vulnerabilities of video games accessible on personal computers

• Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete; and

• Literary works distributed in ebook format when all existing ebook editions of the work prevent the enabling either of the book’s read-aloud function or of screen readers that render the text into a specialized format.

Comment Period Open Through February 10, 2012 In September, the Copyright Office issued a Notice of Inquiry in the fifth anticircumvention rulemaking requested written proposals to designate classes of works from all interested parties in order to elicit evidence on whether noninfringing uses of certain classes of works are, or are likely to be, adversely affected by this prohibition on the circumvention of measures that control access to copyrighted works. Those proposals have been posted to the Copyright Office’s website, and the Copyright Office recently requested comments regarding these proposed classes of works, which include several new classes in addition to those adopted in 2010. Comments addressing the Proposed Classes of Works are due by 5 p.m. E.S.T., February 10, 2012 (via this form).  Reply comments addressing points made in the initial comments are due by 5 p.m. E.S.T. on March 2, 2012.

Case: CAMPINHA-BACOTE v. BLEIDT (S.D.Tex. 10-3-2011) What allegedly happened: A he-said / she-said case. A university professor (who has since resigned) claimed that he was authorized to use a 25 page survey, owned by the plaintiff in this case, on classes of incoming students for a certain period of time. On the other hand, plaintiff claimed that there was no authorization for the use of the survey by the "main defendant professor" and one of his co-workers. Most of the claims originally present in this case were dropped on sovereign immunity grounds because defendant are a state university, specifically Texas A&M's pharmacy college and a couple of its professors.* The defendants have also raised the defense of fair use of the survey (as will be discussed below), but the court's October 3rd opinion only deals with the issue of whether plaintiff authorized the defendants' use. Decision: The issue of whether there really was authorization to use the survey must be decided through a trial. Strategy Question: The short opinion mentions a license offer made by the copyright owner to one of the defendant professors:

[The author of the survey] responded that the cost would be $735 for 2010, and asked for documentation of the prior agreement with [the university professor]. The pharmacy school decided against using the survey during August 2010 orientation at least in part because it was too expensive.

The relevance of this $735 offer is not immediately clear, especially because the court was deciding a summary judgment motion on liability, and not deciding any damages issues.  The $735 figure was made by the copyright owner in the context of licensing and authorizing future use and did not directly relate to the unauthorized use at issue in this case, which had occurred prior to the $735 offer.** It may be that the court believed that the university, or the involved professors, could have settled this matter early by paying about $735 per semester of allegedly unauthorized use, but, if so, that may or may not be a realistic assumption. Fair Use: In disputes over copyrighted materials that are used for educational purposes, fair use is frequently raised as a defense.  Indeed, fair use has been raised, but not yet litigated, in this case. Some of the plaintiff's recent briefing shows that she continues to be concerned about this defense:

In an email dated as recent as September 16, 2010, [the main defendant professor] communicated with [a dean of the university], whereby he made mention of and implications that his use . . . of Dr. Campinha-Bacote’s survey was protected by fair use. . . . The second factual issue is that the College's fair use of a copyrighted survey instrument should not be much of an issue. There was no data collected for analysis purposes or for use in research; any use was for a nonprofit-educational purpose only. Apart from the fact that [the main defendant professor] actually uses the term “fair use,” he also identifies what he thinks the relevant fair use factors are by mentioning “nonprofit” and “educational purposes.” By this statement, it is clear that [the main defendant professor] has knowledge of the fair use doctrine. Consequently, it can be reasonably inferred that [the main defendant professor] is under the impression that his use, both in the past and in the future, would be protected by the “fair use” doctrine. Accordingly, Defendants are more likely to continue using Plaintiff’s tool if they are under the impression that such use is protected. Without an Order from this court granting Plaintiff her injunctive relief, Defendants will be free to use Dr. Campinha-Bacote’s surveys without paying a fee.

Footnote(s): *  More specifically, the claims against the university, and against the professors "in their official capacities" were dropped, leaving only claims against two of the professors in their non-official capacities.  The opinion does not specify as to whether the university has a continuing duty to defend the professors against the remaining claims that were not found to be amenable to summary judgment. **  It is not clear whether the copyright owner even knew about the allegedly unauthorized use at the time she made the $735 license offer.

Two related bills aimed at curbing rampant copyright and trademark infringement on the Internet are currently pending before the House and Senate.  While the bills have been endorsed by the RIAA and MPAA and have strong bipartisan support in Congress, they have come under fire by mainstream media and civil liberties groups who believe the bills would shift too much responsibility onto ISPs, advertisers, and payment processors while also giving the U.S. government and trademark and copyright holders too much power to block allegedly infringing websites without sufficient due process. The Senate PROTECT IP Act of 2011 (S.968) The bills began in the Senate, where Senator Patrick Leahy (D-VT) introduced the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act,” or the PROTECT IP Act (“PIPA”) in May of 2011 (S.968). The PROTECT IP Act would establish a system where the Justice Department could take down websites dedicated to copyright-infringing or counterfeit activities, including sites that solely promote distribution of illegal copies, counterfeit goods, or anti-DRM technology.  The Act would give the DoJ the ability to obtain court orders preventing financial transaction providers, Internet advertising services, Internet service providers, and information location tools from linking to or processing financial transactions to or from the “rogue site.” Trademark and copyright holders would also be able to apply for a court injunction against the domain name to compel financial transaction providers and Internet advertising services to stop processing transactions to and placing ads on the website, if they have been harmed by the activities of the rogue website. The PROTECT IP Act was recently reviewed by the Senate Judiciary Committee and is still pending in the Senate. The House E-PARASITE Act (H.R.3261) The “Enforcing and Protecting American Rights Against Sites Intent on Theft and Exploitation,” or E-PARASITE Act, was introduced on October 26, 2011 by Rep. Lamar Smith (R-TX) (the bill was formerly known as the Stop Online Piracy Act, or SOPA) (H.R.3261). The E-PARASITE Act would authorize the DoJ to initiate federal court procedures against criminal activities conducted on foreign infringing sites engaging in copyright infringement, counterfeit goods, or theft of trade secrets.  Again, courts could issue orders to ISPs, payment network providers, search engines, and advertising services to take “technically feasible and reasonable measures” to prevent access to the rogue site. Similar to the PROTECT IP Act, trademark and copyright holders would use a process similar to the Digital Millennium Copyright Act (DMCA) to seek limited injunctive relief against the rogue site. The E-PARASITE Act was recently sent to the House Committee on the Judiciary where it was referred to the Subcommittee on Intellectual Property, Competition and the Internet. Proponents and Critics Proponents of the bills, including the Recording Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA), maintain that the legislation is vital in order to address the widespread copyright and trademark infringement on the Internet.  See, for example:

• “RIAA chief: Copyright bills won't kill the Internet” at CNET;
• “The PROTECT IP Act : What You Need to Know” (pdf) by Creative America; and
• Fightonlinetheft.com.

There are also numerous critics of the bills who are concerned about the suppression of speech without due process and the effect of the bills on the Internet’s infrastructure, among other issues.  See, for example:

• “Stop Online Piracy Act would stop online innovation” at the SF Chronicle;
• “Coming Clean on SOPA” by the Future of Music Coalition;
• “A bipartisan attempt to regulate the Internet?” at the LA Times; and
• “And Speaking of the Inalienable Right to the Pursuit of Happiness . . .” at The Volokh Conspiracy.

Musician and pop culture icon Stefani Germanotta – better known to her fans as “Lady Gaga” – has actively protected her ‘distinctive’ brand since entering the national scene.  For example, she has required that photojournalists at her concerts assign all copyrights in their photographs to her, and recently filed a trademark infringement lawsuit against a company attempting to register the marks “Lady Gaga” and “Lady Gaga LG.”  A few weeks ago, however, Lady Gaga learned that she did not have rights in the domain name “ladygaga.org.” In August, Lady Gaga filed a Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) complaint with the National Arbitration Forum (“NAF”) alleging that the domain violated her trademark rights and was intentionally registered in bad faith in order to capitalize on her fame.  Unfortunately for Lady Gaga, the NAF panel disagreed, finding that since the website hosted at ladygaga.org is a completely non-commercial fansite that disclaims any association with the musician, Lady Gaga had failed to show that the owner did not have a legitimate interest or right in the domain.  Lady Gaga’s legal team will undoubtedly be monitoring the site from this point forward, waiting for the day it involves or links to some commercial activity. Interestingly, the owner of the domain name, listed as “oranges arecool XD,” owns more than 2,000 domain names, including many related to celebrities (link). Take-Home Message While famous entities such as celebrities, companies, and universities usually have rights in domain names that attempt to take advantage of their fame, completely non-commercial “fansites” can be an exception.  To regain these domain names, the entity may have to consider alternatives to the UDRP process or litigation, such as offering to purchase the domain outright from the owner.