Principles for Deciding
Hard Copyright Cases
The media have gone from print to the internet. Works are enjoyed
with increasing ease, but creators receive decreasing returns. At this
juncture, we propose a thought-experiment: try out the following ten principles in hard cases.[1]
In English, we speak of
“copyrights”; in most languages, of “authors’ rights.” With such rights,
lawmakers pursue aims that range from enhancing cultural wealth to rewarding
flesh-and-blood creators.[2] Rather than opine on copyright or like laws now
embroiling us in hard cases, we shall, at the outset, ask: What scope ought
authors’ rights be given in such cases?[3]
Copyright laws initially recognized authors’ rights to make their
works public in print and on stage.[4] With progress, more powerful media have been
dispersing cultural goods more widely and rapidly. Statutes assure authors’ rights
for more or less specific media; treaties extend their “umbrella” rights over
communication and making available.[5] Under our first principle here, we propose the core right of dissemination to entitle
creators to control transmitting or making their works accessible to others or,
absent control, to be paid for reception. But could they assert any such
far-reaching right without some finding themselves pitted against others?[6]
Imagine a case of such tensions. From Hiroshige’s woodblock
prints, Van Gogh made studies in oil paint. Check out their landscapes: the Flowering
Plum Tree and the Bridge
in the Rain. Hypothesize that Hiroshige prepared his prints recently
and that Van Gogh painted his studies soon after. Copyright laws could vary in
resolving the issue: Should Hiroshige have the right to have Van Gogh
prohibited from reworking his prints into paintings?[7] The core right, delineated here, would entitle the
prior artist to determine whether, and to some extent how, his works reach
others. In such a right, Hiroshige would find no basis on which to have Van
Gogh compelled to cease privately painting studies of his prints. To begin
scoping out Hiroshige’s rights, ask: What may Van Gogh do with his studies
outside of his studio? Should he be free to show or sell exemplars on the open market or otherwise disseminate
these works?[8]
Vary our case for a moment. Suppose that, from woodblocks for
Hiroshige’s prints, a workshop he had not engaged made further prints, using
his color scheme, and sold them. Now, an artist may have her author's right
enforced to prevent such publication of mechanically made exemplars, often
called “copies.”[9] Refocus on our quite different case just
hypothesized: Van Gogh chose patterns and colors out of Hiroshige’s prints and
wove them into his own studies that mere routines could not have generated.
Strikingly, from the prints to the studies, staged planes were articulated into
active strokes, the palette was selectively shifted from muted to intense, and
tenor turned from contemplative to impassioned. Under our first principle here,
no law should entitle any creator, in our case Hiroshige, to have a later
creator summarily stopped from elaborating culture. Rather, courts would
decline to prohibit any creator, here Van Gogh, from recasting another’s work
or from publicly releasing any new form. But under our third
and fourth principles, the prior creator may be granted
other relief.[10]
Our core right, as do most laws on point,
protects a creative work whether or not it is fixed in any hard “copy.”[11] Consider members of a jazz
group improvising live in an unrecorded jam session, often making music as a
team, but with some at times riffing solos by themselves. The members’
contributions, including tunes, harmonies, and rhythms, attract copyright to
the extent that these are creatively pulled together into a self-standing work
or works.[12] Texts, as well as visual
or aural images, are protected insofar as they make new sense in contexts that
they furnish one another within some work.[13]
Performers find opportunities in scripts or
scores to imbue works with fresh meanings. It might then prove misleading to
impose any dichotomy between performing a work and authoring another version.[14] In particular, actors,
musicians, directors, or other executants, amplifying on some notation or
scheme, can present works with their own shadings, cadences, or other turns,
even overall consistencies. Under our second principle here, performers, like
the jazz musicians in our foregoing example, could be treated as creators to
the extent that their own rendition took on some significantly new tenor.
Instead of trying to disentangle the overlapping notions of “performers” and
“authors” in theory, we shall ask how to grant such creators relief in
practice. Our approach to copyright remedies, set out under our third and fourth principles,
frames this problem.[15]
Industrial designs raise issues straddling
copyright and industrial property. Compare distinct designs by Alva and Amino
Aalto and by Charles
and Ray Eames. The Altos were pioneers in making chairs out of plywood pressed
into simple curves. The Eames developed chairs using techniques for molding
plywood into compound curves. How to protect such creations that, recognized as
original and beautiful, were shaped with novel methods? Copyright protects
materials like texts or images creatively brought together into meaningful
works; design or patent rights protect innovatively useful products or
processes.[16] Suppose that a
manufacturer, while following the configuration of one of the Eames’ designs,
improved on techniques to fabricate chairs similar to theirs, but more durable
under rough use. What could occur in the marketplace if the Eames asserted
copyright in their design against this manufacturer for exploiting its improved
chairs? If successful, they could constrain competitive uses of techniques for
making products like furniture in the light of ergonomics. Such control would,
under copyright laws, last longer than under design or patent laws and escape
priority conditions in these laws. However, our second principle here would
preclude enforcing copyright in what techniques sufficed to generate.[17]
How to disentangle creations from technical
implementations? Copyright is claimed in what we blithely term “expressions,”
as opposed to “facts” or “ideas.” Materials that this last pair of weasel
words encompass are protected only insofar as they are creatively articulated
into some work.[18] With authors’ rights, for
example, Gerard Manley Hopkins could control publishing his poems as worded,
and Georges Seurat could control publicly displaying his Sunday on the Grande
Jatte as painted. But Hopkins could not have others stopped from
imparting their own poems drafted with the sprung rhythm he had found in common
speech; nor could Seurat bar others from showing their own pictures painted in
the pointillist mode he had devised from impressionism. Accordingly, under our
second principle here, copyright should not be enforced in any text or image to
the extent that techniques alone have produced it: courts would best focus
protection on whatever, in the work at issue, was humanly created.[19] Thus dramatists may stage
tragedies in which new plays are contrived from stock plots, like that
classically set out in the “idea” of having a hero act with hubris and
fatefully fall from a high position. Indeed, writers may promulgate myriad
texts that they unfold out of story lines, character types, etc., and artists may
circulate myriad images that they configure with compositional schemes, color
or tonal palettes, etc. Over time, such techniques have ranged from know-how
and literary or other artistic devices to algorithms coupled with data.[20]
What
ought courts do when specific rights might be or are violated? They may order
parties not to do certain acts or to do others, and they may award money. They
have to tailor remedies case by case by taking account of diverse variables,
including the parties’ risks of irreparable harm and their compensable losses
or relative gains. Within such equitable parameters, what relief to fashion for
authors’ moral and economic rights in hard cases?[21]
Return to
our hypothetical case of Hiroshige’s prints “copied” in Van Gogh’s studies of the Flowering
Plum Tree and of the Bridge
in the Rain. Though artists
had long trained by emulating each other’s exemplars, Van Gogh had “scruples of
conscience” that his studies approached “plagiarism.”[22] There is a larger question
here: How could we appreciate Hiroshige’s graceful prints in muted shades if we
knew them only from Van Gogh’s striking studies in oil? We might miss or
confuse the accomplishments of these artists if we did not learn who had
created the prints, and who the studies, or if we did not accurately access
these works. Copyright laws variously provide relief for authors’ moral rights
to be named as creators of their works and to maintain their works intact.[23]
We shall here explore remedies for moral
rights.[24] Start with the right to
have authorship of one’s work attributed to oneself. Each creator, while free
to release her work anonymously, may require references to her name or
pseudonym, as well as to her work itself, in order to identify her as author of
the work. Such references, whether made on or in connection with a work, say,
by way of links online, can forestall harm risked from disseminating the work
in any unattributed or misattributed or otherwise misleading guise.[25] But, as seen in the jazz
example introducing our second principle, creators’
diverse contributions might more or less coalesce in some work, so that
attribution of multiple authorship may be in order. What if a work were made
public, but without authorship duly credited or with it misattributed? The
creator could be awarded damages for resulting losses or restitution of a
plagiarist’s gains.[26]
Creators have rights to maintain the
integrity of their works. Suppose that a work, without any author’s consent,
were inaccurately presented, say, in a truncated or diluted iteration. If the
work, in this distorted guise, displayed no further creativity, there would be
neither any later author’s claims nor eventual audiences’ needs to weigh:
absent other concerns, a court could enjoin disseminating the work in its
defective variant.[27] In appropriate cases,
judges may accommodate such claims or needs, for example, by disallowing
routine distortions or other hack changes in a work or else, within limits
entailed by our sixth principle, by conditioning how any
creatively reworked version reaches the public. Imagine another historical
case: Beaumarchais wrote the play which Mozart adapted into his opera The
Marriage of Figaro, in which Da Ponte rewrote the original text into
Italian with an ear to the music and an eye to evading censorship. Our first principle would have courts refrain from simply blocking
access to any such derivative work without taking account of its creativity. In
our case here, the court should not prohibit outright either the public staging
of the opera or publication of its libretto taken from the play. But the playwright could have himself and
his play referenced to avoid confusion as to authorship and version. With
current media, a prior author could have his discernibly underlying work linked
online.[28]
Remedies become hard to tailor when some rare
instance of a work risks being obfuscated, mutilated, or destroyed. Consider a
single manuscript or art object, one out of a short run of manually made
prints, or a set of uniquely encrypted data. Authors’ rights might then get
caught in tensions with other rights or interests, like the property claims of
whoever possesses any such exemplar at risk. Our third principle here would
leave courts with the Solomonic task of reconciling such opposing private
interests, while taking account of public interests.[29] For example, in one case,
a sculptor created The
Tilted Arc for a common space, but people frequenting the space wanted
it removed. On appeal, the administrative decision to relocate this sculpture,
outside its installation, was upheld.[30]
Creators devote talent and energy to writing
texts and to making images in sight or sound. But authors or other
rightholders, including enterprises with whom they contract, risk having others
free-ride on their achievements or investments. After the advent of print,
copyright was instituted to protect writers and artists, as well as their
publishers, against losing markets to pirates who reset type or plates quickly
and sold reprints cheaply.[31] Upon advances like
recording and broadcasting, lawmakers enumerated rights to exploit works in
markets that such media opened up. Depending on the case, rightholders may seek
orders to restrain threatened or ongoing infringement. They may also sue for
damages for losses, or for restitution of gains, arising from infringement.[32]
Copyright infringement occurs, it is here
submitted, as materials like texts or images, conveying some overall sense of a
protected work, are disseminated without due consent.[33] But to the extent that
such materials are creatively made over into another work, our first
principle directs courts to allow the author of this ensuing work to make
it public. Requested to issue any sweeping order to the contrary, a judge
should distinguish between routine reiterations and creative reworkings, at
times translations or transformations. Contrast a computer-generated
translation, mechanically rephrasing a commonplace text, with a human’s
insightful translation of a work as linguistically rich, say, as one of Mallarmé’s
poems. A court should not deny any such flesh-and-blood translator the
chance to amplify on past culture, even with her interpretive work
rearticulating a prior, protected work. What if a rote or slavishly produced
“copy,” with nothing but hack changes or clichéd twists, clumsily abridged or
tritely rendered claimant’s work?[34] A court could enjoin the
infringing dissemination of such a counterfeit if equitable criteria,
decisively that of averting irreparable harm, were met. There would be good
reason to prevent any obvious substitute for the work at issue from entering
the marketplace. There would be less need to bar a distinctly reforged work
that could not usurp any market allegedly at risk.[35]
Damages or restitution are available for
copyright infringement. But in what markets does copyright assure a claimant of
relief?[36] To assess damages, a court
has to gauge harms, typically losses incurred of profits or other benefits
attainable on any such market.[37] Apart from damages, a
claimant may seek the recovery of such enrichment as has been ascertainably
gained from infringement. To quantify such
restitution, the court has to sort out what copyright protects in the work at
issue and trace net gains achieved only from infringing with protected
materials.[38] Consider Dashiell
Hammett’s novel The Maltese
Falcon,
with its suspenseful plot and snappy dialogue, which John Huston rather
literally followed in his film of the same name. Hammett’s story took on new
life in Huston’s motion picture, thanks to creativity in directing actors, in
shooting and editing the film, and in otherwise putting the story on screen.
Suppose, now hypothetically, that the studio making this motion picture had not
first contractually obtained rights to exploit the novel cinematically.[39] Under our fourth principle
here, the studio could, if it marketed the film without such consent, have
risked facing the novelist’s action to share in its gains. In such a suit,
infringement analysis would inform accounting estimates of how far the success
of a film might be imputed to the illicit taking of a protected text.[40]
Much ink has been spilled, not least in
copyright jurisprudence, in appreciating “creativity” in literature and the
arts.[41] Courts, however, need not
reach such evaluations in absolute terms once and for all, even in disposing of
hard cases. In assaying how creatively one work has been redevised into
another, it might help to check the initial and later works against technical developments
and literary or artistic conventions.[42] Findings on point may cut
many ways: in challenging the creativity of an adversary’s putative work, each
party could support or object to relief that a court should grant or not to
protect or allow this work. Suppose that a plaintiff sought an order to prevent
the dissemination of any translation into English substantially similar to that
she had made of a work in French, one which she alone had the right to make
public in English. What if defendant demonstrated that an appropriately
programmed computer could draw plaintiff’s version out of this French text,
putting it into an English virtually identical to hers? To start, such machine
translation could be argued to implement linguistic “facts” and “ideas” technically,
thus to yield no protectable “expression,” as we theorized wrapping up our second principle.[43] Further, if users applied
the requisite software to the French text claimant translated, they could all offer
an English version like hers, making it hard to enjoin them all. Finally, as
translations became freely available, any market for them, key to assessing
damages, would be undercut.[44]
How
far should authors’ rights extend? In hard cases, occasional users of works
might incur onerous transaction costs in seeking consent for their uses. As
well, claimants might encounter tensions with overriding laws or difficulties
of enforcing copyright. In response, lawmakers may exempt some uses of works
from remedies. To that extent, consent may not be due for these uses. Statutes
may also delimit the duration of rights. How to apply such exceptions and
limitations?[45]
What if no rightholder’s consent were
readily available for redisseminating copyright-protected materials for some
critical or informational use?[46] For example, a scholar might not have resources to obtain permissions to
illustrate a book on art history with photographs. Or a reporter might not have
time to license showing a painting hung in the background of news about to be
aired. Or a teacher might not find it feasible to obtain advance authorization
to hand out texts to a class. Copyright laws tend to allow such
redisseminations, but in complex, varying exceptions. These we shall rethink in
terms of common sense.[47]
Copyright laws become unworkable when they
fail to tell laypeople how to comply with them. Such users should not have to
seek legal advice whenever they are about to make another’s work, much less
excerpts, available to others. Return to acts of redissemination that, as we
just canvassed them, make a point or aid inquiry with some passing or partial
reiteration of a work. Laypeople often cannot verify whether, with such acts,
they fulfill provisions for exceptions that might allow uses in theory but are
not cogent in practice. One treaty provision would have users confirm that any
colorably exempted use does not “conflict with a normal exploitation of the
work” and does not “unreasonably prejudice the legitimate interests of the
right holder.”[48] But most users are not in
any position, on the one hand, to gauge harms they might cause across complex
markets or, on the other, to appreciate authors’ or other rightholders’ claims
at stake in redisseminations they contemplate. Our third
principle would entitle creators to require references to themselves as
authors; our fifth principle here would exempt, from injunctions and damages,
such redissemination of protected materials as is reasonable for critical or
informational uses. To make exceptions workable, courts should allow parties
invoking them to comply with this last condition of reasonable use by
consulting only common sense on point.[49]
Note how this criterion shifts perspectives.
Our third and fourth principles call for criteria to guide judges
fashioning relief in copyright cases.
But any users’ test of common sense would not entail the judicial task of
weighing such equitable factors as harmful “effect” on any “potential market”
or some more or less creative, “transformative” use.[50] Rather, it would have
users ask: Would we, relying only on common sense, find the redissemination of
the protected materials at issue reasonable as a critical or informational use
in the case at hand? For example, a scholar may keep quotes of texts or images
to sizes that just fit into her contexts, a journalist may fleetingly convey a
whole work in reporting on news, or a teacher may give a small class access to
samples of works. Suppose that such a party showed that, while duly referencing
any author along with the work used or like source, she met some critical or
informational purpose in redisseminating this work. This party would be liable
for damages caused by her use only insofar as it exceeded what common sense
would find reasonable in her case.[51] In any event,
compensation, imposed judicially as restitution or by statute as equitable
remuneration, could be due.[52]
Authors’
economic rights run as long as treaties or statutes specify, while moral rights
may last longer under some laws. Whichever type of right may still be asserted,
courts may take the passage of time into account in appropriate cases.[53] In particular, a judge may hedge or even refuse remedies for an
author’s claims that, after her death, have waned in urgency with time. For
example, in a suit on the moral right of integrity of Victor Hugo, who had been
dead over a century, French courts declined to enjoin sequels to his classic Les
Misérables.[54]
Overriding
laws may delimit how far authors’ rights allow for judicial remedies or other
enforcement measures. Treaties, constitutions, and related laws protect basic
interests, for example, in privacy, free expression, or open information.[55] Courts should keep relief within the parameters of such overriding
laws as bear on cases at bar, while they proportionately dispose of pertinent
claims.[56] In copyright cases, courts may favor basic interests, inter alia,
by tightening up proof of infringement, by broadly construing exceptions or
other defenses, or by closely fitting remedies to facts at hand.[57] Consider, for example, the parodies Alcolix and
Isterix of protected comic-strip characters: to safeguard artistic freedom,
German courts allowed these parodies to the extent that they significantly
diverged from the works at issue.[58]
Few
hard cases reach the courts. Indeed, most disputes are handled elsewhere. Under
our seventh and eighth principles, we turn to private
transactions, suggesting that contracts might not fully settle tensions between
creators and enterprises in unequal bargaining positions. At network levels,
intermediaries from broadcasters to internet services often arose as private enterprises,
but many have secured dominant positions in far-flung markets, empowering them
publicly.[59] How extensively to charge such institutions with reconciling, on the
one hand, usually private claims for copyright relief and, on the other, most
notably, free expression in the public sphere? Under our ninth principle, we shall address such problems in shifting from particular claimants’
infringement suits to self-help and more far-reaching measures targeting online
uses.[60]
Authors enjoy rights in the works they
respectively create. They ought to share economic rights equitably in any work they
create together or with any principal. Further, they may agree to have others
exploit their works, and the law may also effectuate transfers of rights. Who,
finally, should have rights in a work?[61]
Under
our first and second principles, flesh-and-blood
creators originally have authors’
rights in their works. But many contributors might help, for example, on a
dictionary or on a feature film, as collaborators, in a large team, or as agents.
How to allocate copyright in some creation with multiple authors, who are often
directed by an employer or other principal? The very fact that a work
culminated out of the parties’ diverse contributions and transactions, whether
creative or administrative, points to their consensus. Our seventh principle
here complements rules of law that govern in whose hands rights arise in such
works. It would lead courts to effectuate the parties’ consensus as to who
holds their economic rights.[62]
Contrast
a work created by many authors on their own with a work made under someone
else’s direction.[63] Suppose, on the one hand, an interactive game created by an ad hoc
team of globally networked contributors. Assume that no contract applied to
these authors’ economic rights in the game in so many words and that no
principal directed them. Our seventh principle here would have courts equitably
construe the creators’ consensus in legally allocating such rights among them.
For example, their course of conduct, their informal agreements, or contract
terms typically used in network circles could inform thus effectuating some
approximately common intention.[64] Suppose, on the other hand, a collective work created for a principal,
like an employer or a commissioning party. But on engaging the contributors to
this work, did this principal have much more bargaining power than they? If so,
any putative consensus, inferred into a tacit agreement, should be
restrictively construed. For example, a court could ask to what allocation of
rights creators would reasonably have agreed.[65]
How
can creators earn their livings in rapidly evolving media markets? For payment,
authors may assign economic rights to others, or they may license others more
or less exclusively to disseminate their works.[66] But it is often hard to anticipate how creations might be eventually
exploited: among other things, they can be elaborated into diverse works
appealing to unexpected audiences, and media progress can open up unforeseen
markets. Contractual models out of the past are not likely to have been
appropriately formulated for future media: for example, agreements to publish
hard “copies” might have little relevance for streaming works online.[67] It would be disingenuous to presume that creators always contracted
their rights away without being leveraged by enterprises with greater
bargaining power than they. How then to construe, even enforce, older
contractual language purporting to alienate “all” eventual copyrights? Did
terms to transfer such rights adequately warn authors of the full range of
benefits they were to give up? With any flaw like lack of free assent or of
full notice, overreaching contracts could be equitably cut back in effect.[68]
Indeed,
contracts crystallize fewer consensual deals in markets dominated by fewer
parties. Over centuries, media industries have emerged, starting in publishing
houses and going on to the major recording and film studios. Such enterprises,
regularly producing works with authors and performers on contract and on staff,
accumulated copyright interests in their repertories. Many of them have since
shifted from production to extracting revenues from old works on new media, and
some have been taken over by financiers mining copyright assets for capital, in
either event shedding prior relations with creators.[69] At much the same time, royalty-collecting societies, labor
organizations, and other such regimes have lost leverage to optimize
compensation for authors and performers, notably online. The inquiry may be
opened: How could creators achieve equitable remuneration for their works and
performances increasingly exploited on internet platforms?[70]
Under
our seventh principle, only flesh-and-blood
creators are originally vested with authors’ rights in their own works. Any
other party, say, a corporation, would need to have chain of title running from
the creator or creators of a work up to and including itself in order to assure
whatever copyright it would assert in the work. What if, at the start of chain
of title, no author had effectively consented to cede her rights to anyone
else? Suppose, as well, that no author’s right has been transferred by law to
another party. By default, whoever created the work would retain rights over
its dissemination.[71]
How
to extend chain of title to copyright, even across borders? One may transfer
economic rights by contract: under most laws, if the holder of an exclusive
right initially assigns it to one party and later to another, the first
transfer in time takes effect as against the other.[72] Caveats may come into play: for example, some laws allow one
transferee to prevail over another by giving notice, often by recording the
grant on some designated public register, but such local regimes are not
globally coordinated.[73] As well, transfers of copyright may be made by law, for example, those
effectuated in creative teams or employment, in marital communities or
inheritance, in corporate successions, etc. In any event, it would be prudent
to require a claimant, optimally one with sufficient financial means, to
warrant title to all the copyright interests that this party purports to grant.
To start, arguably pertinent transactions, even as checked with due diligence,
could fail to lock in chain of title worldwide. Further, no treaty regime
dictates which laws would govern transfers of copyrights applicable in
different countries. Finally, diverse laws, bearing on chain of title across
borders, could conflict.[74]
Copyright
is supposed to induce authors to market their works openly. Market players may
not distort competition by abusing their leverage on the marketplace, which
itself needs good data to function.[75] In particular, holders of exclusive rights, in dominant positions, may
not frustrate the redissemination of works by arbitrarily rebuffing prospective
users. For example, a court may disallow such a rightholder’s refusal to
negotiate any reasonable license to redisseminate protected materials that it
controls in a specific market.[76] Suppose that an author had assigned copyright in her work to one party
who both published it and reassigned this copyright to another party who has
since disappeared from view, no longer marketing the work. Users of this
“orphan” work, lacking ready information to find the rightholder with whom to
deal, could raise equitable defenses against at least some relief.[77] A troubling question looms here: How to provide copyright relief in hard
cases arising in chaotic, information-poor markets for protected works?
Consider those for music, with data on uses scrambled, revenues funneled into
obscure plumbing, and doubtful chains of title.[78]
Controlling access to works tends to become
more complex as media increase in power. For example, claimants can code
digitized data containing works, and intermediaries can channel such data
worldwide. How to enforce authors’ rights in growing networks? Which laws to
apply to works crossing borders?[79]
Self-help
measures can operate at diverse media levels. For example, private rightholders
might encrypt works to condition access to them, and intermediaries might avoid
liability by disabling access to suspect contents online.[80] Claimants may apply to courts, notably to forestall the circumvention
of such technical or like measures or to have internet services minimize
copyright infringement. Self-help measures, sporadically ranging from private
up to public levels, could arguably keep the costs of judicially enforcing
copyright from spiking, but not without putting basic interests at risk. To
avert such risks, courts
should decline to give technical measures effects stronger than could remedy
violations of authors’ rights.[81]
Authors
or other such rightholders ordinarily sue named parties case by case for
exploiting works or performances that claimants specify. But on the internet,
users massively share protected materials in private, undercutting copyright
markets, and intermediaries aggregate such materials cheaply in making them
public. How far, in cyberspace, can authors or other rightholders defend their
interests, given such modes of wide-ranging exchanges or exploitation as resist
judicial scrutiny or relief?[82] Notice-and-takedown procedures have paralleled those for injunctions
of infringing releases of works in that claimants giving notice have had to
identify works at issue. Now, accelerating traffic online is prompting efforts
to regulate access to materials questionably sorted out by black-box inquiries
into infringement. But it remains unclear, given the stretch and speed of the
internet, what legal standards are to guide judicially reviewing such measures.
To reword an old conundrum for new media: How to keep often-elusive
cyber-police in check?[83]
Consider
the worst-case scenario: Rube Goldberg machinery would impact
authors’ rights helter-skelter. Computerization could upset creators’ control
of our access to their works online. Internet aggregators could distract us
from humanly created works with algorithmically simulated texts or images, and
our searches could be deflected to such ersatz versions.[84] Computers can be programmed to filter out access to works made
available without apparently due attribution or consent, but they might at
times also unobtrusively deny legitimate access. In any event, the computerized
interference with contents in cyberspace, if arbitrary or perplexing, risks
weakening creators’ readiness to release works to the public or inhibiting them
from exercising their core right.[85] To obviate chilling effects, courts could employ criteria that they
have refined case by case for enforcing authors’ rights, especially in imposing
injunctions. Under our fourth
principle, courts may enjoin close reiterations of a work at issue to forestall
some risk of irreparable harm. On this criterion, self-help measures would not
pass muster if they threatened access to creative reworkings for niche markets.
We have illustrated this threat with Hiroshige’s Flowering Plum Tree and the Bridge in the Rain as “copied” by Van Gogh. In such cases, decision-makers should discipline extra-judicial enforcement to avoid
crimping authors’ styles.[86]
A
court exercises the State’s powers in civilly enforcing authors’ rights. It
does so as well, often more harshly, in criminally punishing copyright
infringers. But civil remedies risk becoming punitive, for example, as monetary
awards lose proportion with actual damages or unjust enrichment. Imperatively,
pursuant to the principle of legality, the State has to inform the members of
the public, in statutory terms clear to all, of legally punishable acts. How to
respect this general principle of legality in the special field of copyright,
with all its open-ended notions to which courts resort in coping with protean
creativity?[87] Words such as “copy” and “facts” or “ideas” make for hard cases in
which copyright laws should be construed closely to make exposure to criminal
measures predictable. In addition, punitive sanctions normally target parties
violating private rights or public rules while harboring culpable states of
mind or scienter, so that the State penalizes only malicious or
obviously harmful acts. But uncertainties in criteria of what takings would
arguably constitute copyright infringement could complicate defining such
states of mind. Thus, copyright statutes have to define which acts, releasing
specified materials to others, violate penal law. Absent which, no award beyond
harms caused by, or net gains from, infringement may be imposed.[88]
With
media progress, copyright transactions increasingly cross borders.[89] We have ventured principles for authors’ rights, while attempting to
rethink notions that muddle hard cases unnecessarily. Our principles may be
tested by how well they lead courts to fashion relief that resolves or defuses
conflicts of copyright or like laws arising as infringement globalizes.[90] Faced with apparent conflicts, a court may ask: Could enforcing laws
applicable to the case at bar achieve aims for some of these laws but frustrate
aims for others? To the extent that such tensions are absent from the case, no
true conflict of laws troubles disposing of it. Otherwise, converging or
complementary remedies may often settle lingering conflicts.[91]
Hypothesize
one more case. Suppose that a mime, within the
Amplifying
our hypothetical, we reach the issue on which cross-border cases may turn: How
to dispose of such conflicts as appear among copyright or like laws of diverse
jurisdictions? Judges might be tempted to stick to forum law, and lawyers to
shop for a court likely to choose law favoring their clients.[95] The copyright-treaty regime, with its basic principle of national
treatment, should discourage such choice-of-law roulette. This treaty principle
entitles qualified claimants to benefit from the copyright law of a treaty
country to remedy infringement threatened or suffered within that country.[96] The pertinent laws of such countries may justify enjoining infringing
acts that risk yielding irreparable harm in their respective audiences or
markets. By the same token, the law of such a country may call for monetary
awards for damages or for restitution if it protects the work at issue enjoyed
there. The treaty regime has harmonized copyright in authors’ minimum rights
that we have encapsulated in our core right to guide courts in hard cases.[97] In the hypothetical case of our author, this core right would support
enjoining access to her pantomime where diverse laws converged to protect this
work. Monetary awards would complement each other insofar as they were granted
under laws in effect where actionable harms or gains took place.[98]
Now that
we have unpacked our principles, let us look at them all together. Click on
each principle set out immediately below to return to explanations offered for
it above.
The
mustachioed, not the bearded, Marx quipped: “Those are my principles; and, if
you don't like them, well, I have others.”[99] Our willingness to move
beyond current premises differs perhaps from his. We have just experimented
with notions key to authors’ rights at stake in hard cases triggered as
copyright laws approach crisis. Such rights call for new remedies, for example,
for computer-simulated texts or images and for the file-sharing or aggregation
of works online. But how to recompense creators for gracing the public with
cultural goods, even as these become freely accessible and enforcement costs
prohibitive? Not without rethinking copyright to keep up with media trends![100]
© Paul Edward Geller 2024
[1] For the initial version, see Paul Edward Geller, Beyond the Copyright Crisis: Principles for Change, Journal of the Copyright Society of the USA, vol. 55 (2008), 165.
[2] How such aims more or less converge or enter into tensions may vary, not only among copyright laws, but case by case. For diverse analyses, see Lionel Bently, Copyright and the Death of the Author in Literature and Law, The Modern Law Review, vol. 57 (1994), 973; Martin Kretschmer, Copyright and Its Discontents, in The Oxford Handbook of Creative Industries, eds. Candace Jones, Mark Lorenzen, and Jonathan Sapsed (Oxford University Press, 2015), 456.
[3] For critical analysis of principles historically justifying copyright and authors’ rights, see Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3 (with French and Spanish translations), published in long form as Must Copyright Be For Ever Caught Between Marketplace and Authorship Norms?, in Of Authors and Origins: Essays on Copyright, eds. Brad Sherman and Alain Strowel (Oxford University Press, 1994), 159.
[4] For analysis of the emergence of copyright
and authors’ rights, see Paul Edward Geller, Copyright
History and the Future: What's Culture Got to Do With It?, Journal of the Copyright Society of the
[5] See WIPO Copyright Treaty (1996),
art. 8; WIPO Performances and
Phonograms Treaty (1996), arts. 10 and 14. See, e.g., Society
of Composers, Authors and Music Publishers of Canada v. Entertainment Software
Association, 2022 SCC 30, esp. paras. 8, 86, and 108. The Supreme Court of
Canada here confirmed that dissemination may “engage” statutory rights, while
it construed such rights, some couched in terms of distinct media, to avoid
“gaps in protection.”
[6] For critical analysis of tensions in theory underlying such disputes endemic in practice, see Paul Edward Geller, Delimiting Intellectual Property: Distinct Approaches to Spillovers, in Spory o własność intelektualną: Księga jubileuszowa dedykowana Profesorom Januszowi Barcie i Ryszardowi Markiewiczowi, eds. Andrzej Matlak and Sybilla Stanisławska-Kloc (Wolters Kluwer Polska, 2013), 293.
[7] See,
e.g.,
[8] For prior analysis of this and like cases,
see Paul Edward Geller, Hiroshige
v. Van Gogh: Resolving the Dilemma
of Copyright Scope in Remedying Infringement, Journal of the Copyright Society of the USA, vol. 46 (1998), 39.
[9] Why the scare-quotes around the term “copies”? This vague notion risks misleading courts: for example, a translation is not literally a “copy” in that its words differ from those of the work which the translator converts into another language. For another analysis, see Abraham Drassinower, Copyright is Not About Copying, Harvard Law Review Forum, vol. 125 (2012), 108.
[10] Under these principles, we shall explore
remedies that an initial author may obtain for a further author’s work, for example,
a translation or transformation, derived from that prior author’s work and
disseminated without due consent.
[11] Few laws condition the protection of authors’ rights on “fixing” works in some stable or tangible medium. For analysis, see Ysolde Gendreau, Le critère de fixation en droit d’auteur, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 111 (with English and Spanish translations).
[12] See,
e.g., Tempo
Music, Inc. v. Famous Music Corp., 838 F. Supp. 162 (S.D.N.Y. 1994). Here a
[13] For analysis of any work as some relatively self-standing sign in which texts, images, etc., contextualize one another, see Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3, at 51-59. For analysis of how, outside any one literary work, other sets of texts known to readers might bear on meanings of the work, see Michael Riffaterre, Intertextuality vs. Hypertextuality, New Literary History, vol. 25 (1994), 779.
[14] It remains theoretically controversial, though variable in practice, how fully a script or score, indeed any such “writing,” can determine a work or, rather, a performance reinterpret or even redevise the work. For example, for diverging analyses in the field of music, see Nelson Goodman, Languages of Art: An Approach to a Theory of Symbols (Bobbs-Merrill Co., 1968), 179-92 passim; Philip Alperson, On Musical Improvisation, Journal of Aesthetics and Art Criticism, vol. 43 (1984), 17.
[15] We shall here explore calibrating relief with the creativity of works at issue. Performers may obtain remedies for authors’ rights insofar as they creatively contribute to works. For other analyses, see Richard Arnold (Justice), Reflections on The Triumph of Music: Copyrights and Performers’ Rights in Music, Oxford I.P. Seminar, Oct. 20, 2009 (Intellectual Property Institute, 2010); Rebecca Tushnet, Performance Anxiety: Copyright Embodied and Disembodied, Journal of the Copyright Society of the USA, vol. 60 (2013), 209.
[16] For analysis of interfaces between copyright
and industrial property, including design and patent rights, see Jerome H.
Reichman, Legal
Hybrids Between the Patent and Copyright Paradigms, Columbia Law Review, vol. 94 (1994), 2432.
[17] See,
e.g., Baker v. Selden,
101
[18] For critical analyses, see Paul Edward Geller, Copyright in Factual Compilations: U.S. Supreme Court Decides the Feist Case, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 22 (1991), 802; Pamela Samuelson, Reconceptualizing Copyright's Merger Doctrine, Journal of the Copyright Society of the USA, vol. 63 (2016), 417.
[19] This
task becomes more complex with the advent of artificial so-called intelligence.
On the one hand, as we indicate in finishing with our fourth
principle, ostensible works, notably translations, can be algorithmically
generated. On the other, recycling data, “A.I.” devices tend to leach original
elements and aspects out of texts and images input into them, but without always
cogently, much less creatively, making up for resulting flaws in their outputs,
for example, data losses, repetitions, etc. For analysis, see Ilia Shumailov, et al., AI models collapse when
trained on recursively generated data, Nature,
no. 631 (2024), 755.
[20] See, e.g., Bsiri-Barbir c. sté. Haarmann et Reimer, Cass., 1e ch. civ., no. 02-44.718, June 13, 2006, translated in [2006] European Copyright and Design Reports [E.C.D.R.] 380; Telstra Corporation Pty. Ltd. v. Phone Directories Company Pty. Ltd., [2010] FCAFC 149, esp. paras. 89-92. In the former case, the French Supreme Court denied copyright in “the fragrance of a perfume” attained by implementing “know-how.” In the latter, the Full Federal Court of Australia affirmed the refusal of copyright in telephone directories “overwhelmingly” compiled by “automated processes.”
[21] For examples of how hard cases prompt courts to take account of overriding laws in focusing relief, see our sixth principle. For an overview of the potentially intrusive impact of copyright enforcement online, see our ninth principle. For further analysis, see Maayan Perel, Digital Remedies, Berkeley Technology Law Journal, vol. 35 (2020), 1.
[22] Letter of February
1, 1890 (no. 850), in Vincent van Gogh, The Letters, eds. Leo Jansen, et
al. (
[23] Other rights, not falling under copyright, may also come into play here, albeit with differences in subject-matters and scopes. The right to privacy, for example, entitles anyone to restrain disclosures of her personal expression, whether it is creative or not. For the classic analysis, see Samuel D. Warren and Louis D. Brandeis, The Right to Privacy, Harvard Law Review, vol. 4 (1890), 193, at 198-213 passim.
[24] For background, see Stig Strömholm, Droit Moral – The International and Comparative Scene from a Scandinavian Viewpoint, Scandinavian studies in law, no. 42 (2002), 217, initially published here: International Review of Industrial Property and Copyright Law [I.I.C.], vol. 14 (1983), 1.
[25] See Berne Convention (
[26] Evidence supporting such awards, for example,
of harm to reputation, can be hard to marshal, prompting recourse to relief
calling for less onerous showings. See,
e.g., Agence
France Presse v. Morel, No. 10-cv-2730 (S.D.N.Y. Aug. 13, 2014). The
[27] See, e.g., the Serafino decision, Tribunale, Rome, May 30, 1984, Diritto di Autore, vol. 56 (1985), 68, reversed in part, Germi c. Soc. Reteitalia, Corte d’Appello, Rome, Oct. 16, 1989, Foro Italiano, vol. 112 I (1989), 3201. The Italian court of first instance enjoined “spot” advertisements to prevent these from breaking up a film work as it was televised, while this court contemplated adjusting relief, for example, timing ad-breaks to respect the plot of the work. On appeal, the intermediate court simply banned such breaks.
[28] See Paul Edward Geller, Toward an Overriding Norm in Copyright: Sign Wealth, Revue Internationale du Droit d'Auteur [R.I.D.A.], no. 159 (1994), 3, at 73-85. But see Bob L.T. Sturm, et al., Artificial Intelligence and Music: Open Questions of Copyright Law and Engineering Praxis, Arts, vol. 8 (2019), 115. Here the issue is raised: Should notice be given that works or matters ostensibly created by humans have rather been wrought by artificial so-called intelligence?
[29] See,
e.g., William Eden c.
Whistler, Cass. civ., no. 49.16, March 14, 1900, D.P. 1900, 1, 497.
In this historic case, the artist J.M. Whistler refused to deliver a portrait which Lord Eden had
commissioned him to paint of his wife. The French Supreme Court declined to
overturn the decision allowing the artist to retain the painting, ordering him
to return payment for it, awarding damages for his failure to provide it, and
barring him from using it in any version recognizable as that commissioned. For
his account of the suit, see Eden
versus Whistler: the baronet & the butterfly (R.H. Russell, 1899).
[30] Serra v. U.S.
General Services Admin., 847 F.2d 1045 (2d Cir. 1988). The
[31] Note the exhaustion doctrine: Tangible property, once relinquished, say, on the first sale of a hard “copy,” may be freely alienated. But see, e.g., Land Nordrhein-Westfalen v. Dirk Renckhoff, C.J.E.U., 2nd ch., Case C-161/17, Aug. 7, 2018, ECLI:EU:C:2018:634. The E.U. Court of Justice here held that, after an author allowed access to a work on one website, he could control reposting the work on another site.
[32] In theory, it is unclear whether, or how far,
such awards may accumulate. In practice, different laws vary in sorting out damages and restitution in the
cases. See Francesco Giglio, Restitution
for Wrongs: a Comparative Analysis,
[33] See,
e.g., Authors Guild v.
Google, Inc., 804 F.3d 202, 225-27 (2d Cir. 2015); Kadry v. Meta
Platforms, Inc., No. 23-cv-03417-VC (N.D. Cal. Nov. 20, 2023). In the
former case, the
[34] See,
e.g., Folsom
v. Marsh, 9 Fed. Cas. 342 (C.C.D. Mass 1841); Dickens v. Lee, (1844) 8 Jurist 183
(Ch), reported in E.T. Jaques, Charles Dickens
in Chancery (Longmans, Green and Co., 1914), 67-70 and 84-89. In the
first case, U.S. Justice Story, after analyzing a recontextualized but verbatim
selection of
[35] See eBay Inc. v.
MercExchange, 547
[36] For
critical analysis, see Paul Edward Geller, Opening
Dialogue on Intellectual Property, in Juriste
sans frontières: Mélanges Ejan Mackaay, ed. Stéphane Rousseau (Éditions
Thémis, 2015), 341, esp. 370-80.
[37] As explained under our second principle,
performers at times author creative versions of preexisting works. But when de minimis samples from one recorded
performance are released to the public as taken into another, without
threatening the market for any prior creation, there is no obvious harm to
remedy. See, e.g., VMG
Salsoul v. Ciccone, 824 F.3d 871 (9th Cir. 2016). The
[38] For
another analysis, see Wendy J. Gordon, Of
Harms and Benefits: Torts, Restitution, and Intellectual Property, Journal
of Legal Studies, vol. 21 (1992), 449.
[39] See Warner Brothers Pictures, Inc. v. Columbia
Broadcast System, Inc., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955). The
[40] See,
e.g., Sheldon v.
Metro-Goldwyn Pictures Corp., 106 F.2d 45, 51 (2d Cir. 1939), affirmed, 309 U.S. 390 (1940). The
[41] For illustrative analysis of conceptions of “creativity” in flux, see Umberto Eco, Innovation & Repetition: Between Modern & Postmodern Aesthetics, Daedalus, vol. 134, no. 4 (2005), 191. For critical analysis of legal commentary on point, see Julie E. Cohen, Creativity and Culture in Copyright Theory, U.C. Davis Law Review, vol. 40 (2007), 1151.
[42] See,
e.g., Meshwerks,
Inc. v. Toyota Motor Sales U.S.A., Inc.,
528 F.3d 1258, 1263-68 (10th Cir. 2008); Gray
v. Hudson, 28 F.4th 87, 97-102 (9th Cir. 2022).
[43] See, e.g., Acohs Pty. Ltd. v. Ucorp Pty. Ltd., [2010] FCA 577, esp. paras. 53-61 and 81-85. The Federal Court of Australia here recognized no copyright in machine-generated code, declining to find programmers to be sole “authors” of such outputs and mere data to form any “work.”
[44] Claims for equitable relief could be raised
against inputting protected works into computerized devices and exploiting
outputs as texts or images. But see,
e.g., Andersen
v. Stability AI Ltd., No. 23-cv-00201-WHO (N.D. Cal. Aug. 12, 2024). The
[45] On the one hand, our first principle disfavors enjoining any derivative work which has been creatively drawn from the work at issue. On the other hand, under our second principle, we disentangle rights at the interfaces between copyright and industrial property. We presuppose both analyses in here considering exceptions and limitations to authors’ rights.
[46] Pitfalls await outside copyright law. For example, for one party to disseminate another’s expression licitly, must this other party have already publicly released it or agreed to such release, waiving her right to privacy? See, e.g., HRH Duchess of Sussex v. Associated Newspapers Ltd., [2021] EWCA Civ 1810, esp. paras. 99-103. The U.K. court of appeal here upheld judgment against unauthorized publishers of family letters. It imposed no copyright exception or limitation.
[47] For analysis of transaction costs prompting copyright exceptions, see Wendy J. Gordon, On the Economics of Copyright, Restitution and “Fair Use”: Systemic Versus Case-by-Case Responses to Market Failure, Journal of Law and Information Science, vol. 8 (1997), 7, esp. 20-21. As hinted there and argued under our fifth principle here, transaction costs also arise out of hard cases when lawmakers tinker with notions of “fair use” that fail to guide laypeople.
[48] Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), art. 13 (1994, as part of the Agreement Creating the W.T.O.). The criteria set out in this treaty provision posit desiderata for public legislation. They hardly seem formulated to govern private parties’ decisions.
[49] Article 10(1) of the Berne Convention allows “quotations from a work [...] lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose [...]”: such uses may be construed to include many exempted here. For another analysis, see Tanya Aplin and Lionel Bently, Displacing the Dominance of the Three-Step Test: The Role of Global Mandatory Fair Use, in The Cambridge Handbook of Copyright Limitations and Exceptions, eds. Shyamkrishna Balganesh, Ng-Loy Wee Loon, and Haochen Sun (Cambridge University Press, 2021), 37.
[50] For critical analyses of exceptions calling for “balancing” such factors, see David Nimmer, “Fairest of them All” and Other Fairy Tales of Fair Use, Law and Contemporary Problems, vol. 66 (2003), 263; Richard Epstein, Sequential Uses of Copyrighted Materials: Transforming Transformative Use Doctrine in Andy Warhol Foundation v. Goldsmith, Michigan State Law Review, vol. 2022 (2023), 1041.
[51] Common sense might falter in hard cases,
notably of parodies that unusually distort prior works. Under our sixth principle, the legally protected interest in freedom of
expression may still justify limiting relief. See, e.g., Tom
Jensen v. Edvard Eriksens Arvinger, Højesteret, Case no. BS-24506/2022-HJR,
May 17, 2023, translated in [2023] E.C.D.R. 417. Here the Supreme
Court of Denmark, in cases of images of the sculpture of the Little Mermaid, one masked against the
COVID infection and the other with a “zombie-like face,” denied relief for
infringement. To the extent that these changes were mundane, the exception for
parody, subject to common sense, may have excused the “copies.” With a nod to
E.U. case law, the court also invoked the interest in freedom of expression.
[52] See, e.g., the Eidgenössische Technische Hochschule Zürich decision, ATF 140 III 616, Nov. 28, 2014, esp. 625-29. The Swiss Federal Tribunal here allowed a public service to send articles to private parties, without regard for their purposes, but subject to remunerating rightholders.
[53] For another analysis, see Justin Hughes, Fair Use Across Time, U.C.L.A. Law Review, vol. 50 (2003), 775.
[54] Plon S.A. c. Pierre Hugo, Cass., 1e ch. civ., no. 04-15.543, Jan. 30, 2007, R.I.D.A., no. 212 (2007), 249, followed, Cour d’appel, Paris, 4e ch., Dec. 19, 2008, R.I.D.A., no. 220 (2009), 444. The French Supreme Court overturned a decision on point for violating treaty-recognized “creative freedom” and for failing to specify how sequels “altered” the classic work or led to confusion about “authorship.” On remand, relief was refused.
[55] For a global analysis, see Laurence R. Helfer, Human Rights
and Intellectual Property: Mapping an Evolving and Contested Relationship,
in The Oxford Handbook of Intellectual Property Law, eds. Rochelle C.
Dreyfuss and Justine Pila (Oxford University Press, 2018), 117.
[56] See, e.g., Queneau c. Boue, Trib. Gr. Instance, réf., Paris, June 10, 1997, J.C.P. 1997, II, 22974, translated in [2000] E.C.D.R. 343; Flavus v. Russia, Eur. Ct. H.R., 3rd sect., June 23, 2020, App. nos. 12468/15, et al. In the former case, a French court declined to enjoin a research team from sharing copyright-protected texts in their privately firewalled intranet. In the latter case, the European Court of Human Rights ruled that blocking entire websites, beyond contents that the law clearly precluded from releasing, disproportionately impaired web-posters’ freedom of expression and the public’s access to information.
[57] See,
e.g., the Germania
3 decision, BVerfG, 1 BvR 825/98, June 29, 2000, GRUR 2001, 149; Opéra de
Munich c. Gilles Bernanos, Cass., 1e ch.
civ., nos. 15-28.467 and 16-11.759, June 22, 2017, Juris-Data no. 2017-012338. In a key case, the German
Constitutional Court, invoking “artistic freedom,” as recognized in the German
“Basic Law,” and stretching the copyright exception for excerpts, dissolved an
order barring the publication of a drama which “collaged” extensive “quotes”
from Brecht’s plays. In a later case, the French Supreme Court, “equilibrating”
treaty-assured “creative freedom” with authors’ moral rights, overturned an
order stopping the dissemination of a “staging” which retained the music and
text of an opera but resituated its final scene.
[58] The Alcolix and Asterix-Persiflagen decisions, BGH, I ZR 263/91, and I ZR 264/91,
March 11, 1993, GRUR 1994, 191,
translated in I.I.C., vol. 25 (1994), 605. The Federal Court here
directed trial courts to gauge divergences in question between parodied and
parodying works from the standpoint of readers conversant with works such as
those at issue. For analysis
distinguishing this case law from that on
[59] For other analyses, see Rebecca Tushnet, Power Without Responsibility: Intermediaries and the First Amendment, George Washington Law Review, vol. 76 (2008), 101; Orit Fischman-Afori, Online Rulers as Hybrid Bodies: The Case of Infringing Content Monitoring, University of Pennsylvania Journal of Constitutional Law, vol. 23 (2021), 351.
[60] Under this principle, we shall refine judicial standards for reviewing the enforcement of copyright online and distinguish criteria for civil relief and for criminal sanctions.
[61] This issue may be distinguished from: Who has standing to sue? See Paul Edward Geller, International Copyright: The Introduction, § 6[2][a], in International Copyright Law and Practice, ed. Lionel Bently (LexisNexis, 2018).
[62] Consensus on the spot may be bolstered by
norms, such as rules assuring freedom from coercion, that are applicable
locally or across borders. For further analysis, see Gralf-Peter Calliess, The
Making of Transnational Contract Law, Indiana
Journal of Global Legal Studies, vol. 14 (2007), 469.
[63] Analytically, this distinction simplifies a miscellany of hard cases. For examples of multiplayer-online games, see Shani Shisha, Fairness, Copyright, and Video Games: Hate the Game, Not the Player, Fordham Intellectual Property, Media & Entertainment Law Journal, vol. 31 (2021), 694.
[64] See Axel Metzger, Transnational Law for Transnational Communities: The Emergence of a Lex Mercatoria (or Lex Informatica) for International Creative Communities, Journal of Intellectual Property, Information Technology and Electronic Commerce Law [JIPITEC], vol. 3 (2012), 361.
[65] For theoretical analysis, see Paul Edward Geller, Preassignments of Creators’ Rights: An Adhesion Analysis, COMM/ENT, A Journal of Communications and Entertainment Law, vol. 2 (1979), 1. For current practice, see Orly Lobel, The New Cognitive Property: Human Capital Law and the Reach of Intellectual Property, Texas Law Review, vol. 93 (2015), 789.
[66] In closing our fifth principle, we noted that equitable remuneration may be due creators for some exempted uses.
[67] For specific analysis of this shift, see Ruth Towse, Dealing with digital: the economic organisation of streamed music, Media, Culture & Society, vol. 42 (2020), 1461.
[68] Or a court may read a contractual provision as
applicable to online transactions by declining to follow any analogy with
dealings in hard “copies.” See, e.g.,
F.B.T.
Productions, LLC v. Aftermath Records, 621 F.3d 958 (9th Cir. 2010), cert. denied, 131
[69] For further analysis, see Andrew deWaard, Financialized Hollywood: Institutional Investment, Venture Capital, and Private Equity in the Film and Television Industry, Journal of Cinema and Media Studies, vol. 59 (2020), 54.
[70] For sample analyses, see Centre National de la Musique, Étude relative à l’impact du passage à l’UCPS par les services de musique en ligne (Jan. 2021); Shuwen Qu, David Hesmondhalgh, and Jian Xiao, Music streaming platforms and self-releasing musicians: the case of China, Information, Communication & Society, vol. 26 (2023), 699; Intellectual Property Office, The potential economic impact of ER on performers and the music market in the UK (Feb. 2024).
[71] Statutes may preclude transfers of certain rights. See, e.g., the Verlegeranteil decision, BGH, I ZR 198/13, April 21, 2016, GRUR 2016, 596, translated in I.I.C., vol. 48 (2017), 98. The German Federal Court here barred a collecting society from diverting inalienable authors’ royalties to publishers.
[72] See,
e.g., Griggs Group Ltd.
v. Evans, [2004] EWHC 1088 (Ch), affirmed,
Griggs Group v. Raben Footwear, [2005] EWCA Civ 11. In this case, an author
granted a first party copyrights respectively effective at home and abroad and
later purportedly assigned such rights formally to a second party who had
notice of the prior transfer. A
[73] For critical analysis of U.S. recordation regimes in international contexts, see Raymond T. Nimmer and Lorin Brennan, Modernizing Secured Financing Law for International Information Financing: A Conceptual Framework, Houston Business and Tax Journal, vol. 6 (2005), 1.
[74] For analysis of such conflicts of laws, see
Paul Edward Geller, International
Copyright: The Introduction, §§ 6[2][b]-[c] and 6[3], in International Copyright Law and Practice,
ed. Lionel Bently (LexisNexis, 2018).
[75] But see, e.g., Berklee Institute for Creative Entrepreneurship, Fair Music: Transparency and Money Flows in the Music Industry (2015). This report indicates how market leverage has enabled media enterprises to obfuscate data pertinent to remunerating creators for online access to their music.
[76] See, e.g., the Magill decision, Radio Telefis Eireann (RTE) and Independent Television Publications Ltd. (ITP) v. Commission of the European Communities, E.C.J., Joined Cases C-241/91 P and C-242/91 P, April 6, 1995, paras. 47-58 and 90-101, ECLI:EU:C:1995:98. The European Court of Justice here confirmed that television stations, dominating a specific marketplace, had to license a television-guide service to publish their program listings on reasonable terms.
[77] For another analysis, see Tun-Jen Chiang, Trolls and Orphans, Boston University Law Review, vol. 96 (2016), 691, esp. 708. Arguably, estoppel or another such defense could preclude at least injunctive relief against posting works online that copyright holders have left unavailable, for example, by taking “back-listed” works off the market.
[78] For further analysis, see Derek Sellin and Timo Seppälä, Digital music industry – background synthesis, ETLA Working Papers, No. 48 (The Research Institute of the Finnish Economy, 2017).
[79] At network and national interstices, distinct regimes might not always mesh well, at times triggering hard cases. Our ninth principle guides any enforcement of copyright across increasingly global networks, subject to some regime for applying laws to protect basic interests in privacy, free expression, and open information across borders. Our last, tenth principle outlines a regime for resolving conflicts of copyright laws arising in cross-border infringement.
[80] For another analysis, see Alexander Peukert, Transnational Intellectual Property Governance on the Internet, in The Law of Global Digitality, eds. Matthias Kettemann, Alexander Peukert, and Indra Spiecker gen. Döhmann (Routledge, 2022), 50.
[81] See, e.g., Stevens v. K.K. Sony Computer Entertainment, [2005] HCA 58, paras. 45-47. The Australian High Court here refused to bar the circumvention of technical measures that prevented users from changing how they played computer games. The court sought “to avoid” extending “the copyright monopoly rather than match it,” especially given the “penal character” of the current statutory regime.
[82] For sample
analyses, see Stefan Larsson, et al., Law,
Norms, Piracy and Online Anonymity –
Practices of de-identification in the global file sharing community,
Journal of Research in Interactive Marketing, vol. 6, no. 4 (2012), 260;
Jonathan M. Barnett, The
Costs of Free: Commoditization, Bundling and Concentration, Journal of
Institutional Economics, vol. 14 (2018), 1097.
[83] See, e.g., La Quadrature du Net v. Premier ministre, C.J.E.U., Full Court, Case C‑470/21, April 30, 2024, ECLI:EU:C:2024:370. The E.U. Court of Justice here sought to “balance” privacy or other “fundamental rights” with “public-interest imperatives” in formulating criteria for judicially or comparably reviewing the collection of personal data possibly relevant for overseeing copyright uses online.
[84] For examples, see Jeremy Wade Morris, Music Platforms and the Optimization of Culture, Social Media + Society, vol. 6, no. 3 (2020). Arguably, human creators’ or disseminators’ constitutionally protected interests in free expression do not extend to fully automated outputs. For further analysis, see Dan L. Burk, Asemic Defamation, or, the Death of the AI Speaker, First Amendment Law Review, vol. 22 (2024) (forthcoming).
[85] For critical analysis, see Guido Westkamp, Two Constitutional Cultures: Technological Enforcement and User Creativity: The Impending Collapse of the EU Copyright Regime?, International Review of Intellectual Property, and Competition Law [I.I.C.], vol. 53 (2022), 62.
[86] For analyses of U.S. and European regimes, see Annemarie Bridy, Copyright’s Digital Deputies: DMCA-Plus Enforcement by Internet Intermediaries, in Research Handbook on Electronic Commerce Law, ed. John A. Rothchild (Edward Elgar, 2016), 185; João Pedro Quintais, et al., Copyright Content Moderation in the European Union: State of the Art, Ways Forward and Policy Recommendations, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 55 (2024), 157.
[87] For analyses, see Jonathan Griffiths, Criminal Liability for Intellectual Property Infringement in Europe: The Role of Fundamental Rights, in Criminal Enforcement of Intellectual Property, ed. Christophe Geiger (Edward Elgar, 2012), 191; Laura Tammenlehto, Copyright and Trademark Crimes in the Nordic Countries: Analysis from the Perspective of the Principle of Legality, Bergen Journal of Criminal Law and Criminal Justice, vol. 8 (2020), 18.
[88] But punitive provisions often vary opportunistically in laws of intellectual property. See Irina D. Manta, Explaining Criminal Sanctions in Intellectual Property Law, Journal of Law & Innovation, vol. 1 (2019), 16.
[89] Under our eighth principle, we broached conflicts of laws applicable to transfers of copyrights that are effective in different countries. For analysis of “pan-E.U.” rights, these arguably muddling conflicts and transfer issues, see Mireille M. M. van Eechoud, Territoriality and the Quest for a Unitary Copyright Title, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 55 (2024), 66, esp. 70-76.
[90] Under our sixth
principle, overriding laws assuring basic interests in privacy, free expression,
or open information may come to bear on enforcing copyright laws in
cross-border cases. How to resolve tensions arising between such higher laws,
on the one hand, and applicable copyright laws in conflict, on the
other? For analysis, see Paul Edward Geller, The Celestial Jam
Session: Creative Sharing Online Caught in Conflicts of Copyright Laws,
European Intellectual Property Review
[E.I.P.R.], vol. 37 (2015), 490.
[91] For further analysis of sorting out such conflicts of laws, see Paul Edward Geller, International Copyright: The Introduction, §§ 1[3][c] and 3[1], in International Copyright Law and Practice, ed. Lionel Bently (LexisNexis, 2018).
[92] Our hypothetical here varies the scene in Diva, the film
Jean-Jacques Beineix directed (1981). In the film, a “bootleg” recording is
made of the live performance of an operatic aria but only to be
played privately. Our case of the mime differs in that it has the work at issue
released to the public, even across borders, triggering foreign laws.
[93] See
[94] See,
e.g., London
Film Productions Ltd. v. Intercontinental Communications, Inc., 580 F.
Supp. 47 (S.D.N.Y. 1984); Levitin
v. Sony Music Entertainment, 101 F. Supp. 3d 376 (S.D.N.Y. 2015). In the
earlier case, at a time when the
[95] Forum-shopping has dubious mixes of reasons.
Courts may vary, inter alia, in
taking jurisdiction, in resolving conflicts of laws, and in granting relief.
For example, some judges might hesitate to issue orders calling for enforcement
abroad, and
[96]
See Berne Convention (
[97] The treaty regime has harmonized copyright
laws by formulating minimum rights in open-ended notions. See Paul Edward Geller, Legal
Transplants in International Copyright: Some Questions of Method,
[98] For analysis of jurisdictional and choice-of-law trends, see Eleonora Rosati, The localization of IP infringements in the online environment: from Web 2.0 to Web 3.0 and the Metaverse, Journal of Intellectual Property Law & Practice, vol. 18 (2023), 720.
[99] For more of such Marxist surrealism, more on
point, see Groucho Marx, On
copyright and Warner Brothers (1946).
[100] For a realist analysis of how “trouble-cases” can put law into question, see Karl N. Llewellyn, The Normative, the Legal, and the Law-Jobs: The Problem of Juristic Method, Yale Law Journal, vol. 49 (1940), 1355, at 1359-67 passim.
