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 empowering
flesh-and-blood creators.[2] Rather than opine on copyright or like laws now
embroiling us in hard cases, we shall 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 differ
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 a moment. Suppose that, from woodblocks for
Hiroshige’s prints, a workshop he had not engaged, using his color schemes,
made further prints and sold them. An artist may now have an author's right
enforced to prevent the unauthorized publication of mechanically made
exemplars, often called “copies.”[9] Refocus on our quite different case just
hypothesized: out of Hiroshige’s prints, Van Gogh chose and wove features and
patterns into his own studies. 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, 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
matters 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 their 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 distinguish creations from technical
implementations? Copyright is claimed in what we blithely call “expressions”
that we try to disentangle from “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 sprung rhythm he heard in common speech;
nor Seurat bar others from showing their own pictures painted in the
pointillist mode he devised. Accordingly, under our second principle here,
copyright should not be enforced in texts or images to the extent that data,
extracted from such matters, were processed into any purportedly new “work”
with techniques alone.[19] Thus dramatists may stage
myriad tragedies contrived from stock plots, like that classically set out in
the “idea” of having a hero act with overweening pride and fatefully fall from
a high position. Indeed, writers may promulgate texts they unfold out of story
lines, character types, etc., and artists circulate images they configure with
compositional schemes, color or tonal palettes, etc. Authors’ rights have not
been recognized in products of mere know-how or of automated or routine
literary or artistic devices.[20] More specifically,
copyright in a computer program has not been extended to variables that it
generated.[21]
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?[22]
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.”[23] 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.[24]
We shall here explore remedies for moral
rights.[25] 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.[26] 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.[27]
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.[28] 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 later 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 referenced to the public as author of his play to avoid confusion as to
authorship and version.[29]
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.[30] 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.[31]
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.[32] 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.[33]
Copyright infringement occurs, it is
submitted, as matters like texts or images, conveying some sense of a protected
work, are disseminated without due consent.[34] 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 machine translation of 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 this flesh-and-blood translator the chance
to amplify on past culture, even with her rearticulation of a prior, protected
work. What if a rote or slavishly produced “copy,” with nothing but hack
changes or clichéd twists, abridged or counterfeited claimant’s work?[35] A court could enjoin the
infringing dissemination of this product 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.[36]
Damages or restitution are available for
copyright infringement. But in what markets does copyright assure a claimant of
relief?[37] To assess damages, a court
has to gauge harms, typically losses incurred of profits or other benefits
foreseeably attainable in any market.[38] Apart from damages, a
claimant may seek the recovery of such enrichment as has been ascertainably
gained from infringement. To quantify restitution,
the court has to sort out what copyright protects in the work at issue and to
trace net gains achieved only from infringing with such protected matters.[39] 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, quite hypothetically, that the studio making this motion picture had
not first contractually obtained rights to exploit the novel cinematically.[40] 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.[41]
Much ink has been spilled, not least in
copyright analyses, in assaying “creativity” in literature and the arts.[42] The scope of protection
turns on such findings, as discussed under our second
principle, and a judge may appraise opposing authors’ creativities
differently in fashioning relief. On the one hand, along with factors such as
threats to claimant’s markets, the relative creativity of an infringer’s work
is another equitable factor bearing on any injunction of this work. On the
other hand, only claimant’s creative and thus protected contributions to her
own work may form the matters that, as illicitly exploited, are deemed to yield
an infringer’s gains subject to restitution. To illustrate, suppose that a
plaintiff sought such remedies for the infringing dissemination of any text
substantially similar to her authorized translation of a French work into
English. Posit, too, that a defendant’s computer could render the French work
into plaintiff’s English with a program widely available at the time of her
translation. While creativity might not be plausibly invoked to fend off
injunctions of machine translations, the equitable requisite of enforceability
may preclude some relief.[43] If most users applied
software like defendant’s to the French text at issue, they could all enjoy
some English version like hers, making it hard to enjoin them en masse.
Given such technology, plaintiff’s creative contribution to any translation may
arguably be discounted, with awards reduced accordingly.[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 matters 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 matters 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 matters 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. Among media, some intermediaries from broadcasters to
internet services, many formed as private enterprises, have gained dominant
positions in the marketplace, empowering them publicly. As well, regulatory
laws and agencies keep proliferating to oversee, inter alia, setting
royalty rates for collective uses, online contents including infringing
matters, and algorithmically reprocessing copyright materials.[59] Driven by these trends, hard cases are now brought, not only to the
judiciary enforcing authors’ private rights, but to corporate and government
instances that, often with automated systems, sort out expression in the public
sphere. Under our ninth principle, we shall address shifts from 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 matters 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 matters 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 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 guide fashioning relief to resolve or defuse 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
Here
we reach the issue on which cross-border cases may turn: How to dispose of such
conflicts as appear among laws of copyright or authors’ rights of different
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 law of any treaty country,
thus to remedies for infringement threatened or suffered in that country.[96] The pertinent laws of such countries may justify enjoining infringing acts
that risk causing irreparable harm in their audiences or markets. Such law may
call for monetary awards for infringement damages resulting in a treaty country
or for restitution of illicit gains arising there. The treaty regime has
harmonized copyright in authors’ minimum rights that we encapsulated in our
core right to guide courts in hard cases.[97] In our hypothetical case, this core right would support orders to bar
or channel dissemination of her pantomime among or within countries. Monetary
awards would complement each other 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’ve others.”[99] Our willingness to
reconsider current premises differs perhaps from his. We just experimented with
notions key to authors’ rights at stake in hard cases. But how to refashion
relief to allow for proliferating creations and to recompense creators for
gracing us with cultural goods? Not without rethinking copyright to keep up
with the media increasingly making such goods freely available! Even then, we
have no assurance of saving authors’ rights.[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] For critical analysis of distinct rationales for copyright law and for 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), drawn from the initial, longer essay: 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.
[3] According to the classic analysis, hard cases arise from difficulties coordinating laws in general with relief in particular. See Aristotle, Nicomachean Ethics, trans. Robert C. Bartlett and Susan D. Collins (University of Chicago Press, 2011), bk. 5, ch. 10, at 112. Rapid flux in the media, to which copyright laws apply, might leave courts with hard cases in which authors fail to obtain equitable remedies. But see Immanuel Kant, Von der Unrechtmäßigkeit des Büchernachdrucks, Berlinische Monatschrift, 1785, 403. Kant here concludes by implying that principles alone, absent positive law, may prompt courts to fashion such relief.
[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 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] The scope of protection becomes problematic
with the advent of artificial so-called intelligence. On the one hand, as we
indicate in concluding under our fourth principle,
ostensible works, notably translations, can be algorithmically fabricated. On
the other, recycling data, “A.I.” devices tend to leach atypical elements and
aspects out of texts and images input into them, with resulting flaws in their
outputs, for example, data losses, repetitions, biases, 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; Gray v. Hudson, 28 F.4th 87, 97-102 (9th Cir. 2022). In the first case, the French Supreme Court denied such rights in “the fragrance of a perfume” attained by implementing “know-how.” In the second cited, the Full Federal Court of Australia refused copyright in telephone directories “overwhelmingly” compiled by “automated processes.” In the third, a U.S. appellate court accorded none in music as comprised of a common “ostinato” used in a “conventional arrangement.”
[21] See, e.g., Acohs Pty. Ltd. v. Ucorp Pty. Ltd., [2010] FCA 577, esp. paras. 53-61; Sony Computer Entertainment Europe Ltd. v. Datel Design and Development Ltd., C.J.E.U., 1st ch., Case C‑159/23, Oct. 17, 2024, ECLI:EU:C:2024:88. In one case, the Federal Court of Australia recognized neither authorship nor copyright insofar as prior software made data sets appear on screen. In the other, the E.U. Court of Justice ruled that copyright in a computer program did not cover its variables for the playing of a video game.
[22] 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.
[23] Letter of February
1, 1890 (no. 850), in Vincent van Gogh, The Letters, eds. Leo Jansen, et
al. (
[24] 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.
[25] For background, see Stig Strömholm, Droit Moral – The International and Comparative Scene from a Scandinavian Viewpoint, International Review of Industrial Property and Copyright Law [I.I.C.], vol. 14 (1983), 1.
[26] See Berne Convention (
[27] 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
[28] 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. But 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.
[29] Needs for such relief, proliferating with technology, may be analyzed from private or public perspectives. For example, an author may assert her private right to request her work, insofar as it is discernibly the basis for a derivative work, to be hyperlinked online in its authorized version with due credit. By contrast, some public interest may call for notice that apparent texts or images are algorithmically simulated. For this shift in other regards, see our ninth principle.
[30] 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).
[31] Serra v. U.S.
General Services Admin., 847 F.2d 1045 (2d Cir. 1988). The
[32] 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.
[33] 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,
[34] 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
[35] 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
[36] See eBay Inc. v.
MercExchange, 547
[37] 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.
[38] 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
[39] For
another analysis, see Wendy J. Gordon, Of
Harms and Benefits: Torts, Restitution, and Intellectual Property, Journal
of Legal Studies, vol. 21 (1992), 449.
[40] 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
[41] See,
e.g., Sheldon v.
Metro-Goldwyn Pictures Corp., 106 F.2d 45, 51 (2d Cir. 1939), affirmed, 309 U.S. 390 (1940). The
[42] 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.
[43] It may prove easier to enjoin a centralized service than scattered users. See, e.g., Shanghai Character License Administrative Co., Ltd. v. AI Company, Guangzhou Internet Court, Feb. 8, 2024, Yue 0192 Min Chu No. 113 (unofficial translation, just linked, by Yanzhao Zhen). The Chinese court here ordered the online provider of “A.I.”-produced images, infringing copyright, to keep them offline and to warn users.
[44] Human translators risk receiving reduced fees
with competition from machine translation. For analysis, see Lucas Nunes
Vieira, Automation
anxiety and translators, Translation
Studies, vol. 13 (2020), 1. When a court assesses damages in a case, what
market counts as harmed through infringement by a machine translation, some
prior market with higher translation fees for humans alone or the current one
with lower fees given competing machines? Plaintiff must trace, from her
copyright-protected inputs, any gains to be restituted from defendant’s
allegedly infringing exploitation of outputs. But is such tracing feasible to
the extent that “A.I.” devices take only data, out of initially “copied” works,
to reprocess? Absent evidence for copyright-based restitution, other claims for
such relief may also fail. 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 analyses of E.U. imbroglios, see Alina Trapova, From public to private enforcement: Inclusivity and copyright law, in Research Handbook on Intellectual Property Rights and Inclusivity, ed. Christina Sappa (Edward Elgar, 2024), 471; Christophe Geiger and Vincenzo Iaia, Towards an Independent EU Regulator for Copyright Issues of Generative AI: What Role for the AI Office (But More Importantly: What's Next)?, Auteurs & Media, 2024, 188.
[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 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 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 the enforcement of copyright across ever-larger 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 administratively reviewing the collection of personal data 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 (2023), 189.
[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 other analyses, 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; Cheng Lim Saw and Samuel Chan, The Subsistence and Enforcement of Copyright and Trade Mark Rights in the Metaverse, Journal of Intellectual Property Law & Practice, vol. 19 (2024), 371.
[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.
