The Copyright Council Expert Group presented its views on reform to a full-house gathered for the 2011 Copyright Symposium, at the Australian Maritime Museum in Sydney on October 13-14. With the Attorney-General soon to release the draft Terms of Reference for a review of copyright by the Australian Law Reform Commission, this month’s feature is the paper written for the Symposium by the expert group.
To read the Copyright Council Expert Group paper, Click here.
Both the Australian Attorney-General, Robert McClelland, and the Secretary of the Attorney-General’s Department, Roger Wilkins, addressed the 2011 Copyright Symposium, held at the Australian Maritime Museum on October 13-14.
Speaking at a Symposium session entitled Who’s Responsible?, the Secretary articulated the role of the Government in relation to the “important property right” of copyright as being: “to properly define it and to properly protect it”.
The Secretary added that regulators were “severely challenged” in developing effective ways to safeguard intellectual property and, therefore, were relying on contribution from industry in the form of innovative business models providing incentives for consumers to pay for legitimate online content, as well as technologies that enable protection of content. The Government’s role would be one of:
• facilitation of industry measures to protect copyright
• advocacy on behalf of consumers in relation to industry code/s for protection
• education of the public in relation to copyright
The Attorney-General announced that his department would soon be releasing draft terms of reference for a review of Australian copyright law by the Australian Law Reform Commission. For a transcript of the Attorney-General’s speech, click on the link below:
Speaking at the 2011 Copyright Symposium, the Attorney-General has launched a public consultation on a proposal to amend the Copyright Act to broaden the scope of the Safe Harbour Scheme, which limits the remedies a court may grant for authorisation of copyright infringement by an internet service provider.
At present, the scheme only covers carriage service providers (e.g. Telstra, Optus, iiNet). The proposal is to extend the safe harbour scheme to other providers of network access, such as educational institutions, work places, or online services such as search engines.
To download the consultation paper, Click here.
By Mary Anne Reid
Australian Copyright Council
The question of what constitutes ‘fair use’ is likely to be at the centre of a new case springing from the seven-year quest by Google and a group of American universities to digitise, and make available online, the universities’ massive book collections.
On September 12 this year, the Authors Guild in the USA, the Australian Society of Authors, the Quebec Union of Writers and a number of individual authors filed suit against a partnership of five American universities and research libraries (the same universities involved in the Google Books case), over what the plaintiffs described as “one of the largest copyright infringements in history”. [1]
According to the Complaint [2]: “The Universities have directly caused millions of works that are protected by copyright holders to be scanned, stored in digital format, repeatedly copied and made available online for various uses. These actions not only violate the exclusive rights of copyright holders…but, by creating at least two databases connected to the Internet that store millions of digital copies of copyrighted books, the Universities risk the widespread, unauthorised and irreparable dissemination of these works.”
The back story
The dispute springs out of book scanning originally undertaken by Google in partnership with the universities, which precipitated the high-profile Google Books lawsuit (brought by publisher and author groups, including the Authors Guild) and the subsequent Google Books settlement, which was overturned this year by Justice Denny Chin.
So the timing of the authors’ new suit against the universities is particularly interesting given that it was filed just days before a status hearing on the Google Books settlement on September 15. Google and the other participants at the status hearing in New York reported that while “significant progress” had been made, no amended settlement had been reached. Justice Chin agreed to an extension (until July 2012) for the parties to reach agreement. [3]
Also in the mix is the rejection in August this year of another high-profile settlement – the Literary Works in Electronic Databases Copyright Litigation (the so-called Freelance case). The settlement was negotiated following the consolidation of multiple class actions brought by freelance authors against several large publishers (including the New York Times) and database providers, over use of the authors’ works in electronic databases without permission. It was initially approved by the US District Court, then overturned in a class action by a sub-set of authors. As with the Google Books settlement, one major sticking point was that authors were required to ‘opt-out-of’ rather than ‘opt-into’ the settlement on use of their works.
So how do we join the dots on these developments in the background to this most recent action by the authors? One legal expert who has been prepared to share his speculations online is New York Law School academic James Grimmelman. In his blog The Laboraturium, [4] he surmises that:
• The Freelance case “scotched any possibility of settlement on Google Books, even on much narrower terms”;
• The Google Books talks have “broken down irreparably”; and
• The authors now have nothing to lose by alienating the libraries they were until recently working with as part of the Google Books talks.
The authors’ complaint
According to the authors involved in the new suit, the copying of protected works without permission has been undertaken not only by Google (whose sophisticated scanning technologies and plentiful staff facilitated the initial and most costly part of the mass digitisation project) but also the universities and HathiTrust (which have created digital copies of works using their own equipment and personnel).
The five universities named in the suit – led by the University of Michigan, with one of the largest university libraries in the US – have created and joined a partnership of 50 research institutions called HathiTrust, which has begun combining the digital libraries of the members into a shared repository. The HathiTrust Digital Library already contains close to 10 million digital volumes, with an estimated 73 per cent being protected by copyright. [5]
The plaintiffs assert that the HathiTrust Digital Library is capable of providing access to the full content of every digital object in the database and that while access is restricted according to settings in the HathiTrust’s rights database – e.g. full view access is available for works in the public domain – works may become fully accessible and downloadable to the general public if mis-identified in the database, in case of malfunction, or if an unauthorised user obtains access.
There is also an orphan works issue at play, with four of the universities having announced their participation in HathiTrust’s Orphan Works Project, an initiative to identify and make available online to students, faculty and library patrons full copies of so-called ‘orphan works’. The first set of HathiTrust orphans is scheduled to become available in full text in mid-October. [6]
The plaintiffs say that the universities have chosen to ignore the finding by Justice Chin against the Google Books Amended Settlement Agreement: “The proposed settlement, if approved, would have created a legal framework to display out-of-print books, including so-called orphan works, to the public through a procedure approved by court after due process of law, with commercial-grade security guarantees. The Court concluded, however, that it did not have the power to create such prospective licenses to use orphan works.
“Rather than heeding the Court’s words, and allowing Congress, acting in the interest of all communities, to determine the requirements and safeguards that will govern the use of digital libraries and orphan works, Defendants have instead proceeded on their own authority, ignoring the interests of copyright holders.” [7]
The authors and their representatives are asking that the books be taken off the universities’ servers and held by a trustee. They are not seeking damages.
The nub of the dispute
The Association of Research Libraries has released a “resource packet” claiming that the action brought by the authors objects, in particular, to the orphan works issue: “The suit targets the Orphan Works Project participants who are also library partners in the Google Books project, leaving out institutions that participated in only one of the two projects.” [8]
In a memorandum prepared for the ARC and included in the resource packet, Jonathan Band (principal, Policybandwidth PLLC) concludes that the proposed uses by HathiTrust of the orphan works in question are likely to be covered by limitations set out in Section 108 of the US Copyright Act, which allows libraries to make and distribute copies of out-of-print works for requesting users, and Section 107, the general privilege of fair use. [9]
“Even if a court ultimately concludes that section 108(e) does not permit either viewing or downloading under the Proposed Use, the fair use privilege would nonetheless provide the court with a compelling basis for allowing both forms of access,” writes Band. “Fair use is available to libraries and other users even where specific limitations such as Section 108 do not apply.” [10]
The authors, however, claim that Section 108, rather than 107 should be the focus: “Section 108 of the Copyright Act explicitly regulates the extent to which libraries may lawfully reproduce copyrighted works without authorisation, the circumstances under which digital copies may be created and displayed by library patrons and when copies of orphan works may be released to the public. In short, the systematic digital copying and distribution of copyrighted works by the University and HathiTrust libraries far exceeds limitations in Section 108, which cannot be excused by fair use under Section 107.” [7]
Grimmelman [11] also believes that the orphan works aspect of the case is the most substantial: “The complaint doesn’t clearly distinguish between copyright violations from scanning books and making database copies, and copyright violations from showing books to users. The authors have a comparatively better case for the full-text Orphan Works Project than for scanning and indexing.”
The Australian connection
The suit is particularly interesting from an Australian perspective as both the Australian Society of Authors (ASA) and Angelo Loukakis – author of the award-winning fiction For the Patriarch and executive director of the ASA – are amongst the plaintiffs. Loukakis is in good company, with individual plaintiffs including novelist Fay Weldon and Pulitzer Prize-winning historian T.J. Stiles.
According to the complaint: “Mr. Loukakis owns the copyright in the book specified in Exhibit A [Vernacular Dreams, University of Queensland Press] that was, upon information and belief, unlawfully reproduced, digitised and distributed by Defendants.” [9]
We will keep you posted as the case unfolds.
[1-2] Complaint, US District Court, Southern District of New York, 12/9/2011, p.4.
[3] e-Week.com at: http://www.eweek.com/c/a/Search-Engines/Google-Books-Talks-Show-Substantial-Progress-No-Deal-818448/
[4] James Grimmelman at: http://laboratorium.net/archive/2011/09/12/the_orphan_wars
[5-7] Complaint, as above, p.3, p4, p7.
[8-9] Association of Research Libraries’ Resource Packet on Orphan Works at p.1: http://www.arl.org/news/pr/orphanworks_13sept11.shtml
[9-10] Jonathan Band, Ibid, p. 5
[11] James Grimmelman, as above.
An interesting aspect of the two copyright duration issues that have arisen in Europe and the US in recent weeks is the effort by musicians to carve out a more advantageous position for themselves in relation to the recording companies exploiting their work.
(i) Sound recordings in Europe
The European Union has taken a decision to extend the term of copyright protection offered to sound recordings from 50 to 70 years. For those who might see this as a blatant example of copyright term creep, it should be noted that the extension:
• Brings Europe on par with Australia (where sound recordings are protected from the year first published plus 70 years) and still short of the US, where copyright in sound recordings lasts for 95 years;
• Brings European performing artists, producers and session musicians working on sound recordings more in line with European composers, who already receive copyright protection lasting 70 years after their death.
While the recording industry advanced a number of arguments in the long battle to secure this extension (e.g. their reliance on revenues from 1960s-70s recordings to develop new talent), the most convincing argument for the British ministers who supported it appears to have been that many older session musicians rely for their living on the mandated performance royalties they receive from 1960s hit songs. [1]
Interestingly, there are a number of additional measures in the EU directive on term extension designed to bolster the position of performance artists and musicians in their relationship with the recording companies that exploit their work. These include [2]:
• A requirement that the rights in the recording revert to the performer where a recording company fails to offer the work for sale, in sufficient quantity, during the extended term;
• Monies (20 per cent of gross revenues from the distribution, reproduction and making available of relevant recordings) to be set aside by recording companies and distributed by collecting societies, at least once a year, for the benefit of non-featured performers who transferred their rights in the recordings in return for a one-off payment;
• A ‘clean slate’ for featured artists, writing off any un-recouped advances so that artists receive full royalties in the extended term.
(ii) America’s 35-year reversion clause
Meanwhile, in the US, musicians are preparing for some major battles with record companies and publishers over a unique piece of American copyright law – the 35-year copyright reversion clause. The clause allows authors (or their heirs) to terminate copyright grants made after 1 January 1978, after a period of 35 years.
While it applies to all types of copyright, the reversion clause is considered to be particularly problematic for record companies and publishers, given the importance of back catalogue in the music industry and the ongoing contraction in music industry revenues. Musicians unhappy with the way their work is being exploited may be able to use the reversion clause to reclaim their copyright, or put pressure on recording companies and publishers to provide better terms in order to keep the rights to exploit the works.
The counterclaim likely to be brought by the recording companies is that the sound recordings are in fact ‘works for hire’, which would make them exceptions to the 35-year reversion clause. Musicians are already preparing to refute this claim on the grounds that they received none of the benefits employees typically receive in work-for-hire situations.
The 35-year reversion clause will start to become active in January 2013, and a number of high profile artists (e.g. the Eagles) are reportedly already planning to file grant termination notices with this date in sight. [3]
[1] CMUWebsite.com at: http://www.thecmuwebsite.com/article/european-union-extends-sound-recording-copyright-term/
[2] EU Directive at:
http://ec.europa.eu/internal_market/copyright/term-protection/term-protection_en.htm
[3-4] Wired at: http://www.wired.com/epicenter/2009/11/copyright-time-bomb-set-to-disrupt-music-publishing-industries/
On September 20 the European Commission announced an historic accord between key European stakeholders on the digitising and making available of out-of-commerce books and learned journals.
The Memorandum of Understanding [1] on out-of-commerce works (books and journals that are still protected by copyright but are no longer commercially available) emerged from a stakeholder forum including libraries, authors, publishers and collecting societies, which was first convened by the European Commission in 2010. According to the Commission, the accord represents for the European citizen “an unprecedented opportunity to have access to books that would otherwise have fallen into oblivion”. [2]
The main elements of the MoU are:
• It is sector specific (books and journals only);
• It is based on voluntary licensing agreements between publicly accessible cultural institutions and rights holders and their representatives, to be negotiated in the country of first publication;
• The determination of out-of-commerce status will be decided in the country of first publication according to criteria defined by the parties to the licensing agreement;
• The types of uses of the works will be agreed by the parties in each licensing agreement (e.g. non-commercial use, commercial use, cross-border use);
• It forsees the need for solutions when not all rights holders are represented by a collective management organisation.
Under the MoU, licences for works that are out of commerce can only be granted by collective management organisations (or collecting societies in Australian parlance) whose members include a substantial number of authors and publishers affected by the agreement. The collective management organisation will be required to publicise each digital library project widely so that all affected stakeholders can decide whether or not to participate. Where the agreement includes cross-border and/or commercial uses in its scope, a specific procedure to reach rights holders whose works are used frequently or intensively is to be considered. Rights holders will have the opportunity withdraw any or all of their works from the agreement.
Finally – and this is where the accord breaks new ground in many territories – where the agreement will affect rights holders who are not members of a collecting society, “the collective management organisation which manages rights of the same category in that member state of first publication shall be presumed to manage the rights in respect of such work.” [3] This principle is modelled on existing arrangements in certain Nordic countries and is known as extended collective licensing. As the MoU is not a legally binding instrument, it anticipates that “legislation might be required to create a legal basis for the presumption” [about non-members].
Also, where an agreement includes trans-border and/or commercial uses, the collective management organisation may limit its licence of works that are out-of-commerce to those of represented rights owners.
Signatories to the MoU are: the International Federation of Reproductive Rights Organisations, Federation of European Publishers, International Association of Scientific, Technical and Medical Publishers, European Publishers Council, European Visual Artists, European Writers’ Council, European Federation of Journalists, European Bureau of Library, Information and Documentation Associations, Association of European Research Libraries, European Library and Archives Organisations, Liber Scientific Libraries, and Conference of European National Librarians.
Commenting on the accord in Intellectual Property Watch [4], the executive director of the European Publishers Council (EPC), Angela Wade, said the parties were united in their aim to find voluntary licensing solutions that fully respect copyright: “In the case of books and learned journals, it was important that everyone agreed from the outset that rights holders should always have the first option to digitise and make available an out-of-commerce work, as more works are commercialised to feed flourishing ebook services.”
It was unclear, however, whether the approach would be attractive to the audiovisual sector, Wade said.
The release of the MOU follows the European Commission’s proposal, in May this year, for a Directive on certain permitted uses of orphan works. Together, the two initiatives form a combined EU strategy to preserve and disseminate Europe’s cultural and intellectual heritage.
According to the CEO of the International Federation of Reproduction Rights Organisations, Olav Stokkmo, the new MoU will have a flow-on effect on use of orphan works: “It will solve the problem of orphan works because it will allow such content to be included in collective licences,” he said. “This does not mean that EU legislation on orphan works is not necessary, however, because stakeholders in some countries may not use the MoU.” [5]
[1] European Commission, MoU, at: http://ec.europa.eu/commission_2010-2014/barnier/headlines/news/2011/09/20110920_en.htm
[2] Press release (Memo/11/619), European Commission, 20/09/11
[3] EC MoU, as above, p.3.
[4-5] IPWatch at: http://www.ip-watch.org/weblog/2011/09/20/breakthrough-gives-eu-principles-for-digitising-out-of-print-books/