©2018. Published in Landslide, Vol. 10, No. 4, March/April 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
During the heyday of Hollywood in the 1930s, MGM claimed to have “more stars than there are in heaven.” Today, the copyright bar has its own stars—and so many of them are women. Women have always been strong leaders in copyright law, going back to Barbara Ringer, Bella Linden, Thea Zavin, and Dorothy Schrader.
I had the pleasure of talking with six of today’s copyright stars, all colleagues and friends, about a diversity of opinions on some of the hot copyright issues of the day: June Besek, executive director of the Kernochan Center for Law, Media and the Arts at Columbia Law School; Dale Cendali, head of Kirkland & Ellis’s Copyright, Trademark, Internet and Advertising practice group; Mary Rasenberger, executive director of the Authors Guild and Authors Guild Foundation; Kate Spelman, shareholder with Lane Powell; Francine Ward, sole practitioner and author of Esteemable Acts; and Nancy Wolff, partner with Cowan, DeBaets, Abrahams & Sheppard. Collectively and individually they represent a perfect cross section of the many opportunities provided by careers in copyright law—private practice, in-house practice, government service, and academia. In my opinion, each one of these lawyers tops anybody’s list of the greats in our profession, without any reference to gender.
Our lively exchange reminds me that the copyright portfolio in the digital age is in very good hands—and that our creators will surely continue to enrich our lives with music, literature, and art. My fellow lawyers will all help shape the larger debate over the copyright rules of the road in the digital age.
Are you optimistic about the survival of copyright in the digital age?
June Besek (JB): I think copyright will survive but will evolve. Over time we’re likely to see more collective licensing, for example.
Dale Cendali (DC): While digitalization has meant that it is now very easy to copy things on a massive scale that previously would not have been technologically possible, copyright is more important than ever in protecting content for just this reason. Copyright, moreover, has adapted to numerous types of groundbreaking technology since its historic inception centuries ago, and I think it is flexible enough to continue to adapt. It is true, however, that the current system under the Digital Millennium Copyright Act (DMCA) requiring copyright holders to police the Internet and send cascades of takedown notices is a challenging strain for copyright owners.
Mary Rasenberger (MR): I am an optimist by nature—so yes, copyright will survive, although its health could be better. In the last decade or so, courts have gradually chipped away at copyright, and respect for copyright has plummeted. This is due to the ease of copying and distributing digital works by ordinary citizens, as well as the vocal anticopyright movement fueled by the Internet sector.
I represent authors, and according to a recent Authors Guild survey, average incomes for full-time authors are down by 30 percent, from $25,000 to $17,500.1 This means that many talented authors (including authors whose work you read and know) can little afford to lose any income before they are forced to seek other work. Erosion of copyright protection is not the only cause, but it plays a significant role.
Kate Spelman (KS): Copyright in the digital age forms a spectrum of protection. On the one end is the traditional copyright protection by which authors and artists are economically rewarded and there are monies that are paid to the authors and artists. On the other end is what we call “open” copyright, where authors and artists are not compensated monetarily but there are rewards in reputational enhancement, in speed in getting information out rather than slowly by curation cycles, in attribution, and in delight when participating in the “sharing” economy. There are many points in between these economic and noneconomic reward spectrum ends. We are just beginning to learn the benefits and the choices that come with the many different points of that spectrum. I am optimistic that we will continue to find our way in learning the different choice points there.
Francine Ward (FW): I have a different take. It appears that courts go out of their way to protect copyright infringers under the guise of technological advancements. By expanding fair use to the extent many courts have chosen to do, those courts have encouraged copyright infringement and discouraged creative advancement. If infringers spent more time creating original content rather than taking what does not belong to them, the world would be a better place. I obviously have a bias in favor of original content creators.
Nancy Wolff (NW): In my opinion, copyright as a right under a federal statute will survive, but how it is interpreted and enforced may differ. For the past few decades, courts have been favoring new technologies over individual copyright owners, in part not to interfere with what was a nascent industry. Courts similarly favored the railway industry in tort cases when the railways were a developing industry. This changed over time. As the larger technology and search companies have matured, I am cautiously optimistic the courts may begin to evaluate issues in a way that places more responsibility on these industries to cooperate with rights owners to discourage blatant infringement and restore the balance that is needed to truly accomplish the goals of copyright—to encourage authors for the benefit of society. There has been a perceived divide between creators and users, but in fact all creators are users, and vice versa. Now that many of the technology companies are starting to create content themselves, the divide may start to dissolve.
Do you think the courts generally “get it right” in dealing with copyright and the new technologies?
JB: It really depends on the case and the judge. I sometimes think the courts are overly susceptible to arguments by service providers that something will “kill” the Internet or is contrary to the goals of the DMCA. The DMCA had multiple goals that it tried to balance.
DC: Courts work very hard to get it right and are usually very interested in copyright cases. Sometimes the law is so subtle it can be unpredictable, and nuances may change or be seen differently. It is common to see very well-reasoned opinions at the district court and appellate levels that might have different outcomes, but it doesn’t mean someone didn’t get it right.
MR: In some cases, the courts get it right, but in many they do not. Courts, especially the Second and Ninth Circuits, which hear the lion’s share of copyright cases, have allowed Internet platforms to prosper at the expense of journalism, music, publishing, and other creative industries. In many cases involving new technologies, the courts focused on the public benefit of the uses, forgetting that copyright itself is a public benefit. In those cases, uses that were paid, licensed uses in the analog world suddenly became fair uses just because they involve digital technologies. It feels a little like courts are sometimes blinded by the dazzle of the technology.
The Second Circuit’s fair use decision in Authors Guild v. Google2 permits any entity to make digital scans of books for internal use and public display of excerpts without paying licensing fees. As a practical matter, despite the court’s efforts to narrowly decide the issues on the facts, the decision creates a rule of law that says anyone can scan millions of books and show excerpts. Many entities are already taking advantage of this ruling, and pushing the boundaries further. Since licensing for online use has supplanted other sources of income for authors, the practical effect of Google Books could be devastating. For instance, based in large part on that decision, Internet Archive’s Open Library has started “lending” recently published, in-copyright books that it scanned without permission. Any person in the world can check out a book if no one else has it, and once checked out can download the book. Even if you can convince yourself, as the Second Circuit did, that Google Books does little harm to authors, no one can say with a straight face that this Open Library program won’t significantly impact authors’ ability to monetize their books.
Cambridge University Press v. Patton3 is before the Eleventh Circuit for the second time, and it will undoubtedly reassert its earlier opinion that digitally copying book chapters for classroom use was fair use in most of the cases at issue, eliminating an important source of authors’ income. Authors used to receive licensing fees for hard copy course packs, but as a result of this case and others, they are not paid for the equivalent uses in electronic course packs, resulting in a direct transfer of money from authors and publishers to universities.
KS: Courts that get it right are those that take the time to learn how both copyright law and the particulars of the new technologies contribute mightily to what we understand about how to reward creativity and to reward investment. We are in a transitional time as two very different paradigms find coexistence. One paradigm is that of analog and scarcity. The second is that of digital and hyper-copying without limit. These are not necessarily in opposition to each other, but represent different choices.
FW: Well, I believe the courts give too much leeway to technologists. Fair use has been expanded to the extent that copyright ownership and the right to monetize one’s works has little or no value.
NW: Getting it “right” always depends on whom you are representing. With respect to individual creators, many courts have favored technology over the rights of individual creators, particularly when it comes to removing infringing content from websites under the DMCA, and when analyzing fair use cases. With respect to the DMCA, which was intended to be a compromise between Internet service providers (ISPs) and content owners, courts have strictly construed what constitutes statutorily compliant notice so that the burden of policing the Internet is almost solely on the individual creator whose work is infringed, without requiring the ISPs to take any active role in preventing further infringements, using filters or other available technologies to recognize protected works.
In addition, certain courts, and in particular the Ninth Circuit, which includes Silicon Valley, have also favored technology companies over copyright owners, in the area of image search. When the court addressed the issue, the image search results displayed low-resolution images to drive traffic back to the original site. Now, visual search results display much larger high-resolution images that are “framed” and displayed out of context of the hosting site, without directing you back to the site unless the viewer affirmatively clicks a link to visit the site. The options also include a choice to view similar images outside of the hosting site. The primary function is now closer to an aesthetic function, which would in most circumstances require a license, and the search engine is receiving the benefit of the displayed image, without any incentive to enter into a license with the copyright owner. The incentive does not exist because the Ninth Circuit only considers the exclusive right to authorize a display of an image to be violated if a copy of the image resides on the server of the infringer. This server test has created a technology end run around licensing. As a result, the creator of the content receives no benefit from this high-resolution display, and legitimate licensing of content is being sacrificed for convenience. It may be necessary to develop broader licensing schemes to compensate the creators who are losing out in the digital age.
In what recent decision, going back to the Sony Betamax case, did a court “get it right” or “get it wrong,” and for what reasons?
JB: The Supreme Court got it right in Campbell v. Acuff-Rose,4 though sometimes the lower courts have placed too much emphasis on transformative use. It’s ironic that in Campbell, the Supreme Court criticized the overreliance of the Sixth Circuit Court of Appeals on commercial use to sway the fair use determination, yet now many courts have similarly used transformative use to the same effect.
I also think the Sixth Circuit in Princeton University Press v. Michigan Document Services5 got it right; it will be interesting to see the final result in the Cambridge University Press case currently on appeal.
KS: Many decisions got it right. “Right” is a relative term. We have judges who are doing the very best job they can to help craft some clarity in this transitional time of technology.
NW: In some cases, the courts did get it wrong. In a recent decision, United States District Judge Sidney H. Stein refused to dismiss on the pleadings a copyright infringement case brought by photographer Donald Graham against Richard Prince for republishing Graham’s Instagram portrait of a Rastafarian smoking a joint and only adding a hashtag comment. Prince, relying on a favorable decision in Cariou v. Prince9 in which the court found all but five works to be fair use as a matter of law, could not have this case dismissed, as the court found the complaint sufficiently pleaded a copyright case and that it was unlikely Prince would prevail on fair use, writing: “The primary image in both works is the photograph itself. Prince has not materially altered the ‘composition, presentation, scale, color palette, and media’ originally used by Graham.”10 This case compared the two works without bias that all appropriation art is permissible because the appropriation artist chose the work. The principle that the second work must add something new and be transformative was properly considered.
What do you see as the number one copyright legislative priority in this Congress?
JB: I would say there should be two legislative priorities: First, Copyright Office modernization, including taking the Office out from under the Library of Congress. Second, copyright small claims, since many rights holders don’t have an effective means of redress.
MR: I think a top focus should be finding ways to protect the creative middle class. The Copyright Alternative in Small-Claims Enforcement Act (CASE) is a start. Most creators now have a right without a remedy because they cannot begin to afford to bring a claim in federal court; a copyright infringement litigation (even a relatively simple one decided on summary judgment) can cost a minimum of $200,000. CASE would create a tribunal in the Copyright Office that would hear infringement claims remotely and without a lawyer; recovery would be limited to $15,000 per work infringed and $30,000 in the aggregate. This would allow creators to enforce their copyrights even where the damages may be relatively low. If we are to portend that we have a working copyright system, it is imperative that creators be given an affordable alternative to federal court.
DC: Copyright modernization remains a big goal for all. It is also generally a bipartisan objective, and great progress has already been made. Beyond this there is the question of whether the political climate is right to push for changes to copyright law.
KS: For me it’s exploring where copyright sits in the legislative agenda. Copyright as an industry is a huge contributor to the GNP of the US economy. In the recent book Globalization and Intellectual Property by Alexandra George, she makes the point that copyright is a “subsidy that flows to authors and to society depending upon choices made.” We need to understand what our goals are for copyright in the future: predictable investment; predictable source for new “mash-ups” or some further new value. It will likely elude our grasp to make neutral, pre-political value determinations. There is too much that is in flux.
FW: I’d get down to basics. Congress should focus on protecting the rights of copyright owners.
NW: Based on my experience as a litigator, I too believe an alternative copyright small claims tribunal is essential. Your typical Internet infringement is generally a relatively low-value claim, for which federal court, due to the expense of enforcement, is not a viable option. This leaves the majority of the creators, and in particular individuals with no remedies for online infringements. Without any remedy, authors of images, songs, text, and other works are infringed with ease without recourse. However, the loss of licensing income, even if each unauthorized use would be of relatively modest value to these individual creators, is meaningful, and when done systematically is devastating. This leaves a significant category of authors without access to the copyright system and weakens the copyright system for everyone.
Who do you think is the best copyright judge in the country?
JB: Most judges don’t have a lot of copyright cases on their docket, so there’s not a large enough “sample” of decisions from which to draw conclusions. In the Southern District of New York, both Judge Rakoff and Judge Kaplan have rendered some thoughtful copyright decisions.
KS: We have some remarkable jurists. The best ones are those who are persevering in learning the facts, the technology, and the law and then contributing thoughtful analysis to apply the facts to the law. The worst of the copyright jurists are those who are still calling the 1976 Act the “new act,” and the jurists who take shortcuts in careful thinking to simply reduce a copyright dispute to some glib morality play (which it rarely is). It is complicated to understand and make decisions about copyright—in emerging technology and even mature technologies—as applied to what we now call “content.”
FW: Let me name two: Howard in the First Circuit in the Tenenbaum case and Kronstadt in the Central District of California.
NW: I’m not sure how to answer that. A number of judges have particular insight into copyright law—Judge Kaplan in the Southern District of New York, Judge Chin, and then Supreme Court Justice Ginsburg, but I have never rated judges.
Congress is considering taking the Copyright Office out of the Library of Congress. What do you think?
JB: I would like to see the Copyright Office out of the Library of Congress, with the Register appointed by the president (from a list of candidates recommended by an impartial panel). I don’t think it should be in the United States Patent and Trademark Office (USPTO), and would prefer to see it as a stand-alone agency with the ability to advise Congress without having its advice filtered through another agency. Since libraries are one constituency of the Copyright Office, it’s not a good idea for the Librarian to be in a position to unduly influence the Office’s decisions.
MR: I agree. It is a quaint vestige from the late nineteenth century when the Copyright Office was put in the Library for logistical reasons that no longer apply. It makes no sense today to have the head of the agency overseeing copyright—a huge part of our economy—report to the Librarian of Congress.
KS: It’s a complicated topic. The Copyright Office provides much analysis and generates many reports that Congress requests. I’ve read the proposed bill and the floor statement that accompanied introduction of the bill that would carve out the Copyright Office from the Library of Congress. I have not seen a budget of what it would cost. Without an understanding of the cost, it is hard to make a choice. Neither have I seen any analysis of whether leaving the Library of Congress would mean that the Copyright Office departs from congressional jurisdiction. So, more information is needed for me to form a conclusion.
The Library of Congress has a budget of just under $600 million; and of that, it’s not easy to conclude with certainty what the budget is, since the Office has several sources of funding, including from the Library of Congress and Copyright Office revenue from user fees. Without knowing what the financial requirements are, it’s premature to form a conclusion.
FW: I don’t really care if the physical location of the Copyright Office is in the Library of Congress. What does matter, though, is that the Copyright Office is a stand-alone entity, like the USPTO.
NW: A Copyright Office that can support the needs of the twenty-first century is important. Individuals and businesses that rely on a functioning copyright system contribute significantly to our economy. The Copyright Office needs sufficient funding to modernize, including a modern IT system, with helpful databases, and to offer services such as a copyright small claims tribunal. Further, Congress depends on the Copyright Office to study issues and provide expert advice. As libraries are a stakeholder in the copyright discussion, the Copyright Office must be free of any bias and conflict in providing services and advice. If modernization, technology upgrades, budget autonomy, and ability to give unbiased advice can be maintained without removing the Copyright Office from within the Library of Congress, then no change may be required. If not, alternatives will need to be explored, as the function of the Copyright Office to copyright and creative industries is too vital to compromise.
How did you become interested in copyright? Do you have a music background? Art or literature? Do you play a musical instrument? Or sing?
DC: I have always loved the arts and creativity. It is part of what makes us human. When I was in college, I was president of the Yale Dramatic Association, where I got to work with a lot of smart, talented people. I also had summer jobs in the professional theatre. I found I was a good organizer/producer behind the scenes and I loved it! I thought going to law school would be a way I could contribute by becoming a copyright and trademark lawyer and helping to protect artists’ rights. I also thought I would bring something to the table as I knew a lot about IP-centric industries. To me it has been a perfect fit. I adore the intellectual and policy issues, and I love the theatre of a courtroom! I feel very lucky to get paid for doing what I love and to get to work with so many amazing people!
MR: I was the one person among family and friends without any artistic talent, so I thought I could be their lawyer instead!
KS: I had the benefit of a remarkable uncle, Charles Collingwood, who was very generous in sharing his world of news casting and creative content. It was by hanging out with the likes of the Murrow Boys—Sevareid, Safer, Collingwood—and the very talented people who work behind the scenes at CBS News, who lit up the opportunity of working with authors and artists in the distribution of their efforts around the world.
FW: When I started practicing law in 1991, I had three friends who were on daytime soaps, As the World Turns, The Edge of Night, and General Hospital. All three came to me to review their new contracts. Two had IP implications, because they were also songwriters, and I knew nothing about copyright law, but I made an effort to educate myself. I took basic CLE courses and read articles to familiarize myself with the issues. In 1992, one of the partners in my firm asked me to review a contract for a very popular musical solo artist. That got me really interested in the music side of copyright. I took on publishing as a practice area when I got my first book deal from Random House in 2001. My agent got me a six-figure deal, and I made sure I got to keep certain IP rights.
NW: I always had a great respect and admiration for creative people. I appreciate the way they can help you view the world through different eyes or insights, whether the written word, paintbrush, camera, or musical instrument is their tool. In law school, copyright was the subject I found most interesting. It was creative in its own way as many issues do not have bright-line rules, such as the line between an idea and what is protectable expression. I liked to paint when I was a young attorney but found that my clients were much better at expressing themselves with art than I was. I always wanted to practice copyright since law school, but at the time not many firms had a specialized copyright practice. I was considering a career change when I did not enjoy corporate law, and I met a photographer who introduced me to a lawyer who had started “photography law.” I began working with him and developed a body of knowledge that became much more useful when images and other content started to be available for licensing online. I have since gone on to have my own practice and am now very happy at an entertainment law boutique. I still enjoy working with creative individuals, companies, and visual imagery (as well as books, music, and film).
Was your focus on copyright law a conscious decision, or serendipity?
JB: My focus on copyright law truly was serendipity. After clerking in the Southern District of New York for two years, I worked in general litigation at a small firm for a couple years, at which point I was ready for something different. I ultimately took a job with a small firm, where I was told they worked on “cutting edge” copyright issues. I was somewhat skeptical, since every firm I interviewed with told me they were working on the cutting edge of something. But my first week I helped out on a soon-to-be-filed amicus brief on the appeal in a case called Whelan v. Jaslow.11 The brief argued that copyright protection extended beyond the literal text of the code of a computer program, and protected the “structure, sequence, pattern, and organization.” The court ultimately dropped “pattern” but otherwise embraced the argument. So, as it turned out, the firm really did work on cutting-edge issues, and I got a great deal of experience in copyright law.
MR: I started out in litigation at White & Case in the stone ages, where my big case was a patent case. I loved it! Afterward, the head of our brand-new IP group asked me if I wanted to join. I said yes, and as much as I liked patents and trademark, I gradually gravitated toward copyright.
KS: For me, it was a conscious choice. I knew going into law school that I wanted to focus on areas of the law that support that magnificent category in the workforce called “creators.”
FW: My initial interest was the result of friends asking for help. However, as I learned more about copyright law, I started to really appreciate its importance and utility.
Well, everyone, it seems that we just started this conversation, and I am intrigued to continue. In many ways we will indeed continue the dialogue as we work together to better the field of copyright law. Thank you all.
1. Authors Guild, The Wages of Writing: Key Findings from the Authors Guild 2015 Member Survey 5 (2015).
2. Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015).
3. Cambridge Univ. Press v. Albert, No. 16-15726 (11th Cir. filed Aug. 26, 2016); see also Cambridge Univ. Press v. Patton, 769 F.3d 1232 (11th Cir. 2014).
4. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).
5. Princeton Univ. Press v. Mich. Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996).
6. Williams v. Bridgeport Music, Inc., No. CV13-06004, 2015 WL 4479500 (C.D. Cal. July 14, 2015).
7. Sony BMG Music Entm’t v. Tenenbaum, 719 F.3d 67 (1st Cir. 2013).
8. Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282 (S.D.N.Y. 2013).
9. Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013).
10. Graham v. Prince, No. 15-cv-10160 (S.D.N.Y. July 18, 2017).
11. See Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d Cir. 1986).