By William K. Norton, Contributing Writer
Updated August 2007
Though copyrights are important instruments for protecting the intellectual property of those who express themselves in various ways, copyright litigation can also have the effect of stifling developing online technologies that have the potential to encourage future expression. In a sense, copyright gives its owner a monopoly on that expression.
Software can be viewed as expression — both in the code itself and in the communication it facilitates — and copyright therefore can have a chilling effect on this expression, as well. Because many types of software require similar coding mechanisms, or algorithms, copyrighting algorithms could force programmers to spend more time trying to “reinvent the wheel” rather than risk infringement by reusing generic procedures in creating new programs. Software writers concerned that their applications could produce lawsuits might choose not to write useful programs.
In order to balance First Amendment protections with a copyright system that protects proprietary interests, courts have carved out categories of fair use of copyrighted material. The fair-use exception “‘permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster’” (Dr. Seuss Enterprises v. Penguin Books USA, 9th Cir. 1997, quoting Iowa State Univ. Research Found. Inc. v. American Broadcasting Cos., 2nd Cir. 1980).
DMCA, encryption and expression
In 1998, Congress passed the Digital Millennium Copyright Act with the goal of strengthening copyright protection in the information age. Copyright holders worried that digital technologies would make it far easier to copy and distribute their protected material without compensation or credit. Intellectual-property owners had begun encrypting their material, and the DMCA created legal sanctions for those who tried to circumvent the digital safeguards.
The 2000 case of Universal City Studios v. Reimerdes considered whether computer programs that circumvented encryption protection for DVDs could themselves be protected as fair use. The district court noted that programming code, a means of expressing ideas, was protected in that capacity under the First Amendment. However, the court stated, “By prohibiting the provision of circumvention technology, the DMCA fundamentally altered the landscape.” Thus, the decryption software and anyone linking to it on the Internet violated the DMCA, the court ruled.
In 2001, the 2nd U.S. Circuit Court of Appeals in Universal City Studios v. Corley came to the same result as the earlier district court decision. The 2nd Circuit said that a decryption program allowing unauthorized and unlawful access to copyrighted materials loses some First Amendment protection for itself.
Sony, P2P and information flow
Though software can be considered speech, copyright and the First Amendment can also butt heads in the manner in which computer software programs disseminate information.
In Sony Corp. of America v. Universal City Studios Inc. (1984) the Supreme Court decided that Sony’s Betamax videotape recorders did not violate copyright law. The Court noted that “the sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely use for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses.” Under these circumstances, as long as the product designer did not specifically market its product for wrongful uses, and the item is fully able to carry out lawful uses, the maker is not liable for infringement even if many people use it to copy material in violation of copyright. Otherwise, copyright holders could extend their monopolization so far outside their original context as to repress technological advancement in completely different industries.
Sony argued that the copying equipment could be used legitimately for time-shifting: “recording a program to view it once at a later time, and thereafter erasing it.” The Court seemed concerned with stifling technological innovation and the resulting economic ramifications. For these reasons it denied liability. Thus, copyright had to be balanced with the value of innovation to society.
While Sony was successful in defending its use of copyrighted material, that case involved analog technology. UMG Recordings Inc. v. MP3.com Inc. (2000) considered similar facts after the passage of the DMCA. The case involved a Web site that allowed users who could prove they had purchased a CD to access its tracks online, from any computer. The tracks were encoded in the MP3 format, making the files smaller and easier to download.
Drawing an analogy from Sony, the defendants in this case argued their software was simply allowing CD owners to “space-shift” their content. However, the district court rejected MP3.com’s fair-use defense. This example demonstrates the problem in the digital age of giving consumers access to centralized servers of copyrighted material. This lesson was especially important after the advent of Napster.
Napster was the first peer-to-peer (P2P) system accused of copyright infringement. P2P programs allow individual users to connect to other users in order to transfer various types of digital content — much of it copyrighted, in this case. Napster used a centralized server to record users and the location of files on the system.
The 9th U.S. Circuit Court of Appeals had given space-shifting limited protection in Recording Industry Association of America v. Diamond Multimedia (1999), defining space-shifting, in the context of digital music, as transferring copyrighted material from a CD already owned by the transferor to another medium for the essentially exclusive use of the transferor. Such transfers were found to fall within the fair-use provisions of copyright law, so that the manufacturer of the Diamond Rio MP3 player was allowed to market its product.
It had been argued along the lines of the VCR case that songs traded on Napster were merely space-shifted and that because no profits result from free file sharing, all Napster was doing was providing its clients with a virtual VCR. But Napster opponents countered that whereas few VCR owners would have the wherewithal to make millions of dubs for sale, Napster and similar Web sites could essentially steal music on an enormous scale.
In A&M Records Inc. v. Napster (2001) the 9th Circuit did not buy the argument that Napster was meant to let users download songs they already owned or sample songs they were interested in purchasing. The court found unlawful use pervasive enough to make the system liable for encouraging such infringement. Thus, instead of forcing copyright owners to take on individual users, the court authorized copyright holders to sue Napster itself. Again, the more centralized the service allowing piracy, the more likely a network provider will be held liable for users’ copyright infringement.
Sony stood for the proposition that as long as software was seen as a product and as long as the product was capable of substantial non-infringing uses, constructive knowledge of infringing uses would not leave the designer liable. On the other hand, if the software is seen as an ongoing service, Napster tells us that the service provider is under a duty to eliminate infringing material. The 2005 Supreme Court case Metro-Goldwyn-Mayer Studios Inc. v. Groksterinvolved a new program, Grokster, that hoped to avoid the issues involved with Napster by eliminating the central server and using each user as a node to connect independently to others on the system.
Besides avoiding a central service, which had been the death knell for Napster and similar services, the defendants in Grokster were more effective in demonstrating non-infringing uses for the software. The service could be used to transmit public-domain works, including texts, films and copyrighted but authorized works such as the album “Yankee Hotel Foxtrot,” which was distributed on the service by the band Wilco.
The Supreme Court granted certiorari in order to resolve a circuit split. The Court adopted an inducement standard for third-party software’s contributory copyright infringement. Finding Grokster guilty of encouraging piracy, the Court held, “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”
Even if none of these new tech purveyors succeeded in court, continued consumer support and acceptance of such products and services reflect dissatisfaction with traditional media’s unwillingness to utilize modern technologies to connect consumers with content producers. Thus, the Internet has been a forum to challenge copyright as traditionally understood, with software serving as its revolutionary voice. Because these challenges are typically rather extreme, they usually cause a push-back from the “mainstream” industry players. Eventually all parties settle somewhere in the middle, which is why, despite plenty of P2P technologies that still allow consumers to download copyrighted content for free, most consumers have turned to legal programs such as iTunes, Rhapsody or the new Napster to download digital music.
Each of these technologies was responsible as gatekeepers of information to provide an outlet to share content. Finding the appropriate balance between copyright and certain First Amendment exceptions is crucial to encouraging continued expression. One particularly ambitious gatekeeper has been at the center of this issue in a number of ways: Google.
Google as gatekeeper to the world’s information
Google’s stated goal is to “organize the world’s information and make it universally accessible and useful.” It does this by providing metadata — data about data — for all sorts of media. This role of categorizing has becoming increasingly important with the information overload brought about by the Internet. It is imperative that information seekers be able to sort through a great deal of information to find precisely what they are looking for.
With its search engine facilitating about half of all Internet downloads, Google is a powerful categorizer of all sorts of information. Google’s search engine connects users with news, local information, maps, images and video, as well as Web sites. Some of this information, including Web sites, is submitted by site owners to Google; other content, such as Google Maps, is proprietary information purchased by Google; and some of these projects involve copyrighted content that Google works with under what it believes to be fair-use exceptions. Its most ambitious project seeking to take advantage of the fair-use doctrine in copyright law is Google Book Search.
Google developed its book search to incorporate most of the world’s published content into its search engine. The availability of each book within the book-search library depends on its copyright status. Materials in the public domain can be viewed fully, page by page, online. These books can also be saved and printed to PDF. Copyrighted works whose publishers have given permission can be viewed either fully online or in a limited fashion, with a few full pages available as a preview as well as the text around any search terms. Other copyrighted works will display search terms and a few sentences around the phrase. In all of these cases, Google provides links to Web sites where the displayed book can be bought or borrowed.
In order to develop its digital collection, Google has partnered with 17 major libraries to date: Bavarian State University, the Committee on Institutional Cooperation (Big Ten schools plus the University of Chicago), Harvard University, Ghent University (Belgium), Keio University (Japan), the National Library of Catalonia (Spain), the New York Public Library, Oxford University, Princeton University, Stanford University, University of California, Complutense University (Spain), University Library of Lausanne (Switzerland), University of Michigan, University of Texas at Austin, University of Virginia and University of Wisconsin-Madison.
Some publishers argue that Google Book Search is not fair use. From a practical point of view, their argument is based on the notion that, because Google will be profiting from publishers’ intellectual property, it should be required to compensate those publishers in some way. There are currently two lawsuits pending in the Southern District of New York, filed by the Association of American Publishers and the Author Guild. Whereas earlier Internet startups did not have the power to take on such powerful organizations, Google has continued the project in the face of these lawsuits. The company has created a great deal of momentum, and a war chest, to take on publishers and media providers.
The fair-use statute (Sec. 107 of the Copyright Act) provides four factors to determine whether a use is fair:
The 9th Circuit in 2003 in Kelly v. Arriba Soft Corp. suggested, “We must balance these factors in light of the objectives of copyright law, rather than view them as definitive or determinative tests.” In other words, Sec. 107 was not meant to prevent future common-law development. In Kelly, the court ruled that using thumbnail (reduced size) versions of copyrighted images on a search engine was fair use because the search-engine reproductions “served an entirely different function” from infringing uses. This transformative quality is one of the key aspects distinguishing fair use from infringement.
That Google’s book search is intended to bring a wealth of information to the public will likely have a positive effect on its chances of success. In addition, the support of a number of academics and librarians bolsters its case. In Williams & Wilkins Co. v. United States (1975) an appellate court ruled that photocopying journal articles for physicians and medical researchers for use in their professional work is a fair use.
On the other hand, the case law is somewhat limited in this area, and it is difficult to tell exactly how the 2nd Circuit might rule in either of Google’s two book-search cases. First of all, the court will have to decide whether Google’s digital scanning of the full copies of the books is fair use. This action seems similar to that of the defendants in their unsuccessful attempt in MP3.com. In addition, the court will have to rule whether Google’s displaying snippets is fair use. While it seems hard to believe showing a few sentences from a book would not be fair use, one should consider the effect on “microworks” like poems.
Though Google’s library project is considered novel, the company has been involved in a similar process with newspapers for years by indexing their online versions for its Web search and, most recently, Google News. Moreover, Web providers come to expect and take advantage of Google’s indexing their sites and providing searchable snippets. These site owners are allowed to opt-out, though, as copyright holders will be able to do with Google Book Search. The opt-out is an important aspect of Google’s fair-use claim. The main difference between Web providers and print publishers is that the publishers have not necessarily made their content available on the Web, availing themselves of Google’s search technology.
Whereas some publishers have taken Google on in court, others have embraced the new technology. In a June 4, 2007, episode of National Public Radio’s “All Things Considered,” a representative of Oxford University Press noted that “321,000 times in the last two years, people have clicked on an Oxford book saying ‘I want to buy this.’… We spent nothing to do that. That’s why we’re a big fan of this program.”
If Google finds success in the court cases involving its book search, it might turn its attention toward expanding fair use of other media such as music and video. While this potential exists, Google has been careful not to fight this battle yet. Google’s strategy may be to pursue a fairly likely victory in an academic field and later expand to entertainment areas. On Feb. 2, 2007, Viacom sent takedown notices demanding that YouTube, a Google-owned online video site, remove over 100,000 copyrighted videos. Google has chosen, for the time being, to engage in direct negotiations with copyright holders, offering licensing fees and revenue sharing to entice major media providers.
The proper relationship between copyright and the First Amendment is difficult to determine. The DMCA seemed to land a substantial blow to fair-use expression protected in the purview of the Copyright Act. However, while digital technologies create new opportunities and First Amendment-type expression that warrants protection, it also has the potential to facilitate massive infringement of intellectual property. Thus, it is crucial that courts strike a balance that is able to protect both of these important interests.
William K. Norton recently completed his first year at the University of Nebraska College of Law.
Jarrod F. Reich and James McWilliams contributed to this article.