LEGAL ISSUES

Section Editors: Bruce Strauch (The Citadel) Jack Montgomery (Western Kentucky University) Cases of Note — Copyright Contrib Infringement - Safe Harbor Column Editor: Bruce Strauch (The Citadel, Emeritus)

HARLAN ELLISON V. STEPHEN ROB- Anderson and AOL Contrib Infringement ERTSON AND AMERICA ONLINE INC. Around April of 2000, Stephen Robertson For Ellison to win, he must show AOL UNITED STATES COURT OF APPEALS posted four Ellison (copyrighted) short stories knew infringement was taking place and con- FOR THE NINTH CIRCUIT, 357 F.3d 1072; on the USENET, a peer-to-peer file sharing tributed to it. 2004 U.S. App. LEXIS 2074. network. The particular USENET newsgroup Knowledge Harlan Ellison (b. 1934) has published — alt.binaries.e-book — was primarily a vehi- over 1,700 short stories, novellas, screenplays, cle for exchanging unauthorized digital copies Incredibly, AOL had changed its contact comic book scripts, teleplays, and essays. He’s of works by famous authors. email address but waited some months to won Hugos, Nebulas and Edgars. Famous register the change with the U.S. Copyright AOL subscribers are given access to Office and failed to configure the old address novels include Web of the City, Spider Kiss, The USENET, so Ellison emailed AOL, warning Starlost, A Boy and His Dog. Whew. to forward new messages. Which was why of the infringement in compliance with notifi- they didn’t get Ellison’s notice. He was expelled from Ohio State for belt- cation procedures of the Digital Millennium ing a professor who belittled his writing skills. Copyright Act (DMCA). He got no reply. Further, AOL had received a phone call And he proceeded to send said prof a copy of AOL claims to have not received it. from a subscriber telling them of infringing activity on the alt.binaries.e-book group. each and every story he published. Which it hadn’t. But there’s a reason for it They don’t address whether a lone phone He refuses to use a computer and types as you’ll see below. on a manual typewriter. He voiced himself call to a behemoth corporation should trigger Ellison sued Anderson, and included AOL knowledge. But that’s why it’s a jury question. on the Scooby-Doo! Mystery Incorporated. for vicarious and contributory copyright in- The episode “The Shriek- fringement. Upon receipt of ser- Material Contribution ing Madness” was H.P. vice of suit, AOL blocked users’ AOL provided a service that automatically Lovecraft inspired. access to alt.binaries.e-book. distributed all USENET postings, infringing And he was in a scene At the trial court level, AOL and noninfringing when it knew of the infring- with Milhouse on The ing stuff. This can be a material contribution, Simpsons. got summary judgment on direct and vicarious copyright making for a triable issue. Religious Tech. Ctr. Yes, what a char- infringement, but was told v. Netcom On-Line Communication Servs., acter. He has some contributory infringement was Inc., 907 F. Supp. 1361, 1375 (N.D. Cal. 1995). famous quotes. a triable fact. BUT, the safe Vicarious Infringement “The two most abundant things in the uni- harbor limitation of liability under the DMCA verse are hydrogen and stupidity.” blows that claim away. Ellison must show AOL received a direct “People who can’t get laid watch star trek financial benefit from the infringement and had and eat twinkies.” The Appeal the right to supervise the activity. “Love ain’t nothing but sex misspelled.” You are contributorily violating copyright AOL’s future revenue depends upon a if you induce, cause or materially contribute growing userbase. While the infringing group “You are not entitled to your opinion. You to infringement. A&M Records v. Napster, might be a small portion of AOL’s vast reve- are entitled to your informed opinion. No one Inc., 239 F.3d 1004, 1013 (9th Cir. 2001) nue, it can still be liable without regard to size. is entitled to be ignorant.” (Napster II) Indeed, almost any unit of their services might In 1962 he began churning out screen- You are vicariously liable for infringement seem relatively small next to the whole. plays for The Oscar, The Loretta Young if you enjoy a direct financial benefit from But was the infringing activity a draw for Show, The Flying Nun, Burke’s Law, Route another’s infringement and have “the right and subscribers? Ellison could not show AOL 66, The Outer Limits, Star Trek, The Man ability to supervise” the activity. Napster II, attracted customers by ripping off his stories from U.N.C.L.E., Cimarron Strip, The Alfred 239 F.3d at 1022. nor could it show it lost them when the in- Hitchcock Hour. fringement was lost. Widely known to be argumentative, he But … Safe Harbors? Good grief. What exhaustive discovery assaulted an author at the Nebula Awards Congress wrote Title II of the DMCA, would have to be undertaken to prove this? banquet, sent 213 bricks to a publisher postage Online Copyright Infringement Liability But the vicarious claim flopped. due, and a dead gopher to another by slow mail. Limitation Act (OCILLA) 17 U.S.C. § 512 And he’s sued various people. (2003) to get cooperation between copyright Leaving contrib still alive but for … Which leads us to our case. And another owners and Internet service providers. OCILLA’S Safe Harbors known quote on copyright thieves: “If you put To give greater certainty of legal exposure To be secure in a safe harbor, a service your hand in my pocket, you’ll drag back six to service providers, it created a series of “safe provider must have a termination of services inches of bloody stump.” harbors” for ordinary activities. continued on page 50

Against the Grain / June 2018 49 Questions & Answers — Copyright Column Column Editor: Laura N. Gasaway (Associate Dean for Academic Affairs, University of North Carolina-Chapel Hill School of Law, Chapel Hill, NC 27599; Phone: 919-962-2295; Fax: 919-962-1193) www.unc.edu/~unclng/gasaway.htm

QUESTION: A middle school teacher are not mentioned in the statute, the section’s purposes only.” FedEx is a commercial en- asks whether it makes a difference if she wording indicates that new types of works can terprise and FedEx concedes that its copying prints copies of an article for each student be protected under these eight broad categories, services are commercial in nature, and that its in her class or simply provides a link to an and this has occurred. For example, in the early reproduction would be impermissible under online version of the article for her students. 1980s, courts held that video games (not men- the license if FedEx were acting as a direct ANSWER: While printing copies of the tioned in section 102(a)) were copyrightable licensee. articles for students is likely a fair use, there as audiovisual works even though the sounds The court found that Great Minds’ license is a difference in printing versus providing a and images varied based on manipulation by did not explicitly address whether licensees link for students to access the article. Printing the players of the games. Therefore, there is may engage third parties to assist them in ex- concerns the reproduction and distribution unlikely any difficulty with claiming copyright ercising their own noncommercial use rights rights of the copyright owner, and fair use is protection for these works. As with other types under the license. Due to the absence of any an exception to that right. Providing a link of works, these works must be registered for clear license language to the contrary, licensees implicates no right of the owner. copyright in order for to sue infringers. Some may use third-party agents such as commercial There are practical reasons for choosing one speculate that enforcement of copyrights in VR reproduction services in furtherance of their over the other. Printing copies of the articles works may be more difficult, however. own permitted noncommercial uses. In this for students makes sense when each student Of more concern are VR created solely case, because FedEx acted as the mere agent needs a copy in front of them for a specific through artificial intelligence without human of licensee school districts when it reproduced classroom activity. Not all students may have intervention. In the United States, only human Great Minds’ materials, and because there was access to computers or the internet. Further, the authors qualify as authors for copyright purpos- no dispute that, the school districts themselves online link may not allow printing but merely es so works created by machines or animals are sought to use Great Minds’ materials for other reading on screen. On the other hand, relying not eligible for copyright protection. than permissible purposes, FedEx’s activities on a link helps train students to use the Internet QUESTION: A college librarian asks did not breach the license or violate Great and is most useful when students can read from whether schools are permitted to hire com- Minds’ copyright. the screen or print at the student’s choice. mercial copy shops to produce materials for QUESTION: An archivist asks about QUESTION: A college art librarian asks the classroom that were obtained under a archival works that enter the public domain about virtual reality art creations and whether Creative Commons license. and what are the circumstances under which they qualify for copyright protection. ANSWER: This issue was recently ad- a user must seek permission from the archives ANSWER: To date, virtual reality (VR) dressed by the Second Circuit U.S. Court of to use the work. has been primarily used in video games but Appeals in Great Minds v. FedEx Office & ANSWER: The question does not specify there is much promise that VR will soon change Print Services, 886 F.3d 91 (2d Cir. 2018). permission for what. There are two possibil- how we search the internet and use social me- Great Minds is a non-profit organization that ities here: copyright permission and access dia. Although still in its infancy, VR allows designs educational materials that it sells in permission. No permission is required to use artists to use color and light and incorporate it book form and releases them to the public copyrighted works by reproducing sections or with motion so that three-dimensional works without charge but subject to a Creative even the entire work. However, the archives seem to float in the air. Not only does VR Commons license. The license allows “any control access to the work. It owns the artifact permit the artist to create new and different member of the public to download, reproduce, and may control who, if anyone, has access types of works, but it also allows viewers to and distribute the materials subject to the to that work. Usually, access is controlled to interact with the works in ways terms of the license.” It offers protect the work from damage. Fortunately not previously possible. a “worldwide, royalty-free, for users, most archives want to make works Section 102(a) of the non-sublicensable, non-ex- available to the public and that is why they are Copyright Act defines the clusive, irrevocable license digitizing their collections, which both protects types of works that are to ... reproduce and share the artifact and provides access to the content. eligible for copyright pro- the materials, in whole or QUESTION: A publisher asks whether tection. While VR works in part, for noncommercial handwriting can be copyrighted. ANSWER: The short answer is no al- though the underlying literary work certainly may be copyrighted. It would have to be a font to consider the issues of contributory infringe- based on the handwriting of someone even to Cases of Note ment and safe harbor protection. consider the issue. One can imagine that the from page 49 handwriting would also need to be that of a In the course of plowing through this, you famous person to attract sufficient attention to might have wondered just what the damages raise the issue of copyrightability. policy for repeat offenders, implement it, and might be for the pirating of four stories. And inform its users. was the battle worth it? Although in common speech, “typeface” The 9th Circuit found AOL did not have and “font” often are used interchangeably, If we can believe Variety Feb. 5, 2002, an effective policy in place at the time due to they are not the same. A font is actually a Ellison’s lawyer didn’t take the case on con- the email SNAFU that had new emails falling file or program (when used digitally) that tingency. At that point, Ellison had shelled out into a vacuum. Or at least evidence from informs one’s printer or display how a letter $250,000 in legal bills. which a reasonable juror could conclude no or character should be shown. A “typeface” effective policy. But from Techdirt June 10, 2004 we learn is a set of letters, numbers and other symbols that “after years of fighting, it looks likeAOL that are consistently used to compose text or And So … just got fed up and has paid him off in a set- other combination of characters. In a typeface, We go back to the trial court level for a jury tlement to go away.” continued on page 51 50 Against the Grain / June 2018 Questions & Answers from page 50 Legally Speaking — U.S. Libraries design elements are repeated and consistently applied. The U.S. Copyright Office Compen- and the GDPR dium states that typefaces are not eligible for copyright protection. This is not true in some by Bill Hannay (Partner, Schiff Hardin LLP, Chicago, IL) European countries and Great Britain, however. Fonts, by contrast, may be protected by copyright as long as the font qualifies as he news in the last few weeks (as well library sent out an email announcement to all of computer software or a program and meets as your email inbox) seems to have been its registered borrowers inviting them to a free the typical requirements for copyright. Com- Tfilled with references to the “GDPR.” presentation by a lecturer on a topic of current mercially created fonts are typically available Why? Because this European Union law — interest and suppose further that some of those through license agreements and the terms of the the General Data Protection Regulation, emails went to email addresses of borrowers license apply. Thus, in the United States, only (EU) 2016/679 — went into effect on May who had moved (back) to Europe. Technically, the font software and not the artistic design of 25, 2018, and can significantly affect not only that hypothetical might fit the jurisdictional re- the typeface may be protected by copyright. A European-based companies but also compa- quirement of the GDPR, but the library’s email font based on handwriting would be protect- nies based outside the EU that do business in announcement hardly seems a likely target of able, but not typeface. Europe. Okay, but what about U.S. libraries? the law. (Especially since the service, i.e., the QUESTION: The manager of a campus The short (lawyerly) answer is that the GDPR lecture, is not being provided in the EU.) bookstore asks about the recent fake textbook may or may not apply to them. Of course, if the hypothetical were changed case. The GDPR wrought a major change in the to one in which the U.S. library regularly ANSWER: On April 5, 2018, the federal territorial scope of EU data protection law. Un- offered some sorts of goods or services that district court for the Southern District of New der Article 3 of the GDPR, the Regulation ap- would be delivered in the EU, then a different York fined Book Dog Books, a textbook sell- plies inter alia to the “processing” of “personal conclusion would seem appropriate. In this ing company, $34.2 million for selling fake data” of “data subjects” (i.e., individuals) who circumstance — which may be far-fetched — textbooks. The court ruled in favor of the reside in the EU by a “controller or processor” the U.S. library would be well-advised to bring Educational Publishers Enforcement Group that is not “established” in the EU, where the its data protection scheme into compliance (comprised of Cengage, Pearson Education, “processing activities” are related to: with the GDPR. John Wiley, and McGraw-Hill Education) “(a) the offering of goods or services, One simple step you can take to comply and awarded damages for both trademark and irrespective of whether a payment of with the GDPR is for the library to obtain ex- copyright infringement. Book Dog Books is the data subject is required, to such data plicit consent from the data subjects (e.g., the the parent company for a number of textbook subjects in the [European] Union; or individual borrowers) to use their personal data selling companies. At issue were pirated “(b) the monitoring of their behaviour as to email information about library programs copies and non-U.S. editions of textbooks. far as their behaviour takes place within including offers of goods or services. Litigation has been ongoing for a number of the [European] Union.” Library registration forms often include years. According to the publishers’ attorney, Thus, for example, a U.S. company this sort of routine consent, but if not, it “The jury in this case recognized the inherent is subject to the GDPR’s provisions if is easy enough to add it. (This is one value of textbooks and educational publishers, it “processes” personal data of an indi- reason you have recently been receiv- and that book distributors must exercise vig- vidual residing in the EU when the data ing notices of changes in Terms of Use ilance to avoid buying and selling counterfeit is accessed for the purpose of offering agreements from vendors and others.) textbooks.” Book Dog Books has announced goods or services or of monitoring the that it will appeal. See John Wiley & Sons v. There are other steps necessary for individual’s behavior in the EU. How full compliance with the GDPR, and Book Dog Books, S.D.N.Y., April 5, 2019, case does that fit with U.S. libraries? Let’s 1:13-cv-00816-WHP-GWG. those are somewhat more complicated. walk through the analysis: But these systemic changes may not QUESTION: A public librarian asks First, does your library collect “per- be necessary, if your library does not about the huge number of copyrighted works sonal data”? Sure, you do. Every time a engage in the data processing activities that will enter the public domain in 2019. new borrower registers, you collect his or her that would bring it within the jurisdictional ANSWER: It is true that an enormous name and contact information. That’s personal parameters of the GDPR. number of works will enter the public domain data. Every time, he or she checks out a book, beginning on January 1, 2019, and each Janu- that information is recorded … and what people ary thereafter. When the Copyright Act of 1976 are reading is very personal data. William M. Hannay is a partner in the was passed, the term of copyright changed Second, does your library collect personal Chicago-based law firm,Schiff Hardin LLP, to life of the author and 50 years; in 1998, data relating to individuals who reside in the and is a frequent contributor to Against the the Sonny Bono Copyright Extension Act EU? Local public libraries probably don’t, but Grain and a regular speaker at the Charles- increased it to life of the author plus 70 years. university and research libraries almost surely ton Conference. He can be reached at Works published between 1923 and 1963 have some borrowers that are EU residents: . originally received 28 years of protection. At foreign-exchange students, visiting faculty, the end of that period, they could be renewed and their spouses and children. for a second 28 years; if not so renewed, they Endnotes passed into the public domain. The Copyright Third — and this is the most thought-pro- Act of 1976 gave those renewed an additional voking part of the analysis — does your library 1. The preamble to the EU regulation “process” (let’s just say “use”) the personal explains “monitoring” behavior as follows: 19 years of protection for a total of 75 years. “whether natural persons are tracked on The Sonny Bono Act also increased the max- data of the EU residents for the purpose of offering goods or services (either free or paid) the Internet including potential subsequent imum term of works published between 1923 use of personal data processing techniques to such individuals in the EU? (Or possibly in and 1963 to a total of 95 years. On January 1 which consist of profiling a natural person, 1, 2019, works published in 1923 that are still order to “monitor” their behavior in the EU?) particularly in order to take decisions protected by copyright will have reached that Ask yourself what possible activities a U.S. concerning her or him or for analysing or 95 years of protection and will enter the public library might engage in that would involve predicting her or his personal preferences, behaviours and attitudes.” domain. offering the library’s goods or service to an EU resident in the EU. Suppose that a U.S.

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