by Lee Gesmer | Apr 21, 2023 | Copyright
Software copyright is an important area of copyright law. However, it has proven devilishly difficult for the courts to apply. As the Second Circuit observed 30 years ago, trying to apply copyright law to software is often an “attempt to fit the proverbial square peg in a round hole.” Judges know this – I’ll never forget the time that Massachusetts Federal District Court Judge Rya Zobel, during an initial case conference in a copyright case, looked me in the eye and said, “we aren’t going to have to compare source codes in this case, are we Mr. Gesmer?” (We didn’t, the case settled soon afterwards).
The Court of Appeals for the Federal Circuit (the CAFC) has grappled with this challenge, most notably in its two controversial decisions in Oracle v. Google. (2014, 2018).
Now the CAFC has issued an important decision in SAS Institute, Inc. v. World Programming Limited (April 6, 2023; Newman dissenting). The issue in this case is one that I encountered in a copyright suit in Boston, so it’s of particular interest to me. More on that below.
SAS Institute and World Programming
SAS Institute is a successful software company. Its annual revenues exceed $3 billion, and it has more than 12,000 employees. Its statistical analysis software — the “SAS System” – is used in 3,000+ companies worldwide.
Success attracts imitation, and World Programming (now part of Altair) developed a “clone” of the SAS Software. SAS didn’t react kindly to the competition – it has conducted a more-than 10 year, multi-nation legal challenge, suing World Programming once in England and twice in the United States.
What makes SAS’s most recent copyright case against World Programming unusual is the subject matter. Most software copyright litigation involves the “literal elements” of computer programs – the “source” and “object” code – essentially the “written words” or the machine code (ones and zeros) of the software.
“Non-literal” Copyright Infringement
SAS v. World Programming, however, involved the “non-literal” elements of SAS’s system. The courts define “non-literal elements” as the structure, sequence, and organization and the user interface of software. Basically, anything other than the computer code. SAS alleged that World Programming illegally copied input syntax formats and output design styles – non-literal components of the SAS System.
The idea that non-literal components of a software program can be protected by copyright has been acknowledged since the 1980s. For the last 30 years most courts have followed the “abstraction-filtration-comparison” test (AFC test) established in the 1992 Second Circuit decision in Altai v. Computer Associates. The AFC test requires the court to (1) break a software program into its constituent parts (abstraction), (2) filter out unprotectable elements (filtration) and (3) compare the remaining protectable elements to the allegedly infringing work (comparison).
If this sounds challenging to you, you are right. However, relatively few cases have actually had to undertake the real-world application of this test to the non-literal elements of a software program. And, where they have the plaintiff has almost always lost.
The District Court Case
SAS filed this case in the Eastern District of Texas. The district court judge proceeded to apply the Altai AFC test by conducting a hearing to “filter out” unprotectable elements of the SAS software. Examples of unprotected elements include ideas, facts, information in the public domain, merger material, scènes à faire and conventional display elements. Case law has established that abstraction and filtration (steps 1 and 2 of the AFC test) is performed by the judge, not the jury.
The district court held what it termed a “copyrightability hearing” and implemented an alternating, burden-shifting framework in which SAS was required to prove a valid copyright and “factual copying.” The burden then shifted to defendant (World Programming) to prove that some or all of the copied material is unprotectable. The burden then shifted back to SAS to respond and persuade the court otherwise.
Think of this as a tennis volley in which the ball crosses the net three times.
SAS satisfied the first part of this test – it showed that it had a registered copyright, and that World Programming had copied some elements of the SAS System. However, World Programming responded with evidence that many of the non-literal components of the SAS System contained factual elements, elements that were not original to SAS or that were in the public domain, unprotected mathematical and method components, conventional display elements and merger elements. World Programming asserted that all of these components should be filtered out and excluded from step 3 of the AFC test – comparison of the two software programs.
At that point, under the judge’s burden shifting approach, the burden fell on SAS to respond and address these defenses.
Inexplicably, SAS failed to do this. The court stated –
SAS has not attempted to show what World Programming pointed to as unprotectable is indeed entitled to protection. . . . Instead, when the burden shifted back to SAS, it was clear SAS had done no filtration; they simply repeated and repeated that the SAS System was “creative.” . . . SAS’s failures have raised the untenable specter of the Court taking copyright claims to trial without any filtered showing of protectable material within the asserted work. This is not a result that this Court can condone. These failures rest solely on SAS and the consequences of those failures necessarily rest upon SAS as well.
The district court then dismissed the case. SAS appealed to the Federal Circuit – a court that is notoriously pro-copyright. (See the two Oracle decisions linked to above). SAS likely planned for any appeal to go to the Federal Circuit by asserting patent infringement against World Programming and later dropping its patent claims. Nevertheless, that was enough to give the Federal Circuit jurisdiction over any appeal.
Appeal to the Federal Circuit
On appeal the central question was procedural: Was it SAS’s burden to prove that the copied elements were protectable, or was it World Programming’s burden to prove that they were not? In other words, the issue was who bears the burden of proving, as part of the filtration analysis, that the elements the defendant copied are unprotectable – the plaintiff (copyright owner) or the defendant (alleged infringer)?
The Federal Circuit was not impressed with SAS’s arguments on appeal. It noted that rather than participate in the steps required by the Altai AFC test, SAS “failed or refused” to identify the constituent elements of the SAS software that it claimed were protectable. Instead, it argued that its software was “creative” and that it had provided evidence that World Programming had engaged in “factual copying.” But it provided no evidence in relation to the “filtration” step under the 3-part Altai AFC test.
The Federal Circuit found the trial court judge’s procedure to be appropriate: “a court may reasonably adopt an analysis to determine what the ‘core of protectable expression’ is to provide the jury with accurate elements to compare in its role of determining whether infringement has occurred.” The court concluded that SAS failed to “articulate a legally viable theory” and affirmed dismissal.
In other words, to continue the tennis analogy, SAS served the ball (showed that it had copyright registrations and that World Programming had copied some elements). World Programming returned the ball, introducing evidence that many of the elements SAS had identified were unprotected by copyright, and needed to be “filtered out” before the SAS and World Programming software programs were compared. However, SAS was unable to return that volley – “The district court found that SAS refused to engage in the filtration step and chose instead to simply argue that the SAS System was ‘creative.’”
20-20 Design v. Real View – Same Issue, No Controversy
While this is an important software copyright case and will be used defensively by copyright defendants in the future, it caught my attention for a second reason, which is that I dealt with the same issue in 20-20 Design v. Real View LLC, a copyright infringement case I tried to a jury in Boston in 2010. That case dealt with the graphical user interface of a software program – “nonliteral” elements of the software. Like World Programming in the SAS case, Real View allegedly created a “clone” program, but the cloning didn’t involve the source or object code, only parts of the graphical user interface.
Massachusetts Federal District Court Judge Patti Saris ordered 20-20 Design, the plaintiff/copyright owner, to identify the elements of its software that it claimed had been infringed. Unlike SAS, 20-20 Design complied. It provided a list of 60 elements, and the court held what Judge Saris called (by analogy) a “Markman”-style evidentiary hearing, which included evidence and testimony from experts on both sides. In effect, this was the “copyrightability hearing” held by the court in the SAS case.
Judge Saris then issued a copyrightability decision holding that almost all of the items were not individually protectible. They could, however, be protected as a “compilation.” However, she ruled that as a “compilation,” the plaintiff-copyright owner was required to prove that the defendant’s software interface was “virtually identical” – a much more difficult standard to meet than the “substantial similarity” standard applied in most copyright litigation.
(Humble brag: 20-20 Design was seeking damages of $2.8 million. However, the “virtually identical” standard proved to be its downfall. Without going into detail, suffice it to say that after a 10-day jury trial and post-trial motions the judge entered judgment for 20-20 Design against Real View (my client) in the amount of $4,200. (link)
When I read the decision in SAS v. World Programming I immediately related it to the 20-20 Design/Real View case, but I couldn’t recall how Judge Saris had allocated the burden-of-proof. When I refreshed my memory I realized why – the judge and the parties never discussed this issue. It seems that everyone assumed that the plaintiff-copyright holder (20-20 Design) had the burden of proof. After 20-20 identified the copied elements Real View argued that most of them should be filtered out and 20-20 Design (unlike SAS) responded with counter arguments. In other words, the ball went over the net three times, and the judge was able to apply the Altai AFC test and “filter” 20-20’s software before trial.
Thinking back on how smoothly this procedure went in my case, it’s difficult for me to imagine how SAS chose the strategy that cost it the World Programming case, unless this case was just an attempt to outspend a smaller competitor and drive it out of the market with litigation expenses. SAS is a multi-billion-dollar company. Its lawyers are highly experienced. Why SAS chose a case strategy that seemed doomed to failure is a bit of a mystery. One possibility is that SAS knew that if it identified the elements it would be forced into a copyright compilation theory that requires proof that the infringing work is “virtually identical” to plaintiff’s work, a burden that SAS believed it could not satisfy. Another is that it gambled that the Federal Circuit – which is notoriously protective of copyright owners – would see the law its way and reverse the district court. We will never know.
Although it remains a mystery why SAS chose a case strategy that seemed destined to fail, the SAS v. World Programming decision has important implications for software copyright law. It clarifies the burden-shifting process and emphasizes the importance that the plaintiff be fully prepared to engage in the Altai AFC test’s filtration step.
Will SAS appeal this decision to the Supreme Court? Given the resources that SAS has dedicated to its litigation with World Programming over the last decade it seems likely that it will. While I view it as doubtful that the Supreme Court will hear this case, you never know.
SAS Institute v. World Programming (Fed. Cir. April 6, 2023)
by Lee Gesmer | Mar 6, 2023 | Copyright
There are a number of computer programs and websites that will allow you to create an image using artificial intelligence. One of them is Midjourney. You can see some of the Midjourney AI-generated art here.
Kris Kashtanova used Midjourney’s generative AI tool to create a comic book titled Zarya of the Dawn. She submitted the work to the Copyright Office, seeking registration, and the Office issued the registration in September 2022. However according to the Copyright Office Ms. Kashtanova did not disclose that she used artificial intelligence to create Zarya.
Soon afterwards the Office became aware – via a reporter’s inquiry and social media posts – that Ms. Kashtanova had created the comic book using artificial intelligence. The Office reconsidered the registration and, after much correspondence and argumentation with Ms. Kashtanova’s attorneys, canceled the registration, concluding that:
. . . the images in the Work that were generated by the Midjourney technology are not the product of human authorship. Because the current registration for the Work does not disclaim its Midjourney-generated content, we intend to cancel the original certificate issued to Ms. Kashtanova and issue a new one covering only the expressive material that she created.
Image from Zarya
This conclusion is the denouement in a lengthy letter from the Copyright Office analyzing the copyrightability of the images contained in the Zarya comic in detail in light of how Midjourney creates images. In correspondence with the Copyright Office Ms. Kashtanova argued that she had provided “hundreds or thousands of descriptive prompts” to Midjourney to generate “as perfect a rendition of her vision as possible.” However, based on how Midjourney creates images – essentially via a random mechanical process, notwithstanding the prompts of the human “mastermind” – the Copyright Office concluded that she was not the “author” of the resulting images for copyright purposes. The Copyright Office reasoned that “unlike other tools used by artists” (such as Adobe Photoshop), Midjourney generates images using prompts in an “unpredictable way.” “Because of the significant distance between what a user may direct Midjourney to create and the visual material Midjourney actually produces,” Ms. Kashtanova did not have enough control over the final images generated to be the “inventive or mastermind” behind the images.
Here are some takeaways from this decision.
First, artists using generative AI to create images should not assume that they own a copyright in the images. At present the Copyright Office appears firmly committed to its position that they do not, and until there are court decisions to the contrary, or Congress amends the Copyright Act to accommodate these works, the better practice is to assume no protection.
Second, it may be possible to protect an AI-created work based on human modifications to the work. This was illustrated by the Zarya decision, where Ms. Kashtanova also sought registration for images that she created using Midjourney but altered post-production using Photoshop. With respect to one of these images the Copyright Office left open the possibility that copyrightable expression had been added, and therefore the image might receive registration. However, in these cases the burden will be on the human artist to establish that the human modifications or contributions reflect sufficient expression to receive protection. And, the scope of protection would likely be limited to the modifications, not the full image.
Image from Zarya
Third, this is a fast-moving area of law. Ms. Kashtanova – or any person or company denied registration – has the right to appeal the Copyright Office’s decision to a federal district court, from which the case may go on appeal to a circuit court, or even the Supreme Court. Whether Ms Kashtanova will take that action – or whether we will have to wait for another case – remains to be seen. A court – or Congress by amendment to the Copyright Act – could change the law on copyright protection of AI images.
Lastly, the Copyright Office’s reasoning on AI images is likely to extend to text as well. Thus, if a person uses a program such as ChatGPT to create a written work, it seems unlikely that the Copyright Office would accept it for purposes of registration. Despite the best efforts of the “prompt engineer,” the resulting output is likely to be too random to fall within the Copyright Office’s views of authorship.
Update: On March 10, 2023, less than a week after I published this post, the Copyright Office issued a “statement of policy to clarify its practices for examining and registering works that contain material generated by the use of artificial intelligence technology.” (link). Here is the heart of that policy statement: “In the case of works containing AI-generated material, the Office will consider whether the AI contributions are the result of ‘mechanical reproduction’ or instead of an author’s ‘own original mental conception, to which [the author] gave visible form.’ The answer will depend on the circumstances, particularly how the AI tool operates and how it was used to create the final work. This is necessarily a case-by-case inquiry.”
How this principle will be applied in practice remains to be seen.
by Lee Gesmer | Sep 3, 2022 | Copyright
With some exceptions, every public venue that plays popular music for its customers – concert venue, bar, restaurant, shopping mall or health club – needs to enter into a blanket license agreement with ASCAP, BMI and SESAC, the performing rights organizations (PROs) that pay public performance royalties to songwriters and publishers.
Occasionally a club will fail to join a PRO, ignore warnings and be sued for copyright infringement.
Here’s a current example in which a club did sign a license with ASCAP, but allegedly failed to pay ASCAP the license fees.
Universal Music v. Calvin Theater
Two music publishers have sued Calvin Theater and its owner/manager, Eric Suher, for violating public performance rights in six compositions. Calvin Theater is a music venue in Northampton, Massachusetts, and the suit was filed in the Federal District Court for the District of Massachusetts. ASCAP manages the public performance rights for these songs.
We don’t know why Calvin Theater failed to pay ASCAP. However, the publishers’ claim is that because the venue is in breach the agreement is not in effect and the Theater has no copyright license.
Based on the allegations in the complaint this case is a good opportunity to do a short tutorial on the intersection of the music industry and copyright law.
The Infringement Involves “Musical Compositions,” Not “Sound Recordings”
Every musical work can have two copyrights – the musical composition (melody, lyrics) and the sound recording. The owners can be different, and usually are – it’s common for a record company to own the copyright in the “master” sound recording and a publishing company to own rights in the musical composition.
Calvin Theater involves the public performance of musical compositions – there is no allegation that sound recordings were illegally copied. The complaint doesn’t identify the owner of the sound recordings, nor does it need to do so.
The complaint doesn’t provide any detail about how the compositions were performed. Were the works performed by a live band? Did the Calvin Theater play a CD or stream the songs? Were the songs played over a radio? Which versions of the songs were played – the originals or cover recordings? The complaint doesn’t tell us, but it doesn’t matter – regardless of how the songs were played, the owners of the copyrights in the musical compositions are entitled to a public performance royalty. The music club should have paid that through a contract with ASCAP.
What Is The Right of Public Performance?
One of the exclusive rights held by owners of musical compositions is the right to publicly perform a work. The Copyright Act defines public performance broadly – “to perform … at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.”
If a public venue plays popular music for its customers, it needs a public performance license. If it plays music and doesn’t have one, it’s a copyright infringer.
If you’re wondering about the public performance rights of owners of sound recordings – they don’t have one, except for digital audio transmissions. 17 U.S. Code § 106
What Are Publishing Companies?
The plaintiffs in this case are publishing companies. What’s that, you ask?
A lot of composers don’t have the time or inclination to deal with the music business. Instead, they assign ownership of their compositions to a publishing company to manage. There are many publishing companies, and the largest own publishing rights to thousands of songs. Two large publishers are the two plaintiffs in this case – Universal Music Publishing and Primary Wave.
What Are Performing Rights Organizations?
The owners of compositions – whether publishing companies or the composers themselves – can’t track and police the thousands of public venues where their compositions may be performed. A complex system has evolved to deal with this – they register their compositions with one of the PROs – ASCAP, BMI or SESAC. In turn, the PROs enter into blanket license agreements with the clubs and restaurants.
The clubs pay the PROs, the PROs pay the publishing companies, and the publishing companies pay the composers. This is all regulated by contracts – thousands and thousands of contracts.
It’s even more complicated than it sounds. For a deeper dive see Songtrust’s “Modern Guide to Music Publishing.“
The Publishing Companies Are Assignees of the Publishing Rights
The two plaintiffs in this case allege that they are owners of the six compositions that have been infringed. From this we know that the composers have transferred ownership of the compositions to these companies. The publishers must be either owners or exclusive licensees to bring a copyright infringement lawsuit.
Both publishers are members of ASCAP. In order to avoid infringing the compositions of these songs, Calvin Theater needed to enter into a blanket license agreement with ASCAP and not breach the agreement.
The Owner of the Club May be Personally Liable
The complaint alleges that Eric Suher is an owner, officer and director of Calvin Theater, that he controls, manages and operates the company that owns the club, and that he has the right and ability to supervise and control the public performance of musical compositions at the club.
This is important – in my experience many lawyers and business owners don’t realize that a corporation may not shield a business owner or manager from personal liability for copyright infringement. For details on why this may be the case, see Redigi – Did Ossenmacher Know He Was Risking Personal Liability?
If the publishers win their case Suher and Calvin Theater may be jointly and severally liable for copyright infringement.
The Works Are Registered
To bring a claim of copyright infringement a work must be registered. This was uncertain until 2019, when the Supreme Court decided Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. Before that some courts held that a pending registration was sufficient.
Here the publishers provided the registration numbers and dates for each registration. The compositions were initially registered in the early/mid-1970s. None of the copyrights have expired. In fact, the composers are still alive, so the copyrights will remain in effect for at least another 70 years. Even though the copyrights have been transferred, their duration continues to follow the lives of the composers.
The Publishers Are Seeking Statutory Damages
The publishers don’t want actual damages (their lost profits) or the club’s profits attributable to the infringement – these are probably minimal. The publishers have asked for statutory damages of between $750 and $30,000 per infringing work.
Because the registrations preceded the infringements (which took place in 2022), they are entitled to seek statutory damages and, at the discretion of the judge, attorney’s fees.
However, the amount they are seeking is worth questioning – when an infringement is “willful” statutory damages may be as high as $150,000 per work infringed – in this case that would total $900,000. The publishers allege that ASCAP repeatedly told Calvin Theater that it was infringing and demanded that the Theater pay the contractual license fees. It’s not clear why the publishers are not seeking $150,000 per work based on what appears, at least for pleading purposes, to have been willful infringement.
That said, statutory damages are complicated. This table illustrates the options, depending on whether an infringement is “innocent,” “regular” or “willful”:
If the allegations are true this is a straightforward case. It illustrates the elements of a copyright case in the music industry, and how much trouble a public venue can get into by ignoring the requirement that it license rights from the performing rights organizations if it’s going to play popular music.
However, music publishers are not in business to force music venues into bankruptcy. Most likely Calvin Theater’s lawyers will tell their client that it should settle, and the publishers will accept reasonable terms. I’ll keep an eye on the case and update this post if that happens.
Update: The case was dismissed in December 2022. Very likely the dismissal was pursuant to a settlement.
by Lee Gesmer | Aug 22, 2022 | Copyright
The doctrine of fair use has been called, with some justification, the most troublesome in the whole law of copyright. Justice Blackmun. Sony v. Universal (1984)
Fair use in America simply means the right to hire a lawyer. Larry Lessig
Fair use is the great white whale of American copyright law. Enthralling, enigmatic, protean, it endlessly fascinates us even as it defeats our every attempt to subdue it. Prof. Paul Goldstein
The photo of Prince directly below was taken by Lynn Goldsmith in 1981. Andy Warhol used this photo to create an unauthorized series of sixteen silkscreens and drawings – the “Prince Series” – which appears below Goldsmith’s photo.
Conde Nast Cover
Goldsmith is a well-known rock-and-roll celebrity photographer. When Warhol passed away in 1987 the Prince Series became the property of the Warhol Foundation. Goldsmith was unaware of its existence until Condé Nast licensed one of the silkscreens for the cover of a Prince tribute magazine following Prince’s death in 2016. When Goldsmith learned that Warhol had copied her photo she sued the Warhol Foundation for copyright infringement.
Warhol’s defense in Goldsmith’s case is fair use – specifically the “transformative” branch of copyright fair use. This has its origin in Campbell v. Accuf-Rose, a 1994 case involving a parody of Roy Orbison’s song “Pretty Woman.” The Supreme Court held that a new work of art is “transformative” for purposes of copyright fair use if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”
This legal standard has proven to be subjective and inconsistent in its application. The Warhol case is a good example.
The District Court and Second Circuit Decisions in Warhol
A Southern District of New York district court judge agreed with Warhol’s defense that the Prince Series was “transformative.” The judge reasoned that while Goldsmith’s photo portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays the musician as an “iconic, larger-than-life figure.” Comparing the works side-by-side, the district court concluded that a reasonable observer would perceive that Warhol’s work has a “different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results” when compared to the Goldsmith original.
The Second Circuit Court of Appeals disagreed. It held that to satisfy the “transformative” requirement the second work (the Warhol Series) must –
. . . at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material. The judge must examine whether the secondary work’s use of its source material is in service of a fundamentally different and new artistic purpose and character, such that the secondary work stands apart from the raw material used to create it.
In the eyes of the Second Circuit Warhol’s silkscreens failed this test. Hence, they were not protected by fair use.
Interest in the case has been high since the Second Circuit issued its decision last year. It increased when the Supreme Court agreed to hear Warhol’s appeal, and has gone into overdrive as the case approaches oral argument on October 12, 2022. Warhol filed its appeal brief in early June. Goldsmith filed her opposition in early August. More than 30 amicus briefs have been filed. The Copyright Office and the Solicitor General have filed an amicus brief in support of Goldsmith, and the Solicitor General has asked for leave to participate at oral argument.
Google v. Oracle: Will It Matter to the Warhol Appeal?
An important consideration is how the Court’s 2021 ruling in Google v. Oracle may impact this case. Google is only the second time the Supreme Court has addressed fair use in depth. However, while the Court upheld Google’s fair use defense, the subject of that case was far from the traditional core of copyright – visual art, music and writings. Google involved fair use in the context of Google’s copying and reimplementation of Oracle’s Java API user interface. The Court found this to be fair use because it was socially beneficial – it allowed programmers familiar with the Java API to use their knowledge and experience to program Google’s Android operating system, rather than having to learn a new API. See Final Thoughts On Google v. Oracle.
Warhol argued that Google helped tip the scales in its favor, but the Second Circuit rejected this argument, stating that “a case that addresses fair use in such a novel and unusual context [as functional computer programs] is unlikely to work a dramatic change in the analysis of established principles as applied to a traditional area of copyrighted artistic expression.”
Will the Supreme Court affirm or reverse the Second Circuit? Setting aside Google (which is something of a one-off for copyright fair use), this is only the second time the Court will have addressed fair use since 1994 – will the Court expand fair use (by reversing the Second Circuit), contract it or tread lightly and leave it largely intact?
In pondering these questions it’s worth noting that changes in the Court’s make-up may be a significant factor in the outcome of this case.
Fair Use at the Supreme Court Without Justice Breyer
Until his retirement in June 2022 Justice Breyer had focused on intellectual property law more than any other member of the Court. He was viewed as the most liberal justice on IP issues, and he wrote the majority pro-fair use decision in Google.
Given the current make-up of the Court post-Breyer, a little armchair kremlinology is in order.
Based on their dissent in Google it seems likely that Justices Thomas and Alito will vote to uphold the Second Circuit’s decision for Goldsmith. Under their view of fair use the most important factor is the effect of Warhol’s silkscreens on the market for Goldsmith’s photo. (Google, p. 1216). The Second Circuit found that Warhol’s silkscreens negatively impacted the market for Goldsmith’s original photo in a variety of ways, and Justices Thomas and Alito are likely to overweight this factor in concluding that Warhol’s silkscreens are not protected by fair use.
The remaining justices on the new “conservative” wing of the Court – Justices Gorsuch, Kavanaugh and Barrett – favor “textualism,” the judicial philosophy that places primary weight on the normal meanings of a statute’s words, rather than public policy. It’s worth noting that the word “transformative” (indeed, the concept) appears nowhere in the Copyright Act, and is something of a judicial gloss on the statutory enumerated fair use factors. Based on a strict application of textualism these three justices may side with Justice Thomas’s view of fair use, in which case the Warhol Foundation will lose its bid to reverse the Second Circuit 5-4. If “swing conservative” Chief Justice Roberts joins the conservative wing, Warhol will lose at least 6-3.
My prediction: the Second Circuit’s ruling in favor of Lynn Goldsmith will be affirmed by at least a 5-4 vote.
Either way, affirm or reverse, will this case change fair use in the U.S.? We won’t know until the Supreme Court issues its decision, likely sometime in 2023. In the meantime, tune in to the oral argument in October and judge for yourself.
Update 5-18-23: I was correct in predicting that the Court would uphold the Second Circuit in this case. Here is the 7-2 decision – link
by Lee Gesmer | Apr 27, 2022 | Copyright
If you own or manage a website you may be familiar with the process of “photo embedding” or “inline linking” an image or video on your site. Rather than hosting the image file on your own server you retrieve the image from another Internet site and embed the content as part of your webpage’s overall display. Users can’t tell the difference, but as a technical (and legal) matter you never “copy” the image to your server.
This practice is common, and has been performed millions of times on millions of sites. You have no legal concerns since you’re just channeling the image from another site. No worries, right?
Not so fast. This is actually a hotly disputed legal issue in the world of digital copyright.
For many years there actually were no worries. Way back in 2007 the Ninth Circuit created what has come to be called the “server test” in Perfect 10, Inc. v. Amazon.com, Inc. This gave unauthorized embedding a legal green light so long as the image resided on another server. In copyright lingo the embedding site does not host any “material objects … in which a work is fixed … and from which the work can be perceived, reproduced, or otherwise communicated” and thus does not communicate a copy. 17 U.S.C. § 101.
However, in addition to the right of reproduction the Copyright Act gives the owner of a work the right of public display – copyright owners have the exclusive right to “transmit or otherwise communicate… a display of the work… to the public, by means of any device or process.” 17 U.S.C. § 101. The Ninth Circuit used similar reasoning to hold that an image is not displayed when the embedding site’s computer does not store the photographic images.
For many years the “server test” has been shaky but accepted law. A few courts around the country suggested that the Ninth Circuit’s holding that unauthorized embedding didn’t constitute public display was questionable, but there were no clear rulings on this issue.
However, in the recent decision in McGucken v. Newsweek LLC (S.D. N.Y. March 21, 2022) a federal district court in the southern district of New York (the “SDNY”) outright rejected this rule in a case in which Newsweek embedded a photographer’s Instagram post in an online news article without his permission. The court focused on the right of display and concluded that –
After all, the Copyright Act defines “display” as “to show a copy of” a work, 17 U.S.C. § 101, and not “to make and then show a copy of the copyrighted work.” . . . The Ninth Circuit’s approach, under which no display is possible unless the alleged infringer has also stored a copy of the work on the infringer’s computer, would seem to make the display right merely a subset of the reproduction right. . . . The Copyright Act makes clear, however, that to “show a copy” is to display it. . . . Therefore, the Court finds that Defendant did in fact display Plaintiff’s Photograph when it embedded the Photograph in the Article.
In fact, this is the second time an SDNY court has reached this conclusion. In Goldman v. Breitbart News Network, LLC (2018) the district court held that an embedded tweet violated the photographer-plaintiff’s right of public display: “the plain language of the Copyright Act . . . provides no basis for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act.” (See my earlier post, Is In-Line Linking Illegal Now?).
However, in Goldman the Second Circuit denied interlocutory review and the case settled before any appeal. Hence, the issue didn’t reach the Second Circuit in that case.
The split between the Ninth Circuit and the trial courts in the southern district of New York leaves website owners with a difficult decision – do they assume that Ninth Circuit law is controlling, and therefore continue to embed images? Clearly, for trial judges in SDNY the answer is “no” – these courts, at least, have made clear that they view this practice to be a violation of the right of public display. And, since a copyright plaintiff can often engage in “forum shopping” and file a copyright suit in that district the only safe conclusion is that this practice should be avoided nationwide, at least until one of the southern district cases reaches the Second Circuit on appeal and the split between the SDNY and the Ninth Circuit is resolved. If the Second Circuit creates a circuit split with the Ninth Circuit at the appellate level, the issue would be ripe for Supreme Court review.
There is another dimension to this issue that bears mentioning: the copyright issues are intertwined with complex terms, conditions and technical measures imposed by photo hosting services.
The poster child for this is Instagram. Instagram is the most popular source of images for embedded images, and it facilitates embedding by providing an embedding API. Late last year Instagram introduced a new feature allowing copyright owners to disable the embedding feature for photos they post. Before that, Instagram posters had to elect to use a private account to block unwanted embedding.
Instagram’s change to its embedding policy may reduce the likelihood of future copyright cases on this issue, but not by much. Many Instagram posters are unlikely to become aware of or implement this feature. Other social media and photo hosting sites, such as Twitter, Facebook and Flickr, have not followed Instagram’s policy. And, of course, there are millions of hobbyist and small-business sites that will not bother to block photo embedding, making it likely that this issue will continue to be the subject of litigation.
McGucken v. Newsweek LLC (S.D. N.Y. March 21, 2022)
Goldman v. Breitbart News Network, LLC 302 F.Supp.3d 585 (S.D.N.Y 2018)
by Lee Gesmer | Mar 18, 2022 | Copyright
The scope of copyright law is vast – it protects traditional art forms such as books, music, photos and paintings, but also covers more exotic forms of expression, such as computer software, choreography, literary and movie characters (Batman, James Bond) and even useful objects (product and clothing designs).
However, it can be difficult to determine whether a particular work is protected by copyright due to the passage of time or failure to comply with once-essential “formalities.” Many people know that under current copyright law a copyright lasts for the “life of the author plus 70 years” or, if the work was created by an employee and is a “work for hire” 95 years from publication. Unfortunately, for older works it’s not that simple – duration is complicated by the fact that as Congress has increased the term of copyright protection for new works it has had to struggle with readjusting the term for older works, leading to a series of arcane retroactive rules that control the copyright status of what have come to be known as “orphan works.”
THE FOUR COPYRIGHT ERAS
There are four major time periods – four “eras” – that need to be considered when determining whether a work is protected by copyright or has entered the public domain.
THE FIRST ERA: Pre-1923
Although all works published before 1923 are in the public domain today, historical context is helpful to understanding copyright duration. To find that we have to look back more than a century, to the Copyright Act of 1909. Relatively speaking, copyright protection was short then. Between 1909 and 1923 works registered with the Copyright Office were protected for 28 years from publication.
At the end of the 28 year term the owner had the option to renew the copyright. If the owner renewed protection was extended for a second consecutive 28 year term, known as the “renewal term”. Thus, with renewal works could be protected for a total of 56 years. Congress has not extended the copyright for pre-1923 works, and therefore they are in the public domain whether their copyright lasted 28 or 56 years.
THE SECOND ERA: 1923 – 1963
In 1996 Congress passed the Copyright Term Extension Act, which became effective in 1998. This law increased the copyright term for works published after that date. At the same time it reset the term for works published between 1923 and 1963. Works whose registration was still in their first term or had been renewed (by then the renewal term had been extended to 47 years, extending the full two terms to 75 years and making it possible for works published in 1923 to remain protected in 1998) were given a new life – 95 years from publication. This created a 20 year “gap” during which works that would have entered the public domain in 1998 were protected for an additional 20 years. However, the 20 year period has lapsed, and these works have been falling into the public domain annually each year since 2019. Works published in 1923 entered the public domain on January 1, 2019, works published in 1924 in 2020, and so on. To date works published in 1923, 1924, 1925 and 1926 have entered the public domain. This process will continue until 2057 when, finally, works published in 1961 will enter the public domain.
THE THIRD ERA: 1964 – 1977
Expansion of U.S. copyright law (assuming authors create their works 35 years before their death)
The third major era covers the years from 1964-1977. Once again, when Congress changed the rules in 1998 it changed the term for these works retroactively. Works published during these years are protected for 95 years, and there is no registration or renewal requirement. Thus, a work published in 1964 will fall out of copyright on January 1, 2059, works published in 1965 in 2060, and continuing until 2072, when the final cohort – 1977 works – will lose protection.
THE FOURTH ERA: 1978 – PRESENT
Works published after January 1, 1978 are protected for the life of the author + 70 years or, in the case of works for hire, 95 years. Works for hire – works created by employees – are a large share of copyright-protected works. For example, all Hollywood movies are works for hire, and therefore a movie released in 2022 will be protected for 95 years, until 2117.
The “life + 70 years” term has the potential for even longer duration for works that are not works for hire – the 30 year old author of a book published today might live another 60 years, to age 90. That 60 years, plus 70 years following the author’s death, could result in the work being protected for 130 years, until 2152. This will be true even if the author sells or assigns the work – the life of the copyright continues to run based on the life of the author, even after the author no longer owns the copyright.
ORPHAN WORKS – DETERMINING WHETHER A WORK IS PROTECTED CAN BE DIFFICULT
As this trip through history shows there has been a slow but continuous expansion of copyright duration from 28 years in 1909 to potentially well over 100 years today.
However, the fact that Congress has enacted rules retroactively can make it difficult to determine whether many older works are still under copyright. Owners can’t be identified or located and registration records are imperfect – it can be difficult to determine whether the author complied with mandatory registration and renewal requirements, or even who owns the copyright today. A copyright may have been lost based on publication without a proper copyright notice (notice was mandatory before 1977). The Duke Law School Center for the Study of the Public Domain reports that most older works are “orphan works,” where the copyright owner cannot be found at all.
Nevertheless, potential users of orphan works cannot blame inefficiencies in the system – the obligation to perform thorough research and “clear” a work rests with those wishing to use these works. Failure to do so could result in an expensive claim of copyright infringement.
Caveat lector: Copyright duration is an exceedingly complex and technical topic. This article should be viewed as a high-level summary of copyright duration for U.S. law. There are legal requirements beyond the rules described here.
by Lee Gesmer | Jul 9, 2021 | Copyright
At long last – after more than ten years, two trials and three appeals – the copyright lawsuit in Google v. Oracle has come to a close. In a surprise ending (given the emphasis on copyrightability for much of the case) on April 5, 2021 the Supreme Court held that Google’s copying of 11,500 lines of code from Oracle’s Java SE Application Programming Interface (the “Java API”) and its use in Google’s Android mobile operating system was copyright fair use.
A deeply disappointing ending for Oracle, which was hoping for a third trial, where it intended to seek ten billion dollars in damages.
I’ve written about Oracle v. Google more than any other case over the last ten years – I count 12 posts (enter “java” in the search bar above to find them or click here and scroll to bottom), and I have a few observations. But first, here is my highly compressed summary of the court’s fair use decision:
(1) The Oracle Java API is a functional “user interface,” analogous to a gas pedal in a car or the QWERTY keyboard. It is entitled to only “thin” copyright protection. (2) Google used the Java API to develop the Android platform software for a smartphone, a “transformative” use. (3) The 11,500 lines of code copied by Google represent less than one-half of one percent of the Java platform. (4) Since many programmers are familiar with the Java API, Google’s copying benefited the public by allowing programmers to use their knowledge and experience to program Android, rather than having to learn a new API. (5) Android did not harm Oracle’s actual or potential markets for the Java API (or so the jury could have found).
What Does Oracle v. Google Mean for the Copyrightability of APIs? For most of the ten years this case was in the courts the central issue was whether Oracle’s Java API was protected by copyright. However, the Supreme Court bypassed that difficult issue – it decided the case on fair use alone. The Federal Circuit’s holding that the Java API is copyrightable remains as precedent in the Federal Circuit, and the Federal Circuit decision can be cited for this holding, with the caveat “reversed on other grounds.” It’s not, however, binding on any other circuit, not even the Ninth Circuit, the circuit from which the case was appealed.
This means that anyone using an API and facing a claim of infringement could still have to relitigate copyrightability and enter the murky waters of fair use – murky because the litigation outcome of fair use is notoriously unpredictable, with a high reversal rate on appeal in the federal circuit courts.
Many companies in the software industry supporting Google had hoped for a ruling that APIs are not protectable, reversing the Federal Circuit. Instead of black and white they have continued uncertainty. This means that it remains risky to use an API without consent, since the user may still be subject to a copyright challenge.
What Does Oracle v. Google Mean for Fair Use When it Comes to APIs? To read the computer press you might mistakenly conclude that copying of APIs is fair use. While Google certainly made it easier to establish fair use in this context, the case doesn’t hold that APIs are subject to fair use in every instance, as a matter of law. For example, not every API will share the popularity of the Java API, and not every case will reflect the same economic non-impact that was present here. In other words, in a different context Google could be distinguishable.
What Does Oracle v. Google Mean for Jury Trials in Fair Use Cases? The second trial in this case was a jury trial on Google’s fair use defense. Oracle argued that fair use should be determined by the judge as a question of law de novo, while Google argued that the jury’s verdict should control, and be reversed only if it lacked substantial evidence to justify it.
The Supreme Court held that fair use is an equitable defense, and therefore should be decided by the judge. The Court didn’t rule out fact finding by a jury, but the judge delivers the last word.
As a practical matter, this means the end of jury trials in copyright fair use cases in the U.S. It’s not inconceivable that a litigant would ask for a jury on fair use, but this would now require a detailed special verdict, and it would make little sense for a plaintiff or defendant to bifurcate responsibility for the case in that manner. It’s far easier to let the judge determine the facts, since the judge will be weighing the four copyright fair use factors. So, juries are likely a thing of the past in fair use litigation.
Copyright fair use cases have often been decided on summary judgment, and given the responsibility now added to the role of the judge, summary judgment resolutions will be even more common in the future.
What Does Oracle v. Google Mean for Fair Use Beyond Software? Many copyright observers will be tempted to provide opinions on what this case means for copyright fair use, and in particular fair use outside computer software. However, it’s too early for this. This was the Supreme Court’s first major opinion on the fair use doctrine in over 25 years and it will be parsed and applied by the federal district and appellate courts for years to come in ways that are difficult to predict today. Google may broaden fair use law generally, or it may end up being a fact-bound case about functional computer code with little long-term impact for copyright fair use – it’s too early to say.
Nevertheless, it didn’t take long for lawyers to argue the implications of the case beyond software. In the visual art case Warhol v. Goldsmith, decided in March 2021 (just a few days before Google), the Second Circuit held that Andy Warhol’s use of Lynn Goldsmith’s photograph of Prince to create unauthorized silkscreen and pencil artworks was not fair use. Google was decided soon afterwards, and the Warhol Foundation filed a petition for panel rehearing and rehearing en banc, arguing that Google broadens the law of transformative use and public benefit, and established a new balancing analysis for copyright fair use which favors Warhol. As of this post, the Second Circuit has not acted on this petition.
The Supreme Court Decision Owes a Large Debt to the First Circuit’s Decision in Lotus v. Borland. I can’t read Justice Breyer’s majority decision without seeing it’s debt to the First Circuit’s 1995 decision in Lotus v. Borland, and in particular Judge Boudin’s concurring opinion in that case. To my eyes, in some respects Oracle is an endorsement of Lotus’s “method of operation” holding in the guise of fair use.
I suspect that Judge Breyer argued that the Court should hold that the Java API was a “method of operation,” and therefore uncopyrightable, as suggested by Lotus, which involved a menu-command user interface. He couldn’t persuade enough justices to back this theory, but when he wrote the opinion he had Lotus in mind, and the decision reflects it.
Google LLC v. Oracle America, Inc. (USSC April 5, 2021)
by Lee Gesmer | Aug 15, 2020 | Copyright
Will the Supreme Court dodge the thorny copyright infringement issues in the long-running (ten year) Oracle v. Google case on a technicality? The case was originally scheduled to be argued in March 2020, but after Covid-19 it was deferred to the 2020-21 term. Then, on May 4, 2020 the Court ordered the parties to file supplemental briefs:
“The parties are directed to file supplemental letter briefs addressing the appropriate standard of review for the second question presented, including but not limited to the implications of the Seventh Amendment, if any, on that standard. The briefs, not to exceed 10 pages, are to be filed simultaneously with the Clerk and served upon opposing counsel on or before 2 p.m., Friday, August 7, 2020.”
The “second question presented” is Google’s appeal of the Federal Circuit’s 2018 decision reversing a trial jury’s fair use finding in favor of Google. The “standard of review” is a reference to the “de novo” standard used by the Federal Circuit in the opinion under review. The Seventh Amendment is the constitutional right to a jury trial (“the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any court of the United States …”).
The Court gave the parties a long time to write those ten pages – three months. (Oracle’s Brief, Google’s Brief). Now that August 7, 2020 has come and gone, and the letter briefs have been filed, where does the issue stand?.
For brief background let me describe the events that led to this point.
After the Federal Circuit reversed the trial court on the copyrightability of the Java API declaring code there was a jury trial on Google’s fair use defense. The jury entered a general verdict in favor of Google. Oracle filed a motion for judgment as a matter of law before the case went to the jury, and renewed it following the verdict. The trial judge denied that motion, upholding the verdict.
Oracle appealed and in 2018 the Federal Circuit reversed, holding that Google’s fair use defense had failed as a matter of law. The Federal Circuit reviewed the verdict “de novo” – weighing the facts itself and giving no deference to the legal conclusion the jury had reached based its evaluation of those facts.
That decision (along with the Federal Circuit’s 2014 decision on copyrightability) is now before the Supreme Court.
As it turns out, the issue Oracle and Google focus on in their August 7th briefs is a legal technicality. The technicality arises from the Supreme Court’s conclusion, in a 1985 copyright case, that fair use is a “mixed” question of fact and law. However, mixed questions are not all alike, and may depend on whether a case involves primarily legal or factual work. Which predominates in this case – law or facts? Is Google right that factual issues predominate, in which case the Federal Circuit applied the incorrect standard of review? Is Oracle right that de novo review was appropriate here and that, more broadly, every fair case should be decided by judges alone?
Google argues that the Federal Circuit failed to give appropriate deference to the jury verdict and the trial judge’s post-trial decision in its favor. Google asserts that the correct legal standard, which the trial judge held favored upholding the verdict, is whether a “rational trier of fact” could have reached the jury’s conclusion. Under this standard, Google argues, the jury verdict for Google should be upheld.
On the mixed fact/law issue, Google argues that in this case factual questions predominated, and therefore the appeals court should have deferred to the jury and trial judge. To drive its point home Google provides this list of factual questions that were presented to the jury:
- “the significance of the common practice of reusing software interfaces;
- the extent to which Oracle made the declarations available to use without a license;
- whether or how Java SE was used in smartphones or was suited for that environment;
- how functional the declarations are, and thus removed from the core of copyright;
- how quantitatively or qualitatively significant the reused declarations were in comparison to the whole of the copyrighted work;
- how much Sun Microsystems (the original creator of Java SE) supported Google’s reuse;
- the degree of market harm, if any, suffered by Oracle;
- how transformative Google’s reuse of the declarations in a smartphone was;
- whether Google reused more than necessary to achieve an innovative purpose;
- whether Android competed with Java SE in the market for any derivative product;
- what were the reasonably likely future derivative markets for Java SE;
- whether the amount of creativity Android unleashed justified the reuse; and
- which of the four statutory factors or other unenumerated factors was more or less important in view of all other evidence in the record.”
Google asks the Court to find that when a jury renders a general verdict on disputed facts such as these a reviewing court must view the evidence in the light most favorable to the verdict, not perform its own de novo weighing of the evidence.
Oracle argues that fair use is a primarily legal, not factual, question properly determined de novo:
The ultimate determination whether a defendant’s copying qualifies as fair use entails primarily legal work because that analysis involves legal judgments balancing the competing policies embodied in the Copyright Act of rewarding innovation, protecting the author’s property rights, encouraging progress of science and arts, and safeguarding constitutional free expression. It is the job of a judge, not a lay jury, to calibrate these interests … Because fair use entails primarily legal work, it receives de novo review.
Based on this argument Oracle asks the Supreme Court to go one step further and hold that there is no right to a jury trial on copyright fair use, an issue the Court has never before directly addressed.
And, in case the Court doesn’t accept this argument, Oracle argues that in this particular case the balance of facts and law is mostly legal, and therefore the appeals court was right to review the jury verdict de novo.
WHAT WILL THE SUPREME COURT DO?
First, it’s unlikely that the Court will decide the broad issue of whether fair use should be tried by judge or jury. There’s no need to address such an important issue in this case, particularly when that issue hasn’t been briefed in depth and neither party raised it as a question on appeal.
However, there is a good chance the Court will decide that under the facts of this specific case the fair use determination was primarily factual, and therefore the Federal Circuit was wrong to review the case de novo – the jury verdict should have been reviewed under the “deferential” standard.
One incentive for the Court to decide the case in this manner is that it allows the Court to avoid the thorny Java API “copyrightability” issue, which is difficult both technically and legally. Deciding the case on fair use grounds avoids that issue. Deciding that the Federal Circuit failed to give proper deference to the fair use jury verdict for Google resolves the case on the narrowest possible grounds.
I’ll go out on a limb and predict that the Court will reverse the Federal Circuit based on its erroneous application of the de novo standard. I’ll also predict that rather than send the case back to the Federal Circuit for a third hearing it will uphold the verdict in favor of Google and end this marathon litigation once and for all.
Oral argument is schedule for October 7th, so stay tuned. In the meantime, the key legal documents in this case can be found on my Oracle v. Google Resource Page here.
by Lee Gesmer | Jun 8, 2020 | Copyright
After the Internet Archive launched a “National Emergency Library” the copyright community held its collective breath, waiting to see if the authors and publishers affected would tolerate it, or challenge it in court. Now we have the answer. On June 1, 2020, four major publishers — Hachette, HarperCollins, Wiley, and Penguin Random House — filed a copyright infringement suit against the Archive.
Background. In late March 2020, in response to the COVID 19 pandemic, the Internet Archive opened a digital “library” of 1.4 million books, to last until June 30, 2020 or the end of the emergency in the U.S., “whichever is later.” Anyone, anywhere in the world, can access this online collection. Users can “check out” (download) books for two weeks at no cost, with no limit on the number of copies that can be checked out at any one time. One thousand or ten thousand copies of The Catcher In The Rye could be downloaded and read simultaneously by different users. Authors and publishers receive no payments.
It appears that there was no effort to distinguish books that might be used in an educational setting from those that are unlikely to be used for education. The Internet Archive did not discriminate between books under copyright vs. books in the public domain, or popular books vs. obscure books.
The Archive explained its reason for taking this step as follows:
“to address our unprecedented global and immediate need for access to reading and research materials” . . . [to ensure] that students will have access to assigned readings and library materials that the Internet Archive has digitized for the remainder of the US academic calendar, and that people who cannot physically access their local libraries because of closure or self-quarantine can continue to read and thrive during this time of crisis, keeping themselves and others safe. . . . ‘In a global pandemic, robust digital lending options are key to a library’s ability to care for staff and the community, by allowing all of us to work remotely and maintain the recommended social distancing.’”
The Archive did offer authors and publishers an opt-out/takedown option.
Controversy. The Emergency Library immediately triggered controversy. The Archive asserted that the Emergency Library was protected by fair use. Authors and publishers disagreed. The U.S. Copyright Office analyzed the issue at the request of a U.S. senator.
The case brought by the publishers was filed in the federal district court for the Southern District of New York – a court, and an appellate circuit, that has deep experience in copyright law, and specifically copyright fair use when applied to digital copies of books.
1.4 Million Books or 127 Books? Despite headlines and press releases, the subject of the publishers’ suit is not the 1.4 million books in the Emergency Library or the Library as a whole. The four plaintiff-publishers do not own the copyright in many of these books. Many of the books may be in the public domain or may be “orphan works” whose owner is unknown. Some may not be registered with the Copyright Office, which is necessary to file an infringement action.
Rather, the complaint alleges infringement of 127 specific books, although this list may be increased by an amended complaint. Absent a class action, whether the Archive has infringed these 127 books must be considered on a work-by-work basis. Damages, if a judge or jury decides they are justified, must be decided as to each book individually, not the 127 books as a whole or based on the other 1.4 million books in the collection.
Fair Use. That said, for each book the question of infringement is likely to come down to the Internet Archive’s public justification – fair use. The answer will depend on a court’s (and possibly a jury’s) evaluation of four nonexclusive factors listed in Section 107 of the Copyright Act. The law requires an individualized analysis and weighing of the factors, making the outcome of fair use cases difficult to predict. However, the publishers have chosen carefully – the 127 books include works by authors such as Bill Bryson, Elizabeth Gilbert, Malcolm Gladwell, Erik Larson, Dennis Lehane, C.S. Lewis, Sylvia Plath, J.D. Salinger and Herman Wouk. Most of the books appear to be popular and in-print. Also, these are creative works, which are entitled to strong copyright protection.
Based on these facts, here’s my short take on the factors as applied generally to this group of books.
First Factor: the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. Under Supreme Court precedent the central issue under this factor is whether the use is “transformative.” A number of cases point to the conclusion that merely reproducing the work in a new format (in this case moving the text from a physical book to digital format) is not transformative. The Archives’ lack of commercial motivation may help it on this factor, although the publishers’ complaint argues that in fact there is an underlying commercial motivation.
Because the transformative nature of the use is so important, this factor DISFAVORS FAIR USE.[efn_noteThe Second Circuit’s opinion in the “Google Books” case, Authors Guild v. Google, Inc. (2d Cir. 2015), is unlikely to help the Archive here. In that important case Google created a search engine that provided “snippets” from books, not full text. The court found making the books searchable via a full text index, but limiting access to “snippet views,” qualified as a transformative purpose. The Emergency Library, in contrast, provides unrestricted full text access.[/efn_note]
Second Factor: the nature of the copyrighted work. As noted above, many of the 127 books identified in the complaint are novels and similarly highly creative works. As to these books, this factor DISFAVORS FAIR USE.
Third Factor: The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The books are copied in their entirety. This factor DISFAVORS FAIR USE.
Fourth Factor: The effect of the use upon the potential market for or value of the copyrighted work. It’s not clear that the Emergency Library has hurt sales of the books at issue. I expect this to be a subject of discovery and dispute on a book-by-book basis. Therefore, at present this factor is NEUTRAL.
On balance, under this analysis the Emergency Library is not protected by fair use.
As mentioned, these factors are not exclusive. In theory, a judge could rule, or a jury could find, that the emergency circumstances of a pandemic created a new fair use justification for online book sharing as to any one, or all, of these books. However, there is no legal precedent for such a ruling.
Controlled Digital Lending. It’s also notable that the suit includes a legal challenge to “controlled digital lending” (CDL) a process that the Internet Archive has permitted for some time and which publishers have objected to but not, until now, challenged in court. Under CDL the Archive lends digital copies of books as long as it owns a physical copy of the book for each copy loaned at any one time. For example, under this “owned-to-loaned” ratio if the Archive has ten copies of Catcher In The Rye in its warehouse, it will loan up to ten copies of the digitized book at any one time. The theory behind this is that it’s analogous to, or at least no more harmful than, the lending practices of a traditional library. The publishers’ challenge to controlled digital lending will require a separate copyright analysis. It appears to be a harder case for the publishers than their challenge to the Emergency Library. It may be that the publishers’ goal is to force the Archive to end the Emergency Library. Whether they will also force the Archive to stop controlled digital lending or back off on this issue is to be seen. Controlled lending may have been included as a negotiating card (“kill the Emergency Library but keep the controlled lending for now, without prejudice to our right to challenge it in the future”).
Where’s It All Going? It seems unlikely that the Internet Archive has the financial resources to defend a case of this magnitude, both in terms of defense costs and potential liability. Worst case, for the 127 books named in the complaint alone (which could be supplemented), statutory damages could exceed $19 million (127 books x $150,000 per book). The Archive could also be liable for the publishers’ legal fees.
Bottom line: one way or the other, I expect this case to settle quickly.
Update: On June 10, 2020, less than a week after I posted this article the Internet Archive announced that it was terminating the Emergency Library. Controlled digital lending will continue. (link)
by Lee Gesmer | May 12, 2020 | Copyright
I can’t let a decision on this case pass by, both because the facts are so bizarre and because the case is in my backyard, the Federal District Court for the District of Massachusetts.
The plaintiff, Leah Bassett, owns a house on Martha’s Vineyard. She entered into a several-month long lease with Joshua Spafford. Spafford allowed the house to be used to film a number of pornographic movies. Ms. Bassett sued everyone involved, and one of her claims is copyright infringement. She claims that the movies include shots of paintings, slipcovers, wall hangings and the like (over 50 works in total), all of which were created by her. She asserts that their appearance in the movie scenes violate her copyright rights (reproduction, distribution and public display).
This case received a lot of attention when it was filed. See, for example,What if your house was used in a porn shoot? This homeowner says hers was, and she’s suing (Boston Globe, March 2018)(link);Martha’s Vineyard homeowner says rental was used as porn set (New York Post, March 2018)(link). The case was assigned to District Court Judge Patti Saris, a federal judge highly experienced in copyright law. The defendants filed a motion for summary judgment, and Judge Saris issued her opinion on May 11, 2020 (link). Here’s a short summary of her ruling on the copyright claims.
Copyrightability. With a few exceptions, all of the works are protected by copyright.
De Minimis Doctrine. Maybe – the evidence in the record before the court was insufficient. Ms. Bassett has 45 days to file a document describing which of the works appear in which films, for how long, and in what level of detail. With representative screen shots. (No movies, please).
Fair Use. The first, second and third fair use factors favor Bassett. (Transformative use, nature of the work, and amount copied). The fourth factor (effect on potential market or value of the work) favors defendants. Three to one, fair use defense loses on summary judgment.
Damages. Bassett may be able to establish damages based on a“reasonable fair market licensing fee.” Damages discovery has not taken place, so this option remains open.
Bottom line and Further Thoughts: The defendants still have a chance of dismissing the case as to some of the works, depending on Bassett’s ability to overcome their de minimis defense. However, there will have to be a separate finding on each of the 50-plus works. In the meantime, Bassett has 45 days to compile her evidence on this. I expect it will be a lot of work with a spreadsheet and a stopwatch. With respect to damages, Ms. Bassett never sold her works, so she can’t prove lost profits. The defendants’ profits will be be a challenge, since it will be difficult to show that customers purchased the films because of the background art and allocate part of the profits associated with the films to her work. She hadn’t registered any of the works prior to the infringement, so statutory damages are not available. The judge is right – she is probably limited to “value of use” damages – what the film makers would have paid based on an arms-length licensing deal. However, Bassett may be hard-pressed to establish a licensing fee for her works, since she is not a commercial artist and has no sales/licensing history. And what would the producer of a porno film pay for background art in any case?
My prediction – Ms. Bassett will not go to the effort to catalogue which films her works appear in and how long each work appears in each scene. Her potential damages are not worth the effort. She survived summary judgment on several other counts (infliction of emotional distress, Chapter 93A and defamation, in particular). Including a copyright case over 50 works will only make the trial longer and more complicated, and distract the jury from the more sympathetic claims where she has a good shot at substantial damages. My two cents: discretion is the better part of valor, and Ms. Bassett will be better served by exercising discretion and dismissing her copyright claims. Bassett v. Jensen (D. Mass. May 11, 2020)
Update: I was mistaken – the plaintiff did submit additional detail on copyright infringement to the court, and on August 6, 2020 Judge Saris entered summary judgment with respect to ten items. (link, via Evernote) Presumably (and absent settlement) the case will now proceed to trial on copyright damages, along with the other claims asserted by the plaintiff-home owner.
by Lee Gesmer | May 11, 2020 | Copyright
The odds of Oracle coming out on top in the Supreme Court appeal of Oracle v. Google just took a turn for the worse.
On May 4, 2020 the following entry appeared on the Supreme Court docket in the long-pending Oracle v. Google copyright case:
The parties are directed to file supplemental letter briefs addressing the appropriate standard of review for the second question presented, including but not limited to the implications of the Seventh Amendment, if any, on that standard. The briefs, not to exceed 10 pages, are to be filed simultaneously with the Clerk and served upon opposing counsel on or before 2 p.m., Friday, August 7, 2020. (Emphasis added)
The “second question presented” is Google’s appeal of the Federal Circuit’s decision reversing a trial jury’s fair use finding in favor of Google. The “standard of review” is a reference to the “de novo” standard used by the Court of Appeals for the Federal Circuit (CAFC) in the opinion under review. The Seventh Amendment is the constitutional right to a jury trial (“the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any court of the United States …”).
This order appeared without warning after the Supreme Court bumped oral argument in this copyright case to an as yet unspecified date in the 2020 term. The case had been scheduled for argument on March 24, 2020, and the Court removed it from the calendar only 12 days before that date.
We aren’t told what prompted the Court to ask for additional briefs in this case, but the order brought to mind one of the amicus briefs filed in support of Google. The brief (link), filed by several law professors (the “Professors Brief”), focused on precisely the issued on which the Court requested briefing. The opening section of the brief summarized their argument –
Reversal of a jury verdict on the issue of fair use is extraordinarily rare. For two centuries, courts have given great deference to jury verdicts. Indeed, history overwhelmingly demonstrates that juries are uniquely situated to make the discretionary judgments that fair-use cases call for. But in this case, the Federal Circuit ignored history, along with the law. It applied de novo review to overturn the jury verdict of fair use. This is the first time that has ever happened. And it is unconstitutional. The Seventh Amendment requires that a jury finding of fair use not be “re-examined” under a de novo standard of review.
This is a powerful argument. It may be Google’s best argument now that the Court has (if belatedly) focused on this issue.
A Brief Recap. In this case following a trial, appeal and remand on infringement a jury trial was held solely on the issue of fair use. After a two week trial the jury returned a verdict for Google, finding that Google’s copy of the Java application programming interface (the Java API) was protected by fair use. Oracle appealed to the CAFC.
On appeal the CAFC held that while fair use is a mixed question of fact and law, this did not “dictate the applicable standard of review.” The CAFC concluded that in deciding copyright fair use the jury’s role “is limited to determining disputed ‘historical facts, not inferences or conclusions to be drawn from those facts.” Thus, “all jury findings relating to fair use other than its implied findings of historical fact must, under governing Supreme Court and Ninth Circuit case law, be viewed as advisory only.” Accordingly, the CAFC held that it must “assess all inferences to be drawn from the historical facts found by the jury and the ultimate question of fair use de novo” – without reference to any legal conclusion made by the previous court to hear the case.
Based on de novo review the CAFC set aside the jury verdict for Google and decided the copyright fair use issue in favor of Oracle. In other words, despite the jury verdict it decided that Google’s use of the Java API is not protected by fair use.
The CAFC’s decision was surprising, to say the least. Appellate reversal of a jury finding on fair use is virtually unprecedented in the law. A determination fair use at trial is based on a weighing of the four fair use factors, and the CAFC was wrong to abrogate the jury’s conclusion on this issue. Or so the argument went.
However, in the three merits briefs filed with the Supreme Court Google and Oracle gave short shrift to the standard of review, at least relative to the other issues. They discussed the Seventh Amendment not at all.
Clearly the Supreme Court has concluded that this issue deserves more attention.
Does the Standard of Review/Seventh Amendment Argument Have Legs? Until we see the parties briefs in August the Professors Brief may be the best guide on this issue. The Professors ground their argument in 18th and 19th Century English common law, their point being that English law courts heard issues similar to modern fair use, and that under English law the courts left the issue of fair use to the jury to decide. This is not as far-fetched as it might seem at first – the Supreme Court has often looked to English common law as an antecedent to help it interpret and apply U.S. copyright law.
From there they move to the Supreme Court’s 1998 decision in Feltner v. Columbia Pictures Television where, tying modern U.S. copyright law to English common law precedents, the Court held that the Seventh Amendment provides a right to a jury trial on all issues pertinent to an award of statutory damages. Fair use, the Professors argue, is pertinent to an award of statutory damages, since statutory damages are a potential remedy in a case premised on a fair use defense. That being the case, the Seventh Amendment applies to a jury determination on fair use, implying a deferential (not de novo) review of a fair use jury verdict.
Lastly, the Professors argue that Supreme Court precedent requires a deferential standard of review in cases involving a mixed question of law and fact (such as fair use), where the issue entails “primarily . . . factual work.” U.S. Bank National Ass’n v. Village at Lakeridge, LLC. The Professors argue that the copyright fair use determination in this case rested upon its individualized facts, and therefore primarily involved factual work. Accordingly, the CAFC erred in declining to apply a deferential standard of review to the jury verdict.
Did Oracle Make a Mistake By Agreeing That The Jury Could Issue a “General Verdict”? It’s not uncommon for juries to be asked complete detailed “special verdicts” that may shed light on the the bases for their decisions. For example, in a copyright fair use case the jury might be asked to indicate how it decided each of the fair use factors in reaching its decision.
But that didn’t happen in this case. Instead, Oracle and Google agreed that the jury need only issue a “general verdict.” The jury made no specific findings of fact.
Whether this was a strategic mistake by Oracle or part of a calculated trial strategy we don’t know, but at this point it appears to put Oracle at a disadvantage. The general verdict could weigh in favor of a finding that the CAFC erred in applying a de novo standard, since there were no “historical facts” for the CAFC to analyze, short of the CAFC reviewing the entire trial record and finding facts without the ability to evaluate witness credibility.
What Next? We will have to see what the parties have to say on this issue when they file their briefs in August. However, a decision based on a narrow procedural ground such as the standard of review is likely to be attractive to the Supreme Court. It allows it to avoid the mystifying complexities of copyright law as applied to computer software technology. It allows the Court to avoid revisiting the law of copyright fair use, a doctrine the Court has not addressed in-depth in the 26 years since it decided Campbell v. Acuff-Rose Music, Inc. It enables it to decide the case on a narrow standard-of-review issue and hold that a jury verdict on fair use should not be reviewed de novo on appeal, at least where the jury has issued a general verdict.
And, potentially (should the Court decide to resolve the case on this ground per curiam without hearing before the start of the 2020 term), it is one less case from the 2019 term that the Court would need to carry over into the 2020 term.
It’s worth noting that such an outcome would be disappointing to many people in the computer industry who are hoping for a reversal of the CAFC’s 2014 holding (on an earlier appeal) that the Java API is protected by copyright. And, while Google would be happy with this outcome, it’s not certain that it would be a clear winner for Google and end this case once-and-for all. It’s likely that the Court would decide that the jury verdict should stand, ending the case. But there’s also a risk that it could send the case back to the CAFC for yet another appeal, to be decided under a more deferential standard of review, but one that (given the CAFC’s hard-to-ignore antipathy to Google in this case), still leaves Google at risk.
It’s also worth noting the unusual sequence of events in this case. But for COVID-19’s disruption to the Court’s schedule, argument on this case would have been heard on March 24, 2020. The Court had not requested supplemental briefing prior to that date, and the case would have been taken under advisement on the thin record (as to this issue) as it existed at that time. The delay gave the Court time to request additional briefing on the standard of review, and the risk of that action falls entirely on Oracle.
by Lee Gesmer | Jan 17, 2020 | Copyright
Analogies, it is true, decide nothing, but they can make one feel more at home – Sigmund Freud
One good analogy is worth three hours discussion – Dudley Field Malone
Oracle v. Google, now before the Supreme Court, is a complicated case in more ways than one. The copyright law issues are difficult, but the case is made even more challenging by its subject matter, which involves highly technical and abstruse computer technology. Judges have a hard enough time applying copyright law to traditional media like music, novels and photographs, but software copyright cases add another order of magnitude of complexity.
The legal briefs now before the Supreme Court are overflowing with computer jargon. You can read all about the “Java language,” the “Java virtual machine,” the “Dalvik virtual machine,” “application programming interfaces (APIs),” “packages,” “classes,” “calls,” “declarations,” “methods,” “implementing code” and “declaring code,” and much more.
Nor did the Federal Circuit pull any punches in its 2014 decision (one of two under appeal.) The Federal Circuit described the Java system as follows:
In the Java system, source code is first converted into `bytecode,’ an intermediate form, before it is then converted into binary machine code by the Java virtual machine” that has been designed for that device. The Java platform includes the Java development kit (JDK), javac compiler, tools and utilities, runtime programs, class libraries (API packages), and the Java virtual machine.
If you’re shaking your head with confusion (or your eyes are glazing over), you’re probably not a Java programer. These are difficult concepts, especially when they are encountered for the first time by people with no background in the complex world of the Java runtime environment.
As best I can determine, the nine Supreme Court justices have little or no background in computer technology. It’s unlikely many of the Supreme Court justices have seen a computer program, less likely they have written one, and even less likely that they are familiar with the Java programming environment. Even if the younger judges received some exposure to programming in college, the world of Java programming is a far cry from the days of BASIC, Fortran and Cobol, the languages taught when the justices were in college.
If, as commentators have suggested, the Federal Circuit’s 2014 decision reflects “a fundamental misunderstanding of how software works” where does this leave Google and Oracle, who have to explain the Java environment to the justices so that they can understand the Java API and decide whether Google infringed it?
One answer is through analogy and metaphor. The right analogy has the potential to go to the heart of the case and persuade a judge who might otherwise feel uncomfortable with the technicalities of the case. The right analogy can make the difference between winning and losing this case. However, analogies can also be dangerous – an analogy may be distinguished or even turned against the offering party, so an advocate has to use them carefully.
The last (and until now only) computer software copyright case heard by the Supreme Court in 1996 — Lotus v. Borland — demonstrates this. That case, which involved an easy to understand menu command hierarchy, was far simpler than Oracle/Google from a technical standpoint. Nevertheless, analogies played a significant role. The First Circuit compared Lotus’s menu commands to the buttons used to control a VCR. During oral argument before the Supreme Court the analogies included the dashboard of a Model T Ford (Justice Souter), a system for organizing a department store and labels on the controls in a plane’s cockpit (Justice Breyer), and a method of dance notation and a language (Borland’s attorney).
There has been no shortage of attempted analogies as Oracle v. Google has made its way through the courts over the last ten years. However, in its Supreme Court merits brief filed on January 6, 2020, Google seems to have forgotten the power of analogy. Beyond a simple filing cabinet analogy the district court judge used and that neither party disputes (each package is like a filing cabinet, each class like a drawer and each method like a folder), Google’s brief is lacking analogies that go to the heart of what an API is and how it relates to the Java implementing code.
Fortunately for Google, Google’s supporting amici came to the rescue. Or, it would be more accurate to say that they tried – there’s no guarantee that the justices actually read amicus briefs (there are 27 of them so far, and that number will increase after Oracle files its merits brief).
Nevertheless, the analogies posited by the Google amici are potentially powerful. Here is a sampling.
The Juke Box Analogy. Few academics have written more about copyright protection of APIs than Professor Peter Menell. The Brief of Professors Peter S. Menell, David Nimmer and Shyamkrishna Balganesh (link), written by him, is an argument in support of Google wrapped in a treatise explaining the history of software copyright law. Here is my favorite example from this brief:
If the Java programming language is analogized to musical language, each API implementation can be characterized as a record album featuring songs (methods). Java Standard Edition (SE) then functions like an electrical-mechanical juke box, containing API record albums from which programmers can choose particular songs by invoking declarations (song titles). The fact that another juke box uses those song titles (declarations) to invoke a known song (method) is purely functional: it does not copy a song (method), it merely identifies a known song (method).
I suspect that if there is one amicus brief the justices may want to read it is this one, given that the Nimmer treatise caries so much authority on copyright law.
The Car Controls Analogy. The Brief Amici Curiae of Eighty Three Computer Scientists (link). borrows from the First Circuit’s decision in Lotus v. Borland and uses the analogy of the controls of a car:
A steering wheel and gas and brake pedals have been standard in cars for over a century. . . . Treating software interfaces as copyrightable would be like requiring car manufacturers to invent a substitute for the steering wheel. Startups would not risk manufacturing such a car, and even if they did, consumers likely would not purchase it.
This analogy never gained much traction in the many software copyright cases decided post-Lotus, and I doubt that it will be persuasive here.
The New York City Map Analogy. IBM and Red Hat’s amicus brief (link) analogizes the Java software interface to the New York city maps at issue in a 1879 Supreme Court case, Perris v. Hexamer, where the Court held that a copyright in maps did not extend to a “system of coloring and signs” for identifying real property characteristics or to a “key” which explained symbolic meanings of coloring and signs. Interestingly, Google does not cite this case, even in passing.
The Supreme Court Language Analogy. The entire amici brief of the Empirical Legal Researchers (link) is devoted to developing and explaining an analogy. The brief states:
The facts of this case are unusually technical and threaten to obscure the legal issues. As attorneys who are also software developers, the amici offer an analogy between the computer languages, with which the Court may be unfamiliar, and a kind of language with which the Court is uniquely familiar: the text of Supreme Court opinions.
You’ll have to read the brief if you want to understand this complex analogy and the statistic analysis on which it is based. Perhaps it’s accurate, but it didn’t hit home with me.
The Book and Title Analogy. The Software and System Developers and Engineers for U.S. Government Agencies amici brief (link) uses the analogy of the relationship between a book and its title:
For developers, relying on a declaration to identify a component for interoperation is like relying on a book title to refer to a book, enabling someone to identify the book to locate it and read it. While a book, like an entire software program, may be subject to copyright, a title of a book has long been understood as not subject to copyright.
This is the simplest and best analogy that I’ve seen in the amicus briefs. It will be interested to see if any of the Justices raise it at oral argument.
The Online Checkout Analogy. The amicus brief of the Small, Medium and Open Source Technology Organizations (which includes Mozilla, Shopify, Etsy and Wikimedia Foundation; link) encourages the Court to view software interfaces as “similar to electronic checkout forms you see when shopping online,” where the fields and structure, sequence and organization have become standard conventions. I’m not sure I agree with this analogy, but I can’t challenge the technical qualifications of the companies that proposed it, so perhaps it has some merit.
What about Oracle? How will it respond to these analogies?
We won’t know that until Oracle files its merits brief in February. But Oracle hasn’t been shy in using analogies in this case. Oracle’s 2014 opening brief to the Federal Circuit (link) began with this lengthy analogy:
Ann Droid wants to publish a bestseller. So she sits down with an advance copy of Harry Potter and the Order of the Phoenix—the fifth book—and proceeds to transcribe. She verbatim copies all the chapter titles—from Chapter 1 (“Dudley Demented”) to Chapter 38 (“The Second War Begins”). She copies verbatim the topic sentences of each paragraph, starting from the first (highly descriptive) one and continuing, in order, to the last, simple one (“Harry nodded.”). She then paraphrases the rest of each paragraph. She rushes the competing version to press before the original under the title: Ann Droid’s Harry Potter 5.0. The knockoff flies off the shelves.
J.K. Rowling sues for copyright infringement. Ann’s defenses: “But I wrote most of the words from scratch. Besides, this was fair use, because I copied only the portions necessary to tap into the Harry Potter fan base.”
Obviously, the defenses would fail.
Defendant Google Inc. has copied a blockbuster literary work just as surely, and as improperly, as Ann Droid—and has offered the same defenses.
The analogy between the Java API and the topic sentences of a fictional literary work seems far fetched. Nevertheless, Oracle seems very attached to it, so look for Oracle to use it again in its Supreme Court brief.
I have no doubt that the many lawyers and technologists on both sides of this case have devoted hundreds, if not thousands, of hours searching for the perfect analogy – the analogy that will go to the heart of the case, make sense to the justices, and lead to victory for their side. Whether Google or Oracle will reach this goal remains to be seen. But when the transcript of oral argument is released keep an eye open for analogies used by the justices and the parties to see which were used and whether they appeared to be effective.
By the way, if you’ve read this post and you’re still wondering, “what the heck is an application programming interface?” you may want to start with Sara Jeong’s 2016 article, What an API Is and Why It’s Worth Fighting For” (link).
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Postscript: Of the nine justices serving on the Supreme Court when Lotus v. Borland was argued in 1996, only three remain today: Ruth Bader Ginsburg, Clarence Thomas and Stephen Breyer. Justice Breyer has a particular interest in copyright law, and he was the most active questioner during oral argument in that case. Pay close attention to him during oral argument in this case.
For a summary of all of the amicus briefs filed to date see Jonathan Brand’s post: Broad Support for Google in the First Round of Supreme Court Briefing
Update, 2-13-2020: Oracle did use the Harry Potter analog in its merits brief, but a much shorter version than it used at the Federal Circiuit:
By Google’s logic, a plagiarist could define J.K. Rowling’s idea as “a story about Harry Potter, Ron Weasley, and Hermione Granger who attend Hogwarts” and steal the characters and their back stories. Or she could market detailed knock-offs of bestsellers by declaring that she “had no other choice” but to reproduce verbatim the 11,300 most memorable sentences or scenes because they were “necessary” to allow fans to use their existing knowledge