As expected, the proposed Google Book Search settlement has led to a lot of scrutiny, criticism and questions. Here is a link to the 125 page Settlement Agreement(without attachments; pdf). Here is a link to the page that holds the full agreement which, with attachments, is over 300 pages long).
Both Larry Lessig (“IMHO, this is a good deal that could be the basis for something really fantastic”) and Wade Roush(“Book Search settlement contains some major disappointments”) have taken a first crack at trying to decipher this settlement (Roush – “exhaustive, labyrinthine”) and figure out who, amongst the many stakeholders, are the winners and losers.
Here is a particularly interesting paragraph from Wade Roush’s article:
. . . [T]he devil . . . is in the details. If you read the agreement, you’ll see that it restricts each public library to exactly one Google terminal. Tens of millions of books online—but at any given moment, no more than 16,543 people are allowed to read them without paying. (That’s how many public libraries and branches there are in the United States, according to the American Library Association—one for every 18,500 Americans.)
So, America’s librarians will be hearing these words for generations to come: “Excuse me, where is the Google Terminal?” Or perhaps the librarians will receive phone calls asking: “Hi, how long is the line for the Google Terminal?”
Much more to follow.
[n.b. It appears that Harvard is unhappy with the terms of the proposed agreement, and is withdrawing in-part from its participation in the scanning project]
Google said Tuesday that it has agreed to pay $125 million to settle the copyright litigation brought by book authors and publishers over Google’s project to digitize and show snippets of in-copyright books without the explicit permission of copyright owners. (See 123 for more on Google Book Search).
$125 million? Peanuts to Google. Less than peanuts. We don’t know all the terms and possible restrictions yet, but it sounds like this is a huge win for Google, which is now free to continue its project of digitizing the world’s books (or at least those under the control of the settling parties) without the threat of injunction.
[Update (10/29/08)]: Google explains here how it expects this settlement to affect Google Book Search. Some excerpts from that page are (emphasis added) :
Once approved, this agreement will allow us and our publishing industry partners to greatly expand the number of books that you can find, preview and buy through Google. …
Once this agreement has been approved, you’ll be able to purchase full online access to millions of books. This means you can read an entire book from any Internet-connected computer, simply by logging in to your Book Search account, and it will remain on your electronic bookshelf, so you can come back and access it whenever you want in the future. …
Because this agreement resolves a United States lawsuit, it directly affects only those users who access Book Search in the U.S.; anywhere else, the Book Search experience won’t change. Going forward, we hope to work with international industry groups and individual rightsholders to expand the benefits of this agreement to users around the world.
Well, wake up Amazon! Perhaps Google will be able to sell electronic rights to these works through Amazon and the Kindle, in which case the Kindle’s library will soar from fewer than 200,000 to many millions.
The non-U.S. implications of this settlement are unclear in light of this comment –
First, if Google’s “mission is to organize the world’s information and make it universally accessible,” as it states on that page, this settlement allows it to succeed with only about 5% of the world’s population if it is limited to the U.S. But, if trying to determine whether works created under U.S. law are under copyright, and if so identify their owners was difficult, the task of making these determinations for non-U.S. works seems almost insurmountable.
Second, Google is in fact digitizing many non-U.S. books. How can these books be included in this settlement (presumably they are subject to non-U.S. copyright laws and controlled by non-U.S. publishers)? Will they be excluded from the Book Search program, even to U.S. users of Google?
Returning to the U.S., and the announced settlement, what’s stopping some of the class members from opting out of the settlement? Some authors or publishers may not be happy with a loss of this magnitude this settlement. Google may not be done with even the U.S. legal issues just yet.
There are many questions in the wake of this announced settlement. Given the magnitude of this undertaking it may take many years, even decades, for all of the legal issues associated with Book Search to be resolved.
The 11th Circuit has ruled on a somewhat obscure but interesting issue of federal jurisdiction in copyright cases.
The Declaratory Judgment Act allows one who has been threatened with a suit to file suit first, and ask for a “declaration” of non-liability. In other words, the declaratory judgment makes one who fears becoming a defendant the procedural plaintiff. The roles of “plaintiff” and “defendant” are reversed, but the underlying issue remains the same. Declaratory judgment is simply a way that a threatened party who is unwilling to live with the risk of a lawsuit at some uncertain point in the future can force the issue.
However, the Declaratory Judgment Act is procedural; it does not give rise to federal court jurisdiction. This can create a problem for the declaratory judgment plaintiff, as demonstrated in the 11th Circuit case.
Registration with the U.S. Copyright Office is a jurisdictional prerequisite to a copyright infringement suit – no registration, no jurisdiction.
What if you are threatened with copyright infringement, but the owner of the work who has threatened you has not registered the work?
According to the 11th Circuit, you’re out of luck – the federal courts lack jurisdiction, and you cannot seek declaratory judgment. And, since the federal courts have exclusive jurisdiction over copyright claims you can’t seek relief in state court either. You just have to wait until the party threatening you registers its copyright before you can move against it (or it can move against you).
The following is background that may be necessary for some readers to understand the issues raised in the Thompson v. Zotero lawsuit, discussed below.
The Mozilla Firefox web browser (the second-most popular web browser, after Microsoft Internet Explorer) allows anyone with the talent and interest to develop “add-ons”. An add-on is a computer functionality that is added to and integrated with the Firefox browser. The Firefox user downloads the add-on from the web, and the add-on is automatically “installed” by Firefox. The add-on can be used, disabled or deleted, at the user’s choice. What makes this possible is that Firefox is an open source web browser, allowing developers to fully integrate their software with the browser. Developers can register their add-ons with the Firefox web repository, where over 6,000 add-ons are available. The add-ons are rated and critiqued by users, creating a reliable marketplace based on reputation.
Microsoft’s Internet Explorer has add-onsin name, but it is a much more restricted, less open and less integrated technology, and therefore is far less robust than the Firefox add-ons. For this reason, the Firefox add-ons are growing at an exponential rate, and their availability is contributing to the growing popularity of Firefox.
Some of the add-on technologies are so robust that they are taking market share from conventional, for-profit companies. This seems to be the case with the Zotero add-on, which may be taking market share from the Thompson Reuters product, EndNote Software. Both products help academics and researchers create academic bibliographies and manage citations. However, EndNote’s traditional, packaged software costs almost $300, whereas Zotero’s add-on is free and can be downloaded in seconds. It appears that some potential purchasers of Endnote are opting for the lesser functionality of Zotero given the better price and convenience.
With that as background, the lawsuit.
Zotero was created by employees of George Mason University, which is owned by the Commonwealth of Virginia. George Mason is a licensee of EndNote, and the license prohibits reverse-engineering. Thompson alleges that the George Mason developers reverse engineered EndNote in order to allow Zotero to convert proprietary EndNote files into open source Zotero files.
Now, a word about the law. It is clear that a software program may be reverse engineered (decompiled or disassembled, for example) as part of the process of developing a compatible product. This so-called “intermediate copying” was held to be copyright fair use in the Sega v. Accolade case in 1992 and was reaffirmed by no less a legal luminary than Judge Richard Posner in Assessment Technologies v. WIREdata decided in 2003.
However, it is also true (as the Assessment Technologies case points out) that this right of fair use may be restricted by a contract. (See Bowers v. Baystate Technologies (2003), to the same effect). A contract or license may prohibit reverse engineering or the creation of intermediate copies.
If George Mason’s contract with Thompson contained a “no reverse engineering” provision as Thompson asserts in its lawsuit, and George Mason did in fact reverse engineer EndNote to achieve compatibility, George Mason/Virginia may be liable for breach of contract. In fact, EndNote may have blocked the legal ability of any legal licensee of EndNote to reverse engineer EndNote for this purpose, since presumably not only George Mason but every proper licensee would be similarly restricted.
Whether this turns out to be the case – whether George Mason did reverse engineer EndNote to achieve compatibility, and whether EndNote has built a legal “Maginot Line” with no breaks or faults, across which no competitive developer can cross, remains to be seen as the facts of the case develop. It may be the case that the EndNote software did not require reverse engineering in order for Zotero to access its formats. It may also be the case that Zotera (or others in the marketplace, even nonlicensees) can technically and legally sidestep any contractual restrictions, and still provide conversion to EndNote file formats.
Whichever way this case goes, this dispute is interesting because it represents the clash of the old and the new: old, in the sense that savvy IP lawyers have been advising their clients for years to use contracts, in addition to copyright, to protect their software, and it appears that EndNote has tried to do this. New, in the sense that open source, when combined with new web technologies, may present a competitive and technical challenge to products like EndNote that good lawyering may be able to delay, but may prove unable to stop.
So, you’re unhappy in your law firm job? Ready to move on to a job that has lots of responsibility but doesn’t require hourly billing and client headaches? A job that puts you in close proximity to the President and his closest advisers? You’d like a job that provides security and good benefits? A federal pension to offset the losses in your 401K account?
Well, you can thank President Bush for creating this exciting new job when he signed the “Prioritizing Resources and Organization for Intellectual Property Act of 2008” last week. The legislation calls this the “short title” of the law. Yes, Congress does have a sense of humor. We’ll call the new law PRO-IP, which is even shorter, and tells you almost as much about the law as the slightly longer title (but still short, no disrespect meant) assigned by Congress.
Copyright lawyers always get excited when the Copyright Act is amended, but as I suggested above, there is even greater cause for excitement this time: the new law creates the position of “International Intellectual Property Enforcement Coordinator.” This is a mouthful, so we’d prefer the term “IP Czar” (or perhaps simply “the Czar” to the Czar’s subordinates when they’re talking about her ourside of her hearing).
This is a great job. You get to work in the Executive Office of the President, (the “EOP” as its known to those “beltway insiders”), and maybe even work in the White House itself, or at least the Executive Office Building. This is a “with-the-advice-and-consent-of-the-Senate” job, so your friends and family may get to see you interrogated by the Judiciary Committee on C-SPAN.
And, should you be confirmed (assuming you are not “Borked” or subject to a “Hi Tech Lynching” or anything along those lines), here’s a “general” description of your job, as described in the statute:
(1) IN GENERAL- The [IP Czar] shall–
(A) chair the interagency intellectual property enforcement advisory committee established under subsection (b)(3)(A);
(B) coordinate the development of the Joint Strategic Plan against counterfeiting and infringement by the advisory committee under section 303;
(C) assist, at the request of the departments and agencies listed in subsection (b)(3)(A), in the implementation of the Joint Strategic Plan;
(D) facilitate the issuance of policy guidance to departments and agencies on basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law;
(E) report to the President and report to Congress, to the extent consistent with law, regarding domestic and international intellectual property enforcement programs; and
(G) carry out such other functions as the President may direct.
Well, I’ve got to run now and revise my resume, I mean delete some of the anti-government stuff I said on Facebook, errrrr… get some of those copyright law articles I’ve written updated and on the web, I mean ah, yes, call back a client, that’s it!
(p.s. – needless to say, this law contains a lot that’s worth serious discussion, and I’ll return to it in more detail later. You betcha.)
My partner Andy Updegrove has written a post discussing Jacobsen v. Katzer. In a nutshell, theCAFC upheld an open source copyright license, pointing to the work of Creative Commons and others. As Andy discusses, this is an important decision for the open source movement.
Bill Patry, Senior Copyright Counsel at Google (how’s that for a great job), emailed me and asked me to mention the publication of his new copyright treatise, Patry on Copyright.
I like the fact that Mr. Patry said this about his 5,800-plus page, $1500 treatise: “ The book is also chock full of wikipedia references, anecdotes, riffs on logic, congitive linguistics, etc. It is many books in one.”
Although I haven’t seen this treatise yet, I hope that it is a change fromNimmer on Copyright, which is so densely academic as to often be unusable by practitioners. Somehow, I doubt that we’ll ever see Nimmer referencing Wikipedia.
I have decided to end the blog, and I owe readers an explanation. There are two reasons.
1. The Inability or Refusal to Accept the Blog for What it is: A Personal Blog
. . . While in private practice I never had the experience of people attributing my views to my firm or to my clients. I moved from private practice to Google I put a disclaimer to the effect that the views in the blog (as in the past) were strictly mine. . . .
For the first year after joining Google, . . . people honored the personal nature of the blog, but no longer. . . . The inevitable opening sentence now is: “William Patry, Google’s Senior Copyright Counsel said,” . . . There is nothing I can do to stop this false implication that I am speaking on Google’s behalf. . .
In the end, I concluded that it is no longer possible for me to have a blog that will be respected for what it is, a personal blog. . . .
2. The Current State of Copyright Law is too depressing
This leads me tomy final reason for closing the blog which is independent of the first reason: my fear that the blog was becoming too negative in tone. I regard myself as a centrist. I believe very much that in proper doses copyright is essential for certain classes of works, especially commercial movies, commercial sound recordings, and commercial books, the core copyright industries. I accept that the level of proper doses will vary from person to person and that my recommended dose may be lower (or higher) than others. But in my view, . . . we are well past the healthy dose stage and into the serious illness stage. . . . Copyright law has abandoned its reason for being: to encourage learning and the creation of new works. Instead, its principal functions now are to preserve existing failed business models, to suppress new business models and technologies, and to obtain, if possible, enormous windfall profits . . .
So between the inability or refusal of some people to accept the blog for what it is — a personal blog — and my inability to continue to be Cassandra, I decided it was time to pull the plug. . . . I intend to spend my free time figuring out a constructive way to talk about the difficult issues we face and how to advance toward their solution.
I have read and enjoyed this blog religiously for the last 18 months, and I am saddened. Oh, and p.s.: our firm does subscribe to Patry’s treatise now, and although Nimmer is still on the shelves, we are no longer purchasing updates.
Whether a U.S. work is protected by U.S. copyright is often a difficult question to answer. It can depend on factors such date of first publication, whether the work was published with a copyright notice, whether the copyright was renewed, whether the author is living or dead and, if dead, when the author died. Technology to the rescue!, sort of ….
Click on the graphic below to go to the American Library Association “Copyright Advisory Network” website where you can use the “digital slide rule” created by Michael Brewer (ALA member from the University of Arizona Library) to find the answer. Drag the red arrow up and down beside the various data points and see what the boxes to the left say (yes, no, maybe). Of course, “maybe” is the answer far too often, requiring the user to click the asterisk, read the explanation, do more research and …. oh well.
When I started a music blog a couple of years ago (sadly ignored of late), I started getting promotional CDs from some small publishers. I’m not sure how they got my home address, and for the most part the music wasn’t very good. However, I did notice that in a few instances the CD cases were stamped “promotional, not for resale,” or words to that effect.
Had I sold these CDs on eBay or at a garage sale, I might have ended up in the shoes of Troy Augustino, who (like every good eBay entrepreneur) purchased some promotional CDs from music shops and online auctions, and resold them for a higher price on eBay.
Stop! Universal Music said. You have no right to resell the CDs, since we only “licensed” them, and the license prohibits resale. By reselling you’re violating our copyright rights!
No dice, ruled a California federal district court judge. Universal did not “license” the CDs, it gave them away as a gift. And, under the copyright “first sale” doctrine, a purchaser or gift recipient is free to resell (or regift) the promo CDs.
The “first sale” doctrine is easy to understand, since most of us take it for granted: if you buy a CD, DVD or book, you are free to resell it. The copyright owner has the right to prevent you from reproducing the work, distributing copies, publicly performing or creating derivative works. But, you are free under the “first sale” doctrine to resell the physical disk or book which holds the copyrighted work. And that’s what Mr. Augustino did here. The outcome of this case was predictable, and why Universal Music, the largest music company in the world, chose to file this lawsuit will likely forever remain a mystery.
Here is a copy (below) of the June 2, 2008 decision of Judge Sidley Stein in the Southern District of New York, holding that a 15 second snippet of the Lennon song “Imagine,” within the feature length movie “Expelled“, is “fair use” under U.S. copyright law. In other words, the film makers did not infringe Yoko Ono’s copyright rights. “Expelled” is a documentary that deals with “intelligent design” (vs. Darwinism, Creationism, ect.), and is narrated by Ben Stein of Ferris Buehler fame (presumably no relation to Judge Stein, but bad luck of the draw for Yoko Ono nevertheless).
The “fair use” doctrine is an exception to the legal rights of U.S.copyright owners. It permits the use and publication, without permission, of parts of the work for purposes of “criticism, comment, news reporting, teaching … scholarship, or research.” A large body of judge-made law has built up interpreting and applying this doctrine.
The court’s ruling on fair use is no surprise, and applies “black-letter” fair use law to undisputed facts. Any outcome other than a ruling in favor of fair use would have been a surprise. For more on fair use click here.
Nancy Gertner is no shrinking violet. Her reputation as a lawyer and then as a judge who is willing to make hard decisions and challenge the status quo is well known.
Last week she did just this when she quashed the RIAA‘s subpoena against Boston University, which was targeted at learning the identities of some Boston University students who had posted copyrighted songs. Her rationale was that there was no clear evidence the students had violated the Copyright Act, and therefore their identies should be protected. Specifically, she found that “publication” (that is, posting the tunes online) was not the same as “distribution” (that is, the tune was downloaded). No evidence of download, no violation. However, whether this ruling will become the prevalent rule under copyright law remains to be seen.
The 52 page decision in Sire Records, Inv. v. Does 1-21 is available here.
The estimable and erudite copyright scholar William Paltry discusses this case, and two others that raise similar issues, in more detail on his blog here.
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Google said Tuesday that it has agreed to pay $125 million to settle the copyright litigation brought by book authors and publishers over Google’s project to digitize and show snippets of in-copyright books without the explicit permission of copyright owners. (See 
Some of the add-on technologies are so robust that they are taking market share from conventional, for-profit companies. This seems to be the case with the 
Here is a copy (below) of the June 2, 2008 decision of Judge Sidley Stein in the Southern District of New York, holding that a 15 second snippet of the Lennon song “Imagine,” within the feature length movie “