New Technology, New Law? - First Sale in the Digital Context

I recently blogged here on the boost given to the first sale doctrine by the decision of the US Supreme Court allowing parallel imports of books by rejecting a leading publisher’s contention that a book sold by it abroad could not legally be resold in the US.

While the doctrine may seem rather easy to apply in the case of material goods such as books, its applicability in the digital context is certainly tricky territory. The US District Court for the Southern District of New York in Capital Records v. ReDigi Inc was most recently faced with the issue and went on to hold  that the first sale doctrine is limited to material items.

When a book is purchased, the ownership of the copy of the book so purchased vests in the buyer. The first sale doctrine in this case means that the buyer who is now the owner of such a ‘lawfully made’ copy may sell or otherwise dispose of that particular copy in any manner that she wishes.

On the other hand, in the digital context, possession of a copyright protected work or a ‘lawfully made’ copy does not entail ownership of such work. To illustrate, if you buy a copy of The Godfather at a book store, you own the copy by virtue of such lawful possession and you are free to sell it or rent it or even throw it away. However, if you buy a song on itunes, you are only a licensee of the song and have no ownership rights on the song whatsoever. The owners of the original material are only providing you with a license to use such material. To put it simply, if it is digital, you don’t own it.

While it is true that the internet has enabled greater dissemination of copyrighted works across the globe, it has also led to widespread use and dissemination by non-owners without compensation to copyright owners. The dilemma is this- whether to give copyright owners the power to control all copies of their work in the digital sphere OR allow the operation of the first sale doctrine in the digital context and aim to regulate it through technology, by destroying/preventing making of copies.

ReDigi Inc, for instance, devised a system where users could buy or sell downloaded digital music. What was unique is that it allowed only those music files that were legally acquired from itunes to be uploaded using its service. Additionally, the system removed the uploaded file from the hard drive at the time of uploading thus ensuring that sharing and storing on a computer do not occur simultaneously.

Even as one hopes that India will take cue from the US and recognises the first sale doctrine in at least material goods such as books, the struggle faced by Indian courts in its application in the analogue context makes one wonder. There is bound to be a great level of difficulty which judges may face in making decisions where digital content is involved, using laws that were not even devised to be made applicable to such mediums.  

Apart from the much needed change in the law on its applicability to material goods, one also hopes that India undertakes a comprehensive review of its copyright law to fit the needs of an age where digital networks are dominant means of distributing copyrighted works.

U.S Supreme Court applies International Exhaustion in Parallel Imports of Books

On the 19th of March, the United States Supreme court decided on the much debated question of parallel importation in books in what is possibly one of the most important copyright cases of the century. The court, through this decision in Kirtsaeng v. John Wiley, legitimized grey market goods by answering the long overdue question of whether the common law doctrine of first sale applies to copies of a copyrighted worked lawfully made abroad, in the affirmative.

Facts:

Kirtsaeng, a student from Thailand studying in the US, in order to fund his education, resold textbooks in the US that were mailed to him by family and friends from Thailand. Being a lower segment market, textbooks in Thailand are available at a price much lower than in the US and through this, Kirtsaeng made profits that helped him get through college and supplement his scholarship from the Thai government.

Enter the respondent, John Wiley & Sons, publisher of textbooks, which prints, publishes and sells abroad through its fully owned subsidiary John Wiley & Sons (Asia). In 2008, Wiley sued Kirtsaeng for infringement of its exclusive right to distribute and import its copyrighted textbooks under 17 USC Section 106(3) and 602, respectively. 

Doctrine of First Sale:

To succinctly summarize, the doctrine of first sale allows the owner of a copyrighted work to sell or dispose the work in any manner as he wishes. The question under consideration in the present case was whether the Doctrine of First Sale as embodied in 17 U.S.C Section 109(a) applies to copies of a copyrighted work lawfully made abroad. Specifically, the issue was whether the textbooks imported from Thailand to be considered as ‘lawfully made under this title’. The doctrine is set out in the provision which reads as follows:

"Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord."

Section 109(a) is one of the many limitations on the exclusive right of a copyright owner to distribute copies of the copyrighted work to the public through sale which is provided for under Section 106(3).

Decision:

The court, speaking through Justice Breyer, in a 6-3 decision, held that there is no geographical limitation on the operation of the doctrine, either in the language of the statute or in the intent of the legislature as deciphered from the history of the Copyright Act. It further clarified that the phrase ‘lawfully made under this title’ does not impose any such limitation on copies that are ‘lawfully’ made abroad.

The court identified 3 problems with reading geographical limitation into the provision. Firstly, that such an interpretation would render the word ‘lawfully’ redundant, as it is absurd to think of a situation where something is ‘unlawfully’ made under this title. Secondly, reading in such a limitation would not be in consonance with the ‘equal treatment’ principle between domestically manufactured copies and those made abroad. Thirdly, it was a parade of horribles. It was noted by the court that such an interpretation would result in disastrous consequences for libraries, the used book industry, museums as well as industries such as the automobile industry. 

The court noted as follows:

“Associations of libraries, used-book dealers, technology companies, consumer-goods retailers, and museums point to various ways in which a geographical interpretation would fail to further basic constitutional copyright objec­tives, in particular “promot[ing] the Progress of Science and useful Arts”

It is also pertinent to note the court’s observation that the doctrine prior to codification in the statute was a common law doctrine and the Congress is presumed to retain the substance of common law which does not impose geographical limitations.

The court ended with the following lines with a beautiful note to the respondents:

“Wiley and the dissent claim that a nongeograph­ical interpretation will make it difficult, perhaps impos­sible, for publishers (and other copyright holders) to divide foreign and domestic markets. We concede that is so. A publisher may find it more difficult to charge different prices for the same book in different geographic markets. But we do not see how these facts help Wiley, for we can find no basic principle of copyright law that suggests that publishers are especially entitled to such rights…. The Constitution’s language nowhere suggests that its limited exclusive right should include a right to divide markets or a concomitant right to charge different purchasers different prices for the same book, say to increase or to maximize gain”

Implications of the decision:

The decision is bound to have implications on pricing practices of copyright holders in the US. This holding against the interests of copyright holders reduces the incentives to engage in price discrimination across different markets. This may result in an increase in prices of such works in low and middle segment markets or result in their abandonment altogether.

The decision is also likely to resolve a similar case on the point, Pearson Education v. Liu, which is now pending before the US Supreme Court.

As the tremendously enjoyable IPKat blog notes, the ruling also confirms that the decision applies only to analogue copies of copyrighted works. Procuring a digital copy does not make the procurer the proprietor of such a copy (the procurer will merely be a lessee) and thus, the first-sale doctrine does not apply in such cases.

If the US, being a pro-copyright regime can allow parallel imports, India should perhaps take cue. Courts in India have time and again enlarged the scope of exclusive rights under copyright law by disallowing parallel imports in the book industry even where such copies have been lawfully procured.

Even post the decision in Penguin Books Ltd v. India Book Distributors courts have continued to hold parallel imports to be illegal despite the explanation added to Section 14 through the amendment in 1994. The explanation which states that ‘For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation’ has been overlooked in subsequent cases such as Eurokids International Pvt. Ltd v. India Book Distributors Ltd. decided by the Bombay High Court.

As Mr. Ananth Padmanabhan, who in his excellent book Infringement and Remedies in Intellectual Property Rights (which has also greatly enriched my understanding on the point) notes on page 407, it is incorrect to manipulate the words of a statute by courts merely because the sale of low priced editions elsewhere is perceived to be unfair. It is the duty of the legislature to step in and make appropriate changes if such an end is, in fact, desired.

Moral Rights and Fair Use - A mismatched pair?

If a person decides to make a parody of a famous painting, like the drawing of a mustache on the Monalisa for instance, Da Vinci, if alive, would have reacted in one of the two following ways: Accepted it as parody and had a good laugh or viewed the drawing of the mustache as damaging to his honour and reputation and brought suit for the violation of his right to integrity in the painting.

In case Da Vinci feels like the latter, to my mind, two thought provoking questions arise. Firstly, whether parody violates an artist’s right to integrity? Secondly, assuming it does, whether the parodist can invoke the fair use defence in such a case.

Parody, by its very nature, is intended to be comical or ridiculing and thus seems to plainly fall within the ambit of “distortion or mutilation of the work”. However, the determination of whether such distortion, mutilation or modification harms the author’s honour and reputation is (or at least ought to be) an entirely subjective one. If the author views the parody to be harmful to his honour and reputation, I believe that there is no reason to provide for an exception in such cases. That, to my mind, would make the grant of the right to integrity itself, redundant.

To answer the second question, it is perhaps necessary to first examine whether the fair use defence applies only when copyright has been infringed or if it can also be used to carve out exceptions in the enforcement of neighboring rights such as the right to integrity. To begin with, the philosophical foundations of moral rights and fair use are entirely different from each other. While the objective of fair use, much like the purpose of copyright itself, is to promote the creation of new works of authorship, moral rights seek to protect the author’s personality by preserving the work and securing respect for the author. The fair use defence should thus limit itself to cases of copyright infringement and not extend to violation of moral rights as they operate in two very different realms.

The balance the law needs to strike, is thus between the protection of the author’s work (and as a result his honour and reputation) and the interests of the parodist. In my opinion, moral rights far outweigh the utilitarian purposes of the fair use doctrine given its genesis in the very personality of the author to whom the work first belongs.

A look at section 57 of the Indian Copyright Act (which, post the 2012 amendment provides for perpetuity in moral rights) also makes it amply clear that moral rights enjoy a superior position given that they exist “independent of copyright in a work”. The mere fact that they can be enforced even after the expiration of copyright reflects that moral rights are placed at a higher pedestal when compared to economic rights. The fair use defence therefore, ought not to be applicable to moral rights.

Though carving out an exception for parody is wholeheartedly supported, a line should be drawn where the parody, in the view of the author, violates his right to integrity.

Any comments are as always, welcome.

Not so elementary, Watson?

When a work enters the public domain, simply put, it means that that it is free for all to use, “like the air we breathe”. 

Sounds simple and easy, doesn’t it? Before we reach such a conclusion, it is important to examine instances, such as the case of a series of stories revolving around a well-developed character, where it may not be so straightforward. In such cases, copyright would exist not just in the story but also in the character the story is based upon provided such character is sufficiently developed to warrant such protection. Sai Deepak has made several interesting points on this issue here, here and here.

In particular, enforcement of copyright becomes murky when the series is only partially protected under copyright, that is to say, when several stories of the series have already entered the public domain. The question that comes up is whether, as a result, the character based on who such stories are written also enters the public domain.

This is precisely what is being contested by the Conan Doyle estate with respect to copyright in the enormously popular character of Sherlock Holmes. A top Sherlockian scholar, Leslie Klinger has filed a complaint against the estate before the Federal Court in Chicago claiming that the licensing fees that is being demanded by the estate is unnecessary since the characters and elements in the story derive from materials that are now in the public domain. The estate, on the other hand, claims that character is still under copyright protection, till the year 2023, which is when the copyright in Conan Doyle’s last book expires.

Though most of Doyle’s works are in the public domain, stories published post 1923 are protected until 2023. Readers interested in knowing more about the history of ownership in the copyright may refer to this article in the NY Times. (Though it details the complex history of the ownership, the article fails to mention that the fact that the majority of Doyle’s works are now in the public domain)

This said, the mere fact that the series is partially protected under copyright law does not take the character itself out of the public domain as claimed by the estate. When a work enters into the public domain, all aspects of the work, including the character, enter into the public domain. Klinger, in my opinion, is correct in claiming that no license fees can be imposed on the use of the character in this case.

While in this case, Klinger claims that he has avoided the use of any features of the character that have been introduced post 1923, determination of infringement in cases where the character is developed over the course of the series may not be ‘elementary’. Only those attributes of the character that first featured in works that are still protected under copyright law cannot be used by those seeking to include the character in their works though this might be a tedious task for courts to determine.

There is yet another twist in the case of the character in the public domain, which perhaps even Sherlock Holmes may have found difficult to solve. Where trademark in the character has been registered, there has been a disturbing trend where trademark owners in many instances have tried to indefinitely extend their copyright in characters through the enforcement of their trademark rights. (See the Tarzan case, for instance) This is by virtue of the fact that trademarks are perpetual, unlike copyrights, at least till the owner actively uses the trademark.

The Conan Doyle estate, too, has asserted trademark rights in the word mark Sherlock Holmes and in the silhouette image of Sherlock smoking with a pipe.This, however would not exclude anyone from using the character in a novel as trademarks and copyright serve different purposes and seek to protect different aspects of a work.

There is no possibility of the trademark stopping the use of the character is a novel is given that trademarks operate ONLY when such a character is used in the course of trade. Thus, despite trademark law not being able to stop you from using a public domain character such as Sherlock Holmes in a novel, the estate might be able to enforce its rights if the name is used in the tite of the book. This, in my opinion, is the only way in which the owner of a trademark can enforce his rights in relation to public domain characters.

All said and done, this is one judgment that would clarify a lot of doubts on the extent of rights in public domain works that are also protected by other forms of intellectual property.

Perpetuity in Moral Rights- More trouble than it's worth?

The 2012 amendment to the Copyright Act has brought with it several positive changes to copyright law in India, among which, is the amendment to Section 57 of the Act. In this post, I discuss the possible implications of granting moral rights in perpetuity, as envisaged in Section 57 of the Act, particularly the right to integrity provided for in Section 57(1)(b).

Indian law on the term of moral rights has shifted back and forth since the introduction of the Act. Post the amendment of 1994, there was no stipulation on the term of copyright but an act would amount to infringement of the author's right to integrity only if "done before the expiration of the copyright". This limitation in Section 57 appears to have been done away with in the 2012 amendment to the Act, thereby providing for moral rights in perpetuity.

Though moral rights are independent from economic rights in a work, moral rights extinguish upon the expiry of the copyright term in most jurisdictions. Providing for perpetual moral rights, forbids anyone, at anytime from claiming authorship or distorting or modifying any piece of work by the author. 

The debate, of course, is limited to the exercise of the author's right to integrity and does not extend to the paternity right, which should indisputably be entitled to perpetual protection. Its rationale seems to stem from the fact that moral rights are associated with the author's work as much as with the author himself. 

Distortion, mutilation or modification of the work of any kind, thus, would harm the reputation of the author equally even upon his death and perhaps more so given that the author is then unable to defend the integrity of his work. Protection of the right in perpetuity, however seems to extend this logic further to protect the author's personality as embodied in his work as also to protect societal interest in preserving works of authors by preventing unapproved use beyond the term of copyright.

The amendment, lauded as a step forward for protection of authors, prevents cases where works of authors in the public domain have been subject to modifications and grave distortions. Under the law as it existed prior to the 2012 amendment, the heirs of authors of such works were incapable of instituting an action for violation of moral rights since such rights of the author would have expired with the expiration of the term of the copyright in the work. Post the 2012 amendment, it now appears possible for heirs of an author to bring actions after the expiry of the copyright in the work.

The perquisites the amendment brings ought be weighed against the possibilities of its misuse.  The presumption that heirs are well versed in the author’s works so as to be capable of protecting his right to integrity is rebuttable. Additionally, it is also at odds with a subjective approach in determining the violation of the integrity right, given its close relationship with the personality of the author.

Providing rights in perpetuity should therefore not be sans safeguards, as Section 57 stands today. A feasible solution to the problem lies in finding a middle ground that not only ensures the protection of the author's reputation and honour even after his works enter the public domain but also prevents mischief by heirs by protecting instances of fair dealing.

Notwithstanding this problem, a separate area of enquiry is with regard to how the infringement of the right of integrity would be determined and the standard of proof in such claims. A wholly objective test based on a standard of reasonableness, as employed in most common law countries, would render the entire theoretical basis of the doctrine futile. In these jurisdictions, the action complained of is viewed from the point of view of a ‘reasonable person’ to determine whether the integrity right has been violated. 

On the contrary, a subjective test, as employed under French law, as well as recognized by the court in the epoch-making Amarnath Sehgal judgment would perhaps be closer to giving effect to the jurisprudential basis of the doctrine. The issue assumes relevance in the context of perpetuity where it would be absurd to apply a subjective test while the author is no longer alive. The subjective intent of legal heirs might not always coincide with what the author would have done in such a situation.

The problem thus arises when the law not only needs to provide for protection of the integrity in the author’s work even after his death but also needs to ensure its protection without misuse by the author’s heirs. To cite an example, Stephen Joyce, the grandson of James Joyce has strongly been enforcing his grandfather’s moral rights by threatening to sue critics who he is in disagreement with. 

The Newyorker has an excellent piece on the issue, which aptly illustrates how moral rights in perpetuity, may just be more trouble than it’s worth. The only cogent solution seems to be to decide on a case-by-case basis weighing interests from all quarters though this is a seemingly difficult task. Readers are invited to share their thoughts on the issue.

Is There Copyright in a Tweet?

Twitter needs no introduction. Each day, millions around the world post on the microblogging website, a wide array of thoughts, facts, jokes, witticisms or plain opinions which are called “Tweets” that appear on the main page of the user. 

Twitter also provides users with a “retweet” option that allows you to re-post another user’s tweets while attributing the tweet to its original author.

With this background, it may be pertinent to examine whether any IP vests in tweets, in particular copyright. While there is no dispute that pictures and content that are linked through a tweet are protected by copyright, this post is about the copyrightable nature of the 140-character tweet itself. The Terms of Service on Twitter state “What’s yours is yours- you own your content”. This does not by itself lead to vestation of copyright in one’s tweets merely because Twitter states so. The copyrightability of a tweet is still subject to the requirements of copyright law.

The first of many questions to be answered is whether tweets are ‘substantial’ or ‘long’ enough to be worthy of copyright protection. Brevity might be the soul of wit but for the purposes of copyright protection, slogans, titles and short phrases are generally denied copyright protection. The rationale behind this is that something as short is generally insubstantial and thus would lack the requisite originality and creativity, also known as the de minimis rule.

In addition, the likelihood of another person coming up with the same short phrase original tweet is fairly high. However, it is pertinent to note that some phrases have been protected under copyright law for passing the test of sufficient originality. (Les hauts de Hurlevent as a translated title of Wuthering Heights was granted protection by a French Court for being sufficiently original). Applying this logic to tweets, it is evident that all tweets will not pass muster. However, exceptions perhaps could to be carved out through case-law in instances where sufficient creativity and originality are found, as in the case of haikus, which are short forms of poetry that could be written in 140 characters or less.

Yet another strong argument as to why tweets would not be copyrightable is the problem of Scenes a faire. If there are limited ways of expressing an idea, copyright law does not serve to protect such expressions. If several users are tweeting about a particular event, it is highly likely that there would be substantial similarity between the tweets, given their brevity. Thus, it is clear that yet another category of tweets might be precluded from copyright protection.

An interesting question that crops up is whether a compilation of one’s tweets can be copyrighted as a whole. Copyright is usually given to compilations such as phonebooks and catalogues. However, in this case, protection would be given to the format of the compilation as a whole and not to individual tweets contained therein and this in no way indicates their copyrightable nature.

Flowing from the above discussion, even if you copy a tweet, it will, in all probability fall within the fair use exception. While the tweets of a celebrity may possess commercial value of some sort, the same is not true of most other tweets. A tweet being a statement made on a public forum, in addition to the very nature of the medium in which it is posted might not make the attraction of the fair use defense very difficult.

To sum up, the right question that must be posed is not whether tweets are copyrightable but whether a particular tweet is copyrightable, by virtue of meeting the requirements set forth in the law. A lot would depend on how courts might read it, if such a question were to come up. Ultimately, the determination rests on a careful examination of the facts in each case. Perhaps questions of Intellectual Property in tweets are best answered by looking into the law of trademark rather than the law of copyright.