Category: Non-AI Copyright

Copyrights: Copyright law news and commentary from Cokato, Minnesota attorney Thomas James (Thomas B James) of the Law Office of Tom James | This category includes general legal issues such as the requirements for a valid copyright, ownership rights, registration, infringement, enforcement procedures, and damages.

The New Copyright Circumvention Rules

the DMCA made it unlawful to “circumvent a technological measure that effectively controls access to” copyrighted material.

In 1998, Congress enacted the Digital Millenium Copyright Act (“DMCA”). In addition to establishing the notice-and-take-down regimen with which website and blog owners are (or should be) familiar, the DMCA made it unlawful to “circumvent a technological measure that effectively controls access to” copyrighted material. (17 U.S.C. § 1201(a)(1)(A)). The Act set out some permanent exemptions, i.e., situations where circumvention is allowed. In addition, it gave the Librarian of Congress power to periodically establish new ones. These additional exemptions are temporary, lasting for three years, but the Librarian of Congress can and does renew them. On October 18, 2024, the Librarian of Congress issued a Final Rule renewing some exemptions and creating some new ones.

What is “circumvention of a technological measure”?

Circumventing a technological measure means “to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.” (17 U.S.C. § 1201(a)(3)(A)).

So, no decrypting or unscrambling to get access to a copyrighted work. What else? Well, anything that involves avoiding or bypassing a technological measure without the copyright owner’s permission. You can’t do that, either.

A technological measure that “controls access to a work” can be anything that “requires the application of information, or a process or a treatment, with the authority of the copyright owner,” to gain access to the work.” (17 U.S.C. § 1201(a)(3)(B)). Entering a password-protected website without a password the copyright owner has authorized you to use is an example.

The permanent exemptions

Section 1201 of Title 17 lists permanent exemptions for:

  • Nonprofit libraries, archives, and educational institutions that circumvent copyright protection measures solely for the purpose of determining whether to acquire a copy of the work for a permitted purpose
  • Law enforcement, intelligence, and government activities
  • Reverse engineering
  • Encryption research
  • Prevention of access of minors to material on the Internet
  • Prevention of the collection or dissemination of personally identifying information
  • Security testing

Detailed conditions apply to each of these exemptions. If you are thinking of invoking one of them, read the entire statutory provision carefully and seek professional legal advice.

Renewed temporary exemptions

The following temporary exemptions have been renewed for another 3-year term:

  • Fair use of short portions of motion pictures for certain educational and derivative uses

This includes use in a parody or in a documentary film about the work’s biographical or historically significant nature; use in a noncommercial video; use in nonfiction multimedia e-books; use for educational purposes by educational institution faculty and students; educational uses in Massive Open Online Courses; and educational uses in nonprofit digital and media literacy programs offered by libraries, museum, and other organizations.

  • Closed captioning and other disability access services by disability service offices or similar units at educational institutions for students, faculty or staff with disabilities
  • Preservation of copies of motion pictures by an eligible library, archives, or museum
  • Scholarly research and teaching involving text and data mining of motion pictures or electronic literary works by researchers affiliated with a nonprofit educational institution
  • Literary work or previously published sheet music that is distributed electronically and include access controls that interfere with assistive technologies
  • Access to patient data on medical devices or monitoring systems
  • Computer programs that unlock wireless devices to allow connection of a device to an alternative wireless network
  • “Jailbreaking” computer programs (computer programs that enable electronic devices to interoperate with or to remove software applications), for the purpose of jailbreaking smartphones and other portable all-purpose computing devices, smart televisions, voice assistant devices, and routers and dedicated networking devices
  • Computer programs that control motorized land vehicles, marine vessels, and mechanized agricultural vehicles for the purposes of diagnosis, repair, or modification of a vehicle or vessel function
  • Diagnosis, maintenance or repair of devices designed primarily for use by consumers
  • Access to computer programs that are contained in and control the functioning of medical devices or systems, and related data files, for purposes of diagnosis, maintenance, or repair
  • Security research
  • Individual play by video gamers and preservation of video games by a library, archives or museum for which outside server support has been discontinued, and preservation by a library, archives, or museum of discontinued video games that never required server support
  • Preservation of computer programs by libraries, archives, and museums
  • Computer programs that operate 3D printers to allow use of alternative material
  • Investigation of potential infringment of free and open-source computer programs

Again, detailed conditions apply to each of these exemptions. If you are thinking of invoking one of them, read 37 CFR Part 201e carefully and seek professional legal advice.

front view of the Library of Congress building

New Exemptions

New 3-year exemptions the Librarian of Congress just announced in October, 2024 include:

  • Sharing of copies of corpora by academic researchers with researchers affiliated with other nonprofit institutions of higher education for purposes of conducting independent text or data mining research and teaching, where those researchers are in compliance with the exemption
  • Diagnosis, maintenance and repair of retail-level commercial food preparation equipment
  • Access, storage and sharing of vehicle operational and telematics data generated by motorized land vehicles and marine vessels

And once again, detailed conditions apply to each of these exemptions. If you are thinking of invoking one of them, read 37 CFR Part 201e carefully and seek professional legal advice.


Read about other non-AI-related legal issues. 

Confused by copyright, trademark and other IP issues? Visit my extensive Copyright FAQs page, or read my book, IP Law for Non-IP Attorneys, available on Amazon.com. Read information about Thomas B. James.

 

Copyright Infringement Damages

Are damages for copyright infringement always limited to the three-year period before suit is filed? The Supreme Court says no.

Library of Congress housing the U.S. Copyright oFfice

Warner Chappell Music v. Nealy

Are damages for copyright infringement always limited to the three-year period before suit is filed? The Supreme Court says no.

The Limitations Period for Copyright Infringement

The Copyright Act imposes a three-year statute of limitations for copyright infringement claims: “No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” 17 U.S.C. 507(b). It turns out the rule was easier for legislators to write than for courts to apply.

Sherman Nealy’s Infringement Claims

In the 1980s, Sherman Nealy and Tony Butler formed Music Specialist, Inc. The company released several recordings before the venture was dissolved. Nealy subsequently served two terms in prison, one from 1989 to 2008, and the other from 2012 to 2015.

Meanwhile, Butler licensed songs from the Music Specialist catalog to Warner Chappell Music, without Nealy’s knowledge. Warner Chappell, in turn, licensed them to popular recording artists and television shows.

In 2018, Nealy sued Warner Chappell for copyright infringement. He sought damages and profits for infringement occurring between 2008 and 2018. A significant portion of this claim would have been time-barred if “accrual,” as used in Section 107(b), referred only to the date on which an infringing act occurred. Some courts have held, however, that the rule does not apply if the copyright owner neither knew nor should have known that infringement was occurring. In that situation, a claim accrues when a “plaintiff discovers, or with due diligence should have discovered,” the infringing act. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. 663, 670 (2014). Once a copyright claimant learns that infringement has occurred, he or she then has three years from that time to file suit. Nealy alleged that he did not learn of the infringement until 2016, which was within the three-year limitations under the discovery rule.

The district court ruled that although his claims were timely filed, he could recover damages only for infringement occurring during the three-year period preceding his commencement of the lawsuit.

The Circuit Split

The district court’s ruling was consistent with the Second Circuit’s decision in Sohn v. Scholastic, Inc. 959 F.3d 39, 51-52 (2nd. Cir. 2020). The Ninth Circuit, however, allows recovery for all infringing acts, even beyond the three-year period, when a claim is timely filed under the discovery rule. Starz Entertainment v. MGM, 39 F. 4th 1236, 1244 (CA9 2022)). The Eleventh Circuit Court of Appeals adopted the Ninth Circuit’s view. It therefore reversed the district court.

The United States Supreme Court granted certiorari to resolve the circuit split. (Warner Chappell v. Nealy.) 

The Supreme Court Decision

The Court has never ruled on the validity of the discovery rule. That question, however, was not before it in this case. Warner Chappell had not challenged the rule in the lower court, so the Court limited its review to the scope of recovery under the discovery rule.

Its ruling on that question was simple. The Act prescribes a three-year limitation for filing suit. It imposes no limit on the time for recovering damages. The Act says only that an infringer is liable for damages and profits made from the infringing act. “The Copyright Act contains no separate time-based limit on monetary recovery.” (Warner Chappell v. Nealy.) 

Justices Gorsuch, Thomas and Alito dissented. In their view, the discovery rule is not valid. Accordingly, they would have dismissed the petition as improvidently granted. They would have preferred for the Court to wait for a case that squarely raises the validity of the discovery rule instead of deciding an issue that requires them to assume, arguendo, that it is.

The Take-Away

The decision obviously is a victory for copyright owners and claimants. As long as they file an infringement claim within three years of learning they have one, it does not matter how long ago the infringement occurred. Recovery is not limited to the three years prior to the commencement of the action. It is important, however, to be aware of two limitations on the Court’s decision.

Known infringement

First, the three-year limitation period still exists.

Example: Chuck learns in 2019 that Robert has been infringing his copyright for years. The infringement is ongoing. He waits until 2023, however, to file a claim. Because he did not file a claim within three years of learning of the pre-2019 infringing acts, he will not be able to recover damages or profits for them. In this situation, his recovery will be limited to the three-year period prior to commencing an action.
The validity of the discovery rule

As the dissenters observed, the Court has never directly ruled on the validity of the discovery rule. It is possible that if a litigant were to raise that issue, the question could make its way to the Supreme Court. It is also possible that the Court could decide against its validity at that time.

It does seem to be a just and fair rule. After all, why should infringers be permitted to benefit from their victims’ lack of knowledge? The Court, however, could decide against adopting a per se rule of validity, instead leaving it to trial courts to balance the equities in each individual case. We simply have no way of knowing, at this point, what approach the Court would take if the validity of the discovery rule were to come squarely before it.

Subject to these caveats, the decision is cause for celebration in the creative community.

Read about other non-AI-related legal issues. 

Continuing education

On June 10, 11 and 12, 2024, I presented a series of 1-hour webinars covering: basic trademark law and “likelihood of confusion” analysis; searching the USPTO database; and advanced searching with RegEx. For more information, visit the Echion CLE course page.

Visit my extensive Copyright FAQs page.

Nontransformative Nuge

A reversal in the 4th Circuit Court demonstrates the impact the Supreme Court’s decision in Andy Warhol Foundation for the Arts v. Goldsmith is already having on the application of copyright fair use doctrine in federal courts. Philpot v. Independent Journal Review,

Philpot v. Independent Journal Review


A reversal in the 4th Circuit Court demonstrates the impact the Supreme Court’s decision in Andy Warhol Foundation for the Arts v. Goldsmith is already having on the application of copyright fair use doctrine in federal courts.

Philpot v. Independent Journal Review, No. 21-2021 (4th Circ., Feb. 6, 2024):  Philpot, a concert photographer, registered his photograph of Ted Nugent as part of a group of unpublished works. Prior to registration, he entered into a license agreement giving AXS TV the right to inspect his photographs for the purpose of selecting ones to curate. The agreement provided that the license would become effective upon delivery of photographs for inspection. After registration, Philpot delivered a set of photographs, including the Nugent photograph, to AXS TV. He also published the Nugent photograph to Wikimedia Commons under a Creative Commons (“CC”) license. The CC license allows free use on the condition that attribution is given. LJR published an article called “15 Signs Your Daddy Was a Conservative.” Sign #5 was He hearts the Nuge. LJR used Philpot’s photograph of Ted Nugent as an illustration for the article, without providing an attribution of credit to Philpot.

Philpot sued IJR for copyright infringement.  IJR asserted two defenses: (1) invalid copyright registration; and (2) fair use. The trial court did not decide whether the registration was valid or not, but it granted summary judgment for IJR based on its opinion that the news service’s publication of the photograph was fair use. The Fourth Circuit Court of Appeals reversed, ruling in Philpot’s favor on both issues. The Court held that the copyright registration was valid and that publication of the photograph without permission was not fair use.

The copyright registration

Published and unpublished works cannot be registered together. Including a published work in an application for registration of a group of unpublished works is an inaccuracy that might invalidate the registration, if the applicant was aware of the inaccuracy at the time of applying. Cf. Unicolors v. H&M Hennes & Mauritz, 595 U.S. 178 (2022). LJR argued that Philpot’s pre-registration agreement to send photographs to AJX TV to inspect for possible curation constituted “publication” of them so characterizing them as “unpublished” in the registration application was an inaccuracy known to Philpot.

17 U.S.C. § 101 defines publication as “the distribution of copies . . . to the public” or “offering to distribute copies . . . to a group of persons for purposes of further distribution . . . or public display.” The Court of Appeals held that merely entering into an agreement to furnish copies to a distributor for possible curation does not come within that definition. Sending copies to a limited class of people without concomitantly granting an unrestricted right to further distribute them to the public does not amount to “publication.”

Philpot’s arrangement with AXS TV is analogous to an author submitting a manuscript to a publisher for review for possible future distribution to the public. The U.S. Copyright Office has addressed this. “Sending copies of a manuscript to prospective publishers in an effort to secure a book contract does not [constitute publication].” U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 1905.1 (3d ed. 2021). Philpot had provided copies of his work for the limited purpose of examination, without a present grant of a right of further distribution. Therefore, the photographs were, in fact, unpublished at the time of the application for registration. Since no inaccuracy existed, the registration was valid.

Fair use

The Court applied the four-factor test for fair use set out in 17 U.S.C. § 107.

(1) Purpose and character of the use. Citing Andy Warhol Found. For the Visual Arts v. Goldsmith, 598 U.S. 508 , 527–33 (2023), the Court held that when, as here, a use is neither transformative nor noncommercial, this factor weighs against a fair use determination. LJR used the photograph for the same purpose as Philpot intended to use it (as a depiction of Mr. Nugent), and it was a commercial purpose.

(2) Nature of the work. Photographs taken by humans are acts of creative expression that receive what courts have described as “thick” copyright protection.” Therefore, this factor weighed against a fair use determination.

(3) Amount and substantiality of the portion used. Since all of the expressive features of the work were used, this factor also weighed against a fair use determination.

(4) Effect on the market for the work. Finally, the Court determined that allowing free use of a copyrighted work for commercial purposes without the copyright owner’s permission could potentially have a negative impact on the author’s market for the work. Therefore, this factor, too, weighed against a fair use determination.

Since all four factors weighed against a fair use determination, the Court reversed the trial court’s grant of summary judgment to IJR and remanded the case for further proceedings.

Conclusion

This decision demonstrates the impact the Warhol decision is having on copyright fair use analysis in the courts. Previously, courts had been interpreting transformativeness very broadly. In many cases, they were ending fair use inquiry as soon as some sort of transformative use could be articulated. As the Court of Appeals decision in this case illustrates, trial courts now need to alter their approach in two ways: (1) They need to return to considering all four fair use factors rather than ending the inquiry upon a defendant’s articulation of some “transformative use;” and (2) They need to apply a much narrower definition of transformativeness than they have been. If both the original work and an unauthorized reproduction of it are used for the purpose of depicting a particular person or scene (as distinguished from parodying or commenting on a work, for example), for commercial gain, then it would no longer appear to be prudent to count on the first of the four fair use factors supporting a fair use determination.

1848 photograph published in a news article, it depics a city block of building and a city street in need of repair
A photograph published in L’Illustration in 1848. Reportedly the first published piece of photojournalism

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