by Cokato attorney Tom James
In 2020, New York legislators introduced bills (S2890 and A5837) to require book publishers to offer licenses to libraries to allow them to make digital copies of books (“e-books”) available to the public.
The idea has spread to other states. Legislators in Rhode Island (H6246), Maryland (HB518 and SB432), Missouri (HB2210) and Illinois (SB3167) have introduced similar bills. Groups in Connecticut, Texas, Virginia, and Washington are lobbying for similar legislation in those states.
The New York bill passed out of the legislature, but Governor Kathy Hochul vetoed it. Maryland, on the other hand, enacted their bill into law. See Md. Code, Educ. §§ 23-701, 23-702 (2021). It was slated to go into effect on January 1, 2022. Bills in other states are still pending.
AAP lawsuit
The Association of American Press Publishers (AAP) filed a complaint seeking declaratory and injunctive relief against the State of Maryland in federal district court in December, 2021, asserting that the new law is preempted by the federal Copyright Act. The district court has granted a preliminary injunction against the enforcement of the new law.
Preemption
Governor Kathy Hochul vetoed the New York bill because she believed that federal copyright law preempts the field of copyright regulation. Assuming it is not settled or dismissed, the AAP lawsuit should sort that question out. In the meantime, here is why I believe Governor Hochul is correct.
Express preemption
The Supremacy Clause of the U.S. Constitution makes the “Constitution, and the Laws of the United States which shall be made in Pursuance thereof . . . the supreme Law of the Land . . . any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.” U.S. CONST. art. VI, cl. 2. For this reason, Congress may enact legislation expressly preempting state laws. Pacific Gas & Elec. Co. v. State Energy Res. Conservation and Dev. Comm’n, 461 U.S. 190, 203 (1983). Congress did this in § 301(a) of the 1976 Copyright Act:
“all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 . . . are governed exclusively by this title….”
17 U.S.C. § 301(a)
Of course, like nearly all legislation, the Copyright Act contains an exception (more familiarly known as a “loophole.”) Despite the preemption of state laws regulating copyrights, states may regulate “activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified in section 106.” 17 U.S.C. §§ 301(a), (b)(3). Those exclusive rights are the rights to reproduce, distribute, publicly display, publicly perform, and make derivative works based on a copyright-protected work.
Literary works are protected by copyright whether they are in paper or digital form. The question, then, is whether state laws creating what amount to compulsory licenses regulate or impinge upon the exclusive rights of copyright owners, or whether they regulate something else that is not covered by the Copyright Act. As indicated, the Copyright Act gives copyright owners the exclusive rights to distribute, publicly display, and publicly perform their works. A state law dictating to a copyright owner how, when and to whom s/he may exercise those rights (such as by granting a license) would certainly appear to regulate and impinge upon the exclusive rights of copyright owners.
Implied preemption
Even if Congress had not expressly preempted state regulation of the exclusive rights of copyright owners, it seems likely that the same conclusion would be reached on other grounds anyway.
The United States Supreme Court has held that even if Congress has not expressly preempted state laws – or if express preemption is not determinative because the “loophole” might apply – state laws relating to a particular subject matter may be implicitly preempted in some cases. Arizona v. U.S., 567 U.S. 387, 398–400 (2012).
There are two kinds of implied preemption: conflict preemption and field preemption. Field preemption occurs when Congress has “legislated so comprehensively” in a field that it has “left no room for supplementary state legislation.” R. J. Reynolds Tobacco Co. v. Durham Cty., 479 U.S. 130, 140 (1986). Conflict preemption occurs when a state law “stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.” Crosby v. Nat’l Foreign Trade Council, 530 U.S. 363, 373 (2000); see also ASCAP v. Pataki, 930 F. Supp. 873, 878 (S.D.N.Y. 1996).
Like an express preemption with a loophole, implied preemption does not apply if the state-created right protects a substantial “interest[ ] outside the sphere of congressional concern in the [copyright] laws.’” In re Jackson, 972 F.3d 25, 34–37 (2d Cir. 2020) (internal punctuation and citation omitted). On the other hand, if the state law is “little more than camouflage for an attempt to exercise control over the exploitation of a copyright,” then it is preempted. Id. at 38.
The Copyright Act “creates a balance between the artist’s right to control the work during the term of the copyright protection and the public’s need for access to creative works.” Stewart v. Abend, 495 U.S. 207, 228 (1990); see also College Entrance Examination Bd. v. Pataki, 889 F. Supp. 554, 564 5 (N.D.N.Y. 1995) (evaluation of “the balance struck by Congress between copyright owners found in § 106 of the Copyright Act and the exceptions to those exclusive rights found in §§ 107–118 of the same Act” leads to a finding that the state law is preempted). Congress has struck that balance by giving the author a right “arbitrarily to refuse to license one who seeks to exploit the work.” Stewart, 495 U.S. at 229. See also Lawlor v. Nat’l Screen Serv. Corp., 270 F.2d 146, 154 (3d Cir. 1959) (the right to exclude others is a corollary to the licensing right).
Courts have been fairly consistent in finding that copyright law preempts state laws “that direct a copyright holder to distribute and license against its will or interests.” See, e.g., Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 386 (3d Cir. 1999), cert. denied, 529 U.S. 1012 (2000). An argument might be made that states have the power to regulate the terms of a license. That, however, is significantly different from requiring a rights holder to grant licenses. At least one court has held that state laws that “appropriate[] a product protected by the copyright law for commercial exploitation against the copyright owner’s wishes” are preempted by the federal Copyright Act. Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 386 (3d Cir. 1999), cert. denied, 529 U.S. 1012 (2000). A fortiori, a state law that appropriates a content creator’s exclusive right to decide whether and how to allow others to exercise one of his or her exclusive federally protected rights should be held to be preempted.
Moreover, the Copyright Act already covers the kinds of special concessions that copyright owners need to make to public libraries. Publishers should not be subjected to a complex array of state and federal laws making inroads into their federally protected rights, particularly where those inroads could vary significantly from state to state.
The “public interest”
Those who advocate for legislation of this kind typically assert the public interest in having access to literary works. The public certainly does have an interest in having access to literary works. The public also has an interest in having access to food. Does that mean government should force grocers to give a share of their inventory away to the public? That is essentially what these bills do to publishers, albeit indirectly.
One reason people will buy their own copy of a printed book instead of simply reading a library copy is that they do not want to have to get up out of their chairs and make a trip to a library. Digital copies are much easier to access, however. It generally may be done without ever having to get up out of one’s chair. An author may spend hundreds, or even thousands, of hours of his or her time researching, writing, compiling, proofing and editing a book. The least a reader – or a government acting on behalf of reader – can do is pay a couple of bucks for that, rather than using the strong arm of the law to force works to be made freely available online to anyone who applies for a library card – which often is also free, as well.
Absence of need
In any event, most publishers already make their digital catalogs available to public libraries. Something like half a billion digital check-outs from public libraries already occur every year. So why are some states trying to mandate this kind of licensing instead of simply allowing publishers and distributors to continue offering and negotiating licenses as they have been?
That question is open to speculation. One possibility is the “reasonable rate” requirement these bills would mandate publishers to offer to libraries. Who determines what a reasonable rate is? Well, it could be left to state courts to try to figure out. More likely, though, states would delegate authority to an agency of the state to determine rates. States with legislators and regulators who have a greater interest in being liked by their voting constituents than by a handful of published authors can reasonably be expected to set rates for those authors’ works below what they may have earned in a free market.
Concluding thought
The risk to publishers – and more importantly, to authors – should be obvious. Allowing states to require authors and publishers to sell their works at rates dictated by each state, most probably below market, would undermine the ultimate purpose of the Copyright Clause (U.S. Const. Art. 1, § 8), which is “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
I fear that the continuing outbreaks of state bills like these – which seem extremely likely to be declared unconstitutional – might someday impel Congress to enact a compulsory digital licensing system for e-books on a federal level. If that happens, it will be vitally important for authors, publishers, authors’ organizations and agents to actively monitor and participate in the process.
Contact attorney Tom James
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