Copyright Misuse Research Articles

Posthumous control of copyright, its limitations and the public interest

Conducted as a desk research, this paper examines the interface between copyright and succession laws, the notion of testamentary freedom, its limitations and justification for its restriction. The paper draws on this examination to discuss the freedom of authors to dispose their copyright under testate and intestate arrangements, and posthumously control the use of their works under the Nigerian Copyright Act. Following this discussion, the paper identifies and examines the relevant provisions of the Copyright Act that can limit the capacity of authors to posthumously control the use of their works in Nigeria. The paper contends that authors’ liberty to transfer their copyright by testamentary disposition or operation of law, and control the use of their works posthumously, without public interest friendly limitations, can create an imbalance within the copyright system. This paper addresses the issues of whether public interest objectives may be achieved through the limitation in the extant Copyright Act, especially given the propensity for copyright misuse by authors in death, as well as during their lifetime, and what policy options may align the public interest with authors’ posthumous control of copyright. In resolving these questions, the paper draws on instances of copyright misuse in the United States of America (USA) and South Africa and situates them within the Nigerian context to shed light on the issues discussed.

Codifying Copyright's Misuse Defense

Although courts have found a misuse defense to copyright infringement, lawmakers have not yet codified it. To clarify the doctrine, and to bring the Copyright Act up-to-date with the law, this paper proposes adding a new § 107(b): It constitutes copyright misuse to contractually limit any use of a copyrighted work if that use would qualify as noninfringing under § 107(a). No party misusing a work has rights to it under § 106 or § 106A during that misuse. A court may, however, remedy breach of any contract the limitations of which constitute copyright misuse under this section. The present paper documents § 107(b)'s codification of the judicial precedents, offers legislative history explaining the proposed statute, and discusses how the new law would work in the real world. Although the proposed codification of copyright misuse would in large part simply rationalize what courts have already said, it would also promote the salutary policy goal of encouraging the owners of expressive works to forego copyright rights in lieu of common law ones.

Freedom of Expression as an External Limitation to Copyright Law in the EU: The Advocate General of the CJEU Shows the Way

This article analyses the recent opinion delivered by the Advocate General Szpunar of the CJEU in the Afghanistan Papers case. It highlights, in particular, four crucial points that stand out in the opinion. First, the adoption of a fundamental rights perspective when evaluating copyright regulation in general. Second, the need to ensure that copyright’s internal mechanisms designed to take into account the fundamental right to free expression (i.e., the idea/expression dichotomy, the criteria for protection such as the originality requirement and the exceptions and limitations) are interpreted in a manner that gives full effect to freedom of expression. The presence of such mechanisms should, third, by no means be understood as immunising copyright from any further freedom of expression scrutiny: according to the Advocate General, if on the contrary fundamental rights are not sufficiently taken into account by the existing copyright system, there are circumstances when the exclusive rights “must yield to an overriding interest relating to the implementation of a fundamental right or freedom” – an explicit admittance (for the first time at EU level) of the admissibility of an external limitation to copyright by freedom of expression. This approach is not called into question by the Advocate General in his two other opinions that shortly followed Afghanistan Papers - Pelham and Spiegel Online. If at first sight he seems to take a more restrictive approach towards the opening of the closed list of limitations in EU copyright law by the use of fundamental rights, he still considers that such an external limitation is possible “in exceptional cases”, specifying that this is in particular the case when the “essence of a fundamental right” is at stake. This article concludes by addressing the final focal point of the Afghanistan Papers opinion - the unacceptability of misusing copyright for the purposes not corresponding to its rationales and its social function. Such reference to the concept of copyright misuse is particular noteworthy since this notion has never been applied before by the EU courts in such an explicit way.

Comments on ALRC Discussion Paper 79, Copyright and the Digital Economy

We provide these comments in connection with the Australian Law Reform Commission’s ongoing study of copyright and the digital economy, and in particular its request for comments on the recommendations put forth in its Discussion Paper 79 (June 2013). We focus on US law, and how the US experience bears on the possibility of an open-ended uncompensated type exception in Australia, and other related issues. The fair use doctrine in the US provides great flexibility, but that flexibility in many instances comes at the cost of certainty and predictability. We are not suggesting that reasonable judgments cannot be made about whether a particular use is fair; certainly experienced practitioners make such judgments daily. But fair use decisions are often complicated, and advice frequently depends as much on the amount of risk the user is willing to undertake as it does on the evaluation of the substantive law. Our point is not that fair use caselaw absolutely resists synthesis, but rather that the synthesis most successfully occurs at a high level of abstraction; individual actors, by contrast, need to know whether their particular plans will run afoul of the law. Legal literature has seen many attempts over the years to simplify or clarify fair use, both descriptive and prescriptive. But it would be premature to conclude that the law of fair use is or soon will be coherent and predictable. Guidelines could theoretically help in interpreting fair use, but the weight and value of guidelines depends on how they were developed.The ALRC Discussion Paper’s proposals could result in a broader fair use doctrine in Australia than in the US. Notably, fair use in Australia, as in the US, would exempt certain uses without countervailing compensation. But the proposed Australian version may embrace a greater range of commercial actors, thus altering the balance. The proposals include additional illustrative purposes; they would also permit commercial users to stand in the shoes of clients entitled to exceptions. The ALRC also proposes that contracts or contract provisions that attempt to bargain around library exceptions and certain fair use exceptions would be unenforceable. In the US, contracts concerning copyrighted materials are usually upheld. As a general rule, contract preemption does not serve to invalidate contract provisions that limit the exercise of copyright exceptions, and the doctrine of copyright misuse does so only in the most egregious of cases.Finally, in the US there is no exemption from anti-circumvention of technological access controls for such broad purposes as exercising fair or making noninfringing use. Certain narrow fair uses have been deemed exceptions pursuant to a triennial rulemaking conducted by the Copyright Office, but those exceptions must be revisited every three years.

From Abuse of Right to European Copyright Misuse: A New Doctrine for EU Copyright Law

The great expansion of EU copyright law has paved the way to several rightholders’ abusive or dysfunctional conducts, without providing adequate solutions to prevent or remedy them. The answer of EU sources is characterized by extreme fragmentation, with tools mostly borrowed from external bodies of law. Paradoxically, the doctrine of abuse of right has long been neglected as a potential solution, mainly due to its flaws – difficult evidence-taking and weak remedies - and its incompatibility with the discretionary nature of continental author’s rights. Yet, the notion emerges between the lines of several ECJ’s decisions, and finds its way from civil codes to copyright in a number of national courts’ precedents. Due to the paradigm shift towards a market-oriented and industry-based inspiration, EU copyright seems now open to admit the possibility of misuses.Starting from these premises, this article argues that a unitary doctrine of copyright misuse may constitute an effective balancing tool for most of the dysfunctional conducts that copyright law and other bodies of law are still unable to resolve. In addition, it may also act as regulatory paradigm to ensure greater certainty and transparency in the judicial development of key principles and rules of EU copyright law. To this end, the paper (a) proposes a four-prong-test of abusiveness, embedding criteria of proportionality and reasonableness inspired to the normative function(s) of exclusive rights; (b) offers new perspectives on potential remedies; and (c) shows selected examples of the positive impact of the doctrine on the systematization of the current copyright legislative framework.

From Abuse of Right to European Copyright Misuse: A New Doctrine for EU Copyright Law

The great expansion of EU copyright law has paved the way to several rightholders’ abusive or dysfunctional conducts, without providing adequate solutions to prevent or remedy them. The answer of EU sources is characterized by extreme fragmentation, with tools mostly borrowed from external bodies of law. Paradoxically, the doctrine of abuse of right has long been neglected as a potential solution, mainly due to its flaws – difficult evidence-taking and weak remedies - and its incompatibility with the discretionary nature of continental author’s rights. Yet, the notion emerges between the lines of several ECJ’s decisions, and finds its way from civil codes to copyright in a number of national courts’ precedents. Due to the paradigm shift towards a market-oriented and industry-based inspiration, EU copyright seems now open to admit the possibility of misuses.Starting from these premises, this article argues that a unitary doctrine of copyright misuse may constitute an effective balancing tool for most of the dysfunctional conducts that copyright law and other bodies of law are still unable to resolve. In addition, it may also act as regulatory paradigm to ensure greater certainty and transparency in the judicial development of key principles and rules of EU copyright law. To this end, the paper (a) proposes a four-prong-test of abusiveness, embedding criteria of proportionality and reasonableness inspired to the normative function(s) of exclusive rights; (b) offers new perspectives on potential remedies; and (c) shows selected examples of the positive impact of the doctrine on the systematization of the current copyright legislative framework.

Why a Wrong Cannot Lead to Rights: A Copyright Misuse Response to Software Piracy in Creative Fields

Copyright liability rests on what others do with an author's work. Many authors today, however, infringe another's work (ie by using pirated software) in the creation of their works. This article looks to whether such works should merit copyright protection, and what could be done to gain protection after the works have been tainted in their creation. Further, the article looks to whether others who make use of the tainted work in their own works should have enforceable copyrights, and the possible limitations on their secondary liability. This is a working draft of this note.

Protecting Brand Image or Gaming the System? Consumer 'Gag' Contracts in an Age of Crowdsourced Ratings and Reviews.

Traditionally, businesses developed and controlled brand image through company-sponsored advertising and marketing campaigns. With the rise of social media, brand communications have become more interactive, especially on crowdsourced review sites. This increased interactivity helps companies to gain valuable insight into the consumer experience and to improve their brand image and customer engagement. Businesses soon learned that positive consumer ratings and reviews often translated into enhanced brand reputation and increased revenues. Some merchants and professionals seek to burnish their brand image by paying for positive reviews while others try to silence disgruntled customers through adhesive nondisparagement clauses. These gag clauses may rely upon dubious intellectual property claims, monetary penalty clauses, and other financial threats in order to prevent unhappy consumers from posting negative reviews. Certain businesses justify these provisions as legitimate actions needed to protect their brand image and goodwill in a social media environment fraught with fake negative reviews from unscrupulous competitors and libelous consumers. This paper examines the rise of consumer nondisparagement clauses and considers the legality of such agreements under contract, free speech, and intellectual property principles. Issues of freedom of contract and concerns about deceptive advertising, fair use, and copyright misuse are also addressed. This article concludes with a review of self-regulatory proposals that balance freedom of contract and legitimate branding concerns with customer speech interests and issues of good faith and fair dealing.

Proficient Hash Sensitivity Growth for Optimized Image Forgery Detection

The motive behind the work is to provide an effective solution to the most sensitive issue called image forgery that is occurring due to increase in an availability of enormous image modification software. The image forgery causes drastic bad effects in the society such as copyright misuse, evident change in the court of law, quality control, medical image forgery, etc. There are numerous steps taken in order to detect forgery in images, but how far they are successful is the question here. In this paper, an advanced and efficient solution is provided for the forgery detection which can overcome the drawbacks of the existing works by accurately detecting the salient regions by considering both the local and global features of an image (when considering the whole image it is global and when considering only the specific part of an image it is local) and based on this a technique is proposed called hash sensitivity growth method (HSGM), which can accurately detect the salient regions of an image and extract feature contents from that region, hence provide efficient sensitivity growth to a hash, as the sensitivity of the hash is increased it can accurately detect even smaller area tampering and it is robust to normal image processing.

A Three-Tiered Public Policy Approach to Copyright Misuse in the Context of Tying Arrangements

Over two decades since the copyright misuse doctrine was first recognized in Lasercomb America, Inc. v. Reynolds, a uniform approach for determining whether a specific behavior constitutes misuse still does not exist. Circuit courts have commonly applied two competing approaches to the misuse analysis. One approach centers on the public policy underlying copyrights; the other approach centers on antitrust principles. This Note explores relevant jurisprudence and elucidates the shortfalls of each approach. It then proposes a compromise that underscores the interplay between copyright and antitrust laws. The proposed resolution aims to provide a much-needed uniform misuse analysis that does not overlook the important policies underlying copyright law or disregard antitrust principles relevant in the context of tying arrangements.

'Trademark Misuse': Crafting a Safety Valve for a Normatively Deficient Body of Law

This article begins with the observation that the scope of federal trademark protection has experienced hypertrophic growth in recent decades. Over the course of this expansion, trademark law has become unmoored from its supposed ideological foundations, and come to encroach on an ever-wider array of important social goods, such as free speech and vigorous competition in the marketplace. I argue that two factors are primarily responsible for this state of affairs: (1) trademark law's idiosyncratic test for infringement liability, which produces a likelihood-of-confusion feedback loop that drives the continuous expansion of substantive trademark rights; and (2) federal trademark law's lack of a robust doctrinal safety valve of the sort found in copyright and patent law, without which judges have no normative foot to put down. To remedy this situation, I propose to equip judges with the equitable defense of “trademark misuse,” which has been repeatedly advocated by defendants and commentators, but not yet recognized by any federal court. In crafting the new doctrine, I first examine the respective paths of the copyright fair use, patent misuse, and copyright misuse defenses, and borrow the best aspects of each, while attempting to avoid each doctrine's flaws. I then look to the public policies underlying trademark protection, and design a multi-factor test that strives to achieve a balance between flexibility and predictability. It is my hope that this article will highlight the pressing need for the adoption of the trademark misuse defense, and that the federal courts will utilize my framework as a way of overtly and systematically attending to important normative considerations that trademark law cannot effectively address in its current form.

Brief of Intellectual Property Law Professors as Amici Curiae in Support of Defendant-Appellee and Affirmance in Omega S.A. v. Costco Wholesale Corp.

Summary of Argument: Copyright is not an invitation for businesses to circumvent trademark law, much less to control the distribution of uncopyrightable, functional devices. Amici respectfully submit this brief to explain why Omega’s attempt to stop others from reselling lawfully purchased Omega watches is copyright misuse, as the district court correctly found. The only part of the watch in which Omega claims copyright protection is a tiny insignia engraved on the back of the watch. However, instead of limiting its copyright to the insignia — a merely incidental feature of the watch that Omega strategically tacked on — Omega seeks to leverage the insignia’s copyright to encompass the entire watch, which is functional and cannot be copyrighted. Omega’s leveraging its copyright for a token feature to restrict the entire watch’s redistribution conflicts with both trademark law’s pro-competition policy in allowing resale of lawfully purchased consumer goods and copyright law’s policy of leaving functional devices to patent law for protection. Omega’s conduct is misuse also because it circumvents Costco’s fair use of the incidental insignia.

Omega v. Costco and Copyright Misuse: A Historical Inquiry into the True 'Public Policy' of Copyright Law (Introduction)

Omega v. Costco and Copyright Misuse: A Historical Inquiry into the True 'Public Policy' of Copyright Law (Introduction)

Regulating Copyright and Trademark Misuse through Antitrust Law - Focusing on the Revision of Korean IP Misuse Guideline of 2010 -

Regulating Copyright and Trademark Misuse through Antitrust Law - Focusing on the Revision of Korean IP Misuse Guideline of 2010 -

저작권 남용에 관한 미국 연방항소법원의 ‘Lasercomb 사건’의 의미와 한계

저작권 남용에 관한 미국 연방항소법원의 ‘Lasercomb 사건’의 의미와 한계

The Principles of the Law of Software Contracts: At Odds with Copyright, Consumers, and European Law?

This paper will describe the drafting history of the Principles of the Law of Software Contracts, with particular attention to the extent of consumer and public-interest group representation in the process. The drafting process, I will argue, did not take adequate stock of problems identified in the late 1990s with proposed Article 2B of the Uniform Commercial Code, and then the Uniform Computer Information Transactions Act (“UCITA”), including provisions encouraging terms in violation of public policy, that constitute copyright or patent misuse by attempting to prohibit fair use or withdraw material from the public domain, or that are not properly disclosed before the purchase. The difference between the present situation and the 1990s, however, is the much greater importance today of European Community directives on the subject of consumer protection and electronic commerce, particularly given the explosion in e-commerce between the United States and Europe. This paper will analyze whether the Principles do enough to protect the interests of consumers and the public in four key areas: (1) consistency with U.S. federal and state statutory and common law, (2) clear and conspicuous disclosure of all relevant terms and conditions prior to the sale, (3) regulation and prevention of one-sided and unconscionable contract terms, and (4) consistency with European Community and domestic European law. My thesis is that the Principles and the comments thereto appear to sanction conduct that is in tension with the federal Copyright and Patent Acts, the common law of several U.S. states, and the European Community’s directives, especially those on the Legal Protection of Software Programs (1991), Unfair Terms in Consumer Contracts (1993), and Protection of Consumers in Respect of Distance Contracts (1997). To that extent, the Principles seem to be an imperfect attempt to unify the law of software contracts, codify best practices, or develop the law in a desirable direction. Finally, the paper will discuss whether and when it is appropriate to harmonize U.S. and E.C. law and public policy.

Archival Foreclosure: A Scholar's Lawsuit Against the Estate of James Joyce

The increasing scope and duration of copyright protection have had a noticeable impact on archive-based scholarship. More than a few literary estates have hampered scholars' efforts to quote from important documents freely accessible to the public in libraries but not fully usable in published scholarship due to copyright restraints. This paper tells the story of one scholar who fought back by suing the Estate of James Joyce for a judicial declaration that what she planned to do with archival materials was fair use and what the Joyce Estate had been doing to interfere with scholarship was copyright misuse.

Protecting the Public Policy Rationale of Copyright: Reconsidering Copyright Misuse

Copyright misuse protects a defendant's use of copyrighted material when the plaintiff has claimed a right in his work beyond the scope of copyright law and when such a claim is contrary to public policy. Historically, as this article demonstrates, courts have been reluctant to find in favor of defendants who claim copyright misuse and have interpreted the doctrine narrowly on the basis of antitrust considerations. However, more recent decisions and a growing body of literature suggest a greater role for copyright misuse. This article argues for such an expanded role and proposes a new section of copyright law titled "Limitations on Infringement: Copyright Misuse."

The Evolving Doctrine of Copyright Misuse

Copyright misuse is a common law defense to copyright infringement. In contrast with defenses addressing the nature of copyrighted material or the defendant's conduct, copyright misuse focuses on the plaintiff's conduct and determines whether the plaintiff is entitled to enforce her rights. This alternative focus orients misuse differently. Copyright misuse regulates copyright owners' use of their rights, polices the boundaries set by Congress in the copyright statute, and protects important public interests. This chapter explores the defense of copyright misuse in a manner calculated to expose the theoretical underpinnings of the doctrine as well as to provide practical guidance on future doctrinal development. The chapter is organized as follows. Part II provides a brief introduction to the (potential) jurisprudential functions of the copyright misuse doctrine. It first develops a schematic model for understanding the jurisprudential relationship between the copyright misuse doctrine and copyright, patent, and antitrust laws. Next, it considers two approaches to formulating and applying misuse principles: per se rules and the rule of reason. Part III analyzes the case law in the Supreme Court and the federal courts of appeals. Part III.A examines four foundational Supreme Court cases. Part III.B covers circuit precedents, and Part III.C covers other influential case law. Part III.D provides a brief overview of district court litigation. In Part IV, we distill a set of guiding principles for evaluating copyright misuse. We conclude that courts ask first whether a challenged action amounts to per se misuse by looking to the facts for evidence of blatantly egregious conduct. Two sets of per se rules may be fashioned by the courts. The first type identifies misuse violating the antitrust laws while the second type identifies misuse violating an important public policy behind the intellectual property grant. We discuss both types of per se rules. If a challenged action does not fit within either set of per se rules, courts may engage in a rule of reason analysis. Again, two approaches are possible. The first approach, which coincides with patent and antitrust analysis, weighs the anticompetitive and procompetitive effects of the challenged action. The second approach is broader in scope and balances policy interests reflected in the intellectual property system. We evaluate these approaches to identifying misuse and conclude that courts should apply both types of per se rules - antitrust-based and policy-based - and should only apply a competition-based balancing approach. We remain skeptical about the advisability of a policy balancing test - e.g., a test that weighs pro-expressive against anti-expressive effects on a case-by-case basis - for doctrinal as well as pragmatic reasons.

Copyright as Entry Policy: The Case of Digital Distribution

The point of entry of a new product or new service is especially important for a successful economy. Entry creates the possibility of fresh competition with existing products. At least as important, we know that new products have been a critical source—if not the critical source—of new value, for both consumers and shareholders. In this paper, I want to consider how copyright law influences entry in digital distribution of music and video. The subject encompasses past and current successes in distribution—cable TV and the VCR—current and recent controversies—Napster and the pending cases addressing its successors—as well as possible next steps in distribution, such as web radio, interactive music services and the digital video recorder. Much of the relevant distribution entry policy is set through copyright law. With some frequency, copyright law has important competition consequences, but the relevant inquiries in copyright may not track the issues that are of interest to competition law. Copyright law entry policy reflects an amalgam of statutory interventions—as part of the restructuring of the copyright statute in 1976 and then subsequently in a series of quite context-specific tailored statutes—and judge-made copyright law addressing third-party liability for copyright infringement and the doctrine of copyright misuse. The copyright statutes reflect substantial path dependence, as well as the play of powerful interests. Fluke exclusions, such as that for sound recordings, result in the Digital Performance Right in