Copyright: DMCA vs Fair Use

39 steps movie poster
39 Steps movie poster (copyright expired)

The DMCA (Digital Millenium Copyright Act) has created a great copyright law divide between analog and digital media. For analog works, traditional copyright principles such as “fair use” apply. For digital media, not so much, because the DMCA shifts the burden of proof.

Plays, for example, are an analog medium. A good way to understand the differences is to analyze a modern play, and see what elements might cause problems for digital content.

Traditional Copyright Law: The four-person play “39 steps” humorously interprets the classic 1935 Hitchcock film. Appropriately enough for our topic, the plot involves intrigue, secrets, and a falsely accused innocent man. This play is also a good example of how, at least for analog media, creatives who understand copyright law can use a mix of public domain and copyrighted source material in their own creative works.

The 1935 Hitchcock film has a US copyright that expires in 2026. The film had a large cast and budget, was a big success, and had dramatic elements that Hitchcock reused in later films.

By contrast, 39 steps (the play) was written in 1995 (later revised in 2005). It also has been very successful, first as a 9-year run in London, and since 2008, in the US.

What about copyright permission? The play was written so that permission wasn’t needed. The playwrights cleverly exploited various permissive areas of copyright law, including copyright term limits and fair use.

    • The movie was based on a now copyright-expired 1915 novel by John Buchan
    • The play uses many fair use copyright principles including:
        • Parody – the play pokes gentle fun at Hitchcock’s works
        • Transformation – the play uses clever tricks to reimagine the movie
        • Amount of material taken – Only short Hitchcock film references
        • Trivial impact on the potential market for the original 1935 film

This is traditional copyright law. It acts to protect the interests of content creators. It also acts, through fair use, to allow others to create new works.

DMCA Copyright Law:  Sadly, for digital media, copyright law presently suffers from regulatory capture. Specifically, the Digital Millennium Copyright Act (DMCA). Although the DMCA states that it “shall not affect” fair use, this is not the case. In reality, the DMCA has certain “guilty until proven innocent” features that have greatly damaged fair use. The “gotcha” is that legally, fair use does not mean “no” copyright infringement. Instead, traditionally, fair use is only a “defense” against an accusation of copyright infringement. So, under traditional law, all fair use material is still infringing, it is just OK infringement.

Takedown notices: The DMCA requires content servers, such as YouTube, to almost immediately remove content in response to a takedown notice. This happens when anyone representing a copyright holder asserts, in a takedown notice, that: the content “infringes”, and was unauthorized by the owner or by the law. There are no perjury penalties regarding the content assertions. (Perjury does apply if there was no authorization.)

Think that “or by the law” includes fair use? Maybe, but to what extent? Remember that traditionally, all fair use material still infringes, and it may literally take a Federal court to completely decide if the fair use is OK. This can be prohibitively expensive and time-consuming. So, a takedown notice that fails to consider, or only superficially considers, fair use is not committing perjury.  (No DMCA penalties if they did not tell the truth.)

Hence the 39 steps example. The DMCA switches the burden of proof and undermines centuries of fair use law. It gives us intrigue, secrets, and innocent persons accused of dastardly deeds.

All is not lost, however. Some hopeful developments include:

    • In an important 2015 ruling, the Federal 9th district (California) court held that 17 U.S.C. 107 requires at least a limited DMCA fair use analysis.  So copyright holders need to at least consider fair use, or at least pretend they did.
    • Due to the court decision, fair use is now a legitimate response to a takedown notice. For example, YouTube has a copyright counter-notification process to respond to takedown notices. YouTube states that it may consider, at least for the US, certain types of fair use defenses.
    • YouTube has also recently filed a lawsuit against a defendant who allegedly practiced extensive DMCA takedown fraud and extortion.

But the bottom line is that digital content creatives need to be cautious. Don’t just quickly read about fair use, and assume that it will automatically protect your work from takedown notices. It won’t.

Copyright registration

copyright registration
Copyright registration

In the US, copyright registration is needed to enforce your copyrights. This can be done online at the Electronic Copyright Office (eCO).

In theory, copyright exists as soon as a work is created. But without the evidence provided by formal copyright registration, you will have little luck enforcing or defending your legal rights.

Copyrights are registered at the United States Copyright Office. This office maintains an online electronic copyright registration website (eCO) at copyright.gov. Their website allows you to upload and file most (but not all) creative works, along with authorship and ownership information.

In addition to the work itself, other registration information that you need to provide includes work title, year of completion, date of first publication, and name of the authors. If you are claiming that you own the work (e.g. author or “work for hire”), you also need to state this and give the owner’s name and address. You also need to include a brief description of the work. You must also disclose any preexisting material that may be included in your uploaded work.  This preexisting material can include stock graphics or sounds, for example.

The website accepts a fairly decent range of common text, image, audio, and video file types, including pdf, rtf, doc, midi, jpg, pdf, png, mpg, mp3, mp4, avi, and mov. The website also accepts common compressed formats such as rar and zip.  The file sizes are limited by your connection speed and the website’s sixty-minute upload time limit. So at broadband speeds, Gigabyte+ sized files are possible. However, unless you pay extra for “full-term retention”, the copyright office will only guarantee to retain your file(s) for 20 years.

Although the submission process itself is quick, the copyright office then takes about 3 months (1-6 months) to process electronic submissions.  “Snail Mail” submissions can take twice as long! If there are problems with the submission, the copyright office will correspond with you and require that these problems be fixed.  This “correspondence” can delay registration by many more months.  You can pay extra for expedited registration, but you must also adequately explain why there is a rush.

There are some tricky aspects to the system. Many creative works are divided into sections, such as book chapters, images in a picture book, slide shows, video sections, music album tracks, and so on. Many creative works also combine more than one media (e.g. combine text, images, video, sound). The copyright office distinguishes between these different media types, and also distinguishes between individual works, “groups”, and “collections”. These have different filing fees and requirements. To ensure success and avoid “correspondence”, it is important to get this right.

Copyright legal actions often have short deadlines. Thus, it is generally a good idea to start the copyright registration process early (in advance of any legal problems), so that registration delays don’t cause you to blow a legal deadline.

Amazon and IP disputes

The court of Amazon

Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.

Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.

Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.

Trademarks:

The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.

The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name.  There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.

Copyrights:

Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.

Patents:

Amazon has recently announced a pilot patent dispute program.  The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense).  Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.

The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.

Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.

Contractor Copyrights

Contractor
Contractor

Want to pay a contractor to produce creative material for you, and then actually own the copyrights? Getting ownership of contractor copyrights is tricky.

Copyrighted material – be it text, images, music, or code, is important for many creative and commercial efforts. None of us have the time or talent to do all of this ourselves, and so it is natural to turn to experts to help provide this material.

We could hire employees for this purpose.  However, many projects are of limited duration, and alas, unlike “the good old days” where employees had no rights and could be hired and fired at whim, these days employees actually have rights and benefits. These include unemployment insurance, social security, tax withholding, and the like. No one wants to go back to the Victorian era, but at the same time, it can be a hassle to employ someone.

Contractors are often used to avoid this hassle.  Contractors are expected to deliver results, but to do so in their own way. We pay money, expect to obtain the benefit of the deal, and then no more hassles or obligations. This simple expectation breaks down when it comes to IP, however, and contractor copyrights are particularly tricky.

To somewhat oversimplify, if you want to pay someone and obtain ownership of copyrighted material in return, the following legal considerations can apply:

  • Under Federal law, full copyright ownership requires a “work for hire” agreement
  • “Work for hire” agreements may imply (and in California, can define) that the worker is an employee
  • Employees are legally entitled to various employee benefits
  • Contractors are not legally entitled to employee benefits
  • Absent an assignment, copyright ownership remains with the contractor
  • Copyright ownership assignments must be in writing
  • Copyright assignments that are not “work for hire” can be terminated by the author or heirs after 35 years

This creates interesting legal problems.  It is common to put “work for hire” terms in contract agreements. The idea is to automatically acquire full copyright ownership this way.  However, such “work for hire” terms can be inconsistent or even incompatible with the definition of “contractor”.  This can open the door to potential legal headaches.

In an alternative approach, there is no “work for hire” clause, but as part of the deal, the author-contractor agrees to assign all contractor copyrights to the work that you have paid for. This is not perfect either. Additional assignment paperwork is often needed, and Federal copyright law allows an author-contractor to petition to terminate this assignment 35 years later.

35 years is fine for most purposes, but what if you are thinking on longer terms? Here, efforts to work around the 35-year copyright assignment termination issue should be considered. One option is to contract with a corporation that in turn “work for hire” employs the author.

Terminating copyright transfers

return
“Return”, by Ldavis (CC BY-SA 3.0)

Someone in your family write something years ago that was a hit? Copyright transfer termination laws might let you get this old copyright back.  

US copyright laws contain certain author-friendly provisions that allow independent (not working for hire) authors to eventually get their copyrights back.  The underlying idea is to give a second chance to young authors who may have entered into unfavorable copyright assignment (transfer) deals with various publishers.

For example, the 1976 copyright act (17 U.S. Code § 203, effective 1978) states that under certain situations (such as if written notice is given 2-10 years in advance), the rights to previously assigned copyrights can be retrieved by the author (or heirs) during a limited 5 year time window that starts 35 years after the initial assignment or publication.

Although since 1978, there have been other substantial changes to US copyright law (e.g. the “Sonny Bono” Copyright Term Extension act of 1998), this 1976/1978 era termination right still exists.

Indeed the concept of author termination rights predates the 1976/1978 copyright act.  Previous copyright acts, such as the 1909 US copyright act, had independent author termination rights as well.  For example, under the 1909 act (in effect until 1977), copyright terms were 28 years, and the author had the option to renew the copyright one time, for a total of 56 years.  During this first renewal period, under certain situations, the author could also terminate his original copyright assignments at 28 years. But no more.

The 1976/78 copyright act changed the copyright term (for works not made for hire) from 56 years to the author’s lifetime plus 50 years, and later the renewal requirement was also dropped. The 1976/78 copyright act changed the author termination rules for pre-1978 works. These days, for pre-1978 works, under 17 U.S. Code § 304, independent authors (or heirs of independent authors) are now given a five-year window, starting at 56 years, to get their copyrights back.

Sound complicated?  This is the simplified version; the reality is even more complex!  For example, what is a “work for hire?” For non-employees, it is a work that someone has commissioned you to do, and these days this commission agreement must be in writing.  However, in the pre-1978 era, companies would try to incorporate “work for hire” clauses into assignments from even non-commissioned authors. The courts did not always buy this, as per a famous Marvel comics case involving Captain America.  Like to get the rights to this?

These rules are so complex that you almost need a computer program to sort through the various options.  Fortunately, this has been done.  The Authors Alliance, in conjunction with Creative Commons, now offers online software designed to give authors at least a rough idea of the feasibility of terminating their earlier copyright assignments.  This software is available at rightsback.org.