Copyright Issues Ripe for Reform


Photo: Joichi Ito

Now that I’ve been mostly away from the copyright battles for a while and am unlikely to have much to do with them in the foreseeable future, I thought it would be good to get down some thoughts about issues I think are ripe for reform in that area and solicit feedback. These are not Google Book Settlement-related but are things that should be done regardless of how that works out.

My standard disclaimer applies. I used to work at Google and worked on the settlement which is currently awaiting final approval but I do not work at Google now and my views are not Google’s views (nor are they my current employer, Twitter’s, views).

Copyright, DRM and Uses of Books: One of the differences between an ebook and a book is that reading an ebook likely involves making a copy under US law (but see Cablevision and this is less true in many circumstances under EU and other international law but see Eric Smith’s presentation on why he thinks there is a Berne/Trips obligation to force ereading to be a copy right). Similarly, lending a book will likely mean making a copy, as would giving or selling an ebook to someone else. These typical uses of books were not traditionally the exclusive right of copyright holders (though a variety of countries have adopted a registration-required lending right) or even the subject of copyright law but become potentially problematic for readers of ebooks. It is easy to see why this is bad for readers and libraries as a bunch of stuff that was previously done without a gatekeeper now has a gatekeeper who may or may not be able to be found or want to be paid again for the “new” right. Add digital rights management, and many uses taken for granted by readers, including those with print disabilities, lose out in a pretty major way without much gain for authors or publishers. Much has been written about this part of the copyright and digital rights management problem as applied to ebooks, so I won’t bore you with more.

However, one issue that has not received much attention is the problem these new rights within copyright pose for ebook sellers, publishers and ultimately authors because of the jurisdictional/licensing implications. For example, if Amazon sells you an ebook in the US, can you then read it in France? What if Amazon only has a deal with the US publisher and not the French rightsholder? For physical books this was not a big issue mostly because neither buying a book in the US nor reading it in France involved making a copy and the imperfect information about a person’s “true” home market meant that most agreements were about sales location as opposed to the reader’s location when reading. At the end of the day, some books would enter France without any payment to the French publisher who had an exclusive agreement but that slippage was not that measurable and, apart from in piracy or price discriminatory contexts, was not a big deal. With ebooks, because of both potential copyright implications in access and much better data to be gathered, it becomes a bigger deal. This is particularly pernicious for books that are not new because old licenses are very unlikely to take this into consideration. Add statutory damages and class actions and you have a potentially huge mess.

Orphan Works: The fate of orphan works in the digital age also has been frequently discussed. The one wrinkle I would add here is that it would be great to solve this issue in a way that includes the various things that are in books but owned by people other than those that we generally consider the author or publisher of the book. Many call these “associated rights” and they include content not owned by the author even if it is hard to tell it is not owned by the author. Furthermore, while book copyright holders are often compensated through a royalty structure, associated rightsholders, when compensated, are usually compensated by a fee limited to a specific set of uses, such as a print run.  One solution is to cut out such pieces of books but because of the difficulty in figuring out which pieces need to be cut out what this problem really means is that most orphaned books simply can’t be republished without copyright threat.  Whichever way the Google Book settlement goes, this is an important problem that could use some (more) hard work.

Twin Books: There is an argument under the U.S. 9th Circuit’s Twin Books case that there are some books published pre-1923 that are actually still in copyright in the U.S. Most experts think this is silly and I certainly agree, but it poses a potential danger to folks such as the Internet Archive, which is based in the 9th Circuit, and it does nothing to help authors or publishers. In October 2008 the Ninth Circuit in continuing to follow Twin Books wrote “Although the reasoning of Twin Books can be, and has been, criticized, it is still binding in this circuit.” (See Societe Civile Sucession v. Renoir — yes, that Renoir). And then imagine how that plays out in various bits of a book, such as pictures and excerpts, that are not owned by the author or publisher of the book.

108: Section 108, which is a specific US copyright exception for archiving (in addition to fair use) needs to be updated for the digital age. Many believe the Section 108 Study Group, though well-meaning, arrived at an end point that is worse than fair use for people that want to archive. Archiving, done well, is a boon to authors and not a threat to publishers. It would seem like a no-brainer to do an updated version that would allow archives to exist and function well without having to rely on fair use. And yet, none has been forthcoming.

Reversion and “Older” Books: A typical book contract allows for reversion of rights back to the author once a book is out of print and certain steps have been taken. There are reversion issues for newer books hotly contested between authors and publishers. For example, does a book ever go out of print when on-demand printing happens? But less attention has been focused on the mess created by reversion in older books. These issues principally arise for three reasons: (a) different contracts treat reversion differently; (b) records of contracts and reversionary actions are not well kept; and (c) authors and publishers disappear or change. Combine the three and you have many authors who can’t even tell whether rights for their own works have reverted to them. Publishers have trouble saying whether they own the rights to a particular book or group of books. And in many cases there is no good way to “open” a book by republishing it. This has always been an issue but is more of an issue now because the declining cost of “publication” re-values back catalogs (as it has with music and video). Bringing an old book back to publication used to be a non-starter for economic reasons. Now, in many cases, it is only legal reasons which frustrate republication.

Solutions: I don’t claim to know good solutions for all of these and am interested in the constructive thoughts of others. I’m pretty sure stopping the Google Books settlement from happening will solve none of these problems.

Alexander Macgillivray is Twitter’s General Counsel and also leads its Corporate Development and Public Policy efforts. You can follow his tweets at @macgill. Previously Mr. Macgillivray was Deputy General Counsel for Products & IP at Google and a litigator at Wilson Sonsini Goodrich & Rosati.