The Next Great Copyright Act Conference, Berkeley: part 1

Copyright Subject Matter and Formalities

Moderator: Daralyn Durie, Durie Tangri

Tony Reese, UC Irvine Law School

Revising the © Act will require defining the scope of subject matter; not recently controversial but important threshold question—hard to evaluate rights and remedies w/o subject matter. Represents Congress’s decision about which types of authors’ creations need © protection. No major controversies now, as sound recordings were in the 70s, but wants to propose principles for drafting.

How we got here: gradual expansion of © subject matter over time.  1909 approach: “all the writings of an author,” plus a list of classes in which works can be registered—familiar list.  Courts/© Office generally treated the list as comprehensive.  1976: extends © to all “works of authorship,” expressly undefined, but another list of categories included. 1990: added architectural works.

(1)   Statute should expressly enumerate all of the categories of subject matter that Congress intends to protect. Current statute doesn’t do that.  Given the substantial, long-lasting exclusive rights given to anyone who fixes a minimally creative work of authorship, many people might want to claim statutory protection. Recent controversies: yoga poses; artistically planted flowerbeds.  Perfume/fragrance (controversy in Europe); culinary dishes; fireworks displays; typography; digitally recorded smells; golf course design; invented languages; tactile sensory enhancement for books. We should avoid these undefined, open-ended, residual claims. Whether we protect a work with © is a policy question Congress should answer: is protection needed for perfume to encourage sufficient production/dissemination, and do the benefits of protection outweigh the costs? Constitution commits the Q to Congress and is better positioned to answer in general rather than facing one copier and one copied claimant.  Restitutionary impulse of courts fights against the empirical/policy analysis needed for whether protection is generally justified. Congress can also tailor protection if/when necessary. Congress could choose sui generis regime for perfume if something is needed.  (E.g., no derivative work right for perfumes, as the rules differ for sound recordings/architectural works.) Otherwise, © will be binary: if perfume is protected, there is a derivative works right. If perfume is protected, anyone who’s copied w/in the statute of limitations is on the hook; but Congress typically adds subject matter on a forward-looking basis, and can deal better w/timing and retroactivity. Given all this, it’s unsurprising that courts and the © Office have generally declined to take up the statute’s invitation to discover new categories.  1960s: when Office registered computer programs, it did so as books (like how-to books).

(2)   Statute should protect compilations and derivative works only if they fall within one of the enumerated categories; current statute is ambiguous. Consider a zoo: current definition says the collection and assembling of preexisting materials. If it’s original and the collection is stable enough to count as fixed, then a zoo is a compilation even though it’s outside all the enumerated categories. A menu could be protectable; disc of digitally recorded smells.  No clear need to protect such compilations outside the categories; the Act should be clear. The Office so interprets the Act but it should be clearer.

(3)   Statute should define each enumerated category; currently define only 5 of 8, and definitions could help.  Choreographic work: would help know whether yoga, sports routines, bicycle ballet count as choreographic works. Definition of dramatic works might help in Garcia whether an actor’s individual performance counts as a dramatic work.

(4)   Congress shouldn’t just punt by going to the constitutional power. 

Wendy Gordon, Boston University Law School

Subject matter and exclusive rights can be reformulated so each means the other; useful articles are a good example.  Reese’s suggestion about compilations/collective works is great and should be adopted.

Problem: historic division between patent and copyright. Patent’s negative pregnant: things that aren’t patentable/patented but functional—therefore in the public domain, at least as far as in rem exclusive rights are concerned.  This preserves competition/incentive for people to pursue patents for patentable subject matter. Patent wants to secure progress; we don’t want © with its long term and broad scope to get in the way, but there are a lot of beautiful objects that aren’t functional.  So it feels wasteful to deny © to pretty things that aren’t inventive enough to patent.  However sad that fact might be, © isn’t the place for expansive protection, though she has no objection to a narrow sui generis design right (or design patent, which needs improvement but does exist).

Ok, so we have this bifurcation into © and patent subject matter.  Ordinarily, other IP laws defer to patent and its negative pregnant.  But there’s a struggle to keep finding some compromise to allow the aesthetic aspects to be sheltered by some sort of exclusive claim when no real harm to patent would occur.  Baker v. Selden was right to focus not on the intangible itself but the purpose it served.

What are the appropriate subjects of ©?  Educate, enthrall, allow us to dance—none of these belong in patent. When these functions are served, no special scrutiny need apply.  Current statute describes useful article for items whose creativity resides in shape and line: intrinsic utilitarian function not merely to portray appearance/convey information.  This works for visual works, but not for things like dance, music—need a slightly different definition. Drassinower: © is about communication and works that don’t communicate shouldn’t be protected, but CONTU turned its back on that some time ago. Whether or not we adopt © as communication or something more visual and shape oriented, some conception of object- or purpose-limited definitions of subject matter makes sense.

What of a musical tone that releases your phone messages? Vocalization that encodes an encrypted file that is unlocked by voiceprint?  Those are things we wouldn’t want copyright to protect: they are functional.  Visually pleasing pattern of notes made into wallpaper: likewise.

Separability has caused much heartburn, caused not just by inevitable differences in perspective but by awkward drafting of test: whether features can exist independently of utility has very little to do with the policy at issue, which is to keep things that help utilitarian progress stay public domain or governed by patent law. Test should be switched to make that point more clearly. Has statutory amendments to propose.  Copyright in a picture of a object doesn’t extend to any right to control making the object. And rights in the object don’t extend to rights that would impair the public’s ability to copy the utilitarian aspects.

Rob Kasunic, U.S. Copyright Office

Time for big revision instead of legislating on margins, according to Register Pallante. Hearings on copyright issues have begun.  Many roundtables at Office and PTO/NTIA have begun. Hearing on subject matter was an eclectic mix.

Encouraging provision of standardized unique identifiers of works/authors/owners could foster a more efficient market and reduce orphan works. Lots of recent press on UK’s Copyright Hub as central source for info collection/provision. We have 150 years of data on this through public registry/recorded documents.  That is our Copyright Hub, which we need to improve and modernize. This needs funding! Invest in unique attributes of public registry, which can then interact with private registries that serve specific communities/needs. We can be a model for the international community if we make it happen. 

Registration is the foundation of the Office and the national copyright system as a whole. We must teach people what registration is and does. Most © text books only spend a few pages on this, and most law profs don’t know just how great a role registration plays.  But enormous effect on litigation.  Practitioners are well aware of registration questions. On an average day a registration employee does the equivalent of 5-6 copyright final exams.  Issues w/useful articles and compilations are both significant questions for the Office. We are required to examine claims/deposits and issue or refuse certificates.  Has recommended creating a registry of refusals, which would be useful to the public. We also require claims to be amended/clarified/unsupported statements to be removed; we annotate certificates to clarify their scope.  Claims depicting useful articles will be annotated with §113 language; claims that seem to talk about an idea will be annotated with §102 language; we may register under a rule of doubt—expects rulemaking on computer programs/intersection of copyright and trade secret.  It’s troublesome if there’s an infringement action based on something no one at the Office ever reviewed/redaction for trade secret, and claims are on the rise.

We serve as a check on overreaching, and help courts when they give us a chance.  Kasunic drafted policy statement on compilations that don’t result in copyrightable subject matter—not just the Office’s whim, but following from legislative history. This allowed court to resolve a lawsuit on Bikram yoga that was pending for years; court quoted heavily from policy statement. Compilation authorship must be perceptible in the deposit, which matters for things like numbers, putting us at odds with two courts of appeals. We’ve defined choreography for rejecting social dance/end zone dances. We’ve rejected synthetic DNA claims. We’ve stuck to our useful articles/separability analysis, and the 9^th Circuit has given us deference in the recent hookah case.

Registration system has had significant victories in the last years: Proline, court agreed it had no authority to order issuance of certifications of registration.  Court deferred on what info has to be in an application. Brownstein: 9^th Circuit found no authority to order Office to cancel registration. We get deference if we are reasoned and logical and show our work.

Threats: private registries will not fulfill these goals; they may provide info, but they do not provide a filter.  Second threat: the application approach that some courts follow, allowing jurisdiction before issuance of registration; undermines registration/national copyright system.

Solidify and invest in this role through the revision process.

Carl Malamud, Public.resource.org

Public.resource.org puts public databases on the internet, when unavailable perhaps because of misguided fee structure or agency says it’s too hard to do or nobody cares about info (that’s what we heard from SEC and PTO, even though patent database is specifically called out on Constitution). We are suing IRS to get e-file data online. We put video online—14,000 hours of congressional hearings; 6000 videos on YouTube and Internet Archive, with 50 million views.

We do the law. All courts of appeals—many times retyped.  Court documents, with full privacy audit.  One of our most important tools is “government works” clause, which must be reaffirmed. Unique to US and very important tool for online info.

Another doctrine, not explicit in the law: “edicts of gov’t”—the law has no ©.  Wheaton v. Peters, reaffermed over and over, e.g. in Veeck. But: Mississippi AG has threatened us with $1000/day fine per law, claiming under state law.  In Georgia, the head of judiciary committee in Senate has sent us multiple takedowns for posting the only official code of Georgia—© is asserted by the state. Delaware Code: says that anyone who uses code w/out authority of secretary of state shall be fined or imprisoned.  Harvard law students sought a license to speak the law.

Half the cities in California asserted copyright, but we’ve found cities remarkably cooperative.  Volunteers have gone in and taken codes, and made dramatically better versions: dccode.org is a dramatically better product. It’s partly democracy and partly innovation: better tools for citizens and lawyers.

Legally mandated public safety codes and tech documents: building, fire, elevator, boiler, etc. codes. In some ways the most important laws, and when ignored you get a 1000 foot wall of flame in a gas refinery explosion. These laws are typically enacted at state level, but we also have many in the CFR—hazmat transfer, pipeline safety, workplace safety. We’ve begun posting these in 2008. We redraw graphics so that they can be resized; we recode the formulas so they can be read by accessible readers. 19,000 public safety codes for the country of India.  Train safety; food processing; water testing; toy safety; etc.

This isn’t a theoretical issue—we’re being sued in DC for having posted the national electrical code mandated in all 50 states. We’re being sued in Germany for having posted the standard of safety in Europe for baby pacifiers. We have 28,000 documents: theoretically could be billions in statutory damages. But the concept that the law is not copyrightable because it is owned by the people is crystal clear in the common law. Requiring a license to speak the law is fundamentally undemocratic, but this muddled state has a huge chilling effect on innovation. Codify “edicts of law” exclusion. Breyer: if the law isn’t public, it isn’t the law.

Durie: the world is changing; there will be new things we can’t imagine—why should we make an exclusive list?

Reese: there’s been no case made that any of the examples I mentioned are underproduced without copyright protection.  We certainly don’t want to exclude blog posts because they’re not books, but of course the broad interpretation of “book” in the 1909 act would have allowed that.  We have broad categories now, and they can take care of new technologies. To the extent really new tech comes along, like digitally recorded smells, or changing your heart rate with a character in a book as you read, it seems fine to say that judicial or administrative interpretation shouldn’t let that in and Congress should act.

Durie: should we reject copyright protection for unfixed performances, or rethink that?

Gordon: we don’t have constitutional freedom to do that. Main thing needing clarification: unfixed works look like they can be protected by state law, but the §301 kind of saving clause shouldn’t be read literally, and protection for unfixed works should be preempted when it would interfere with the objectives of federal copyright.

Kasunic: in many cases the question comes down to “what is the work?”  Fireworks, food on a plate—the images thereof could be a work, but sometimes people get confused about what’s protected. Portrayal of uncopyrightable subject matter can sometimes be copyrighted; this causes enormous problems in registration system, and we’re trying to at least separate the issues. People don’t send parks to us in the mail, or fireworks.  We get ID material, and that material is always some other kind of work, and getting clarity there is important.  Same with unfixed works. In order to talk about infringement, you have to fix the work!

Durie: magic tricks—Office’s view?

Kasunic: Teller’s magic trick was registered, very thorough description with step by step description and drawings. The question is the scope: §102(a)/§102(b)—at some point you always reach an idea, system or process.  We could ask Congress to resolve this, but Learned Hand said it well: nobody will ever fully define that line.

Reese: Congress could give some help by defining pantomime or dramatic work, but left us at sea.