Thorny Copyright Issues-Development on the Horizon?

AuthorJune M. Besek
Pages1-62
Published in Landslide® magazine, Volume 13, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Perspective
Today there are countless copies of works available
for free on the internet to the detriment of their copy-
right owners. Under the Digital Millennium Copyright
Act (DMCA), copyright owners can get their works removed
from an online service provider’s (OSP’s) service by sending
a notice to the OSP.1 But because works can now be copied
and distributed with lightning speed, the takedown provi-
sions are of limited effect. Even where copies are removed,
they’re often promptly uploaded again by users—a phenome-
non referred to as the “whack-a-mole” problem.2 The result is
that unauthorized copies of copyrighted works are perpetually
available on the internet.
Congress has embarked on an ambitious project to amend
the DMCA, in particular its notice and takedown procedures.3
In 1998, when the law was passed, Congress believed that OSPs
risked potential liability for copyright infringement because of
their activities, e.g., copying and distributing copyrighted works.
Congress reasoned that without “safe harbors” from infringe-
ment liability, OSPs would be reluctant to expand their activities,
thus impeding the growth of the internet.4 These safe harbors,
codied in § 512 of the Copyright Act, limit OSPs’ potential lia-
bility only to injunctions, and then only in limited circumstances,
provided they comply with the statutory conditions.5
One of the § 512 safe harbors limits OSPs’ liability con-
cerning infringing materials placed on their services by third
parties. To get the benet of this safe harbor, the OSP must
abide by several statutory requirements, among them:
1. The OSP must remove the infringing material from its
service “expeditiously” upon receipt of a proper notice
from a complaining copyright owner.
2. If the party who posted the allegedly infringing mate-
rial sends a proper counter-notice, the OSP must put the
material back up no less than 10 days or more than 14
days from the counter-notice, unless the complainant
initiates a legal action for an order to restrain infringe-
ment by the posting party.
3. Even without notice, if the OSP has actual knowledge
of the infringing material, or is aware of facts and cir-
cumstances from which infringing activity is apparent
(“red ag knowledge”), it must respond expeditiously
to remove the infringing material.
4. The OSP must terminate repeat infringers.6
Congress thought these provisions would provide a fair bal-
ance: protecting OSPs and fostering the growth of the internet.
Responsibility to identify infringing material would remain with
copyright owners, who would benet from the ability to get
infringing material taken down simply by notication to the OSP.
But this isn’t the way notice and takedown procedures have
worked. Since 1998, with the explosion of the internet, the
number of notices of infringement has also grown at such an
astonishing rate that today they threaten to overwhelm the notice
and takedown system. As the Copyright Ofce observed in its
recent report, Section 512 of Title 17 (Section 512 Report), from
1998 to 2010, Google received notications for fewer than three
million URLs containing allegedly infringing content. In 2017,
Google received notices relating to 882 million URLs.7
The Section 512 Report describes the current problems
and suggests where Congress might consider changing the
law. Even before its release, the Subcommittee on Intellectual
Property of the Senate Judiciary Committee began a series of
hearings on the DMCA, devoted in large part to how § 512 is
working.8 The House has also shown interest in these issues
and plans to embark on a series of “listening sessions” with
various groups of stakeholders.
Right holders and others are far apart as was clear in the
issues they raised in the Copyright Ofce proceedings and
recent Senate hearings:
Right holders emphasize the burdensome nature of having
to send takedown notices repeatedly for the same mate-
rial, citing the whack-a-mole problem, as discussed above.
The current regime is a drain on their time, attention, and
money, diminishing the number of new works they can cre-
ate. Many recommend a “take down, stay down” rule.9 OSPs,
on the other hand, argue that the law is working as Congress
intended. The relative certainty provided to OSPs by § 512
has led to innovations in technology, cooperation among
stakeholders, and rapid growth of the internet.10 A take down,
stay down policy could adversely affect free speech, because
posting a work in one context may be infringing, while in
another context may be permissible.
Copyright owners maintain that courts’ narrow inter-
pretation of red ag knowledge removes the force of that
provision. They argue that courts are so reluctant to nd that
an OSP should have known of infringement, that only actual
knowledge or receipt of a notication triggers an OSP’s
takedown obligation.11 OSPs posit that infringements aren’t
June M. Besek is chair of the ABA Section of Intellectual Property
Law. She is the executive director of the Kernochan Center for Law,
Media and the Arts and a lecturer in law at Columbia Law School.
Her research and teaching focus on copyright and related rights,
particularly as they relate to new technologies. She can be reached
at jbesek@lawcolumbia.edu.
By June M. Besek
Thorny Copyright Issues—Development on the Horizon?
Continued on page 62
Published in Landslide® magazine, Volume 13, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Volume 13 • Number 1 • September/October 2020
2 LANDSLIDE n September/October 2020
5 Questions for Senator Thom Tillis
Senator Tillis shares some of the goals of the Subcommittee on Intellectual
Property, thoughts on how COVID-19 is impacting innovation, and top action
items needed to stop online piracy and counterfeiting.
A conversation with Kira M. Alvarez
7 What They Do for a Living: The Right of
Publicity in Video Games and Movies
Explore recent developments in right of publicity jurisprudence and consider
why similar cases have yielded differing results.
By Robert C. Cumbow
Columns
1 Perspective
Thorny Copyright
Issues—Development
on the Horizon?
By June M. Besek
52 Meeting of the Minds
Ten Years Since Bilski:
Challenges Remain
in Deciding Patent
Eligibility of Computer-
Implemented Inventions
in the Emerging
Technologies Space
By C. Brandon Rash and
Brooks J. Kenyon
57 Decisions in Brief
By John C. Gatz
Departments
®
®
Editorial Policy: Landslide® magazine provides articles on contemporary issues in
intellectual property law for practicing attorneys and others interested in the subject
matter. The materials contained herein represent the opinions of the authors and
should not be construed to be those of either the American Bar Association, the
Magazine Editorial Board, or the ABA Section of Intellectual Property Law (ABA-
IPL) unless adopted pursuant to the bylaws of the Association. Nothing contained
herein is to be considered as the rendering of legal advice for specic cases, and
readers are responsible for obtaining such advice from their own legal counsel.
These materials and any forms and agreements herein are intended for educational
and informational purposes only. Landslide magazine advertisers are responsible for
the content of their ads as printed. The ABA, ABA-IPL, and its Magazine Editorial
Board are not responsible for the accuracy of ad content.
Pg. 7
Published in Landslide® magazine, Volume 13, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
42 A Seventh Amendment Right to
Fair Use Determinations?
Reviewing pre-1791 copyright cases against the U.S.
Supreme Court’s Seventh Amendment analytic framework,
consider whether there is or should be a right to jury
determination of modern fair use.
By Justin Hughes
46 Should the Federal Circuit’s
“Actual Notice” Test for Presuit
Patent Damages Be on the
Supreme Court’s Chopping Block?
In recent years, the U.S. Supreme Court has rejected a
number of the Federal Circuit’s legal standards as going
beyond the requirements of the Patent Act. Could (or
should) actual notice be next?
By Mark Supko and Siri Rao
12 The Right to Do It for the ’Gram
Social media is a prevalent part of our everyday lives. It
is also a breeding ground for lawsuits.
By Ramela Ohanian
16 Combating Internet Trolls:
The Right of Publicity and
Section 230
Section 230 protects websites from liability for user-
generated content with an exception for intellectual
property. Could plaintiffs use the right of publicity to
avoid § 230?
By Jess Miers and Brian L. Frye
20 What’s in a Name, Likeness, and
Image? The Case for a Federal
Right of Publicity Law
A federal right of publicity statute would benet
licensees as well as right holders by providing clarity
and reducing transaction costs.
By Mark Roesler and Garrett Hutchinson
26 Legal Education: A Call to Action
The eld of intellectual property presents an opportunity
to develop legal education programs that reect a
changing reality for both the legal services industry and
the modern economy.
By Megan M. Carpenter
32 Diversity in Patent Law: A Data
Analysis of Diversity in the
Patent Practice by Technology
Background and Region
The practice of law remains one of the least diverse
professions in America. A data analysis of diversity in
the patent practice reveals even grimmer statistics.
By Elaine Spector and LaTia Brand
38 No Rewind Button: Legal Pitfalls
of Machine Learning Systems
Machine learning systems differ from conventional
databases because it may be impossible to remove ill-
gotten data. Companies need to be careful what they ingest.
By Steven Carlson and Roger Bodamer
Pg. 46

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT