Minow: Disability rights groups are protesting the Amazon decision to allow publishers to opt-out of the text-to-speech function for their copyrighted books.  Yet the feature remains for works that haven’t been opted out.  Must users be disabled in order to legally use the feature?
 
Von Lohmann: No, copyright leaves us all free to use our digital devices to “read aloud” to us. Despite the misleading statements of the Author’s Guild, you don’t violate copyright law when you have your Kindle “read aloud”  to you.  Copyright law gives copyright owners certain limited rights, including the right to make copies, perform a work publicly (like showing a movie in a theater), or make a derivative work (like writing a screenplay from a novel).

When you have a Kindle (or your laptop) “read a book aloud,” you are not “publicly performing” it — if anything, it’s a *private* performance. And no additional “copy” of the work is being made (except perhaps in the computer’s memory, and recent cases suggest that those kinds of transitory digital copies don’t count for copyright purposes). Finally, simply reading the work aloud does not create a “derivative work” — courts generally require that a derivative work contain original, copyrightable expression, something that should require more than simply reading the text aloud.

So I don’t think there is anything about your right to have a computer “read aloud” to you that depends on whether or not you are disabled. 

In my view, there is just no copyright infringement going on here in the first place.

Minow: What defines a public performance?

Von Lohmann: Where we’re talking about a performance in a real place (as opposed to a transmission), the statute defines “public performance” this way:  “to perform or display [a copyrighted work] at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.”

I don’t imagine many Kindles will be used to “read aloud” to an auditorium, so this shouldn’t apply to most Kindle users.

The real problem here is that Amazon needs a license in order to make digital copies of books and to transmit them to your Kindle. So the copyright owners can simply force Amazon to limit the “read aloud” feature as part of their license agreements with Amazon. In light of this, it’s not surprising that Amazon has decided to let the copyright owner decide whether “read aloud” will be enabled for any particular title.

It’s worth noting that device makers that are not also in the business of disseminating digital copies would not be as vulnerable to pressure from the book publishers — and that’s why I imagine that the future of “read aloud” functionality for the disabled and non-disabled like will be on laptops and e-book readers other than Kindle.

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Fred von Lohmann is a senior staff attorney with the Electronic Frontier Foundation, specializing in intellectual property matters. In that role, he has represented programmers, technology innovators, and individuals in a variety of copyright and trademark litigation, including MGM v.Grokster, decided by the Supreme Court in 2005. Fred has an A.B. from Stanford University and a J.D. from Stanford Law School.

Here’s a quick interview with Kenneth Crews, who prepared the World Intellectual Property Organization’s Study on Copyright Limitations and Exceptions for Libraries and Archives for its Seventeenth Session in Geneva, November 3 to 7, 2008.
Minow:  What sparked your interest in studying library exceptions to copyright law around the world?

Crews: I was invited by the World Intellectual Property Organization to undertake this study.  I had the pleasure of sharing a program in the United Arab Emirates with an official from WIPO, and she put in the recommendation that I do the project.  I had long been interested in the issues.  They are central to much of my work for libraries and universities, and I have written about the U.S. library provision in some of my publications.  The chance to do a major worldwide study was an invitation I was quick to accept.

Minow: How do the United States exceptions for libraries compare to other countries?

Crews: The U.S. statute on library issues is Section 108 of the U.S. Copyright Act.  Like the statutes from most countries, it focuses on the terms and conditions under which a library may make copies of a work for a user’s private study, and copies for preservation or replacement of lost or damaged works in the library collections.  Those issues are the most common topics of the statutes from all parts of the world.  The U.S. law also includes a provision on copies for interlibrary loans, and not many countries have addressed that issue.

On the other hand, the U.S. law is distinctive in many ways.  On the issue of preservation and replacement, for example, the law allows up to three copies, and it explicitly permits digital reproductions.  Some countries explicitly permit digital technologies, other countries do not mention specific format, leaving the matter open to debate.  Yet other countries clearly limit library copying to reprographic copies that are not digital.  Interestingly, two other countries have modeled their statute on the U.S. language of Section 108: Liberia and South Africa.  However, both of those countries used the form of the statute as we enacted it in 1978.  The U.S. added the language about digital copying in 1998, but neither of the other countries adopted that change.

Minow:  Did you find any surprises when you were conducting your study?

Crews:  I think I was surprised at nearly every point in the study.  The most interesting finding has been the trends in statutory language.  The U.S. language influenced only two other countries.  By contrast, the United Kingdom has a relatively elaborate statute, and one can see the influence of that model in the shape of the laws in many former U.K. colonies, such as Australia, New Zealand, Singapore, and elsewhere.  In fact, the U.S., being also a former colony, vaguely follows the U.K. model.

I could see other trends.  For example, the European Union issued a directive in 2001 that mentioned library exceptions, and as a result, most EU countries have addressed the issues in a similar manner.  I could also see a pattern of countries in Africa that have adopted a simple and terse library statute that is flexible and generally free of the detail embodied in the U.S. or U.K. examples.  Finally, I found geographical groupings of countries that have no library copyright statute at all.  Clearly, countries seem to be learning from one another, often from their neighbors, when they make decisions about the exact shape of copyright law.

Minow: Thanks for talking with us today.

Kenneth Crews is Director of the Copyright Advisory Office, Columbia University.
Mary Minow is the content editor for the Stanford Copyright and Fair Use website.

We return to our interview with Jonathan Pink>, partner at Lewis Brisbois Bisgaard & Smith. Jonathan Pink represented the defendants in Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. (06cv 1682 JAH, SDCA February 5, 2008).

Minow: Your case about the copyright immunity of a state university has attracted a lot of attention (see Slashdot).

Here are a couple of follow up questions. When is a state employee acting in an “official” capacity (and thus enjoying state immunity) versus an “individual” capacity (and thus facing copyright liability)?

Pink: The Supreme Court has said that a state official who violates federal law “is in that case stripped of his official or representative character and is subjected in his person to the consequences of his individual conduct.”  Ex parte Young, 209 U.S. 123, 160 (1908).  Translated, this means that where the actions undertaken by the state official violated the plaintiff’s federally protected rights, the official may be held personally liable in his or her individual capacity. 

In Marketing Information Masters, I intend to establish that the professor never violated the plaintiff’s federally protected rights, and thus cannot be held individually liable for the claims asserted.  The Court has not yet ruled on this issue.  It has only ruled that the University and the professor acting in his “official” capacity are entitled to immunity under the 11th Amendment. 

The fact that the Court left open the question of whether the professor can be held liable in his “individual” capacity, however, highlights what I believe is a logical flaw in applying Ex Parte Young to a case such as this one. It makes no sense to say that a professor acting within the course and scope of his or her employment may be stripped of 11th Amendment protection anytime the underlying claim is established, and that protection exists only where the underlying claim fails.  That would effectively render meaningless the protection afforded a professor in his or her “official” capacity, and would run contrary to established agency law.  I can’t imagine any policy underpinning that would support such a ruling.

Moreover, most of the cases that followed Ex Parte Young are factually distinct from the Marketing case.  Most of those cases involved Civil Rights actions where there is sound public policy in favor of  protecting the public from, say, rogue police officers.  The one case to discuss the Ex Parte Young rule in a copyright context (Richard Anderson Photography v. Brown, 852 F.2d 114 (4th Cir.1988)) provided little-to-no analysis on this issue, and is of little help in navigating these waters. Because of this, I’ll argue that Ex Parte Young and its progeny should not apply here.  I suspect this will be the next big fight in this case. 

Minow: Assuming agency law prevails, is it not best for the university to have a generous policy, if they want to shield their employees?

On the other hand, it seemed the court was influenced by the overall university’s lack of record of infringement… so if a university had an irresponsible (where’s the line between generous and irresponsible?) copyright policy that allowed too much, could that tip the other way?

Pink: Many states, including California, have statutes requiring the state to pay damage awards levied against state officials for acts performed in the course of their official duties. (Calif. Gov. Code Section 825.)

It does appear that the Court considered the absence of any pronounced history of State-sanctioned infringement when ruling that the Copyright Remedy Clarification Act of 1990 was unconstitutional.  While the plaintiff asked the Court to imagine a world where State-operated academic institutions transgressed copyright laws with complete impunity, I think the Court recognized that this was not the reality.  The Court also recognized that Congress apparently had little evidence of such abuse when it decided to enact the CRCA.  

Minow: Do local government and its employees enjoy copyright immunity?

Pink:  By enacting the CRCA, Congress intended to subject States to suit for copyright infringement.  If the CRCA is invalidated, the Eleventh Amendment would again bar a suit for copyright infringement against the States and their officials when acting in their official capacity.  If a local government can be categorized as an instrument of the State, I would suspect that a good argument could be made that it too enjoys the same immunity.  

Minow: Do you know if the case will be appealed?

Pink: The plaintiff has promised to appeal the Court’s invalidation of the CRCA.  From my perspective, this would be a waste of time, money and judicial resources.  While the Supreme Court has never directly ruled on this issue, the Court has already invalidated Congress’ efforts to subject the States to patent and trademark infringement claims based on statutes nearly identical to the CRCA. These are Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999)and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Fund, 527 U.S. 666 (1999). The Court has also intimated that the CRCA does not pass constitutional muster when remanding Chavez v. Arte Publico Press, 517 U.S. 1184 (1996) for a ruling consistent with the holdings in Florida Prepaid and College Savings Bank.   

Quick conversation with Jonathan Pink, partner at Lewis Brisbois Bisgaard & Smith

Minow: Could you tell us about the new decision about the state university professor who was sued for copyright infringement?

Pink: The case is Marketing Information Masters v. The Trustees of the California State University.[.pdf] For several years prior to the suit, the Pacific Life Holiday Bowl had hired Marketing Information to calculate the fiscal impact the Holiday Bowl (college football game) had on the City of San Diego. When Marketing Information tripled its fee, the Holiday Bowl hired San Diego State University to conduct the 2004 survey, but instructed the school to follow the format of earlier years.

When San Diego State delivered its 2004 report to Pacific Life, Marketing Information obtained a copy and cried foul. Marketing Information alleged that in creating the 2004 report, the school and one of its professors had copied large portions of Marketing Information’s 2003 report.

The Trustees and the professor filed a motion to dismiss, claiming that the Eleventh Amendment provided them with immunity to a claim for copyright infringement. While Marketing Information argued that the Eleventh Amendment did not apply because Congress passed the Copyright Remedy Clarification Act which expressly provided that “[a]ny State, instrumentality of a state… or employee of a State or instrumentality of a State… shall not be immune, under the Eleventh Amendment” to a suit for copyright infringement. 17 U.S.C. section 511(a), the defendants argued that the Clarification Act was an invalid exercise of Congress’s power.

The District Court agreed with the defendants, finding that the Copyright Remedy Clarification Act “was not passed pursuant to a valid exercise of [Congress’s] Fourteenth Amendment enforcement powers,” and “does not constitute a valid abrogation of state sovereign immunity.”

In short, the Court invalidated the Copyright Remedy Clarification Act as unconstitutional, thus ruling that a State, employee of a State (acting within his or her official capacity) or instrumentality of a State cannot be held liable for copyright infringement.

Minow: Do all state employees have immunity for copyright infringement?

Pink: No. The Court’s ruling only applies to state employees acting within their “official capcity.” This gets a little tricky because a state official who has acted in violation of federal law will be stripped of his or her “official” character and will not be immune to suit under the 11th Amendment. Thus, for example, in the Marketing case, plaintiff may not seek damages against the professor in his official capacity as that it would violate the state’s sovereign immunity under the 11th Amendment, but the professor likely would be “stripped of his official or representative character” and would be “subjected in his person to the consequences of his individual conduct” if plaintiff can show that the professor violated plaintiff’s federally protected copyright. In other words, a state employee will be subjected to suit in his or her individual capacity even though he or she had been acting as an agent of the State if it is shown that the employee’s conduct was ultra vires his or her delegated authority, e.g. by violating a federal law.

Note: Justia is sponsoring Marketing Information Masters as a featured case. (Thanks, Nick.) 

UPDATE: Interview Follow-Up with Jonathan Pink HERE

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Jonathan Pink represented the defendants in Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. (06cv 1682 JAH, SDCA February 5, 2008). Pink is a partner at Lewis Brisbois Bisgaard & Smith.