Relying on customary practice when the law says ‘no’: justified, safe or simply ‘no go’

Abstract

The library, archive, cultural and educational sectors are likely to face many more years of copyright uncertainty and disconnect between copyright laws and norms. Legislative changes may narrow what has been a widening gap between the legal and the technologically possible, but evolving copyright norms are increasingly setting the boundaries of what is possible and prudent at a time when black letter law is struggling to keep pace with change.

Keywords::

• copyright
• legislation
• law reform

Implications for best practice

• Keep abreast of evolving norms in the library sector.

• Consult with colleagues on the practices they are adopting around tricky questions.

• Be aware whether you are going out on a limb or adopting usual or best practice in the absence of black letter law.

• Know whether what you are proposing to do is fair and not harmful to a copyright owner's interests.

• Document all the due diligence steps you undertake to contact copyright owners.

• Be prepared for the occasional challenge, such as a request for material to be removed from a digitised online collection.

Introduction

One of the most interesting and, at the same time, one of the most challenging things about copyright law is that it is constantly subject to change… Copyright law has continually been confronted by the challenge of the new because it is, and always has been, a creature of technology. From the printing press, telegraph and camera, through to the phonogram, the photocopier, the tape player, the personal computer and the internet, technological developments have always driven and shaped copyright law. (Sherman and Wiseman, 2012)

Of all the forms of intellectual property, copyright is the most indulgent in protecting rights, even where those rights are not exploited and the ‘protected’ works are unavailable to the public. It is sclerotic, and because of copyright owners' perceptions that users' gains are their losses, it is difficult to amend because of the high political costs such amendments inevitably extract.

Copyright was conceived as a system of limited rights for limited times in return for public access and limited permissible uses. This so-called ‘utilitarian’ conception of copyright that underpins our laws is the basis of the supposed copyright balance between owners and users, but Australian laws have, along with the laws of most other countries, been twisted out of shape by the emerging dominance of copyright as a property right. The unbalancing of copyright, through longer terms and broadening scope of protection, has become untenable in the Internet age, with its hugely societally beneficial capacity to make content available in ways and for purposes that do not prejudice legitimate copyright owner interests. Copyright norms support direct action in appropriate circumstances and those norms are increasingly recognised as mainstream, low risk and acceptable.

Throughout the century or more that followed the signing in 1886 of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention, 1886), which underlies the modern architecture of copyright globally and which establishes the ground rules, the essential rationale and balancing of interests for copyright ownership and control, and the permitted limitations and exceptions, a steady rise in tension occurred. The rights and potential rewards of copyright ownership grew and took on the language of property rights, while user rights were limited by practical issues of access to works and the ability to copy in any meaningful way. A steady enlarging of the scope and duration of copyrights was largely unchallenged by the lack of any real means and, therefore, motivation, to challenge the evolving order.

And while a copyright observer in the middle to later part of the twentieth century would easily have identified the signs of growing tension, including the steady growth in copyright terms and the expansion of almost blanket protections to copyright works embedded in new technologies, including films, audio-recordings, and television and radio broadcasts, such an observer might or might not have had a sense of what it would mean to copyright if and when enabling technologies were to find their way into the hands of users. Photocopiers and video-recorders were tangible and enabling and they heralded the end of a golden era for copyright owner interests, although it was not necessarily appreciated at the time. Henceforth, the interests of users could not be taken for granted, and the steady creep of ownership rights would no longer take place under the radar.

The problem of modern copyright felt most acutely by copyright users was summed up in a submission to the Australian Law Reform Commission's (ALRCs) review of Copyright and the Digital Economy as a ‘disconnect between the law and practices that are both ubiquitous and unlikely to harm copyright owners’ (quoted in ALRC, 2014, 4.54).

Caveat

In December 2013, the ALRC delivered to the Attorney-General its final report on its wide-ranging inquiry, Copyright and the Digital Economy (ALRC, 2014). It recommended, amongst many other things, the introduction into Australian copyright law of an American-style open-ended fair use copyright exception to replace the current category-based fair dealing exceptions.

The Attorney-General, in response to a question in Parliament in December 2013, commented that the ALRC

has recommended the introduction of a flexible fair-use exception as a defence to copyright infringement. It has also recommended retaining and reforming some of the existing specific exemptions and introducing certain new specific exemptions; amending the act to clarify the statutory licensing scheme; limiting the remedies available for copyright infringement to encourage the use of orphaned works; reforming broadcasting exemptions and amending the act to limit contracting-out terms. (Australian Senate, 2013, 989)

At the time of writing in December 2014, there is no indication yet from the Government as to what, if any, its formal response to the ALRC's key recommendations will be. Regardless of the ALRC's recommendations, it is likely that the legislative landscape in Australia will not be speedily rewritten, and legislated changes are likely to fall short of key recommendations. In that context, an understanding of day-to-day practices and evolving norms is particularly important.

Transforming incentives into property

Copyright law in both the Anglo-Australian-Canadian tradition, and the US tradition, is founded on a highly dispassionate and utilitarian conception: that copyright rights are granted by the state to provide just enough incentive to authors to create copyright works, balanced against the objective to benefit the broader society, including providing reasonable access to those works for a variety of permitted purposes. The United States Constitution is quite explicit in stating the rationale and intended limits when, in granting power to Congress to make laws in respect of copyright, it states: ‘To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries’ (The Constitution of the United States of America, 1788, Article 1, Section 8, Clause 8).

The utilitarian underpinning, when actually practised, is an approach that implicitly rejects the notion of copyright as a form of pre-existing ‘common law’ property right, to which copyright law may give statutory recognition but is not required to crystallise or create the basic ownership rights of the author. This is acknowledged by commentators:

Natural rights theorists… posit that an author deserves a property right in original expression by virtue of having created it. From the perspective of natural rights theory, copyright statutes are designed to merely codify the author's natural property right. (Netanel, 2007, 21)

While the arguments used to justify and support copyright protection have taken many different forms, they can be broken down into two general types of arguments. The first, which is by far the most commonly used in Australia, falls under the general label of utilitarian-based arguments, which focus on ways of encouraging or promoting the creation and dissemination of new cultural and artistic objects. The second set of arguments, which are often lumped together as natural rights arguments, are less concerned with regulatory techniques to promote social, cultural and economic goals than with a belief that copyright ought to exist because it is proper and correct for it to do so. (Davison, Monotti, and Wiseman, 2012, 186)

In Australia, the High Court confirmed only as recently as 2009 that copyright is an incentive-based system of rights, noting ‘that an author could obtain a monopoly, limited in time, in return for making a work available to the reading public’ (High Court of Australia, 2009, 471).

It could be argued that the increasing economic value of copyright goods has been an important driver in the steady transformation of copyright from a limited form of legislative incentive framed with the intent of providing benefit to the broader society, into a system of ever-stricter property-based rights, based upon a notion of the inalienable fruits of the toil of the author.

Copyright's woes

Three aspects of modern copyright law present challenges: the absence of any requirement of registration, the need for a single formula that satisfies a wide range of interests and no requirements for ownership.

A problem at the heart of modern copyright law is often confused as being one of its singular benefits, namely, the lack of any formality. The Berne Convention specifically prohibits any type of formality for an author to be protected by copyright law. The absence of any requirement of registration adds a peculiarly natural rights flavour to the structure of our copyright law. In the bargaining that led to the signing of the Berne Convention, there was considerable resistance to the idea of requiring authors to do anything more than just create their copyright works to enable them to obtain immediate protection from all signatory countries. It was, by any standard, a template for what we have seen ever since, the treatment of copyright works as the immediately protectable property of authors and, hence, their publishers. Unlike other forms of intellectual property that require some efforts by those claiming protection, in areas as diverse as patents, designs or plant breeders rights, to justify and earn their state-granted protection, copyright has operated on a system where ‘create it, do nothing and it will be protected into a distant sunset long, long after you have died’. Witness the arrival of the digital age and the rush of content owners to place their copyright ‘property’ behind contractual walls, simultaneously excluding the intrinsic counterbalancing rights such as fair dealing, document delivery and availability under statutory licences.

The lack of registration or other formality has had another very real impact, in the need to structure a copyright system that with a single formula must satisfy the genuine ‘property-like’ interests of industrially generated and commodified copyright goods, such as popular music, film, games, software and other ‘manufactured’ copyright goods, as well as less commercial or non-commercial copyright goods. The former are integral parts of national economies and international trade and, not surprisingly, over time legislation in many countries, including Australia, has been shaped to fit the ‘maximum protection’ needs seen as appropriate to traded copyright goods. Suppressed in this one-size-fits-all approach has been a proper allocation of significance to other players in society, including individuals and cultural sector users.

It is a curious product of the evolution of copyright as an incentive-based set of limited rights to a set of property-expressed maximal rights that, unlike other forms of intellectual property, the beneficiary of the legislated rights and protections need to do nothing to retain those rights. Indeed, even after long periods of neglect or even abandonment, the rights holder may, Lazarus-like, re-enter the fray to defend his/her works against users of any kind, including those who would simply seek to make them searchable or available in some form.

Law or norm – why do you have to choose?

An important first question that many professionals in the library, archive, educational and cultural sectors will need to answer at some point is: do I really have to choose between law or norm? After all, we are part of professions and institutions that rightly pride themselves on best practice, doing not only what is required but doing it to an exemplary standard. It therefore is not surprising or wrong that you will probably have to justify following a path that is at odds with the law and which might, however improbably, place your employer at some legal or economic risk.

The answer is an emphatic no; you do not have to choose. Strict adherence to the black letter law as we find it, including the ‘best guess’ interpretations of some of the less clear black letter law, is a perfectly acceptable response to risk. Copyright is not unique in having gaps between law and norm, but in the case of copyright, numerous factors are persuasive when dispassionately considering the possibility of challenges. These include:

• There is widespread recognition by governments in all major jurisdictions, including Australia, that the current law is seriously deficient in dealing with permissible uses of enabling technology.

• The Internet and related technologies are genuinely game-changing and highly disruptive, and the lag in legislative change is a natural outcome of that reality rather than a widespread desire or belief by governments that the law cannot or should not be changed.

• We are only at the beginning of the profound, long-term changes that the Internet has brought to copyright in particular and our lives in general. We need a little perspective. Copyright scholar, judge and Harvard law professor, Benjamin Kaplan, once observed that

  as a veteran listener at many lectures by copyright specialists over the past decade, I know it is almost obligatory for a speaker to begin by invoking the communications revolution of our time, [and] then to pronounce upon the inadequacies of the present copyright act. (Kaplan, 1967, 1)

  This obliges us to seriously confront the question, ‘So this time it's different?’ The answer is yes, this time it is different.

• There are precedents. It took a quarter of a century for Australian copyright law to make black letter law the daily behaviour of millions of Australians who videotaped television broadcasts to watch at a more convenient time: 25 years during which Australia, to use an expression coined by copyright scholar John Tehranian, became an ‘infringement nation’ (Tehranian, 2007). Not just a few pirates or bootleggers, but everyone from nanna to mum and dad. The law-norm gap was staggering.

• The law-norm gap may have been staggering, but the risk was also near non-existent. The technology was there, sold and made available in a mainstream way, whether by means of video-recorders or the televisions to plug them into, and the blank tapes needed to do the copying were widely available.

• A telling, although non-scientific, way of looking at the way that society will over time accommodate the new technologies and possibilities of the Internet is to observe that once the enabling technology is in the hands of users, it is impossible to put it back in its bottle and impossible to put the lid on ‘reasonable’ uses by users. Tehranian again: ‘the tools for the creation, manipulation, and widespread dissemination of copyrighted works in the hands of an ever-increasing number of individuals, a remarkable thing has happened: copyright has infiltrated the public consciousness like never before’ (Tehranian, 2007, 540).

A practical low-risk path

There are risks associated with following a non-black letter law path, but those risks can be made manageably low. How? Six points should be considered:

• Look at the accepted, although admittedly evolving, norms in the field.

• Look for consonance between those norms and the evolving thinking in the field of copyright reform.

• Try to identify, where possible, sector-wide approaches to better aligning our copyright behaviour to evolving norms.

• Assured that we are acting with our moral compasses aligned in a way that would bring us no moral reproach, ask can we then justify the unlikely risk of legal action?

• Legal action itself is very unlikely. It costs money for all parties and there are better ways of a copyright owner making a dollar. Developing better business models for the Internet age is an example, and the music industry is a case in point, transitioning from compact discs available only over the counter a decade ago to all-you-can-listen-to subscriber apps for smartphones today.

• More likely, but manageable, are the occasional angry letters or even more formal take-down demands. Approached with a plan, neither is fatal and neither need strike at the heart of a desire to use modern technologies in alignment with the norm rather than the law.

Whatever else happens, laws will not change or adapt quickly enough over the next decade to provide a black letter law solution to the cultural and library sectors' copyright needs.

Fairness is the key

The ALRC Discussion Paper (ALRC, 2013) placed great store on and made repeated reference to the need to adopt a ‘fairness’ standard when it comes to judging the behaviour of cultural institutions engaging in behaviours – for example, preservation, research access, selective public availability of orphan works – that conform to modern social norms, available technologies and their mission of supporting public access to information. The ALRC indicated that its preference was for an Australian fair use provision to be based upon a consideration of the four fair use factors found in the U.S. Copyright Act 1976, which have themselves evolved over a century-and-a-half of U.S. jurisprudence:

• First, ‘the purpose and character of the use.’ This factor encompasses two issues: was the defendant's use commercial? Was the use ‘transformative’?

• Second, ‘the nature of the copyrighted work’. Again there are two separate matters to be considered: was the plaintiff's work creative? Was that work published?

• Third, ‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole’. This consists of an evaluation of two matters: how much is the defendant alleged to have taken? How important was that taking in the context of the plaintiff's work?

• Fourth, the ‘effect upon the market for or value of the copyrighted work’. What is the market effect of the defendant's conduct? (ALRC, 2013, 11).

Emphasising the need for a non-exhaustive and merely illustrative listing of potential fair uses, the Commission included:

• research or study,

• criticism or review,

• parody or satire,

• reporting news,

• non-consumptive,

• private and domestic,

• quotation,

• education and

• public administration (ALRC, 2013, 94).

Noted American jurist Pierre Leval's 1990 formulation of the concepts of fair use and fairness, notoriously difficult to put accurately into words, has been turned to for guidance by many, including the ALRC:

I believe the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original…. [If] the secondary use adds value to the original – if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings – this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society. Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses. (Leval, 1990, 1111)

Although the ALRC's preferred approach is to repeal the current fair dealing provision and replace with an open-ended U.S.-style fair use, its fall-back position, if government does not accept such a proposal, is to retain and expand the current fair dealing sections while expressly making them subject to the fairness factors outlined above (ALRC, 2013, 131).

Examples of evolving norms

Permissions and mass digitisation

The right of reproduction is a cornerstone copyright, and, absent a statutory basis to copy a work, the default position is that one should seek the copyright owner's permission. A difficulty quickly arises in cases where large-scale digitisation of in-copyright works is contemplated, such as university theses, and where there is the potential to contact some, although by no means all, of the copyright owners to seek their permission. Of those for whom a reliable contact address can be found, only a small percentage is likely to respond. From experience, most who do respond are likely to grant their permission, but for a project of this type that will still leave a large majority without permission. Where the objective of a digitising institution is to make the entire corpus of works available (for example, to unlock from the compactuses and make available decades of lost scholarship), the prospect of digitising no more than a small percentage of those works, the works with positive permission, is to set the project up for failure from the outset.

Applying the general principles of fairness, we see there is no quantifiable harm to the copyright owners, but very high public benefit. From a risk point of view, we assess risk as extremely low and capable of remedy by prompt ‘take-down’ if an author complains.

Applying this rough working matrix, we conclude that we will not seek permission in advance of digitisation and making the works publicly available. In doing so, we are acting consistently with the evolving norm of not seeking prospective permissions in large-scale digitisation projects where the public benefit is unquestioned, the copyright owners will suffer no ‘real’ detriment, likely objections will be few and those that are received can be ‘cured’ by taking down the relevant work.

Orphan works

Orphan works deserve special mention. In many senses, orphan works are their own case study of the problems and opportunities of the Internet age. The Internet age has brought to light copyright's unpleasant family secret, which is neglect. The production of published copyright goods was, by and large, expensive and for most works resulted in only transitory visibility and accessibility. Published copyright works were for the most part throwaway.

The remarkable capacity of modern scanning technologies, cheap data storage, high bandwidth lines of communication, allied with an incontrovertible mandate on cultural institutions not to let this trove of knowledge, forgotten and abandoned, rot inside compactus rows, has given rise worldwide to pressure to allow orphan works to be made available. The difficulty, of course, has been the lack of a legal method of doing so. According to an independent report commissioned by the UK government, the treatment of orphan works represents ‘the starkest failure of the copyright system to adapt’ (Hargreaves, 2011, 38). In the USA, despite the recent litigation between HathiTrust and copyright owners which greatly clarified the operation of fair use in relation to making copyright works searchable, there remains great uncertainty over the limits of making orphan works available in their entirety (United States Court of Appeals, 2014).

The ALRC has recommended both a fair use exception, which on its own could potentially accommodate reproduction of such works by application of a U.S.-style fairness test, and has also made recommendations specific to orphan works:

The fair use exception may be used to determine whether a use of an orphan work infringes copyright. However, where such a use is found not to be fair and infringes copyright, the remedies for infringement should in some circumstances be limited. The ALRC proposes that the Copyright Act 1968 (Cth) be amended to provide that remedies available for copyright infringement be limited where a defendant establishes that the work in question was an orphan work, and a “reasonably diligent search” was conducted for the rights holder and the rights holder was not found. (ALRC, 2013, 251)

Dissected, the recommendations essentially accord with the norms that have developed amongst institutions dealing with the endless problems of digitising and making available works where the publishers and/or authors cannot be located.

Interestingly, the ALRC does not try to pin down what a ‘reasonably diligent search’ might be, recognising, as with other emerging norms, that this was a concept in flux, and new technologies and practices would continue to develop. Moreover, the express limitation on remedies would provide legislative certainty for what currently has to be satisfied by no more than a hopeful estimate that no economic harm lies with making a particular work available.

IFLA, the International Federation of Library Associations, in its 2011 Statement on Orphan Works, supports this ‘light-handed’ approach, noting that while the standard of what might constitute a diligent search will continue to evolve,

any regulative initiative should be flexible in its approach to any requisite search steps or information sources to be consulted. Only a flexible approach will ensure an adequate solution dealing with the individual circumstances of each orphan work as conditions vary among information resources available for different types of works and resources and search techniques can change rapidly. (IFLA, 2011)

National and State Libraries Australasia (NSLA) has also identified some important issues in its 2011 Position Statement on Reasonable Search for Orphan Works. Noting that a ‘reasonable search’ was an essential step to be undertaken before an orphan work is used, it then went on to summarise what that might look like:

In practice, a reasonable search will involve a continuum of effort ranging from minimal through to an extensive or extraordinary search. On this continuum, a greater level of resources and professional expertise will be required to locate the copyright holder of recent and/or works created by professionals as these searches have a higher likelihood of success. Prominent use of a work or a use that would be difficult to rescind or take down will also require greater search efforts.

Quantifying the search effort will be dependent, but not limited to, criteria such as the amount of information on or about the work that is initially available, the age and uniqueness of the work. Use of sampling in certain circumstances (such as the digitisation of very old material that was not produced commercially such as diaries, letters etc.) could be used to meet the criteria of a reasonable search'. (NSLA, 2011)

Significantly – because it represents a decisive regulatory attempt to create a rational orphan works structure – the UK government in late 2014 introduced regulations to permit the formal licensing of orphan works (United Kingdom, 2014). Under these regulations, it is possible to make an application to the UK Intellectual Property Office (IPO) to reproduce an orphan work for commercial or non-commercial purposes. Significantly – in a case of law ‘imitating’ norm – the IPO will determine whether the applicant has made a sufficient search for the rights-holders. Even where a sufficient search has occurred, an application to have a work declared orphan can still be rejected on a number of grounds, including if the intended use is considered to be inappropriate or derogatory or on any other reasonable ground, such as not in the public interest (United Kingdom, 2014).

Over-reliance on takedowns?

Imagine the scenario of an old photograph of fairly doubtful provenance. Trying to identify, let alone track down the copyright owner and seek permission, just seems too difficult. So, instead of attempting any search, reasonably diligent or otherwise, an institution decides that it will simply digitise and make the image available online. As a safeguard of sorts, it accompanies the image online with a note that it has been unable to identify or contact the copyright owner and should a person identify the image as belonging to him or her, that person should contact the institution. The belief, or hope, is that the so-called good faith clause will create a ‘goodwill’ barrier between the digitising institution and a copyright owner who later finds his/her work being made available online without his/her permission.

The practice is fairly widespread and the risk is admittedly low, but if the institution has made no effort to search for the copyright owner, its bona fides are weak if the copyright owner later emerges and complains loudly.

It is far wiser to document your actions (and there should be some action), even if it is to record that a search of, for example, the institution's records revealed no information about the work, that there were no contemporaneous notes in the files, no staff knowledge of the donation or holding, no identifying features on the work and other similar notes. This alone can amount to a sufficient turning of the mind to the issue, where no actual ‘reasonably diligent search’ is possible, and places the institution in a position where it can comfortably rely upon the underlying norms.

In short, it is vital that institutions do not take a shortcut which, whilst saving time and resources now, may place them in a difficult situation in the future. The protection offered by ‘good faith’ alone may turn out to be illusory when it matters most.

Challenges to risk management

While technology in the last 20 years has seemingly had a liberating (albeit confusing and disruptive) impact upon the way in which copyright materials are created and shared, the global regulation of copyright has arguably shifted towards greater restrictions and regulation. This is most clearly seen in the inclusion of intellectual property provisions into trade agreements. The prime example is The Agreement on Trade Related Aspects of Intellectual Property Rights (World Trade Organization, 1994). Most notably from an Australian perspective, the Australia–United States Free Trade Agreement (2005) had the domestic impact of lengthening the copyright term and increasing criminal sanctions.

Negotiations commenced in 2010 towards a trade agreement that would create a free trade area spanning 20 Asia Pacific nations, including Australia, New Zealand, the USA, Canada, Japan and Singapore. To be known as the Trans-Pacific Partnership Agreement, the final agreement is intended to regulate all aspects of trade and investment amongst signatories, including intellectual property (Australian Department of Foreign Affairs and Trade, 2014). Negotiation documents that have been publicly released, although not with the authority of the negotiating parties, indicate that increased penalties, including pre-determined statutory damages for infringement, are being actively considered (Wikileaks, 2013).

The effect of Australia agreeing to enact pre-determined statutory damages as a path to simplified copyright enforcement, although by no means certain at this point in negotiations, would have a dramatic chilling effect on any so-called reliance upon risk management.

Conclusion

To reprise the opening paragraph of this paper, copyright is a creature of technology and cannot escape its disruptive effects. Legislatures and courts in Australia and elsewhere will continue to grapple with the challenge of the new, and those laws – black letter law and case law – will be integral parts of the changing copyright landscape that libraries, archives and cultural and educational institutions will have to navigate.

Professionals in those institutions will also need to pay particular heed to the evolving practices and norms of their colleagues here and overseas, not to supplant the law, but to inform their actions when navigating the inevitable gaps, lags and inconsistencies in an area of law that cannot hope to keep pace with the breathtaking pace of technological change.

These are, in short, the opportunities and challenges of the new.

Additional information

Notes on contributors

Tom Joyce

Tom Joyce is The University of Queensland's Copyright and Library Lawyer, advising the University community on all aspects of copyright for teaching, learning, research and publication, as well as supporting the University's open access initiatives. He is a graduate of the London School of Economics and The University of Queensland. He is admitted as a barrister of the Supreme Court of Queensland.

Notes

^1. This paper is a revised version of a presentation given at VALA2014, Melbourne, 3–6 February 2014. It has been double-blind peer reviewed to meet the Department of Education's Higher Education Research Data Collection (HERDC) requirements.