PACA Participates In Copyright Office Roundtable

PACA Participates In Copyright Office Roundtable On State of U.S. law recognizing and protecting “making available” and “communication to the public” rights for copyright holders. 

On May 5, Nancy Wolff attended a Copyright Office roundtable hearing on behalf of PACA. The subject of the hearing was US compliance with two international treaties– the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty (collectively, the “WIPO Internet Treaties”).  Both require member states to recognize the rights of making available and communication to the public. These rights give authors of works, producers of sound recordings, and performers whose performances are fixed in sound recordings the exclusive right to authorize the transmission of their works and sound recordings, including through interactive platforms such as the Internet. In other words it give authors the right to authorize how the  public can view and or hear  music, videos and images online.

The United States implemented the WIPO Internet Treaties through the Digital Millennium Copyright Act (“DMCA”) in 1998. Congress did not amend U.S. law to include explicit references to “making available” and “communication to the public” rights, concluding that these rights were already available by combining the bundle of exclusive rights under the US Copyright Act. Recently some courts and commentators have expressed uncertainty over how the existing rights may apply to various methods of making of copyrighted works available to the public, including in the digital environment.

Congress requested that the Copyright Office review and assess how the existing bundle of exclusive rights under Title 17 covers the making available and communication to the public rights in the context of digital on-demand transmissions such as peer-to-peer networks, streaming services, and music downloads, as well as more broadly in the digital environment. One aspect was the feasibility and necessity of amending U.S. law in this area.

PACA’s interest specifically focused on the making available and communication to the public rights involving images in the Internet environment. While the bundle of exclusive rights under Section 106 of the Copyright Act, including the exclusive right to reproduce, distribute and display publicly, should support the making available right in the Internet context, court decisions have weakened the exclusive right to make a work available or communicate it to the public in the Internet environment. Specifically, a series of court decisions in the 9th circuit including Perfect 10 v Amazon, have permitted Internet search companies to publicly display images without any risk of copyright infringement based on the courts interpretation of the exclusive rights under the Copyright Act. For example, Google was found not to violate Perfect 10’s copyright in its images even though it displayed full size images in its image search results, because the images were “framed” by using “in-line linking” from the source website, even though the images look like they are being displayed by Google. Because no copy of an image resided on a Google server, the court found that there could be no direct copyright infringement, requiring for the first time that the exclusive right to display publicly a work was linked to the reproduction of the work by the alleged infringer. At the time, PACA supported the position of Perfect 10 in an amicus brief arguing that under the definition of display found in the Copyright Act, a display only requires that a copy be shown by means of a process and does not require that the copy be physically stored on the search engine’s server. Instead, the court adopted the server test, which limits copyright infringement to works reproduced and stored on a server, and then displayed based on that stored copy.

This is a clear example of form over function. An image search communicates the visual work to the public, regardless where it is stored. By framing, the public believes Google, or other similar search engine is providing the image, and Google can sell advertising adjacent to the “framed” image. It receives the benefit of the display right, but without any obligation to license or compensate the image owner, and without any risk of direct infringement.

Since the P10 case, image search has evolved to be even less favorable to the rights holder. Initially when a viewer clicked on the framed image, it was taken directly to the source website. Now the source website is greyed-out and only the large resolution image is visibly displayed. By using in-line framing and linking, and not displaying the image on a server, anyone can use technological measures to avoid direct infringement. If this technological circumvention becomes prevalent it could drastically reduce or eliminate the need to license visual works in an Internet environment. The message to the Copyright Office was that if this interpretation by the courts of the display right for visual copyright owners continues, Congress may need to clarify that a display right can be violated by any process and is not contingent upon a reproduction residing on a server of the entity that is receiving the functional benefit of the visual display. In sum, the US treaty obligations with respect to the communication to the public and the make available rights of visual works in an Internet environment is not being met based on court interpretations of the exclusive rights under Section 106.

The testimony was videoed and should be available on the Copyright Office website

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