For many months, the academic world has been keeping an eye on a potentially critical lawsuit brought by AIME (the Association for Media and Equipment) and Ambrose Video Publishing (Ambrose or AVP) against UCLA (or more specifically, the Regents and several named university officials in their administrative and individual capacity). The plaintiffs, AIME and AVP, sued UCLA because the institution was purchasing education dvds (some from AVP, others from AIME association members), circumventing the technological protections embedded in the dvds, and then streaming (transmitting) the entire movies in their online, password-protected course management system.
Additionally, and significantly, the AVP dvds were acquired by UCLA pursuant to a license agreement, a portion of which is reproduced below.
The watching world, extrapolated from this lawsuit fact scenario the following burning copyright questions(s):
1. Can a non-profit educational institution stream entire movies within an online, password protected course management system without violating copyright laws?
2. If so, which educational exceptions in the copyright act allow this? §107, known as Fair Use; §110(1) the face-to-face classroom performance exception and/or §110(2), the transmission of performance and display, a.k.a., the TEACH Act?
Legal scholars, library and educational associations, and copyright holders and their associations naturally differ in their answers to those questions. Blogs, opinion briefs, and talks came to life, all focusing on those two questions. And those are the questions we hoped for an answer from this case.
On October 3, 2011, the trial judge dismissed the case in a brief (13 page) order. At last, academia thought, an answer, or at least some copyright guidance. Instead of being a copyright case, however, this case became a civil procedure and contract case with copyright mentioned primarily for its characteristic of being a federal law.
The bottom line is that the copyright questions were not reached in the actual holdings. In her order granting defendant's motion to dismiss, the course never reached the copyright questions on their own merit. Any passing reference to copyright is at best hopeful dictum, which cannot be pulled out of context and mischaracterized as a "copyright win". It certainly does not stand for the proposition that streaming entire copyrighted films within password protected course management systems is lawful.
WHY NOT? WHAT HAPPENED?
That's the question we care most about. By definition, a Judge's decisions are not going to make everyone happy. That's not her job. It is also not her job to go beyond the facts of the case before her and decide questions prematurely simply because we want her to do so. There are procedural issues and requirements that must be met before a judge can get to the merits of any particular case. The case must present in the proper posture with qualifying parties pleading the requisite elements of any particular claim. Any failure in these early rounds and the case stops there. No view of the merits of the case can be inferred.
WHO SAID WHAT?
In the order dismissing the lawsuit, the court recites the facts of the case in a disturbingly brief manner and with a puzzling omission of key facts. For example, it is interesting that AVP is not identified as the copyright holder of some of the works at issue nor as a member of AIME. Perhaps the complaint was not specific enough, referring to AVP as a creator, rather than a copyright holder per se. It is also very interesting that the license between AVP and UCLA is barely mentioned; or perhaps, more accurately, that one section is heavily relied upon, ignoring other terms in the license. The complaints of the plaintiff are listed and importantly, since the court granted UCLA's motion to dismiss, the relevant defenses are listed:
1. UCLA et al is immune from suit;
2. AIME lacks standing, and
3. Plaintiffs failed to state a claim upon which relief can be granted.
FIRST THINGS FIRST
Our legal system has a LOT of rules governing lawsuits - who can bring them, when, where and what elements of any particular wrongdoing must be stated somewhere in the paperwork, with facts to back it up. Only after all these rules are satisfied will a court begin to look at the merits of the case.
This court decided the initial rules were not satisfied, which allowed her to dismiss the case without having to directly address our copyright streaming questions.
WHAT DID THE COURT HOLD?
1. You cannot sue a state agency for money damages for violating copyright law (including the DMCA, a part of copyright law), even if they fail to comply with copyright restrictions set forth in a license agreement. Signing these licenses purporting to abrogate or limit rights under the copyright act is not an implied waiver of state sovereign protection from suit. Therefore, one cannot sue a state agency (university) for violating the federal copyright statute by engaging in infringing conduct, even if that state university signed a contract specifically promising they would not infringe.
2. Can the state agency (university) be sued for breach of contract and other state law claims if the signed contract in question sets limits on what the university is allowed to do under the federal copyright act?
The AIME court stated, in Discussion III Failure To State A Claim d. State Law Claim that "The Copyright Act preempts claims that "are equivalent" to any of the exclusive rights within the general scope of copyright." 17 U.S.C. § 301(a); Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1089 (9th Circ. 2005). A state law claim is preempted if : (1) the work involved falls within the general subject matter of the Copyright Act, and (2) the rights asserted under the State law are equivalent to those protected by the Act. Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022m 1027 (N.D. Cal. 2003)
As made clear by the court, a state law breach of contract claim based on the exercise of rights set forth in the copyright act, even if prohibited by the contract, would fail because of Copyright Act preemption. For example, if a contract tried to prohibit ILL, an activity authorized by the Copyright Act, that part of the contract would be pre-empted. If the signatory institution, public or private, exercised their ILL rights, a state law breach of contract claim should fail. The private institution might still be sued for infringement of the federal copyright statute itself, but not because it may or may not have complied with a license.
For me, that is an amazing take-away. I've been engaged in licensing efforts by academic libraries for e-resources for decades. Over and over and over again, I've heard that contract law prevails over copyright law and one needs to be careful not to sign away fair use rights. Reading this order, you can't.
Sit for a minute and think about the implications for the thousands and thousands of e-resource licenses signed by U.S. academic libraries. Does this not change everything?
Comments are welcome
Peggy E. Hoon, J.D.
CIP IP Scholar
Next Up: Associational Standing and Overuse of the Sovereign Immunity Defense
Excerpt from Ambrose License
QUOTE FROM EXHIBIT 3 FROM PLAINTIFF'S COMPLAINT
For information and pricing regarding Education Television go to www.ambrosevideo.com/etv.cfm
Terms and Conditions
AMBROSE VIDEO PUBLISHING
Listed below are the basic terms and conditions that govern your use and purchase of precuts/programs from our website. Your use of the content purchased from Ambrose Video Publishing (AVP) constitutes your acknowledgment and agreement
AMBROSE VIDEO PULISHING
AVP is the licensor and you, the user, are the Licensee.
1. Grant of License
AVP grants to the Licensee a limited, non-exclusive, recovable license to use the Content (as defined below) is an educational OR home video setting.
CUSTOMER ACKNOWLEDGES THAT THE PROGRAMS MAY NOT BE DUPLICATED, BROADCAST, TRANSMITTED BY CABLE OR OTHERWISE, ON ANY MULTI-RECEIVER OPEN OR INTERNET SYSTEM, OR DISPLAYED BEFORE THE PUBLIC, WHETHER OR NOT ADMISSION IS CHARGED. CUSTOMER SHALL EXHIBIT THE PROGRAMS ONLY AS HEREIN SPECIFIED AND USE THE PROGRAMS FOR NO OTHER PURPOSE.
Customer shall not sublicense, sublease or part with possession of any Program received by customer hereunder. Performing rights to music contained in any Program are not granted herein. Nothing herein shall derogate from any rights of Ambrose or any other copyright proprietor of any Program under the United State Copyright Law or any applicable foreign copyright laws.