How the Internet Globalized United States Copyright Law and Its Protections for Criticism

I. INTRODUCTION

The internet is the primary medium for expression. The majority of digital platforms that facilitate such expression, however, are located in the United States. The terms of service for these digital platforms uniformly state that all disputes relating to the use of the digital platform are governed by United States law. Consequently, the extraterritorial application of U.S. law to foreign jurisdictions can be wide-ranging – particularly when it comes to critical or unpopular speech.

This article will focus on one of the most commonly litigated and misunderstood legal issues in the cross-border context: copyright law and takedown notifications under the Digital Millennium Copyright Act (commonly known as the “DMCA”).

II. THE DMCA

The DMCA provides digital platforms immunity for copyright infringement claims arising from third parties posting content. 17 U.S.C. § 512. The DMCA also provides copyright owners a quick and simple mechanism to remove infringing content from the digital platform – which is commonly known as a DMCA Takedown Notice. Id., § 512(c).

A DMCA Takedown Notice requires the copyright owner (or its agent) to make several representations under penalty of perjury, including certifying ownership and that the content is infringing. 17 U.S.C. § 512(c)(3). Courts have interpreted the DMCA as requiring the issuer of the DMCA Takedown Notice to conduct a certain level of due diligence to determine if the use constitutes infringement, including whether the use is protected under the doctrine of fair use. See Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2015).

Additionally, the majority of digital platforms contain a provision in the DMCA Takedown Notice that the issuer consents to adjudicating the DMCA Takedown Notice in a U.S. federal court (usually where the principal place of business for the digital platform is located).

If the party issuing the DMCA Takedown Notice does not conduct a holistic determination of infringement (including conducting a fair use analysis), that party may be liable for DMCA misrepresentation and suffer exposure for damages and attorneys’ fees. 17 U.S.C. § 512(f). The issuer’s analysis need not be objectively accurate; rather, the issuer must conduct a good faith analysis that holistically considers whether infringement exists. Lenz, 801 F.3d at 1134-37.

III. MORAL RIGHTS AND INFRINGEMENT

To determine what constitutes infringement in the first instance, it is important to understand what does not constitute copyright infringement under U.S. law but may constitute infringement under the law of foreign jurisdictions.

The vast majority of jurisdictions recognize “moral rights” (also known as droit moral) – namely the right of attribution and the right of integrity articulated in Article 6bis of the Berne Convention. Jurisdictions that recognize moral rights make it actionable infringement to use a copyrighted work in a manner that is disparaging to the author or the work itself. The policy underpinning this approach is that an author’s copyright contains protection for both “personality rights” and “economic rights.” While the “economic rights” protect the author’s ability to reap financial benefits from the exploitation of the work, “personality rights” recognize that an author’s personality is inextricably intertwined with the copyrighted work and must be protected as well.

In the United States, however, copyright protection is almost exclusively limited to protecting the “economic rights” of the author; moral rights are reserved for a limited set of works and under limited circumstances – none of which apply to uses on the internet. 17 U.S.C. §§ 106 (economic rights); 106A (moral rights for “works of visual art”); 101 (defining “work of visual art”). Further, foreign moral rights are unenforceable in the U.S. See Fahmy v. Jay-Z, 908 F.3d 383 (9th Cir. 2018).

Consequently, what may constitute infringement in a foreign jurisdiction may not constitute infringement in the U.S.

IV. THE DOCTRINE OF FAIR USE

The U.S. doctrine of fair use is enshrined in the Copyright Act and allows for the unauthorized use of copyrighted material under particular circumstances. The Supreme Court of the United States has recognized that fair use is a “built-in First Amendment accommodation” to the Copyright Act. While some jurisdictions have analogous doctrines (sometimes referred to as “fair use” or “fair dealing”), none are as robust and complex as the fair use jurisprudence in the U.S. Indeed, it is so intricate and fact-sensitive that Professor Lawrence Lessig stated: “fair use in America simply means the right to hire a lawyer.”

Fair use under U.S. law is a context-sensitive inquiry and has been raised in a wide variety of contexts – from technological to man-made uses. The preamble to the statute contains a non-exhaustive list of favored uses, including “criticism, comment, news reporting, teaching, scholarship, or research.” 17 U.S.C. § 107. Such uses, however, are no talisman for protection; rather, the Copyright Act requires the holistic balancing of four statutory factors. Id. Those factors are:

• Factor One: The purpose and character of the secondary use. Specifically, courts examine whether the secondary use “transforms” the original by “adding something new, with a further purpose or different character, altering the first with new expression, meaning or message.” See Cambell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). Criticism and comment are considered one of the most favored and transformative uses. See Hosseinzadeh v. Klein, 276 F.Supp.3d 34, 42 (S.D.N.Y. 2017) (collecting cases). The transformative use inquiry is the most important fair use factor and courts recognize that the other fair use factors become significantly less relevant when the use is considered “transformative.” Campbell, 510 U.S. at 579.
• Factor Two: The nature of the original copyrighted work. Specifically, courts will examine whether the original work has already been made available to the public and whether it is creative or primarily factual and informative. If the work has already been released to the public and/or is primarily factual, this shall weigh in favor of fair use. Numerous courts, however, have found that this fair use factor is generally given little weight.
• Factor Three: The amount and substantiality of the original work used in the subsequent work. This factor involves a qualitative and quantitative analysis. See Google, LLC v. Oracle America, Inc., 141 S.Ct. 1183, 1204-06 (2021). In other words, courts examine not just the sheer amount used but also whether the “heart” (or most important part) of the original work was used. Id. The amount and substantiality of the use must be “reasonable” in relation to the transformative purpose of the secondary use. Campbell, 510 U.S. at 586. So long as the amount and substantiality used are “tethered” to a transformative purpose, this factor will weigh in favor of fair use. Google, 141 S.Ct. at 1205. The third fair use factor can, at times, be a deal maker or deal-breaker. If the secondary user copies an unreasonable amount that is no longer tethered to the transformative purpose, this can weigh against fair use – even when the use is transformative.
• Factor Four: The effect of the secondary use on the market for or value of the copyrighted work. As a threshold matter, courts examine the source of potential market harm. Transformative uses, particularly criticism, do not result in legally cognizable market harm because such uses do not serve as a substitute for the original. Google, 141 S.Ct. at 1206; Campbell, 510 U.S. at 590-94. Further, market harm must result from the “particular use” to a “traditional, reasonable, or likely to be developed markets.” American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 930-31 (2d Cir. 1994). In other words, simply proving lost revenue or potential lost revenue is insufficient; rather, the use must serve as a substitute for the original or usurp an existing licensing market (or licensing market that is likely to exist).

In sum, by its very nature, fair use under U.S. law makes nearly every critical use nonactionable because criticism is considered highly transformative and does not result in legally cognizable market harm. Only when the amount of copying is excessive to such an extent that the amount no longer serves the critical purpose can a critical work not qualify for fair use.

V. ENFORCING FOREIGN JUDGMENTS

In light of the various First Amendment protections for criticism, practitioners may be tempted to litigate copyright claims in a foreign jurisdiction, secure a judgment and seek to enforce it in the U.S.

This is ill-advised. Most states (including California and New York where most media companies are located) have statutes prohibiting the enforcement of foreign judgments that violate public policy. See e.g., Cal. Code of Civ. Proc. § 1716(c)(1)(C); N.Y. CPLR § 5304(b)(3). Since fair use implicates the First Amendment, courts will refuse to enforce a foreign copyright judgment that fails to consider U.S. fair use law – even if the foreign court considered comparable fair use and fair dealing defenses. See de Fonbrune v. Wofsy, 409 F.Supp.3d 823, 840-44 (N.D. Cal. 2019); SARL Louis Feraud International v. Viewfinder, Inc., 489 F.3d 474, 478-84 (2d Cir. 2007).

VI. CONCLUSION

Digital platforms have extended the reach of U.S. copyright law to the entire world – even where U.S. law is in direct conflict with the law of the foreign jurisdiction. Consequently, it is imperative that both U.S. and international legal practitioners understand where U.S. law diverges from foreign law and develop a vocabulary to constructively discuss the legal issues that may arise from such enforcement.

Rom Bar-Nissim is an associate at the boutique media law firm The Law Offices of Lincoln Bandlow, P.C. His practice focuses on copyright, the First Amendment, Anti-SLAPP, trademark, right of publicity, invasion of privacy and other speech-related torts. He is also the author of several publications, including serving as co-executive editor of the California Internet Law & Practice treatise and authors of chapters on copyright, speech-related torts and the First Amendment.