In an age where educational materials can be digitized and hosted online to provide for easy access virtually anywhere, schools face the decision of making course materials available online, and running the risk of getting ensnared in a copyright infringement lawsuit, or constraining their students to traditional learning methods. The University of California Los Angeles chose the former path, hosting a digitized version of a DVD series of Shakespearean productions on a password protected network that could only be accessed by students and faculty. In December 2010, the Association for Information and Media Equipment (AIME) filed a lawsuit against UCLA, claiming that the university infringed upon the copyrights of Ambrose Video, a company which is an institutional member of AIME, and owns the rights to the Shakespearean DVD series.
The owner of a copyrighted work has exclusive rights to reproduce and display the work.[1] The copyright owner may also license these rights to other parties. Though UCLA had licensed the right to display the DVD content by purchasing the DVD series, AIME contends that a separate license was needed to stream the video online. Indeed, Ambrose offers an online steaming license which allows video to be streamed from an institution’s server. Thus, AIME claims that UCLA infringed on Ambrose’s copyright, both by digitizing the DVD series, which constitutes a violation of the right to reproduce, and by displaying the DVD content on UCLA’s online network.
UCLA has made several arguments contending that its online use of the DVDs does not constitute copyright infringement. First, the university argues that streaming the content for use in one of its courses is an exception to infringement under 17 USCS § 110(1), which states that, “a performance or display of a work by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction,” is not copyright infringement. UCLA also claims that it is sheltered by the TEACH Act, which allows educational institutions to display copyrighted material to students at the direction of an instructor if the material is an integral part of a class session and measures are taken to promote compliance with copyright laws.[2] However, the TEACH Act only applies when “limited and reasonable” portions of copyright material are displayed. Here, AIME claims UCLA streamed entire DVDs. Finally, UCLA also argues that its display of the copyrighted content is acceptable since it is covered by the fair use doctrine, a concept that exempts users from infringement claims when the use is done for the purpose of parody, education, or other limited reasons.[3]
Besides these substantive arguments, UCLA has made some rather interesting procedural arguments. AIME has sought relief under both the federal Copyright Act and state contract law. Regarding the federal claims, UCLA claims that AIME does not have standing since it is not the actual owner of the copyright. Standing generally exists when the party seeking to sue has, itself, been injured by the actions of the opposing party.[4] Additionally, UCLA argues that the Eleventh Amendment grants it immunity against all federal claims. Generally, under the Eleventh Amendment, and in the absence of a State’s consent or waiver or Congressional abrogation, a State may not be sued in a federal court.[5] Accordingly, UCLA emphasizes that California has not consented to jurisdiction in this suit. Since UCLA is an arm of the state, the university reasons, claims brought against it in federal court are barred.
However, UCLA’s most novel contention is its procedural opposition to the state claims filed by AIME. In the event the federal Copyright Act claims are dismissed on immunity or other grounds, UCLA argues, AIME cannot move forward with the state law claims because they are preempted by the Copyright Act. As support for this argument, UCLA cites Section 301 of the Copyright Act, which says that state laws that create “legal or equitable rights that are equivalent” to the exclusive rights in copyright are preempted. However, there is no definition by which to judge whether the rights granted under UCLA’s license agreement with Ambrose are “equivalent” to those governed by the Copyright Act. UCLA contends that since both the licensing agreement and the Copyright Act prohibit the university from duplicating and broadcasting the DVD content, they are equivalent enough to preempt the state law contract claims. While a similar, but distinguishable, argument has been rejected by the Eighth Circuit, UCLA’s own Professor David Nimmer, one of the most respected authorities on copyright in the United States, suggests that a contract that attempts to “serve as a subterfuge to control nothing other than the reproduction, adaptation, public distribution, etc.” of copyrighted works should be preempted.
These arguments, submitted in February of 2011, have not yet been decided on by the Court. If UCLA is successful in its preemption argument, however, it would signal a shift towards the protection of copyrighted material users, not owners, since it would most likely indicate that licenses which abrogate fair use and other aspects of copyrights exclusive rights scheme would always be preempted.
