Volume 06, Issue 1, pp 105-136, Moye

Punt or Go For the Touchdown?

A Title VII Analysis of the National

Football League’s Hiring Practices for

Head Coaches

Jim Moye

. B.A. 1995, University of Southern California. The author is a third year law student

at The Catholic University of America, Columbus School of Law. I would like to

thank Jimmy, Ulyesses and Terry Moye, because their financial and emotional

support made this a reality. I would like to thank R. Christian Barger, junior high

football coach at Channelview Junior High School and fellow Cowboys fan, for our

many discussions on the Dallas Cowboys’ coaching decisions. I would like to thank

Professor Leroy D. Clark, my Fair Employment Law instructor for whom this

research was originally completed, and George P. Braxton,II, Director of

Admissions, Catholic University of America, Columbus School of Law. Special

thanks to the following fellow USC graduates: Carrie E. Spencer, who is a great

friend, consistently dealt with my inflated ego and whom I greatly appreciate; Sam

Sheldon, Associate with Cozen and O’Connor, San Diego; and Dr. C. Keith Harrison,

Assistant Professor of Sports Communication and Management and Director of the

Paul Robeson Center for Athletic and Academic Prowess, Department of

Kinesiology, the University of Michigan. I would like to thank the following CUA

law students: Holly A. Hawkins, Elizabeth Bechtold and Kasey Chapelle. I would

like to thank the following members of academia and the media for taking time out of

their busy schedules to contribute to this article: William C. Rhoden of the New York

Times, Dr. Jomills H. Braddock,II, Chair of the Department of Sociology at the

University of Miami; Richard E. Lapchick, Director, Center for the Study of Sports in

Society, Northeastern University; and Dick Schaap of ABC Sports and ESPN.

Finally, I would like to thank Roberta F. Rinker, 2 “d year Masters of Social Work

student, The Catholic University of America, National Catholic School of Social

Service, for her love and support.

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[Vol 6:1

"The behavior of the NFL is important, because if Tagliabue and

his 30 owners can peer down from their skyboxes and say, 'We can't

find any,' it leaves no doubt what excuses and lies everyday African-

Americans face in hiring and promotion."'

I. INTRODUCTION

The National Football League ("NFL") is one of the most popular

sports leagues in the world.        The league is an     unincorporated

association of thirty separately owned professional football teams, each

2

operated through a distinct corporation or partnership.      Teams are

located in major American cities such as Chicago, New York and San

Francisco, but teams also exist in smaller markets such as Buffalo,

New   Orleans and Cincinnati.3    The estimated price tag of an NFL

franchise is believed to be anywhere from $300 to $400 million

dollars.4 In January 1998, the NFL became one of the largest corporate

players in American business when it sold the rights to televise

association-sponsored games to four networks for almost $18 billion.5

See Derrick Z. Jackson, Why So Few African-American Coaches in the N.F.L.?

Feb. 1, 1998, Boston Globe at 23A.

2 See Mackey v. National Football League, 543 F.2d 606, 610 (8th Cir. 1976). In

Mackey, the court, describing the history of the NFL, wrote:

The NFL, which began operating in 1920, is an unincorporated association

comprised of member clubs which own and operate professional football teams. It

presently enjoys a monopoly over major league professional football in the United

States. The League performs various administrative functions, including organizing

and scheduling games, and promulgating rules. A constitution and bylaws govem its

activities and those of its members .... Throughout most of its history, the NFL's

operations have been unilaterally controlled by the club owners.

Id.

See Tagliabue: Free Agency Threatens Small Markets, USA TODAY, Aug. 5,

1992 at 13C.

' See Ann Imse, Don't Let Broncos Go, Expert Warns Acquiring Another NFL

Team More Costly Than New Stadium, ROCKY MOUNTAIN NEWS, Feb. 6, 1998, at

4A. The owner of the Cleveland team, the latest expansion city in the NFL, will pay

between $300 and $500 million to the league to own the franchise. Both the Carolina

Panthers and Jacksonville Jaguars, the last teams brought in for expansion before

Cleveland, each paid $200 million for their franchises. See id.

' See Howard Manly, ABC Fills Up The NFL's TV Jackpot, Total Deal Worth

$17.6B; NBC Won't Be A Part OfIt, BOSTON GLOBE, Jan. 14, 1998 at Fl. The Fox

Network will pay over $550 million per year to televise National Football Conference

HIRING PRACTICES FOR NFL COACHES

Soon after, the NFL began preparation for its annual championship, the

Super Bowl. The Super Bowl is carried, in some form or fashion, to

over forty million households, providing yet another financial coup for

the league and its owners.6

In what normally would have been a festive time for NFL owners

and league officials, coaches and players became troubled when the

question of race, with special regard to head coaching positions, was

brought into the public spotlight.7 Head coaching positions within the

NFL are unique, namely, because there is no formal or standardized

merit or seniority system through which hiring decisions are made.8

Coaches are hired for expertise (for example, offenses or defenses),9

("NFC") games; the Columbia Broadcasting System will pay $500 million per year to

televise American Football Conference ("AFC") games; ESPN will televise Sunday

night and Thursday night games for $600 million per year; and the American

Broadcasting Company will televise Monday night football games for $550 million

per year. The contract is an eight year deal open to league negotiation in five years.

See id.

6 See generally William J. Donovan, Money - Not Football - Is the Force Driving

the Marketing Event that is the Super Bowl, PROVIDENCE JOURNAL BULLETIN, Jan.

25, 1998, at Al.

7 See Tagliabue To Meet With Black Coaches, THE NEWS AND OBSERVER

(Raleigh, NC), Jan. 24, 1998, at C5. See also Milo F. Bryant, Racism Only Word For

Disparity, THE FRESNO BEE, Jan. 23, 1998, at D1.

S The NFL has no institutionalized program for hiring of head coaches. Each

individual team handles the hiring of head coaches and, accordingly, there is no

timeline or set of standards.

9 Chan Gailey, the new head coach of the Dallas Cowboys, was hired because of

his experience and knowledge of offenses. See generally Tim Price, Offense A

Priority For Gailey, Expertise of New Coach Should Help Cowboys Move the Ball,

SAN ANTONIO EXPRESS-NEWS, Feb. 14, 1998, at 01C.

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knowledge of the game (i.e. head coaching experience),10 and their

ability to communicate with players.11

The NFL’s players are more than sixty percent African-American,12

yet there are only three African-American head coaches and nine

African-American coordinators.13 In the week preceding Super Bowl

XXXII, a wave of publicity brought the situation to the attention of the

American public.14 Most of the publicity centered around one African-

American assistant coach, named Sherman Lewis.15            Lewis, the

offensive coordinator of the 1997 World Champion Green Bay

Packers, has been passed over for a total of fourteen new head

coaching positions from   1996 to 1998.16 Yet, Lewis arguably should

“0 One of the main criteria used by the New Orleans Saints in deciding to hire

Mike Ditka as their new head coach was his proven experience as a head coach in the

NFL. See generally Mike Strom, ‘You Won’t Be Embarrassed Watching These Guys

Play’ Ditka Vows Saints Will Rise, NEW ORLEANS TIMES-PICAYUNE, Jan. 29, 1997,

at Al.

” Bill Cowher, the head coach of the Pittsburgh Steelers, is known as a tenacious

motivator for players. See generally Stephen Brunt, Looks Like Another AFC

Consolation Bowl, GLOBE AND MAIL, Jan. 9, 1998, at S1.

12 See Mike Freeman, Black Coaches are Angry with NFL Over Hiring, N.Y.

TIMES, Jan. 20, 1998, at Cl.

“3 See Ian O’Connor, NFL in Need of Hire Learning, N.Y. DAILY NEWS, Feb. 15,

1998, at 104. The three African-American head coaches in the National Football

League are Tony Dungy of the Tampa Bay Buccaneers, Ray Rhodes of the

Philadelphia Eagles, and Dennis Green of the Minnesota Vikings. The nine African-

American coordinators are Sylvester Croom of the Detroit Lions, Ray Sherman of the

Pittsburgh Steelers, Emmitt Thomas of the Philadelphia Eagles, Marvin Lewis of the

Baltimore Ravens, Jim Skipper of the New York Giants, Sherman Lewis of the Green

Bay Packers, Ted Cottrell of the Buffalo Bills, Jimmy Raye of the Kansas City

Chiefs, Willie Shaw of the Oakland Raiders, and Kippy Brown of the Miami

Dolphins. See generally Gene Frenette, Searching For Equal Footing, Black

Coaches Say Problem in NFL is Visibility, Not Ability, FLA. TIMES-UNION, Dec. 16,

1997, at D1.

” See generally Bill Walsh, Reaching Across the NFL’s Color Line, N.Y. TIMES,

Jan. 23, 1998, at Al; see also Bob Kravitz, NFL Hiring Practices Look Like Racism,

ROCKY MOUNTAIN NEWS, Jan. 21, 1998, at 3N.

15 See generally Nick Cafardo, Why Is There No Room For Lewis? He’s Gifted,

Successful and Overlooked, BOSTON GLOBE, Jan. 22, 1998, at C1.

1″ See id. “Eleven jobs opened up last year, and maybe one black guy got an

interview,” said Lewis. Id. “Four more this year, and maybe one African-American

[Art Shell, still under consideration in Oakland] will get interviewed.” Id.

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HIRING PRACTICES FOR NFL COACHES

have been hired as a head coach years ago. His offensive expertise,

knowledge of the game, ability to communicate and experience has

never been questioned.17 Lewis received much of the media attention

surrounding the controversy because, by NFL coaching standards, he is

considered to be a strong candidate for any head coaching position.18

Many of his white counterparts who have been hired as head coaches

have not enjoyed Lewis' success.19 Lewis' plight was so disconcerting

to other African-American assistant coaches that a group of black

assistant coaches discussed, but never pursued, filing a class action suit

against the NFL.2� Such a claim against the NFL would most likely be

21

a claim  brought under Title VII of the Civil Rights Act of 1964,

which prohibits racial discrimination by any employer.22      There are

various legal theories under which African-American coaches could

23

sue the NFL.       The most likely, though, are racial discrimination

through disparate treatment or disparate impact.24

The Supreme Court of the United States, through prior case law,

established a framework in which disparate treatment cases must be

17 See generally Don Pierson, Black Coaches Want Answers On NFL Hiring,

CHICAGO TRIBUNE, Mar. 23, 1997, at 13.

The three new coaches without NFL head coaching experience-Jim Fassel, Steve

Mariucci and Kevin Gilbride-arrive with far less NFL assistant coaching

experience than Green Bay offensive coordinator Sherman Lewis has. Mariucci was

the Packers' quarterbacks coach under Lewis before working one year as head coach

at Cal and making the jump to the San Francisco 49ers.

Id.

18 See id.

19 Seeid.

20 See Jim Reeves, Lewis Merits A Chance At Cowboys Job, FORT WORTH STAR-

TELEGRAM, Jan. 22, 1998, at 1.

21 42 U.S.C. � 2000(e)(2)(a). This section reads:

It shall be an unlawful employment practice for an employer-(-) to fail or refuse to

hire or to discharge any individual, or otherwise to discriminate against any

individual with respect to his compensation, terms, conditions, or privileges of

employment, because of such individual's race, color, religion, sex, or national

origin ....

Id.

22 See id.

23 This Comment is focusing only on Title VII actions.

24 For a further discussion of disparate treatment, see infra part II.A; For a further

discussion of disparate impact, see infra part II.B.

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litigated.25 The plaintiff must first establish by a preponderance of the

evidence a prima facie case of racial discrimination.26  If this is

accomplished, the defendant must rebut the prima facie case by

“producing evidence” that adverse employment actions were taken for

a legitimate and nondiscriminatory reason.27

To posit a claim of disparate impact, an employee must show that a

facially neutral  employment    practice has   had   a  significant

discriminatory impact. If such a showing is made, the employer must

demonstrate why the employment practice has a manifest relationship

to the employment in question.      If the employer satisfies the

requirement, the employee must establish that the employer was using

the practice as mere pretext for discrimination or that another practice

would serve the employer’s legitimate interests without undesirable

effects.28

This Comment argues that African-American assistant coaches

have legitimate disparate treatment and disparate impact claims under

Title VII of the Civil Rights Act of 1964 regarding the National

Football League’s hiring practices. Specifically, this Comment focuses

on the hiring and promotion standards employed by member teams to

fill head-coaching vacancies. Part I discusses the development of case

law for disparate treatment under Title VII and applies the disparate

treatment framework to the NFL’s hiring practices for head coaches.

Part II examines the evolution of case law with regard to disparate

impact and examines those same hiring practices in light of the

disparate impact test. This Comment concludes that such causes of

action could be successful against the NFL.

II. EVOLUTION OF DISPARATE TREATMENT UNDER TITLE VII

The Supreme Court has ruled that in order to establish a case of

disparate treatment, a plaintiff must show, by a preponderance of the

evidence, a “prima facie” case of racial discrimination, thereby creating

25 See infra part I.

26 See E. Christi Cunningham, The Rise of Identity Politics I.- The Myth of the

Protected Class, Title VII in Disparate Treatment Cases, 30 CONN. L. REV. 441, 451

(1998).

27 See id.

28 See id. at 452.

110

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HIRING PRACTICES FOR NFL COACHES

a presumption the employer unlawfully discriminated against an

employee.29 Once established, a presumption of discrimination places

upon the defendant the burden of producing an explanation to rebut the

prima facie case.30 After a plaintiff establishes a prima facie case of

discrimination, a defendant must clearly set forth reasons for its actions

which would support a finding that unlawful discrimination was not the

cause of the challenged employment action.31 The defendant can rebut

the   presumption     by    introducing   evidence    of    legitimate,

nondiscriminatory reasons for its actions.32

A.    Clarifying the Plaintiffs and Defendant's Burdens in

Discriminatory Treatment Cases

The foundation for establishing a prima facie case in Title VII

discriminatory treatment cases was laid in McDonnell Douglas v.

Green.33 The case focused on a black civil rights activist, Green, who

was discharged from his position as a mechanic at McDonnell

Douglas. Green protested his discharge, arguing the firm's general

hiring practices were racially discriminatory.34   Three weeks after

protesting his discharge, McDonnell Douglas advertised for mechanics,

and Green applied for reinstatement McDonnell Douglas refused to

rehire him.35   Green filed an action with the Equal Employment

Opportunity Commission, arguing violations of �� 703 (a)(1) and

704(a) of the Civil Rights Act of 1964.36 The Commission found

29 See McDonnell Douglas Corp. v. Green, 411 U.S. 792 (1973).

30 See Texas Dep't. of Community Affairs v. Burdine, 450 U.S. 248, 255 (1981).

3' See id. at 254-55.

32 See id.

"  See McDonnell Douglas, 411 U.S. at 792.

34 See id. at 794. Respondent was laid off as part of a general reduction in

McDonnell Douglas' workforce. Respondent engaged in illegal and disruptive

behavior to protest his discharge .and the general hiring practices of McDonnell

Douglas. Id.

31 See id. at 796. McDonnell Douglas rejected the petitioner's application because

of his involvement in protests against the company. Id.

36 Civil Rights Act of 1964 �703(a)(1), 42 U.S.C. � 2000 (e)(2)(a)(1)(1996)

It shall be an unlawful employment practice for an employer.., to fail or refuse to

hire or to discharge any individual, or otherwise to discriminate against any

individual with respect to his compensation, terms, conditions, or privileges of

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reasonable cause to believe the McDonnell Douglas had violated �

704(a) by refusing to reinstate Green because of his civil rights

activity.37 The District Court, however, dismissed Green’s claim       of

racial discrimination in McDonnell Douglas’ hiring procedures and

concluded that nothing in Title VII or � 704 protected Green’s illegal

activity.38 The Eighth Circuit Court of Appeals agreed Green’s protests

were not protected under � 704(a), yet reversed the dismissal of his

claim of racially discriminatory hiring practices.39 The Supreme Court

affirmed.40  The Court posited a framework for establishing a prima

facie case of racial discrimination. First, the plaintiff must belong to a

racial minority. Second, the plaintiff must apply and be qualified for a

job for which the employer is seeking applicants. Third, despite the

plaintiffs qualifications, the plaintiff is rejected and after his rejection,

the position remains open while the employer continues seeking

applications from persons of the complainant’s qualifications.41     The

Court further opined that the burden then must shift to the employer to

articulate some legitimate, nondiscriminatory reason for the employee’s

rejection.42

employment, because of such individual’s race, color, religion, sex, or national

origin ….

Civil Rights Act of 1964 �703(a)(1), 42 U.S.C. � 2000 (e)(3)(a)(1996). “It shall be

an unlawful employment practice for an employer to discriminate against any of his

employees or applicants for employment … because he has opposed any practice

made an unlawful employment practice by this title . Id.

17 See McDonnell Douglas, 411 U.S. at 797.

31 See id. The District Court dismissed the racial discrimination in petitioner’s

hiring procedures because the Commission failed to make a determination of

reasonable cause to believe a violation of Section 703(a)(1). The Court reasoned that

nothing in Title VII or Section 704 protected “such activity as employed by the

plaintiff in the ‘stall in’ and ‘lock in’ demonstratioris.” Id.

’9 See id. The Eighth Circuit held the prior determination by the Commission of

reasonable cause was not a jurisdictional prerequisite for raising a claim under

Section 703(a)(1) in federal court. The court ordered the case remanded under the

respondent’s 703(a)(1) claim. See McDonnell Douglas, 411 U.S. at 797.

40 See id. at 792.

“4 See id. at 802.

41 See id.

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HIRING PRACTICES FOR NFL COACHES

The Supreme Court further refined this principle in Texas

Department of Community Affairs v. Burdine.43 The Texas Department

of Community Affairs ("TDCA") hired Burdine, a female, who

possessed   several years of relevant experience in her field of

expertise.44 Burdine was subsequently promoted and eventually

assumed the duties of her supervisor.45      Burdine's program   was

completely funded by the United States Department of Labor, which

decided to terminate the program.46 With the assistance of Burdine,

TDCA officials persuaded the Labor Department to continue funding

the program.47 The TDCA decided to hire a male from another

division of the agency as the supervisor of the program.48 As part of

the staff reorganization, Burdine was fired, despite her continued

application for the supervisor position.49   Burdine was eventually

rehired by TDCA and reassigned, where she received the salary and

responsibilities commensurate with what she would have received in

the supervisory position for which she had been appointed supervisor

of the program.50   Burdine filed suit in United States District Court

alleging that the failure to promote her and the decision to terminate

her employment had been predicated on gender discrimination in

violation of Title VII.51 The court held neither decision was based

upon gender discrimination.52 The Court of Appeals for the Fifth

43 See Texas Dep't of Community Affairs v. Burdine, 450 U.S. 248 (1981).

44 See id. at 250.

4 See id. Her supervisor resigned in November, and the respondent was assigned

the supervisor's duties. See id. Although she applied for the supervisor's position of

Project Director, the position remained vacant for six months. See id.

46 See id. The Department of Labor was seriously concerned about inefficiencies

within the program, including bookkeeping problems and the lack of a supervisor. In

February 1973, the Department of Labor notified the TDCA that it would terminate

the program. See id.

17 See id. The continuation of funding by the Labor Department was defendant

upon the program's reformation, including the appointment of a permanent supervisor

and a complete reorganization of the staff. See id.

48 See id.

49 See id. at 251.

'0 See id.

"' See id.

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Circuit reversed in part.53 The Supreme Court vacated and remanded.54

Justice Powell, delivering the majority opinion, reasoned that the

burden of rebutting the presumption of discrimination is met by

producing evidence explaining the employment decision, and the

defendant does not have to persuade the court that it was motivated by

the reasons proffered.55

5" See id. The court's decision was based upon the testimony of a TDCA official,

who stated the employment decisions were based on the demands of the Labor

Department, consultation among trusted advisors, and a nondiscriminatory evaluation

of the qualifications of involved individuals. The court accepted this decision as

rational. See id.

5   See id. at 251.

The court held that the District Court's "implicit evidentiary finding" that the male

hired as Project Director was better qualified for that position than respondent was

not clearly erroneous. Accordingly, the court affirmed the District Court's finding

that respondent was not discriminated against when she was not promoted.

The Court of Appeals, however, reversed the District Court's finding that Fuller's

testimony sufficiently had rebutted respondent's prima facie case of gender

discrimination in the decision to terminate her employment at PSC. The court

reaffirmed its previously announced views that the defendant in a Title VII case

bears the burden of proving by a preponderance of the evidence the existence of

legitimate nondiscriminatory reasons for the employment action and that the

defendant also must prove by objective evidence that those hired or promoted were

better qualified than the plaintiff. The court found that Fuller's testimony did not

carry either of these evidentiary burdens. It, therefore, reversed the judgment of the

District Court and remanded the case for computation of backpay.

Id.

14 See id. at 249.

5 See id. at 254. Justice Powell wrote,

It is sufficient if the defendant's evidence raises a genuine issue of fact as to whether

it discriminated against the plaintiff. To accomplish this, the defendant must clearly

set forth, through the introduction of admissible evidence, the reasons for the

plaintiffs rejection. The explanation provided must be legally sufficient to justify a

judgment for the defendant. If the defendant carries this burden of production, the

presumption raised by the prima facie case is rebutted, and the factual inquiry

proceeds to a new level of specificity. Placing this burden of production on the

defendant thus serves simultaneously to meet the plaintiffs prima facie case by

presenting a legitimate reason for the action and to frame the factual issue with

sufficient clarity so that the plaintiff will have a full and fair opportunity to

demonstrate pretext. The sufficiency of the defendant's evidence should be evaluated

by the extent to which it fulfills these functions.

Id. at 254-56.

HIRING PRACTICES FOR NFL COACHES

The holdings in McDonnell Douglas and Burdine were tested and

expanded in St. Mary's Honor Center v. Hicks.56 In Hicks, Hicks, was

employed by St. Mary's Honor Center, a halfway house operated by the

Missouri Department of Corrections and Human Resources.57 After

various personnel changes and supervisory actions, Hicks was demoted

and eventually discharged.58 Hicks brought suit against St. Mary's in

United States District Court, alleging violations of � 703(a)(1) of Title

VII of the Civil Rights Act of 1964.59 The District Court found for the

petitioners and the Eighth Circuit Court of Appeals reversed and

remanded.60 The Supreme Court reversed, holding that a trier of fact's

rejection of an employer's asserted legitimate, nondiscriminatory

reasons for its challenged actions does not entitle an employee to

judgment as a matter of law under the McDonnell Douglas scheme.61

B.     Proving Disparate Impact Cases Under Title VII

The Supreme Court has established a three-prong test for proving a

disparate-impact claim.62 To establish a prima facie case, a plaintiff

must first show that a facially neutral employment practice "had a

56 509 U.S. 502 (1993).

57 See id. at 504. Hicks, an African-American male, was hired as a correctional

officer by the Center in August 1978, and was subsequently promoted to shift

commander. See id.

" See id. An extensive investigation of St. Mary's resulted in supervisory

changes. Two new supervisors were appointed to oversee Hicks. Before the

personnel changes, Hicks had a satisfactory employment record, but soon became the

object of repeated disciplinary actions. First he was suspended; then he received a

letter of reprimand and was subsequently demoted; ultimately he was discharged for

threatening one of his supervisors. See id. 504-05.

59 See supra note 37.

60 See Hicks, 509 U.S. at 505.

61 See id. at 511.

But the Court of Appeals' holding that rejection of the defendant's proffered reasons

compels judgment for the plaintiff disregards the fundamental principle of Rule 301

that a presumption does not shift the burden of proof, and ignores our repeated

admonition that the Title VII plaintiff at all times bears the "ultimate burden of

persuasion."

Id.

62 See generally Connecticut v. Teal, 102 S.Ct. 2525 (1982).

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significantly discriminatory impact.”63     If a plaintiff  makes the

showing, an employer must demonstrate that “any given requirement

[has] a manifest relationship to the employment in question,” or face a

finding of discrimination.64 A plaintiff may still prevail after such a

showing is made by an employer, if a plaintiff can in turn show that an

employer was using the practice as a mere pretext for discrimination.65

The foundation for determining a prima facie case for disparate

impact claims was laid in Griggs v. Duke Power Company (“Duke”).66

The controversy in the case centered around Duke’s hiring and transfer

policy which required that prospective employees have certain

educational credentials or pass a standardized general intelligence

67

test.   In 1955, Duke began requiring applicants to possess a high

school education for any department except Labor, and for transfer

from one department to any other department within the company.68 In

1965, Duke abandoned its prejudicial policy of restricting blacks to the

Labor Department, yet made completion of high school a prerequisite

to transfer from  the Labor Department to any other department. 69In

addition, Duke began requiring prospective employees in any

department other than the Labor Department to pass two aptitude

63 Id. at 2530.

64 Id. at 2538.

65 See id.

66 401 U.S. 424 (1971).

67 See id. at 425-26. One of those two requirements had to be met not only for

employment, but to also transfer jobs within the company. The expanded issue was

whether these requirements could stand when neither standard was shown to be

significantly related to successful job performance, both requirements operate to

disqualify Negroes at a substantially higher rate than white applicants and the jobs in

question formerly had been filled only by white employees as part of a longstanding

practice of giving preference to whites. See id. at 426.

68 See id. at 427. The transfer policy was specifically from the coal handling

department to any of the other internal departments, which included operations,

maintenance and labor. See id. at 424.

69 See id. “From the time the high school requirement was instituted to the time

of trial, however, white employees hired before the time of the high school education

requirement continued to perform satisfactorily and achieve promotions in the

‘operating’ departments.” Id.

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tests.70 "In September 1965 the Company began to permit incumbent

employees who lacked a high school education to qualify for transfer

from Labor or Coal Handling to an 'inside' job by passing two tests-

the Wonderlic Personnel Test, which purports to measure general

intelligence, and the Bennett Mechanical Comprehension Test."71

Black employees within the company brought a class action suit in

United States District Court against Duke alleging the employment

practices were violative of Title VII of the Civil Rights Act.72 The

District Court dismissed the complaint and the plaintiffs appealed.73

The Court of Appeals affirmed in part and reversed in part.74 The

Supreme Court reversed.75       Chief Justice Burger, writing for the

majority, opined that use of the high school education requirement and

standardized testing for employment purposes violated the Civil Rights

Act because the employer was prohibited by provisions of the Act

pertaining to employment opportunities from using educational

credentials or standardized testing as a condition of employment in or

for transfer to jobs,

when (a) neither standard [was] shown to be significantly related to

successful job performance; (b) both requirements operate[d] to

disqualify Negroes at a substantially higher rate than white applicants;

70 See id. at 427-28. This new requirement was instituted, ironically, on July 2,

1965, the date Title VII became effective. A high school education alone allowed

current employees to be eligible for transfer to the four departments in which blacks

had been excluded if the person had been employed prior to the new requirement.

See id. at 428.

“‘ Id. Neither of the tests was used to determine any particular ability to perform

the work required in the various departments of the company. See id.

72 See id. at 426.

7  See id. at 428. The District Court concluded that even though the respondent

followed a racially discriminatory hiring policy prior to Title VII, the company had

taken affirmative steps to correct such behavior. The District Court also concluded

that Title VII was intended to only be prospective and therefore the impact of prior

inequities was beyond the reach of corrective action authorized by Title VII. See id.

” See id. at 428-29. The Court of Appeals upheld the district court’s finding of no

violation against the employer because a there was no showing of a discriminatory

purpose in the adoption of the diploma and test requirements. See id. The Court of

Appeals reversed in part, “rejecting the holding that residual discrimination arising

from prior [employment] practices was insulated from remedial action.” Id.

“  See id. at 436.

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and (c) the jobs in question formerly had been filled only by white

employees as part of a long standing practice of giving preference to

whites.76

The court expanded this framework in Albermarle Paper Co. v.

Moody.77 In Albermarle, the respondents, a certified class of black

employees, brought a Title VII action against their employer, the

Albermarle Paper Company, and          the employees’ union.78        The

respondents sought injunctive relief against “any policy, practice,

custom or usage” by the company that was violative of Title VII of the

Civil Rights Act of 1964.7′ The United States District Court found the

respondent black employees had been locked into lower paying job

classifications and ordered the petitioners to institute a plant wide

seniority system.8� The court, however, refused to order backpay in the

case or enjoin the company’s testing program.81         The respondents

appealed and the Court of Appeals for the Fourth Circuit reversed.82

76 Id. at 426.

77 422 U.S. 405 (1975).

78 See id. The respondents were both present and former employees of the

defendant. See id. at 408.

71 See id. at 409. After discovery, the class added a class backpay demand. See

id. The major “policy, practice, custom or usage” at issue were the seniority system

of the plant, employee testing program, and backpay. Id.

80 See id. at 424 (finding that the locked lower job classifications for the black

employees was due to a reorganization pursuant to a new collective-bargaining

agreement.).

“I See id. at 410. The Court refused the backpay claim because the company’s

breach of title VII was not in bad faith and the class had delayed providing backpay

until five years after the complaint was filed, prejudicing the company. See id. The

Court further refused to enjoin the company’s testing program, which the class

claimed had a disproportionate adverse impact on blacks and was not related to job

performance, because the tests had undergone validation studies and were proven to

be job related. See id. at 411.

82 See id. The Court of Appeals held an award of backpay could be requested

after filing a complaint and that such an award could not be denied merely because

the employer had not acted in bad faith. See id. at 412. As for the pre-employment

tests, the Court held that the District Court erred because it approved a validation

study done without job analysis, to allow Albemarle to require tests for 6 lines of

progression where there has been no validation study at all, and to allow Albemarle

to require a person to pass two tests for entrance into 7 lines of progression when

only one of those tests was validated for that line of progression. See id.

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The Supreme Court upheld the Fourth Circuit’s decision and vacated

the original judgment, remanding the case back to District Court.83

Justice Stewart, writing for the majority, opined that the absence of bad

faith is insufficient for denying backpay,84 and that measured against

the Equal Employment Opportunity Commission’s guidelines and the

Court’s ruling in Griggs, the petitioner’s testing program violated Title

VII.85

The court completed the framework for prima facie cases of

disparate impact in Dothard v. Rawlinson.86         In Dothard, a female,

Rawlinson, applied for a position as a prison guard and was rejected.87

In finding unlawful discrimination, backpay should be denied only for reasons that

“would not frustrate the central statutory purposes manifested by Congress in

enacting Title VII of eradicating discrimination throughout the economy and making

persons whole for injuries suffered through past discrimination.” Id. at 405-06. The

Court of Appeals further added that absence of bad faith is insufficient for denying

backpay, and    that measured   against the Equal Employment Opportunity

Commission’s guidelines, the company’s validation study was defective because of its

“odd” results: there was no way of deducing what job performance criteria were

being considered; the test focused on job groups near the top of various lines of

progression; and it dealt with job-experienced white workers. See id. at 406.

83 See id. at 407.

84 See id. at 422.

The District Court’s stated grounds for denying backpay in this case must be tested

against these standards. The first ground was that Albemarle’s breach of Title VII

had not been in “bad faith.” This is not a sufficient reason for denying backpay.

Where an employer has shown bad faith-by maintaining a practice which he knew

to be illegal or of highly questionable legality-he can make no claims whatsoever

on the Chancellor’s conscience. But, under Title VII, the mere absence of bad faith

simply opens the door to equity; it does not depress the scales in the employer’s

favor.

Id.

85 See id. at 431-36. The Court found that, measured against Equal Employment

Opportunity Commission’s guidelines for employers seeking to determine through

professional validation studies whether employment tests are job related, employer’s

validation study was “materially defective.” Id. at 431.

86 433 U.S. 321 (1977).

87 See id. at 323. The appellee applied for a prison guard position with the

Alabama Board of Corrections, which was entitled “correctional counselor.” Id. The

applicant was rejected because she failed to meet the minimum 120-pound weight

requirement of an Alabama statute, which also required a minimum height of 5 feet 2

inches. See id. at 323-24.

UCLA ENTERTAINMENT LAW REVIEW

Rawlinson filed an action with the Equal Employment Opportunity

Commission, received a right-to-sue letter and ultimately filed a class

action suit in United States District Court against the Alabama

Department of Corrections, claiming          that an   Alabama     statute88

outlining physical qualifications for prisons guards was violative of

Title VII.89 While the suit was pending, the appellant adopted a new

regulation,90 establishing gender criteria for assigning correctional

counselors     to   “contact    positions”   within    maximum-security

institutions.91  Rawlinson     amended     her   class-action   complaint,

challenging the regulation as running afoul of Title VII and the

Fourteenth Amendment.92 A three-judge panel agreed with Rawlinson

and granted relief to the class.93      The Department of Corrections

appealed to the Supreme Court.94        The Court affirmed in part and

reversed in part.95 Justice Stewart, writing for the majority, stated that

8 ALA. CODE, � 373(109)(1973). In relevant part, the statute read:

(d) Physical qualifications. – The applicant shall be not less than five feet two inches

nor more than six feet ten inches in height, shall weigh not less than 120 pounds nor

more than 300 pounds and shall be certified by a licensed physician designated as

satisfactory by the appointing authority as in good health and physically fit for the

performance of his duties as a law-enforcement officer. The commission may for

good cause shown permit variances from the physical qualifications prescribed in

this subdivision.

Id.

89 Dothard, 433 U.S. at 324.

90 See id.

91 Id. at 324. The court defined contact positions as “positions requiring continual

close physical proximity to inmates of the institution.” Id. at 325.

92 See id.

13 See id. at 321. The Court arrived at its decision based on national statistics

comparing the height and weight of men and women and showing that the standard

outlined in the Alabama statute would exclude over 40% of the female population

and less than 1% of the male population. The court found that appellee had made out

a prima facie case of unlawful sex discrimination, and the appellants had failed to

rebut the claim. The court also found the challenged regulation invalid under Title

VII because it was based on stereotyped characterizations of the sexes, and, rejected

the appellants’ bona-fide-occupational-qualification defense under � 703(e) of Title

VII. With regard to that defense, the court ruled that “being male was not such a

qualification for the job of correctional counselor in a ‘contact’ position in an

Alabama male maximum-security penitentiary.” Id.

94 See id.

“  See id. at 322.

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Title VII prohibited application of Alabama's facially neutral height

and weight statute. He based this decision upon: (a) the plaintiff

established a prima facie case of unlawful sex discrimination upon

showing the statutory requirements would exclude over forty-one

percent of the nation's female population, while excluding less than one

percent of the male population, and (b) the prima facie case was not

rebutted on the ground that the statutory requirements were job-related,

i.e. that the requirements were related to the strength essential to

effective job performance as a prison guard, because no evidence was

presented by the defendants to correlate the statutory requirements with

the amount of strength thought to be essential.96 The Court concluded,

however, the regulation barring hiring female guards in "contact

positions" at all male prisons fell within the purview of bona fide

occupational qualification as defined in � 703(e) of Title VII.97

III. APPLYING THE DISPARATE TREATMENT TEST TO THE NFL's HIRING

PRACTICES

For a claim of disparate treatment against the NFL to be successful,

there are a number of steps that must be followed. First, the plaintiffs

must establish a prima facie case of discrimination.98 The NFL would

then be given an opportunity to respond and give legitimate,

nondiscriminatory reasons for its failure to hire qualified African-

Americans as head coaches.99 Once the NFL meets such a burden, the

plaintiffs would be given an opportunity to show that the stated reasons

for the defendant's rejection were pretextual.100

A. Is there a Prima Facie Case of Discrimination against the NFL?

For purposes of this Comment, two African-American head

coaching prospects, Emmitt Thomas, defensive coordinator of the

96 See id. at 329-32.

9' See id. at 334.

98 See McDonnell Douglas, 411 U.S. at 802.

99 See id.

ioo See id.

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Philadelphia Eagles and Sherman Lewis, offensive coordinator of the

Green Bay Packers, will serve as examples of disparate treatment.

The first element of a prima facie case of disparate treatment

consists of establishing that the applicants belong to a racial

minority.101 In the current case, both Mr. Thomas and Mr. Lewis are

African-Americans. Therefore, the first element is easily satisfied.

The second element is whether the applicant applied for and was

qualified for a job in which the employer was seeking applicants.102

Mr. Thomas was formally considered for head coaching positions with

the Detroit Lions,103 New York Giants'04 and St. Louis Rams,'05 while

the Dallas Cowboys considered Mr. Lewis for their head coaching

vacancy.106 Mr. Thomas was a player in the NFL, has been an NFL

assistant coach for over fifteen years and has been a coordinator for

three years.107 Compared against others, who have become head

coaches in the NFL, Mr. Thomas is more than qualified. Mr. Lewis

has over 28 years of coaching experience including at the college level,

has been an assistant coach with three Super Bowl winning teams,

offensive coordinator for two other victorious Super Bowl teams.108

When compared to others, who have become head coaches, Mr. Lewis

is more than qualified.

As for the employer seeking applicants, the four teams were clearly

looking to fill head-coaching vacancies.  The Detroit Lions fired

101 See id.

102 See id.

103 See Eric T. Pate, Lions' Search Begins with Two Assistants, GRAND RAPIDS

PRESS, Dec. 31, 1996, at C1.

04 See Vinny DiTrani, Eagles' Thomas Talks With Giants, THE RECORD, Jan. 3,

1997, at S06.

"o' See Jim Thomas, Shaw Meets With Thomas, Keeps Cards Close to Vest; But

Rams Have Competition for Coaching Candidates, ST. Louis POST-DISPATCH, Jan. 9,

1997, at 01D.

0.6 See Rick Cantu, Lewis Interviewed Again For Cowboys Job; Green Bay

Offensive Coordinator Might Be Leading Contender, AUSTIN AMERICAN-

STATESMAN, Feb. 10, 1998, at C1.

107 See Jim Thomas, Eagles' Aide Emerges in NFL Coaching Hunt, Rams, Giants

Among Those With Interest in Emmitt Thomas, ST. Louis POST-DISPATCH, Jan. 1,

1997, at 01D.

"o8 See Tom Pedulla, Lewis' Job Outlook Irks Pack, USA TODAY, Jan. 22, 1998,

at 4C

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Wayne Fontes and began an intensive interview process.109 The New

York Giants had recently fired Dan Reeves, created a short list of

candidates and began the interviewing process.110 The St. Louis Rams

dismissed Rich Brooks, and actually began the search process before

his formal dismissal.'11   Finally, the Dallas Cowboys, after the

resignation of Barry Switzer, searched for five weeks, and interviewed

four candidates for one of the most sought after head coaching

positions in professional sports.112

The third element is that despite the applicant's qualifications, they

are not selected.' 13 The Detroit Lions hired Bobby Ross,114 the New

York Giants settled on Jim Fassel,'15 the St. Louis Rams coaxed Dick

Vermeil out of retirement1l6 and the Dallas Cowboys shocked the

world by hiring a virtual unknown, Chan Gailey.17

The fourth and final element of establishing a prima facie case is

that after the applicant's rejection the position remained open and the

employer continued to seek applications from persons of the

complainant's qualifications.'18 In the case of Mr. Thomas, it is

unclear when the Detroit Lions interviewed him.119 However, he

interviewed after Jim Fassel for the New York job120 and was formally

interviewed before Dick Vermeil was brought in to coach the St. Louis

Rams.     The situation in St. Louis seems to be the clearest fulfillment

"09 See Associated Press, Lions Hope Ross Continues Winning Ways in Detroit,

TULSA WORLD, Jan. 15, 1997, at B4.

"1' See Names: Fassel First Up In Giants' Coach Search, BOSTON GLOBE, Dec.

26, 1996, at C2.

... See R. B. Fallstrom, Rams Finally Latch On To Dick Vermeil, THE

COLUMBIAN, Jan. 21, 1997, at D Section, p. 3.

112 See Rick Cantu, Cowboys Hire Gailey as New Head Coach, New Dallas

Coach a Steeler Alumnus, AUSTIN AMERICAN-STATESMAN, Feb. 13, 1998, at Al.

..3 See McDonnell Douglas, 411 U.S. at 802.

114 See Associated Press, supra note 110.

115 See supra note 111.

116 See Fallstrom, supra note 112.

117 See Cantu, supra note 113.

"   See McDonell Douglas, 411 U.S. at 802.

119 See Associated Press, supra note 110.

121 See DiTrani, supra note 105.

"2' See Fallstrom, supra note 112.

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UCLA ENTERTAINMENT LAW REVIEW

of the fourth element. Mr. Thomas interviewed for the job before the

eventual successful candidate was brought into the mix.122 John Shaw,

President of the St. Louis Rams, admits that after interviewing Thomas

and other candidates he tried to talk Vermeil into accepting the head

coaching job. 123

Mr. Lewis interviewed third in a pool of four candidates for the

Dallas job.124 He interviewed before the successful candidate, Chan

Gailey.125 The job was offered to Terry Donahue, the first candidate,

but he turned down the offer.126 Gailey was not even interviewed until

after the failure of Donahue to accept the position.127 Therefore, in

both Mr. Thomas’ and Mr. Lewis’ cases, the eventual successful

candidates were not brought in to interview for the coaching vacancies

until well after Mr. Thomas and Mr. Lewis had completed interviews.

Accordingly, using the examples of Mr. Thomas and Mr. Lewis,

African-American assistant coaches satisfy all four elements and thus

establish a prima facie case of disparate treatment.

B. Can the NFL Rebut the Prima Facie Case?

The next step in the process is for the NFL to articulate legitimate

reasons as to why Mr. Thomas and Mr. Lewis were not hired for the

positions in which they had expressed interest.128 The following are

possible rebuttal arguments that could be made by the NFL.

1. The National Football League Does Not Control the Hiring

Policies of Each Individual Association Team

One argument that could be made by the NFL is that the League, as

an entity does not control the hiring process for coaches.    Paul

Tagliabue, the Commissioner of the NFL, was once quoted as saying,

22 See Thomas, supra note 108.

.23 See Fallstrom, supra note 112.

124 See Cantu, supra note 109.

125 See Cantu, supra note 115.

126 See Richard Justice, Donahue Turns Down Offer from Cowboys, Returns

Home, PITTSBURGH POST-GAZETTE, Feb. 4, 1998, at C6.

127 See Jean-Jacques Taylor, Steelers’ Gailey Arrives for Cowboys Interview,

DALLAS MORNING NEWS, Feb. 10, 1998, at 2B.

128 See McDonnell Douglas, 411 U.S. at 802.

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"It's not my job to hire players or coaches for teams but to assure

fairness in the process."'129 The League takes no part in the hiring

process, nor do they take part in who is considered for positions or

have any veto power over who is ultimately selected.130   Therefore,

they would argue that the wrong entity is being sued, because the

hiring policy of each team is set by the management structure of those

individual teams.

2. The Candidates Lacked the Experience of Those Coaches Who

Were Hired

A second argument most likely to be made by the NFL is that Mr.

Thomas and Mr. Lewis lacked the experience of the coaches who were

ultimately hired. Bobby Ross, who was hired to replace Wayne Fontes

as head coach in Detroit, was a college head coach,131 and had NFL

head coaching experience.132 Jim Fassel was a college coach, and an

NFL assistant widely held to be an offensive genius.'33 Dick Vermeil

followed the same path, as he was a college football head coach, then

became a head coach in the NFL before being hired by the Rams.134

Finally, Chan Gailey, the choice of Dallas Cowboys owner Jerry Jones,

was a head college coach and an offensive coordinator in the NFL.135

All of the candidates have at least one thing in common, the experience

of being a head coach at least at the collegiate level. Neither Mr.

Thomas nor Mr. Lewis have been head coaches in any capacity.

129 Committees Might Discuss Hiring Practices, SACRAMENTO BEE, Mar. 25,

1997, at D3.

130 See Associated Press, Ross Takes Control of Lions, CHI. TRIB., Jan. 14, 1997,

at 3.

.31 See id. While serving as head coach at Georgia Tech, Ross' team won a share

of the national title.

112 See Associated Press, supra note 110.

... See Mark Singelais, Fassel Takes on Giant Task, N.Y Hires Ex-Assistant as

Coach, TIMES UNION (Albany, NY), Jan. 16, 1997, at CI.

134 See Clarence E. Hill, Jr., Tired of Coasting. Terry Donahue Appears Ready to

Leave Behind His Retirement in the California Splendor to Take Another Challenge,

FT. WORTH STAR-TELEGRAM, Feb. 3, 1998 at 3.

135 See Cantu, supra note 113.

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3. Coaching Decisions Are Based on More Than Resume

Credentials

A third argument that may be made by the NFL is that coaching

decisions are based on more than resume credentials. For instance,

William Clay Ford, owner of the Detroit Lions, brought in Bobby Ross

to head up the organization because of his “no-nonsense attitude.”’136

Jim Fassel was hired presumably because of his relationship to the

organization137   and   his   experience   with   the   team’s   starting

quarterback.138 Dick Vermeil was the choice of the Rams because he

had “high energy” and is “smart.”139 Finally, the Cowboys chose Chan

Gailey because of his energy level and his willingness to let the owner

have significant control over player personnel and related matters.140

There is a common thread of “intangibles,” or things not necessarily

reflected on a resume, that play an important part in these hiring

decisions.

C. The Coaches Have One Last Opportunity to Respond to the NFL’s

Reasoning

The final element of a disparate treatment claim is that the plaintiff

is given an opportunity to respond to the defendant’s reasons for the

136 See Associated Press, supra note 110. “It was that conservative, no-nonsense

attitude that endeared Ross to Lions owner William Clay Ford. It was a big reason

why initial plans to interview a wide variety of prospects were scrapped.” Id.

137 See Singelais, supra note 136. Fassel spent two seasons with the Giants, the

first as quarterbacks coach and the second as the offensive coordinator. See id.

38 See id.

Reeves’ (Former Giants head coach Dan Reeves) relationship with Brown was

strained, but Fassel said he thinks very highly of his 26-year-old quarterback. “Dave

has struggled the last few years,” Fassel said Wednesday at Giants Stadium. “Dave

needs to get into a situation where he’s sure of himself, where he’s got confidence in

himself, he’s got confidence in who’s calling the plays, confidence in a lot of things. I

think Dave Brown is an excellent quarterback who’s going to be a lot better than he

is. Dave Brown is a guy I like. He’s intelligent and he’s competitive. And it’s my job

to bring it out of him.”

Id.

139 See Fallstrom, supra note 112.

140 See Cantu, supra note 113.

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applicants' rejection.141 The perspective plaintiffs would likely have a

powerful response to the NFL's reasoning.

1. The NFL Does Exert Some Responsibility Over The Hiring

Process

One responsive argument the plaintiffs could make is the NFL does

take some responsibility for the hiring process. First, in 1997, when

the Commissioner met with the committee of African-American

assistants about the failure to have any African-Americans hired in the

eleven open head coaches positions, he assured the participants that it

was his job to make sure a diverse pool of applicants were considered

for positions and that the hiring process is fair.142   Tagliabue also

assured the assistants the issue would be revisited, most likely through

League committees.' 43

The League can also influence where and when a coach will be

hired. Two prime examples can be found with Minnesota Vikings

Head Coach Dennis Green and Offensive Coordinator Brian Billick.

Both men were courted by other teams and rules established by the

NFL prohibited either man from leaving, with the Commissioner

finally ruling on Mr. Billick's status.144

14. See McDonnell Douglas, 411 U.S. at 802.

142 See supra note 130.

143 See id.

144 See Don Banks, Raiders Eyeing Green, but .., STAR TRIBUNE (Minneapolis,

MN), Jan. 8, 1998, at 1C. An official with the Oakland Raiders, under direction from

the team's owner Al Davis, called Roger Headrick, President of the Minnesota

Vikings. The Oakland official inquired as to whether Mr. Green was under contract

and also whether the team planned on firing Mr. Green. The Oakland official was

told that Mr. Green was under contract. Had the Raiders hired Mr. Green just as a

head coach and not with any additional duties, NFL regulations state that the

Minnesota Vikings would have to be paid some form of compensation. See id.

See also Don Banks, Billick, League Officials To Discuss Situation; Tuesday meeting

scheduled with Commissioner's attorneys, STAR TRIBUNE (Minneapolis, MN), Jan.

26, 1998, at 8C. Billick resigned as the Offensive Coordinator of the Minnesota

Vikings with one year left on his contract to pursue a similar job with the Dallas

Cowboys. Roger Headrick, President of the Minnesota Vikings, refused to accept the

resignation of Mr. Billick and referred the matter to the league. The Commissioner

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Further, three years ago, Bill Walsh, the former head coach of the

San Francisco 49ers was asked by the League to put together a

program to find ways of getting more African-Americans into NFL

head-coaching positions, because of his long commitment to helping

African-American coaches.'45 Obviously, based on the actions of the

league and the words of the Commissioner, the NFL takes some

responsibility for the hiring process of coaches within the NFL.

2. The Candidates Were as Qualified as the Coaches Who Were

Hired

A second argument the perspective plaintiffs could make is the

candidates were as experienced as those individuals who were hired.

Starting with the coaches who were hired in the stead of Emmitt

Thomas, Bobby Ross is arguably the most qualified. He won a

national championship as a college coach, never had a losing season as

the coach of the San Diego Chargers and took the Chargers to their

first Super Bowl in 1995.146 Jim Fassel was a college head coach, but

was not successful.147 Further, Fassel has only been coaching in the

NFL since 1991, when he was first a quarterback coach with the New

York Giants, and had failed to serve as coordinator for any team

successful in winning a playoff game.148 As for Dick Vermeil, he had

not coached football in any form or fashion since 1982.149 Vermeil had

spent the last 15 years as a college football analyst for CBS and then

ABC.'50 The game of football that he left 15 years ago is drastically

different than what it is today.'51 Emmitt Thomas was arguably more

felt Mr. Billick's situation was "clear cut" and that he could not accept another job in

1998. See id.

145 See Glenn Dickey, NFL Confronts Coaching Color Barrier, S.F. CHRON.,

Mar. 24, 1997, at B3.

146 See Associated Press, supra note 110.

147 See Singelais, supra note 134. Fassel was the head coach at the University of

Utah from 1985 until 1989, when he was fired. While there, he compiled a record of

25-33. See id.

148 See id.

149 See Fallstrom, supra note 112.

150 See id.

"' See Bill Lyon, The Hold is Forever, Vermeil Couldn't Shake It, ST. Louis

POST-DISPATCH, Jan. 22, 1997, at 06B. The emergence of free agency, as well as the

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HIRING PRACTICES FOR NFL COACHES

qualified than Jim Fassel because he has more experience in the league

as an assistant, and has served as the coordinator on a team that has

won a playoff game. Thomas was a much better fit for the St. Louis

job than Dick Vermeil because over the 15 years that Vermeil was

retired from football, Thomas was gaining more and more experience

in the League. Someone who has not been a part of the game is

unlikely to be more qualified than a coach who has been actively

involved in the game and developing his skills as the game has

evolved. Therefore, Thomas is arguably more qualified than two of the

three candidates who were ultimately hired.

Chan Gailey is also an interesting case study when his

qualifications are stacked against those of Sherman Lewis. Gailey has

five years of head coaching experience, but not in the NFL.'52 Gailey

also has been an assistant on teams that have made it to four Super

Bowls and has ten years of experience as an assistant in the NFL.153

Lewis spent fourteen years as an assistant with Michigan State.154

Lewis has been an assistant on three Super Bowl winning teams and

was the offensive coordinator for the Green Bay Packers back-to-back

Super Bowl teams.155 Finally, Lewis has never coached on a losing

team,156 and he has fourteen years coaching experience in the NFL.157

Accordingly, Lewis is arguably more qualified than Gailey to be a head

coach in the NFL.

The facts indicate that the coaches have strong responses to all of

the NFL's possible arguments. With such strong responses, it is safe to

salary cap, have changed the structure of the game. Winning seasons by the

expansion Carolina Panthers and Jacksonville Jaguars now place franchises in quick,

must-win situations. Therefore, a coach does not have five years to make an

organization a winner. See id.

"52 See Denne H. Freeman, Cowboys Select Steelers' Assistant, THE COMMERCIAL

APPEAL (Memphis, TN), Feb. 13, 1998, at D1.

..3 See id.

154 See Kirk Bohls, NFL Owners, or Longhorns, Should Knock on Lewis' Door,

AUSTIN AMERICAN-STATESMAN, Nov. 21, 1997, at C1.

155 See id.

156 See id.

117 See Jean-Jacques Taylor, NFL, Tagliabue Have Opportunity To Avoid Replay,

DALLAS MORNING NEWS, Mar. 14, 1998, at 2B.

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UCLA ENTERTAINMENT LAW REVIEW

assume that other factors are at play in the League’s failure to hire

African-Americans as head coaches. The arguments made by the NFL

can be viewed as a pretext for the discriminatory treatment of African-

American assistant coaches. Accordingly, the perspective plaintiffs

could make a showing of disparate treatment by the NFL.

IV. APPLYING THE DISPARATE IMPACT FRAMEWORK TO THE NFL’s

HIRING PRACTICES

To make a claim of disparate impact, an employee must show that

a  facially  neutral employment practice     has   had  a   significant

discriminatory impact. If such a showing is made, the employer must

demonstrate why the employment practice has a manifest relationship

to the employment in      question.   If the employer satisfies the

requirement, the employee must establish the employer was using the

practice as mere pretext for discrimination, or that another practice

would serve the employer’s legitimate interests without yielding other

undesirable effects.158

A. Is There A Prima Facie Case?

First, the perspective plaintiffs must establish a prima facie case of

disparate impact.’59 In order to establish a prima face case, a plaintiff

must prove “a respondent uses a particular employment practice that

causes a disparate impact on the basis of race, color, religion, sex, or

national origin.’,’60

In the instant matter, the NFL clearly does not have a facially

biased hiring policy. The hiring process usually161 consists of the

158 See supra text accompanying notes 26-28.

`59 See 42 U.S.C. � 2000(e)(2)(k) (Supp. V 1993).

160 See id.

In order to make this showing, the plaintiff must prove that (1) a discrete employer

selection practice (or if no discrete practice is severable from the selection process,

the process itself) (2) disproportionately excludes people of the plaintiffs class.

Whether the degree of disproportion is adequate to constitute “impact” is determined

on a case-by-case basis.

Susan  S. Grover, The Business Necessity Defense In Disparate Impact

Discrimination Cases, 30 GA. L. REV. 387, 394 n.31 (1996).

61 See supra part III.A.

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HIRING PRACTICES FOR NFL COACHES

management creating a "short list" of candidates to fill the coaching

vacancy.62 Many times, the short list has the candidates ranked.163

Candidates are then brought in for interviews if they are interested in

the position.164 After interviews, one of the candidates is chosen and

offered the job.

The creation of a short list inadvertently leaves African-American

assistants behind and is the most problematic aspect of the typical

hiring process. The initial stage of the process is key because qualified

individuals are at least given an opportunity to plead the case for their

credentials and abilities. African-Americans are excluded in two

different ways in the initial stage of the process.

First, these short lists are not inclusive of all the individuals who

are qualified for head coaching positions. Professional head coaches

are usually hired after serving as a head coach in college or a

coordinator in the pros.'65  Of the fifteen coaching vacancies that

opened over the past two years, only Emmitt Thomas and Sherman

Lewis were even offered interviews.166 Art Shell, the first African-

American head coach in the modem         NFL,167 Jimmy Raye, the

offensive coordinator of the Kansas City Chiefs,168 and Ray Sherman,

the new offensive coordinator of the Pittsburgh Steelers,169 are all

notables who were not included in any discussions for head coaching

positions. Even though qualified based on the criteria set forward by

most owners and general managers, they were nonetheless left out in

the cold when it came time for the fourteen teams looking for head

coaches to start the interview process.

162 See Pate, supra note 104.

163 See Fallstrom, supra note 112; see also Fassel First Up In Giants' Coach

Search, supra note 111.

164 See DiTrani, supra note 105.

165 See Black Assistants Mull Lawsuit; NFL Hiring Practices, Snub of Packers'

Lewis Fuel Controversy, HOUSTON CHRONICLE, Jan. 21, 1998, at 3.

66 See supra text accompanying notes 106-109.

267 See Jarrett Bell, Equal Opportunity: Black Coaches Seek Chances To Head

NFL Teams, USA TODAY, Mar. 20, 1997, at 03C.

168 See id.

169 See id.

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Second, the short list candidates usually are acknowledged because

of connections the perspective employer has with others throughout the

sports world. A three-month study conducted by Newsday concluded

that for many perspective hires, one of the main factors in the hiring

decisions was that the successful candidates had developed connections

with the decision-makers.170  The study also found these decision-

makers have been slow to reach a level of comfort in hiring minority

coaches.171 Bill Kuharich, General Manager of the New Orleans Saints

and one of the pivotal individuals in hiring Mike Ditka as the head

coach of the Saints, stated,

[t]he way people get jobs is probably determined more by who you know

than by talent and ability. You can slant statistics to meet your

objective. But you’ve got to go back to the individual and trace the

connection – who influenced the decision – and you can target why a guy

got a job.172

This problem has manifested itself in such a way now that qualified

candidates are excluded because of the strong reliance on social

connections by owners and general managers.173 Whether those social

connections are influenced by race, the result is that disproportionately,

African-Americans are not even given the opportunity to be considered

for head coaching positions.

B. The NFL’s Rebuttal

The NFL could argue that the management structure of each team

has to work so closely with the head coach, it is imperative that

whoever is hired as the head coach is able to communicate and work

effectively with the authority structure. Two prime examples of this

170 See Greg Logan, Race In Sports, NFL Coaches, Just Out Of Reach, Black

Coaches, Shut Out Of 11 Head-Coaching Spots, Ask ‘Why?’, NEWSDAY, Jun. 1, 1997,

at B04.

171 See id.

172 Id.

171 See Dickey, supra note 146. “A league-wide meeting of NFL coaches and

executives that would be primarily social, with dinners and other social gatherings.

One of the primary problems for black coaches is that they are not well-known

among white general managers, who tend to make their coaching choices from the

men they know.” Id.

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HIRING PRACTICES FOR NFL COACHES

can be seen with the Dallas Cowboys and the San Diego Chargers.

Jerry Jones, owner of the Cowboys, hired Jimmy Johnson because they

were college football teammates and friends.174   After winning two

Super Bowls, however, Johnson resigned his position as coach with the

Cowboys because he and Jones could no longer continue to work

together.175 A second example is Bobby Ross, and his first stint in the

NFL as a head coach. He, along with General Manager Bobby

Beathard, effectively controlled the San Diego Chargers.176 The two

put together a team that went to the Super Bowl in 1995. Yet, Ross

eventually quit because of Beathard's insistence on firing members of

the coaching staff.177

These two situations exemplify how tense head coach-management

relations can be. They prove that there is a need for harmony to exist

within the authority structure of the team. Therefore, general managers

and owners have to be able to hire individuals with whom they feel

most comfortable. Hence, there is a job-related reason for using social

connections to create a short list of candidates for head coaching

vacancies.

C. There Are Other Practices That Would Serve The Employer's

Legitimate Interests Without Undesirable Effects

The perspective plaintiffs would next have to establish that the

employer is using the practice as mere pretext for discrimination, or

174 See Jonathan Rand, Two Egos Too Many for Dallas, KAN. CITY STAR, Mar.

30, 1994, at D1.

175 See id. Jones allegedly made remarks about firing Johnson while in a bar.

Jones also allegedly remarked that the team was successful because of him, not

Johnson, and that any one of "300 coaches" could have lead the team to two Super

Bowl victories. See id.

176 See Bernie Wilson, Beathard Beats Ross In Chargers Turf War, FRESNO BEE,

Jan. 4, 1997, at D6.

177 See id. Beathard was displeased with the offensive coordinator, Ralph

Friedgen and defensive coordinator Dave Adolph. Beathard was also upset at the

way young players were being used by the staff. Ross is very loyal to his assistants

and had fired only one in 20 years of coaching. See id.

1998]

UCLA ENTERTAINMENT LAW REVIEW

that another practice would serve the employer’s legitimate interests

without undesirable effects.178

There are other practices that would serve the NFL’s legitimate

interests without undesirable effects. One is to create a standardized

list of criteria for those who are interested in applying for head

coaching positions. The list could include the experience the employer

is looking for and give a background description of the organization,

information about members of the management structure and

information  about the players and     draft prospects.    Once a

comprehensive list is established, the League’s owners could approve

the document and make it available to all interested applicants. In the

past, African-American assistants have complained they did not know

what criteria were used to assess head-coach candidates.179 This would

directly address that concern. This way, applicants would have an idea

of what the decision-makers are looking for in a coach, be given a

chance to match their qualifications against the desired criteria and not

feel slighted if they are not given the opportunity to interview. If it is

not possible for the league to come to a consensus on such a document,

each team, as it looks for a new coach, could publish such a list.

A   second  alternative is  eliminating  recruiting restrictions.

Currently, another team cannot legally contact an assistant coach on a

team in the playoffs or Super Bowl until the candidate’s team is

eliminated or the Super Bowl is concluded.180 Successful coordinators

such as Raye, Sherman and Lewis were all on successful teams that

made it at least into the second round of the playoffs. These men were

essentially eliminated from consideration for some head coaching jobs

because owners and general managers wanted to make a decision on

coaches before the Super Bowl.181     This would allow    successful

coordinators to be included on the short lists for these coaching

positions in which they are qualified and thereby increase their

possibility of being hired.

178 See supra text accompanying notes 26-28.

179 See Tom Silverstein, Looking For A Chance: Failure of Pack’s Lewis To

Consideration Get For Head Coach Job Angers Black Coaches In The NFL, ROCKY

MOUNTAIN NEWS, Apr. 6, 1997, at 16C.

o See Logan, supra note 171.

8 See id.

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HIRING PRACTICES FOR NFL COACHES

A third new practice that could be instituted that would serve the

interests of the owners and general managers, yet give deserving

African-American assistant coaches a shot at head coaching jobs is the

creation of a seniority or merit system for assistant coaches. The

owners and general mangers would then, voluntarily, start with the

assistants at the top of the list when they formulate their short list for

head coaches. This type of system rewards those assistants who have

stayed in the league for many years and haven't been given their

opportunity at the collegiate or pro level to be head coaches or even

coordinators.

If the three options presented to the NFL on changing their hiring

practices were accepted, African-Americans would have improved

chances of success in attaining head coaching positions.

V. CONCLUSION

When disparate treatment and impact tests are applied to the hiring

practices of the National Football League, it is apparent that African-

American head-coach candidates would likely have a successful Title

VII claim against the NFL. The disparate treatment test is satisfied

because the perspective plaintiffs would be able to establish a prima

facie case and show that the excuses given for not hiring African-

American assistants for head coaching jobs are invalid. The disparate

impact test would succeed because, although the hiring practices of the

NFL are facially neutral, the practices disproportionately eliminate

African-American assistant coaches from consideration. There are

clearly other ways in which owners and general managers can hire

quality candidates without excluding talented African-American

assistants from consideration. Even if in the next round of head coach

hirings, an African-American such as Emmitt Thomas or Sherman

Lewis is hired as a head coach, it does not bring the issue to a

conclusion. Qualified African-Americans need to be given as many

opportunities to serve as head coaches as their white colleagues.

African-Americans are important to the NFL's culture and tradition and

should have an opportunity to not only run or catch a football, but also

to make coaching and management decisions. It's fourth down and

long and the league could choose to punt by ignoring the lack of

1998]

136        UCLA ENTERTAINMENT LAW REVIEW             [Vol 6:1

minority head-coaches or go for a touchdown by seriously addressing

its discriminatory hiring practices.

Volume 06, Issue 1, pp73-104, Kroeger

Applicability of the Digital Performance

Right in Sound Recordings Act of 1995

Derek M. Kroeger*

I . INTRODUCTION

In today’s interactive global market, digital transmissions of songs

are implicating complicated copyright issues in a variety of situations.

A subscription service sends out a constant stream of music by way of

a genre specific channel, which is added to a subscriber’s cable service.

A movie producer sees the potential for market crossover by including

a song clip on a movie’s promotional Web site, which can be

downloaded by the Web site’s visitors. A record company desiring to

distribute a band’s cover version of another band’s song may be

interested in selling or making this single available for downloading

over the Internet. Prior to late 1995, it would have been unclear

exactly how or if current laws applied to these situations. Now,

however, each of these scenarios is addressed by the Digital

Performance Right in Sound Recordings Act of 1995 (“DPRSRA,” or

“the Act”).

Congress, by passing the DPRSRA, added a limited right of public

performance to the list of exclusive rights enjoyed by sound recording

Chief Articles Editor, UCLA ENTERTAINMENT LAW REVIEW, 1998-99. J.D.

candidate, UCLA School of Law, 1999; B.A., University of San Diego, 1996. I

would like to thank Professors Mark F. Grady, John S. Wiley and Lon Sobel for

encouraging and developing my interest in intellectual property issues. I would also

like to send a special thanks to my family for their support.

UCLA ENTERTAINMENT LAW REVIEW

copyright owners, and added to the situations where a compulsory

license may be obtained. What Congress created is a forward-looking

piece of legislation, tailored to fit a very narrow goal. Although it is

certainly of limited application today, future implications for emerging

technology are significant.

This Comment is a positive examination of the real world

implications of the DPRSRA.       Part I describes what led to the

DPRSRA’s enactment. Part II explains new rights and regulations

added by the Act. Part III gives examples of the Act’s application,

using current digital transmission stories taken from the news. This

section offers a blueprint to facilitate answering the question, “What do

I need to do” as asked by a client who is thinking about becoming

involved in the business of transmitting music digitally. Part IV

analyzes several emerging technology issues in-depth, to show how the

Act is being used currently and how it will be used in the future. This

Comment concludes that while the scope of the Act is indeed limited,

its implications are beginning to be seen even today, and will become

much more significant in the future.’

II. BACKGROUND OF THE DPRSRA

A.    The State of Copyright Law Leading up to the Act

Although Congress has been empowered to protect authors’ rights

from  the beginning,2 sound recordings were not granted federal

copyright protection until the Copyright Act was amended in 197 .L

When this occurred, the exclusive right of performance was

intentionally not included as a right to be enjoyed by sound recording

It is important to note that this Comment analyzes only new rights created by

the DPRSRA. Anyone seriously thinking about transmitting sound recordings

digitally also needs to be aware of significant pre-DPRSRA rights, including motion

picture licenses, music video licenses, and underlying musical works licenses. See

generally AL KOHN & BOB KOHN, ON MUSIC LICENSING (2d ed. Supp. 1998) and

MELVILLE B. NIMMER, NIMMER ON COPYRIGHT (1996).

2 Congress has the power “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.” U.S. CONST. art. I, � 8.

See H.R. REP. No. 104-274, at 11(1995).

[Vol 6:1

DIGITAL PERFORMANCE RIGHTS

copyright owners.4 The lack of a performance right for sound

recordings became the subject of much controversy.5          While the

enactment of the Digital Performance Right in Sound Recordings Act

seemingly would assuage the controversy by granting sound recording

copyright holders a performance right for the first time, many feel that

the Act does not go far enough.6

B.     What Motivated the Creation of the Act?

Although a long-standing plea for the creation of a public

performance right in sound recordings existed, it was not until 1995

that Congress created      such  a  right.    In  so  doing, Congress

acknowledged that new digital technologies create both advantages and

problems that were not previously        contemplated.7     As several

commentators have noted, "digital technology allows an individual to

transform the detailed information and expression contained within any

work, whether visual or musical, into a sequence of bits (binary values

of either 0 or 1) which can be stored as data in a computer."'8 Almost

' See id at 11 n.2 (stating that the Act in 1971 specified that the "exclusive rights

of the owner of copyright in sound recordings are limited to the rights specified by

clauses (1), (2), and (3) of section 106, and do not include any right of performance

under Sec. 106(4)").

5 See id at 10; see also Lionel S. Sobel, A New Music Law for the Age of Digital

Technology, 17 ENT. LAW REP. 3, 3-4 (1995).

6 See Sobel, supra note 5, at 3-4; Les Watkins, The Digital Performance Right in

Sound Recordings Act of 1995: Delicate Negotiations, Inadequate Protection, 20

COLUM.-VLA J.L.& ARTs 323 (1996). While this Comment recognizes that the

controversy exists, it will not be explored in great depth herein. This Comment

instead analyzes the DPRSRA from a positive rather than normative perspective to

explore how this complicated piece of legislation will be applied in real world

settings.

7 See, e.g., Andrew Hartman, Don't Worry, Be Happy! Music Performance and

Distribution on the Internet is Protected after the Digital Performance Right in

Sound Recordings Act of 1995, 7 DEPAUL-LCA J. ART & ENT. L. 37, 54 (1996)

("The Copyright Act has always lagged behind technology and copying trends since

its enactment in 1909.").

8 Heather D. Rafter & William S. Coats, From Sampling of Artistic Works to

Music Distribution on the Internet: The Effect of New Digital Technology on

Copyright Law, 471 PRACTICING LAW INST. 137, 139 (1997); see also Hartman,

1998]

UCLA ENTERTAINMENT LAW REVIEW

every work of copyright ownership can be encoded into these bits to be

transmitted or flawlessly reproduced with relative ease.9 Because of

such things as the superior sound quality of digital recordings, the

appearance of interactive services that allow a member of the public to

receive a digital transmission of a particular recording, and the possible

emergence of a system to provide for the electronic distribution of

phonorecords, Congress decided it was time to act.10 After all, “[t]he

relevant technologies will continue to advance.”"  With access to the

Internet becoming more and more widespread, the ease with which

someone could transmit information quickly and to a large audience

(and thus have a significant effect on the market) is also becoming

greater. 12

As is often the case, the new rights owe their creation to advances

in technology.13   This new digital technology, improved in both its

quality and its ability to transmit information to an increasingly greater

percentage of the population, meant that something had to be done.

Congress realized that without copyright protection in the digital

environment, the incentive for artists to create new sound recordings

could be diminished, which would “ultimately [deny] the public some

supra note 7, at 46; see also Megan M. Wallace, The Development and Impact of the

Digital Performance Right in Sound Recordings Act of 1995, 14 COOLEY L. REV. 97,

104-06 (1997) (describing some differences between analog and digital forms).

9 See Hartman, supra note 7, at 39-40.

See generally H.R. REP. No. 104-274, at 12-13 (1995).

Id. at 13.

12 See also Rafter & Coats, supra note 8, at 140 (“On the Internet, everything is

digitized.”); Brian A. Carlson, Balancing the Digital Scales of Copyright Law, 50

SMU L. REv. 825, 843 (1997) (“In effect, the Internet completes the digital

revolution by allowing the average individual to digitally transmit and receive works

with anyone or everyone connected to the network.”); Jube Shiver, Jr., The New

Mark@place, L.A. TIMES, Sept. 14, 1997, at Dl (“With a new generation of

improved software for navigating the World Wide Web, potential buyers can now

surf vendor sites and see descriptions and color pictures – even hear the sounds – of

products offered.”).

“3 See S. Rep. No. 104-128, at 11 (1995) (“[D]igital technology gave new life to

the performance right initiative.”); see also Carlson, supra note 12 at 834 (noting that

historically, Congressional action has been necessary to amend the Copyright Act

because of the important role new technology played in the domestic and

international economy).

[Vol 6:1

DIGITAL PERFORMANCE RIGHTS

of   the  potential   benefits  of   the   new   digital  transmission

technologies."'14  "Trends within the music industry.. .suggest that

digital transmission of sound recordings is likely to become a very

important outlet for the performance of recorded music in the near

future."15 Recognizing that copyright law at the time was "inadequate"

to address the issues being raised by new digital technologies,

Congress sought to create a "carefully crafted and narrow performance

right, applicable only to certain digital transmissions of sound

recordings.'"16   Congress recognized     the  importance   of having

protection in place before the technology to duplicate and distribute

digitally becomes too readily available to the public.17 In so doing,

Congress attempted to amend the Copyright Act in a way that would be

helpful today, but that would also create a system broad enough to deal

with future digital technologies. 18

III. UNSCRAMBLING THE DPRSRA - WHAT THE ACT SAYS

President Bill Clinton signed the DPRSRA into law on November

1, 1995. As the title of the legislation indicates, the DPRSRA creates a

new exclusive right to be enjoyed by copyright owners.19 However, it

has been suggested that the title of the Act is "something of a

misnomer."20    The DPRSRA       actually  makes two    separate and

14 H.R. REP. No. 104-274, at 13 (1995); see also Rebecca F. Martin, The Digital

Performance Right in Sound Recordings Act of 1995: Can It Protect US. Sound

Recording Copyright Owners in a Global Market?, 14 CARDOzO ARTS & ENT. L.J.

733, 742 (1996) ("The new phase of digital technology.., seriously threatens the

incentive to create sound recordings by displacing the traditional market for 'hard'

copies sold in record stores.").

'1 H.R. REP. No. 104-274, at 12.

16 Id. See also id. at 14 (explaining that copyright owners of sound recordings

should enjoy protection with respect to interactive performances and some

subscription performances, but not free over-the-air broadcast services).

17 See Martin, supra note 14, at 743.

8 See Hartman, supra note 7, at 40 (stating that this Act was "crafted broadly

enough to encompass interactive networks like the Internet ....

'9 See 17 U.S.C. � 106(6) (1994 & Supp. 1995).

20 Sobel, supra note 5, at 3 (suggesting that the new law should have been called

the "Musical Digital Transmission Act of 1995," because it deals with much more

than simply sound recording performances).

1998]

UCLA ENTERTAINMENT LAW REVIEW

important changes in the way copyright law handles emerging digital

technologies. First, the DPRSRA creates an exclusive right, “in the

case of sound recordings, to perform the copyrighted work publicly by

means of a digital audio transmission.’”21 As shall be explored shortly,

in the same breath that gives it life, significant limitations and

exclusions immediately restrict this performance right for sound

recordings. Second, the DPRSRA amends another section of the

Copyright Act by stating that “[a] compulsory license.., includes the

right … to distribute or authorize the distribution of a phonorecord of

a nondramatic musical work by means of a digital transmission …. ,,22

These changes to the Copyright Act shall be explored separately.

A.    The Digital Performance Right

1.    Grant of the exclusive right

Most copyright owners have enjoyed the exclusive right to perform

their copyrighted works publicly since at least 1909.23 However, until

1995, while the Copyright Act granted this right to the owners of the

copyrights to musical compositions, it specifically denied this

exclusive right to the owners of the copyrights to sound recordings.24

21 17 U.S.C. � 106(6).

22 Id. � 115(c)(3)(A).

23 See NIMMER, supra note 1, at � 8.14[A] n.21; see also 17 U.S.C. � 106(4)

(stating that the copyright owner has the exclusive rights “in the case of literary,

musical, dramatic, and choreographic works, pantomimes, and motion pictures and

other audiovisual works, to perform the copyrighted work publicly”).

24 See, e.g., Joshua D. Levine, Dancing to a New Tune, a Digital One: The Digital

Performance Right in Sound Recordings Act of 1995, 20 SETON HALL LEGIS. J. 624,

627 (1996). A sound recording is one of two entities into which a song is split. The

sound recording is the actual final product, namely what is heard on a tape or

compact disc. The other entity that makes up a song is a musical composition. The

musical composition is most commonly thought of as the notes and the lyrics, and is

usually represented as the sheet music of a song. Bruce Springsteen wrote and

recorded “The Ghost of Tom Joad” in 1995. Rage Against the Machine recorded a

“1cover version” of this song in 1997. When you play Rage Against the Machine’s

recording “The Ghost of Tom Joad” on a compact disc using your stereo system at

home, you are performing the song, both the sound recording by Rage Against the

[Vol 6:1

DIGITAL PERFORMANCE RIGHTS

The DPRSRA covers new ground in that it grants to the copyright

owner the exclusive right "in the case of sound recordings, to perform

the copyrighted work publicly by means of a digital audio

transmission.'"25  The right to receive compensation when sound

recordings are performed publicly is a significant addition to the rights

enjoyed by copyright owners. The significance of this amendment to

the Copyright Act is lessened, however, by the precise language

employed in crafting the grant,26 and by subsequent portions of the

DPRSRA itself. Although the DPRSRA is directed at digital audio

transmissions, certain digital audio transmissions are exempted from

the new right, and thus not subject to the licensing framework at all.

Other digital audio transmissions, subscription transmissions, are

subject to the licensing framework, but are entitled to statutory

licenses. A third category of digital audio transmissions, interactive

transmissions, is subject to a voluntary licensing system. These three

categories of transmissions, as well as the licensing and royalty system

in general, will now be explained.

2.    Certain transmissions are exempt

Even though a sound recording is performed publicly by means of

a digital audio transmission, it might be completely exempted from the

new   right.27 "Nonsubscription transmissions" are one category of

transmissions that are exempt from      the new   right.28  These are

transmissions such    as television, and    more   importantly, radio

broadcasts for which      there  is no   charge   (no  subscription).29

Machine, and the underlying musical composition written by Bruce Springsteen. Cf

KOHN & KOHN, supra note 1, at 1173.

25 17 U.S.C. � 106(6).

26 As an example, a public performance right is granted to owners of the

copyrights of "sound recordings" that are performed publicly by means of a "digital

audio transmission." Both of these terms, by their definitions, specifically exclude

audiovisual works from being swept into their meanings. It seems clear that works

categorized as "audiovisual works" were not intended to fall within the scope of the

new exclusive right. See id �� 101, 114.

27 See id. � 114(d)(1).

28 Id � l 14(d)(1)(A)(i).

29 See S. REP. NO. 104-128, at 18(1995).

1998]

UCLA ENTERTAINMENT LAW REVIEW

Retransmissions of these nonsubscription transmissions30 are also

exempt, provided certain criteria are satisfied.31 This exemption holds

true even if the retransmission of the radio broadcast is itself a

subscription retransmission under the Act.32 A transmission within a

business establishment is granted an exemption, as long as the

transmission is confined to the establishment’s premises or the

immediately surrounding vicinity.33 Thus, a store, office or restaurant

turning on a radio for its customers and employees to hear will be

exempt, even if the transmission is digital.34 A transmission to a

business establishment for use in the ordinary course of its business is

exempt as long as it is not retransmitted outside the establishment’s

premises, and does not exceed the sound recording performance

complement.35

3.    Certain transmissions qualify for statutory licensing

A subscription transmission is one that is controlled and sent to a

limited number of recipients, who have paid to receive the

transmission.36   “A   typical transmission that would qualify     as a

‘subscription transmission’. . . is a cable system’s transmission of a

digital audio service, which is available only to the paying customers

of the cable system.”37     While subscription transmissions are not

exempted from the new right, they might qualify for a statutory license

if they are of the following nature.38

30 See 17 U.S.C. � 1 14(d)(1)(B).

31 See id. � 114(d)(1)(B)(i) – (iv) (including among the criteria that these

broadcast transmission must not be willfully or repeatedly retransmitted more than a

radius of 150 miles from the site of the broadcast).

32 See S. REP. No. 104-128, at 19.

13 See 17 U.S.C. � 114(d)(1)(C)(ii).

14 See KOHN & KOHN, supra note 1, at 203.

“s See 17 U.S.C. � 1 14(d)(1)(C)(iv). See also S. REP. No. 104-128, at 23.

36 See 17 U.S.C. � 1140)(8) (“A ‘subscription’ transmission is a transmission that

is controlled and limited to particular recipients, and for which consideration is

required to be paid or otherwise given by or on behalf of the recipient to receive the

transmission or a package of transmissions including the transmission.”).

3′ H.R. REP. No. 104-274, at27 (1995).

3″ See Marie D’Amico, Turning Trademarks Topsy-Turvy on the Net, DIGITAL

MEDIA, Nov. 29, 1996, at 4 available in 1996 WL 9070806 (“The significance of

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DIGITAL PERFORMANCE RIGHTS

First, the transmission cannot be part of an interactive service.39

For instance, the aforementioned cable system's digital audio service

must not allow recipients to receive a particular sound recording on

request, if the service is to qualify for a statutory license.     This

provision is in place because interactive services are seen as a greater

threat to traditional music sales than services that essentially act as

traditional radio stations, but transmit over digital cable wires.

Second, the transmission must not exceed the sound recording

performance complement.40 This newly created term is defined as the

transmission during any three hour period of no more than: three

different selections from any one phonorecord, assuming no more than

two such selections are transmitted consecutively; or four different

selections by the same featured artist; or four different selections from

any compilation, assuming no more than three such selections are

transmitted consecutively.    This restriction is designed to prevent

traditional record sales from being replaced by digital transmission,

since entire album sides are prevented from being played by this

performance complement. 41

Third, the transmitting entity cannot publish a schedule in advance

or announce the titles of the specific sound recordings it will be

transmitting.42

Fourth, the    transmitting  entity  may   not automatically    and

intentionally cause the device receiving the transmission to switch

from one channel to another.43 This limitation is in place so a service

statutory licensing for transmissions which faithfully follow the five criteria cannot

be overstated; it means the record companies cannot say 'no' to their requests for

rights to play recorded performances.").

3 See 17 U.S.C. � 1 14(d)(2)(A).

4 See id. � I 14(d)(2)(B).

41 See Julie A. Garcia, An Analysis of the Digital Performance Right in Sound

Recordings Act of 1995, J. of PROPRIETARY RIGHTS, February 1996, at 14 (pointing

out that this restriction is designed to prevent traditional record sales from being

replaced by digital transmissions, since entire album sides are prevented from being

played by this performance complement).

42 See 17 U.S.C. � 1 14(d)(2)(C).

41 See id. � 114(d)(2)(D).

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UCLA ENTERTAINMENT LAW REVIEW

will not intentionally try to evade the sound recording performance

complement by switching a subscriber's receiver channels.4

Finally, if the transmitted sound recording is accompanied by

information encoded within it that identifies the title, the artist, or other

information, this information must be transmitted along with the sound

recording.45

If a subscription transmission satisfies these criteria, it will qualify

for a statutory license, and will not be required to go through voluntary

licensing negotiations with the copyright owner.

4.    Remaining transmissions are subject to voluntary licensing

Subscription transmissions that do not meet the criteria set forth in

section 114(d)(2) of the Copyright Act, as well as "interactive

services',46 now require voluntary licenses. Of all the new     forms of

digital transmission services, the ones most likely to have a significant

negative impact on traditional record sales are interactive services.47

Subscribers to interactive services theoretically can hear any sound

recording they choose whenever they like, and it is thus believed they

will be less likely to make trips to purchase records at traditional

stores. To prevent this negative impact on traditional record sales,

copyright owners need to be able to control the distribution of their

works. Congress felt that "in order to provide a comparable ability to

control distribution of their works, copyright owners of sound

recordings must have the right to negotiate the terms of licenses

granted to interactive services."'48    To   encourage the sharing     of

44 See S. REP. No. 104-128, at 25 (1995).

41 See 17 U.S.C. � 114(d)(2)(E).

46

An "interactive service" is one that enables a member of the public to receive, on

request, a transmission of a particular sound recording chosen by or on behalf of the

recipient. The ability of individuals to request that particular sound recordings be

performed for reception by the public at large does not make a service interactive. If

an entity offers both interactive and non-interactive services (either concurrently or

at different times), the non-interactive component shall not be treated as part of an

interactive service.

Id. � 1140)(4).

47 See S. REP. No. 104-128, at 16.

48 Id. at 24.

[Vol 6:1

DIGITAL PERFORMANCE RIGHTS

nonexclusive licensing agreements, the Act imposes no limitations.49

Although sound recording copyright holders have the right to grant or

withhold voluntary licenses for subscription transmissions that do not

qualify for statutory licenses and for interactive transmissions, there are

still further limitations on their rights to grant exclusive licenses for

either of these types of transmissions. "Limits have been [placed] on

licenses granted to interactive services in response to concerns that

sound recording copyright owners might become ‘gatekeepers’ to the

performances of musical works.”50

First, the DPRSRA states that interactive services will not be

granted exclusive licenses for more than one year by licensors that own

more than one-thousand (1000) sound recording copyrights, or for

more than two years by licensors that own one-thousand (1000) or

fewer sound recording copyrights. However, this limitation does not

apply if the licensor grants licenses to five or more interactive

services,51 or if an exclusive license is granted “to perform publicly up

to 45 seconds of a sound recording and the sole purpose of the

performance is to promote the distribution or performance of that

sound recording.”52   Notwithstanding the grant of a license under

section 106(6) of the Copyright Act to publicly perform a sound

recording by means of a digital transmission, this sound recording may

not be performed publicly unless a license has also been obtained from

the music publisher for the public performance of the copyrighted

musical work that may be contained in the sound recording.53

Second, subscription transmissions that do not qualify for the

statutory license are also subject to a limitation. If the copyright owner

licenses the right to public performance of a sound recording to an

” See Garcia, supra note 41, at 15-16.

50 H.R. REP. No. 104-274, at 21 (1995) (emphasis added); see also supra note 24

(describing the difference between a sound recording and a musical work).

” In addition, it is required that each such license is for a minimum often percent

of the copyrighted sound recordings owned by the licensor, but in no event less than

fifty sound recordings. 17 U.S.C. � 1 14(d)(3)(B)(i).

52 Id. �144(d)(3)(B)(ii).

” See id. � 114(d)(3)(C). See, e.g., supra note 24.

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organization she has an interest in, 54 “the copyright owner must also

make the licensed sound recording available… ‘on no less favorable

terms and conditions to all bona fide entities that offer similar

services…. .”’55 This limitation does not apply if the copyright owner

licenses either an interactive service, or an entity to perform publicly

no more than forty-five (45) seconds of the sound recording for the

sole purpose of promoting the distribution or performance of that

sound recording.

5.    Licensing and fees

If a transmission qualifies for a statutory license, what will the

statutory license fee be? Effective June 1, 1998, the royalty fee for the

digital performance of sound recordings by nonexempt subscription

digital services is 6.5% of gross revenues resulting from subscribers

residing within the United States.56 This fee is a default position, as

voluntary agreements reached subsequent to June 1, 1998 will be given

effect.57

The DPRSRA also provides for the allocation of a percentage of

the statutory license fee received by the copyright owner to be

distributed to performers, not songwriters.58 Two and a half percent of

the statutory license fees must be deposited in an escrow account, to be

distributed to non-featured musicians who have performed on sound

recordings. Two and a half percent of the fees must be deposited in an

“  This entity is defined as an “affiliated entity.” See id. � 1140)(1) (“An

‘affiliated entity’ is an entity engaging in digital audio transmissions covered by

section 106(6), other than an interactive service, in which the licensor has any direct

or indirect partnership or any ownership interest amounting to 5 percent or more of

the outstanding voting or non-voting stock.”).

11 Id. � 1 14(h)(1). See also Sobel, supra note 5, at 7 (describing this limitation as

a “most favored nations clause”).

56 See Determination of Reasonable Rates and Terms for the Digital Performance

of Sound Recordings, 63 Fed. Reg. 25, 394 (1998) (to be codified at 37 C.F.R. pt.

260).

17 See 17 U.S.C. � 114(0(3).

” See id. � I 14(g)(2). Songwriters are treated by copyright law as if they and the

performers of the song are two different people, even though they may in actuality be

one and the same. Songwriters are compensated under the musical composition

payment structure, not the sound recording structure.

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escrow account, to be distributed to non-featured vocalists who have

performed on sound recordings. Forty-five percent of the fees shall be

allocated, "on a per sound recording basis," to the featured recording

artists on each sound recording.59 The remaining half of the statutory

license fees that are received by sound recording copyright owners

(record companies) may be retained.6�

In contrast with fees brought in by a subscription transmission that

received a statutory license, fees brought in by a voluntary license to a

copyright owner are not subject to reduction by any set percentage.

Instead, "a featured recording artist who performs on a sound recording

that has been [voluntarily licensed] … [is] entitled to receive payments

from the copyright owner of the sound recording in accordance with

the terms of the artist’s contract.”’61 Similar treatment is accorded to

non-featured recording artists.

B.     The Digital Distribution Right

Although the title of the new Act makes reference solely to the

creation of the digital performance right, the DPRSRA seeks to deal

with emerging digital technology issues in another way as well. The

DPRSRA amends the compulsory licensing section of the Copyright

Act, adding the right to distribute songs by digital transmissions.62 In

general, this section provides that when a copyright owner publicly

distributes a phonorecord, others may obtain a compulsory license to

make    and    distribute  another   phonorecord    of   that  musical

composition.63 The compulsory license is extended to a new category

19 Id. � 1 14(g)(2)(C).

60 See Sobel, supra note 5, at 6.

61 17 U.S.C. � 114(g)(1)(a) (emphasis added). This should serve to highlight the

potential importance of the lawyer drafting the contract provisions in this area.

62 See id. � 1 15(c)(3)(A).

63 See Martin, supra note 14, at 748; see also Sobel, supra note 5, at 8 (“[This

section] gives record companies the right to make new recordings – referred to in the

industry as ‘cover recordings’ – of previously-recorded songs, on terms and conditions

established by law rather than by negotiation with the owners of the copyrights to

those songs.”). Note that this right to distribute the musical composition does not

extend to the sound recording. As an example, getting a mechanical license for “The

Ghost of Tom Joad” doesn’t give Epic the right to distribute Bruce Springsteen’s

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of transmissions called “digital phonorecord deliveries.”64 To illustrate

this newly created term, a noninteractive subscription transmission

consisting of a continuous program of music selections chosen by the

transmitting entity, transmitted in real time, for which a consumer pays

a flat monthly fee, will not be a “digital phonorecord delivery,” so long

as no reproduction is required to make the sound recording audible.65

This extension of the compulsory licensing system was effectuated to

“maintain and reaffirm the mechanical rights of songwriters and music

publishers as new technologies permit phonorecords to be delivered by

wire or over the airwaves rather than by the traditional making and

distribution of records, cassettes and [compact discs].”,66

A digital phonorecord delivery prior to December 31, 1997

incurred the same compulsory mechanical license fee that was payable

previously for the distribution of compact discs and audiocassettes.67

Voluntary negotiations are ongoing to determine the mechanical

royalty rate for deliveries of digital phonorecords occurring during

68

1998 and beyond.           In addition, the U.S. Copyright Office is

sound recording of the musical composition, but it does give them the right to

distribute Rage Against the Machine’s sound recording of the musical composition.

See supra note 24.

4 A ‘digital phonorecord delivery’ is each individual delivery of a phonorecord by

digital transmission of a sound recording which results in a specifically identifiable

reproduction by or for any transmission recipient of a phonorecord of that sound

recording, regardless of whether the digital transmission is also a public performance

of the sound recording or any nondramatic musical work embodied therein. A digital

phonorecord delivery does not result from a real-time, non-interactive subscription

transmission of a sound recording where no reproduction of the sound recording or

the musical work embodied therein is made from the inception of the transmission

through to its receipt by the transmission recipient in order to make the sound

recording audible. See 17 U.S.C. � 115(d).

65 S. REP. NO. 104-128, at 44-45 (1995); see also Sobel, supra note 5, at 8-9

(explaining that it was important for Congress to differentiate between digital

transmissions that are distributions of recordings and digital transmissions that are

merely public performances because of a disparity in the price of licensing fees for

the two types of activities, and because the licenses and fees are policed by different

agencies).

66 S. REP. No. 104-128, at 37.

67 See 17 U.S.C. � 115(c)(3)(A)(i); see also Sobel, supra note 5, at 8.

61 See Digital Phonorecord Delivery Rate Adjustment Proceeding, 63 Fed. Reg.

35, 984 (1998).

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preparing to convene a Copyright Arbitration Royalty Panel to

determine reasonable royalty rates for parties not involved in the

voluntary negotiations.69    Generally, the provisions of voluntarily

negotiated licensing agreements will be given effect in lieu of the

statutory rates.70

IV. FORMULATING A BLUEPRINT FOR APPLYING THE ACT

It has been noted that the DPRSRA is not the easiest piece of

legislation to digest.71 However, with digital technology advancing at

the phenomenal rate that it is today, it seems likely that the

applicability of the Act will eventually be tested. This section proposes

a blueprint to be used in analyzing how and when the DPRSRA will

apply. This Act is geared toward the party that is engaged in the

"transmitting" of music, not the party receiving the music. As such,

this section will serve as a blueprint that will be most helpful to

someone looking to transmit a sound recording digitally, who is

wondering if they will need a license under the DPRSRA to do so.

This could be a fan debating about whether to put music on their

homepage, a business person seeking to go into the music distribution

business, or an attorney researching a question for a record company.

For any possible application of the Act, it is first necessary to answer

69 See id.

70 See 17 U.S.C. � 115(c)(3)(E)(i). But see id. � 115(c)(3)(E)(ii) (stating that

unless certain exceptions are met, such as satisfying a grandfather clause or agreeing

on the fee after the sound recording has already been fixed in a tangible medium,

"controlled composition clauses," where an artist agrees to accept a lower mechanical

royalty rate when their record company makes and distributes phonorecords which

include recordings of the artist's compositions, shall not be given effect even though

they are voluntarily negotiated licensing agreements).

"   "[T]he organization of the new Act makes it appear that each subsection was

written on a separate 5-by-7 inch card, and that the cards were spilled on the floor

and accidentally reassembled out of order just before the bill was retyped in the form

in which it was enacted.” Sobel, supra note 5, at 3; see also Garcia, supra note 41, at

13 (stating that the mandates of the Act are somewhat vague and how it will be

interpreted remains unclear). But see Sobel, supra note 5, at 3 (recognizing that the

convoluted language of the Act was likely required by the nature of the specific

problems addressed by the Act, and that it is indeed extremely important legislation).

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threshold questions to determine if the issue at hand is one that fits

within the definition of what the DPRSRA addresses. Assuming that

these threshold definitional hurdles are cleared, then the central

questions address how the DPRSRA deals with the issue substantively.

A.    Threshold Questions

Given the precise and limited nature of the DPRSRA, in analyzing

an issue, the first question that should be asked is “Does the issue come

under the Act at all?” The answer to this question will depend upon

whether the issue at hand can be analyzed using the definitions

contained in the DPRSRA. The DPRSRA grants the copyright owner

the exclusive right to perform the copyrighted work publicly by means

of a “digital audio transmission.”’72 Recognize that the threshold issue

is that the transmission must be classified as a digital audio

transmission. “A ‘digital audio transmission’ is a digital transmission

as defined in section 101, that embodies the transmission of a sound

recording.   This term   does not include the transmission of any

audiovisual work.”,73    So, first and foremost, there must be a

transmission,74 and this transmission must be a digital transmission.75

As a fairly obvious example of a case that would certainly not be

subject to the DPRSRA, consider the case of a company that allows

you to visit their Web site for the purpose of creating a customized

compact disc that will then be pressed and sent to you.76 This fact

pattern involves digital technology in the form of a compact disc and

72 See supra text accompanying note 21.

71 17 U.S.C. � 1140)(3); see also H.R. REP. No. 104-274, at 19-20 (1995) (“The

precise language of the new right is intended to exclude from coverage digital

transmissions of audiovisual works, analog transmissions, and performances that are

not transmitted.”).

74 To transmit a performance is “to communicate it by any device or process

whereby images or sounds are received beyond the place from which they are sent.”

17 U.S.C. � 101.

71 “A ‘digital transmission’ is a transmission in whole or in part in a digital or

other non-analog format.” Id. See e.g., supra note 8 and accompanying text (giving a

brief example of how digitization works).

76 See Brett Atwood, Made-To-Order CDs Available On The Web, BILLBOARD,

Sept. 6, 1997, at 92 (stating that customized compact discs have arrived as a potential

alternate method of distribution of songs).

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the Internet; however, that does not necessarily qualify it for analysis

under the DPRSRA. The compact disc is delivered to you through the

mail; with no digital transmission of a sound recording, the DPRSRA

does not apply.

In addition, the digital transmission must not involve the

transmission of any audiovisual work. The DPRSRA specifically

states that audiovisual works77 do not to come under the Act.78 This

exclusion of audiovisual works extends to music video subscription

services that are beginning to appear on the Internet. Subscription

services offer full-length music videos to members of the public who

pay a monthly fee. Users have access to videos at the site, although the

videos cannot be permanently stored on the user's hard drive.79

Although this is an interactive service involving a song, it is not an

interactive service involving a sound recording, and is not subject to

the licensing structure of the DPRSRA. A music video fits the

definition of an "audiovisual work,"80 and is thus specifically not

included in the definition of a sound recording.81 Assuming the issue

77

"Audiovisual works" are works that consist of a series of related images which are

intrinsically intended to be shown by the use of machines, or devices such as

projectors, viewers, or electronic equipment, together with accompanying sounds, if

any, regardless of the nature of the material objects, such as films or tapes, in which

the works are embodied.

17 U.S.C. � 101.

71 "[N]othing in the bill creates any new copyright liability with respect to the

transmission of a motion picture or other audiovisual work, whether digital or

analog, whether subscription or nonsubscription, and whether interactive or

noninteractive.” H.R. REP. No. 104-274, at 25.

“   See generally Brett Atwood, VidNet Bows Clips-On-Demand Service,

BILLBOARD, Sept. 20, 1997, at 56.

“   While it seems clear that a music video consists of images intrinsically intended

to be shown with music, this Comment proposes that someone who runs a website

should not be permitted by courts to manipulate this language and merely attach

random visual images to an otherwise infringing transmission, simply to work around

the law.

“  The public performance of a music video may require a license, but this right is

not one addressed by the Digital Performance Right in Sound Recordings Act of

1995, and is hence beyond the scope of this Comment.

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B.    Central Questions

1.    Is a “digital phonorecord delivery” involved?

Once the threshold question has been affirmatively answered,

figuring out how the DPRSRA applies to a transmission is the next step

in the analysis. The primary distinction to be drawn relates back to the

two changes the DPRSRA makes to the Copyright Act. These two

changes are best expressed by asking “Does the issue at hand deal

with: (1) the public performance of a sound recording, and/or (2) the

delivery of a digital phonorecord?”’82 In both cases, there will be a

transmission. In one case, it will be called a “public performance.” In

the other, it will be called a distribution, or more specifically, a “digital

phonorecord delivery.” Knowing the difference between the two is the

key step towards realizing which rights have been implicated. In fact,

both sets of rights may be activated by the same transmission.

A digital delivery is accomplished where a digital transmission of a

sound recording results in a “specifically identifiable reproduction”’83 of

a phonorecord by or for a transmission recipient. A transmission by a

noninteractive subscription service that takes place in real time, and

consists of music selections chosen by the transmitter would not be a

digital phonorecord delivery as long as there was no reproduction at

any point in the transmission in order to make the sound recordings

audible.84 Thus, a distinction is drawn between a song that is merely

transmitted for the recipient to hear, and a song that is transmitted for

the recipient to store on their hard drive, enabling the recipient to listen

to it again later. In the second case, it is more than a performance

(although the transmission can also be a performance), and under the

82 See also supra note 64.

83 H.R. REP. No. 104-274, at 30 (1995) (“The phrase ‘specifically identifiable

reproduction,’ as used in this definition, should be understood to mean a reproduction

specifically identifiable to the transmission service.”).

84 See S. REP. No. 104-128, at 45 (1995); see also H.R. REP. No. 104-274, at 28

(“Digital phonorecord delivery … may also constitute a public performance but it

does not include real-time non-interactive subscription transmission where the

recorded performance and music are merely received in order to hear them.”).

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compulsory licensing system, the mechanical royalty rate becomes

involved.

2.    Is the transmission exempt?

If the issue deals with the public performance of a sound recording

by means of a "digital audio transmission," then the next set of

questions will determine where the issue fits among the Act's various

exemptions and licensing structures. The first question to ask is "Does

the digital audio transmission fit within any of the statutory

exemptions?" Nonsubscription transmissions are exempt from the new

right. When a person surfs the Internet, and visits a site that starts

playing a tune, is that person experiencing a subscription or

nonsubscription transmission?    This is a key distinction, because

nonsubscription transmissions are specifically exempted from the

DPRSRA and licenses for the public performances of any sound

recordings will not have to be obtained.

A subscription transmission is one that is controlled and limited to

particular recipients who have paid for the transmission.85 In support

of the subscription argument, it has been noted that users of the Web

site have had to pay a service provider86 in order to be able to receive

the transmission.87 In support of the nonsubscription argument, a Web

site publisher is likely to state that they do not charge a specific access

fee to reach their Web site, so the user is not really paying to receive

the transmission. The courts have not answered this issue yet, although

because it is such an important distinction, it seems inevitable that an

answer will be forthcoming.88 Accordingly, when advising someone

setting up a music-playing Web site that doesn't charge a fee over and

" See supra note 36 and accompanying text.

16 Though ideas on the Internet can come from anyone with access to a computer,

ultimately the accessibility of the ideas "to other users on the Internet requires

connection to one or more on-line service providers, such as America Online (AOL),

Compuserve, Netcom, or Bulletin Board Services (BBS)." Keith Stephens & John P.

Sumner, Catch 22: Internet Service Providers' Liability for Copyright Infringement

Over the Internet, COMPUTER LAWYER, May 1997, at 1.

87 See D'Amico, supra note 38.

88 See Garcia, supra note 41, at 14 ("Resolution of this ambiguity in the Act will

likely require litigation.").

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above that which visitors must pay their service provider, an attorney

should clearly stress the risks involved.89

If there is no charge to the public for the transmission, it is a

nonsubscription transmission, and it will not be subject to the right.

Retransmissions of nonsubscription broadcast transmissions are also

exempt, “whether the retransmissions are offered on a subscription or a

nonsubscription basis.”90 Radio stations have also begun to explore the

potential of transmitting over the Web.91 Radio stations sit in a very

favorable light under the DPRSRA. A radio broadcast is a “classic”

example of a nonsubscription transmission; there is no fee for receiving

the transmission. Even if the broadcast is by means of a digital

medium, as long as it is not part of an interactive service, this type of

transmission should be exempt from the DPRSRA.92 These free over-

the-air broadcasts are noninteractive and nonsubscription, and thus,

they are treated as distinctly different from cable transmissions, which

are subject to licensing fees under the Act.93 Retransmissions of radio

station broadcast transmissions are included in this exemption,

provided certain criteria are met.94

Transmissions to or within a business establishment may also be

exempt, provided certain criteria are met.95     Capitol Records has

established a private Internet site for the exclusive use of the music

industry, including media and retailers.96 Although this site currently

is aimed at industry members who need access to visual assets, such as

89 See D’Amico, supra note 38 (“If your.. .site is free to the public, you can

forego licensing and pray you’re exempt or, if you’re risk adverse, attempt to secure a

license.”); Hartman, supra note 7, at 62 (“Individuals who upload music onto the

Internet should reconsider the legality of what they are doing, regardless of the

intent.”).

90 S. REP. No. 104-128, at 19 (1995).

9′ See Marc Schiffman, Radio Weighs RealAudio Benefits; Web broadens reach,

but does it help at home?, BILLBOARD, Aug. 9, 1997, at 59 (describing the personal

computer as the world’s most expensive radio).

92 See S. REP. No. 104-128, at 19.

9′ See id. at 15.

94 See supra note 31.

“5 See supra text accompanying notes 33-35.

96 See Brett Atwood, Majors Cut Costs Via Industry-Only Sites, BILLBOARD, Aug.

23, 1997, at 58.

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pictures of a band for a news article release, some 30 second sound

samples are    available generally.    Such   transmission  of sound

recordings through a digital medium are not affected by the DPRSRA,

because the record company responsible for the transmission is the

same one who owns the sound recording copyrights. These companies

can put the sound recordings on their Web pages with the knowledge

that if someone takes them and transmits them on their own, a

mechanism is in place for relief.

3.    Does the transmission qualify for a statutory license?

If the digital audio transmission is not statutorily exempt from the

DPRSRA, the next step in the analysis is to figure out what type of

license is required for the transmission. A transmission will qualify for

a statutory license as long as it meets the following criteria: (1) the

transmission cannot be interactive; (2) the transmission cannot exceed

the performance complement; (3) an advance schedule of the

transmission cannot be published; (4) causing the receiving device to

automatically switch channels is prohibited; (5) any artist identification

information encoded within the sound recording must be transmitted

along with the sound recording.97

Whether by cable service,98 or over the Internet, companies have

started exploring the possibility of broadcasting music programming by

means of digital transmissions. One company, utilizing a cable modem

service, offers "instantaneous delivery of CD-quality music ....,99

The idea behind this technology is that listeners can tune in for an

audio program while continuing to explore the Internet. Several genre-

97 See S. REP. No. 104-128, at 24 (1995) (stating that a "'statutory license'

guarantees that every noninteractive subscription transmission service will receive a

license to perform the sound recording by means of a digital transmission").

" See Martin, supra note 14, at 743 (describing digital audio cable services that

are offered on a monthly, flat-fee subscription basis, and whose services include

many channels of original sound recordings; suggesting that part of the allure of this

type of service is that, it offers compact disc-quality music without advertising or disc

jockeys).

" Brett Atwood, 2 Services Offer CD-Quality Net Sound, BILLBOARD, Aug. 9,

1997, at 52.

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specific channels are available for customers to select.�00 Assuming

the criteria set forth in the DPRSRA are met, this situation is one where

the transmitting entity is entitled to a statutory license.101   The

company, however, should be careful in transmitting the music not to

require the recipient to download the sound recording to her computer

for later use, thereby subjecting itself to a distribution licensing fee as

well as a license for the public performance of the sound recording. As

long as the transmission is not part of an interactive service, does not

exceed the sound recording performance complement, does not publish

a schedule of tracks in advance, does not automatically switch the

channels of the recipient’s receiving device, and includes any encoded

information along with the sound recording, it will qualify for a

statutory license.

An argument could be made for this type of service actually being

an interactive service (and thus subject to voluntary negotiations for

licenses) because an individual is allowed to choose which music genre

he wants to receive via transmission. This argument is not persuasive,

however. An interactive service is one that allows a member of the

public to receive, on request, a particular sound recording chosen by or

on behalf of the recipient.1�2  When an individual here chooses a

particular genre, he is not choosing a particular sound recording, but

rather a style of sound recording.

4.    Is the transmission subject to voluntary licensing?

If the transmission is part of an interactive service where the

recipient has control over the selections he will be receiving, or if the

transmission is a subscription transmission that does not qualify for a

statutory license, then negotiations must be conducted with the

copyright owner to obtain a license for the public performance right.103

This voluntary licensing framework is something that copyright owners

100 See id.

… It is similar to the situation where a cable service makes available audio only

channels for their subscribers. This type of transmission has been described as a

“typical transmission that would qualify as a ‘subscription transmission’… .” H.R.

REP. No. 104-274, at 27 (1995).

112 See supra note 46 and accompanying text.

“03 See supra text accompanying note 47.

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will seek to extend, because there will be no statutory rate to set the

upper limits of the bargaining process. Someone seeking a license for

the digital transmission of a sound recording will argue that their

transmission is either exempt from the Act completely, or, at the very

least, that they are entitled to a statutorily determined licensing rate to

avoid voluntary negotiations.

V. APPLYING THE ACT TO EMERGING TECHNOLOGY ISSUES

In deciding whether a digital transmission will be subject to the

DPRSRA, it should be stressed once again that the Act is very limited

in nature, both by the definitions it employs, and by its statutory

exemptions. Congress chose "to create a carefully crafted and narrow

performance right, applicable only to certain digital transmissions of

sound recordings.''04 It seems clear that in cases that are not entirely

clear-cut, or in cases dealing with a new technology, the DPRSRA is

intended to be read narrowly (which is, of course, consistent with the

language of the Act).1�5 Given its limited nature, many emerging

technological issues will not come under the umbrella of the DPRSRA.

This is not to say, however, that the Act has no significance today. As

seen in Section III, many stories reported in current news articles can

be analyzed under the Act.      Giving in-depth attention to several

specific uses of developing technology will help illuminate the

emerging applicability of the DPRSRA.

A.    A Motion Picture Web Site

In this increasingly multi-media age, the interplay between the

motion picture business and the music business can only be expected to

104 S. REP. No. 104-128, at 13 (1995). The DPRSRA is a "narrowly crafted

response to one of the concerns expressed by representatives of the recording

community, namely that certain types of subscription and interaction audio services

might adversely affect sales of sound recordings and erode copyright owners' ability

to control and be paid for use of their work." H.R. REP. No. 104-274, at 13.

0'5 See H.R. REP. No. 104-274, at 13 ("However, to the extent that the language

of the bill does not precisely anticipate particular technological changes, it is the

committee's intention that both the rights and the exemptions and limitations created

by the bill be interpreted in order to achieve their intended purposes.").

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grow. Through the use of Web sites, the potential for cross-promotion

between the two industries is enormous. A promotional Web site set

up by a movie studio can not only have reviews of the film and still

photos or clips from the movie, but also can include sound effects, and

songs from a movie or its soundtrack. Many of the rights that will be

implicated by such Web sites pre-date the DPRSRA, and are well

established. 106

As the technology continues to emerge, one can easily imagine a

scenario where the DPRSRA will come into play for a producer

inquiring about which licenses will have to be acquired for a

promotional Web site. As previously noted, if the music clip being

performed at the site is being played in conjunction with visual images,

the performance will be considered an “audiovisual work,” or a

“motion picture,”’107 and a set of rights distinct from the DPRSRA will

be implicated. If the song is available without visual images from the

movie accompanying it, the chain of analysis would be as follows.

In the abundance of caution, this transmission should be treated as

a subscription transmission, because the user paid a service provider to

access the site.108 Does the transmission get a statutory license? If it is

interactive, the answer is no. This encompasses most Web sites today,

where the visitor clicks on an icon, and thereby chooses to receive the

transmission. Thus, a voluntary license will have to be negotiated with

the holder of the sound recording copyright. If a nonexclusive license

is desired, there will be no limitations attached to the licensing

arrangement. However, if this Web site is the only entity licensed to

perform the sound recording through a digital medium, an exclusive

“06 A recent visit to the Web site of a popular movie revealed that the site actually

did promote the movie’s soundtrack (indeed the soundtrack could be ordered on the

Web for delivery by traditional mail). However, because there was no transmission

of music, the DPRSRA was not implicated. See Fox Searchlight, The Full Monty

(visited Sept. 10, 1998) .

07 “‘Motion pictures’ are audiovisual works consisting of a series of related

images which, when shown in succession, impart an impression of motion, together

with accompanying sounds, if any.” 17 U.S.C. � 101 (1994 & Supp. 1995).

108 This cautious approach is advised until courts address whether payment to a

service provider for access to the site precludes the site from being classified

nonsubscription.

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license is involved, and there are two limitations that may apply.109 It

is likely, however, that copyright holders will be able to avoid either of

these limitations on the ability to grant an exclusive license to the

promotional Web site. This can be accomplished by making available

the sound recording as a sample of no more than forty-five (45)

seconds in duration, for the sole purpose of promoting the distribution

or performance of that sound recording.

B.    Digital Audio Services

So far, the type of service closest to that anticipated by Congress in

passing the DPRSRA seems to be the digital audio-only service. These

services are offered on a monthly flat-fee subscription basis similar to

standard audiovisual cable, and transmitted in real-time similar to radio

broadcasts. Generally, the services offer several channels of original

sound recordings, with the channels divided into different music

categories."l0 The channels are delivered via cable wire or satellite,

and "act like premium cable movie channels.""' Presently, interactive

pay-per-listen performances of sound recordings are not offered."12

The purpose of these digital audio services is to transmit songs to be

enjoyed as the transmission occurs; there is no digital download of the

material, merely performance.

These services involve subscription digital audio transmissions. In

fact, this type of transmission was specifically noted by Congress to be

"[a] typical transmission that would qualify as a ‘subscription

transmission.”‘”113

The first question to be addressed is “Does it qualify for a statutory

license?” In order to do so, it must meet several criteria. It must not be

an interactive service, meaning the recipients cannot request to hear

particular sound recordings broadcast to them alone. The transmission

must not exceed the sound recording performance complement. No

advance schedule of the transmission can be published. The receiving

109 See supra text accompanying notes 50-55.

1′ See Martin, supra note 14, at 743.

… NIMMER, supra note 1, at 8-286.

112 See Martin, supra note 14, at 743.

“I H.R. REP. No. 104-274, at 27 (1995).

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device cannot be automatically switched from channel to channel by

the service. Finally, any identification information encoded in the

sound recording must be transmitted. Assuming these criteria are

adhered to, the digital audio service will receive a statutory license and

will not have to negotiate with the sound recording’s copyright holder.

C.    Digital Delivery Services

The Internet provides an enormous opportunity for the distribution

of digital works.114  While some people lacking the legal right will

attempt to take advantage of this opportunity, the Internet remains a

great place for people who own the right to distribute works to get their

works to the public.’ 15   “In addition to recording and editing more

cheaply with digital technology, musicians are only a high-speed

Internet connection away from being in the music distribution

business.’”116 Some “digital phonorecord deliveries”‘”17 are of course,

authorized. One software company is working with artists and record

labels to deliver compact disc-quality sound over the Internet.”8

Capitol Records used this service to sell and deliver a single over the

Internet.”19 To enjoy this service, users have to download a free copy

of the company’s software onto their computers. Then, a device is

created to ensure that users cannot purchase the songs and distribute

copies themselves. Then users can sample songs and buy copies that

114 See Rafter & Coats, supra note 8, at 143 (reporting that music now grosses

more money than any other industry on the Internet).

.. This could be especially true for bands on independent record labels or bands

with no record contracts yet. There is an Internet site that claims to allow consumers

to buy individual songs from independent artists and have them transmitted to their

computers. They then can be kept in a digital format, burned to a compact disc, or

recorded to a cassette tape. This type of site offers artists the possibility of great

exposure and touts itself as offering affordable, universal space for musicians and

their audiences to meet and interact. Internet Underground Music Archive Website

(IUMA) (visited Sept. 10, 1998) .

116 Rafter & Coats, supra note 8, at 143.

17 Remember that the basic criteria for a digital phonorecord delivery, as opposed

to a performance, are the fact that a copy must be made during a delivery.

“‘ See Playing a New Tune, WALL ST. J., Oct. 9, 1997, atB8.

119 See id.

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are downloaded onto their hard drives.120 Although the process takes

quite a bit of time and uses a lot of hard drive space right now,121

technology will undoubtedly advance to the point where members of

the public might think twice about getting in their cars and driving to

record stores to purchase music. 122

The music industry is increasingly looking to the Internet for a

lift.123 One site offers a service called "e mod" (encoded music online

delivery), which is powered by Liquidaudio.124       This site allows a

visitor to download single tracks to his computer for around 99� a

track. Currently, downloading time for each track ranges from twenty

to forty minutes.125    At Sony's Web site, soundclips of artists on

Columbia,    Epic,   and    Sony   Classical   music    labels  can   be

downloaded.126 Sony Corporation has reportedly registered the term

Netman as a trademark, for a service that would allow users to

download music from the Web for later playback and recording to

disks.'27  "If successful, on-line music distribution could eventually

help transform the way music is sold."'128 It is important to remember

120 See generally id.

.2. See id. (adding that the sound quality is "terrific").

122 See Robert Hilbum & Chuck Philips, What's Wrong With the Record Industry

(And How to Fix it), L.A. TIMES, Oct. 12, 1997, Calendar 5 (stating that there is a

growing possibility that the traditional record business may become obsolete and

suggesting that industry observers should not scoff at the notion of electronic delivery

systems becoming more popular). But cf DONALD S. PASSMAN, ALL You NEED TO

KNOW ABOUT THE Music BUSINESs, 378 (1997) ("Although it's inevitable that

records will be sold this way in the future, I don't think it will ever replace record

stores because there's too much 'experience' and 'vibe' in going to a store.")

'23 See Patrick M. Reilly, 'Honey, They're Downloading Our Song,' WALL ST. J.,

July 17, 1997, at B 1. See also Don Jeffrey, Internet Sales, DVD Are Key Topics for

Retailers: Online Debate Rages, BILLBOARD, March 28, 1998, at 1 (reporting that

record labels are exploring the possibility of using the Internet as a promotional tool,

distributing samples or singles in order to drive consumers into stores to buy albums).

124 See Music Boulevard, "Download Music" section (visited Oct. 1, 1998)

.

125 See id.

126 See Sony (visited Sept. 10, 1998) .

127 See Reilly, supra note 123.

121 Id. See also Doug Reece, IBM Entry Adds Impetus to Digital Distribution

Plans, BILLBOARD, Aug. 29, 1998 at 5 (reporting that IBM is working with major

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that a digital phonorecord delivery can at the same time be a public

performance.

D.    The Performance/Distribution Distinction in Practice

One of the confusing things about the DPRSRA is the fact that it

creates two separate and distinct rights that might be triggered by the

same transmission.  Keep in mind the ever-important distinction

between a sound recording and a musical composition.129 When a

sound recording is transmitted through a digital medium, the

performance right is implicated. At the same time though, if a digital

phonorecord delivery is achieved, then a compulsory license to make

and distribute the musical composition contained in the sound

recording may also be available.

To illustrate the interplay between the two new rights created by

the DPRSRA, imagine the following scenario: Epic Records wants to

offer a digital phonorecord delivery (as defined) of Rage Against the

Machine’s recent recording of “The Ghost of Tom Joad,” a song

originally written and recorded by Bruce Springsteen. Under the

application of the DPRSRA, the record company must secure two

things in order to sell copies of this audio-only transmission. First,

since a digital transmission of a sound recording is involved, Epic must

secure the right to perform Rage Against the Machine’s recording of

this song publicly through a digital medium. Because Rage Against

the Machine is signed to Epic, this would most likely involve checking

the contract to be sure the right was conveyed. Second, because a copy

of the song will be transmitted to a recipient’s computer, Epic must

secure the right to distribute Bruce Springsteen’s underlying musical

composition. The newly amended compulsory/mechanical licensing

section of the Copyright Act will allow them to do this.

Without the DPRSRA, a situation could develop where a compact

disc is transmitted from a subscription service to a customer, who

could store it, reproduce it and distribute it again. In this way, the

record labels in developing a new digital distribution platform, which would ideally

serve artists who get lost in traditional retail outlets without harming existing

retailers).

129 See supra note 24.

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compact disc would become widely distributed, and with the exception

of the initial purchase of the disc necessary to put it on the Web, the

record company that created the compact disc would not be paid for

it.130 Copies of sound recordings can be stored on computer user's

system, and once there, technology exists for the music to be

transferred to more traditional methods of recording and distribution.

In fact, a situation quite analogous to this record company's nightmare

reportedly occurred in 1993.131 One of the goals of the DPRSRA was

to prevent this type of situation from happening.

In fact, there are several examples of how the music industry is

attempting to protect copyright holders' rights by using the DPRSRA.

One goal is to block a visitor's ability to download songs from a Web

site. This would categorize the transmission as a performance of the

song, rather than as a distribution. It has been reported that Sony

Music Entertainment is planning to launch a pay-per-play on-line

jukebox on its Web site.132 Web surfers will be able to pay to hear the

songs of various Sony artists performed, but they will not be able to

capture the songs on their computers.133 The DPRSRA seems also to

be leading to the development of licensing schemes to handle digital

transmissions of sound recordings.       The American    Society  of

Composers, Authors and Publishers ("ASCAP") has developed a

licensing scheme whereby the licensee may make the song available on

its Web site, but may not encourage a visitor to the site to do anything

more than listen to the song.134  This basically serves to grant a

performance right, but not a distribution right. While other licenses

may be required (such as a license to perform the musical

composition), as long as there is no distribution of the musical

130 This situation is described in Watkins, supra note 6, at 328.

'3 See Richard Natale, The Net is Alive With Pirated Music, L.A. TIMES, Feb. 2,

1996, at D4 (describing 1993 occurrence where a disc jockey in England downloaded

a newly released album-one that had yet to be released in the U.S.-to a fan here,

and stating that at the time there was little the record company could do to prevent

such incursions).

"32 See Reilly, supra note 123, at B7.

133 See id.

134 See Hartman, supra note 7, at 67-68.

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composition, the amended section 115 of the Copyright Act will not be

implicated.

Companies concerned with music use on the Internet know now

that the DPRSRA allows them to take an aggressive stance against

copyright infringers. Broadcast Music Inc. (“BMI”) has created a

“MusicBot” robot that will comb the Web using a software program to

identify sites which contain music files; these sites will then be

reviewed for sound clips being used without permission.135

Although commercial sites are the likely first targets of such

sweeps, a fan that puts a band’s song on his site without a license

should be concerned as well.136     While it seems impractical for

licensing agencies to go after individual fan-based Web sites that

usually serve the purpose of promoting bands, fans should know that

legally, this strict stance against infringers is justified. Under the

DPRSRA, a cautious fan creating a Web site using a song from his

favorite band should be sure that the song does not have to be

downloaded in order for the recipient to hear it.  If there is no

downloading to a recipient’s computer, the transmission will amount to

a performance of the sound recording.       Because an interactive

transmission is involved (the recipient clicks on the icon to hear the

song), the fan will have to get a voluntary license from the sound

recording copyright holder. If downloading of the song is required in

order for the recipient to hear it, a distribution of a phonorecord will be

involved, and although members of the public have the right to dispose

of or sell their copy of a phonorecord after they buy it, they cannot

effect a further distribution of the phonorecord without a license to do

so. This should be the extent of the fan’s concerns stemming from the

Digital Performance Right in Sound Recordings Act of 1995, although

as noted, several pre-existing sound recording and musical composition

rights will also be implicated, and a license will be required from the

music publisher.

.  BMI’s ‘Robot’Scans the Web for Copyright Infringers, WALL ST. J., Oct. 16,

1997, at B6.

136 “‘Unless the site is violating the rights of copyright owners, we view fan sites

as essentially a promotional partnership.”‘ Atwood, supra note 96, at 58 (statement of

Liz Heller, Capitol’s senior VP of new media) (emphasis added).

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VI. CONCLUSION

This Comment proposed a method for analyzing the Digital

Performance Right in Sound Recordings Act of 1995, and explored the

Act’s applicability. The blueprint formulated in this Comment can be

used to address issues involving the digital transmission of sound

recordings, as these issues arise currently and as they develop in the

future. The DPRSRA is important even today, because the regulations

contained therein set new boundaries within which the licenses to

perform and deliver songs digitally will be negotiated and obtained.

This Comment concludes that the importance of the Act will more

fully be seen within a few years, as digital technology services explore

the boundaries set up by the Act and subsequent licensing agreements.

Volume 06, Issue 1, pp 35-72, McCartney

“Creepings” and “Glimmers” of the

Moral Rights of Artists in American

Copyright Law

Brian T. McCartney

I. INTRODUCTION

Artistic control is essential to the creative arts, and today it is

universally accepted that creators of artistic and literary works have a

property right in their creations.’ In the United States, the rights of

“creative artists”2 have historically been protected by granting the artist

traditional property rights in her work: most commonly a temporary

monopoly over the exploitation of the artist’s protected work.

However, other countries safeguard the rights of “creative artists” in a

more comprehensive fashion. For example, many European countries

provide creative artists with a moral right in their work in addition to

the traditional property right.4 This moral right gives a creative artist

“the exclusive right to control the reproduction and the performance or

Arthur S. Katz, The Doctrine of Moral Right and American Copyright Law-A

Proposal, 24 S. CAL. L. REV. 375-376 (1951).

2 Throughout this article I will employ the term “creative artists” to refer broadly

to all creative artists, for example authors, choreographers, composers, dancers,

musicians, painters, sculptors, etc.

‘ See Raymond Sarraute, Current Theory on the Moral Right of Authors and

Artists under French Law, 16 AM. J. COMP. L. 465-67 (1968).

4 Id.

UCLA ENTERTAINMENT LAW REVIEW

exhibition of [her] creation.’5 Thus, the artist’s interest in her work

transcends the physical embodiment of the work itself.

In 1988, the United States signed on to the Berne Convention,

which expressly recognizes the moral rights of creative artists.6 At that

time, the House of Representatives declared that existing federal and

state law satisfied the Berne Convention requirements.7 However, the

case law and commentators do not seem to support this assertion.8

This paper examines seventeen recent cases that have mentioned the

moral right and it attempts to determine whether the United States

does, in fact, recognize the moral right of artists.9     This paper

concludes that, although Congress professes to protect moral rights

through existing law, American courts are still reluctant to embrace the

moral right of artists.’0

II. HISTORY

A. European Recognition of the Moral Right

The moral right can be distinguished from traditional property

rights in that it purports to protect the personal rights of creative artists,

as distinguished from their merely economic rights. For many years,

French law has recognized a “droit moral” or “moral right” that

creative artists have in association with their creative works.1 This

“moral right” extends beyond a simple property interest to include

“non-property attributes of an intellectual and moral character which

give legal expression to the intimate bond which exists between a

literary or artistic work and its author’s personality; it is intended to

protect his personality as well as his work.””2

5 Id.

6 See infra � II C.

H.R. Rep. No. 100-609 at 32-34 (1988). See infra notes 30-31.

See infra Section III; see also 3 T. SELZ ET AL., ENTERTAINMENT LAW � 24.01

(3 d ed. 1992).

9 See infra Section III.

0 See infra Section IV.

See Sarraute, supra note 3, at 465-67.

12 Id. Interestingly, while England appears to recognize the moral rights of artists

in their creative works to a greater extent than America, the converse is true for

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1998]              MORAL RIGHTS OF ARTISTS                              37

In his landmark 1935 examination of the moral right, French

commentator Michaelides-Nouaros defined the right as:

the right of the author to create, or not to create, to present the creation to

the public in a form of his choice, or to withhold it, to dispose of this

form as he alone desires, and to demand that his personality be respected

in so far as it relates to his status as an author.13

In an earlier German work, Smoschewer employed the term “das

Urheberpersinlichkeitsrecht” to refer to a creative artist’s right of

personality.’4 Both Michaelides-Nouaros and Smoschewer sought to

address the connection between the physical embodiment of a creative

artist’s work and the personality interest that the artist has in her

work.15   Under this view, moral rights are more than simply moral

preferences; they are legally enforceable rights vested in creative

artists.16 The key distinction between American “property” rights and

the European “moral right” is that, even after an artist has transferred

her purely economic property rights, she retains two important rights

recognizing the rights of “creative artists” in their own personas. Compare White v.

Samsung Electronics, 971 F.2d 1395, 1399 (9th Cir. 1992) (recognizing a common

law “right of publicity” claim of game show hostess Vanna White), with Gorden

Kaye v. Andrew Robertson and Sport Newspapers, 1991 F.S.R. 62 (1990) (finding no

right of action in English law for the breach of a television star’s “right of publicity”

after a tabloid photographer snuck into Kaye’s hospital room and published pictures

of Kaye recovering from an automobile accident).

“3 G. Michaflid~s-Nouaros, LE DROIT MORAL DE L’AUTEUR (1935), 68 (trans.

Katz, supra note 1, at 391 n.84). Michaflid~s-Nouaros’s original definition reads:

Le droit moral est le droit pour lauteur de creer, de presenter ou non sa creation au

public sous une forme de son choix, de disposer de cette form souverainement et

d’exiger de tout la monde le respect de sa personalit6 en tant qu’elle est lie6 d sa

qualit6 d’auteur.

14 Das Pers6nlichkeitsrecht im Allgemeinen und im Urheberrecht, found in 3

L’ARCHIv FOR URHEBER-FILM–UND THEATERRECHT (Germany 1930), 365. Katz

translates “das Urheberpers6nlichkeitsrecht” as “the author’s (creator’s) right of

personality.” Katz, supra note 1, at 390.)

’5 See Katz, supra note 1, at 390-91.

16 “[T]he moral right doctrine is not concerned with rights whose enforceability is

a matter of moral suasion divorced from legal sanction. The moral rights of an

author are legal rights, and enforceable as such.” Id. at 390.

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associated with her creative work: the rights of integrity and

paternity.’ 7

B. Integrity and Paternity

The right of integrity prevents alteration of a creative artist’s work

that would injure her honor or reputation.18 More broadly defined, the

right of integrity protects a creative artist against acts that would

undermine the artist’s personality expressed in her work. The right of

integrity prohibits the public presentation of a creative artist’s work in a

context or manner harmful to her reputation or contrary to her

“intellectual interests, personal style, or literary, artistic or scientific

conceptions.”’19 Thus, the artist has the right and power to preserve her

work from alteration or mutilation. Only the artist can decide when her

work is ready to view, and she retains the sole right to make changes to

her work even after it has been sold.

The right of paternity is a creative artist’s right “to be publicly

identified with his or her work and to avoid misattribution of

authorship.”a20 Thus, an artist has the right to: (1) have her name

associated with her work, (2) disavow her association with a work, and

(3) prevent having another’s name associated with her work.21

The idea behind these rights is that a creative artist’s interest in her

work transcends the physical embodiment of the work itself and

continues long after the artist has completed and parted with the work.

” See generally John Henry Merryman, The Moral Right of Maurice Utrillo, 43

AM. J. COMP. L., 445 (1995); Adolf Dietz, ALAI Congress: Antwerp 1993 The Moral

Right of the Author: Moral Rights and the Civil Law Countries, 19 COLUM.-VLA J.L.

& ARTS 199 (1995); Gerald Dworkin, The Moral Right of the Author: Moral Rights

and the Common Law Countries, 19 COLUM.-VLA J.L. & ARTS 229 (1995); Roberta

Rosenthal Kwall, Copyright and The Moral Right: Is an American Marriage

Possible?, 38 VAND. L. REv. 1 (1985).

“8 Thomas F. Cotter, Pragmatism, Economics, and the Droit Moral, 76 N.C. L.

REV. 1, 13 (1997); see also Katz supra note 1, at 390-91; Sarraute, supra note 3, at

465-67.

“9 Cotter, supra note 17, at 13 (quoting Neil Weinstock Netanel, Copyright

Alienability Restrictions and the Enhancement of Author Autonomy: A Normative

Evaluation, 24 RUTGERS L. J. 347, 387 (1993)).

20 3 T. SELZ, supra ENTERTAINMENT LAW, at � 22.02.

2″ See Cotter, supra note 18, at 12.

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MORAL RIGHTS OF ARTISTS

In Gilliam v. American Broadcasting Co.,22 the court stated that "[t]o

deform an artist’s work is to present him to the public as the creator of

a work not his own, and thus makes him subject to criticism for work

he has not done.” 23 The Gilliam court noted that it is the creative artist

that “suffers the consequences of the mutilation, for the public will

have only the final product by which to evaluate the work.”,24 As

Roeder explains:

When an artist creates, be he an author, a painter, a sculptor, an architect

or a musician, he does more than bring into the world a unique object

having only exploitative possibilities; he projects into the world part of

his personality and subjects it to the ravages of public use.25

Clearly, creative artists have more at stake in their work than

simply economic interests and many European countries have sought

to protect the additional interests of artists through the moral right.

The United States, however, has been reluctant to recognize the moral

right.26  This reluctance was highlighted by America’s debate over

joining the Berne Convention.

22 538 F.2d 14 (2nd Cir. 1976).

23 Id. at 24[16] (quoting Martin Roeder, The Doctrine of Moral Right: A Study in

the Law ofArtists, Authors, and Creators, 53 HARV. L. REV. 554, 569 (1940)).

24 Id.

25 Roeder, supra note 23, at 557.

26 See Katz, supra note 1, at 410. However, some American decisions have

employed common law doctrines to protect the moral rights of artists. See e.g. Granz

v. Harris, 198 F.2d 585, 589 (2d Cir. 1952) (finding that the sale of abbreviated jazz

recordings without the album producer’s permission constituted either breach of

contract or the tort of unfair competition). Judge Frank’s concurrence in Granz made

clear that he did not reject the moral right:

Whether the work is copyrighted or not, the established rule is that, even if the

contract with the artist expressly authorizes reasonable modifications (e.g., where a

novel or stage play is sold for adaptation as a movie), it is an actionable wrong to

hold out the artist as author of a version which substantially departs from the

original.

Granz at 589. However, Judge Frank felt that the case should not rest on the moral

right when it was not necessary to do so in the case. Id.

Although Gilliam, supra note 22, is frequently cited in discussions of the moral right

in America, Gilliam relied heavily on the contract right that Monty Python retained in

their television script. Because few creative artists retain the types of contract rights

that Monty Python did in this case, Gilliam is actually quite limited in its holding and

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C. America Joined Beme but Expressly Disclaimed Recognition of the

Moral Right

Article 6bis of the Berne Convention for the Protection of Literary

and Artistic Works recognizes the moral rights of integrity and

paternity in creative artists. Article 6bis provides, in pertinent part:

Independently of the author’s economic rights, and even after the transfer

of the said rights, the author shall have the right to claim authorship of

the work and to object to any distortion, mutilation or other modification

of, or other derogatory action in relation to, the said work, which would

be prejudicial to his honor or reputation.27

Thus, signatories to the Berne convention are assumed to recognize

artists’ moral rights. However, Article 6bis and the concept of moral

rights presented a serious problem for the United States because the

U.S. had historically disclaimed recognition of the moral right.28

In 1988, after nearly 100 years of debate, the United States finally

joined the Berne Convention.29 Although the United States became a

signatory to the Beme Convention, the U.S. expressly declined to add

any new recognition of a “moral right” in the Beme Convention

Implementation Act.30 Instead, Congress neatly sidestepped the issue

is underpinned by contractual rights just as much as moral rights. See Cotter, supra

note 17, at 25.

Another prior “glimmer” of the moral right in American law is Smith v. Montoro,

648 F.2d 602 (9th Cir. 1981) (applying � 43(a) of the Lanham Act and finding that an

actor in the movie Convoy Buddies whose name had been replaced on the film’s

credits had a claim against the film’s distributors for “express reverse passing off.”).

27 Berne Convention for the Protection of Literary and Artistic Works, September

9, 1886, art. 6bis, Treaty Doc. No. 27, 99th Cong., 2d Sess. 41 (1986).

28 See e.g., Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 82 (2d Cir. 1995) (“The

obligation of the United States to provide droit moral … was the single most

contentious issue surrounding Berne adherence.”).

29 Id.

31 The Beme Implementation Act (“the Act”) declares that the Beme Convention

is not self-executing; rather, “[t]he obligations of the United States under the Beme

Convention may be performed only pursuant to appropriate domestic law.” Pub. L.

No 100-568, � 2(1), (2) 102 Stat. 2853 (1988). The Act states that “[t]he amendments

made by this Act, together with the law as it exists on the date of the enactment of

this Act, satisfy the obligations of the United States in adhering to the Berne

Convention and no further rights or interests shall be recognized or created for that

purpose.” Id. at � 2(3).

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MORAL RIGHTS OF ARTISTS

of moral rights by declaring that American law already adequately

protected the analog of an artist’s moral rights through existing law in

the areas of unfair competition, copyright, contract, defamation, and

privacy.31 In effect, the United States joined the Berne convention but

chose to ignore one of its provisions by proclaiming that the moral

right was already adequately protected.32 However, Congress’ position

would soon shift towards a limited recognition of a moral right.

D. The Visual Artists Rights Act Now Purports to Add Limited “Moral

Rights” Protection

In 1990, two years after declining to recognize the moral right,

Congress changed course by enacting the Visual Artists Rights Act of

However, Section 3(b) of the Act expressly disclaims recognition of moral rights:

The provisions of the Berne Convention, the adherence of the United States thereto,

and satisfaction of United States obligations thereunder, do not expand or reduce any

right of an author of a work, whether claimed under Federal, State, or the common

law -

(1) to claim authorship of the work; or

(2) to object to any distortion, mutilation, or other modification of or other

derogatory action in relation to, the work, that would prejudice the author’s honor or

reputation.

(emphasis added).

“‘ The House of Representatives concluded that the protection of a creative artist’s

“moral right” was already adequately protected by analogous and existing American

laws:

According to this view, there is a composite of laws in this country that provides the

kind of protection envisioned by Article 6bis. Federal laws include 17 U.S.C. � 106,

relating to the derivative works; 17 U.S.C. � 115(a)(2), relating to distortions of

musical works used under the compulsory license respecting sound recordings; 17

U.S.C. � 203, relating to termination of transfers and licenses, and section 43(a) of

the Lanham Act, relating to false designations of origin and false descriptions. State

and local laws include those relating to publicity, contractual violations, fraud and

misrepresentation, unfair competition, defamation, and invasion of privacy. In

addition, eight states have recently enacted specific statutes protecting the rights of

integrity and paternity in certain works of art. Finally, some courts have recognized

the equivalent of such rights.

H.R. Rep. No 609, 100th Cong., 2d Sess. 32-34 (1988).

32 This approach was not novel. For example, see Roeder’s similar argument that

American common law already provides artists with rights similar to moral rights.

Roeder, supra note 22, at 578.

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1990 (“VARA”).33 VARA was designed to grant limited integrity and

paternity rights to a discrete group of visual artists.34 Codified at 17

U.S.C. � 106A, VARA provides that certain creative artists:

(1) shall have the right -

(A) to claim authorship of that work, and

(B) to prevent the use of his or her name as the author of any work of

visual art which he or she did not create;

(2) shall have the right to prevent the use of his or her name as the author

of the work of visual art in the event of a distortion, mutilation, or other

modification of the work which would be prejudicial to his or her honor

or reputation; and

(3) subject to the limitations set forth in section 113(d), shall have the

right-

(A) to    prevent any   intentional distortion, mutilation, or other

modification of that work which would be prejudicial to his or her honor

or reputation, and any intentional distortion, mutilation, or modification

of that work is a violation of that right, and

(B) to prevent any destruction of a work of recognized stature, and any

intentional or grossly negligent destruction of that work is a violation of

that right.

However, VARA’s scope is limited by it’s a narrow definition of

“work of visual art.”35 Thus, VARA fails to protect anything falling

3 Pub. L. No. 101-650, tit. VI, 603(a) 104 Stat. 5089, 5128-33 (1990).

3   See H.R. Rep. No. 101-514, at 5 (1990). Essentially, “works of visual art” are

equated with “fine art”-”works that exist in only a single copy or works published in

signed and numbered editions of no more than 200 copies.” GOLDSTEIN, COPYRIGHT,

PATENT, TRADEMARK AND RELATED STATE DOCTRINES, 786, 800 n.4 (4th ed. 1997).

3   A “work of visual art” is defined in 17 U.S.C. � 101 as:

(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited

edition of 200 copies or fewer that are signed and consecutively numbered by the

author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures

of 200 or fewer that are consecutively numbered by the author and bear the signature

or other identifying mark of the author; or

(2) a still photographic image produced for exhibition purposes only, existing in a

single copy that is signed by the author, or in a limited edition of 200 copies or fewer

that are signed and consecutively numbered by the author.

A work of visual art does not include-

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outside its narrow definition, and many types of art, “digital art” for

example, are left without VARA protection.36 Additionally, many uses

of “visual art” are expressly exempted from VARA protection.37

III. HAS THE MORAL RIGHT BEEN RECOGNIZED IN AMERICAN COURTS

FOLLOWING AMERICA’S SIGNING OF THE BERNE CONVENTION

AND THE ENACTMENT OF VARA?

Congress’ assurances that American law adequately protects moral

rights, coupled with the enactment of VARA, suggest that America is

on the road to recognizing the moral right of creative artists. The

following federal and state decisions following VARA’s enactment

examine this proposition and lead to the conclusion that America’s

recognition of the moral right is actually quite limited.

A. Non-VARA cases

In Seshadri v. Kasraian,38 a University of Wisconsin graduate

student published an article in the Journal of Applied Physics.39        A

(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art,

motion picture or other audiovisual work, book, magazine, newspaper, periodical,

data base, electronic information service, electronic publication, or similar

publication;

(ii) any merchandising item or advertising, promotional, descriptive, covering, or

packaging material or container;

(iii) any portion or part of any item described in clause (i) or (ii);

(B) any work made for hire; or

(C) any work not subject to copyright protection under this title.

36 See Note, Visual Artists’ Rights in a Digital Age, 107 HARV. L. REV. 1977,

1978 (1994) (“[A]lthough the traditional Anglo-American copyright system would be

capable of embracing digital technology, VARA’s mixture of those theories with

Continental-European moral rights principles poses a challenge to this assimilation in

the area of visual art.”).

“   See GOLDSTEIN, supra note 34, at 800-01 (“Section 106A’s most significant

limitation is its exemption from liability of virtually all significant commercial uses

of artistic works, including reproduction in books, magazines, newspapers, motion

pictures and works made for hire.”).

38 130 F.3d 798, 803-04[7] (7th Cir. 1997) (Posner, C.J., joined by Judge Bauer

and Judge Evans).

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University of Wisconsin engineering professor sued the graduate

student for copyright infringement, alleging that he had authored the

entire article.40 The graduate student responded that the article was a

joint work, which entitled him to copyright the article and license the

copyright to third parties, “subject only to a duty to account to his

coauthor for any profits.”’41  The district court granted the graduate

student’s motion for summary judgment, finding that there was no

genuine issue of material fact as to the graduate student’s joint

authorship.42  The United States Court of Appeals for the Seventh

Circuit affirmed, but Judge Posner addressed the author’s moral right in

dicta:

If a joint work is marred by errors reflecting unfavorably on his

coauthor, with quantifiable adverse effects on the coauthor’s career, the

coauthor might conceivably have some legal remedy, but it wouldn’t be

under the Copyright Act. We don’t know what it would be under:

possibly the law of contracts; in Europe it might be a violation of the

author’s “moral right” (droit moral), the right to the integrity of his work;

and there are glimmers of the moral-rights doctrine in contemporary

American copyright law. But all that matters here is that a joint author

does not lose his copyright by being a lousy scholar; were that the rule,

rights of joint authorship would be in legal limbo.43

Although Judge Posner recognized “glimmers” of the moral right in

American law, it is interesting to note that he distinguished the

“European” concept of moral right from an artist’s remedies under

America’s Copyright Act. Thus, Judge Posner declined to afford the

professor any moral right to paternity in the article-i.e. if the

professor really was a joint author, as the opinion seems to concede,

then his right to paternity was violated by not being listed as one of the

” Id. at 801. The article was entitled Double-Grating Thin-Film Devices Based

on Second-Order Bragg Interaction, 75 J. APPL. PHYS. 7639 (1994).

40 Id.

41 Id.

42 Id.

43 Id. at 803-04[7] (citing Lee v. A.R.T. Co., 125 F.3d 580, 582-83 (7th Cir.

1997); Weinstein v. University of Illinois, 811 F.2d 1091, 1095 n.3; WGN

Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622, 625 (7th Cir.

1982); Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 81-82 (2d Cir. 1995); Gilliam v.

American Broadcasting Cos., 538 F.2d 14, 24 (2d Cir. 1976)) (internal citations

omitted).

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article's authors. Furthermore, the professor's right of integrity was

likely violated, since the professor was probably not allowed to

participate in the editing process that the article underwent before its

publication in the Journal of Applied Physics.

Judge Posner soon revisited the moral right in Ty, Inc. v. GMA

Accessories, Inc.44 In Ty, the manufacturer of the "Beanie Babies"-a

popular line of stuffed animals-brought a copyright infringement

action against a competitor.45 The manufacturer ("Ty") contended that

the defendant ("GMA") had copied Ty's "Squealer the Pig" and "Daisy

the Cow" stuffed animals.46 The District Court granted Ty's motion for

a preliminary injunction, and the Seventh Circuit affirmed, holding that

Ty had established a likelihood of success on the merits and proof of

irreparable harm.47 Dicta in the opinion referred to the moral right;

however, this time it was used in support of the artist. Judge Posner

stated that the award of a preliminary injunction "draws additional

sustenance from the doctrine of 'moral right,' the right of the creator of

intellectual property to the preservation of the integrity of his work-a

doctrine that is creeping into American copyright law."48

Although one way for a doctrine to "creep" into American law is

through dicta, in this case the artist's rights were clearly protected by

other existing copyright concepts. Thus, the reference to the moral

right in dicta was not sufficient to make it law. Rather, Judge Posner

followed American tradition of talking about moral rights but declining

to legally recognize them.

In Rey v. Lafferty,49 Margaret Rey ("Rey"), the author of the

Curious George books, brought a suit against the licensees of rights to

create a series of animated Curious George films and ancillary products

associated with the films.50 Rey alleged that the licensees had violated

federal copyright, trademark, and unfair-competition statutes by

- 132 F.3d 1167 (7th Cir. 1997) (Posner, C.J., with Judge Bauer and Judge

Flaum).

41 Id. at 1169.

46 Id.

47 Id. at 1172-73[11], [12].

48 Id. at 1173 (citing Seshadri, 130 F.3d 798, 803-04 and the cases cited therein).

41 990 F.2d 1379 (1st Cir. 1993).

50 Id. at 1384.

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continuing to produce unauthorized Curious George books and

videos.51 In addition, Rey alleged that the licensees had breached their

contract with her, and she sought an injunction against further

violations and damages in the form of unpaid royalties.” The United

States District Court for the District of Maine found that the licensees

had breached their contract with Rey; however, the court also found

that Rey had unreasonably withheld approval of a number of ancillary

products.53

On appeal, the First Circuit affirmed in part and reversed in part.

The court stated that “under copyright law, while a licensor has no

‘moral right’ to the quality of licensed depictions, she may insist,

contractually, on approval provisions to assure quality control and high

standards in the exploitation of her creative work.”54      However, the

court did find that Rey was entitled under the contract to withhold her

approval of the licensed ancillary items on “reasonable” grounds.55

Because the Rey court found that Rey was “reasonable” in withholding

51 Id.

52 Id.

“  Id. The products included, among other things, Curious George pajamas that

were to be marketed by Sears Roebuck Co. and a plush Curious George toy that was

to be marketed by Eden Toys Inc. Id. Rey had objected to the pajamas because “the

pajama material was ‘hard, ugly, [and] bright yellow,’ and that the sketch of Curious

George was ‘plump’ and ‘not recognizable.”‘ Id. at 1383.

” Id. at 1392 n.10. The court took note of Clifford Ross Co. v. Nelvana, 710 F.

Supp. 517, 520 (S.D.N.Y. 1989):

Clifford Ross is particularly instructive, as it too involved a “classic literary

property,” the “Babar” children’s book character. Upholding a contractual provision

which called for the copyright holder’s participation in the selection of licensing

agents for the character, and enjoining the issuance of further licenses absent the

holder’s approval, the court concluded that there would be “irreparable harm” to the

future profitability of “Babar,” and to the artistic reputation of the holder, “if the

exploitation of Babar continue[d] without regard to [the licensor's] high standards of

quality control.

Compare Geisel v. Poynter Products, Inc., 295 F. Supp. 331, 333 (S.D.N.Y. 1968)

(issuing an injunction under the Lanham Act and fimding a likelihood of “irreparable

harm” to Theodor Seuss Geisel’s reputation where “Dr. Seuss” toys, which Geisel

found “tasteless, unattractive and of an inferior quality,” were marketed by the owner

of the copyright to Geisel’s early drawings).

15 Id. at 1396.

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her approval, the court reversed the lower court's award of damages to

the licensees.6

Thus, the court chose to employ contract law rather than recognize

the moral right. Indeed, the earlier cases the Rey court had cited,

involving Babar the elephant and Dr. Suess products, also relied on

contract law rather than the moral right. For example, the Dr. Suess

case, now nearly thirty years old, provided Suess with the equivalent of

the moral right of paternity by allowing him to disassociate his name

from a set of dolls designed by the licensees of his early cartoon

characters.57 The court held that Suess did not have a claim       for the

"appropriation" of his cartoon characters, but he did have a right to

prevent labels on the dolls that suggested he was involved in the dolls'

design.58

In Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co.,"

the assignee of the rights to Igor Stravinsky's composition "The Rite of

Spring," ("Boosey & Hawkes"), sued Walt Disney Co. ("Disney"), for

copyright infringement after Disney released the videocassette version

of Fantasia.     Boosey & Hawkes argued that, although "The Rite of

Spring" was in the public domain, Disney had violated � 43(a) of the

Lanham Act6' "by mutilating 'The Rite of Spring' and by impairing the

56 Id.

7 Geisel v. Poynter Products, Inc., 295 F. Supp. 331 (S.D.N.Y. 1968).

58 Id. at 357.

9 934 F. Supp. 119 (S.D.N.Y. 1996).

60 Id. at 121.

61 Section 43(a) of the Lanham Act, codified at 15 U.S.C. � 1125(a), provides:

Any person who, on or in connection with any goods or services, or any container for

goods, uses in commerce any word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin, false or misleading

description of fact, or false or misleading representation of fact, which -

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the

affiliation, connection, or association of such person with another person, or as to the

origin, sponsorship, or approval of his or her goods, services, or commercial

activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics,

qualities, or geographic origin of his or her or another person's goods, services, or

commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is

likely to be damaged by such act.

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integrity of that work, in violation of Stravinsky’s moral right of

authorship.”’62 Boosey & Hawkes also cited the Article 6bis of the

Berne Convention for the proposition that the author had, at the

minimum, “the right to claim authorship of the work and to object to

any distortion, mutilation, or other modification of or other derogatory

action in relation to, the said work, which shall be prejudicial to his

said honor or reputation.”,63 The court rejected this argument, holding

that �43(a) does not preclude the modification or mutilation of a work;

thus, the “[p]laintiff’s claim based upon the mutilation of ‘The Rite of

Spring’ must fail as a matter of law.”64

In Choe v. Fordham     University School of Law,65 Jerry Choe

(“Choe”), the author of a comment66 in the Fordham International Law

Journal (“ILJ”), sued the Fordham University School of Law

(“Fordham”) and the ILJ.67 Choe claimed that Fordham and the ILJ

had mutilated his comment in the ILJ and thus violated his common

law “moral rights” and � 43(a) of the Lanham Act.68

According to Choe, he had written the note for the ILJ and

reviewed the note with the IL’s editors before the note was

published.69 Once the note was published, however, Choe was

“horrified to discover numerous alleged substantive and typographical

errors.”70 Choe approached two Fordham law professors about his

grievances, and they agreed that Choe and the ILJ had three options. 71

The ILJ could: (1) publish an errata sheet, (2) republish a corrected

bound reprint of Choe’s comment that could be placed next to the

original bound volume, or (3) republish a corrected version of Choe’s

comment in a new issue of the ILJ and “send a sticker to be placed on

62 Id. at 125.

63 Id. at 126.

64 Id.

65 920 F. Supp. 44 (S.D.N.Y. 1995)

66 Choe, Jerry, Parent-Right Invocation of Rights for U.S. Subsidiaries of

Japanese Companies under U.S.-Japan Treaty of Friendship, Commerce, and

Navigation, 15 FORDHAM INT’L L.J. 1130 (1992).

67 920 F. Supp. at 45.

68 Id.

69 Id. at 45-46.

70 Id. at 46.

71 Id.

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the front page of the original article to all subscribers, alerting them to

the reprinted Comment."72 Although Choe, the professors, and the ILJ

initially agreed that the third option was the best, the professors

reconsidered after reading Choe's comment and the changes suggested

by Choe.73 When negotiations with Fordham       and the ILJ failed to

satisfy Choe, he brought a suit against them in the United States

District Court for the Southern District of New York.74

The court first distinguished Choe's claims from those in Gilliam,

noting that Choe presented no evidence that a reader of his comment

would be so confused by the mistakes in the comment that the reader

would fail to understand the comment's meaning.75 The court then

turned to Choe's moral rights claim and quickly dispatched it.76 The

court stated that "[t]here is no federal claim for violation of plaintiffs

alleged ‘moral rights.””77  Furthermore, the court rejected Choe’s

argument that Article 6bis of the Berne Convention gave him a cause

of action for the violation of his moral rights in federal court.78 The

court then held that:

because the law of this Circuit does not recognize an author’s common

law “moral rights” to sue for alleged distortion of his written work,

plaintiffs purported “moral rights” claim is dismissed. Absent federal

jurisdiction, there is no reason to hear plaintiffs pendent state law claims

in this court, and they too are dismissed.79

Thus, the Choe court flatly dismissed the claim of a moral right

violation in 1995, long after the supposed “implementation” of Berne.

72 Id.

73 Id.

74 Id. at 47.

75 Id. at 48.

76 Id. at 49.

77 Id.

7 Id. The court found that the “Convention itself, as adopted, does not create

federal common law action for violation of author’s ‘moral rights.”‘ Id. (citing 2

MELVILLE NIMMER AND DAVID NIMMER, NIMMER ON COPYRIGHT � 8D.02[D], 8d-

15-30 (1994).

79 Id.

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B. VARA cases

Although VARA was designed to protect moral rights, VARA has

not always been effective in protecting the rights of creative artists.

VARA has three distinct shortcomings. First, it protects only a specific

type of artist. Second, it protects only certain types of art.81 Finally,

even when the VARA definitions of “visual artist” and “visual art” are

met, a number of exceptions may still operate to prevent the artist from

being protected.82 One particularly interesting area is where VARA

rights come into direct conflict with private and public property rights.

In Carter v. Helmsley Spear, Inc.,83 the plaintiffs sought a

permanent injunction that would prevent the defendant,84 a commercial

building owner, from destroying, modifying, or removing a large work

of visual art that the plaintiff artists had been commissioned to install

85

by the defendant’s tenant.  The District Court enjoined the building’s

manager and owner from altering the work during the lifetime of the

three artists.86 On appeal, the United States Court of Appeals for the

Second Circuit examined the relationship between VARA and moral

rights.87 The Carter court commented that American courts typically

declined to inject the concept of moral rights into American law, opting

instead to recognize moral rights under the guise of other legal

theories.88 However, the court also noted VARA, Gilliam,89 and the

enactment in eleven states of moral rights statutes as evidence that

moral rights are being addressed in American law.90 The Carter court

took a detailed look at VARA, but ultimately held that the artists’ work

was a work made for hire and thus exempted from VARA protection.

80 See supra Section II D.

81 Id.

82 Id.

83 71 F.3d 77 (2d Cir. 1995) (J. Cardamone, with Judges Altimari and Meskill).

84 A management company owned by the colorful and notorious Leona Helmsley.

$ 71 F.3d at 79.

86 Id. at 81.

87 Id. at 81-83.

18 Id. at 82. “[S]uch as copyright, unfair competition, invasion of privacy,

defamation, and breach of contract.”

89 See supra note 26.

90 Carter, 71 F.3d at 81-82.

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Accordingly, the Carter court reversed the lower court's order

enjoining the building's manager and owner from altering the work.91

In Lee v. A.R.T. Co.,92 the artist Annie Lee ("Lee") sued the A.R.T

Company     ("A.R.T.")  for  copyright infringement after     A.R.T.

purchased a number of Lee's small lithographs and note cards, mounted

them on ceramic tiles, and resold them.93 Lee argued that the tiles

were derivative works, and she cited 17 U.S.C. � 106(2) and Mirage

Editions, Inc. v. Albuquerque A.R. T. Co.94 in support of her position.95

Although the facts in Lee were quite similar to Mirage Editions, the

Seventh Circuit rejected Lee's claims that the tiles constituted

derivative works.96

The   Seventh   Circuit's opinion  in  Lee has two      important

implications. First, the court declined to follow Mirage Editions.

Rather than following the Ninth Circuit's prior decision on nearly

identical facts that this was copyright infringement, the Seventh Circuit

balked:

If Lee (and the ninth circuit) are right about what counts as a derivative

work, then the United States has established through the back door an

extraordinarily broad version of author's moral rights, under which

artists may block any modification of their works of which they

disapprove. No European version of droit moral goes this far. Until

recently, it was accepted wisdom that the United States did not enforce

any claim of moral rights; even bowdlerization of a work was permitted

unless the modifications produced a new work so different that it

infringed the exclusive right under � 106(2).97

Second, the court interpreted the overlap of the copyright act and

VARA narrowly, holding that "It would not be sound to use � 106(2)

to provide artists with exclusive rights deliberately omitted from the

Visual Artists Rights Act."98 Thus, VARA, which was intended to

91 Id. at 88.

92 125 F.3d 580 (7th Cir. 1997).

93 Id.

9  856 F.2d 1341 (9th Cir. 1988).

9 Lee, 125 F.3d at 580.

96 Id. at 581-83.

97 Id. at 582.

98 Id. at 583.

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inject moral rights into American law, was used here to limit the extent

of moral rights. Because Lee's work did not fit the VARA definition,

she was denied protection even though the Ninth Circuit had protected

an artist under very similar facts before VARA was enacted.99

In English v. BFC & R East 11th Street LLC,'0� six artists

("English") who had created an "installation"'0'1 of artwork in a

community garden sued the City of New York ("the City") and the

developers of an affordable housing complex ("BFC") under VARA.'I2

English sought to enjoin the City and BFC from development of the

garden, and the City and BFC moved for summary judgment.103 The

English court recognized that "VARA was intended to protect the

'moral rights' of artists."104 Moreover, the court stated that "a violation

of VARA constitutes a prima facie showing of irreparable injury."',05

However, the court found that VARA was inapplicable to the case at

" Id. The court noted that � 106A(a)(3)(A) gives artists the right to "prevent any

intentional distortion, mutilation, or other modification of that work which would be

prejudicial to his or her honor or reputation."  The court stated that Lee had

"disclaimed any contention that the sale of her works on tile has damaged her honor

or reputation." Id. Furthermore, the court held that Lee's artwork did not fall within �

106A's definition of a "work of visual art" because the note cards and lithographs

were neither unique works nor limited editions of 200 copies or fewer that were

consecutively numbered and signed by the artist. Id.

100 No. 97 Civ. 7446 (WB), 1997 WL 746444 (S.D.N.Y. Dec. 3, 1997).

"   London's Tate Gallery has defined installation art as "art works which may

occupy all or any parts of a space, in or out of doors, and be made of any materials,

natural or manufactured, that fit the artist's purpose." (reprinted in Gordon Bum,

Why So Hard to Swallow?, THE INDEPENDENT-LONDON, Nov. 10, 1993, available

at 1993 WL 10893117). Here, the installation consisted, inter alia, of: five murals

and five sculptures that, in the context of the garden itself, constituted "a large

environmental sculpture encompassing the entire site and comprised of thematically

interrelated paintings, murals, and individual sculptures of concrete, stone, wood and

metal, and plants." English, 1997 WL 746444 at * 1.

Installations are frequently site specific. See Elizabeth Beauchamp, Entertainment,

THE EDMONTON JOURNAL, June 28, 1991, available at 1991 WL 7685319. Because

installations are designed for a specific space, they are virtually destroyed when

removed from that space.

102 English, 1997 WL 746444, at *1.

103 id.

104 Id. at *3.

105 id.

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hand because English's artwork was placed on the property illegally.

Thus, the court held that "VARA is inapplicable to artwork that is

illegally placed on the property of others, without their consent, when

such artwork cannot be removed from the site in question."'106

In Martin v. City of Indianapolis, the City of Indianapolis ("City")

granted sculptor Jan Randolph Martin ("Martin") permission to

construct a large stainless steel sculpture on land owned by John

Lafollette ("Lafollette").107 Martin worked on the sculpture during

weekends and holidays, and he completed it after two and one-half

years. 18 Five years later, the City determined that it was necessary for

the City to acquire the land on which the sculpture was located.109

Martin protested, and he also proposed donating his sculpture to the

City if the City agreed to pay for the cost of removing and reinstalling

the sculpture.110 The City subsequently acquired the land on which the

sculpture was located, and Martin again offered to donate the

sculpture."'   The City disregarded Martin's protests, however, and

contracted to have the sculpture demolished."12 When the sculpture

was demolished, Martin brought suit in the United States District Court

for the Southern District of Indiana, alleging that the City had violated

his right of integrity under VARA. 13

The City moved for summary judgment against Martin, asserting

four affirmative defenses.114 First, the City argued that Martin had

failed to show that his sculpture was a work of recognized stature.115

Second, the City argued that Martin's sculpture was advertising and

106 Id. at *4.

"07 982 F. Supp. 625, 628 (S.D. Ind. 1997).

108 Id.

109 Id.

110 Id.

I Id. at 629.

112 Id.

"3 Id. at 630. 17 U.S.C. � 106A(a)(3)(B) provides that "the author of a work of

visual art... shall have the right to prevent any destruction of a work of recognized

stature, and any intentional or grossly negligent destruction of that work is a violation

of that right.").

114 Martin, 982 F. Supp. at 630.

115 Id.

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thus not protected under VARA.”6        Third, the City argued that

Martin’s sculpture was a “work made for hire” and thus not protected

under VARA.117 Finally, the City argued that Martin had waived his

VARA rights.” 8

The Martin court rejected each of the City’s affirmative defenses in

turn. First, the court found that Martin had “produced significant

evidence, including exhibits and affidavits, tending to show that [his

sculpture] was a work of recognized stature.”’19  Because the City

failed to advance any factual dispute as to Martin’s evidence, the court

held that Martin’s sculpture was, in fact, a work of recognized

stature. 120

The court then turned to the City’s argument that Martin’s work was

advertising that did not enjoy VARA protection.121 The Martin court

found that “no reasonable construction of the facts in this case could

make [the sculpture] merely a piece of advertising material,” and the

court denied the City’s motion for summary judgment on that issue.122

The court also found that Martin’s sculpture was “a personal project not

actuated by a purpose to serve [Lafollette]” and rejected the City’s

argument that Martin’s sculpture was a “work made for hire.”123

Finally, the Martin court examined the City’s claim that Martin had

waived his VARA rights by signing a project agreement when he

obtained a variance from the city to build the sculpture.24 The court

reviewed the agreement between Martin and the City and found that:

(1) the contract obligated the City “to provide Martin with 90 days’

116 Id.

117 Id.

118 Id.

119 Id. at 631. Martin’s evidence included newspaper articles and letters with

favorable comments about the sculpture’s design, structure, and construction. Id at

630.

120 Id at 631.

121 Id.

122 Id. at 632. The court noted that the sculpture’s inclusion in Lafollette’s

advertising materials could not transform the sculpture into advertising “any more

than a photograph of the State Capitol included in an advertising medium would turn

the State Capitol into mere advertising.” Id.

123 Id. at 635.

124 Id.

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written notice to remove the sculpture," and (2) the contract "in no way

discusses or contemplates destruction of the sculpture."'125      After

dispensing with this last of the City's affirmative defenses, the Martin

court then denied the City's motion for summary judgment.126

The court then turned to Martin's motion for summary judgment.

Initially, the court noted that VARA:

protects both the reputations of certain visual artists and the works of art

they create. It provides these artists with the rights of "attribution" and

"integrity" .... These rights are analogous to those protected by Article

6bis of the Berne Convention, which are commonly known as "moral

rights." The theory of moral rights is that they result in a climate of

artistic worth and honor that encourages the author in the arduous act of

creation. 127

The Martin court then found that: (1) Martin was the author or creator

of the work, (2) the sculpture met VARA's definition of a work of

visual art, and (3) the sculpture was protected under VARA's scope of

protection.128  Because Martin also showed that his sculpture was

intentionally destroyed by the City, the court held that Martin had

successfully established a VARA claim and granted Martin's motion

for summary judgment.129

C. State Moral Rights Statutes

In the late 1970s, a number of states began to pass state moral

rights statutes. Today, fourteen state statutes protect the moral rights

of artists, but the scope and protection of these statutes vary

significantly.'30 In areas where the state statutes and VARA protect the

125 Id. at 636.

126 Id. at 638.

127 Id. at 629-30. (quoting Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 83 (2d

Cir.1995) and H.R. Rep. No. 514, 101st Cong., 2d Sess. 5 (1990)).

128 Id. at 637-38.

129 Id. at 638. Although the court determined that Martin was entitled to

judgment, the court directed the parties to brief the issue of damages or request an

evidentiary on that issue before the court entered its final judgment. Id.

130 See Geri J. Yonover, The Dissing of Da Vinci: The Imaginary Case of

Leonardo v. Duchamp: Moral Rights, Parody, and Fair Use, 29 VAL. U. L. REV.

935, 957-962 (1995). See also P.R. Laws Ann. tit. 31, �� 1401-1401(h) (1993)

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same subject matter and provide equivalent rights, VARA expressly

preempts the state statutes.      Furthermore, implied preemption may

occur, even when state statutes are not “equivalent” under � 301, where

the state statutes frustrate VARA’s objectives.’32

1. California

California’s Art Preservation Act (“CAPA”)133 is designed to

prevent people who acquire “fine art” from altering or destroying it.134

CAPA begins with a legislative finding and declaration:

[T]he physical alteration or destruction of fine art, which is an

expression of the artist’s personality, is detrimental to the artist’s

reputation, and artists therefore have an interest in protecting their works

of fine art against any alteration or destruction; and that there is also a

public interest in preserving the integrity of cultural and artistic

creations. 135

CAPA protects integrity by prohibiting anyone other than the artist

from intentionally altering, defacing, destroying, or mutilating a work

of fine art.136 In    addition, these prohibitions apply to       framers,

conservers, or restorers of art who alter, deface, or mutilate a work of

fine art through gross negligence.’37     Remedies for artists who are

(Puerto Rico’s statutory provisions that recognize an author’s exclusive rights

analogous to the moral right-i.e. the creative artist’s exclusive enjoyment of the

benefits of her artwork and the complete power dispose of her work in any manner

she feels appropriate).

131 17 U.S.C. � 301 (1992).

132 See Yonover, supra note 129, at 957.

133 CAL. CIV. CODE � 987 (West Supp. 1996). See generally G.L. Francione, The

California Art Preservation Act and Federal Preemption by the 1976 Copyright

Act-Equivalence and Actual Conflict, 18 CAL. W. L. REV. 189 (1982); John G.

Petrovich, Artists’ Statutory “Droit Moral” in California: A Critical Appraisal, 15

Loy. L.A. L. REV. 29 (1981).

134 CAL. CIV. CODE � 987 (West Supp. 1996).

.   Id. at � 987(a). CAPA was enacted with two goals in mind. First, “to uphold

the artist’s reputation, since fine art is ‘an expression of the artist’s personality’ thereby

triggering the artist’s interest in protecting the work; and [second] to promote the

‘public interest in preserving the integrity of cultural and artistic creations.”‘ Yonover,

supra note 128, at 957.

136 CAL. CIV. CODE � 987(c)(1).

“‘ Id. � 987(c)(2).

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MORAL RIGHTS OF ARTISTS

injured by violations of CAPA include injunctive relief, actual and

punitive damages, reasonable attorneys' and expert witness fees, and

"[a]ny other relief which the court deems proper.”138

In Lubner v. City of Los Angeles,139 a substantial amount of the

life’s work of two artists, Lorraine and Martin Lubner, was destroyed

when a City of Los Angeles trash truck parked atop a hill rolled down

and smashed through their home, damaging the couple’s artwork,

which included drawings, paintings, posters, and prints.140        The

Lubners disputed the value of the art with their homeowners insurance

carrier, and they recovered approximately $260,000 for the artwork in

arbitration.’41 The Lubners then filed an action in negligence against

the City of Los Angeles (“the City”) for damages to their artwork that

exceeded their insurance policy.142   At trial, the Lubners sought to

introduce evidence showing their experience and stature as artists;143

however, the evidence was precluded by rulings on the City’s motions

in limine.144

On appeal, the Lubners argued that, under CAPA, they had “the

right to be compensated for damages to their artistic reputation

resulting from the destruction of their paintings.””45 The California

Court of Appeal, Second District, disagreed, holding that CAPA did

not provide a claim for damages when the destruction of fine art was

13 Id. � 987(e)(1-5) (“In the event that punitive damages are awarded, the court

shall, in its discretion, select an organization or organizations engaged in charitable or

educational activities involving the fine arts in California to receive any punitive

damages.”) Id. at

� 987(e)(3).

139 53 Cal. Rptr. 2d 24 (1996).

140 Id. at 26.

141 Id.

142 Id.

141 Id Mr. Lubner had been an instructor of drawing and painting at the University

of Southern California, the University of California at Los Angeles, and the College

of Creative Studies in Santa Barbara. His paintings “have been exhibited throughout

the United States, Italy, England, and Scotland,” and Ms. Lubner’s works “have been

exhibited throughout California and London.” The Lubners’ artistic works had been

sold to collectors, museums, and various public collections since 1954. Id.

I” Id. at 26-27.

145 Id.

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the result of simple negligence.146 Furthermore, the court found that

CAPA    appeared to have been preempted by VARA.147 Thus, the

Lubner court found no error in the trial court’s preclusion of evidence

concerning the Lubners’ loss of reputation.148

Earlier California cases have reached varying results when

determining the scope of CAPA. In Robert H. Jacobs, Inc. v. Westoaks

Realtors, Inc.,149 the California Court of Appeal, Second District, held

that architectural plans were not covered by CAPA. 15     However, in

Botello v. Shell Oil Co.,151 the same California Court of Appeal held

that a mural painted on the wall of a service station was protected by

CAPA.152

In Botello, the plaintiffs were artists who had been hired by Shell

Oil Company (“Shell”) to paint a large mural on the wall of a Shell

service station.’53   The mural, entitled “Filling Up On Ancient

Energies,” portrayed themes of Hispanic culture and covered roughly

1200 square feet.’54 The artist’s names and addresses were included in

the mural, and they received favorable publicity from it. 155 Eight years

later, Shell destroyed the mural to build a parking lot.’56 The plaintiffs

then brought an action seeking damages under CAPA.157

146 Id. at 29.

147 Id. at 28 (“[I]t appears that section 987 has been preempted by the Visual

Artists Rights Act [of 1990]“).

148 Id. at 29. The court also held that there is no implied remedy under CAPA for

the destruction of an artist’s work due to simple negligence, and that the Lubners

were not entitled to recover damages for emotional distress resulting from the

negligent destruction of their artwork. Id..

149 205 Cal. Rptr. 620 (1984).

“‘ Id. at 624 (concluding that architectural plans are not protected by CAPA

because they do not fall under the definition of “fine art” as “an original painting,

sculpture, or drawing, or an original work of art in glass, of recognized quality, but

shall not include work prepared under contract for commercial use by its purchaser”

(citing CAL. CIV. CODE � 987(b)(2)).

… 280 Cal. Rptr. 535 (1991).

152 Id. at 540.

153 Id. at 536.

154 Id.

155 Id.

156 Id.

157 Id.

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At trial, the plaintiffs presented evidence that the mural could have

been removed from the wall; thus, the mural was not exempted from

CAPA protection by the exception for art that cannot be removed from

a building without damage to the art or the building. 158 The defendants

argued that a mural was not one of the types of art protected by

CAPA.159

The Botello court found that a mural was a form of painting and

then concluded that California's legislature "intended the term 'fine art'

to include paintings in the form of murals that otherwise qualify for

protection under [CAPA].”160

2. Connecticut

Connecticut’s Art Preservation and Artists’ Rights statute provides

that “[n]o person, except an artist who owns and possesses a work of

fine art which the artist has created, shall intentionally commit, or

authorize the intentional commission of, any physical defacement or

alteration of a work of fine art.”’161 In addition, the artist maintains the

right to retain authorship at all times. 62 To effectuate the rights of

artists, the statute allows artists to seek injunctive relief, actual

damages, reasonable attorneys’ and expert witness fees, and any other

relief that the court deems proper.’63

3. Illinois

Illinois statutes do not provide a creative artist with any specific

moral right protections. However, the Illinois Consignment of Art Act

(“ICAA”)164 holds art dealers “strictly liable for the loss of or damage

to [a] work of fine art while it is in the art dealer’s possession.”’165

158 Id.

159 Id.

160 Id. at 540.

161 CONN. GEN. STAT. ANN. � 42-116t(a) (West 1992).

162 Id. �42-116t(b).

163 Id. � 42-116t(c). (unlike the California statute, the Connecticut statute does not

provide for punitive damages).

’64 ILL. COMP. STAT. ANN. ch. 815, �� 320/1 to /8 (West 1993).

165 Id. � 320/2(5).

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Under ICAA, when an artist delivers one of their works of fine art to a

dealer, the art becomes “trust property and the art dealer is trustee for

the benefit of the artist until the work of fine art is sold to a bona fide

purchaser or returned to the artist.”’166 ICAA allows the art dealer to

display or use the artwork “only if notice is given to users or viewers

that the work of fine art is the work of the artist.”’167 Thus, ICAA does

provide a limited analog for the right of paternity-the right to be

associated with their art when it is displayed by an art dealer.

However, this statutory right is of questionable value since such

identification is already commonplace and typically covered by the

contractual consignment agreement in any event.

If an art dealer violates the ICAA, the dealer may be subject to a

$50 fine as well as “actual damages, if any, including the incidental

and consequential damages, sustained by the artist by reason of the

violation and reasonable attorneys’ fees.”168

One of the few decisions in which an artist’s moral rights were

found not to have been preempted by VARA arose in Illinois. In

Gegenhuber    v. Hystopolis   Production, Inc.,169 plaintiff John

Gegenhuber (“Gegenhuber”) was part of an ensemble that wrote,

designed, constructed, produced, and performed puppet shows in the

Chicago area.170 As part of the ensemble, Gegenhuber adapted Elmer

Rice’s play The Adding Machine for performance as a puppet show,

and he also created and constructed many of the major character

puppets for The Adding Machine.171

The Adding Machine was successful with the critics and the public,

but Gegenhuber left the ensemble after the show’s successful initial

172

run.     Without Gegenhuber’s knowledge, the ensemble presented

another extended run of The Adding Machine.173 The second run’s

playbill credited Gegenhuber as only one of several people who had

166 Id. � 320/2(3).

167 Id. � 320/5(2).

168 Id. at � 320/7(2).

169 No. 92-C-1055, 1992 WL 168836 (N.D. Ill. July 13, 1992).

170 Id. at *1.

171 Id.

172 Id.

7 Id (the second run of The Adding Machine ran from October of 1990 until May

of 1991).

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MORAL RIGHTS OF ARTISTS

contributed to the production.'74 Gegenhuber discovered this and sued

in state court, alleging that the ensemble had violated: (1) his right of

attribution, (2) his right to his fair share of the profits, and (3) his

ownership interest in certain puppets.175 The defendants argued that

VARA preempted Gegenhuber's claims, and they sought to remove the

case from Illinois state court to federal court.176

The Gegenhuber court first noted that VARA's definition of "work

of visual art" is silent as to many types of copyrightable artwork,

including choreographed works, dramatic, literary, and musical works,

pantomimes, and sound recordings, "presumably because these types

of works are not generally perceived to be visual in nature."'177 The

Gegenhuber court then observed that works which were not included in

VARA's definition of "visual art" provided authors no right to

attribution under VARA, even     if the  work   was   otherwise

copyrightable.'78  Accordingly, the court held that Gegenhuber's

attribution claim was not preempted by VARA and remanded the

proceeding back to Illinois state court. 179

On remand, the trial court entered a judgment in favor of

Gpgenhuber and a co-plaintiff for $50,000 and issued a permanent

injunction prohibiting the defendants from performing The Adding

Machine without properly crediting Gegenhuber.'80   Thus, although

state moral rights statutes have become substantially limited after the

enactment of VARA, they do retain some viability in areas that VARA

does not address.

174 Id.

175 Id. at *3.

176 Id.

177 Id.

178 Id.

171 Id. at *5.

180 This judgment was upheld on other grounds by the Illinois Court of Appeals,

First District in Gegenhuber v. Hystopolis Prod., Inc., 660 N.E.2d 107 (1995).

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4. Louisiana

The Louisiana Artists’ Authorship Rights Act (“LAARA”)”’8

prohibits anyone other than the artist or a person acting with the artist’s

consent from knowingly displaying, making accessible, publishing, or

reproducing an artist’s work in a modified, mutilated, defaced, or

altered form.82 Moreover, LAARA prohibits the knowing display or

publication of artistic work:

if it is in its original or reproduced form and is displayed, made

accessible to the public, or published as being the work of the artist,

when the work is known to be generally regarded by the public as that of

the artist, or under circumstances in which it would be reasonably

regarded as being the work of the artist, and damage to the artist’s

reputation is reasonably likely to result therefrom.”’183

Finally, anyone who alters, defaces, modifies, or mutilates a work of

fine art through gross negligence is also liable under LAARA.184

Artists aggrieved under LAARA are provided with a cause of action

for both “legal and injunctive relief.”’185

5. Maine

Maine’s art preservation statute (“MAPS”) covers both of the two

main moral rights concepts.’86 MAPS protects integrity by prohibiting

the knowing display or publication of a:

work of fine art of [an] artist or a reproduction of a work of fine art of

that artist in an altered, defaced, mutilated or modified form if the work

is displayed, published or reproduced as being the work of the artist or

under circumstances under which it would reasonably be regarded as

being the work of the artist, and damage to the artist’s reputation is

reasonably likely to result from  the display, publication   or

. . 187

reproduction.

181 LA. REV. STAT. ANN. �� 51:2151-2156 (West 1996). See generally Jimmy A.

Frazier, On Moral Rights, Artist-Centered Legislation, and the Role of the State in

Art Worlds: Notes on Building a Sociology of Copyright Law, 70 TUL. L. REV. 313

(1995).

182 LA. REV. STAT. ANN. � 51:2153(1) & (2).

183 Id. � 51:2153(3).

1I4 Id. � 51:2155(A).

185 Id. � 51:2156(A).

186 ME. REV. STAT. ANN. tit. 27, � 303 (West Supp. 1995).

187 Id. � 303(2).

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MORAL RIGHTS OF ARTISTS

MAPS also protects paternity by providing the artist with the right at

all times to claim  or disclaim authorship of her work of fine art.188

Finally, MAPS protects artists against grossly negligent conservation

work on a piece of fine art.189 MAPS provides aggrieved artists with a

cause of action for both legal and injunctive relief.190

6. Massachusetts

The Massachusetts Art Preservation Act ("MAPA")19' begins with

a declaration and finding by the general court that reads exactly the

same as that of the California legislature's.192 MAPA gives creators of

fine art both of the major moral rights protections. MAPA protects

integrity by prohibiting anyone other than the artist from intentionally

committing or authorizing the intentional commission of any physical

alteration, defacement, destruction, or mutilation of a work of fine

art.193 MAPA covers the right of paternity by providing the artist with

the right to claim  or disclaim  authorship of her work of fine art.194

Remedies for artists aggrieved under MAPA include actual damages,

declaratory relief, injunctive relief, reasonable attorneys' and expert

witness fees, and any other relief that the court deems proper.'95

In Moakley v. Eastwick, the one reported decision under MAPA,

the Supreme Judicial Court of Massachusetts held that MAPA did not

188 Id. � 303(3).

189 Id. � 303(4).

1- Id. � 303(5).

'9' MASS. ANN. LAWS ch. 231, � 85S (Law Co-op. 1996). See generally Vance R.

Koven, Observations on the Massachusetts Art Preservation Act, 71 MASS. L. REv.

101 (1986).

192

[T]he physical alteration or destruction of fine art, which is an expression of the

artist’s personality, is detrimental to the artist’s reputation, and artists therefore have

an interest in protecting their works of fine art against such alteration or destruction;

and that there is also a public interest in preserving the integrity of cultural and

artistic creations.

MASS. GEN. LAWS ANN. ch. 231, � 85S(a). Compare CAPA’s legislative declaration

and finding, infra section III C(J).

193 MASS. ANN. LAWS ch. 231, � 85S(c).

194 Id. � 85S(d).

195 Id. � 85S(e).

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apply retroactively to cover works of fine art that were created before

the date when MAPA became effective.196

7. Nevada

Nevada statutes also protect the moral rights of creative artists.197

The right of integrity is protected by a prohibition on the display or

publication of an artist's work or a reproduction of an artist's work in an

altered, defaced, or mutilated form.198 Granting the artist the right to

have her name associated or disassociated with her work protects the

right of paternity.199 Artists who are aggrieved under the Nevada

statutes may bring an action for damages, reasonable attorney's fees,

and costs.200

8. New Jersey

New   Jersey's Artists' Rights Act ("NJARA")201 provides moral

rights protection to the creator of a work of fine art.202        NJARA

protects the right of integrity by providing that no person other than the

artist, or a person acting with the artist's consent, shall knowingly

display, publish, reproduce, or otherwise make accessible to the public,

196 666 N.E.2d 505 (Mass. 1996).

"   NEV. REV. STAT. ANN. �� 597.720 to .760 (Michie 1994). See also Property;

Intellectual Property- Artists'Droit Moral, 1989 PAC. L.J. REV. NEV. LEGIS. 177.

"9 NEV. REV. STAT. ANN. � 597.740(1).

199 Id. � 597.730.

200 Id. � 597.740(2).

20 1 N.J. REV. STAT. ANN. �� 2A:24A-1 to 24A-8 (West 1987). The New Jersey

Legislature's findings and declarations include:

a. The physical state of a work of fine art is of enduring and crucial importance to

the artist and the artist's reputation;

b. There have been cases where works of art have been altered, defaced, mutilated

or modified, thereby destroying the integrity of the artwork and causing a loss to the

artist and the artist's reputation;

c. Alteration, defacement, mutilation or other modification of an artist's work may

be prejudicial to his career and reputation; and

d. There are circumstances when an artist has the legal right to object to the

alteration, defacement, mutilation or other modification of his work or to claim or

disclaim authorship of a work of art.

Id. � 2A:24A-2.

202 Id. � 2A:24A-3.

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“a work of fine art of that artist in an altered, defaced, mutilated or

modified form, if damage to the artist’s reputation is reasonably likely

to result and if the work is displayed as being the work of the artist.’

NJARA also provides paternity rights by providing the artist with the

right to claim  or disclaim  authorship at all times.2�4 In addition,

negligent conservation work may result in a violation of NJARA.2�5

Artists aggrieved under NJARA have a cause of action for both legal

and injunctive relief.206

9. New Mexico

New Mexico’s Fine Art in Public Buildings Act (“FAPBA”),207 the

oldest of the state moral rights statutes, protects the moral rights of

integrity and paternity so long as the work fits New Mexico’s definition

of fine art of recognized quality.208 FAPBA protects the moral right of

integrity by prohibiting anyone other than the artist from intentionally

altering, defacing, destroying, or mutilating “a work of fine art in

public view.”209 FAPBA protects the right of paternity by providing

the artist with the right to claim or disclaim authorship credit in a work

of fine art.210 FAPBA provides artists with the right to seek damages,

injunctive relief, reasonable attorney’s fees, and “any other relief which

the court deems proper.”21′

10. New York

New York’s Artists’ Authorship Rights Act (“AARA”)212 protects

both integrity and paternity.213 AARA protects integrity by prohibiting

203 Id. � 2A:24A-4.

204 Id. � 2A:24A-5.

20. Id. � 2A:24A-6(c).

206 Id. � 2A:24A-8(a).

207 N.M. STAT. ANN. �� 13-4B-1 to 13-4B-3 (Michie 1997 Repl.).

208 Id. � 13-4B-2B.

209 Id. � 13-4B-3A.

210 Id. � 13-4B-3B.

211 Id. � 13-4B-3C.

212 N.Y. ARTS & CULT. AFF. � 14.03 (McKinney Supp. 1996).

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anyone other than the artist from knowingly displaying or publishing a

work of fine art or a reproduction of the work in a mutilated, modified,

defaced, or altered form.214    AARA    protects the moral right of

paternity by providing the artist with the right to claim or disclaim

authorship of a work at all times.215 Under AARA, artists my sue for

legal and injunctive relief.216

Creative artists have had little success in obtaining relief under

AARA. First of all, claims under AARA can be preempted by the

federal Copyright Act. For example, in Tracy v. Skate Key, Inc.,217 an

artist hired to paint a “graffiti” styled mural in a Bronx roller skating

rink sued the owners of the rink after owners manufactured and sold

merchandise with his mural design on flyers, jackets, skate bags, and

T-shirts.218 The artist (“Tracy”) claimed violations of the Copyright

Act, the Lanham Act, and AARA.21 Defendant Skate Key moved for

summary judgment, and the United States District Court for the

Southern District of New York allowed Tracy to proceed under the

Lanham Act and a theory of fraudulent misrepresentation. 22 However,

the court held that Tracy’s AARA claim had been preempted by the

Copyright Act.221

In Morita v. Omni Publications Int’l, Ltd.,222 Minoru Morita

(“Morita”) designed a poster for The American Peace Posters

Exhibition to commemorate the 40th anniversary of Hiroshima’s

2″3 Id. See generally Edward J. Damich, The New York Artists’Authorship Rights

Act: A Comparative Critique, 84 COLUM. L. REv. 1733 (1984); Sarah A. Smith,

Note, The New York Artists’ Authorship Rights Act: Increased Protection and

Enhanced Status for Visual Artists, 70 CORNELL L. REv. 158 (1984).

214 N.Y. ARTS & CULT. AFF. � 14.03(1).

215 Id. � 14.03(2).

216 Id. � 14.03(4)(a).

217 697 F. Supp. 748 (S.D.N.Y. 1988).

2″8 Id. at 749.

219 Id.

220 Id. at 751.

221 Id. (AARA “was preempted by the Copyright Act because it tracks the rights

protected by the Copyright Act.”). Tracy proceeded with his other claims and

ultimately prevailed without AARA. See Tracy v. Skate Key, Inc., 1990 WL 9855

(S.D.N.Y. 1990).

222 741 F. Supp. 1107 (S.D.N.Y. 1990).

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bombing.223 The poster juxtaposed photographs of four pieces of a

glass peace dove that appeared to be shattering in flight with a red spot

resembling a pool of blood.224 It bore the words “Give Peace a

Chance” and “Hiroshima Appeals.”225 Morita filed an application for

copyright registration of the poster, and a certificate of registration was

226

issued..  The poster received several awards, and it is now part of the

Hiroshima Museum of Modem Art’s permanent collection.227

Three years later, one of the photographers (“Kan”) who had

helped create the poster authorized Omni Magazine to use an unused

“out-take” from the dove photography session as part of the cover

photograph for Omni’s May 1988 issue.228 The cover story’s headline

read Nuclear Renaissance: Reactors Are Back and the Reactions Are

Good, and the cover photograph was credited not to Morita, but to

Kan.229 However, the cover photograph’s credit indicated that the

unused out-take was “[p]art of the permanent collection of the

Hiroshima Museum of Modem Art” and “shot by New York-based

photographer Kan to commemorate the fortieth anniversary of the

bombing of Hiroshima.”,230

Morita sued, asserting claims for copyright infringement, violation

of � 43(a) of the Lanham Act, and � 14.03 of the New York Arts and

Cultural Affairs Law (“AARA”).231 Morita’s AARA claim alleged that

the defendants had altered, defaced, mutilated, and modified his anti-

nuclear sculpture by placing it in a pro-nuclear context without his

consent, thereby damaging his reputation.232 The United States District

Court for the Southern District of New York disagreed, holding that

“the picture on the Omni magazine cover is not a mutilation or

alteration of Morita’s work at all. Nothing about it was changed

223 Id. at 1109.

224 Id.

225 Id. at 1110.

226 Id.

227 Id.

228 Id.

229 Id.

230 Id.

231 Id. at 1109.

232 Id. at 1114.

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between its creation and the use about which Morita is complaining.

Juxtaposition with   a magazine headline is not an       alteration,

defacement, mutilation or modification.’”233 Accordingly, the court

rejected Morita’s AARA claim.234 Thus, the Morita court found that

the placing of Morita’s anti-nuclear artistic concept in Omni’s pro-

nuclear context did not amount to a mutilation or alteration under

AARA.

Wojnarowitz v. American Family Association235 is one of the few

reported decisions that actually holds for a plaintiff under AARA, yet

its holding is fairly limited.  The plaintiff, David Wojnarowicz

(“Wojnarowicz”), was a multi-media artist,236 and many of his works

focused upon “the devastation wrought upon the homosexual

community by the AIDS epidemic.”237       The defendant, American

Family Association (“AFA”), was a non-profit corporation “chartered

for the declared purposes, inter alia, of promoting decency in the

American   society  and  advancing   the Judeo-Christian  ethic in

America.”,238  AFA    had been actively campaigning against the

subsidization of art that the AFA had characterized as “blasphemous”

and “offensive” by the National Endowment for the Arts.239

In 1990, the AFA published and distributed a pamphlet as part of

their efforts to halt public funding of artwork it deemed offensive.240

Without Wojnarowicz’ permission, the AFA photocopied fourteen

fragments of Wojnarowicz’ works that the AFA found particularly

offensive and reproduced those fragments in their pamphlet.241

Wojnarowicz sued, claiming that the fragmented and photocopied

reproductions of his work violated the AARA242 The court granted

both a prohibitive injunction that prevented any further publication of

233 Id. at 1114-15.

234 Id. at 1115.

235 745 F. Supp. 130 (S.D.N.Y. 1990).

236 Id. at 133 (Wojnarowicz’ work “includes paintings, photographs, collages,

sculptures, installations, video tapes, films, essays and public performances”).

237 Id.

238 Id.

239 Id.

240 Id. at 134.

241 Id.

242 Id. at 141.

[Vol 6:1

1998]            MORAL RIGHTS OF ARTISTS                         69

Wojnarowicz’ work by AFA and a mandatory injunction requiring the

AFA to conduct a corrective mailing that would ensure Wojnarowicz’

right of disattribution under AARA.243 However, the court found that

Wojnarowicz had not proved any actual damages, so it awarded him

with only nominal damages in the amount of one dollar.244

11. Pennsylvania

Pennsylvania’s Fine Arts Preservation Act (“FAPA”)245 protects

both of the basic moral rights. FAPA protects integrity by prohibiting

anyone other than the artist from altering, defacing, destroying, or

mutilating a work of fine art.246 FAPA provides an artist with the right

of paternity by granting the author the right to claim or disclaim

authorship of her work at any time.247 An artist aggrieved under FAPA

is provided with the right to actual and punitive damages, injunctive

relief, reasonable attorney and expert witness fees, and any other relief

that the court deems proper.248

12. Rhode Island

Rhode Island’s Artists’ Rights Act (“RIARA”)249 protects integrity

by prohibiting anyone other than the artist from knowingly displaying

or publishing fine art “in an altered, defaced, mutilated, or modified

form.”’250  RIARA    also provides artists with paternity rights by

providing them at all times with the right to claim or disclaim

authorship of their works of fine art.251

The statute allows for either legal or injunctive relief.252

243 Id. at 148-49.

244 Id. at 149.

245 PA. STAT. ANN. tit. 73, �� 2101-10 (1993).

246 Id. � 2104.

247 Id. � 2103.

248 Id. � 2105.

249 R.I. GEN. LAWS �� 5-62-2 to 62-6 (1987).

250 Id. � 5-62-3.

251 Id. � 5-62-4.

252 Id. � 5-62-6(a).

UCLA ENTERTAINMENT LAW REVIEW

13. South Dakota

South Dakota provides limited moral rights protection to artists

whose artwork has been acquired by the state of South Dakota.253 The

South Dakota statute protects integrity by providing the artist with the

“right to prevent degradation, mutilation or aesthetic ruining of the

work.”,254 South Dakota protects paternity rights by providing artists

with the right to claim authorship and have their names associated with

their work, but the statute is silent as to disassociation.255

14. Utah

Utah’s Arts Development Act (“UADA”)256 provides a moral right

protection, but the Utah statute is extremely limited. UADA only

extends protections to artists who are commissioned by Utah’s Percent-

for-Art Program to create a work of art.257 Furthermore, those artists

that do qualify are provided only with paternity rights to claim

authorship and “to deny further association of the artist’s name with or

authorship of the work of art if conservation work is done by a person

other than the artist, which in the opinion of the artist damages its

integrity.” 258 Integrity rights are protected through two very narrow

provisions.9 First, the artist has the right of first refusal “to conduct

all repair and conservation work on the work of art in accordance with

accepted principles of professional conservation.”,260  Second, the

statute gives artists the right of first refusal to buy their work back from

Utah should the state decide to sell it.261

253 S.D. CODIFIED LAWS � 1-22-16 (1992).

254 Id. � 1-22-16(3).

255 Id. �� 1-22-16(1) & (2).

256 UTAH CODE ANN. � 9-6-409 (1992).

257 Id.

258 Id. �� 9-6-409(2) & (5).

259 Id. � 9-6-409(4).

260 Id. � 9-6-409(4)(a).

261 Id. � 9-6-409(4)(b).

[Vol 6:1

1998]               MORAL RIGHTS OF ARTISTS                              71

IV. CONCLUSION

Many of America’s neighbors and trading partners protect the

moral rights of artists. For example, both Canada and Mexico protect

moral rights.262 England has long recognized the moral rights of

artists,263 and the European Union also recognizes the moral right.264

262 Canada’s moral rights provisions are located in Canada’s Copyright Act at

R.S.C. ch. C-42, amended by R.S.C. ch. 10 (1st Supp. 1985), ch. 1 (3d Supp. 1985),

ch. 41 (3d Supp. 1985), ch. 10 � 14.1(3) (4th Supp. 1985). Mexico’s moral rights

provisions are located in Mexico’s Ley Federal de Derochos de Autor, D.O., Dec. 21,

1963, art. 3, translated in UNESCO, Copyright Laws and Treaties of the World

(1993).

For an interesting comparison of Canada’s monist view of the moral right (similar to

that of Germany’s) and Mexico’s dualist view (similar to that of France’s) see Stephen

Fraser, Berne, CFTA, NAFTA, & GA TT: The Implications of Copyright Droit Moral

and Cultural Exemptions in International Trade Law, 18 HASTINGS COMM. & ENT.

L.J. 287, 293-95 (1998).

263 See Clark v. Associated Newspapers Ltd., 1 All E.R. 959 (Chancery Div.

1998) (finding that a newspaper’s parody of a Conservative party politician’s diaries

along with a photograph of the politician and his name violated both the “the

common law tort of passing off and the statutory tort of false attribution of

authorship”); Morrison Leahy Music Ltd. v. Lightfoot Ltd., Chancery Div.,

Transcript: Marten Walsh Cherer, (Hearing Date March 21, 1991) (finding that a

remix of five George Michael compositions by the licensees of the compositions

entitled Michael to an injunction and costs where the license agreement expressly

reserved Michael’s moral rights); Joseph v. National Magazine Co., 3 WLR 366, 369

(Chancery Div. 1958) (finding that the author of an article about jade “was entitled to

write his own article in his own style, expressing his own opinions, and was not

bound to submit to have his name published as the author of a different article

expressing other opinions in a different style” and granting the author �200 damages);

Frisby v. British Broadcasting Corp., 2 WLR 1204, 1218 (Chancery Div. 1967)

(finding that the removal of one line of plaintiffs play was an impermissible

“structural” change in the play which violated the plaintiffs rights under a

screenwriter’s guild agreement).

264 See Radio Telefis Eireann v. European Commission, 1995 FSR 530, para. 73

(E.C.J.) (The European Community’s highest court states that “copyright also

includes moral rights and that the protection of those interests is so important a

component of copyright that it must necessarily be taken into consideration in

defining the essential function of copyright.”); Collins v. Imtrat Handelsgesellschaft,

1994 FSR 166, 171 (E.C.J.) (“The specific purpose of these rights, as governed by

national law, is to protect the moral and economic rights of their owners. The

UCLA ENTERTAINMENT LAW REVIEW

France and Germany, the two leading countries in originating the

concept of the moral right, continue to recognize it.265 Finally, the

Republic of Singapore recognizes the moral right.266

America’s enactment of VARA and the state moral right statutes

are both positive steps towards recognizing the moral right of creative

artists, and some courts have recently suggested that the doctrine of

moral rights is “creeping” into American law. However, Botello,

Gegenhuber, Martin, and Wojnarowicz are the only four of these

seventeen moral rights cases to actually uphold the moral rights of

creative artists. Otherwise, these cases show that, although there may

be “creepings” and “glimmers” of the moral right in American law,

America is still a long way from recognizing the moral right.

Therefore, America’s protection of the moral rights of artists must be

carefully examined and refined in order to bring America’s recognition

of the moral right closer into line with Berne’s requirements and the

protections afforded by America’s trading partners.      In doing so,

America will acknowledge the arts as a valuable cultural and economic

resource by protecting its creative artists.    More importantly, as

technological advances and changes in trade agreements draw together

the countries of the world, America cannot afford to be hindered by its

copyright policy of limited moral rights recognition.

protection of moral rights enables authors and artists to resist any distortion,

mutilation or other alteration of the work which would be prejudicial to their honour

or reputation.”); Independent Television Publications Ltd. v. EC Commission, 1991

FSR 678, 679 (Ct. First Instance) (Moral rights of copyright holders are protected

“within the meaning of Article 36 EEC, which is to protect the moral rights in the

work and ensure a reward for the creative effort, while respecting the aims of, in

particular, Article 86 EEC.”).

.65 See supra � IIA for historical information on French and German moral rights

recognition.

266 See Creative Technology, Ltd. v. Aztech Systems Ltd., 1997 FSR 491, para.

83 (Singapore Ct. App.) (finding that copyright owners who sell their copyrighted

work retain both economic and moral authorship rights described as “valuable

incorporeal rights”).

[Vol 6:1

Volume 03, Issue 2, pp 333-375, Hardaway

Commercial Speech and the University

Internet Account: Are Universities

Selling Out the Spirit of the First

Amendment?

Samantha Hardaway*

I.     INTRODUCTION

As many already know, the Internet is a complete network of

computers and underground lines connecting millions of users across

the globe. Enormous and, at times, dizzyingly progressive, the

Internet can transmit large quantities of information over great

distances in a matter of minutes. Small wonder, then, that the Internet

has become a gathering place for outspoken and easily distracted

computer aficionados.

Like most excursions, though, a ticket to cyberspace’ costs

money, and many would-be travelers cannot afford the connection

fees. Impoverished students would probably be among those without

access were it not for the academic Internet account, a cheap and

relatively effortless way to connect.  The university provides a

connection to the Internet backbone, establishes academic accounts for

Editor, UCLA Law Review, Volume 43. J.D., UCLA School of Law,

1996; B.A., Cornell University, 1993. For their insightful comments and guidance

during the development of this piece, I am grateful to Professors Julian Eule and

Eugene Volokh. I would also like to thank Daniel Clark, Travis Stansbury, and

Michael Wichman for their thoughtful contributions and diligent editing. Finally,

I dedicate this piece to my mother, father, and sister, who have blessed me with

their love and wisdom.

I    William Gibson, an award-winning science fiction writer, first coined the

term “cyberspace” in 1984. WILLLtM GIBSON, NEUROMANCER 51 (1984). Today

the term refers to the distance between computer users who are seamlessly linked by

an electronic network.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

each student, and best of all, pays for each user's connection.2 With

relative ease, students and faculty can communicate with others around

the globe, receive hours of free e-mail, gain access to large databases,

and link up to newsgroups. To gain access to the system, most new

users need only sign a contract promising that they will not disrupt the

university system or conduct illegal activity through the university

account.

Perhaps unwittingly, some new users will also agree to one

other condition imposed by the university that provides an Internet

account. Most will waive their rights to engage in commercial speech

on the Internet. This is a content-based restriction; the university is

banning all commercial speech that is transmitted through a particular

medium. Ordinarily, such a restriction might produce lawsuits from

those who wish to engage in commercial speech. However, anti-

commercial sentiment on the Internet, especially among the academics

who established the Internet for research purposes, may deter anyone

who would bring a claim based on the university's violation of First

Amendment free speech rights. The user who asserts a right to post

commercial messages on the Internet (also called the "Net") might be

forced off the Net by other users even before the university enforces

its regulations.3

Both public and private universities4 provide the academic

community with Internet access through regional links to a network

2    This Comment provides the viewpoint of the student/free rider, but it is a

rather simplistic portrayal of the truth. In truth, the university receives funding from

the government, from private donors, and even from the students themselves in the

form of registration fees. One author estimates that universities will pay between

$60,000 and $100,000 a year for a connection to the network. Tom Abate,

Information Highway May Soon Be Internet Toll Road; Privatizing Could Lead to

Fees For Cyberspace Travel, S.F. EXAMINER, July 8, 1994, at Al.

3    See infra note 22 for a discussion of the ways to eject a user from the

Internet.

4    Public high schools and elementary schools, as government-run institutions,

are also subject to the First Amendment. However, as this Comment goes to press,

these schools provide Internet accounts to their students less frequently than do

universities and thus are outside the scope of this piece.

334

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 335

backbone.’ However, only the public university must consider its

role as a public actor before it sculpts policy affecting the speech

traveling on that backbone. More than the private university, the

public university must be cautious when imposing restrictions on

individual rights.6    Especially as private companies begin to

underwrite the Internet backbone, the public university will have

difficulty claiming that the Internet is a government-owned forum for

speech.

This Comment will argue that public universities are violating

free speech rights when they seek to restrict all commercial speech on

Internet user accounts. Even as a less-protected form of speech,

commercial speech is entitled to First Amendment protection from

such a total ban. In Part I, the Comment will first describe the basic

technological principles of the Internet. Second, the history of the Net

will be considered in order to explain why universities and others do

not welcome commerce on the Net. Third, the role of universities in

the Internet’s evolution will be examined.

University policies restricting Internet commercial speech

implicate two doctrines of First Amendment jurisprudence: the public

forum doctrine and the commercial speech doctrine. In Part II of this

Comment, university-provided access to the Internet will be analyzed

according to the Supreme Court’s current public forum doctrine, yet

the Comment will show that public forum analysis is not the most

appropriate standard by which to judge speech on the electronic

forum. Part III suggests that commercial use of the Internet ought to

be governed by application of the commercial speech doctrine. By

focusing on the message and its audience, rather than the medium

5    Aside from access to the federal Internet backbone, many universities also

provide access to Local Area Networks (LANs). Such networks are not at issue

here, as they are established and governed according to the needs of a singular

population of academic users.

6    The First Amendment protects individual speakers only from state

incursions on freedom of speech. Even though a government entity will not

necessarily be considered a state actor for purposes of applying the First Amendment

merely because it helps to fund the development of Internet lines, the public

university acts in the capacity of state actor when it regulates the use of those lines.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

itself,7 the Comment seeks to develop a practical assessment of

Internet user rights and a workable standard for protecting those

rights. Specifically, the Comment argues that university restrictions

on commercial speech do not adequately serve the university's stated

interests in preventing congestion, avoiding undue cost, and preserving

the school's academic mission.      The Part III analysis ultimately

reveals that current restrictions on academic accounts are simply

overbroad.    Finally, Part IV   proposes an alternative to current

restrictions that would achieve government objectives while also

meeting constitutional requirements for narrow tailoring.

The treatment of commercial speech on the Internet has long-

range implications for many users: merchants who want to advertise

their products or services to a large consumer market; the remote

consumer who seeks the variety provided by many producers; and the

person who wants to conduct a simple exchange with a targeted and

willing group of like-minded individuals.       In addition, a court

determination of the worth of Internet commercial speech could affect

the tenor of a decision on a related issue, political speech on the

Internet. Both types of speech could potentially be considered non-

academic. However, political speech has traditionally received more

First Amendment protection than commercial speech8--perhaps

7    See Note, The Message In The Medium: The First Amendment on the

Information Superhighway, 107 HARv. L. REv. 1062 (1994). The Note predicts that

the Supreme Court, in its first attempts to grasp the intricate economic and

technological issues of this new medium, may give short shrift to First Amendment

concerns. Id. at 1083.

8    See, e.g., Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447,456 (1978) ("To

require a parity of constitutional protection for commercial and noncommercial

speech alike could invite dilution [of the First Amendment's guarantee for

noncommercial speech]. Rather than subject the First Amendment to such a

devitalization, we instead have afforded commercial speech a limited amount of

protection, commensurate with its subordinate position in the scale of First

Amendment values. . . .”). But cf. Steven H. Shiffrin, The First Amendment and

Economic Regulation: Away From a General Theory of the First Amendment, 78 Nw.

U. L. REv. 1212, 1218, 1220-21 (1983) (“[T]he [Virginia Pharmacy] Court never

admitted that commercial speech was less valuable than political speech . . .

[referring to Virginia State Bd. of Pharmacy v. Virginia Citizens Consumers

Council, Inc., 425 U.S. 748 (1976)]. Justice Blackmun labored to defend the

336

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 337

because political speech involves more self expression, is essential to

a representative democracy, or seems especially vulnerable to attack.

Thus, extending First Amendment protection to commercial speech

(often viewed as less worthy of such protection) indicates that political

speech should be similarly protected.

II.     AN EXPLANATION OF ELECTRONIC COMMUNICATION

The Internet is an intricate feat of cooperation between millions

of computers across the globe.9 Thankfully, though, most users will

never need to know the intricacies of a global computer network.’�

This is because computer scientists have labored to make the Internet

relatively comprehensible, affordable, and democratic. Theoretically,

this means that any person who has access to a computer-regardless

of his or her geographical location–can communicate with any other

computer user across Internet lines.”          Likewise, there is no

asserted equal relationship between commercial speech and political speech for the

Virginia Pharmacy majority.. … Justice Powell [in Ohralik] steered the Court to

accept a hierarchy of protected speech for the first time . . . .”). For further

discussion on the protection afforded to commercial speech, see infra text

accompanying notes 85-88.

9     Wired, a computer industry magazine, reported that as of July 1994, there

were 3.2 million computers connected directly to the Internet. WIRED, Oct. 1994,

at 34. The magazine noted that this figure included only direct connections, and not

all of the machines that are connected to a computer with a direct Internet

connection. Id. By January 1996, the Network Wizards Internet Domain Survey

reported that the number of hosts had increased to 9.4 million. Available via the

World Wide Web at http://www.nw.com. A host is a computer connected to the

Internet. The host may be a single-user computer, or it may support hundreds of

other users who wish to connect at the same time.

10    Before the advent of user-friendly interfaces, the Internet was a much more

exclusive domain. Using the Internet in the early days required both determination

and some experience in the burgeoning field of computer science. Not surprisingly,

the Internet of old was mainly populated by computer programmers.

11    The assumption that a would-be communicator has access to a computer is

not trivial. Internet speech is inherently limited to those who can obtain and afford

access to a computer.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

published age, gender, or race distinction between Internet users,

other than those that the users themselves specify.

The Internet facilitates access to three main computer services:

database retrieval," electronic mail (e-mail), and newsgroups.13 By

accessing these three services, a user can search large archives, talk

on-line ("chat") with other users, post messages aimed at a common

interest, subscribe to a Usenet newsgroup, and send letters to other

users.

The present-day Internet actually began in 1969, when the

United States defense department developed ARPAnet14 in order to

link university researchers, military research contractors, and the

Department of Defense via a computer network. Defense department

researchers also envisioned that ARPAnet would become the national

means for communication during a nuclear war; because the network

automatically reroutes its messages when any one link fails, the system

is almost invulnerable to attack or disruption.

By 1980, though, the National Science Foundation (NSF) had

obtained a grant to begin work on the NSFNET, an expansion of

network   technology   to  NSF    supercomputers.      Though    the

supercomputers proved too costly to be viable, the NSFNET and its

many regional networks quickly eclipsed the ARPAnet. In fact, in

1990, the ARPAnet was shut down. Today most universities and

large corporations connect to the Internet by means of a leased line

that runs to a regional network and connects to the backbone

established by the NSF.      Because the federally-subsidized NSF

restricted NSFNET use to educational and research purposes,15 most

12   For example, both LEXIS-NEXIS� and WESTLAW� may be accessed

through the Internet.

13   A newsgroup is a discussion group to which one can subscribe and

contribute (or "post") messages. There are thousands of newsgroups on the Internet

at any given time, and the discussion topics range from local politics to nationally

syndicated television sitcoms.

14   ARPA, the Advanced Research Projects Agency, administers the grants

awarded by the Department of Defense.

1s   The NSFNET Backbone Services Acceptable Use Policy, June 1992. The

Acceptable Use Policy can be reached via anonymous ftp at the following address:

NIC.MERIT.EDU/nsfnet/acceptable.use.policies/nsfnet.txt.

338

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 339

organizations providing service through the NSF backbone-such as

universities-adopted “acceptable use policies” as a condition of the

service.

However, even the NSF-subsidized backbone has become a

thing of the past. 16 NSF now funds only a set of Network Access

Points, a routing service, and one high-speed network aimed at

developing capabilities for video transmission.’7 At present, four

commercial providers are collaborating on a five-year franchise in

which they compete with each other to carry electronic traffic.’8

Regional networks are no longer wholly funded by the NSF,19 and

several commercial providers are hooked into regional networks via

leased lines or dial-up access.

To the extent that it has no central command authority, the

Internet is quite unlike other mediums. Aside from rules established

by individual service providers or other self-appointed “guardians” of

16    The NSFNET was retired on April 30, 1995. See Release, available via

anonymous ftp to NIC.MERIT.EDU/nsfnet/news.releases/nsfnet retired. Cost surely

influenced the decision to eliminate federal subsidies for the Net. According to one

estimate, the United States spent $11 million to run the NSFNET in 1993. Abate,

supra note 2.

17    Jeffrey K. MacKie-Mason & Hal Varian, Economic FAQS About the

Internet, 8 J. ECON. PERSP. 75, 78-79 (1994). The new backbone network service,

called vBNS, will connect six supercomputer sites and will be subject to a wide

range of use restrictions. Id.

is    Pac Bell, Sprint, Ameritech, and Metropolitan Fiber Systems take traffic

from the federally subsidized backbone and transfer it to four network access points.

Abate, supra note 2. In addition, on September 18, 1995, the Internet’s official

domain name registry became a private enterprise, run by Network Solutions, Inc.

Stephen Pizzo, Spies at the Gate: An All Star Cast of Shady Characters Now

Controls the Net’s Domain Name System, WIRED, Feb. 1996, at 72. It is

questionable whether the government has really relinquished all its control over the

Internet, though. At least one critic has pointed out that Network Solutions, Inc. is

not entirely free of government control; the corporation’s parent company, Science

Applications International Corp., derives more than 90% of its income from U.S.

defense department contracts. Id.

19    Many are funded by a state government and are run by a state agency or a

nonprofit coalition of universities.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

the Internet,2" there is only one federal law that specifically mentions

online communications, and it addresses only harassing, obscene,

indecent,     and    patently     offensive    sexual     or   excretory

communications."1 Procedurally speaking, "netiquette" is the closest

thing to a set of universal rules for the network. If a user offends the

rules of netiquette, he or she may be evicted from the Internet by a

commercial service provider or by other users.'         Netiquette is an

unofficial and evolving standard, though, and it is interpreted

differently by each user.

For some, it may be difficult to anticipate the reaction of the

Net community. Among other things, the mass dissemination of

unsolicited   advertisements23 can    provoke    an  eviction  from    the

Internet.24 However, because netiquette has never been codified,

20    The Electronic Frontier Foundation (EFF) is probably the best known group

of those that concern themselves with Internet regulation and legal issues. EFF is

an organization dedicated to raising "public awareness about civil liberties issues

arising from the rapid advancement in the area of new computer-based

communications media." EFF Mission Statement, available via anonymous ftp to

eff.org.

21    Communications Decency Act of 1996, Pub. L. No. 104-104, � 502.

22    Users who defy Net rules may be subject to the modern-day, technological

equivalent of a spanking if the violation is sufficiently grave. Usually, angered users

send "flames," or angry messages, to the offender or, better yet, to the service

provider. When enough users are angered to the point of sending a message, the

flames multiply and the offender's system runs out of capacity to store information.

Consequently, the system overloads and "crashes" (refuses to operate). Sometimes,

the mere threat of Internet discipline is enough to prompt a fearful provider to

revoke access to the burdensome offender. Thus, many on the Net have likened the

governance of cyberspace to a form of "electronic frontier justice."

23    Understandably, most Internet users do not want to be bothered by pesky

advertisers who waste both the user's time and the computer's memory. Solicited

advertisements, on the other hand, are not similarly condemned because the user has

elected to receive the commercial information.

24    The most notorious case of mass mailing (in Internet parlance, "spamming")

involved the sale of legal services. Seeking to advertise their law firm, Laurence

Canter and Martha Siegel sent a message to almost every active usenet newsgroup

on the Internet. (One account estimates that *5,500 newsgroups were affected.)

Once thousands of users received the message multiple times, Canter and Siegel

became the targets for vicious flaming. Though the two tenacious lawyers vowed

340

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 341

there is often no way to predict what other behavior might be deemed

“illegal.”

Illegal or unwanted conduct is not only hard to define, but it

also may go undetected or unreported. A majority of the service

providers do not have the resources to police illegal conduct on the

Net. Thus, they informally rely on third party informants to tell them

when another user has offended provider policies.         Universities

providing access to the Internet similarly rely on students, faculty and

other diligent computer users to keep them abreast of policy

violations.’

III.    PUBLIC FORUM ANALYSIS INADEQUATE

The public university acts as a property owner when it

purchases computers and establishes network connections for student

use. Thus, when a university restricts the type of expression that can

be communicated via its computers, those restrictions might be

examined as restrictions on public use of government property. The

Supreme Court normally reviews such restrictions according to the

doctrine of the public forum. Public forum analysis balances the

government’s interest in restricting “the use of its property to its

to continue advertising on the Net, their commercial provider eventually yanked their

account. Philip Elmer-Dewitt, Battle for the Soul of the Internet, TIME, July 25,

1994, at 50. The advertisement, however, was largely successful; Siegel wrote in

July 1995 that nearly 1,000 customers purchased her firm’s services after seeing the

Internet message. Martha Siegel, Internet Ads Aren’t All Bad, S.F. EXAMINER, July

10, 1994, at B5. Copycat spammers now claim they can reach up to 8 million

people with one spain. Simson Garfinkel, Spam King: Your Source for Spanms

Netwide!, WIRED, Feb. 1996, at 84.

25    Upon uncovering a student offender, the university system administrator will

either issue a warning to the student or close the account in order to prompt the

student to contact the system administrator. Telephone Interview with Mark Hale,

Center for Instructional and Research Computing, University of Florida (Oct. 11,

1994); Telephone Interview with Bonnie Mika, Manager of User Relations, UCLA

Office of Academic Computing (Oct. 28, 1994).

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

intended purposes" against an individual's desire to use that same

property for other purposes.26

Under the public forum doctrine, the character of a forum will

determine how much the government can regulate speech in that

forum.27 Government-owned fora are classified according to three

categories: the public forum, the nonpublic forum, and the limited

public forum. Because government regulations on commercial speech

are usually triggered by the commercial content of the message, they

are  considered   content-based, as    opposed   to   content-neutral

regulations.

In a public forum, content-neutral regulation by a government

must meet three criteria: ample alternative channels of communication

must exist; the regulation must be narrowly tailored; and the

regulation must serve a significant government interest.28    The

criteria for content-based regulations in a public forum are even

stricter; the government must show that the restriction is necessary to

serve a compelling interest and that it is narrowly drawn to achieve

that goal.29

It is useful to contrast the judicial review of speech regulations

in a public forum with the review reserved for regulations in a

nonpublic forum. When the speech occurs in a nonpublic forum, such

as a private university, the government has substantially more leeway

to regulate and must only prove that the restriction is reasonable and

viewpoint neutral.30

Finally, a limited public forum is a private forum that the

government has opened to certain people for expressive activity. In

the past, limited public fora have included those created exclusively

26   Cornelius v. NAACP Legal Defense & Educ. Fund, Inc., 473 U.S. 788,

800 (1985). Thus far, the public forum doctrine has only been applied to

noncommercial speech.

27   "[T]he extent to which the Government can control access depends on the

nature of the relevant forum.” Id. at 797.

U    Heffron v. International Soc’y for Krishna Consciousness, 452 U.S. 64

(1981). See also Ward v. Rock Against Racism, 491 U.S. 781 (1989).

29   Carey v. Brown, 447 U.S. 455, 461 (1980).

30   See infra text accompanying Part III.A.

342

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 343

for student groups31 and those created for discussion of a specific

topic.32 Government regulations in a limited public forum must meet

some of the same requirements for regulations in a traditional public

forum, but the government may close the forum to communication at

any time and limit use to that in accordance with the forum’s

purpose.3

Public forum   analysis is not without its critics.s    Yet the

purpose of this Comment is not to challenge the general utility of the

public forum doctrine, but to suggest that the public forum framework

is ill-fitted for expression communicated across a nontraditional

medium such as the Internet.35 Public forum analysis would yield

comparisons     between     the   Internet   and    government-owned

property-especially streets, parks, and sidewalks-whose traditional

purpose was to facilitate expressive activity. Such comparisons are

ultimately  unconvincing.36     The university    owns   the  academic

Internet accounts and the university server that links students to the

Internet. However, the entire electronic forum is not owned by the

31    Widmar v. Vincent, 454 U.S. 263 (1981).

32    City of Madison Joint Sch. Dist. v. Wisconsin Pub. Employer Relations

Comm’n, 429 U.S. 167 (1976).

33    See infra text accompanying Part III.C.

3     See generally Michael L. Taviss, Editorial Comment, Dueling Forums: The

Public Forum Doctrine’s Failure to Protect the Electronic Forum, 60 U. CIN. L.

REv. 757 (1992) (arguing that because current trends of public forum analysis do not

sufficiently protect public electronic fora, the public forum doctrine should be

reshaped to recognize electronic fora as traditional public fora); Daniel A. Farber

& John E. Nowak, The Misleading Nature of Public Forum Analysis: Content and

Context in First Amendment Adjudication, 70 VA. L. REv. 1219 (1984).

35    An electronic medium can be distinguished from traditional mediums

because it easily and economically transmits enormous amounts of information, all

the while allowing the user great freedom to modify transmitted data. Ethan Katsh,

Law in a Digital World: Computer Networks and Cyberspace, 38 VILL. L. REv. 403,

424-26 (1993).

36    Were a critic to compare the Internet and other labeled fora, he or she could

only compare the functions of each venue. “The mere physical characteristics of the

property cannot dictate forum analysis.” United States v. Kokinda, 497 U.S. 720,

727 (1990). If the argument centered solely around physical characteristics, a court

would probably find it impossible to compare the Internet to any other forum.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

university or any other government entity.37      Thus, the public

university may be without power to govern the electronic forum or

declare an acceptable use. Just as the public university is powerless

to censor the commercial speech of students who are not at school, so

it should similarly be forbidden to adopt unacceptable restrictions on

student speech conveyed not in the school, but over the Internet.

Even when students access the Internet through government-owned

computer terminals, the government probably does not control the

infinite array of network lines connecting those terminals to others

around the world.

At most, it would appear that the university can control the

university server and student use of its computer terminals and the

university server. Less secure is the university's asserted property

interest in controlling the Internet connections through the server,

which is itself one of many intermediaries in the public electronic

forum.

Given its expansive nature, the Internet may be "outside" the

realm of university control. Yet this is not a widely held viewpoint,

and for that reason, the Comment proceeds to the public forum

analysis below.

A.     Nonpublic Forum

If the public university can establish that the Internet is a

nonpublic forum, it may then exercise the power to control expression

transmitted through an academic Internet account. The government

may control access to a nonpublic forum based on subject matter and

speaker identity as long as "the distinctions drawn are reasonable in

light of the purpose served by the forum and are viewpoint

neutral.""3 The government may exclude a speaker from a nonpublic

37   To send an e-mail to a mailbox served by a commercial access provider, for

example, requires that the message travel over lines that have been purchased by the

commercial provider. It would be folly to suggest that the university may flex its

muscle over lines owned by a private company.

38   Cornelius v. NAACP Legal Defense & Educ. Fund, Inc., 473 U.S. 788,

806 (1985).

344

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 345

forum if the speech topic is not encompassed within the purpose of the

forum39 or if the speaker is not a member of the class for whom the

forum   was created.’    Nonetheless, the “government violates the

First Amendment when it denies access to a speaker solely to suppress

the point of view he espouses on an otherwise includable subject. “,,”

In classifying a forum as nonpublic, the Supreme Court usually

determines that the government never intended to dedicate the forum

to First Amendment activity.42 The historical use of a forum is thus

useful in helping the Court to determine what the government intended

when it established the forum.43 However, even when a forum         has

been dedicated to some expressive use, the Court may find that the

government has reserved aspects of that same forum for nonpublic

use. Aspects of the forum that are deemed nonpublic will only be

subject to the reasonableness test applied to all nonpublic fora.4

39    Lehman v. City of Shaker Heights, 418 U.S. 298 (1974) (because

advertising space on public transit vehicles does not constitute a public forum, the

city may limit access and refuse would-be advertisers).

40    Perry Educ. Ass’n. v. Perry Local Educators’ Ass’n, 460 U.S. 37, 49

(1983).

41    Cornelius, 473 U.S. at 806. Most often, a state can meet its burden by

showing that the speaker can reach the same audience through alternative channels

or by communicating at another time, in another place, or in another manner.

42    See Perry, 460 U.S. at 49; see generally United States v. Kokinda, 497

U.S. 720 (1990) (postal sidewalk inside post office-owned parking lot is nonpublic

forum); Hazelwood School Dist. v. Kuhlmeier, 484 U.S. 260 (1988) (high school

newspaper is nonpublic forum); Pacific Gas and Elec. Co. v. Public Utils. Comm’n,

475 U.S. 1 (1986).

43    See generally Kokinda, 497 U.S. at 728-29; Heffron v. International Soc’y

for Krishna Consciousness, 452 U.S. 640, 650-51 (1981); Burson v. Freeman, 504

U.S. 191 (1992). Location and current purpose of such property are also valuable

in determining whether a forum is nonpublic. Kokinda, 497 U.S. at 731 (discussing

the fact that the Postal Service has been regulating commercial solicitation since

1958).

“     Kokinda, 497 U.S. at 730 (“[A] regulation prohibiting disruption… and

a practice of allowing some speech activities on [government] property do not add

up to the dedication of [government] property to speech activities.”). In some ways,

the nonpublic forum doctrine is but a judicial creation. A forum may be nonpublic

because it has always been used as a nonpublic forum, but it may also be nonpublic

even if it has already been used as a public forum; a court could reason that the

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

The status of the Internet forum cannot be determined by

looking at historical use; long gone are the days when an academic

Internet account was intended to be only a communication tool

between researchers and government war strategists. It would broaden

the definition of academic speech quite a bit to say that the historical

intent, to facilitate defense communication, was ever academic. In

addition, Internet applications are many and varied, so much so that

it is difficult to analyze the Internet's forum status by looking to its

current purpose. The current purpose of a university-provided account

is likewise difficult to discern, given the fact that such accounts are

used by thousands to accomplish a vast number of tasks, not all of

which are academically related.

In a nonpublic forum, the government usually seeks to restrict

expressive activity (speech) because such expression would disrupt that

property's intended use.45 On the Internet, speech is the intended use

of the property. To the extent that the Internet is primarily dedicated

to facilitating communication between computer users, adding more

speech should not upset the intended use of the network.6

However, this may be a simplistic analysis. Adding more

speech threatens transaction speed. When Internet traffic reaches the

physical maximum flow rate, congestion results and messages travel

more slowly.'7 In extreme situations, congestion can lead to

decreased storage capacity or system failure.4" A host computer's

government reserved every subsequent use of the property for nonpublic use.

45    Id. at 732-35 (stating that sidewalk solicitation is inherently disruptive to the

U.S. Postal Service's business).

46    If, as the university may argue, Internet access has been dedicated to

facilitating academic communication between users, then adding commercial speech

may upset the network's intended use. The university's argument is weakened,

however, by the fact that it already permits academic account users to transmit

personal, political, and religious speech (via e-mail) in addition to academic speech.

47    "[The] network is a shared-media technology: each extra packet [or package

of data] that I send imposes a cost on all other users because the resources I am

using are not available to them. This cost can come in the form of delay or lost

(dropped) packets.” MacKie-Mason & Varian, supra note 17 at 84.

48   John Markoff, Jams Already on Data Highway, N.Y. TIMES, Nov. 3, 1993,

at Dl.

346

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 347

storage capacity is large but finite. Indeed, if the host is used for

limitless expressive activity, the system may suffer growing pains.

These results are exactly what the university dreads, since

congestion on the host computer impairs regular transmission of all

messages. Indeed, nonpublic fora are established precisely in order

to ensure that government property is used to accomplish specific

objectives in the most efficient manner possible. Rightfully so, the

government    may    wish   to  retain  Internet use   for   efficient

accomplishment of academic research.

Efficient use of the Internet for academic communication and

commercial speech on the Internet need not be mutually exclusive,

though.   The Net’s value is derived from     the fact that it gives

students, faculty, and staff affordable and easy access to millions of

other computer users. Recognizing the value of this connectivity, the

university wants to minimize excessive traffic on the Internet. This

is not the same as saying that the university should or can control

commercial speech, and only commercial speech, in the electronic

medium. While the university may justify limits on activities that

disrupt school operations, it cannot similarly justify penalizing

commercial speech when excessive message transmissions are really

the disrupting culprit. The Supreme Court stated as much in 1993,

when it ruled that a ban on commercial newsracks alone did not

reasonably advance one city’s asserted interest in reducing the total

number of newsracks.49

For the most part, the Internet is simply different from a postal

sidewalk (or other nonpublic forum) that was not designed for

speakers.”0 The Court has ruled that speech on a sidewalk adjacent

49   City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 426 (1993).

The Court stated, “Cincinnati has not asserted an interest in preventing commercial

harms . . . which is, of course, the typical reason why commercial speech can be

subject to greater governmental regulation than noncommercial speech.” Id.

Applying the Court’s reasoning from Discovery Network to university Internet

access, a university would have to assert an interest in guarding against commercial

harms before it could sustain a ban on commercial speech.

50   The Net may, however, resemble a nonpublic forum that was designed for

speech. See Perry Educ. Ass’n. v. Perry Local Educators’ Ass’n., 460 U.S. 37

(1983) (discussed infra text accompanying notes 71-74).

348       UCLA ENTERTAINMENT LAW REVIEW                  [Vol. 3:333

to a post office and located inside a parking lot owned by the post

office may disrupt business and promote inefficient use of government

property that has been reserved for travel into the post office.5" As

opposed to normal sidewalks, the Internet is regularly used for

expressive activity and the addition of commercial speech should not

disturb Internet functions any more than the addition of other forms

of speech. The content of the speech is not determinative.

B.     Public Forum

As applied to noncommercial speech, the public forum doctrine

protects all expression that occurs in a site sanctioned by the

government for use by the public for communication. For this reason,

any content-based regulation must be proven both necessary to serve

a compelling state interest and narrowly drawn to achieve that end.

Even content-neutral regulations, such as those that restrict the time,

place, or manner of speech instead of its content, will not pass the

Court's scrutiny if they are not closely tailored to serve a significant

governmental interest or do not leave ample alternatives open for

52

communication.

Still, it stretches even the most progressive analysis to liken

cyberspace to other traditional public fora such as city streets,

sidewalks, and parks.53 To argue that computer speech deserves the

heavy protection afforded to speech made in a public forum,

moreover, would     necessitate  a  finding  that computers  "have

immemorially been held in trust for the use of the public and, time out

of mind, have been used for the purposes of assembly, communicating

51   See Kokinda, 497 U.S. 720, discussed in supra notes 42-44.

52   United States Postal Serv. v. Council of Greenburgh Civic Ass'ns., 453

U.S. 114, 132 (1981). The Court found these requirements satisfied in Ward v.

Rock Against Racism, 491 U.S. 781 (1989) (holding that the restrictions on the noise

level of a concert in a public park were reasonable time, place, and manner

restrictions).

53   Justice Roberts first declared that streets and parks were public fora in

Hague v. Comm. for Indus. Org., 307 U.S. 496, 515 (1939). Later, the Court

added sidewalks to the list of traditional public fora. United States v. Grace, 461

U.S. 171, 177 (1983).

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 349

thoughts between citizens, and discussing public questions.”"4 The

Internet has not been “immemorially” held for the public use. Putting

aside the hilarity of the proposition that the young Internet has been

reserved for anything “immemorially,” it is hard to argue that the

Internet was initially reserved for the public, particularly when early

use of the network was limited to government employees.5″

Moreover, with university accounts, access is limited to the

university community and is most often subsidized in small part

through student activity fees and in large part through government

funding. For those who are not university employees, no less than the

cost of university tuition separates those who can access the Internet

and those who cannot. While use of the Internet may seem “free” to

students, it is only because the cost is incidental to the actual cost of

qualifying for all of this “free” service, namely, the cost of going to

college. This is hardly the same as free access to government-owned

streets, parks, and sidewalks; streets may be taxpayer-supported, but

they do not also require payment as a condition of use.

In several important respects, though, traditional fora such as

streets or parks do resemble computer newsgroups or electronic mail

messages. Both offer speakers a place of gathering and assembly

5     Hague, 307 U.S. at 515 (holding that the right to assemble and discuss

national issues in public places is one of the “privileges, immunities, rights, and

liberties” granted to every citizen by the Fourteenth Amendment).

55    Justice Kennedy might argue that all of this emphasis on the history of the

Internet is unnecessary anyway. In a concurring opinion, he stated that open public

spaces that are suitable for public discourse should be considered public fora,

regardless of their “historical pedigree.”

Without this recognition our forum doctrine retains no relevance

in times of fast-changing technology and increasing insularity. In

a country where… parks all too often become locales for crime

rather than social intercourse, our failure to recognize the

possibility that new types of government property may be

appropriate forums for speech will lead to a serious curtailment of

our expressive activity.

International Soc’y for Krishna Consciousness v. Lee, 505 U.S. 672, 697 (1992)

(Kennedy, J., concurring) (arguing that an airport should be considered a public

forum because it is one of few government-owned places where many people have

extensive contact with other members of the public).

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

where ideas can be freely exchanged;56 both allow widespread

distribution;57 both are open at all hours of the day, and both offer

these services at a bargain price." In addition, like a public forum

that must be affirmatively created, the Internet has been "intentionally

open[ed] . . . for public discourse. “” Perhaps, then, the Internet

should be considered a limited public forum.

C.     Limited Public Forum

To curb interruptions during the intended use of a public

forum, the state may affirmatively limit the open character of a

nontraditional public forum. This anomaly gives rise to the limited

public forum, in which the Court tolerates constraints on expressive

use. Accordingly, the state may choose to close the forum and curtail

expressive activity   at any   time.6�   Content-neutral government

regulations must be reasonable time, place or manner restrictions, and

any content-based restriction must be sufficiently related to a

compelling government interest.61     However, limited public forum

status allows the government to immunize itself against reproach for

restrictions on speech in a particular forum.

56    A forum is a “public place, marketplace, [or] place of assembly … giving

opportunity for debate.” THE CONCISE OXFORD DICTIONARY OF CURRENT ENGLISH

416 (6th ed. 1976).

57    At last count, there were 9.4 million computers connected to the Internet.

See supra note 9.

58    See Edward J. Naughton, Is Cyberspace a Public Forum? Computer

Bulletin Boards, Free Speech, and State Action, 81 GEO. L.J. 409, 431-32 (1992).

Naughton argues that a computer bulletin board is not a public forum because

subscribers must pay a fee and comply with the provider’s restrictions.

59    Cornelius v. NAACP Legal Defense & Educ. Fund, Inc., 473 U.S. 788,

802 (1985).

60    Ronald D. Rotunda & John E. Nowak, TREATISE ON CONSTITUTIONAL

LAW: SUBSTANCE AND PROCEDURE, 4th � 20.47, at 311 (2d ed. 1992). For a good

example, see Heffron v. International Soc’y for Krishna Consciousness, 452 U.S.

640, 655 (1981) (holding that a state fair is a limited public forum because it exists

temporarily to provide a means for a large number of exhibitors to display their

products and views to many people).

61   Id.

350

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 351

The limited public forum is possibly the most confusing of all

three fora. In Widmar v. Vincent, the Supreme Court invalidated a

regulation prohibiting the use of school facilities for the purposes of

religious teaching or worship.62 Elaborating on the scope of the

limited public forum doctrine, the Court pointed out that once a

university “created a public forum generally open for use by student

groups … [it] assumed an obligation to justify its discriminations and

exclusions under applicable constitutional law.”63 Fundamentally,

the forum was limited because the Court refused to hold “that a

campus must make all of its facilities equally available to students and

non students alike, or that a university must grant free access to all of

its grounds or buildings. “6 Widmar suggested that the university

could not impose conditions on the use of university facilities and

speech within those facilities once it had created a limited public

forum for students’ by allowing expressive activity.

If analyzed under the limited public forum doctrine established

in Widmar, most types of speech on the electronic forum could receive

First Amendment protection. There would be many similarities

between Widmar and a hypothetical case involving commercial speech

on a college Internet account. It is well settled that school facilities6

6    Widmar v. Vincent, 454 U.S. 263, 267 (1981).

63   Id. The Court continued by saying that the university must assume this

obligation “even if it was not required to create the forum in the first place.” Id.

at 268. In Widmar, a religious group sought to use University of Missouri facilities

for its meeting. Despite having held previous meetings in the university facilities,

the group was denied access based on a new policy aimed at fostering the separation

of church and state. The Supreme Court ruled that, without a compelling reason,

the university could not impose a content-based regulation on speech. Id. at 269-70.

l Id. at 268 n.5.

6     Likewise, a university-controlled electronic forum is unavailable to non-

students. However, all students and faculty have access to the network, a feature

which is not true of some administrative buildings. In this sense, the network is not

a limited public forum.

6     The university is usually a safe refuge for free expression. Yet Widmar

proved that some university buildings may qualify for limited public forum status.

454 U.S. 263. Thus, speech within those facilities would be subject to regulation.

Speech occurring at elementary schools is even more likely to be overseen. Courts

will not allow expressive activity on property adjacent to a secondary school

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

(such as those at issue in Widmar) and libraries' are limited public

fora;6 the university charges a minimal activity fee to help defray

the costs of building and maintenance69 and, in exchange, any student

group is allowed to use the university facilities for meetings.

University computing facilities operate in much the same way.7�

Students pay a nominal fee at registration, and they can expect to use

the facilities for reasonable expression. Moreover, as in Widmar, the

university can protect against unlimited public use of the Internet by

restricting access to all but enrolled students, faculty members and

school administrators .71

As comparable as they may seem, Widmar restrictions, with

their emphasis on religious speech in physical buildings, and Internet

commercial speech restrictions may not be altogether analogous. In

fact, the Internet may not even be considered a limited public forum

if the Court analogizes to Perry Education Ass'n. v Perry Local

Educators' Ass'n. In Perry, a 5-4 decision, the Court invoked the

public forum doctrine and upheld a school policy that restricted

mailbox access to only one authorized teachers' union. Writing for

the majority, Justice White ruled that a public school mailing system

used by high school administrators and teachers was not a limited

public forum.72 The interschool system was not "open for use by the

building, for example, if it disturbs the basic educational mission of the school.

Grayned v. Rockford, 408 U.S. 104 (1972) (upholding an "anti-noise" ordinance on

the grounds that it protected disruption of classes in session). See infra text

accompanying note 107.

67    In Brown v. Louisiana, the Supreme Court ruled that a silent and peaceful

sit-in protest did not interfere with public use of a library. 383 U.S. 131 (1966).

8     The Widmar Court recognized that although a public university may protect

its academic mission through regulation, it "possesses many of the characteristics of

a public forum." Widmar, 454 U.S. at 268 n.5 (reasoning that because a university

acts as a "marketplace of ideas," its administrators may not unjustly restrict access

to the means of communication with faculty, administration, and other students)

(citing Healy v. James, 408 U.S. 169, 180-82 (1972)).

69    Widmar, 454 U.S. at 265.

7o    See supra Part 1.

71    Likewise, Perry upholds restrictions on speech made by non-students. 460

U.S. 37 (1983).

72    Id.

352

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 353

general public”73 and the selective access characteristic of the forum

alone could not entitle speakers to the protection associated with a

public forum.74

Close scrutiny reveals that the issue of Internet access seems

to share some factual similarities with the issues presented in Perry.

In Perry, the public high school only allowed sponsors of academic-

related activities to access the school mailing system. Reasoning that

the high school had created a system with a singular purpose, the

Court found that the competing teachers’ union was not entitled to

have access to the mailing system because it did not sponsor academic-

related activities at the school. Similarly, university Internet accounts

were also created with a limited purpose: to facilitate academic

communication. If this purpose is read narrowly, as it would be under

a Perry analysis, then university-provided Internet accounts could be

classified as nonpublic fora.  If, however, this purpose is read

broadly-given the current, non-academic uses of the Internet and the

decision in Widmar-the electronic forum might instead be granted

limited public forum status.

Perry presents one other issue that might be relevant to the

study of restrictions on Internet accounts. In Perry, the Court ruled

on the forum status of an entire mailing system, not just the

mailboxes. Such analysis could readily be applied to the Internet,

where a public university asserts control of an entire networking

system, rather than just the computer terminals used to access the

network. Like the Perry mailboxes, each Internet account could be

considered a nonpublic forum.

The comparison to Perry is not without flaws, though. The

banished speakers in Perry were not students or members of the

academic community. Therefore, they may have been excluded on the

basis of their tenuous connection to the school. The Internet, on the

other hand, is home to student speakers who engage in a host of

73   Id. at 47.

74   The Court indicates that its decision partially hinges on the fact that granting

exclusive access to recognized bargaining representatives is a “permissible labor

practice” that is part of the effort to keep much-feared labor squabbles outside the

schools. Id. at 50-52.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

academic and non-academic uses. Thus, a student using the network

for another non-academic use, such as advertising, should not be

excluded from access to the network. The student's connection to the

university is far from tenuous; he or she is a member of the group

upon which general access privileges have been bestowed by the

university.

It is still unclear whether an Internet forum will be comparable

to the mail facilities of Perry or the university building of Widmar.

Descriptions of how the Court has previously considered a "public

forum" provide little help because they are far from specific and they

do not address emerging technological fora. Unfortunately, the public

forum doctrine is all too often ambiguous in definition, yet rigid in

application.75

III.    COMMERCIAL SPEECH

In haste, critics have attempted to slide the electronic forum

into categories for which it is too big, too new, and too progressive.

After all, Net watchers predict that the network will soon span every

inch of the globe,76 reach into millions of homes and perform tasks

beyond the scope of today's imagination.' The massive number of

Internet users, and the network's potential for carrying unlimited

amounts of communication, provide reason enough for guaranteeing

the rights of Internet speakers beyond that which is guaranteed in a

75   See generally Rosemary C. Salomone, Public Forum Doctrine and the Perils

of Categorical Thinking: Lessons From Lamb's Chapel, 24 N.M. L. REv. 1, 15

(1994) (arguing that while predictability and objectivity may be enhanced by the

doctrine, the rules often "dictate certain outcomes regardless of specific facts").

76   For all intents and purposes, the Internet is already global. There are nodes

in every country, and there is even a node in Antarctica.

77   See, e.g., HARLEY HAHN & RICK STOUT, THE INTERNET COMPLETE

REFERENCE, Introduction (1994) (calling the Internet the greatest and most

significant invention mankind has ever seen, and alluding to its many unfathomable

capabilities); Katsh, supra note 35.

354

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 355

nonpublic forum.78 In this respect, the Internet can be analogized to

other instruments of mass communication such as the telephone system

or the mail system.79 At the same time, while public policy

considerations may support the idea of labeling the Internet as a public

forum, the Court’s own language suggests that it will be difficult to

liken the Internet to a public forum. Thus, the Internet may require

a new forum category altogether. Alternatively, it may demand that

administrators exert only the amount of control that is absolutely

necessary to assure access for everyone.

This Comment argues that any university efforts to ban Internet

commercial speech should be analyzed according to the standards for

commercial speech in a public forum. Moreover, when university

restrictions are evaluated according to commercial speech standards,

there is a strong chance that the bans will not survive scrutiny. While

mass advertising’ may be an unfortunate development when

commercial speech restrictions are lifted on academic accounts, the

sacrifice will likely prove necessary to preserve the individual’s right

78    A similar argument is advanced by Justice Anthony Kennedy in a

concurring statement to a decision upholding restrictions on solicitation in airport

terminals. Internatinal Soc’y for Krishna Consciousness, Inc. v. Lee, 505 U.S. 672,

693-709 (1992). Though Kennedy sided with the majority in determining that the

restrictions were valid, he strongly disagreed with the majority’s classification of an

airport as a nonpublic forum. “It is the very breadth and extent of the public’s use

of the airports that makes it imperative to protect speech rights there.” Id. at 700.

Kennedy further argued that because they facilitate travel, airports can not be

distinguished from streets or sidewalks. He concluded that public spaces in airports

should be considered public fora. Id. Similarly, the Internet is populated by many

users and subject to many and varied uses.

79    Holmes’ noteworthy dissent in a 1922 case first established that sealed

letters containing commercial speech, though routed through the government-rnm post

office, deserved full First Amendment protection. Leach v. Carlile, 258 U.S. 138,

140-41 (1922).

80    See supra note 24 for a description of one electronic mass mailing that met

with varied results.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

to free speech and the interest in the free flow of commercial

speech. 8

A.     Defining Commercial Speech

Central to any discussion of commercial speech is a description

of the distinction between commercial and non-commercial expression.

However, such a description is hard to come by. Commercial speech

certainly encompasses any expression that proposes a commercial

transaction. What is not so certain is whether commercial speech also

includes speech "related solely to the economic interests of the speaker

and its audience."82 Definitions of this sort may be overinclusive,

as many commentators have been quick to point out."3

To the extent that it will be necessary, defining unwanted

commercial speech is difficult in the computer network forum. Under

current policies, all commercial speech is considered unwanted,

regardless of its actual effect on the audience. For example, a user

who advertises his or her bicycle in a newsgroup entitled

"alt.bikesale" will be in violation of campus policies that broadly

restrict commercial speech, even though the advertisement was

"solicited" by interested users who arguably did not need the

81   "Advertising, however tasteless and excessive it sometimes may seem, is

nonetheless dissemination of information as to who is producing and selling what

product, for what reason and at what price . . . . It is a matter of public interest

that those [private, economic] decisions . . . be intelligent and well informed. To

this end, the free flow of commercial information is indispensable.” Virginia State

Bd. of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 765 (1976).

82   Central Hudson Gas v. Public Serv. Comm’n, 447 U.S. 557, 561 (1980).

In Bolger v. Youngs Drug Prods. Corp., the Court states that a speaker’s economic

motivation would be “insufficient by itself to turn the materials into commercial

speech,” but when coupled with other characteristics of the speech, such as a

reference to a product, it provides strong support for the argument that a particular

form of speech is indeed commercial. 463 U.S. 60, 66-67 (1983).

83   Central Hudson, 447 U.S. 557, 597 (Stevens, J. concurring); Daniel A.

Farber, Commercial Speech and First Amendment Theory, 74 Nw. U. L. REv. 372,

381-83 (1979) (observing that personal profit motivates not only commercial speech,

but also other forms of fully-protected speech, not the least of which is political

speech).

356

19961 COMMERCIAL SPEECH & UNIV. NET ACCOUNT 357

university to intercede. Will the user who e-mails a friend, offering

to sell a bicycle, also risk punishment from the university?’

Probably, even though the speech was clearly interpersonal and could

not have been censored had he or she used a normal letter. Ironically,

although there is no group harmed by the content of these messages,

all of these messages offend university computer account policies.

In truth, all commercial speech cannot be classified as

unwanted. Not every commercial message inflicts harm, either.

Thus, a broad regulation that does not recognize the possible benefits

of properly disributed commercial speech may be unduly harsh.

B.      Commercial Speech Versus Other Permissible Speech

Once an unprotected category,”5 commercial speech initially

received   First Amendment protection       in  1976.86    Nonetheless,

commercial speech is still the target of allegations that it has no real

social value.87

8    It might be economically impossible for the public university to finance an

e-mail monitoring system, but that issue is not within the focus of this Comment.

8    Valentine v. Chrestensen, 316 U.S. 52 (1942). Other types of speech that

receive little or no First Amendment protection include obscenity, group defamation,

and fighting words.  For a discussion of how these categories evolved, see

LAURENCE TRIBE, AMERICAN CONSTITUTIONAL LAW (1988).

86    Virginia Pharmacy, 425 U.S. 748. Finding that society had a right to “the

free flow of commercial information,” the Court ruled that the government interest

in maintaining “a high degree of professionalism on the part of licensed pharmacists”

was not strong enough to sustain a prohibition on advertising drug prices.

Furthermore, the state could not suppress information that was truthful simply

because it wanted to keep consumers from knowing that information. This rationale

also formed the basis for the decision in Linmark Associates, Inc. v. Willingboro,

where the Court ruled that a town could not prohibit real estate “For Sale” signs.

431 U.S. 85 (1977).

87    See, e.g., Vincent Blasi, The Pathological Perspective and the First

Amendment, 85 COLUM. L. REv. 449, 486 (1985) (arguing that advertising should

be excluded from First Amendment protection) (“Commercial advertising was never

a concern in any of the historic political struggles over freedom of expression. The

first amendment [sic] claimants in disputes over commercial advertising often are

sophisticated and driven by the profit motive.”) But see Ronald A. Cass,

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

In 1980, the Court, in an opinion written by Justice Powell,

articulated a four-factor test for judging the constitutionality of a

commercial speech regulation. The Court considered whether the

restricted speech was protected commercial speech, whether the

government had a substantial interest in the restriction, whether the

regulation directly advanced that interest, and whether the regulation

was more extensive than necessary.8 Because the Supreme Court

has used the test since then, this Comment looks at each factor and

analyzes speech in the electronic forum accordingly.

1.     Protected Speech

In Central Hudson, the Court first focused on the nature of the

commercial speech. As Justice Powell explained, speech that is

misleading or advertises illegal activity does not deserve protection at

all.89 In such a case, it would be unnecessary to proceed with

further analysis.

In the case suggested by this Comment, the public universities

can and often do exercise the power to regulate misleading speech and

speech that concerns illegal activity. However, most university

Internet policies concerning commercial speech restrict more than just

fraudulent speech and speech related to illegal business.

Commercial Speech, Constitutionalism, Collective Choice, 56 U. CIN. L. REv. 1317,

1365-66 (1988) (arguing that because speech is a public good, it cannot be judged

according to market-focused measures, and its inherent worth cannot be assessed

except according to subjective analysis).

98    Central Hudson Gas v. Public Serv. Comm'n, 447 U.S. 557 (1980). The

case itself stemmed from a prohibition against all promotional advertising by public

utilities. The New York State Public Service Commission apparently wanted to

discourage advertising that was designed to convince consumers to use more energy.

Rejecting the "'highly paternalistic' view that government has complete power to

suppress or regulate commercial speech," the Court defended even incomplete

representations, stating, "the First Amendment presumes that some accurate

information is better than no information at all." Id. at 562.

9    Id. at 563. ("The government may ban forms of communication more

likely to deceive the public than to inform it.").

358

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 359

2.     Does the    Government Have        a  Substantial

Interest?

The imperatives that mandate commercial speech restrictions

in other areas do not exist here.       As compared to commercial

messages on billboards, Internet-carried commercial messages do not

create visual blight on the Net, nor do they threaten road safety.9′

And an Internet restriction, unlike permissible restrictions on

commercial presentations in college dormitory rooms, will not serve

an interest in preserving residential tranquility or promoting an

educational, rather than commercial, atmosphere on campus.9′

In fact, restrictions on Internet commercial speech do not even

serve the substantial government interest in preserving an individual’s

privacy in the home. Unlike direct mail advertisements, which arrive

at the recipient’s home,’ Internet messages do not have to be

received at all. Internet accounts can be tailored so that only the user

who is authorized to access the e-mail program can receive

messages.93 Furthermore, a Net user can obtain a computer filter

90    Metromedia, Inc. v. City of San Diego, 453 U.S. 490 (1981).

91    Board of Trustees v. Fox, 492 U.S. 469, 475 (1989).    Computer

transmissions, because they are often individually tailored and not directed at a

physically assembled group, cannot easily create an “atmosphere” like the one

envisioned and feared in Fox. One other interest asserted by the state university in

this case was the interest in “preventing commercial exploitation of students.” Id.

at 475. While the Court found this concern was substantial, it did not address

whether the restriction on speech advanced this objective or whether the regulation

was more extensive than necessary. Thus, there is room for the Court to find that

commercial speech restrictions are excessive or that they do not substantially protect

students from commercial exploitation.

92    Rowan v. United States Post Office Dept., 397 U.S. 728 (1970).

93    Programs that limit access according to the user who has signed on are

already available. With one of these programs, a company can prevent employees

from accessing regions of the Internet and a parent can direct the network

wanderings of a child. This type of program also enables the university to restrict

college students’ access to the Net.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

and block out at least a portion of the unwanted messages by

restricting all incoming mail that contains transactional words.'

The public university's strongest interests in preventing

commercial speech are embedded in its assertion of a property right.

As a primary sponsor of both the computers that accept commercial

messages and the dedicated lines that carry messages to the backbone,

the public university may claim it owns the means for Internet access.

An expansion of that reasoning suggests that the university has the

right to govern its property so as to extract the most efficient use. If

the efficiency of the Internet depends upon uncluttered lines, the

university can justify a commercial speech restraint as an arbitrary line

that will result in fewer Internet messages.

It is worth noting here that, unlike the cost of sending a letter,

the direct usage cost of the Internet does not increase with every

message.95 Fixed costs, such as the cost to establish a dedicated line

for message transmission, are invariably high, but each service

provider incurs only a minimal variable cost to send each message.

Consequently, most service providers charge users only a flat rate for

the connection to the Internet.'     By contrast, additional network

traffic does generate indirect costs. Increased network traffic poses

two potential problems: it may cause network line scarcity and it may

temporarily strain resources.9'7 In the future, a court may be forced

to decide whether the government interest in preventing these

problems is substantial enough to warrant speech restrictions. The

balancing test will likely be a difficult one.

94    For example, a user could choose to block the words "For Sale" or

"Price."

95    "[D]irect usage cost is negligible, and by itself is almost surely not worth

charging for given the accounting and billing costs.” MacKie-Mason & Varian,

supra note 17 at 89.

96    As use grows, providers may attempt to deter unnecessary use of finite disk

storage space by implementing a pricing scheme based on the amount of data

received, as opposed to a flat rate pricing scheme.

97    Unlike the erosion of other finite or destructible resources, any physical

wear and tear suffered by Internet lines cannot be attributed to an increased margin

of use.

360

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 361

On one hand, a court must consider the effects of high-volume

traffic. Excessive messages can delay or even crash a network

system.98 Thus, a deluge of traffic on a system with limited

bandwidth can be an effective, albeit unintended, method of denying

access.9 In the context of the university server, this result could

hamper regular transmission of all messages campus-wide.

Broken systems notwithstanding, the university may resist

opening the Internet accounts to commercial traffic because it fears the

increased traffic will fill all existing disks. The storage capacity on

a host computer’s hard disk is rather large; still, overuse necessitates

upgrades. Any substantial increase in use will periodically force a

public university to make provisions for excess capacity.         Such

provisions usually are costly.

Both of the aforementioned fears are valid, but a factfmder

should realize that arguments for restrictions are predicated on the

notion that academic users who are permitted to use the Internet for

commercial speech will swing open the floodgates and unleash a

torrent of commercial speech.      This may not be the case.      Free

advertising on the Net is certainly attractive, but as long as there are

alternatives, and more direct ways to reach a consumer,1′� the

98    For a discussion of congestion on the Internet, see supra text accompanying

notes 47-48.

99    A good example of an application that demands quite a bit of bandwidth is

Mosaic, a graphical service that allows users to browse data, including text, picture,

video, and sound. Mark Gibbs, Open for Business, NETWORK WORLD, July 4,

1994, at 31.

100   Some forms of advertising are more effective simply because they require

little from the potential consumer. A television advertiser, for example, need only

be concerned that his audience owns a television set and can either see or hear his

message. The newspaper advertiser appeals to those who can afford a newspaper

and can read. In both cases, the advertiser can reach many people because potential

consumers need not possess a high degree of skill or money to be solicited. The

Internet advertiser, however, will only be able to reach consumers who have

physical and financial access to a computer, have a network connection, and are able

to navigate the Net.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

Internet will not be swarmed by mass mailing advertisers.1'0

Because Internet users can be somewhat selective about the

information they receive, they are most likely to respond only to

advertisers who have targeted their appeals to a specific group or

person." 0 This bodes well for the small scale advertiser, rather than

the advertiser who wishes to saturate the populace. Similarly, many

advertisers may not rush to design an Internet advertisement because

the Internet currently lacks the same artistic appeal as other mediums

that showcase commercial appeals.103

Without evidence that congestion is imminent, it is premature

to allow the government to issue a ban on commercial speech. In

1993, the Supreme Court ruled that without evidence of harm, a state

board's suppositions about the dangers of uninvited solicitation could

not support a blanket ban on commercial solicitation conducted by

Certified Public Accountants. The Court held that a government body

may not justify a commercial speech restriction by alluding to "mere

speculation or conjecture; rather, [the state actor] must demonstrate

101  Commerce has existed on the Internet for some time without intruding on

other uses. Commercial transactions often occur in designated newsgroups, whose

members subscribe solely in order to receive commercial messages. The existence

of commercial newsgroups is essential if commercial speech is going to grow and

thrive on the noncommercially-oriented Net.

102  Net ads may be less effective for most advertisers than conventional

advertising methods. For example, the mass mailer on the Internet may have a

tough time reaching a mass audience if users can tell, by the content of a subject

line, that the message is commercial. See discussion infra Part IV, suggesting that

such labeling should be mandatory for all commercial messages. Those not directly

interested in the product may just hit a delete key to erase the message without even

viewing it. By contrast, a newspaper ad, television spot, flyer, or mail piece (unless

enclosed in an envelope) must be seen and acknowledged at some level before an

audience member can discard the message.

103   Though technology is always changing, most Internet graphic images

consume more space, require more time to create, and require more time to

download than simple text. In addition, the audio component of the Internet is still

underdeveloped; few users have speakers attached to their computers, and the sound

quality is not likely to be good. In the final analysis, most will find the Internet

useful as a targeted advertising tool but not as successful in the mass marketing

arena.

362

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 363

that the harms it recites are real and that its restriction will in fact

alleviate them to a material degree.”"

A university’s assertion that commercial messages will cause

harm must be similarly substantiated by data. Such evidence may now

exist for unsolicited commercial messages that are sent in bulk,1″5

but it is unclear whether any harm can be attributed to solicited

commercial messages. In the future, with bandwidth increases and

more research aimed at increasing storage capacity,1�6 the Internet

may yet be able to accommodate all speech.

Despite the lack of evidence of harm, a university that wishes

to suppress commercial speech on academic Internet accounts will

have one substantial argument in its favor. As principals in the

business of fostering a marketplace for ideas, universities may not

want to allow commercial speech on academic accounts because such

speech will dominate the market. If commercial messages become too

frequent and every user receives several commercial messages (via e-

mail or a subscription to a newsgroup), commercial speech may crowd

out non-commercial discussion, inhibiting free expression and the

receipt of other viewpoints. For example, a commercial message at

least requires the recipient to scan and delete, if not read, the

message. The mere presence of the commercial message may obscure

other messages and prevent the user from being exposed to many

different opinions.

This   argument    for  commercial    speech   regulation  is

strengthened where the university’s academic mission is concerned.

The public university has a substantial interest in protecting the

104  Edenfield v. Fane, 507 U.S. 761, 770-71 (1993). See also Home Box

Office, Inc. v. FCC, 567 F.2d 9, 36 (D.C. Cir.), cert. denied, 434 U.S. 829 (1977)

(“[A] ‘regulation perfectly reasonable and appropriate in the face of a given problem

may be highly capricious if that problem does not exist.’”) (citing City of Chicago

v. FPC, 458 F.2d 731 (D.C. Cir. 1971), cert. denied, 405 U.S. 1074 (1972).

105  Credence must be given to the argument that in fact no substantial harm

resulted when two lawyers promulgated their single unsolicited advertisement to

thousands on the Net. The harm occurred later, when users who were angry at the

couple flooded the lawyers’ Internet account with mailbombs. See supra note 24.

106  See generally Markoff, supra note 48.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

integrity of its academic mission."�7 As a tax- and state-supported

entity, the public university acts under a mandate from the public to

educate the nation's students. Though the education of students is a

broad goal that can be satisfied in many ways, a public university may

be concerned by the idea that its academic mission is being corrupted

by commercial speech. If, in fact, commercial speech on the Net

impinges on any aspect of the university's educational mission-as

commercial speech in a university building during class hours may

impinge on academic instruction in that same building-then the

university may correctly maintain that such speech need not be

accommodated or tolerated.

However, commercial speech in and of itself does not impinge

on academic or educational uses of the Internet. Extra messages,

which cause higher volume and congestion on the network, may delay

academic messages on the Internet, but the commercial nature of those

messages is not determinative. Commercial messages do not have

priority on the Net and a commercial message is just as likely to be

delayed during times of congestion as an academic message. In other

words, an academic message is just as likely as a commercial message

to delay the transmission of other messages.

An advocate for speech restrictions still might argue that even

though commercial speech is not the actual culprit, a speech restriction

imposed by the university need not be the least restrictive means

necessary to achieve the government objective.'08 The Court has

"not gone so far as to impose on [the government] the burden of

proving that the distinguishment is 100% complete, or that the manner

is the least severe … .”19 Rather, the Court requires that the

restriction be “in proportion to the interest served” and articulates a

test that is just “short of the least-restrictive-means standard.”11�

107  See generally Board of Trustees v. Fox, 492 U.S. 469 (1989).

108  Consonant with past analysis, this Comment hypothesizes that the

government objective is to limit the number of messages transmitted on the Internet,

as opposed to limiting the commercial nature of the Net.

109  Fox, 492 U.S. at 480 (citations omitted).

110  Id. at 477-81 (citations omitted).

364

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 365

All the same, restrictions that disregard “far less restrictive and

more precise means” will not be allowed under the Court’s test.”‘

A complete ban on Internet commercial speech, as opposed to

labeling, zoning, or limiting the commercial messages transmitted,

may well be an imprecise and excessive burden on speech.

Moreover, the university’s claim that commercial speech

threatens academic speech assumes that on the whole, the two are not

often one and the same.      Is non-commercial speech inherently

academic? Not always. It would be hard to maintain that personal e-

mail communication is academic. Yet because it is non-commercial,

the university does not forbid personal e-mail.”2 On the other hand,

is commercial speech always non-academic? Business classes may

utilize the Internet in order to teach valuable lessons about economics,

computing, advertising, and business. It is difficult to argue that the

university should discourage entrepreneurial pursuits solely because

the Internet user proposes a transaction from which he or she may

personally benefit.

Perhaps the university should discourage entrepreneurial

pursuits because they implicate the university in the funding for a

commercial enterprise. A user who advertises over the Net is getting

a free ride courtesy of the university’s investment and is therefore

unjustly enriched by tax dollars.      The university  may argue

convincingly that it does not want to effectively subsidize commercial

endeavors.

Yet the university already provides another forum through

which students and other members of the academic community can

advertise-the campus kiosk. One can conclude that the university’s

opposition to subsidizing commercial speech must not be too strong if

it is willing to erect fora on campus that are dedicated to

advertisements for such diverse subjects of commerce as baby-sitting

services, motorcycles, and concert tickets. Support for this conclusion

can be found in Capital Cities Cable, Inc. v. Crisp, where the Court

held that a statute requiring cable systems to delete all out-of-state

II   Id. at 479 (citations omitted).

112  This discussion does not purport to address the issue of underinclusiveness.

For a discussion of the relevance of such a claim, see Part IV.C.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

advertisements for alcoholic beverages could not be enforced, in part

because the state had not made a similar prohibition in other mediums

such as magazines."3     The Court recognized the state's interest in

limiting alcohol consumption and its narrow regulatory aims but

reasoned that government interests could not have been substantial

enough to warrant the ban because the state unevenly enforced its own

statute. 114

University kiosks and the Internet make strange siblings;

consequently, analogies between the two are not always perfect. At

the outset, the money required to establish a kiosk pales in comparison

to the investment required to fund at least one Internet connection.

The university may assert a greater interest in controlling its more

expensive medium. 115

Financial expense may not be the only justification for limiting

commercial speech to the university kiosk. The university can simply

assert that it finds commercial speech on a kiosk-where speech is

non-intrusive and can be contained-more palatable than commercial

speech on the free-wheeling Internet.

Since no case has yet challenged commercial speech

restrictions, this portion of the Comment has speculated upon the

interests a university might put forth in support of its restrictions.

While the issue is not beyond debate, the university probably does

have a substantial interest in restricting commercial speech sent over

its Internet accounts. The indirect costs of increased traffic seem to

warrant a regulatory scheme that ensures that the Internet is not

overburdened.

13    Capital Cities Cable, Inc. v. Crisp, 467 U.S. 691 (1984).

114  Id. Most significantly, Federal Communications Commission regulations

and federal copyright law already forbade cable systems from censoring such ads.

Still, according to the Court, the state's interest in preventing alcohol advertisements

in a dry town might have been substantial enough to trump the Congressionally

mandated law were it not for the fact that the state did not consistently enforce its

own ban.

"15  The Internet is arguably a more valuable medium than the kiosk because it

has the potential to facilitate communication between millions of people. Therefore,

the marginal increase in investment may be equated with the return.

366

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 367

3.     Is the Government Interest Directly Advanced?

While perhaps substantial, the goals of the university are not

directly advanced by a restriction on all computer-based commercial

speech. If the university is most concerned with the possibility of

system failure after one too many commercial messages, for example,

it is no solution to impose a message limit according to the content of

the message. Imagine what would happen if the post office tried to

control the number of letters we send by restricting our discussions to

non-commercial subjects. The measure could perhaps be successful

and would thereby force people to find another method of

communicating the forbidden words. However, the public right to

communicate through the mails without restriction is well-settled.

From a public policy standpoint, the government-run post office

should bear the burden of either hiring more postal workers or

somehow restricting the number of letters each person can send.116

Similarly, the   university  has  not given    a   “constitutionally

adequate”"7 rationale for promoting diversity in academic speech by

restricting commercial speech over the Internet. Diversity is rarely

promoted by a regulation that restricts lawful and truthful expression.

A rule forbidding all commercial speech does not ensure that other

speech will be heard.

If a restriction on commercial speech is intended to preserve

the academic mission of the school, the restriction must further one of

two possible objectives. On both accounts, the university policy does

not advance the stated university goal. Restricting commercial speech

does not ensure that the academic mission is uncorrupted. Personal

e-mail, permissible under school policies, could be considered just as

corruptive. Nor does commercial speech itself always corrupt the

academic mission; in some instances, advertising could be used as an

educational tool.

116  This is the practical effect of requiring the purchase and postage of stamps.

The post office assumes that the economics of the marketplace—or what people are

willing to pay-will limit the amount of mail each person sends.

117  Central Hudson Gas v. Public Serv. Comm’n, 447 U.S. 557, 569 (1980).

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

4.     Is the Restriction Reasonably Tailored?

Courts usually grant legislative bodies great discretion in

choosing the proper means of regulation. As a result, regulation does

not have to be the least restrictive means of accomplishing an

objective, but it must be narrowly tailored to achieve its purpose."1'

Commercial speech regulations on the Internet appear to fall short of

this tailoring requirement. However substantial a university's interests

in having commercial speech restricted, the restrictions themselves

appear to be overbroad."9

In Discovery Network, the Court struck down a restriction of

commercial newsracks initially justified by the city's interest in safety

and aesthetics.120 Finding that such a justification was unreasonable,

the majority noted, "[T]he city’s argument attaches more importance

to the distinction between commercial and noncommercial speech than

our cases warrant and seriously underestimates the value of

commercial speech.”"2 On behalf of the majority, Justice Stevens

concluded that “the distinction bears no relationship whatsoever to the

particular interests that the city has asserted.”122 The concern was

that each increase in the aggregate number of newsracks harmed city

safety standards and lowered the aesthetic value of the property. For

this reason, at least, all newsracks were at fault whether commercial

or otherwise.

118   Board of Trustees v. Fox, 492 U.S. 469, 480 (1989) (“What our decisions

require is a ‘fit’ between the legislature’s ends and the means chosen to accomplish

those ends-a fit that is not necessarily perfect, but reasonable . . . .”) (citing

Posadas de Puerto Rico Assocs. v. Tourism Co. Of Puerto Rico, 478 U.S. 328, 341

(1986)).

119   While an allegation that the regulation is overbroad can be adequately

maintained, a similar argument does not obtain, in converse, for underinclusiveness.

For example, the university has not violated the First Amendment by failing to

restrict religious or political speech, in addition to implementing its prohibition on

commercial speech.

120   City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 426 (1993).

121  Id. at 419.

12   Id. at 424.

368

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 369

A government prohibition on commercial Internet speech is

similarly expansive. Public universities are proscribing commercial

speech as it has never been proscribed before-across an entire

medium.”2′ Contrast the Internet, for example, with television,

where the government would not even attempt to prohibit commercial

speech for all messages communicated across the medium.

The university policy against commercial speech cannot be

criticized as underinclusive, though the underinclusiveness argument

is deceptively obvious. On its face, the university policy seems to be

based. on the idea that because commercial speech is nonacademic, it

is unwanted on the Internet. Other forms of nonacademic speech, such

as religious and political speech, do not get similar treatment. Thus,

one could infer that this policy seeks to promote the university’s

123  The Discovery Network decision refined the contours of the commercial

speech doctrine in one other manner that may be relevant to Internet restrictions.

The Discovery Network Court explained that Metromedia, an earlier case upholding

commercial billboard regulations, was inapplicable.  Id. at 425 n.20.  In

Metromedia, the Supreme Court ruled that the city of San Diego could distinguish

between onsite and offsite billboard advertising in order to promote a legitimate

interest in traffic safety and aesthetics. Metromedia, Inc. v. City of San Diego, 453

U.S. 490 (1981). Even though the ordinance was underinclusive in its failure to

regulate all billboards, the Court found that the ordinance directly advanced city

goals and that the city was free to discriminate against offsite advertising based on

the fact that its periodically changing content was a greater threat to traffic safety.

Id. at 511. Furthermore, the Court ruled that the city had the right to decide that

one form of commercial speech (advertising at the site of a commercial enterprise)

was more valuable than another (advertising a business at another’s location). The

city could then choose to regulate accordingly. Id. at 512. The Discovery Network

Court distinguished Metromedia by stating that the permissible San Diego regulation

drew a distinction between onsite and offsite commercial speech, rather than a

distinction between commercial and non-commercial speech.  The majority

specifically did not grant the city permission to “distinguish between commercial and

non-commercial offsite billboards that cause the same aesthetic and safety concerns.”

Discovery Network, 507 U.S. at 425 n.20.

Unlike academic Internet restrictions, the Cincinnati ordinance did not

prohibit all billboard commercial speech. In contrast, the Metromedia Court did not

have an opportunity to conclude that the regulation was overbroad without

considering such a total prohibition on outdoor advertising. Metromedia, 453 U.S.

at 515 n.20.

370        UCLA ENTERTAINMENT LAW              REVIEW      [Vol. 3:333

academic mission by including many potentially offensive forms of

speech yet excluding commercial speech.

The argument is a good one. However, it is unlikely that such

an argument will withstand attack, given the Court's position in

Metromedia Inc. v. City of San Diego and in a more recent case,

Posadas de Puerto Rico Assocs. v. Tourism Co. of Puerto Rico.124

As the Court stated in Posadas, "[W]hether other kinds of gambling

are advertised in Puerto Rico or not, the restrictions on advertising of

casino gambling ‘directly advance’ the legislature’s interest in reducing

demand for games of chance. ” 2 A divided Court allowed the

legislature to classify casino gambling separately, for purposes of an

advertising ban, and stated that “the government could have enacted

a wholesale prohibition of the underlying conduct [but instead took a

constitutionally permissible] less intrusive step of allowing the

conduct,   but   reducing    the  demand    through    restrictions on

advertising. “126  The Court seemed to imply that the legislature

could implement a limited advertising ban as the first step in the move

to regulate gambling.”‘

Following this lead, the university could contend, quite

persuasively, that its regulation need not meet the underinclusiveness

requirement as long as the school is attempting in good faith to

remedy a large problem like congestion on the Internet. With the

12    478 U.S. 328 (1986). In an opinion by Justice Rehnquist, the Court held

that local restrictions on casino gambling advertisements were valid because they:

1) addressed a substantial government interest in reducing the demand for gambling;

2) directly advanced the government’s interest and were not underinclusive; and 3)

were not excessively restrictive because they affected only advertising aimed at

residents and not at tourists.

l2   Id. at 342.

126  Id. at 346. But see Posadas De Puerto Rico Assocs. v. Tourism Co. of

Puerto Rico 478 U.S. 328, 349 (Brennan, J., dissenting) (arguing that a ban on

casino advertising raises First Amendment problems because it is a restriction on

truthful speech concerning lawful activity).

127   Some have suggested that the Posadas decision effectively eviscerated the

Central Hudson test. See Curia Regis Kurland, Posadas de Puerto Rico v. Tourism

Company: ‘Twas Strange, ‘Twas Passing Strange, ‘Twas Piti�ful, ‘Twas Wondrous

Pitiful, 1986 SuP. CT. REv. (1) 1197.

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 371

apparent blessing of the Supreme Court, university policymakers

might proceed one step at a time toward a solution.        Banning

commercial speech would then become just one component of a plan

to restrict Internet speech in the name of public interest.      A

commercial speech ban would thereby be immune to any attack

alleging that the ban does not prohibit all speech equally.

Based on Discovery Network, it is still possible to show that

Internet speech restrictions are overbroad. Thus, the policy critic

must consider whether alternate means of communication are available

to the academic Internet user. Certainly, academic users retain the

option to subscribe to the Internet through a commercial provider.

Commercial providers such as America Online and Compuserve allow

their users to access commercial messages without penalty.128

However, because there is uncertainty about whether commercial

service providers can    be liable for the    speech  of others,129

commercial providers may      have   the  right to   censor speech

indiscriminately on a commercial account. Therefore, a university

account may be the only true place where Internet speech restrictions

must be justified by a significant interest. In the absence of incentives

for the private sector to provide an unrestricted Internet forum, a court

may find that the government should bear the burden of maintaining

an outlet for free speech.

Finally, the government cannot show that the problem of

Internet congestion will not be cured with a reasonable restriction on

the time, place, and manner of commercial speech. For example, the

university could require that bulk messages be transmitted only at 2

128  The cost of establishing an Internet account may be prohibitively high for

some. For instance, the would-be user must have access to a computer. For many

without ready access, a $1,000 purchase is the first obstacle to overcome.

Thereafter, a user can expect to spend around $19.95 per month for the most basic

services. PIPELINE, Brochure (1994).

129  Cubby v. Compuserve, 776 F. Supp. 135, 141 (1991). The court suggests

that without scienter, a bulletin board moderator cannot be held liable for the

defamatory statements of one of its users.

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:333

a.m., when Internet lines are more available.'3� Even better, the

university might require all unsolicited commercial messages to be

labeled in the heading of the message. The Comment addresses this

solution in the next section.

IV.    TOWARD A SOLUTION

The university cannot be blamed for failing to discover a more

practicable solution to the Internet congestion problem. Technological

advances occur quickly, and the fact that universities provide access

to the Net is a testament to their attempts to keep up with the times.

However,     now   that  the   Internet  is  moving    toward

privatization,"' the university will be forced to justify its restrictions

on access to a commercial medium. The university's primary concern

will doubtless be to find a justifiable solution that will not facilitate

abuse of a free service. Understandably, the university wants to avoid

appearing as if it will happily accommodate unlimited and unsolicited

mailings such as those that cripple the Internet system. 132

Many universities already limit how much a user can'access the

Internet through a university account. At the University of California

at Los Angeles, for example, the "open access" user is restricted to

130 resource units.133 "Resource units" are like monetary units;

they serve as a measure to determine the amount of the resource used

in order to evenly allocate that resource among the university's 28,000

users."    Thus, each time the CPU      (Central Procesing Unit) is

utilized, a disk is read, or a user accesses a dial-up service, the user

will be charged accordingly.

130  A note of caution about such a policy: users across the globe will access the

Net in different time zones, so there may never be a "slow period" in any day on

the Internet.

131  See supra text accompanying note 18.

132  See supra note 24 (discussing the negative effects of an unsolicited mass

advertisement on the Internet).

133  Telephone Interview with Bonnie Mika, supra note 25.

I3   Id.

372

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 373

At the same time, the public university seeks an inexpensive

method of regulating the activities of its many users. It certainly

seems reasonable for the government provider to be able to control

objectionable messages for users who request such screening yet allow

others the freedom to receive and send those same messages.

Some critics have suggested requiring an Internet “stamp” on

all commercial mail.     According to reports, this device would

redistribute the charge of an advertisement where it belongs-on the

advertiser. However, requiring a stamp might imply that commercial

speech is either more valuable (if one believes that all speech worth

money is more valuable) or less valuable (if one believes that speech

that does not enjoy free transmission is less worthy of transmission)

than  non-commercial speech.       The stamp—as applied only to

commercial speech-would come under constitutional scrutiny because

a content-based tax on commercial speech (as opposed to non-

commercial speech) would burden one form of permissible speech

more than another.’35

Alternatively,  the   university’36 could   require  that  all

commercial speech be labeled as such in the “subject” line of each

message.’37 Every message already has such a line; the requirement

would hinge on demanding that advertisers be truthful in labeling their

messages.’3″ Furthermore, with a requirement that all unsolicited

commercial speech be labeled, readers could not only be alerted to

135  To enforce the stamp requirement, the government would need to prove that

the regulation is a reasonable fit between the asserted ends and the means used to

achieve those ends. City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410,

426 (1993).

136  Eventually, congressional action might also be necessary to implement this

requirement nationwide. For the purposes of this Comment, however, only

university policies will be considered.

137  This idea is not the author’s own; among other places, it was suggested in

an article in the Washington Post. Michael Schrage, E-Mail Stamps, Software Filters

Could Help Keep Cyberspace Clean, WASH. POST, April 22, 1994, at G3.

138  Id. The university could rely on third-party users, as it does now, in order

to enforce its labeling requirement.

374       UCLA ENTERTAINMENT LAW             REVIEW      [Vol. 3:333

unwanted messages, but they could also screen them out with

filters. 139

A  labeling requirement will not directly affect the First

Amendment rights of any advertiser, as it does not prevent a speaker

from advertising on the Internet. In 1985, the Supreme Court held

that a law requiring political films to be labeled as "political

propaganda" was not a burden on protected speech because the term

"political propaganda" was neutral rather than pejorative. The Court

found Congress was justified in requiring "additional disclosures that

would better enable the public to evaluate the import of the

propaganda."140 Likewise, commercial labels for Internet messages

would be neutral indicators of a message's source. The label would

not burden advertisers unduly as a stamp might.

With a labeling requirement in place, the university might

attempt to limit either the number of commercial speech messages sent

by any one user or the number of message recipients. The university

could, in good conscience, allow advertisers to participate on the Net

without worrying that its users might strain the system with excessive

messages.

V.     CONCLUSION

At this stage in the evolution of the Internet, university access

providers may be wary about allowing commercial speech to travel

alongside non-commercial speech. Resource scarcity, in particular,

seems a legitimate concern.

However, as a government entity, the public university

probably cannot issue a flat-out ban on commercial speech. Despite

the justifiable reasons for such a ban, under the commercial speech

doctrine articulated in Discovery Network, a general policy restricting

139  Id. Filters can sort mail by sender or topic and then alert the mail recipient

or place the special mail in a separate folder.

140  Meese v. Keene, 481 U.S. 465, 480 (1987). In particular, the Court was

concerned that "hearers and readers . . . not be deceived by the belief that the

information comes from a disinterested source." Id. at 482.

1996] COMMERCIAL SPEECH & UNIV. NET ACCOUNT 375

commercial speech on the Internet would be overinclusive. A ban

would impinge on the First Amendment rights of faculty and student

speakers.

There may be many viable solutions not addressed in this

Comment because they are too technical. However, one solution

seems apparent; the university can prevent the harm it fears from

commercial speech by requiring commercial messages to be labeled as

such in the subject line of each message.

If the Internet is to become a widely used method of

communication between millions of speakers, then speech restrictions

on the Net should be carefully crafted. A revision of the policies

governing university-provided Internet access is a good place to begin.

Volume 03, Issue 2, pp 427-466, Wichman

Cyberia: The Chilling of Online Free

Speech by the Communications

Decency Act

Michael S. Wichman*

I.     INTRODUCTION

In response to the growing fear that technology will corrupt our

children, the United States Congress has acted to protect the next

generation from harmful messages which come into the home from

cyberspace. Originally constructed by Senators Exon (D-Nebraska)

and Coats (R-Indiana), Title V of the 1996 telecommunications law,

which contains the Communications Decency Act, would reshape the

Internet into a forum of public discussion that is far more limited in

its possible scope than it is today. The question raised by this

Comment is whether the scope of the statute overreaches its

constitutional limits by prohibiting speech that is protected by the First

Amendment. The political goals motivating the legislation are not in

dispute. Congress has clearly stated that the goal of the legislation is

to protect minors from sexually-explicit material which is easily

accessible in cyberspace; the author of this Comment has no intention

to advocate against this legitimate, perhaps compelling, government

interest.

The statute in question is Public Law 104-104. Title V,

Section  502(a)(1)(A)   states that  no   person   may   use  a

telecommunications device to knowingly make, create, or solicit and

initiate the transmission of any communication which is “obscene,

lewd, lascivious, filthy, or indecent, with intent to annoy, abuse,

Comments Editor, UCLA Entertainment Law Review. J.D., UCLA School

of Law, 1997; B.A., Indiana University, 1993. I would like to thank Professor

Mark Grady for his guidance during the writing of this Comment and Professor

Jerry Kang for his additional advice concerning later revisions.

UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

threaten, or harass another person."1 However, the purpose of this

Comment is to analyze the applicability of the Communications

Decency Act to a medium in which freedom of speech should be

analyzed in a manner recognizing that a person theoretically could

have absolute control over what flashes upon the screen before him.

As a result, the sections which have particular relevance to this

Comment are Section 502(a)(1)(B) & (a)(2) which state:

(a) Whoever:

(1) in interstate or foreign communications-

(B) by means of a telecommunications device

knowingly:

(i) makes, creates, or solicits, and

(ii) initiates the transmission of any

comment, request, suggestion, proposal,

image, or other communication which is

obscene or indecent, knowing that the

recipient of the communication is under

18 years of age, regardless of whether

the maker of such communication

placed the  call or  initiated the

communication;2

(2) knowingly permits any telecommunications facility

under his control to be used for any activity prohibited by

paragraph (1) with the intent that it be used for such

activity, shall be fined under title 18, United States Code,

or imprisoned not more than two years, or both.3

Section 502(d) additionally stipulates the following for users of

interactive computer services:

(d) Whoever-

(1) in interstate or foreign communications knowingly-

(A) uses an interactive computer service to send

to a specific person or persons under 18 years of

Communications Decency Act of 1996, Pub. L. No. 104-104, �

502(a)(1)(A) [hereinafter Communications Decency Act].

2    Id., � 502(a)(1)(B).

3    Id., � 502(a)(2).

428

CYBERIA

age, or

(B) uses any interactive computer service to

display in a manner available to a person under

18 years of age, any comment, request,

suggestion,  proposal,   image,   or   other

communication that, in context, depicts or

describes, in terms patently  offensive as

measured   by    contemporary    community

standards, sexual or excretory activities or

organs, regardless of whether the user of such

services placed  the  call or initiated  the

communication; or

(2) knowingly permits any telecommunications facility

under such person’s control to be used for an activity

prohibited by paragraph (1) with the intent that it be used

for such activity, shall be fined under title 18, United

States Code, or imprisoned not more than two years, or

both.4

As a defense to the above sections, Section (e) provides

defenses for facility, network, or system providers who offer services

that are incidental to providing access and that are not responsible for

the creative content of the messages.’ In addition, the Act offers a

defense from prosecution if the following protective measures in

Section 502(e)(5) are utilized:

(5) It is a defense to a prosecution under subsection (a)(1)(B) or

(d), or under subsection (a)(2) with respect to the use of a facility

for an activity under subsection (a)(1)(B) that a person -

(A) has taken, in good faith, reasonable, effective, and

appropriate actions under the circumstances to restrict or

prevent access by minors to a communication specified in

such subsections, which may involve any appropriate

measures to restrict minors from such communications,

including any method which is feasible under available

technology; or

(B) has restricted access to such communication by

requiring use of a verified credit card, debit account,

4     Id., � 502 (d).

5     Id., � 502(e)(1).

1996]

UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

adult access code, or adult identification number.6

The subject matter that this law is meant to address can be

found via access to any online service and a bit of searching in the

right locations on the Internet. Pornography is certainly present in

cyberspace. Some of the material could be classified as obscene with

no constitutional protection, while some of it, such as pictures taken

from Playboy magazine, would only be considered indecent and would

thereby still receive constitutional protection.

A recent USA Today article describes the situation online.7

First of all, "[t]he proportion of raunchy material is small, but it

exists. If you want to avoid sex on-line, that’s fairly easy. But if you

know where it is, you can get it.”‘ Sexually-explicit material does

not suddenly appear without a request, but an Internet search using the

words “sex,” “nude,” and “adult” brought up 9413 documents.9

Web “pages” feature such diverse fare as the following: 1) sex shops

which advertise adult communications services and “marital aids” for

order by credit card; 2) personal pages where individuals can post

pictures or text; and 3) newsgroups consisting of postings which

contain images, text or sounds.10 According to Billy Wildhack, the

majority of the images are soft-core erotic photos of women, with

very little actual hard-core obscenity or child-porn representing the

general content of online materials.”  Explicit content can also be

found in the live chat rooms of the online services where a person can

engage in conversation with a large number of users or access a

private room for more intimate associations.’2

Considering that much of this material is being accessed by

children, it is difficult to argue that the government does not have a

worthwhile goal in preventing undesired access to this material by

6    Id., � 502(e)(5).

7    Leslie Miller, The Internet’s Seamy Side: On-line Sex, Once Found, Can Be

Raunchy, USA TODAY, June 19, 1995, at Al.

8    Id.

9    Id.

10   Id.

I    Id.

12   Id.

430

CYBERIA

minors. However, implementation of the legislation could serve such

noble goals at the expense of free speech among adults who would

otherwise be able to communicate in such a manner. To designate the

legality of a communication based on whether an individual knowingly

“makes, creates, or solicits” any “indecent” or “patently offensive”

communication to a person under the age of 18 will effectively

eliminate the legality of virtually all “indecent” communication over

the Internet.13 Because of the nature of the Internet, any posting or

any e-mail message could represent such a communication. A court

could reasonably find a user to be quite aware that a minor could

access any message board on the Internet or on an interactive

computer service, and on that basis the knowledge requirement could

be fulfilled, even though the communication would not have been

directed at the minor.’4 Similarly, e-mail can be relayed by the

receiver to a third party, and a minor could then come into contact

with the message even though the minor was not the intended recipient

of the original sender. “To post anything, anywhere, here or abroad,

‘makes it available’ to millions of unidentified users who may get it

by a variety of technical routes and then make a copy for their own

use. Material can thus be ‘received’ without anybody’s sending [of it]

.. ..” -1   In essence, many forms of online communications can

knowingly end up in the wrong hands simply because an individual

who sends a message over the network knows that the message could

be viewed by any number of people online whether or not she intends

that result.

Because   of the    substantial over-inclusiveness of the

Communications Decency Act (CDA), the regulation of online speech

that effectively would constitute an outright ban does not pass

constitutional scrutiny despite a compelling interest to prevent access

to this material by minors. The indecency provision (and perhaps

even the patently offensive standard) is too broad in what it determines

to be an appropriate communication over the Internet. Despite the

13   Communications Decency Act, � 502(a)(1)(A).

14   Nat Hentoff, When Privacy Doesn’t Compute, SAN DIEGO UNION-TRIBUNE,

Sept. 3, 1995, at G4.

15   Id. (quoting a Washington Post editorial) (citation omitted).

1996]

432       UCLA ENTERTAINMENT LAW REVIEW                [Vol. 3:427

fact that several defenses have been included in the CDA, they only

serve to protect service and network providers offering access to

particular types of materials. To the average user who simply wants

to post a message which happens to include an expletive, the CDA

could serve to criminalize this person's speech and thereby eliminate

that individual's voice from being heard. The legal structure that was

intended to clean up the darker corners of the online world has not yet

considered the technology that enables individuals to communicate as

equals in cyberspace. As a result, certain indecent communications

will continue under the new law despite how explicit the material may

be, as long as it is not obscene. On the other hand, the majority of

individuals who engage in potentially mild forms of indecent

communications may be at risk to suffer the same consequences as

purveyors of sexually-explicit communications because of their

inability to screen the recipients of their messages. The resulting

chilling of speech will likely be regarded as unconstitutional by the

Court based on this principle alone, let alone that the indecency

provision does not describe with any clarity what material will be

considered "indecent" under the law. Therefore, the law would be

void for vagueness.

Part II of this Comment will analyze the history of the

Supreme Court's efforts to determine the constitutionality of

regulations that restrict indecent communications disseminated over

new forms of media.     Some of the relevant issues that will be

discussed include the policies of scarcity, intrusiveness, and protecting

children from harmful communications. Part III will briefly address

the issue of public forum analysis. Finally, Part IV will examine the

characteristics of the Internet to determine how the medium should be

categorized under the First Amendment to determine which restrictive

measures may be used to regulate speech on the Internet.

This Comment will primarily address the issue whether the

government, not online services themselves, will be limited in its

capacity to restrict speech. Though the issue of whether online

services can be considered state actors will be addressed, little analysis

of the extent by which the online service can be prevented from

restricting speech will be discussed.   In addition, the issues of

obscenity and child-pornography are irrelevant to the subject except

to the degree that the distinction between obscenity and indecency may

rely on a finding that a work lacks "serious literary, artistic, political,

or scientific value."16 The issue of community standards also falls

outside the realm of this Comment because it is currently amorphous

whether geographical community standards or cyberspace community

standards of decency will be found to be more significant when

determining whether a communication is obscene or indecent under the

Supreme Court's current obscenity test. Finally, because obscenity

and child pornography have been effectively prosecuted under current

law, the value of the Communications Decency Act is only relevant

to its practical utility in aiding the continued enforcement of such

restrictions, not the constitutionality of those restrictions.

II.    THE SUPREME COURT'S FIRST AMENDMENT STANDARD FOR

REGULATING DISSEMINATION OF INDECENT COMMUNICATIONS

OVER NEW FORMS OF MEDIA TECHNOLOGIES

A.     Obscenity versus Indecency

To clarify what kind of speech is restricted by the

Communications Decency Act, first it must be made clear what is

meant by the term "indecent." "Indecency" is not as high a standard

as "obscenity.""7 Obscenity is clearly defined within the language

of Miller v. California as "works which, taken as a whole, appeal to

the prurient interest in sex, which portray sexual conduct in a patently

offensive way, and which, taken as a whole, do not have a serious

literary, artistic, political, or scientific value.""8 The state law

involved must also specifically define which conduct fits within these

criteria." The court applies a subjective "community standards" test

to determine whether the work appeals to the prurient interest, but

limits that test by using an objective standard for determining whether

16   Miller v. California, 413 U.S. 15, 24 (1973).

17   FCC v. Pacifica Found., 438 U.S. 726, 740-41 (1978).

18   Miller, 413 U.S. at 24.

19   Id.

1996]

CYBERIA

433

UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

the work has serious literary, artistic, political, or scientific value.2�

It is thereby possible that material can have a high amount of sexual

content yet still not be obscene. However, this does not mean that

this sexually-explicit material cannot be restricted from being widely

accessible to the population. The Court held in Butler v. Michigan

that the state could not "reduce the adult population of Michigan to

reading only what is fit for children,"21 but also later held that a state

could restrict the availability of adult books to children.22

On the other end of the spectrum, indecent speech can be

recognized in language which is not sexually-explicit but may be

vulgar or profane. The "offensive conduct" found in Cohen v.

California2 was not the use of a profane word with the purpose of

expressing the sexual nature of the word. The defendant's decision to

wear a jacket bearing the message "Fuck the Draft" could not be

considered under an obscenity paradigm because an obscene

expression "must be, in some significant way, erotic."'24 In holding

that this speech was protected, the Court stated the following:

While this court has recognized that government may properly act

in many situations to prohibit intrusion into the privacy of the

home of unwelcome views and ideas which cannot be totally

banned from the public dialogue, we have at the same time

consistently stressed that "we are often 'captives' outside the

sanctuary of the home and subject to objectionable speech."'

The policy of the Court in regard to this middle-ground of offensive

communications can thus be viewed as being somewhere between

totally protected and totally unprotected. The circumstances determine

whether the communication is permissible or not within those

circumstances. The cases concerning government regulation of the

media clearly demonstrate the use of such standards to determine how

20   Id. at 26-34.

21   Butler v. Michigan, 352 U.S. 380, 383 (1957).

22   Ginsberg v. New York, 390 U.S. 629 (1968).

23   403 U.S. 15 (1971).

24   Id. at 20.

2    Id. at21.

434

CYBERIA

to apply the First Amendment to the different characteristics of the

various forms of communication.

B.     Indecency and the Media-A New         Justification for the

Regulation of Indecency

The Federal Communications Commission       (FCC), the

government agency that oversees the regulation of modem forms of

media, has been granted considerable powers to intervene and impose

restrictions on media.  In particular, the broadcast media has

considerable controls imposed upon it by the federal government. In

Red Lion Broadcasting Co. v. FCC, the Court allowed the FCC to

impose the "fairness doctrine" on broadcasters so that the stations

would attempt to provide balanced coverage for opposing sides of an

issue.26 The primary justification for permitting such restrictions,

according to the Court, was that "differences in the characteristics of

new media justify differences in the First Amendment standards

applied to them."27 The primary differences which the Court

recognized for the new media in this case were the "scarcity of

broadcast frequencies, the Government's role in allocating those

frequencies, and the legitimate claims of those without government

assistance to gain access to those frequencies for expression of their

views. "28

With the advent of the 500-channel future of cable television,

the view of the Supreme Court as it pertains to regulation of the media

has been changing with the times. In Turner Broadcasting System,

Inc. v. FCC,29 the Court permitted the FCC to require cable

operators to transmit the programming of local public television

broadcast stations. The Court viewed the cable market as having

substantial "barriers to entry for new programmers and a reduction in

the number of media voices available to consumers" as a result of

26   Red Lion Broadcasting Co. v. FCC, 395 U.S. 367, 369-75 (1969).

27   Id. at 386.

28   Id. at 400.

29   Turner Broadcasting System, Inc. v. FCC, - U.S. -, 114 S. Ct. 2445

(1994).

19961

435

UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

"horizontal concentration, with many cable operators sharing common

ownership. "3  However, the government maintained, and the Court

rejected, that the must-carry provisions were "industry-specific

antitrust legislation, and thus warrant[ed] rational basis scrutiny” even

though the market commodity in this case was speech.”a The Court

chose not to follow the same rationale as in Red Lion because of the

technology differences in the medium; “there may be no practical

limitation on the number of speakers who may use the cable

medium.”32 The scarcity argument would no longer justify a relaxed

standard of scrutiny where the medium of communication is open to

many non-interfering communicators.33 As a result, scarcity will not

serve as a proper basis to justify any regulation of cyberspace.

In addition to scarcity, broadcasts have another feature which

the Court finds to be significant when dealing with speech over the

airwaves: intrusiveness. In FCC v. Pacifica Foundation,34 the Court

stated that “[p]atently offensive, indecent material presented over the

airwaves confronts the citizen, not only in public, but also in the

privacy of the home, where the individual’s right to be let alone

plainly outweighs the First Amendment rights of an intruder;” this

ruling would justify the FCC’s authority to restrict speech under 18

U.S.C. � 1464.35       This idea of the offensive broadcast is

imperceptible when the television or radio is not first turned on.

However, the Supreme Court makes a reference to the fact that “the

broadcast media have established a uniquely pervasive presence in the

lives of all Americans.”36  The intruder enters because the Court

apparently assumes that the door is wide open on a general basis: in

our society, the television or the radio is perpetually on.

A second feature of broadcast media that the Supreme Court

recognizes as relevant is that “broadcasting is uniquely accessible to

30   Id. at 2454-455.

31   Id. at 2458.

32   Id. at 2457.

33   Id.

3    FCC v. Pacifica Found., 438 U.S. 726, 748-49 (1978).

35   Id. at 748.

3    Id.

436

CYBERIA

children, even those too young to read. “17 In the case at hand, a

radio station played a 12-minute monologue by George Carlin in

which the comedian lists off the seven “Filthy Words” which never

can be spoken over the airwaves; the broadcast was heard by a man

who was driving in his car with his young son when the broadcast was

aired.38 The Court found significant the fact that “[a]lthough

Cohen’s written message might have been incomprehensible to a first

grader, Pacifica’s broadcast could have enlarged a child’s vocabulary

in an instant.”39

The Court’s prior determination in Ginsberg v. New York that

the state had the right to restrict children’s access to indecent materials

to protect the “well being of its youth” and in supporting “parents’

claim to authority in their own household” was then weighed in with

“[t]he ease with which children may obtain access to broadcast

material”   to   “justify  the  special   treatment   of   indecent

broadcasting. “a It is also important to note that the Court sought

“to emphasize the narrowness of [the] holding.”41 The restriction of

the First Arneidment right of free speech in the broadcast media was

seen to be a very specific ruling in the Pacifica decision and in

subsequent decisions. In the actual language of Pacifica, the Court

pinpointed certain examples of permissible broadcasts, which included

“a two-way radio conversation between a cab driver and a dispatcher,

or a telecast of an Elizabethan comedy;” or perhaps even the “time of

day” of the broadcast was the determining factor for permissibility.42

In a recent decision, Action for Children’s Television v. FCC

(ACT IIN),`3 the District of Columbia Circuit held that indecency

standards imposed by the FCC that restricted indecent broadcasts to

the hours between midnight and 6:00 a.m. were constitutional. The

court upheld the restrictions even though cable has been increasing the

37   Id. at 749.

38   Id. at 726-30.

39   Id. at 749 (referring to Cohen v. California, 403 U.S. 15 (1971)).

40   Id. at 749-50 (citing Ginsberg, 390 U.S. at 639-40).

41   Pacifica, 438 U.S. at 750.

42   Id.

43   58 F.3d 654 (D.C. Cir. 1995), cert. denied, 116 S.Ct. 701 (1996).

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UCLA ENTERTAINMENT LAW REVIEW    [Vol. 3:427

availability of alternative television transmissions because "broadcast

audiences have no choice but to 'subscribe' to the entire output of

traditional broadcasts."" When it comes to broadcasting, the court

grants the FCC a great deal of regulatory power. However, as Turner

indicated, the specificity of this regulatory power seems to be

restricted to broadcast television only.

The difficulties of extending the ruling held in Pacifica and

ACT II1 to other cases proved to be quite tedious as the government

sought   to   use   the  same    rationale-exposure    of   indecent

communications to children-in the "dial-a-porn" cases.45 In Sable

Communications v. FCC, the Court declared a total ban on indecent

interstate   commercial     telephone    communications     to   be

unconstitutional.4 The reasoning of Sable distinguished Pacifica on

the basis that a telephone message does not "intrude" into a person's

home; the caller creates the communication by making the call, and

there was no basis for a determination that a total ban was the least

restrictive means to prevent access to minors.4 It was not until Dial

Information Services Corp. of New York v. Thornburgh that a Court

of Appeals found a compelling governmental interest served through

regulation of speech by the "least restrictive means," as the Supreme

Court determined to be the standard under Sable.4"

The system used in Dial Information Services that passed

constitutional muster forsook voluntary blocking by the caller in favor

of more restrictive measures because there was strong evidence

indicating that the voluntary blocking system already in place did not

adequately prevent access to dial-a-porn by minors.49 The statute

involved   provided   a  safe  harbor   defense  against indecency

"    Id. at 660.

45   Sable Communications of California v. FCC, 492 U.S. 115 (1989); Dial

Info. Servs. Corp. of New York v. Thornburgh, 938 F.2d 1535 (2d Cir. 1991),

cert. denied, 502 U.S. 1072 (1992).

46   Id.

47   Id. at 127-29.

48   Dial Info. Servs., 938 F.2d at 1541 (citing Sable, 492 U.S. at 126).

49   Id. at 1542 (stating that only 4 percent of homes had been blocked, and an

awareness study showed that only half of the homes in the New York area served

by blocking in the case were aware of blocking or of dial-a-porn).

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prosecutions for those companies that initiated the procedures of

presubscription with the phone company to access the dial-a-porn

companies, required payment by credit card, and used access or

identification codes   or  descrambling   devices.5"  The     Court

determined these measures to be more effective than the voluntary

blocking measures imposed after the damage was already done by the

minor accessing the service; "[i]t always is more effective to lock the

barn before the horse is stolen. “”

In addition, prior restraint issues were potentially relevant in

the case. The Court cited New York Times Co. v. United States in

stating that “[o]nly where the government imposes a requirement of

advance approval or seeks to enjoin speech can there be a prior

restraint.”52 Because the statute imposed an obligation on the dial-a-

porn company to notify the telephone company, which is a common

carrier and not a state actor, this could not be considered a prior

restraint by the government.53 The Supreme Court cases invalidating

governmental prior restraint all concern government officials denying

access prior to the desired expression.’ Additionally, because the

telephone company is not compelled by the government to offer billing

services for the purposes of dial-a-porn providers and also makes no

efforts to review the content of any of the messages, it is not serving

as a state actor.55 The issue whether a common carrier or other

service provider, such as broadcast television, is to be considered a

state actor involves the application of the public forum doctrine to

these service providers to determine whether they should be treated as

a part of the government or should be treated as mere private actors.

so   Id. at 1539.

51   Id. at 1542.

52   Id. at 1543 (citing New York Times Co. v. United States, 403 U.S. 713

(1971)).

53   Id. at 1543.

A    Id. (citing Southeastern Promotions, Ltd. v. Conrad, 420 U.S. 546, 553

(1975); Ward v. Rock Against Racism, 491 U.S. 781, 795 n.5 (1989)).

55   Id. at 1543-544 (citing Carlin Communications, Inc. v. Mountain States Tel.

& Tel. Co., 827 F.2d 1291, 1297 (9th Cir. 1987), cert. denied, 485 U.S. 1029

(1988); Carlin Communications, Inc. v. Southern Bell Tel. & Tel. Co., 802 F.2d

1352, 1357-61 (llth Cir. 1986)).

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III.    SERVICE PROVIDERS ARE NOT CONSIDERED STATE ACTORS

UNDER THE PUBLIC FORUM DOCTRINE

The Court has held that although the government has the right

at times to restrict speech on its own property, there are limits to that

freedom. In Hague v. CIO, the Court held the following:

Wherever the title of streets and parks may rest, they have

immemorially been held in trust for the use of the public and, time

out of mind, have been used for purposes of assembly,

communicating thoughts between citizens, and discussing public

16

questions.

These areas, referred to as public fora, are thereby considered

to be protected from government restraint of public discussion.

However, the government may legislate to maintain the "primary

purpose" of the streets and sidewalks, transportation of people and

property, "[s]o long as legislation to this end does not abridge the

constitutional liberty of one rightfully upon the street to impart

information through speech or the distribution of literature .  . .-5

In Ward v. Rock Against Racism, the Court added:

[E]ven in a public forum the government may impose reasonable

restrictions on the time, place, and manner of protected speech,

provided the restrictions are justified without reference to the

content of the regulated speech, that they are narrowly tailored to

serve a significant governmental interest, and that they leave open

ample  alternative channels for communication  of  the

information.5″

If the government opens up a new forum to the public for

expressive activity, then the government must follow the same

standards as would apply to a traditional public forum except that the

government may close the forum to public communication if it so

56   Hague v. CIO, 307 U.S. 496, 515 (1939).

57   Schneider v. State, 308 U.S. 147, 160 (1939).

58   Ward, 491 U.S. at 790.

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chooses.”  In these new fora, only reasonable time, place, and

manner restrictions and narrowly drawn content-based restrictions

serving a compelling governmental interest are allowed, though a

“public forum may be created for a limited purpose . . . or for the

discussion of certain subjects.”‘ However, in new fora that are not

designated for public communication, the government can regulate the

communication within a forum at any point in the forum’s existence

as long as the suppression of speech is not based on regulation of the

speaker’s viewpoint.6″ This leads to analysis of the public forum

doctrine as it applies to private property.

While viewed somewhat as a public-private partnership to the

extent   that  the   government   regulates  and   subsidizes   the

communications industries, service providers are not owned or directly

controlled by the government. They are not state actors through any

ownership rationalization.  The question remains under what

circumstances those providers can be considered state actors through

the roles that they play. In Marsh v. Alabama, the Court held that a

corporation served in the same capacity as a municipality by owning

all the property in the entire town.62 Because “[o]wnership does not

always mean absolute dominion,” the fact that the company town was

privately owned did not “justify the State’s permitting a corporation

to govern a community of citizens so as to restrict their fundamental

liberties.”’63 The fact that the company town had taken on a public

function was evidently relevant to the decision because succeeding

cases seemed to limit Marsh to such extreme cases as the one

described in the opinion. In Hudgens v. NLRB, the Court ruled that

to the degree that a shopping mall resembled a municipality, it did not

attain the status of a state actor that could be barred from restricting

speech on its own property .64

59   Perry Educ. Ass’n v. Perry Local Educators’ Ass’n, 460 U.S. 37, 45-46

(1983).

60   Id. at 46 n.7.

61   Id. at 46

62   326 U.S. 501 (1946).

63   Id. at 506-09.

64   424 U.S. 507 (1976).

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UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

In another line of cases, the degree which the private actor has

become "entangled" with the state can confuse the issue whether they

should be treated as separate entities. In Columbia Broadcasting

System, Inc. v. Democratic Nat'l Committee, the Court determined

that even in the case of broadcasters, the government does not have

a relationship with the broadcaster that is so intertwined that the

broadcaster would be treated as a public actor.65 The broadcast

licensee was viewed as "a 'public trustee' charged with the duty of

fairly and impartially informing the public audience," over which the

FCC    oversees that this function    is adequately   performed.6

However, the licensee has the "initial and primary responsibility for

fairness, balance and objectivity," a function referred to as serving as

a journalistic "free agent.'67 Though these two functions must be

balanced, to the degree that the discretion of the broadcaster as an

independent entity is existent, the government cannot be implicated as

being responsible for the decisions made by the broadcaster. 6   In

addition, "the Commission must oversee without censoring."69 As

a result, even in a situation where there is a high amount of

regulation, as in the case of broadcasting, the intertwining between the

government and the private actor must be substantial before state actor

status can be found. The government, therefore, cannot regulate the

actor's speech to the degree that the actor does not fall under the

government's regulatory capacity, and the private actor is not

restrained by the First Amendment in its own decisions to restrict

speech. This inability of the government to intrude upon the rights of

these private companies was also stated clearly with regard to the

telephone companies as common carriers in Dial Information Services;

"[t]he  carriers themselves   are  not state   actors but private

companies. ,70

65   Columbia Broadcasting Sys., Inc. v. Democratic Nat’l Comm., 412 U.S.

94 (1973) [hereinafter CBS].

66   Id. at 117.

67   Id.

68   Id. at 118-19.

69   Id. at 118.

70   Dial Info. Servs., 938 F.2d at 1543.

442

IV.    WHY ONLINE INDECENT COMMUNICATIONS SHOULD NOT BE

REGULATED UNDER THE PACIFICA STANDARD FOR BROADCAST

MEDIA

Before determining what level of scrutiny should be used to

ascertain whether the indecency provision within Public Law 104-104

is constitutional, the Court will have to analyze the characteristics of

the new online technologies and the relationship of the government to

these technologies.

A.     The Public Forum Doctrine and the Internet

The first question that is relevant to making such a

determination asks whether the online services are providing a public

or nonpublic forum for communication. For the online services

themselves, it seems quite clear that these companies own the

technology for processing the information that goes through their

systems. Unless these companies can be considered state actors on

some other basis, they offer private fora for the communications

between the individuals who use their services. The only other parties

involved are the common carrier,7′ which is not a state actor, and the

user, who is presumed to privately own the computer used to access

the online network. The entire analysis obviously shifts if the network

offering access is a university or other public actor. The public forum

doctrine would have to be applied to the circumstances in that

instance, but that is a subject for an entire other commentary.72

When focusing on the Internet, its history becomes important

for determining whether public forum analysis is relevant at all. The

original Internet, named ARPAnet, was devised in 1969 by the

71   David J. Goldstone, The Public Forum Doctrine in the Age of the

Information Superhighway, 46 HASTINGS L.J. 335, 350 n.58 (1995) (citing

Information Infrastructure Task Force, The National Information Infrastructure:

Agenda for Action 5, 6, 58 Fed. Reg. 49,025 (1993)).

72   See, e.g., Samantha Hardaway, Up For Sale: Commercial Speech and the

University Internet Account, 3 UCLA ENT. L. REv. 333 (1996); Goldstone, supra

note 71.

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443

444       UCLA ENTERTAINMENT LAW REVIEW                [Vol. 3:427

Pentagon to create a computer network connecting university

researchers, military research contractors, and the defense department.

This network was, in effect, replaced by the construction of NSFnet

by the National Science Foundation. The federally-subsidized NSFnet

serves as the foundation for the national computer network. Most

universities and corporations are linked to NSFnet via regional

networks.7     As a result, these organizations   often  impose

"acceptable use policies" in order to comply with the NSF's limitation

of the NSFnet to educational and research purposes.74 However, the

NSF has reduced its role in the development of the Information

Superhighway to open the door for commercial providers to take

control over expanding development of the network.75

Despite all the government involvement in the development of

the Information Superhighway, it would appear that in the future much

of the further expansion of the network will be undertaken by the

76

private sector.  As a result, it would seem to be increasingly

difficult to consider even the Internet itself as government property

subject to the restrictions under the First Amendment or to regulation

of the government under the public forum doctrine. Especially when

access to the Internet occurs through the use of an individual's own

computer and a private network service provider, it would be difficult

to find that government restrictions should be allowed to intrude upon

the freedom to use private services simply because the government

owns the pathways through which those communications pass on their

way to another private interface. Again, the analysis for government-

owned computers and networks will most likely differ from the

reasoning applied to private network operators (for instance, would the

government system operator be allowed to simply deny access to

"alt." groups on the Internet with the alleged purpose of "reducing

73   Hardaway, supra note 72, at 338.

74   Id. (citing The NSFNET Backbone Services Acceptable Use Policy, June

1992 (available via anonymous ftp to NIC.MERIT.EDU/nsfnet/acceptable.

use.policies/nsfnet.txt).

75   Id. at 339.

76   Goldstone, supra note 71, at 350 n.58 (citing Information Infrastructure

Task Force, supra note 71, at 6).

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computer message transmission traffic," thereby eliminating all

concern regarding viewpoint or content discrimination?).   This

foretells a possible discrepancy between the levels of scrutiny that

would be applied to the Internet when considering whether the source

is of a public or private nature, should the government be granted the

lower standard of a nonpublic forum instead of a limited public forum

for their own computer networks. However, it would be better to

analyze the forum on this basis rather than trying to determine

whether the public or private nature of the connectors themselves is

relevant to such a determination. Using this method of analysis,

government-owned systems and privately-owned systems can make

their own regulatory decisions based on their potentially different

levels of scrutiny without the government also being able to restrict

more speech on a private network than would otherwise be permitted.

If the Information Superhighway is found not to be a public

forum, then the only other way which the private online services can

be restricted under a lower level of scrutiny is if the online services

are found to be state actors. In light of the Court's decisions in

Marsh, Hudgens, CBS, and Dial Information Services, it seems quite

unlikely that a court will find a state actor in the form of an online

service unless the network is actually part of the state.77 To the

degree that the government has been involved with developing the

National Information Infrastructure (NII), it seems more likely that the

Information Superhighway will be viewed as entangled with the

government.78    However, as the Court demonstrated in Dial

Information Services and CBS, the intent of the government not to run

the networks, though it would have "an essential role to play" in the

development of the Information Superhighway, could be relevant in

finding that the network providers are private actors.79 As a result,

the government will not have the capacity to regulate private online

systems under a lower level of scrutiny by applying the forum doctrine

rationale.

-n   Id. at 353.

78   Id. at 356.

79   Id. at 356 n.97 (citing Cf. Exec. Order No. 12,864, 58 Fed. Reg. 48,773

(1993)).

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B.     Analysis of Technological Characteristics

Following a conclusion that the NII is not applicable to

government forum analysis, the next step is to determine how to apply

the new technology of the NII to the Court's First Amendment

doctrine for other forms of media. The NII has characteristics which

resemble both broadcasting, cable, and telephone technologies;

however, each of the characteristics must be examined separately in

order to gain a clear picture of what factors are relevant to making a

determination of what standard should be used to evaluate the

constitutionality of regulations regarding cyberspace.

1.     Scarcity

First, the issue of scarcity is irrelevant to the online discussion.

The issue of government allocation of a limited number of possible

frequencies to a certain number of broadcasters has no counterpart on

the Internet. "Scarcity" indicates a likelihood that there will be a

danger that some viewpoints will not be heard.'� The Internet has

virtually limitless capabilities for all viewpoints to be heard because

its architecture resembles that of a decentralized open-access model.

The low cost and open accessibility for communication on such a

medium insures that diversity of viewpoints will result.8' The open

access system can accommodate a high number of communications

because "the network makes no distinction between users who are

information providers and those who are information users."' Users

can alternate in their roles as either information provider or user and

can promote debate on any issue that they bring to the forum, add

further to existing topics, or merely observe the debate presented

before them. Also relevant is that with such a wide number of

so   Jerry Berman & Daniel J. Weitzner, Symposium: Emerging Media and the

First Amendment: Abundance and User Control: Renewing the Democratic Heart of

the First Amendment in the Age of Interactive Media, 104 YALE L.J. 1619, 1622

(May 1995).

81   Id. at 1623.

82   Id. at 1624.

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sources and no need for a centralized distribution point, no gatekeeper

exists to block transmission of any message by any information

provider."3 The advantages of this freedom to send messages to as

many places as desired frees the user from restraints of the network

architecture as well.

To have total open access, a network would also require open

endpoints, called interfaces.8' The endpoints of the network must be

open and enable access to the users or else a bottleneck will form,

slowing the free-flow of the information.' The Internet interfaces

could plug up the flow of information simply because the technological

requirements to create a network interface are complex.86 However,

there are plenty of network providers currently in existence to ensure

that a bottleneck similar to that in the cable industry, as was

recognized in Turner Broadcasting, would not develop. In addition,

no blockage of new network providers can result as was the case in

Turner Broadcasting because there is no monopoly controlling access

to the Internet.87 This distinction makes the NII more similar to the

print medium than to the cable industry; though a newspaper may

have a monopoly over an entire area, there is nothing stopping another

person from   starting up their own printing press.88  The open

decentralized access system could lead to a return to the regulation

model for the print medium as presented in Miami Herald Publishing

Co. v. Tornillo, in which the Court rejected imposing a "right to

reply" requirement reflecting Red Lion's regulation of the broadcast

media.89 Because there is no limit to the number of "channels" in

the open-access model, the Internet, like cable, can be easily

distinguished from the scarcity issues confronted by the Court in Red

Lion; it is unlikely that a monopolistic situation as represented by the

83   Id.

8    Id.

85   Id. at 1625.

/ Id. at 1624-25.

87   Id. at 1628.

a    Id.

89   Id. at 1628-29 n.30 (citing Miami Herald Publishing Co. v. Tomillo, 418

U.S. 241, 254-58 (1974)).

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UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

Turner Broadcasting case will ever result either due to the sheer

number of networks that can spring up on the national computer

network or to a lack of any essential element which can fall under the

control of a single entity.' Even if such a situation develops, the

problem could probably be dealt with under the antitrust laws, despite

the presence of First Amendment issues,"' just as in the Turner case.

By contrasting the open-access model, which is highly representative

of the qualities of the Internet, to characteristics of both the cable

industry in Turner and the broadcast industry in Red Lion, it seems

clear that issues of scarcity are irrelevant in justifying any regulation

of the Internet as long as the network can maintain open access and

sufficiently open endpoints for all information providers and users.'

As a result, this scarcity rationale which served as a basis for

regulating indecency under Pacifica cannot be applied to this new

form of technology.

2.      Intrusiveness

The second major issue that should be addressed is the issue of

intrusiveness. The idea of the broadcaster as invader was found to be

significant in Pacifica93 and CBS.'4     This intrusiveness of the

broadcast has three possible interpretations: broadcast signals are "in

the air," broadcast signals do not require an affirmative act to

perceive, and broadcasting is more powerful than print.9' The first

argument    is  irrelevant  because   electromagnetic   waves    are

imperceptible without the aid of an appropriate device; because

communication on the Internet is essentially contained within the

90   Fred H. Cate, The First Amendment and the National Information

Infrastructure, 30 WAKE FOREST L. REV. 1, 46 (Spring 1995).

91   Id. at n.283 (citing Associated Press v. United States, 326 U.S. 1, 19-20

(1945)).

92   Berman & Weitzner, supra note 80, at 1628.

93   FCC v. Pacifica Found., 438 U.S. 726 (1978).

94   Columbia Broadcasting Sys., Inc. v. Democratic Nat'l Comm., 412 U.S.

94 (1973).

95   Cate, supra note 90, at 41.

448

materials which serve to link together the Nil, the significance of this

interpretation is even less applicable to online systems.96

The reasoning behind the second interpretation is also a bit

questionable to the extent that it requires an affirmative act to possess

or operate the receiving device. However, the argument that a person

is passively   subjected  to  broadcast messages can      be   easily

distinguished from interactive media. The Internet requires a person

to make a high number of affirmative acts and choices in order to

access information.97 As a result, it would be difficult to label a

provider of this information as "an intruder" when the person has in

many cases specifically sought the information out. The degree to

which a person must "invite" cable into the home was found to be

relevant in holding that the intrusiveness justification did not apply to

the cable industry.98 Similarly, the degree to which interactive media

grants a high amount of user control, thereby requiring the user to

extend a large number of "invitations" before finally accessing the

source of his query, also leads to the conclusion that intrusiveness

cannot be found on this basis.' In addition, interactive media such

as the Internet often tells a user what the subject matter is before the

person views any image or text, so the intrusiveness argument falters

on that basis as well.

In any case, "indecent" material on the Internet would be no

more offensive than similar material found in the library or a

bookstore. In such instances, it is quite simple to put an offensive

book down and read something else. If a person wants to look at the

magazines, then they can walk over to the magazine section and

glance through those materials. If they want to see the pornographic

pictures, then they reach up a bit higher to grab a hold of one of those

magazines, if they so choose. The Internet is no more intrusive than

%    Id.

97   Id. at 42.

98   Id. at 42-43 n.267 (citing Cruz v. Ferre, 755 F.2d 1415, 1419-22 (1lth Cir.

1985); id. at n.268 (citing Community Television of Utah, Inc. v. Wilkinson, 611

F. Supp. 1099, 1113 (D. Utah 1985), aff'd, 800 F.2d 989 (10th Cir. 1986), aff'd,

480 U.S. 926 (1987)).

99   Berman & Weitzner, supra note 80, at 1629.

449

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UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

this example except that the person does not actually have to leave the

home and go to the nearest mall to access these materials. The

Internet is anything but intrusive; rather, it increases a person's ability

to access a variety of forms of information without ever leaving the

house.

3.     Pervasiveness of the Medium

The third argument, which concerns the power of the broadcast

media in communicating its message, should have little relevance to

the intrusiveness of the medium argument. As mentioned in Cohen v.

California, effective communication, even if jarring or shocking, is

protected speech."�  Because of the high amount of user control,

this would be even more compelling for interactive media; with

complete user control, the ability to "avert one's eyes" is completely

in the hands of the user.. Therefore, as with broadcasting and dial-a-

porn, the degree to which intrusiveness of the interactive media should

be significant regarding the "power of the medium" should only be in

relation to the differential impact of the medium on children.

The user control aspect of technology when applied to the

context of children being able to access cyberspace has more to do

with user control enabling children to get a hold of material which is

unsuitable for their observation than its intrusion without being sought

out. In Pacifica, the uniquely pervasive nature of broadcasting could

be seen as intruding into the home under the nose of unsuspecting

parents who are unable to prevent their children from hearing or

seeing an indecent communication.10' This argument seems a bit

problematic when it is brought to light that in the Pacifica case, the

boy's father was in the car playing the radio when the boy heard the

Carlin broadcast; however, the Court also points out that oftentimes

in broadcasting, there is not enough time to change the channel before

the damage is done."�  Despite the fact that the radio station had

issued warnings to listeners that the station was broadcasting

100  Cate, supra note 90, at 43 (citing Cohen v. California, 403 U.S. 15 (1971).

101  Pacifica, 438 U.S. at 749-50.

102  Id. at 730, 748-49.

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potentially offensive material, there was no chance that someone

listening in late to the broadcast could be warned before being

"assaulted" by the offensive material."�3 A parent would have no

time to cover the child's eyes or ears to prevent the child from hearing

or seeing the communication.

This same reasoning applied to the dial-a-porn cases, although

the Court evaluated the restrictions under much more stringent

standards. In Sable, the Court found no "uniquely pervasive medium"

issue when the rationale was applied to telephonic services. " The

Court stated:

[U]nlike an unexpected outburst on a radio broadcast, the message

received by one who places a call to a dial-a-pore service is not so

invasive or surprising that it prevents an unwilling listener from

avoiding exposure to it.’05

However, the ability of children to access the material under the noses

of their ever-watchful parents was still viewed to be significant. In

Dial Information Services, the Court determined that the least

restrictive manner to fulfill the government’s compelling interest was

to block access until age verification or credit card procedures were

followed by the prospective user.”� Being unfamiliar with the new

technology, the parents had to be assisted by the state in preventing

children from accessing this material.”07

C.     New Technologies as Least Restrictive Means

Again, broadcasting and dial-a-porn are easily distinguishable

from   interactive media.     The   high  amount of user control

demonstrated when obtaining information through the use of

interactive media is also significant in eliminating intrusion of

103  STEVEN H. SHIFFRIN & JESSE H. CHOPER, THE FIRST AMENDMENT:

CASES, COMMENTS, QUESTIONS 483 (1991); Pacifica, 438 U.S. at 748-49.

104  Sable Communications of California v. FCC, 492 U.S. 115, 127 (1989).

105  Id. at 128.

106  Dial Info. Servs., 938 F.2d at 1541-43.

107  Id. at 1542-43.

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UCLA ENTERTAINMENT LAW REVIEW    [Vol. 3:427

unwanted messages."'0 Parents can read the subject line of the

material and "cover their children's eyes and ears" before the harmful

image ever crosses the screen.     In addition, the availability of

screening technologies enable the parents to lock out harmful material

so that they can be sure that their children are not delving into

material in their absence that could be harmful to the social

development or values of their children. Currently, technology exists

which will give individuals the capacity to screen out information on

the basis of particular features."�  Such screening systems could

block messages dealing with particular subject matter, newsgroups,

keywords, or vulgarity. Access to chatrooms can be blocked and

discussion groups intended only for children can be formed. The

screening system can be based on the parents' own selections or by a

rating system created by an outside party.110 Because of the

upcoming availability of many forms of this new technology, it is

obvious that an outright ban of all indecent material in cyberspace

would not be constitutional and would not survive the stringent

scrutiny that the Court would use to analyze the new medium. The

government has provided no evidence which would support the

assumption that these technologies would not serve as a sufficient

protective measure, so government regulation would not be the least

restrictive means by which to deal with this issue, as in the dial-a-porn

cases. As a result, the Court will not have to impose limitations that

serve to restrict adults to communicating online in a manner that "is

only fit for children""' in order to protect those children from

indecent materials.

In response to the prevalence of online pornography and the

political heat that has resulted, many companies have been working on

a solution to the problem through technological means. America

Online, Prodigy, CompuServe, Microsoft, and other high-tech

companies have organized to find a solution to the problem, and they

reached a consensus: allow individuals to select a ratings system that

108  Cate, supra note 90, at 44.

109  Berman, supra note 80, at 1633.

110  Id.

"'1  Butler v. Michigan, 352 U.S. 380, 383 (1957).

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would be appropriate for their needs in screening unwanted

messages.112 The framework established to fulfill this function will

be able to block messages through the use of three techniques: 1)

content providers voluntarily placing headers which will repel net-

surfers using a particular rating system; 2) online services blocking

access at the source; and 3) private organizations periodically sending

updated lists of web sites that provide information in which they

approve or disapprove of the content.1"3

These private organizations would obviously be guided by the

marketplace and the ideologies of the particular organizations when

making judgments regarding the proper standards to be used in rating

the web sites. The pursuit of profits would additionally serve to

motivate these organizations to develop this new technology. The

market would also serve to enable parents to select the screening

program that most reflects their personal ideology as opposed to

having a single general standard applied by the federal government.

Finally, all of these differing standards can be created to fulfill the

government's compelling interest to protect children from harmful

online speech without instituting a ban of all such communications,

including those between consenting adults.

The question remains how realistic it is that such a program

can be quickly and effectively developed. Some of this technology

already exists and is currently in use. For instance, America Online

provides parents with the capability to block access to chat rooms, and

the service employs individuals to monitor live chat that does not take

place in the private chat rooms.1"4 The company also plans to

extend the blocking system to e-mail, bulletin boards, and data

libraries."' The coalition of high-tech companies which conferred

in September 1995 planned to establish the framework of the ratings

112  Stephen Lynch, Internet Consortium Has Plan On Porn: Technology: The

Goal is to Avoid Government Oversight, ORANGE COUNTY REGISTER, Sept. 12,

1995, at C3.

113  Id.

114  Jared Sandberg & Glenn R. Simpson, Porn Arrests Inflame Debate on New

Laws, SAN DIEGO UNION-TRIBUNE, Sept. 19, 1995, at 3.

115  Id.

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UCLA ENTERTAINMENT LAW REVIEW  [Vol. 3:427

system   in early 1996."16    Organizations such as the Christian

Coalition, SafeSurf, and Surfwatch are setting out to create a system

where their staff surfs the net, analyzes the material, and classifies the

material within a ratings system that can be used by parents to keep

their kids away from cyber-porn. 117

To serve as an example, the Surfwatch program has already

been used in some instances to curb access to the Internet."' The

program keeps all individuals from being able to access explicit

material unless a password is used to open the lock.19           The

company claims that the program can block 90-95 percent of the red

light district sites, despite the fact that the purpose of the program can

be defeated by the creation of new cyber-porn sites or altering the

location of old sites; however, the company can make new, updated

lists available to accommodate for these changes and block access to

those sites if the parents continue to keep their program list

current.12" If parents should disagree with the decisions made by

Surfwatch when compiling the restricted site list, future versions of

the program will enable parents to create their own list of areas to

which they may wish to prevent their children from gaining

access. 121

Despite the fact that the program is not fool-proof, it could

actually serve to be a better measure for attacking on-line smut than

government regulation because the program targets all on-line

pornography; nearly one-third of Surfwatch-targeted sites are from

overseas and potentially out of reach from the enforcement of the

federal law."

As long as the bill's constitutionality is in question, it is

possible  that Congress     will not enact legislation    embracing

116   Lynch, supra note 112.

117  Id.; Jeff Leeds, T7he Inter-nyet; With His Surfwatch Program, Software

Developer Bill Duvall Has Jumped Into the Fray Over Who Should Police Children's

Computer Access to Sexually Explicit Material, L.A. TIMES, Sept. 14, 1995, at B2.

118  Leeds, supra note 117.

119  Id.

120  Id.

121  Id.

122  Id.; Cybercops, USA TODAY, June 19, 1995, at A10.

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development of new technologies that can prevent children from

accessing harmful material. The present situation is analogous to the

battle over dial-a-porn  regulation.     Instead  of utilizing  the

identification and credit card measures eventually required by the

FCC, Congress repeatedly       passed  legislation that was held

unconstitutional by the courts. 123

Perhaps with future legislation of this sort, Congress should

consider that a cohesive effort to implement these technologies would

be more successful than repeatedly experimenting with new legislation

until a suitable measure is approved by the Court. The divide and

conquer nature of government regulation draws lines in the sand,

which in many cases can hinder the efforts of private actors from

implementing their own policies. For instance, the fact that an online

service can be prosecuted under the law may actually persuade online

services to avoid policing their own systems out of fear that they will

be criminally liable for having knowledge of potentially indecent

communications between the users, despite the presence of good faith

defenses in the CDA. "4 Contrast such a result with the hands-on

approach of the Motion Picture Association of America which has

been quite successful in giving parents the type of information that

they require to determine whether a motion picture is suitable for their

children to watch-at least it has been successful enough to avoid a

call for government censorship of the film industry.  Since this

approach is being applied to the broadcasting industry as well by the

implementation of a ratings system accompanied by a V-chip in all

television sets to block children's access to restricted programming (at

the discretion of the parent), why should a different approach apply to

the online medium when such technologies are available for that

medium to a potentially more effective degree?

It is also sometimes difficult to tell who is making the indecent

communication in order to prosecute the person. In a recent instance,

this problem was clearly demonstrated when Caltech administrators

attempted to determine whether a student was using the university's

123  Dial Info. Servs., 938 F.2d 1535.

124  Communications Decency Act, supra note 1, �� 502(a)(2), 502(e).

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UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

e-mail services to harass a fellow student, his ex-girlfriend.1'2

Given the anonymous nature of some e-mail, and the ease by which

e-mail can be forged in order to implicate the wrong person for

sending an improper message, it is difficult to determine the actual

identity of an individual who makes the indecent communication. 126

Despite the questionable nature of e-mail evidence, the Caltech student

was expelled from the university for making the harassive

communications. 127 The controversy would be even more serious

if the evidence for a criminal case, which could result in a fine of

$250,000 and/or two years imprisonment, would be based on

something so easily falsified as e-mail. To counter all the criticism of

the CDA, supporters of the bill may argue that the Section 502(e)

defenses create a standard that is analogous to the standards

determined to be constitutional in the Dial Information Services case,

where particular techniques used to block access to minors from dial-

a-porn services were determined to be suitable protections from

prosecution under the statute. 128 The two situations are not so easily

analogized, however, when it is considered that the indecency targeted

in the dial-a-porn cases was not from an individual communicating

expletives to a minor, as could result under the CDA, but a telephone

service communicating sexually explicit messages to a minor. The

primary difference between the two laws is that the communication

over the telecommunications device need not be sexually explicit at all

under the current construction of the CDA in order to constitute a

criminal act. If the Pacifica standard created by the FCC is the

measure for indecency, then the use of vulgarity in itself would

constitute a violation of the CDA, even if used in a political context

(or comedo-political context as with George Carlin in the Pacifica

case).

The law also goes so far even to dissuade two consenting

125  Amy Harmon, Student's Expulsion over E-mail Use Raises Concerns:

Cyberspace: Caltech Harassment Case Illustrates Growing Problem. But Experts

Fear Unreliable Records, L.A. TIMES, Nov. 15, 1995, at Al.

126  Id. at A27.

127  Id.

128  Dial Info. Servs., 938 F.2d 1535.

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minors not involved in the commercialization of pornographic

communications from discussing a line of dialogue from a PG-13 film,

a form of communication which is not barred in any medium except

broadcast media with its heightened standards of scrutiny. Even on

television, some communication of a more explicit nature has been

appearing in prime time hours-perhaps a trend which will continue

to be permitted with increasing prominence of the V-chip in television

sets).  On this basis, without any further efforts to restrict the

indecency provision of Section 502(a)(1)(B) to patently offensive

sexual or excretory activities, the provision should be deemed

unconstitutional following the reasoning of such cases as Dial

Information Services, which required that indecency be defined as the

"description or depiction of sexual or excretory activities or organs in

a patently offensive manner. "129

D.      Compelling Interests and Narrow Tailoring

If the Section 502(a)(1)(B) indecency standard is determined to

be enforceable only in relation to patently offensive sexual or

excretory activities, then it would essentially mirror Section 502(d)(1).

Section 502(d)(1) essentially uses the language in the first prong of

Miller v. California to serve as the standard for indecency.13" This

view of indecency would serve to effectively restrict patently offensive

sexual or excretory communications that do have scientific, literary,

political, or artistic value (and would thereby chill constitutionally

protected speech not classified as unprotectable obscenity).'31

Although the potential for a favorable determination of the

constitutionality for this provision far exceeds that of Section

502(a)(1)(B), the Court still will have to look at the compelling

interest of the state in restricting such communications as well as the

narrowness in tailoring the statute before justifying the measures on

constitutional grounds.

First of all, the Court will probably recognize that one of the

129  Id.

13M  Miller, 413 U.S. 15 (1973).

131  Id.

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UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

primary purposes of the statute was to protect children from the

effects of pornography on the Internet. It seems clear from the

Congressional Record that this goal was clearly on the minds of many

of the senators when voting on the original form of the Exon-Coats

Amendment, including those who opposed the provision; in particular,

Senator Exon presented to the chamber a scrapbook of obscene

material obtained online. 132 On the other hand, it is also clear that

several senators were highly concerned about the chilling of free

speech that would occur by issuing a blanket ban of all indecent

communications, especially for those communications with high

literary, artistic, political, scientific, and even expressive merit.133

As a result of the arguments offered by either side of the discussion,

it can be argued that the primary purpose of the legislation was to

protect minors from coming into contact with harmful sexual material

despite the possibility of chilling free speech between adults.

However, it is not clear where that line is to be drawn in determining

which material was considered harmful to children in the entire

scheme of things. Clearly the senators were concerned about the

dangers of obscene material, which the Court has clearly determined

receives very little if any protection by the Constitution, but the issue

of indecency is another matter. Since there is no clear goal on the

record that the law was intended to restrict access to all materials

pertaining to any kind of sexual topic, then it would seem that the line

is somewhere in between the two extremes. In most cases, however,

the courts have shown a limited amount of deference to the legislature

concerning the chilling of indecent speech if the legislative goal is not

compelling; with the exception of broadcast television, virtually all

such restrictions have only passed constitutional analysis if they have

been narrowly-tailored. 134

Clearly the indecency provision is not narrowly-tailored to

strike  at the primary    goal: eliminating   children's access to

132  141 CONG. REC. S8310-03, S8327-8347 (daily ed. June 14, 1995).

133  Id.

134  Cf. FCC v. Pacifica Found., 438 U.S. 726 (1978); Dial Info. Servs., 938

F.2d 1535; Sable Communications of California v. FCC, 492 U.S. 115 (1989);

Cohen v. California, 403 U.S. 15 (1971).

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pornography. It would seem that the legislature missed the mark with

the patently-offensive standard as well. The history behind Sable and

Dial Information Services would appear to indicate that this is the

case. Restriction of dial-a-porn communications was not determined

to be constitutional until it was shown that the requirements for

identification as an adult, in order to gain access to the service, was

virtually essential to prevent access by minors. 115

Proponents of the CDA may argue that the safe harbor defense

provided by Section 502(e)(5) is comparable to the Dial Information

Services safe harbor for dial-a-porn. In the case of the Internet,

however, there has been no showing by the government that the use

of similar identification requirements is even necessary, let alone least

restrictive. The use of screening technologies at the hands of the user

are capable of performing the same function without requiring

information providers to screen all information that appears on their

services or else develop a system which would prevent minors from

gaining access to the site. This would not only make it more difficult

for individuals to access the information, it could potentially shut

down providers who do not have the resources to monitor the

communications on the site or to establish a complicated clearance

system allowing access only to adults. The freedom and equality of

the Internet for all speakers would cease to exist due to such burdens

imposed by the CDA. As a result, the Court should find that the

patently-offensive requirement joined with the use of a safe harbor

defense under Section 502(e)(5) does not constitute the least restrictive

means to prevent access of indecent communications to minors.

One final issue that is problematic for the constitutionality of

the CDA is that it not only prevents the dissemination of new ideas,

but it also blocks access to ideas which are already freely available in

other media. For instance, a child could walk into virtually any

bookstore or library and read a novel containing material that would

be considered unsuitable for the Internet. A library on the Internet

135  Dial Info. Servs., 938 F.2d at 1542 (stating that low awareness of blocking

services provided by the telephone company required that drastic measures must be

taken to prevent access by minors before their parents were aware of such

activities).

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UCLA ENTERTAINMENT LAW REVIEW   [Vol. 3:427

would be restrained from having the same freedoms that a print library

would have. In City of Cincinnati v. Discovery Network, the Court

held   that  a  categorical ban   of commercial newsracks        was

unconstitutional because the distinction between commercial and

noncommercial speech "bears no relation whatsoever to the particular

interests that the city has asserted."13' Likewise, because the CDA

could conceivably result in a hindrance to indecent speech that would

occur on a similar scale and that has no real relationship with the

characteristics of the medium, the distinction between the print

medium and the online world is impermissible. In a library or a

bookstore, it is conceivable that a child could come across indecent

material, but the value of free speech in that case supercedes

repressing speech out of fear that a child may come across the wrong

type of material. In the print medium, it has been left to the parents

and schools to decide what is fit for a child to read. The same

viewpoint should apply to cyberspace, especially since parental

controls can do the job even when the parent is totally unaware what

the child has accessed. The software controlling access can ease a

parent's task to determine what knowledge their child discovers. Just

because speech is in print does not make it less harmful than when it

is stored in an electronic database; the distinction is irrelevant. Thus

the two forms of media should be given equal deference by the Court,

especially when the goal of Congress was primarily to protect children

from the harmful effects of pornography, not from artistic, political,

scientific, or literary materials dealing with sexual issues.137

For all of the aforementioned reasons, the screening programs

provided by online services and independent organizations are less

restrictive and more narrowly-tailored than a virtual federal ban of all

online indecency with exceptions only for those providers who have

the resources to meet the requirements of the safe harbor defense.

136  City of Cincinnati v. Discovery Network, 507 U.S. 410 (1993) (stating that

discrimination against commercial speech cannot be justified when the city's goal

was to increase safety and improve aesthetics, which is a goal not directly related to

a distinction between the content of publications from commercial newsracks and

noncommercial newsracks).

137  See 141 CONG. REc. S8310-03 (daily ed. June 14, 1995).

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When considering how difficult such far-reaching restrictions would

be to enforce due to the high amounts of traffic that take place on the

Internet as well as the international scope of the network, parental

controls could simply be more effective than any legislative ban.

IV.    CONCLUSION: WHERE Do WE Go FROM HERE?

On Wednesday, June 14, 1995, the Senate debated on two

separate amendments to the telecommunications bill, one (No. 1288)

proposed by Senators Leahy (D-Vermont), Feingold (D-Wisconsin),

Moseley-Braun (D-Illinois), and Kerrey (D-Nebraska), the other (No.

1362) proposed by Senators Exon and Coats.138 Amendment 1288

was introduced to offer an alternative to the Exon-Coats Amendment

by proposing an alternative strategy of studying the current law and

potential new technologies in order to establish a system which would

enable users to screen information without intervention from the

government.'39   Nevertheless, the Exon-Coats Amendment passed

with an incredible supermajority of 84 yeas to 16 nays.'" Virtually

every article researched for this Comment stating an opinion on this

approved   legislation  heavily  criticized the  decision  of   the

lawmakers. 141

Speaker of the House Newt Gingrich scorned the bill as "a

violation of the rights of adults to communicate with each other."42

In response to the Senate Bill, the House of Representatives

overwhelmingly     approved    an   amendment     to   their   own

telecommunications bill which would prohibit government censorship

138  141 Cong. Rec.. S8310-03, S8327 (daily ed. June 14, 1995).

139  Id. at S8327 (statement of Sen. Exon).

140  Id. at S8347.

141  It should be noted, however, that some of those articles were written by

such individuals as Nat Hentoff of the Village Voice and Senator Feingold, co-

advocate for the Leahy Amendment. See Hentoff, supra note 14; Russell D.

Feingold, Parental Responsibility and the First Amendment, WASH. POST, July 15,

1995, at A20.

142  Leeds, supra note 115.

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UCLA ENTERTAINMENT LAW REVIEW  [Vol. 3:427

of the Internet, 420 yeas to 4 nays.143 In addition, President Clinton

expressed his support for the House approach to the issue.144

Because of the conflict between the Exon and Coats Amendment, the

House anti-censorship provision, and another House amendment to the

telecommunications bill, the final outcome was resolved in the

conference committee between the two houses. President Clinton

signed the bill into law on February 8, 1996, despite the inclusion of

the Indecency Act, which included terms that were even more

stringent than the terms in the original construction of the Exon-Coats

Amendment. However, on February 16, U.S. District Judge Ronald

Buckwalter issued a temporary restraining order against enforcement

of the indecency standard for Section 502(a)(1)(B) due to the

vagueness of the term     "indecent."145  In addition, the Justice

Department one week later decided not to prosecute individuals for the

distribution of materials which are "patently offensive.4"" A three

judge panel of the U.S. District Court in Philadelphia will decide in

Spring 1996 whether to issue a preliminary injunction against

enforcement of both the "indecent" and "patently offensive" terms of

the law. 147

It seems that if legal precedent should finally prevail over

emotion, lobbying power, and paranoia over public perception, the

trend of thought on this controversial issue may lean in favor of

freedom of speech finally prevailing. However, the vote is not in yet,

and the Supreme Court may have something to say about it. The

Court will soon rule on a free-speech challenge to a law which permits

cable operators to restrict access of indecent programming to channels

143  John Schwartz, House Vote Bars Internet Censorship; Amendment to

Communications Bill Seems in Conflict with Senate, WASH. POST, Aug. 5, 1995, at

All.

144  Id.

145  Amy Harmon, Judge Blocks Government's Enforcement of Internet Ban,

L.A. TIMEs, Feb. 16, 1996, at Dl.

146  Internet Regulations On Hold, L.A. TIMEs, Feb. 24, 1996, at D2.

147  Id.; Communications Decency Act, supra note 1, � 561 (calling for

expedited review of any constitutional challenge to the CDA by a three-judge district

court panel).

462

leased to independent and local programmers. 148 The U.S. Court of

Appeals held that the law simply permits, not "commands," private

companies to ban indecent programs; however, the law also says that

if the company allows indecent leased-access programming, the

company must block access to the program until the subscriber issues

a written request.149 A D.C. Circuit three-judge panel ruled that a

subsequent ban of indecent material by the private cable company does

not constitute state action.150 The appellate court decision appears

to have followed the reasoning of Dial Information Services and could

represent a trend in the Court's analysis of the regulation of new

technologies.

The Court's ruling on this law could have repercussions on the

debate concerning regulation of the Internet. Today, online services

can initiate their own censorship proceedings of public areas without

any fear of violating First Amendment rights."' Because they are

private in nature, online services are able to edit what they publish in

their own public areas. A controversy resulted when Prodigy engaged

in such behavior in the recent past, but the organization was well

within its legal rights in making such editorial decisions; in contrast,

it is legally impermissible to edit e-mail, which involves the services'

online capacity as a carrier, not as a publisher.'52 With regard to

the online system's capacity as a publisher, however, if the

government is permitted to intervene into regulating the cable

television medium, it is possible that the Court would thereby invite

attempts to impose such restrictions on the online services. Again, the

analysis of the Internet would differ from that for the cable industry

due to the differences in the two media; however, with constitutional

law, all it takes is a 5-4 vote following a particular line of reasoning

148  Joan Biskupic, Court to Hear Dispute on Curbing Indecency in Cable

Television Programming, WASH. POST, Nov. 14, 1995, at All.

149  Id.

150  Id.

151  Anne Wells Branscomb, Symposium: Emerging Media Technology and the

First Amendment: Anonymity, Autonomy, and Accountability: Challenges to the First

Amendment in Cyberspace, 104 YALE L.J. 1639, 1651, May 1995.

152  Id. at 1651-52.

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463

UCLA ENTERTAINMENT LAW REVIEW    [Vol. 3:427

to validate a law. Even though the Internet offers more user control

technologies and involves no scarcity issues, the Court could simply

find that the Internet is a uniquely pervasive medium subject to lower

level scrutiny and that the power of the medium justifies the

restrictions placed on the voices using the medium. Government

imposition "permitting" online services to regulate indecent content,

which would be similar to what was approved for the dial-a-porn

services and which could also be extended to the cable industry by an

upcoming Supreme Court case, could escape the heightened scrutiny

that would be called for by such drastic measures as the

Communications Decency Act. This would still seem unlikely because

the Internet is an environment that requires no regulation to provide

unlimited access, there are no monopolistic service providers as with

the cable and telephone industries, and it seems that the free market

should be able to create a variety of possible service options

depending upon the needs of the user. Due to the self-imposed actions

by online services in the recent past, it does not appear that

government intervention will be required in order to make diverse

screening options available for the discriminating consumer or parent.

With luck, the online services and other high-tech organizations

will be able to give parents the appropriate tools to enable them to

retain total control over what materials their children can access so

that an effective and least restrictive means of meeting this compelling

government interest can be found without government interference.

Then again, perhaps the Court will nip this problem in the bud and

find relevant to the constitutional paradigm that Congress is in the

process of placing a v-chip requirement on all television sets, which

could someday serve even to eliminate the justification for considering

television regulations as the "least restrictive means" for preventing

children's access to indecent programming. Since the real issue is

about intrusiveness, self-imposed user control technologies should be

found to be the least restrictive means.

Because Congress passed such a bill to restrict speech on the

Internet, and avoided the promised veto from a reluctant president, the

final decision rests in the hands of nine justices who must come to a

vote. What should continue to motivate libertarians and freedom of

speech advocates to increase the organization of their alliance against

464

1996]                      CYBERIA                          465

the powerful lobbyists who helped to push the law through Congress,

however, is the shocking fact of how the recent vote came out on

Capitol Hill-a vote that poorly predicts how reason and Supreme

Court precedent would indicate the proper outcome. The time for

advocates of online freedom of speech to end the fight on this issue is

now, in the courts as well as in Congress, before free speech online

becomes a thing of the past and cyberspace becomes a false dream of

equal, democratic communication.

Volume 03, Issue 2, pp. 379-425, Van Beveren

The Demise of the Long-Term

Personal Services Contract in the

Music Industry: Artistic Freedom

Against Company Profit

Theresa E. Van Beveren*

“When I fight authority, authority always wins.”1

“Why can’t you do it?

Why can’t you set your monkey free?”2

I.     INTRODUCTION

When George Michael sued Sony to get out of his contract,3

the music industry paid attention.4 If he had been successful, his case

could have rewritten the rules governing how musicians and record

companies deal with each other. At first glance, an English case such

as this may seem irrelevant because it is not mandatory authority in

the United States (U.S.). However, the indirect repercussions could

Executive Editor, UCLA Entertainment Law Review. J.D., UCLA School

of Law, 1997; B.A., University of California at Santa Cruz, 1992. I would like to

thank Professor John Setear for his advice, guidance and enthusiasm for

entertainment topics; Andrew Rosenberg, Tracy Abels, Jennifer Rogers, and Jim

Brat for their editing and support.

I      JOHN COUGAR MELLENCAMP, authority song, on UH-HUH (Riva Records

1983).

2      GEORGE MICHAEL, Monkey, on FAITH (CBS Records 1987).

3      Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

4      The lawsuit has been described as “the most significant legal case ever to

hit the music business.” Simon Garfield, The Machine That Ate George Michael,

THE INDEPENDENT (London), Nov. 21, 1992, at 29 (Weekend Title Page).

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:377

have been enormous on entertainment law in the U.S.5 As the music

industry is very much an international business, the law of one country

could influence another.

The next case dealing with an artist attempting to break out of

his or her contract could occur in the U.S. and be decided along very

similar reasoning. Alternatively, a U.S. case could have the opposite

holding. Therefore, the music industry should be aware of the factors

courts consider in reaching their decisions. It is worthwhile to look

at how courts have decided past cases of artists attempting to leave

their contracts in order to suggest what courts should do in the future.

Layered on top of traditional law dealing with breaches of contract

and invalid contracts, the Michael case is a useful illustration of the

direction of entertainment contract law.

This Comment explains the different options available to artists

in the music industry who wish to break out of their contracts. It also

discusses the likely legal ramifications of breaching a contract or

attempting to have it declared unenforceable. The factors that courts

seem to take into consideration when deciding whether or not to hold

such a contract valid are also examined. These factors include the

"specialness" of the performer, the extraordinary nature of the

services, the performer's experience in contracting and representation

(or lack thereof), and whether damages can adequately compensate a

record company for the loss of an artist who decides to work for

another company.

In addition to enumerating the choices available to artists, this

Comment urges courts and legislatures to recognize the personal and

professional problems inherent in long-term personal services

contracts, and to limit the number of years and/or the number of

albums record companies may require of their artist employees. If the

radical proposition of sharply limiting the length of contracts is an

unacceptable solution, this Comment alternatively recommends that

5      Chuck Philips, Michael's Pact with Sony is Upheld, L.A. TIMES, June 22,

1994, at F1 ("[linsiders predicted that a pro-Michael verdict could have been used

as grounds to raise the same issues for artists in U.S. courts."); Garfield, supra note

4, ("[Ilt was only a matter of time before an artist of Michael's stature brought a

case such as this.") (quoting Ed Bicknell, a founder of the International Managers'

Forum and manager of the musical group Dire Straits).

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MUSIC INDUSTRY CONTRACTS

courts place a heavier emphasis on the use of damages, to the extent

that damages supplant injunctions entirely. Thus, record companies

would still have access to a satisfactory remedy in the event that artists

break their contracts.

Part II of this Comment has three subdivisions. First, it

describes the typical relationship between musicians and their

recording companies in a historical context. Next, it summarizes the

case law on the subject, focusing on the use of specific enforcement,

injunctions, and damages as remedies for breaches of personal services

contracts. In some cases, courts have declared the contract invalid

and the artist free to go with no remedy available to the company, and

the factors influencing these courts' decisions are described. Artists'

ability to sue their record companies to have their contracts declared

invalid is also mentioned.    Part II then delves into the case of

Panayiotou v. Sony Music Entertainment (UK) Ltd. (hereinafter

Michael v. Sony). In particular, the reasons why that court held the

contract to be not a restraint on trade are considered.

Part III discusses possible solutions to the problems courts have

faced when dealing with contracts that are sound, but where courts

have felt that the artists should not be subject to injunctions for policy

reasons. One of the main reasons not to enjoin artists from working

for another company is that entertainment contracts are for personal

services. Traditionally, personal services contracts are not subject to

specific enforcement because to do so is akin to involuntary servitude,

or slavery.6 As injunctions may result for all practical purposes in

enforcement, courts are dissuaded from using injunctions as a remedy

for a breached personal services contract.

The first proposed solution is to continue to emphasize the use

of damages rather than enforcement or injunctions.         Because

injunctions are based on subjective judgments of a performance's

value and in reality are simply a circuitous route to specific

enforcement, they should no longer be used as a remedy. Damages

are more appropriate. It is a reality of the modem music business that

6      "Neither slavery nor involuntary servitude... shall exist within the United

States . . . ." U.S. CONST. amend. XIII, � 1; see also Poultry Producers of S.

Cal., Inc. v. Barlow, 189 Cal. 278 (1922).

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an injunction will not prevent popular artists from leaving their record

companies. Although the injunction is hypothetically a roundabout

method of compelling specific enforcement, it does not usually result

in the artist continuing to work for the company bringing the

injunction. Instead, injunctions result in the record company having

a great deal of extra bargaining power in the artist's exit negotiations.

Courts should recognize that by granting injunctions, they do not

prevent artists from leaving, but rather shift power to the record

companies in negotiations. The artist will still leave, but will have to

pay a great deal more to the company holding an injunction "trump

card." Courts that wish to effect this power shift should do so

directly, by granting damages.

The second, more radical proposed solution is a complete ban

on very long, multi-year, multi-album contracts. At this time, the

structure of the music industry is very similar to the movie industry

as it was in the 1930s. While prohibiting long contracts in the music

business may seem somewhat drastic, this solution was used in the

movie industry in the 1930s and 1940s with great success. Both

industries are peopled by creative artist employees bound by long-term

personal services contracts to production houses. Even though there

are differences between the two industries (such as the number of

people and types of input necessary to create a work) which results in

an imperfect analogy, prohibiting long contracts for musicians is a

viable alternative to the situation of discontent the music business

faces today. Currently, many musicians are disillusioned by the long-

term contract system and the industry would benefit if performers did

not have to resort to litigation in order to leave a burdensome, unfair

contract.7 If such a contract were to end in six months to a year, the

7      According to one music industry insider, 98% of artists sympathize with

George Michael's contract complaints. Garfield, supra note 4 (quoting Ed Bicknell).

Another authority states that "complaints are typical of artists all over the world of

these long-term contracts, because they are signed when the artists don't have any

clout or economic power. They become quite onerous to many artists." Dominic

Pride, Michael/Sony Verdict Resounds; Decision Does Not End Issues' Debate,

BILLBOARD, July 2, 1994, at 1 (quoting Don Engel, attorney for Don Henley of the

Eagles).

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performer could simply wait for it to expire rather than petitioning the

courts for relief.'

II.     THE Music INDUSTRY AND JUDICIAL REMEDIES FOR BROKEN

CONTRACTS

A.      Power in the Business: The Industry Reality that Musicians are

Usually on Unequal Footing with Record Companies

Popular music in the United States has always been structured

along the same principles that drive any big business. While the

surface image is of a teen idol crooning tender love songs to

screaming crowds, the reality is agents, recording companies, and

publishing houses each scrambling to get the biggest piece of the

"pie."9 Often the performer is not remotely involved in the business

side of the music industry. While this is not always the case,10 the

8     Many other related issues that are important to the music industry are

beyond the scope of this Comment. Disputes over ownership of master recordings,

publishing rights, and royalty payments are some of the most visible reasons for why

musicians become dissatisfied with their record labels. However, the focus here is

on what happens after antagonism has set in and the problems in the professional

relationship are insurmountable.

Not everyone will publicly admit that sometimes professional relationships

are past the point of repair. Even though George Michael had sworn never to record

for Sony again, after Sony won the case it issued a statement that "[w]e have great

respect for George Michael and his artistry, and look forward to continuing our

relationship with him.” Adam Dawtrey, Wham! Michael Loses as Court Rules for

Sony, DAILY VARIETY, June 22, 1994, at 1 (News).

Also beyond the scope of this Comment is a related topic, artists’ ownership

of their creations (e.g., music, art) beyond the confines of copyright law. See Dana

L. Burton, Comment, Artists’ Moral Rights: Controversy And The Visual Artists

Rights Act, 48 SMU L. REv. 639 (1995); Edward J. Damich, The Right of

Personality: A Common-Law Basis for the Protection of the Moral Rights of Authors,

23 GA. L. REv. 1 (1988).

9       MARc ELIOT, ROCKONOMICS (1989).

10    Bobby Darin was one of the most financially successful artists of his time;

he had numerous hit records and managed to capitalize on his popularity. By

controlling his own publishing, Darin became the first millionaire performer in the

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financially savvy performer is the rare exception to the rule.

Recording companies and agents have traditionally taken advantage of

their artists' ignorance, inexperience, lack of involvement, naivet6

and/or lower social status."1

This Comment by no means alleges that record companies have

always maligned poor, helpless artists. It also does not imply that any

historical problems are ongoing. Rather, it presents a context in

which the modem music industry may be viewed.

When modem American popular music first came into being,

artists did not receive royalties for recorded performances of their

songs. Indeed, the technology of recording sounds was not invented

until the end of the nineteenth century.'2 After radios became

standard fixtures in middle-class homes, a demand for recorded music

developed.   Radio stations would play records without giving a

thought to paying anyone for the right. It was not until musicians and

composers formed ASCAP and its rival, BMI, that performance

royalties could realistically be collected."3 Money from royalties

then became a prime consideration and led to struggles for the

copyright ownership of songs.

Publishing companies and record companies in these early days

of the industry sometimes took advantage of their artists' ignorance.

As royalties were becoming very profitable, the companies did what

they could to get ownership of the copyrights to songs. At times this

meant paying large lump sums to the artists for songs, with the terms

of "take it or leave it." The artists would, more often than not, be

thrilled at the large amount of money they were paid, and did not

realize that they had signed documents that transferred copyright

ownership, which unbeknownst to them, was worth a vast amount

recording industry. Id. at 99-101.

11     Gee v. CBS, Inc., 471 F. Supp. 600 (E.D. Pa. 1979).

12     Thomas Edison's cylinders were the first invention capable of recording

sounds, but competition from the United States Gramophone Company's disks led

to vinyl becoming the standard format. ELIOT, supra note 9, at 14-18.

13     ASCAP (the American Society of Composers, Authors and Publishers) and

BMI (Broadcast Music, Inc.) are musicians' unions originally designed to insure that

royalties would be paid through exclusionary and strike measures. For an interesting

look at the politics behind the formation of ASCAP and BMI, see id. at 19-26.

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MUSIC INDUSTRY CONTRACTS

more.'4 A more insidious (and illegal) way for companies to gain

the copyright was to print the name of the company president directly

on the vinyl album and label him or her as "composer" or

"songwriter." The name of the actual artist who wrote the song may

or may not have been also printed as joint author."5

Popularity and immense commercial success did not shield

later, more sophisticated artists from money, management and contract

problems. One of the most successful musical groups of all time, the

Beatles, endured some of the most complicated legal problems due to

mismanagement which allowed people to take advantage of the band.

After a series of inept contract decisions by the band's manager,16

the group was in financial disarray. Subsequent disagreement within

the band as to who should have been the new manager led to

fractionation, causing different members of the band to sign different

contracts.'7 When the band was finally able to negotiate itself out of

various future obligations for new albums, there was nothing left

holding the group together, and the Beatles dissolved. However,

complications from the assorted contracts that had been signed led to

protracted litigation.'"

More recently, many of the small and mid-sized record and

music publishing companies in the United States have been purchased

by mammoth international corporations which realized the profit

14    ELIOT, supra note 9.

15   Id.

16   Brian Epstein's management of the Beatles has been described as

"hopelessly confused." Id. at 135.

17   While John Lennon was able to persuade the reluctant George Harrison and

Ringo Starr to sign a contract with Allen Klein, Paul McCartney insisted that the

only effective new manager of the band could be Lee Eastman, his new father-in-

law. Lennon's primary motivation was the fact that Klein had deftly managed the

Rolling Stones for several years, making some members of that band multi-

millionaires, and not shy about gloating about it. In the meantime, the Beatles had

lost most of its profits in deals unfavorable to the band, and mismanagement of the

band's company, Apple Corps Ltd., which was designed to help struggling musicians

be noticed. Id. at 153-160.

18   Paul McCartney has been in litigation for more than 20 years attempting to

extricate himself from Klein's influence in various tax, copyright, and royalty

disputes. Id. at 159-60.

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potential of popular music.'9 In one of the biggest takeovers, Sony

bought CBS Records on November 19, 1987.20 Many have surmised

that the electronics hardware giant needed a guaranteed supply of

software to insure that its new technology would be used.2'

Although many of the artists formerly at CBS Records expressed

apprehension at the prospect of working for a company that has no

history or experience managing artists,' Sony assured its new

employees that it would retain most of the management of CBS

Records to insure a smooth transition. Fulfillment of this declaration

has been uneven at best.23

Quite aside from such global management changes, the story

of the individual artist in the music industry is remarkably constant.

While an unknown performer, the artist rarely has any authority to

negotiate when offered his or her first contract. If he or she does not

want to make a deal with a record company, there are plenty of other

hopefuls who will jump at the chance. It is a take-it-or-leave-it

proposition. Later, when that same artist has sold a gold record or

two, he or she wants to correct the unbalanced terms of the first

contract.  The contract can be renegotiated, but the damage has

already been done in that all future contracts will use the unbalanced

first contract as a baseline. Additionally, much of the revenue from

the hit songs of the early records will continue to go to the record

companies in the form of royalties and licensing fees, as the terms of

first contracts usually specify that the record company owns the

19   See infra note 96.

20   ELIOT, supra note 9, at 197.

21   Sony had learned its lesson after the failure of its Betamax home VCR

machines. As consumers had fewer choices of movies to watch on Beta than with

its main competitor, VHS, the Beta technology was quickly rejected and became

obsolete. Sony is now attempting to market the "MiniDisc" to play on its new

portable CD player, to replace the Sony Walkmnan, which only plays tapes. To

insure the success of the MiniDisc, Sony plans to release its vast catalog of past

recordings acquired through CBS Records in the new format. Garfield, supra note

4.

2      Id.

23     In a very public move, Sony retained Walter Yetnikoff, who was well

known for his effective artistic management. However, Yetnikoff was fired in 1990.

Id. See also ELIOT, supra note 9, at 197-99.

MUSIC INDUSTRY CONTRACTS

copyright.24 Artists may be able to renegotiate their contracts in

order to retain their copyrights of future compositions and recordings,

but generally, the only profit they will receive from their early hit

songs will be in percentages of first sales. Many artists only succeed

in creating one or two hit songs.

What would seem obvious should nevertheless be stated

outright. Record company officials are businesspersons. Artists in

the music industry usually are not. Qualities valuable to a budding

musician such as creativity, inspiration, talent and youthful energy are

not going to help a young, inexperienced "next big thing" when faced

with an army of record company lawyers, a 30-page contract, and

promises of stardom. Any discussion of equal footing of artists with

record companies needs to keep in mind that artists are often at an

inherent disadvantage. If artists do not surround themselves with

savvy managers and advisors from the beginning, they will be at a

contractual disadvantage throughout their careers.

B.      Judicial Remedies for Broken Contracts'

The contracts that are formed between musicians and record

companies are usually classified as personal services contracts.26

24    See Mellencamp v. Riva Music Ltd., 698 F. Supp. 1154 (S.D.N.Y. 1988)

(suit by rock artist John Mellencamp to recover from his record company copyrights

to his songs after his efforts to buy them back for $3 million failed).

25    Several past law review articles have dealt with the subject of personal

services contracts in the music and entertainment industry. See generally, Allen R.

Grogan, Note, Statutory Minimum Compensation and the Granting of Injunctive

Relief to Enforce Personal Services Contracts in the Entertainment Industries: The

Need for Legislative Reform, 52 S. CAL. L. REv. 489 (1979); David Tannenbaum,

Enforcement of Personal Services Contracts in the Entertainment Industry, 42 CAL.

L. REV. 18 (1954); Jeffrey B. Light, The California Injunction Statute and the Music

Industry: What Price Injunctive Relief?, 7 COLuM. J. ART & L. 141 (1982).

26      Many contracts between musicians (or athletes) and recording or

management companies contain a negative covenant ensuring the entertainer's

exclusivity. At least one court has held that if such a contract is for a specific

period of time, then it should be classified as a contract for personal services. If,

however, the contract has no time limitation, then it should be considered in light of

case law dealing with employment contracts. Ichiban Records, Inc. v. Rap-A-Lot

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This is because making music is an artistic, highly creative endeavor,

and although the relationship has many elements of more traditional

employment contracts, the end result-the record-is a personal

creation.

An artist who wishes to get out of a long-term, exclusive27

contract with his record company has two main options. The first is

to simply break the contract and to make a record for someone else,

leaving it to the company to pursue legal action. Remedies available

to such record company plaintiffs are orders for specific performance,

injunctions preventing the artist from working for another company,

and damages. The artist's other option is to sue the record company

to have the contract declared unenforceable.28 Artists can sue on

several grounds, such as restraint of trade,29 unconscionability,�

unequal bargaining     power,31 and    involuntary  servitude.32   The

Records, Inc., No. 01-95-00085-CV, 1995 Tex. App. LEXIS 1739, at *15 (1st

Dist., Aug. 1, 1995).

27    This Comment focuses on recording contracts that are multi-year and/or

multi-album and have negative covenants restricting the musician from working with

other companies. Short-term contracts or non-exclusive contracts are not considered

except to the extent advocated as a favorable direction for the music industry.

28    Artist plaintiffs have been more visible and successful in breaking their

contracts in Europe than in the United States. See Jan Colley, Rock Band Freed

From 'Unfair' Contract, PRESS ASS'N NEWSFILE, May 20, 1991, at 1 (Law Court

News) (The English rock band, the Stone Roses, was successful in its restraint of

trade case against its label, Silvertone Records, and Zomba Music Publishing. The

case was tried by the High Court of England and was unpublished and sealed.); John

Wilson, Rock /Sleeve Notes, THE INDEPENDENT, May 23, 1991, at 26 (Arts Page);

Robert Hilburn, Pop Music; The Roses Bloom Again, L.A. TIMES, Feb. 5, 1995, at

E3. See also Michael Skapinker, Designer Stubble That Got Burnt; George Michael

Lost His Court Battle-But Have Music Companies Won, FIN. TIMES, June 22,

1994, at 22 (Holly Johnson, the lead singer for the band Frankie Goes to

Hollywood, successfully sued Zang Tumb Tuum, his record company, in 1989. The

unpublished Court of Appeal decision held the nine-year contract to be

unenforceable, as it was "grossly one-sided.").

29    Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

30    Buchwald v. Paramount Pictures Corp., No. C 706083, 1990 Cal. App.

LEXIS 634 (Cal. App. Dep't Sup. Ct. Jan. 31, 1990).

31    See supra note 28.

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MUSIC INDUSTRY CONTRACTS

following discussion focuses on remedies available to companies

whose artists who have broken their contracts.

1.     Involuntary Servitude: A Prohibition Against

Specific Enforcement

The United States' constitutional prohibition against involuntary

servitude33  has   resulted  in  courts  refusing  to  order   specific

performance of contracts for personal services.34 In other words,

employers cannot force employees to work for them when the work

involves services of a personal nature. This general rule is especially

important in situations where the employment contract involves mutual

confidence, special knowledge, skill or ability, or the exercise of

judgment, discretion, and integrity.35     Recording a music album

without a doubt requires all of these qualities. To force someone to

remain in the personal service of another is akin to involuntary

servitude,36 or slavery.37

Courts have recognized this basic principle for hundreds of

years.3" An early example in U.S. law comes from the case of

Arthur v. Oakes,39 where the court observed:

It would be an invasion of one's natural liberty to compel [an

individual] to work for or to remain in the personal service of

32    Rather than a cause of action, involuntary servitude is usually used as an

argument for why the contract is unconscionable, unfair, in restraint of trade, or

otherwise invalid. Involuntary servitude is also invoked when proscribing specific

enforcement.

33    “Neither slavery nor involuntary servitude… shall exist within the United

States . . . .” U.S. CONST. amend. XIII, � 1.

3     E. ALLAN FARNSWORTH, CONTRACTS � 12.7, at 868 (2d ed. 1990); Foxx

v. Williams, 244 Cal. App. 2d 223, 235 (1966) (“It is a familiar rule that a contract

to render personal services cannot be specifically enforced.”); Poultry Producers of

S. Cal., Inc. v. Barlow, 189 Cal. 278, 288 (1922).

35    Poultry Producers, 189 Cal. at 288.

36    Id.

37    U.S. CONST. amend. XIII, � 1; see also Poultry Producers, supra note 34.

38    Lumley v. Wagner, 42 Eng. Rep. 687 (1852); see infra Part II.B.2.

39    63 F. 310 (7th Cir. 1894).

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388        UCLA ENTERTAINMENT LAW REVIEW                    [Vol. 3:377

another. One who is placed under such constraint is in a condition

of involuntary servitude-a condition which the supreme law of the

land declares shall not exist within the United States. .... 40

A  recent case expressed similar sentiment.        In American

Broadcasting Cos. v. Wolf,41 the court stated:

Courts . . . historically have refused to order an individual to

perform a contract for personal services . . . . [There is a]

compelling reason for not directing the performance of personal

services: the Thirteenth Amendment’s prohibition of involuntary

servitude. It has been strongly suggested that judicial compulsion

of services would violate the express command of that amendment

. … For practical, policy and constitutional reasons, therefore,

courts continue to decline to affirmatively enforce employment

contracts. 42

Another reason for the doctrine that contracts for personal

services cannot be specifically enforced is that enforcement runs

contrary to public policy. It is desirable for the sake of society that

contracting parties maintain a spirit of cooperation.43      Forcing an

employee to work plainly creates an atmosphere of hostility that is not

useful in the workplace. Lastly, it is impossible in a practical sense

for judges to enforce specific performance.” At the very least,

courts cannot supervise the fulfillment of personal services contracts

to verify that they are being performed in the intended manner.4″

40      Id. at 317-18.

41      52 N.Y.2d 394 (1981).

42      Id. at 401-02.

43      Poultry Producers 189 Cal. at 288-89.

/Id. at 289. See also 5A CORBIN ON CONTRACTS � 1204 at 400 (1964) (“An

artist does not work well under compulsion, and the court might find it difficult to

pass judgment upon the performance rendered.”) (as quoted in Motown Record

Corp. v. Brockert, 160 Cal. App. 3d 123, 137 (1984)).

45      One comical example is Monty Python’s album entitled “Contractual

Obligation.” See MONTY PYTHON, MONTY PYTHON’S CONTRACTUAL OBLIGATION

ALBUM (Arista 1980).

MUSIC INDUSTRY CONTRACTS

2.     Injunctions

More commonly than requesting specific performance, a

company seeking a remedy for a breached personal services contract

will ask the court to enjoin the artist from performing for anyone else.

However, an injunction can be an indirect means of actually forcing

performance of the contract.46 In fact, this is the only purpose of an

injunction because the plaintiff has nothing else to gain by preventing

the employee from working for anyone else.47 The plaintiffs main

motivation in seeking the order is to force the performer to return to

the employer and to fulfill the terms of the contract.4″ If the

performer is enjoined from working for anyone else, then he or she

may very well return to the plaintiff/employer in order to continue to

earn a living. Wealthy performers who could manage without a

paycheck may return to the employer because they cannot afford to

remain out of the public’s eye for a period of years until the contract

expires. To do so would be career suicide.49 Some authorities have

logically extended this analysis to state that by seeking an injunction,

the employer has demonstrated a good faith desire to continue the

contract.50

The “classic case”5″ illustrating the use of the injunction is

Lumley v. Wagner.52 Johanna Wagner, niece of one of history’s

46     FARNSWORTH, supra note 34, at 855.

47     Beverly Glen Music, Inc. v. Warner Communications, Inc., 178 Cal. App.

3d 1142, 1145 (1986).

43     Although this motivation has been seen as primary by many authorities,

Light, supra note 25; Stevens, Involuntary Servitude by Injunction, 6 CORNELL L.Q.

235 (1921); Beverly Glen, 178 Cal. App. at 1145, an equally powerful motive may

be to force the artist to pay more for the privilege of leaving the contract. See infra

Part III.A.

49      ”Kids’ tastes change very rapidly. Nobody can afford not to record for

years, except Frank Sinatra, of course.” Skapinker, supra note 28.

50     See FARNsWORTh, supra note 34, at 868-69 n.22 (citing RESTATEMENT

(SECOND) OF CONTRACTS � 367, cmt. c (1981)).

51     FARNSWORTH, supra note 34, at 855.

52     42 Eng. Rep. 687 (1852).

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greatest opera composers53 and herself a singer of international

renown, agreed to sing at Her Majesty's Theatre in London for three.

months. She was subsequently persuaded by Frederick Gye to break

her contract4 and to sing at the Royal Italian Opera instead. Lumley

successfully obtained an injunction preventing Wagner from singing

for anyone else during the duration of the contract.55

It is unlikely that injunctions such as that in Lumley v. Wagner

will be ordered unless the defendant is already in a position of

strength. If an injunction would leave the employee with no other

means of support, then a court would be reluctant to grant it.56

Some courts are even resistant to any use of injunctions as a remedy

to breached personal services contracts.7 Nevertheless, if the artist

is wealthy, famous, and powerful at the bargaining table, most courts

would not consider an injunction to be unfair. Such an artist would

not be seen as unduly harmed. The artists with little bargaining power

have the most to lose, and consequently, are the least likely to have

injunctions enforced against them.8

The case of Motown Record Corp. v. Brockert59 sets forth the

rule on the use of injunctions against performers. In Motown, singer-

songwriter Teena Marie breached the exclusivity clause of her contract

53      German composer Richard Wagner (who died in 1883) authored "The

Ring," "Tristan und Isolde," "Tannhiuser," and "Parsifal" among many other

works, and an opera house has been built and designed expressly for the

performance of his music in Bayreuth, Germany.

5      For an interesting treatment on the neglected tort of inducement to breach

of contract based in part on Lumley v. Gye, see David F. Partlett, From Victorian

Opera to Rock and Rap: Inducement to Breach of Contract in the Music Industry, 66

TUL L. REv. 771 (1992).

55     Thus, for perhaps the first time, the injunction was used in the context of

the personal services contract.

56     FARNSWORTH, supra note 34, at 868.

57      "The . . . doctrine was not warmly embraced ...." Motown Record

Corp. v. Brockert, 160 Cal. App. 3d 123 (1984) (quoting Whitwood Chem. Co. v.

Hardman, 2 Ch. 416 (1891)).

58     "There [is] a discernible trend toward enforcing negative covenants against

the ‘prima donnas’ but not the ‘spear carriers.’” Brockert, 160 Cal. App. 3d at 137

(citing to Carter v. Ferguson 12 N.Y.S. 580, 581 (1890)).

59      160 Cal. App. 3d 123 (1984).

390

MUSIC INDUSTRY CONTRACTS

with Motown by agreeing to record for another company. Her case

turned on the issue of whether or not her contract guaranteed her

$6,000 annually. According to California law, an injunction cannot

be granted to prevent the breach of a personal services contract

entered into before January 1, 1994, where the contract guarantees

less than $6,000 in compensation, and where the services are not of

special, unique, unusual, extraordinary, or intellectual character.’

If the contract does not guarantee $6,000, it is irrelevant whether the

performer actually earns much more.

To be subject to [injunction], the contract must have as one of its

terms a compensation provision providing for payment at the

minimum rate of $6,000 per year. In other words, agreeing to

payment of the minimum compensation is not a condition

precedent to the granting of injunctive relief; it is a threshold

requirement for admission of the contract into the class of

contracts subject to injunctive relief under the statute.61

California’s  $6,000    per   year   minimum     compensation

requirement is notable because, as originally drafted, the statute would

have denied any injunctive relief at all for personal services

contracts.62 The $6,000 per year exception was designed to give

some relief to companies dealing with powerful performers.63 This

is because at the time the statute was written, $6,000 was more than

five times the national wage.’ The legislature thus intended to make

injunctive relief available against star performers, or “prima donnas,”

60      CAL. CIV. CODE � 3423 (Deering 1995) (This version of the statute was not

in use at the time of the case, but the relevant portions remain unchanged. The main

difference is that contracts entered into after December 31, 1993 are subject to

different amounts of guaranteed minimum compensation, depending upon how long

the contract has been in effect.).

61      Brockert, 160 Cal. App. 3d at 135 (applying CAL. CIV. CODE � 3423).

6      Id. at 136.

6       “[A]t the time section 3423 was amended [in 1919] there was a discernible

trend toward enforcing negative covenants against the ‘prima donnas’ but not the

‘spear carriers.’” Id. at 137.

64      In 1919, $6,000 was equivalent to $100,000 (as the dollar was valued in

1984). Id. at 138.

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UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:377

but not against those less famous and powerful, the "spear

carriers. "65

At the time she signed her contract with Motown, Teena Marie

was not a star. This was one of the major reasons why she was not

held to be subject to an injunction. The court pointed out that

although she had subsequently become very successful, it was her

status at the time the contract was signed that was relevant.'6 In

reaching this conclusion, the court distinguished Lumley v. Wagner on

the basis that, at the time the contract was made, Wagner was already

a performer of immense fame and distinction.67 Whereas courts

were comfortable with the result in Wagner's case, they were reluctant

to extend the doctrine of allowing injunctions in personal services

contracts any farther.6'

An important reason why courts are disinclined to expand the

Lumley v. Wagner exception for "stars" is that such injunctions are a

powerful tool of coercion available to companies.69 "The threat of

a prohibitory injunction may be just as effective as the injunction itself

in   discouraging   the   artist from    seeking  more    lucrative

employment."70       As   many    artists  are  not   sophisticated

businessperson, legal threats could be as effective as legal action.

This is brought into even sharper focus by the fact that the statutory

minimum compensation requirements are virtually meaningless by the

time most cases would come to trial. If the previously unknown artist

is unsuccessful, the company will not expend money and resources

attempting to obtain an injunction.7'

Two other cases relied upon by Motown also emphasize the

"prima donna/spear carrier" distinction. Olivia Newton-John had an

injunction issued against her after a court held that the $6,000

6      Brockert, 160 Cal. App. 3d at 137-38.

66     Id. at 136. Note that the Panayiotou v. Sony court did not agree with this

holding; see infra nn. 98 & 108 and accompanying text.

67     Lumley v. Wagner, 42 Eng. Rep. 687 (1852).

M      Brockert, 160 Cal. App. 3d at 129.

69     Id. at 139-40.

M      Id.

71     Id. at 139-40.

392

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statutory minimum requirement did not apply to her situation,72 and

that she was an international star.73 On the other hand, as comedian

Redd Foxx was a "struggling nightclub comic" when he made his

contract to record an album, he was held not to fall within the

exception.74 As a practical matter, therefore, injunctions, are only

ordered against "star" performers who are famous, successful and

powerful.75

Separate from the policy-oriented question of whether a

performer has reached star distinction is a statute-based inquiry into

what constitutes services of a special character.76 Many courts

require a showing that the employee's services are unique or

extraordinary before an injunction will be ordered.77 Cases where

an injunction was granted (or even seriously considered) usually

involve contracts of athletes or professional entertainers78 due to the

72    It has been noted by previous commentators that the discrepancy between

Foxx and Newton-John could be explained on the theory that the $6,000 statutory

minimum requirement was to be applied as a limitation on the class of contracts of

powerful performers. Light, supra note 25, at 151-54. However, a more likely

interpretation is that the $6,000 requirement was intended to guarantee net profits to

the entertainer. Id. While this places the Newton-John holding into serious tension

with Foxx, it is clear that courts never intended the minimum wage requirement to

benefit powerful artists who did not need its help. Grogan, supra note 24, at 513.

73    Brockert, 160 Cal. App. 3d at 131 (discussing MCA Records v. Newton-

John, 90 Cal. App. 3d 18 (1979).

74    Id. at 130-31 (discussing Foxx v. Williams, 244 Cal. App. 2d 223 (1966)).

75    This seems to be the most likely solution, as Newton-John's contract did

not, in fact, guarantee her $6,000 per year, although in reality she earned far more.

See Grogan, supra note 25, at 513.

76      See generally Tannenbaum, supra note 25, at 21-23.

7n      FARNSWORTH, supra note 34, at 865. See also CAL. CIV. CODE � 3423

(Deering 1995) (stating that an injunction can only be granted to prevent breach of

a personal services contract "where the promised service is of a special, unique,

unusual, extraordinary or intellectual character, which gives it peculiar value, the

loss of which cannot be reasonably or adequately compensated in damages in an

action at law, the performance of which would not be specifically enforced. .... ").

78      FARNSWORTH, supra note 34, at 868 n.21. One commentator who

thoroughly researched the subject also found that injunctions have been issued against

actors, acrobats, dancers, minstrel singers, musicians, radio commentators, a

theatrical booking agent, baseball players, and a jockey. Tannenbaum, supra note

393

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exceptional or unusual talents of some "superstars" of these industries.

However, the issue of whether a performer's services are "special"

enough to merit injunction is a finding of fact to be determined by the

jury (or by the judge in a bench trial).79        This can lead to

contradictory results.

The inherent possibility of contradiction is exemplified by

Anita Baker's case.80 A performer as widely known as Baker was

held not to be so special as to merit an injunction.8" As the

determination of the "specialness" of a performer's services is a

finding of fact for the jury to decide, inconsistency may result. The

more widely known and popular the artist, the more likely the jury is

to already be familiar with him or her as a public figure. If the jury

feels kindly disposed to such a well-known performer, it may well

decide to do the performer the favor of finding that his or her services

are not nearly "special" enough to qualify for an injunction. If this

reasoning were extended to find the contract unenforceable, the artist

would be free to walk away from the contract.

Some of the other cases already mentioned also considered the

issue of "specialness." Lumley v. Wagner is the origin of this line of

inquiry, and many cases that came after were distinguished on the

ground that unlike the artist at issue, Johanna Wagner was an

"exceptional artist. "2 Additionally, the salary that is paid to the

performer can be used to determine whether or not the performance

25, at 21-22.

79     The same line of reasoning for why courts will not enforce specific

performance of personal service contracts applies to the issue in which judges

determine whether a performer's services are "special." Judges have wisely realized

that it is a very difficult job to pass judgment on the quality of a performance.

Brockert, 160 Cal. App. 3d at 137.

80     Beverly Glen Music, Inc. v. Warner Communications, Inc., 178 Cal. App.

1142 (1986).

81     Id. at 1145.

8      Brockert, 160 Cal. App. 3d at 137 (discussing Lumley v. Wagner, 42 Eng.

Rep. 687 (1852)).

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is "special."13   Courts are free to equate a modest fee with a

performance that is easily replaceable.

In Motown, it was decided that Teena Marie did not fit into the

statutory exception of "special" because she was an "unknown" at the

time she signed her contract.' The same reasoning allowed Redd

Foxx to escape injunction.'      Olivia Newton-John was the only

performer in this discussion who was enjoined against performing for

any other company.16 The court in MCA Records v. Newton-John

declined to discuss whether or not her performances constituted

services of a "special" nature. Rather, it made its decision based on

the statutory requirement of $6,000 per year. Although it avoided the

question of "specialness," it is feasible that the court was influenced

by Newton-John's star quality at the time she signed her contract.87

It is no great leap to say that courts are reluctant to assess the

"specialness" of a performer's services.

3.      Damages

In the event that a court decides not to grant an injunction, it

may still award damages if it finds that a valid contract did exist and

was breached.     The amount awarded may be quite substantial

depending on the earning power or potential of the performer. In

fact, a court is not supposed to even reach the question of whether an

injunction is suitable unless the court decides that the company cannot

be fairly compensated in any other way."8 The current law holds that

83     Id. ("The salary agreed to be paid defendant was quite moderate, and

indicates that his part was quite ordinary, and manifestly could be easily filled.")

(quoting Dockstader v. Reed, 106 N.Y.S. 795, 797 (1907)).

84     Id. at 138.

&5     Id. at 130-31 (discussing Foxx v. Williams, 244 Cal. App. 2d 223 (1966)).

86     But cf. Paramount Pictures Corp. v. Davis, 228 Cal. App. 2d 827 (1964);

King Records, Inc. v. Brown, A.D.2d 593 (1964).

87     Brockert, 160 Cal. App. 3d at 131 (discussing MCA Records v. Newton-

John, 90 Cal. App. 3d 18 (1979)).

88     "A court will not ... grant an injunction unless the remedy in damages

would be inadequate." FARNSWORTH, supra note 34, at 865. But cf. Light, supra

note 25, at 141 ("Injunctions are the only practical remedy to a company with an

artist threatening to breach.").

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damages are the appropriate remedy against all performers except

those very "special" performers who have produced very high

revenues for their companies.89 This is subject, of course, to a

finding of a valid contract.

C.      Michael v. Sony as an Illustration of Problems Endemic to

Long-Term Contracts in the Music Industry

The second option for an artist who wishes to be free of a

contract to perform and/or record for a company is to request the

court to declare the contract legally unenforceable. Some artists may

prefer to petition the courts as plaintiffs, rather than break their

contracts and wait for the record companies to pursue them with a

lawsuit. In addition to choice of venue, this tactic has the advantage

of showing good faith to the court. Historically, some grounds for

such    a    decision    have    included     restraint   of   trade,90

unconscionability,91 and involuntary servitude.'

89      For a more thorough discussion of damages as a remedy, see infra Part

III.A.

90      Panayiotou v. Sony Music Entertainment, 13 Ch. 532 (Ch. 1994).

91      Michael Skapinker, Designer Stubble That Got Burnt; George Michael Lost

His Court Battle-But Have Music Companies Won, FIN. TIMES, June 22, 1994, at

22 (Holly Johnson, the lead singer for the band Frankie Goes to Hollywood,

successfully sued Zang Tumb Tuum, his record company, in 1989. The unpublished

Court of Appeal decision held the nine-year contract to be unenforceable, as it was

.grossly one-sided."). See also Jan Colley, Rock Band Freed from 'Unfair'

Contract, PREss Ass'N NEWSFILE, May 20, 1991, at 1 (Law Court News) (The

High Court in the case of the group The Stone Roses against its record company,

Silvertone, found that the band was very much under the influence of its manager,

who was inexperienced in contract law. The High Court also found that the

manager's attorney was "no match whatsoever" for the attorneys employed by the

record company.); Buchwald v. Paramount Pictures, No. C 706083, 1990 Cal. App.

LEXIS 634 (Cal. App. Dep't Sup. Ct. Jan. 31, 1990).

92      Involuntary servitude is not a cause of action so much as a policy argument

directed toward what will happen either if the contract is allowed to stand or if an

injunction is granted. See supra Part II.B.1.

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George Michael's case93 probably involves the most famous

musician in the modem era who attempted to break a performing and

recording contract.4    All the eyes of the industry were upon this

case, and the outcome could have radically changed the way the music

industry operates.95 Since Michael lost his case, the industry is

ostensibly back to business as usual. However, a more basic question

is why those governed by the U.S. legal system should be concerned

with a British case. After all, it has no precedential value and can be

regarded as simply an interesting news event to be read about in the

entertainment section of the newspaper. One of the answers is that the

music industry today is an international, global enterprise. This

British decision will at a minimum affect those U.S. companies doing

business in the U.K.' Another reason to examine the case is that

93    Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

94    In earlier times, the case of Lumley v. Wagner, 42 Eng. Rep. 687 (1852),

was the most prominent example. Michael's case is one of the few to actually be

litigated, due to the length of time a trial requires, and the artist being out of the

public eye for the duration. See supra note 49.

95    Donald Passman, Michael Trial Has No Bearing On U.S. Biz, BILLBOARD,

Aug. 6, 1994, at 6 (hypothetical description of what could have happened if Michael

had been successful).

96    Actually, as the result of mergers and acquisitions, there are currently six

major players in the music industry, only one of which is United States owned. All

six "majors" are now international giants. Besides Sony buying CBS Records,

discussed in supra note 21 and accompanying text,

Holland's Philips N.V. acquired PolyGram, A&M, Mercury and

Island. Sony's archrival Matsushita Electrical Industrial Co.

bought MCA and Geffen. Britain's Thorn-EMI picked up Capitol

and Virgin. And Germany's publishing giant, Bertelsmann Inc.,

bought the record arm of RCA Corp. U.S.-based Time Warner

rounded out the new order of multimedia conglomerates with the

1989 merger of the Time Inc. and Warner Communications

empires.

Robert Hilburn & Chuck Philips, Rock's New World Order, L.A. TIMES, Nov. 29,

1992, at 7 (Calendar). But see Chuck Phillips, Indie Epitaph Records is Hoping to

Upend the Major Record Companies, L.A. TIMES, Apr. 5, 1996, at D1 (stating that

independently distributed record companies are projected to gain a 20% market share

of the music industry by mid-1996, which for the first time would be a larger share

than any of the six entertainment giants).

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because Michael v. Sony lacks precedential value in the U.S., a

similar case could arise in the U.S. legal system and could be decided

differently.'

George Michael's troubles originated in 1982 when, as part of

his music group Wham! he signed his first recording contract with

Innervision, a subsidiary of CBS. The long-term deal bound Michael

(whose real name is Georgios Kyriacos Panayiotou) to an extremely

unfavorable financial arrangement.98 After Wham!'s successful debut

album,99 the band filed restraint-of-trade charges against Innervision

in 1984. Weeks before the case was to come to trial, CBS offered the

band a better deal and the case settled out of court. After Andrew

Ridgely left Wham!,"      CBS exercised its option to continue the

contract with Michael as a solo artist. 1o0

Michael's   first solo   album,   "Faith,"   was   enormously

successful.1�2 Upon Michael's request, CBS renegotiated his deal,

improving his financial terms but requiring him to deliver seven more

97    This is assuming that another artist will take the chance of challenging his

or her contract in the U.S. Michael's case was one of the rare few to reach a trial.

Most artists cannot risk their careers by being out of the limelight for the length of

time required by a lawsuit. This, combined with the strong-arm tactics used by the

record companies, "persuades" most artists to settle out of court. Light, supra note

25, at 146. The dearth of caselaw on the subject is almost shocking. Grogan, supra

note 25, at 491-92. See also infra note 166.

98    Simon Garfield, George Michael is No Stranger to Contract Litigation,

TORONTO STAR, Nov. 30, 1992, at B4.

99      Wham!'s debut album, "Fantastic" was released in 1982. Adam Dawtrey,

Wham! Michael Loses as Court Rules for Sony, DAILY VARIETY, June 22, 1994, at

1 (News).

100   Wham! last performed at Wembley Stadium in June, 1986, and the band

split up by the end of that year. In 1988 Ridgely was reportedly living in Monaco

and racing cars. Jon Bowermaster, Michael Unmasked: His New Image is Part of

a Real Effort to Claim Musical Respectability, CHI. TRIB., Sept. 4, 1988, at C4.

Ridgely released his solo debut, Son of Albert (Columbia), two years later. Parry

Gettelman, Music in the Bin, ORLANDO SENTINEL TRIB., May 25, 1990, at 21

(Calendar).

101   Garfield, supra note 98; Dawtrey, supra note 99.

102   "Faith" has sold 15 million copies worldwide. Chris White, Sony Blasted

by Attorney as Michael's Trial Opens, BILLBOARD, Oct. 30, 1993, at 8 (Artists &

Music).

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albums.    The new    contract bound him     to Sony until the year

2003.103 In 1988, Sony finalized its purchase of CBS Records, and

Michael toured to promote "Faith." His contract, then with Sony,

was renegotiated again in 1990 in order to bring his earnings into line

with those of comparable stars. When his second album, "Listen

Without Prejudice," failed to match the sales of "Faith,""'� Michael

decided to challenge his contract with Sony on grounds of

unreasonable restraint of trade."ls He contended that Sony pressured

him to create and record a certain style of music accompanied by

heavy video rotation. When he resisted, due to his preference to

explore other musical styles and his concern of overexposure, Sony

allegedly retaliated by failing to adequately market his recordings and

threatening to not release any unacceptable albums, thus "restraining

his trade."

Michael's grievances did not stem from financial inequity.'�6

Although Michael was earning three to five times less money than his

music was making for Sony,'�" he was far from destitute. Because

his wealth has been estimated at $108 million,108 no court in the

world would rule that the terms of his contract were financially

103  Jeff Kaye, Music Industry Eyes on George Michael Suit, L.A. TIMES, Oct.

8, 1993, at D5.

104   "Listen Without Prejudice" only sold 5.5 million copies worldwide

compared to "Faith's" 15 million. However, in the U.K., where it was heavily

promoted, "Listen Without Prejudice" outsold "Faith." White, supra note 102.

"Listen Without Prejudice" was nevertheless within the top 1 % of albums in the

U.S. Dominic Pride, Michael/Sony Verdict Resounds; Decision Does Not End

Issues' Debate, BILLBOARD, July 2, 1994, at 1.

105  Dawtrey, supra at note 99; Michael Skapinker, Designer Stubble That Got

Burnt: George Michael Loses His Court Battle - But Have Music Companies Won,

FIN. TIMES, June 22, 1994, at 22.

106  The contract was also argued to be unconscionable because of the inequality

of royalty rates between Michael and Sony. However, unconscionability was used

as a sub-argument to the restraint of trade issue and not on its own merits.

Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch. 1994).

107  Various writers have placed the apportionment at 0.69 pence for Michael

for every 3.38 pounds for Sony, Simon Garfield, The Machine That Ate George

Michael, THE INDEPENDENT, Nov. 21, 1992, at 29, or as high as $0.87 for Michael

to $2.78 for Sony, Kaye, supra note 103.

109  Michael Appeals Sony 'Slavery,' DAILY VARIETY, Aug. 9, 1994, at 6.

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unconscionable. Rather, he felt that Sony refused to market his

albums properly. Michael believed that because Sony did not like his

new style, it refused to spend sufficient money to promote "Listen

Without Prejudice" to radio stations and to expose it to the buying

public. The contract went so far as to allow Sony to shelve any of his

albums if it decided that the music is not what it wanted to market.

As a result, Sony could insist that Michael's music be in a particular

style simply because Sony believed it would be more commercially

viable."�   Sony never refused outright to release his material, but

Michael claimed that Sony did soft-pedal two of his albums after the

mega-success of "Faith."110

Michael was very clear that his aim was not money, but rather,

artistic freedom.11' He felt that Sony did not understand the creative

aspects of the music business and that it treated musicians as

"software" to supplement the success of its huge worldwide music

hardware industry. 12

Since the Sony Corporation bought my contract, along with

everything else at CBS, I have seen the great American music

company that I proudly signed to as a teen-ager become a small

part of the production line for a giant electronics corporation, who

quite frankly, have [sic] no understanding of the creative process.

With CBS, I felt that I was believed in as a long-term artist,

whereas Sony appears to see artists as little more than software.

Musicians do not come in regimented shapes and sizes, but are

109   Kaye, supra note 103.

110   “Red Hot and Dance,” a charity album with three songs by Michael, was

alleged to have been “buried” by Sony because it afforded Sony no financial gain;

all proceeds went to AIDS research. Garfield, supra note 98. Additionally, his

second solo album, “Listen Without Prejudice,” did not come close to matching the

megasuccess of “Faith.” White, supra note 104. Michael believed that Sony had

ineffectively marketed the album in a deliberate “kill” attempt as a punishment for

his refusal to make videos or do interviews. Skapinker, supra note 105.

III   Michael has said that if money were his motivation, he would simply have

renegotiated his contract again. Garfield, supra note 98.

112   Robert Hilburn & Chuck Philips, Rock’s New World Order, L.A. TIMES,

Nov. 29, 1992, at E7.

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individuals who change and evolve together with their audiences.

Sony obviously views this as a great inconvenience.113

The London High Court disagreed with Michael.”4 The

judge ruled that Michael’s 1988 eight-album, 15-year contract did not

constitute a restraint of trade. The opinion had three main points.

First, the contract was “reasonable and fair.”115 As Michael was

already a superstar at the time he signed the contract, it was not a

situation of a young, inexperienced artist, desperate for a big break,

signing a contract without representation.’16 The English courts had

already shown a willingness to overturn contracts that they felt were

fundamentally unfair due to record companies and their attorneys

taking advantage of artists’ naivet6.”7 However, as Michael was

represented by some of the best entertainment attorneys in the business

at the times of his renegotiations, he did not fit the mold.

Second, because the 1988 contract was based on the 1984

contract, Michael was precluded from challenging the 1988 contract

on restraint of trade grounds. As the 1984 contract was a compromise

solution to Michael’s previous restraint of trade lawsuit against

Innervision,118 the court held that Michael had already settled this

particular argument against CBS by agreeing to the 1984 contract.

Therefore, he could not assert it again against Sony in its new form

of the 1988 contract.119

Third, Sony had shown good faith by renegotiating Michael’s

contract several times.’” Sony even advanced money at Michael’s

113  This quote was reproduced in many slightly different variations. Because

the press release is no longer available, the above version is spliced together from

what was reported, to be as close as possible. Garfield, supra note 107; Hilburn &

Philips, supra note 112; Kaye, supra note 103.

14   Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

115  Id.

116  Dawtrey, supra note 99.

117  See supra note 91.

118  Dawtrey, supra note 99.

119  Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

120   TA

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request. 121 One of these advances could have been what ultimately

ended Michael's chances to assert his restraint of trade argument.

After successfully renegotiating his contract with Sony in 1990,

Michael was informed by his lawyers that his agreement was possibly

an unreasonable restraint of trade. Nevertheless, he requested an

advance of $1 million, which Sony paid. Although Michael repaid the

$1 million six months later, the judge ruled that his acceptance of the

money affirmed the Sony contract. 122

In holding that Michael was well-represented by counsel and

was a superstar rather than a naiv6 young artist during contract

renegotiations, the court ignores the fact that Michael was indeed an

inexperienced young singer at the time of the signing of his first

contract in 1982. All the subsequent contracts were hampered by this

first contract with Innervision, which was universally agreed to have

been a terrible deal for Wham! and Michael.'23   Michael began his

career with very poor contract terms. Although subsequent contract

renegotiations improved Michael's situation, the revisions did not

really raise the contract to a fair level. Michael's representatives

could only get so many concessions in any one negotiation.

In addition, two other groups with first contracts very similar

to Michael's first arrangement were allowed out of their contracts.

The English courts held that both Frankie Goes to Hollywood"24 and

the Stone Roses"2 had been taken advantage of by powerful

companies, resulting in inequitable contracts. In the case of the Stone

121  Dawtrey, supra note 99.

122  Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994); Dawtrey, supra note 99.

12     "Because of the first bad deal, [Michael's] hands have always been tied

during negotiations. He always had to agree to terms far less lucrative [than] to

those he could get on the open market.” Garfield, supra note 107 (quoting Dick

Leahy, Michael’s music publisher and confidant). See also supra Part II.A.

124    Zang Tumb Tuum Records v. Johnson (Eng. C.A. Ch. July 26, 1989)

(unpublished); see supra note 91.

125    Stone Roses v. Silvertone (High Court of England May 22, 1991) (decision

was unpublished and sealed); see supra note 91.

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Roses, the court went so far as to declare the contract an unjustifiable

restraint of trade. 126

The main difference between these cases and Michael’s is that

Michael settled his first contract dispute out of court. Succeeding

renegotiations resulted in the 1984 contract with CBS Records.

Michael v. Sony held that by settling and renegotiating, Michael

affirmed that there was no restraint of trade. On the other hand, the

decision could be read as holding that a restraint of trade argument has

to be fully litigated the first time or be waived. This could result in

discouraging the artist from settling a case. In any event, although

Michael’s renegotiations eventually made him a wealthy man,’27 he

may have been better off scrapping the whole deal and starting over

in 1984. His renegotiations always related back to the 1982 contract.

As reported by the press, Michael stated that he

.was trying to make the best of a bad job.” The problem with a

recording contract … is that when you sign your first one you

are stuck with it. “There is no such thing as resignation for an

artist in the music industry. Effectively, you sign a piece of paper

at the beginning of your career and are expected to live with that

decision, good or bad, for the rest of your professional life.” 128

The London High Court could have ruled that long, multi-year,

multi-album contracts constitute an unreasonable restraint of trade in

general, but it did not even address the issue. By instead focusing

only on the merits of Michael’s case, the door was left open for

another court to decide that contracts for lengthy periods of time are

unenforceable.129   Michael v. Sony did not so much address the

weight of the unreasonable restraint of trade issue standing alone as it

addressed how the issue is affected by star power. The ultimate

message of the case was that because George Michael was a rich and

powerful superstar who was well represented by counsel in contract

126  Steve Hochman, Pop Eye: They’re Off and Running in the George Michael

Derby, L.A. TIMES, Jan. 24, 1993, at 70 (Calendar).

127  Garfield, supra note 107 and accompanying text.

128  Skapinker, supra note 105; Pride, supra note 104.

129  Skapinker, supra note 105.

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negotiations, there could not possibly have been restraint of trade. 131

While this is not an unreasonable assumption, it evades the question

of whether or not there actually was a restraint of trade.

Additionally, although the court clearly held that Sony had

shown good faith throughout the contract negotiations,131 the court

did not discuss the fact that Sony had been involved in only one of the

four contracts, the last one. Michael's first contract, in 1982, was

with Innervision, a subsidiary of CBS. The 1984 contract with CBS

Records was a result of a settlement, and the 1988 renegotiation was

also with CBS Records.      Sony then bought CBS Records and

Michael's contract "along with everything and everyone else at

CBS. "132

Whereas Michael seemed to have considered CBS Records a

"great company" with which he was proud to have been

associated,133 he was clearly disappointed by the Sony takeover.

The London High Court completely disregarded the fact that most of

Michael's professional career was not with Sony. He contracted with

CBS Records, and suddenly, for reasons beyond his control, he

became tied to a 15-year contract with Sony, a company he did not

like and with whom he never agreed to work. "   It would seem that

this should have been taken into consideration in binding Michael to

the contract. Courts could be more lenient about declaring a contract

unenforceable when one of the litigants is not an original party to the

contract.

As Michael had sworn never to record for Sony again,135 the

judge in essence said that Michael will record for Sony or not at

130  Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

131  Id.

132  Kaye, supra note 103.

133  See supra note 113 and accompanying text.

134  Michael stated that the decision was "effectively professional slavery."

Philips, supra note 102.

135  Skapinker, supra note 105.

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all.'36 This is tantamount to prohibiting a person from    earning a

living from anyone other than a specified employer.137 There was

a strong implication that Michael would be enjoined from working for

anyone else if he breached his contract. It would have been better if

the court had held that no injunction could have been issued against

Michael if he chose to record for another company. Instead, as the

court held that the contract was enforceable,'3' very expensive

damages or an injunction could have been levied against Michael if he

broke his contract.139 A better result would have been for the court

to have actually considered the restraint of trade issue beyond a

determination of Michael's star status.

George Michael, of course, will not have to endure being

prohibited from ever working again for anyone other than Sony. "

He is a valuable enough performer that many other companies are

willing to pay millions to buy his contract from Sony. Michael's legal

ordeal has ended well for him. Almost exactly one year after the

completion of the trial, his contract was bought by Dreamworks for

an estimated $30 to $40 million,"' plus royalty payments from

136   Although Sony issued a press release after the decision stating that it looked

forward to continuing its relationship with Michael, Dawtrey, supra note 8,

"[riealistically, no one expect[ed] the two parties to work together again ….”

Discussions were already underway regarding how much another record label should

pay to get Michael. Skapinker, supra note 105; Pride, supra note 104.

137   The United Kingdom is not governed by United States principles of

involuntary servitude or policy reasons behind nonenforcement of personal services

contracts. See supra Part I. So, to a certain extent, applying U.S. policies to a

British case is esoteric. However, this Comment attempts to analyze Michael v.

Sony in light of the fact that a similar case may well be brought in the U.S., to

predict what may happen and to persuade what should take place.

138   Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. (Ch. 1994).

139   See infra discussion in text on damages, Part III.A.

140   Many other music companies were eager for the privilege of purchasing

Michael’s contract. Michael’s manager Rob Kahane stated that “[elvery major label

has called me saying 'Just want you to know we're interested and would offer a ton

of money . . . .'" Hochman, supra note 126.

141   Adam   White  &   Dominic   Pride, George   Michael Arrives   at

Dreamworks/Virgin; Sony Suit Settled, BILLBOARD, July 22, 1995, at 1; Alice

Rawsthorn, George Michael to Join Dreamworks: Sony Expected to Release Singer

in Deal Worth $100 Million, FIN. TIMES, July 4, 1995, at 21.

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Michael's next album, possibly bringing Sony's profit as high as $100

million. 142 It would be very unfortunate, however, if the court took

the fact that Michael's contract would almost certainly have been

bought by another company into consideration in holding Michael to

the contract. Such a decision would basically prevent only non-star

performers from being free of restrictive contracts.

Although the judge discusses Sony's good faith at length,143

Michael's good faith is not mentioned. Michael had two choices: he

could have broken his contract outright and let Sony file suit against

him, or he could have done what he did-institute proceedings to

break free of his contract. Instead of wronging Sony, Michael chose

to assert that Sony had wronged him. Tactically, this seemed like a

good idea in light of the English court system's willingness to find

personal    services  contracts   in   the   entertainment   industry

unconscionable."'   In retrospect, however, it may have been wiser

to break the contract and let Sony sue him. If such a hypothetical

case had been litigated in the United States, Michael would have stood

a good chance of merely being forced to pay Sony damages. This is

particularly true given U.S. courts' reluctance to place value

judgments on a performance's "specialness.'145

As previously noted, the holding in Michael v. Sony has no

direct impact on U.S. law. However, the indirect influence could be

important. 146 Some have speculated that record companies will now

142   Dreamworks was created in 1994 as a result of collaboration among Steven

Spielberg, Jeffrey Katzenberg, and David Geffen. Rawsthorn, supra note 141.

After escaping from his 15-year contract with Sony, Michael insisted that as a

condition of his new contract that he be bound for no more than two albums.

Dreamworks risks losing a great deal of money if Michael does choose to leave.

Leslie Adler, interview-Leahy Says George Michael Sees Freedom, CANADIAN FIN.

REP., July 13, 1995, at 1; White & Pride, supra note 141.

143   Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994).

144   See supra note 91.

145   See supra discussion of use of injunctions, Part II.B.2.

14    If Michael had been successful, attorneys in the U.S. probably would have

used the decision as grounds to raise the same issues in U.S. courts. Kaye, supra

note 103; Philips, supra note 134; Pride, supra note 104.

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push their artists to accept less favorable contract terms, 147 with the

blessing of the courts.     Others feel that Sony erred badly in its

treatment of Michael, and this case should never have reached the

stage where litigation was necessary. 141    It is undisputed that the

decision was good for record companies worldwide. In fact, stock

values for many record companies increased right after the decision

came down. 149    Nevertheless, experts still consider the law   on the

subject to be "evolving.""5' Therefore, it is too soon to draw any

clear conclusions from the case.

III.    SOLUTIONS

There is no simple solution to what should happen when the

relationship between a musician and a record company goes awry.

There are four possible conclusions a court could reach in deciding a

breach of contract case.       First, the court could order specific

enforcement. Second, an injunction could be issued. Third, damages

could be assessed. Fourth, the artist could be declared free to go.

The first three are possibilities when the court holds that a valid,

enforceable contract exists.    The fourth results from     the court's

147   Pride, supra note 104.

148   "If music companies cannot get on with their successful artists any longer,

some executives believe they should consider ending their relationship. To reach this

point is widely seen as a failure. To go further and engage in a widely-publicized

acrimonious legal battle is regarded by many as worse." Skapinker, supra note 105.

149   See Dawtrey, supra note 99 ("Record company stock prices shot upwards

on news of the ruling."); Amsterdam Shares Firmer, Off Highs, Lifted by Bonds in

Quiet Midsession Trade, AFX NEWS, June 22, 1994, at 1 (Markets; Stocks)

("PolyGram was up 0.80 at 75, still benefitting from yesterday's news that . . .

George Michael lost his court case against Sony . . . ."); Stock Market Round-Up

2, EXTEL EXAMINER, July 7, 1994, at 1 (London Stock Exchange; Reports) ("Thorn

EMI rose 28p... with investors unconcerned that George Michael had decided to

appeal against the judgment in the Sony case."); but see Nikkei Weaker on Dollar's

Low Against Yen, FIN. TiMEs, June 23, 1994, at 39 (World Stock Markets) ("Sony,

in spite of its legal victory in the George Michael case in England, fell Y90 ....").

ISO   Skapinker, supra note 105 (quoting Rupert Perry, UK chief executive of

EMI Music and chairman of the British Phonographic Industry Trade Association).

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conclusion that the contract is unenforceable. It has already been

established that courts are not allowed to order specific enforcement

in the context of personal services contracts."'1 The following

discussion seeks to persuade that injunctions are an equally

inappropriate remedy in this context.

In the past, it seems that the third option of damages has rarely

been used. Sometimes the artists have been completely freed from

their contracts,152 while other times the company's contract with the

artist has been affirmed, resulting in an injunction.'53 The factors

considered to be important in the courts' decisions have included

"specialness"  of the performer, star power, how         young   or

inexperienced the performer was at the time the contract was signed,

adequacy of representation, good faith of the record company, policies

of avoiding involuntary servitude, and whether the artist's actions

seemed to have affirmed the contract.

All these factors are important, and it is reassuring to see that

courts have taken care to consider them. However, the courts do not

have to make a choice between ordering injunctions on one hand and

declaring contracts unenforceable on the other. Courts could find

contracts to be valid and enforceable and still refuse to order an

injunction. If a contract is breached, damages should be assessed.

Injunctions could be deemed unnecessary. A basic tenet of law is that

injunctions are only appropriate when damages are an inadequate

remedy.15' However, no authority explains exactly why damages

would be insufficient. Indeed, extremely expensive damages that no

artist could pay could have the same result as an injunction.

One important way to improve relations between artists and

companies would be to avoid the courts altogether. As already noted,

151  See supra Part II.B. 1.

152   Beverly Glen Music, Inc. v. Warner Communications, Inc., 178 Cal. App.

3d 1142 (1986) (Anita Baker); Motown Record Corp. v. Brockert, 160 Cal. App.

3d 123 (1984) (Teena Marie); Foxx v. Williams, 244 Cal. App. 2d 223 (1966)

(Redd Foxx); see also supra note 91.

153  MCA Records, Inc. v. Newton-John, 90 Cal. App. 3d 18 (1979) (Olivia

Newton-John). See also Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch.

532 (Ch. 1994); supra Part II.B.2.

14     E. ALLAN FARNSWORTH, CONTRACTS 856 (2d ed. 1990).

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MUSIC INDUSTRY CONTRACTS

to have either the artist or the company bring a case to litigation is

viewed by those in the music business as a failure by the record

company"55      However, some in the industry believe that nothing

will change without litigation, 156 or at least arbitration. 157

This Comment proposes two possible solutions to the problem

of how to adequately uphold personal services contracts without the

use of specific enforcement or injunctions. The first is to encourage

the use damages rather than injunctions. The second is more radical:

the courts should find that multi-year, multi-album contracts are

unenforceable because they promote involuntary servitude. In backing

up this proposal, a comparison is made to the restructuring of the

movie industry in the 1930s and 1940s.

155   See supra note 148.

156   Dominic Pride, Michael/Sony Verdict Resounds; Decision Does Not End

Issues' Debate, BILLBOARD, July 2, 1994, at 1.

Damage Management's* Ed Bicknell says he believes that action

through a united body such as the International Managers Forum

would not be able to resolve these grievances. "There are a lot of

issues which artists are still very unhappy about, but I don't

believe that anything will ever happen unless it's a consequence of

litigation," Bicknell says.

157   As tantalizing a solution as is arbitration within the industry, it is beyond

the scope of this Comment, which is only attempting to discuss the legal

ramifications of artists who attempt to break their contracts. Other important issues

that will not be discussed here are artists' (non)ownership of their masters, and

artists' royalty rights. Ownership of masters was one of Michael's grievances which

was not discussed in the court's opinion. Sony owned the copyrights to Michael's

recordings and kept the master tapes. Sean O'Neill, George Michael's Cash Blues;

In 5 Years, the Star Made �16m but Sony's Cut was �95m, DAILY TELEGRAPH, Oct.

19, 1993, at 5; see also generally Mellencamp v. Riva Music Ltd., 698 F. Supp.

1154 (S.D.N.Y. 1988).

For an extensive treatment of the history of artists' royalty and copyright

rights, see MARc ELIOT, RoCKONOMICS (1989). See generally Mellencamp v. Riva

Music Ltd., 698 F. Supp. 1154 (S.D.N.Y. 1988); Gee v. CBS, 471 F. Supp. 600

(E.D. Pa. 1979); Fantasy, Inc. v. Fogerty, 984 F.2d 1524 (9th Cir. 1993).

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A.      Damages Are The       Only Appropriate Remedy      When    The

Contract Is Enforceable

Courts considering cases in the music industry have taken two

approaches to artists who "want out" of their contracts. Sometimes

the contract is declared to be valid, and the artist is either forced to

remain with the company or is enjoined from working for anyone else.

On the other hand, sometimes the contract is declared unenforceable

and the artist is free to go. Damages seem to have been neglected as

a remedy in personal services contracts, even though courts have been

urged to employ injunctions only when damages are an inadequate

remedy. "'

Instead  of   this  all-or-nothing  approach,   damages, as

traditionally used in contract law, could be employed when the

contract is enforceable. Contracts that are clearly unconscionable'59

or otherwise illegal should still be declared unenforceable. Artists in

cases such as those involving the Stone Roses"6� or Teena Marie161

have been and should be entirely free to go. Other situations involve

artists with valid contracts who wish to leave their employers. Courts

would not have the option of enjoining artists from breaching their

contracts, but could make it financially difficult to do so. The artists

could be allowed to seek employment elsewhere, but would be

required to pay damages according to established contract law.

158   FARNSWORTH, supra note 154, at 856.

159   Unconscionability. A doctrine under which courts may deny enforcement

of unfair or oppressive contracts . . . because of substantive abuses relating to the

terms of the contract, such as terms which violate reasonable expectations of parties

or which involve gross disparities in price ....

Basic test of "unconscionability" of contract is whether under circumstances

existing at time of making contract and in light of general commercial background

. , clauses involved are so one-sided as to oppress or unfairly surprise party..

Unconscionability is generally recognized to include an absence of meaningful

choice on the part of one of the parties, to . . . contract terms which are

unreasonably favorable to the other party. HENRY CAMPBELL BLACK, DELUXE

BLACK'S LAw DICTIONARY 1524 (6th ed., 1990).

160  See supra note 91.

161  Motown Record Corp. v. Brockert, 160 Cal. App. 3d 123 (1984).

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MUSIC INDUSTRY CONTRACTS     4

Damage awards would increase with the relative value of an artist to

the record company.

In a case such as George Michael's, there were many valid

reasons why the court held the contract to be enforceable. Michael

was inexperienced at the time he signed the first contract, and that

first contract could very well have been held to be unenforceable as

an invalid restraint of trade. However, Michael settled out of court

and subsequently renegotiated several times, assisted by the best

representation available. Additionally, although for several years he

was compensated at a rate less than his star stature called for, this

problem was rectified by 1990. Nevertheless, his relationship with

Sony had deteriorated to the point where Michael refused ever to

record for that company again.'62 The court had a difficult decision

to make, and it chose to err on the side of conservatism.

Instead of effectively enforcing a personal services contract, the

court should have held that Michael was free to leave, but that to do

so he would have to pay Sony a fair price for the loss of his services.

Michael himself stated that his lawsuit was not about money.163

Clearly, however, it would be naiv6 to take this statement at face

value. If the damage award had been set high enough, it would have

had the same effect as an injunction. By seeking to have his contract

declared unenforceable, Michael probably was attempting to regain his

artistic freedom at a price somewhat less than it would cost to "buy

off" the injunction. Indeed, even before the court issued its opinion

in this case, it was clear that some other record company would

endeavor to buy his contract from Sony. "6 The decision of the

court did not affect Michael's future, only Sony's asking price.

The reality of the music business is that powerful artists who

refuse to work for their record companies will most likely have their

contracts sold to another company.165 A court may be fully aware

of this when deciding between issuing an injunction or requiring

162   Michael Skapinker, Designer Stubble That Got Burnt: George Michael

Loses His Court Battle - But Have Music Companies Won, FIN. TIMEs, June 22,

1994, at 22.

163  See supra note 111.

164  See supra notes 141-142 and accompanying text.

165  Id.

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assessment of damages. If the court is unsympathetic to artists who

breach their contracts, it may order the artist enjoined from working

from anyone else. Such a decision would not be based on the

"specialness" of the performer, but as a way of giving extra

negotiating power to the record company in the sale of the contract.

After all, the company could always play its "trump card" and hold

the artist to the contract. This probably would not happen, because

the company would make no money while the artist refuses to produce

any music for the company, but the threat of enforcing the injunction

could very well increase the sale price of the artist's contract.

Conversely, in a damages determination, courts would make

a judgment on how much the contract is worth to the record company,

and decide how much an artist should have to pay for the privilege of

leaving.    The traditional contract principles of certainty    and

foreseeability would be used. The court would have to make a

calculation of the future worth of a contract as accurately as could be

foreseen. The record company would put on evidence such as past

record sales, increasing rates of sales, critics' record reviews and

predictions of popularity, plans for future touring and the revenue

gained   or lost by   touring, testimony   about the quality    and

marketability of partially completed songs and albums, stability and

longevity of the group, and in the case of solo artists, health of the

individual.

While the above list could help a court to assess the worth of

an artist's contract, it is important to note that nothing in the music

business can be predicted with certainty. A hit record in the past does

not guarantee massive record sales in the future."6  Often, artists

have one hit song and then fade into obscurity. A popular group with

many successful albums could have passed its creative peak.

Unforeseeable personality or substance abuse problems could surface.

However, while it is not possible to determine the abstract worth of

166  In George Michael's case, many in the industry suggested that his lengthy

absence during his self-imposed exile would be an insurmountable obstacle to his

regaining the worldwide popularity he enjoyed in 1988. "One music manager said

that [his five-year absence] would be the end of George Michael’s career.”

Skapinker, supra note 162.

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MUSIC INDUSTRY CONTRACTS

a contract with any certainty, actual offers made by other record

companies to buy the artist’s contract could show what knowledgeable

people in the music business believe the market worth to be. Expert

testimony could also be useful to gauge the contract’s value.

Successful, extremely valuable artists will likely have their new

record company pay for their contracts.’67 Although this fact should

not be considered when a court is deciding between an injunction and

damages, courts could use this in calculating the value of the contract.

Successful artists are not going to buy their own contracts. On the

other hand, as minor artists will quite possibly be on their own,

looking for a new label, courts should not set the damages amount at

more than those artists can pay as individuals.

One potential problem with this approach is that currently,

record companies let commercially unsuccessful artists leave without

hindrance.”68 Record companies have no qualms in allowing artists

who make no money for the companies out of their contracts. If a

new court policy allows companies to collect even small sums from

such artists who want to leave, this would be a burden on a group of

artists least able to shoulder it. Therefore, there should perhaps be a

minimum level of success required before any damages at all could be

awarded to the company.

There is a possible problem in allowing a jury to set the

amount of damages, because as previously noted, the more famous

and popular the performer, the more likely it is a jury will find for the

performer. This could lead to an inconsistency-the more powerful

the star, the less money the jury will award in damages. Although not

a perfect answer, unreasonably small damage awards can be appealed

in light of evidence about the market value of a contract.

It is important to recognize that determining the value of an

artist’s contract is not synonymous with judging artistic merit. Courts

167  See supra notes 139-41 and accompanying text.

168  Motown Record Corp. v. Brockert, 160 Cal. App. 3d 123, 140 (1984) (“If

the artist was not already [fairly successful], the artist’s worth to the company would

not justify the expense of litigating the case.”).

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have been extremely unwilling to judge a performer's quality."69

Damages would clearly be based on the market value of an artist's

contract, and not on personal opinions about an artist's creative

worth. 170

B.      Prohibit Multi- Year/Multi-Album Contracts

A total cessation of the use of lengthy personal services

contracts for performers in the music industry is, at once, the most

extreme solution and possibly the most effective. Although the court

in Michael v. Sony could have reached this decision, it did not even

consider it. Courts are very reluctant to place restrictions on the

ability of parties to contract with one another. However, the validity

of some such limitations, already in existence, has been upheld if the

rules are designed to protect the public from its own imprudence. If

a legislature decided that it was in the best interests of all for the

length of personal service contracts to be restricted, it has the

authority to mandate it.

One such example is a case invoking a California statute

prohibiting personal services contracts longer than seven years.171

That statute17" was held to be generally beneficial to the public

interest even though it conferred an advantage only upon a specific

169   Id. at 137 ("A fundamental reason why courts will not order specific

performance of personal services contracts is because such an order would impose

on the courts a difficult job of enforcement and of passing judgment upon the quality

of performance.").

170   The distinction is actually not so cleanly drawn. An assessment of the

market worth of an artist's contract will necessarily include evidence about the

quality of the artist's performances. This evidence, however, must still be tied to

an economic interest-making money for the record company. While artistic quality

will be a part of the calculations, it cannot be a factor in its own right.

171   De Haviland v. Warner Bros. Pictures, Inc., 67 Cal. App. 2d 225 (1944)

(interpreting CAL. LAB. CODE � 2855).

172   "A contract to render personal service... may not be enforced against the

employee beyond seven years from the commencement of service under it." Id. at

230 (quoting CAL. LAB. CODE � 2855 (as existed in 1937)). See also CAL. Crv.

CODE � 3423 (Deering 1995); supra note 60 and accompanying text.

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MUSIC INDUSTRY CONTRACTS

group   of   employees-those     in  personal services    contracts.'73

Additionally, it was held that the employee could not waive the

restriction limiting contracts to seven years by either agreement or

conduct.'74 If the employee could waive the restriction, the statute

would accomplish nothing. By extrapolation, if legislatures are free

to restrict personal services contracts to seven years, courts must also

have authority to uphold restrictions of an even shorter term, if it were

shown to be in the public's interest.

The record companies assert that long-term contracts are

necessary to nurture and support new talent.'75 Time and exposure

to creative new ideas is very important to inexperienced artists.

Record companies have the resources and the luxury of waiting to

allow artists time to grow into their full potential. In addition, from

a more practical standpoint, the companies must be allowed to recoup

their investment. Numerous new bands and artists are signed each

year, and only a few are successful. The record companies must rely

on the successes of those few to subsidize giving the opportunity for

success to many. 176 If the companies had to be prepared to lose a

successful artist or band at the very moment it started to make money

for the label, very few would take a risk on new talent. The record

labels would only invest money and resources into artists who seemed

very likely to be a commercial success. As a result, the record

173  De Haviland, 67 Cal. App. 2d at 235.

174  Id. at 237.

It could scarcely have been the intention of the Legislature to

protect employees from the consequences of their improvident

contracts and still leave them free to throw away the benefits

conferred upon them. The limitation of the life of personal service

contracts and the employee's rights thereunder could not be

waived.

175   Robert Hilburn & Chuck Philips, Rock's New World Order, L.A. TIMES,

Nov. 29, 1992, at E7 (quoting Michael P. Schulhof, chairman of Sony Music

Entertainment).

176    Jeff Kaye, Music Industry Eyes on George Michael Suit, L.A. TIMES, Oct.

8, 1993, at D5.

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companies argue, much of the new music released would become too

mainstream and predictable. 177

However, others in the industry deny that the length of

contracts is an issue anymore. 178 Although it may be generally true

that contracts are shorter now than in the past,179 this is no help to

the artist who falls into the exception. The majority of artists in the

music industry would still like to see a requirement that their contracts

not be onerously long."'0

The strongest argument that the artists have in their favor is

that oppressive contracts violate the constitutional prohibition against

involuntary servitude. As performers' contracts are for services of a

personal nature, they cannot be specifically enforced.18' Artists

could reason that, as their contracts are not subject to specific

enforcement, it only makes sense that the contracts not be made for

an extended time span. Otherwise, they are currently vulnerable to an

injunction, which would have the same practical effect as specific

enforcement.'82 Because most music industry contracts are for many

years, the artists would be prohibited from working for any other

employer for a very long time. Most employment situations change

with time. If the circumstances become intolerable to the performer,

there should be an escape, a pressure valve.

When a personal services contract in the music industry

becomes unduly oppressive, it resembles involuntary servitude.'83

Most artists are contractually prohibited from working for other record

labels. This demonstrates the "exclusivity" record companies have

with their artists, almost as if the companies "owned" the artists'

17n  Simon Garfield, George Michael is No Stranger to Contract Litigation,

TORONTO STAR, Nov. 30, 1992, at B4 (quoting Ed Bicknell, manager for Dire

Straits).

178  Pride, supra note 156 (asserting that the number of years of most contracts

in the music business has already come down on its own).

179  Id.

180  See ELIOT, supra note 9.

181  See supra Part II.B. 1.

182  Id.

183  Poultry Producers of S. Cal., Inc. v. Barlow, 189 Cal. 278, 288 (1922); see

also supra Part II.B. 1.

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MUSIC INDUSTRY CONTRACTS

services.   In addition, the contracts remain static in the face of

changing conditions. One example of this is that George Michael

made a contract with CBS Records, but found himself obliged to work

for Sony."s Sony "bought" Michael's services when it acquired his

contract by purchasing CBS Records. If a contract is inflexible while

circumstances change, it is best if the contract is not for a very long

period of time.

The record companies have ready answers to challenges based

on the grounds of involuntary servitude. In the first place, specific

enforcement is never going to be ordered. No artist will be forced to

work against his or her will. The most that will happen is that the

artist will be enjoined against working for anyone else or will have to

pay damages for the breach.       Next, these contracts are made

voluntarily. Artist who do not like the terms of a proposed contract

are free to reject them and contract with another company. A contract

does not constitute involuntary servitude if entered into with free will.

Additionally, many artists are well represented by counsel in contract

negotiations. Sophisticated artists do not need any extra help to

protect their rights.

Lastly, the existing case law on the subject supports the

companies' position. Especially in the U.S., courts are reluctant to

allow parties out of their contracts."s Although the English courts

are more willing to change contracts for equity's sake,186 a rare

similar case in the U.S. is Buchwald v. Paramount Pictures,

Corp. ," where the parties' unequal bargaining power was found to

have resulted in an unconscionable contract. However, Buchwald's

success has been tempered by an as yet unresolved appeal, and there

have not been many beleaguered plaintiffs following in his stead."'8

184  See supra note 113 and accompanying quote in text.

185  Donald Passman, Michael Trial Has No Bearing On U.S. Biz, BILLBOARD,

Aug. 6, 1994, at 6.

186  See Stone Roses v. Silvertone (High Court of England May 22, 1991)

(decision was unpublished and sealed); see also Zang Tumb Tuum Records v.

Johnson (Eng. C.A. Ch. July 26, 1989) (unpublished); supra note 91.

187  No. C 706083, 1990 Cal. App. LEXIS 634 (Cal. App. Dep't Sup. Ct. Jan.

31, 1990).

198    Passman, supra note 185.

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Despite these obstacles, however, the artists' arguments should

prevail and there should be a limitation on the length of time or

number of albums a contract may require.'89 Most of the record

companies' protestations do not apply when the artist signs his first

contract as a young, inexperienced, star-struck hopeful. Courts and

legislatures could protect these artists from an industry that is not

designed with the artists' interests in mind.     Artists new   to the

business really do not have many alternatives. The choice is to sign

the oppressive contract or to forgo a career in the music industry.

The contracts offered by different record labels have little variation.

At best, an artist can hope to renegotiate later, after gaining some

success and the corresponding bargaining power. 190

There is a strong correlation between the current structure of

the music industry and the past framework of the film industry. In the

1930s and '40s, movie studios contracted with actors for lengthy

periods of time. This changed when California's "seven-year statute"

was used to invalidate contracts in the film industry for any term

longer than that.'91 Essentially, when Olivia De Haviland was freed

from her long-term contract with Warner Brothers,'" the movie

studio system broke up. The studios of the 1940s predicted that the

movie industry would be unable to survive.'93

Making the same contentions the record companies now use,

the movie industry argued that it could not afford to promote new

talent and invest in actors unless it was guaranteed to receive a

financial return   after the  actors became    successful.194   Their

189  This Comment does not espouse an exact limitation on the number of years

or of albums, but rather, contends that, in general, music industry contracts are too

long. The film industry has settled on contracts lasting no more than two or three

projects. George Michael's new contract with Dreamworks is for two albums. See

supra note 142 and accompanying text. These are examples of more suitable lengths

for contracts in the music business, and it is urged that the industry follows similar

guidelines.

190  Clearly, renegotiation was an unsatisfactory solution for George Michael.

191  De Haviland v. Warner Bros. Pictures, Inc., 67 Cal. App. 2d 225 (1944).

192  Id. at 234.

193  Passman, supra note 185.

194  Ili

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concerns proved ill-founded because, undoubtedly, the movie industry

has not disintegrated. It has simply changed. A writer or director

now only contracts for a two or three project deal, whereas artists in

the music industry still may be signed for ten albums or twenty

years. 195

The many similarities of the music and movie businesses create

a basis for asserting that contracts between artists and companies

should be subject to the same standards in both industries. In other

words, just as the film industry no longer demands long contracts and

exclusivity of its artists, nor should the music industry. One similarity

is that artists in both businesses perform personal service contracts of

employment. Granted, there are many non-artistic types of jobs that

are also classified as personal services."96 However, both actors and

musicians are artists who sell their performances. Although they work

in different mediums, artists in both industries have very similar

occupations.

Conversely, one difference between the two businesses is that

oral contracts are common in the movie industry, but not so widely

used in the music business. This, however, could be changing.

Although movie deals have often been made on the strength of an oral

agreement, these contracts have usually not been challenged if broken.

The case of Main Line Pictures v. Basinger'a9 could 6hange that.

The court in Main Line decided that Kim Basinger was bound by an

oral contract to appear in the film "Boxing Helena." Basinger's

withdrawal from the film caused the small movie studio great losses,

and the large jury award sent Basinger into bankruptcy.'19 Although

the case is of great interest to the entertainment industry due to its

195  Garfield, supra note 177.

196  Fitzpatrick v. Michael, 177 Md. 248, 258 (1939) (listing other occupations

that are also classified as personal services, such as nurse, chauffeur, companion,

guardian, and housekeeper).

197  No. BC031180 (Cal. Ct. App. 1994) (unpublished) (published in its entirety

in California Appeals Court Reverses $8.9 Million Judgment Against Kim Basinger

in "Boxing Helena" Breach of Contract Case, Because Faulty Jury Instruction Failed

to Distinguish Between the Actress and Her Loan Out Corporation, 16 ENT. L. REP..

6 (Nov. 1994)).

198    Id.

1996]

419

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:377

precedential value as to what constitutes a binding contract,199 the

appeals court marked its decision "Not to be Published." Main Line's

influence is therefore uncertain. The case was reversed on appeal, but

the reason for the reversal was not central to the question of whether

a binding contract existed.20'

Main Line can be contrasted with Mellencamp v. Riva

Music,2�1 in which John Cougar Mellencamp was unable to enforce

an oral agreement against his record company. Mellencamp alleged

that during a luncheon business discussion, a contract was reached

whereby Riva would return to him ownership of the copyrights to his

songs, for which he would pay $3 million. The court disagreed,

holding that the language of the written instrument prepared after the

verbal agreement (and handshake) indicated that no contract had been

established.202

This pair of cases illustrates how similar contract law is

becoming for the music and movie industries. In the movie business,

oral contracts are common, but have generally been unenforceable.

199   Id.

200   The case was reversed due to an error in the jury instructions. The jury

was instructed to decide if Basinger "and/or" her loan-out corporation, Mighty

Wind, had entered, then breached a contract with Main Line. Main Line had never

attempted to prove that Mighty Wind was an alter ego of Basinger, although the trial

court found as a matter of law that there was no separation between the two. The

appellate court held that in the absence of alter ego findings, Mighty Wind and

Basinger were not synonymous. Therefore, the instructions lead to an ambiguous

verdict. The contract could have been entered into by Basinger alone, by Mighty

Wind alone, or by both. Id.

[A] reversal is required when a verdict is hopelessly ambiguous or

contains an incorrect statement of the law which probably confused

and misled the jury. We do not interpret the ambiguous verdict of

a jury when it cannot be determined from the verdict which party

is to be found liable.

Id. at 11 (citations omitted). See also Michael I. Rudell, Ambiguous Instructions

Cause Reversal of ‘Basinger’ Decision, N.Y.L.J., Oct. 28, 1994, at 3.

201     698 F. Supp. 1154 (S.D.N.Y. 1988).

202     Id. at 1162. The court’s main reason for its decision was that key

provisions to the agreement were still in negotiation at the time the written contract

was drafted. Also important was the fact that copyrights can only be transferred by

a document in writing. Copyright Act, 17 U.S.C. � 204(a) (1976).

420

MUSIC INDUSTRY CONTRACTS

Main Line suggests that this may no longer be the case,203 and that

the movie industry will have to begin to recognize oral contracts’

validity regardless of industry practice.  In the music industry,

complicated written contracts are the norm. An oral discussion would

be evaluated under traditional contract law to determine whether a

contract had been formed.2�4 Mellencamp holds that this may be

ascertained by assessing the written document executed later. In this

way both the music and the movie industries are falling more in line

with standard contract doctrine regarding oral agreements.

Returning to the original premise, this Comment encourages

prohibition of burdensome long-term contracts in the music industry,

just as they have been in the movie business, due to problems intrinsic

to long-term personal services contracts and the similarity of such

contracts to involuntary servitude. There are some problems with this

solution that must be addressed. First, movies and record albums are

inherently different. Movies usually involve many more people than

do records. A record can be made by a much smaller group of

people. In its most basic form, an album can be created by one artist

or a band and recorded into its raw form. More people are involved

as the music is refined, produced and marketed, but the actual creation

of the work can be accomplished by a relative few.

Movies, on the other hand, require many people to be involved

before the creation of the work can even begin. There must be

writers, producers, directors, casting agents, actors, costume and set

designers, technical crews, and managers. Actors are only one part

of a large team that creates the work. This necessitates more advance

203  No. BC031180 (Cal. Ct. App. 1994) (unpublished) (published in its entirety

in California Appeals Court Reverses $8.9 million judgment against Kim Basinger

in “Boxing Helena “Breach Of Contract Case, Because Faulty Jury Instruction Failed

To Distinguish Between The Actress And Her Loan Out Corporation, 16 ENT. L.

REP. 6 (Nov. 1994)).

M4     An oral agreement can be held to be an enforceable contract if there has

been a “meeting of the minds.” The parties must reach an agreement and both must

have the same understanding what they are agreeing to, and the agreement must

reach a certain level of specificity. See Berg Agency v. Sleepworld-Willingboro,

Inc., 136 N.J. Super. 369 (1975); see also Arnold Palmer Golf Co. v. Fuqua

Industries, Inc., 541 F.2d 584 (6th Cir. 1976).

1996]

UCLA ENTERTAINMENT LAW REVIEW [Vol. 3:377

planning for films.   Alternatively, albums can be the result of

improvisational jam sessions. While most records are not created in

this way, it is a useful illustration of a basic difference between the

two media.

Another important difference is that musicians automatically

own the copyrights to their work.2'5 The copyright defaults to the

musician who created the work, yet musicians commonly relinquish

their copyrights in exchange for a royalty percentage and the record

companies' resources in marketing and distribution.206 Actors, on

the other hand, usually do not hold copyrights in their performances.

Instead, the studio owns the copyright of a film. Actors do not even

normally receive royalties from their films unless they are powerful

enough to have worked out a special arrangement with the studio.

Although the differences between the two businesses makes a

perfect correspondence impossible, the movie industry's policy of

short-term contracts could have many positive effects if applied to the

music industry. One beneficial consequence would be that record

companies would likely stop giving large monetary advances to

musicians before an album is released. Currently, musicians live off

the generosity of their record companies while they are making an

album, with the understanding that they will repay the money when

the album is successful. If the album is not successful, the musicians

are in debt to the company. More money is advanced to make another

album which, with luck, will be successful enough to pay off the debt

from the first.'7 It is a vicious cycle for musicians who never break

through into commercial prosperity.

If the system were altered so that record companies did not

advance money to musicians before the album began to be successful,

many would protest. It would be argued that musicians cannot work

a "day job" while at the same time try to produce a record.

Nevertheless, this is exactly what actors do who have not yet

205  Copyright Act, 17 U.S.C. � 201(a) (1976).

20     See Panayiotou v. Sony Music Entertainment (UK) Ltd., 13 Ch. 532 (Ch.

1994); Mellencamp v. Riva Music Ltd., 698 F. Supp. 1154 (S.D.N.Y. 1988);

Fantasy, Inc. v. Fogerty, 984 F.2d 1524 (9th Cir. 1993).

207  See MARc ELIOT, RoCKONOMICS (1989).

422

MUSIC INDUSTRY CONTRACTS

succeeded in their field. Granted, struggling actors are very similar

to struggling musicians. However, the musicians who are in danger

of becoming beholden to the record companies are those who have had

enough success to be "signed" to a record label, but have not yet had

much commercial success. These are the musicians who should still

be supporting themselves until the album they create begins to reap

financial rewards.

Along these same lines, such a system would prevent young,

inexperienced musicians from getting in over their heads. Many

musicians who show the promise of talent are signed to record labels

and showered with the trappings of stardom before they are actually

successful.2�8 Worse is the situation where a new musician or band

puts out a great song and is catapulted into instant fame. Besides the

money that the single or album makes, the record company may pour

money into the new star's coffers as an advance on the next album.

When the next album fails to do as well as the first, the artist is

suddenly in debt to the record company and under contract for six

more albums. Young, inexperienced artists may not be able to handle

the pressure, and after a year or two of spinning wheels, the company

may be glad to let the musician go and cut its losses.2�' Ever

wonder what happened to all those "one-hit-wonders?" The above

scenario is the likely answer.

On the other hand, some would argue that society has been

greatly enriched by those musicians who only had one exceptional

song to offer. If the system were changed so that musicians had to

support themselves after being signed, but before their music was

profitable, the music culture would be deprived of the gems that can

only be produced in this way. In replying to this, it is true that some

great songs may never be created. However, the benefit of not

discarding musicians after their fifteen minutes of fame are over more

than counterbalances the cost of losing some music.210 Plus, if

2W     Id.

209  Id.

210    Surely there will be artists who would gladly take one moment in the sun

over nothing. Under a system that limits the length of music contracts and/or

prohibits the use of injunctions, these artists could probably still receive a one-album

contract with an independent recording company and have their time to shine.

1996]

423

424       UCLA ENTERTAINMENT LAW REVIEW                 [Vol. 3:377

musicians are allowed to move freely among record companies, as

actors do among studios, the increased creative freedom will possibly

result in the production of more quality songs.

IV.    CONCLUSION

The policy discussion of Part III overlays the legal arguments

of Part II that the music industry would benefit by having shorter

contracts. In summary, artists in the music industry are contracting

for personal services.   If an artist refuses to perform, specific

enforcement is not a legal option for record companies because to

force a person to work is the same thing as involuntary servitude, or

slavery. According to the current state of the law, injunctions are the

preferred remedy of the courts when the artist's services meet certain

standards of "specialness." Usually, this means that if the artist is a

star performer, the record company can prevent him or her from

working for a competitor while the contract is running.     For

performers of lesser distinction, damages are considered an

appropriate remedy.

While injunctions are not equivalent to specific enforcement,

the result is often the same. The performer is forced to work for the

employer record company or not work at all. In cases where the

contract extends for ten or twenty years, this is a strong proposition

indeed. For this reason, injunctions should be abandoned as a remedy

for breached personal services contracts. Injunctions are simply too

much like enforcement to be a fair solution. Instead, damages are

urged as an excellent method of providing justice to all.

In addition to a heavier reliance on damages, the length of

contracts should be greatly reduced.  The music industry today

mirrors the structure of film studios in the 1930s. Just as long

contracts in the movie business are no longer considered appropriate,

lengthy and burdensome contracts are dinosaurs in the music industry.

These relics should be discarded in favor of short-term deals that offer

artists greater freedom. As a big business that has overcome changes

more drastic than courts requiring shorter contracts, the music

industry is far too strong not to survive.  Perhaps relationships

between the artists and the record companies will begin to be founded

1996]          MUSIC INDUSTRY CONTRACTS                    425

on mutual respect and a desire to work together. The impossible

should not be expected. It would be enough if more artists in the

music industry become satisfied with their employment situations or

have the ability to change to another record company if the need

arises.

Volume 05, Issue 2, pp 251-314, Flores

Indecent Exposure: An Analysis of the

NEA’s “Decency and Respect”

Provision

Craig J. Flores*

I. INTRODUCTION

Consider the following scenario: a woman appears nude upon a

stage in front of several onlookers, her entire body is covered in

chocolate adorned with grass and weeds. Would the average person

consider this art? Would the average American want their hard earned

tax dollars to fund this type of artistic display?’ They would if they

value their First Amendment right to free speech. The above scenario

* Editor, UCLA Law Review, Volume 46. J.D. candidate, UCLA School of Law,

1999; B.A., University of California, Los Angeles, 1996. I thank Professor Michale

Small for his guidance. I am also indebted to Irene Viksman, Kenneth Freeman, and

Heather Moosnick for their thoughtful insight and diligent editing. A special thanks

goes to my family for their continued support and ecouragement. All errors are

mine.

See James Kilpatrick, No Right to Free Expression at Taxpayers’ Expense,

THE STATE JOURNAL-REGISTER, Feb. 11, 1997, at 4-5.

Evidently some qualified appraisers [of art] like[] the art of Karen Finley. She is

variously a sculptor, painter, playwright, poet, essayist and actress. Her work has

been shown at respected museums. She held a Guggenheim fellowship. I mean,

she is not a topless dancer from the Kitty Kat Club. But does her resume entitle her

to public funds? …. For all I care, Ms. Finley may strip to the buff and dance by

the light of the moon. It probably would be interesting. But as Judge Kleinfeld

said, don’t make me pay for it.

UCLA ENTERTAINMENT LAW REVIEW

is an example of Karen Finley’s performance art, in which she ex-

presses the oppression of women. She was subsequently denied an in-

dividual grant by the National Endowment for the Arts (“NEA”) be-

cause her art was deemed indecent under the NEA’s grantmaking

statute. As a result, Finley and three other artists who were denied

funding sued the NEA claiming that the program had violated their

First Amendment right to free speech2 because the statute required the

NEA to “tak[e] into consideration general standards of decency and

respect for the diverse beliefs and values of the American public.”3

Recently, the Ninth Circuit agreed with the “Finley Four” and struck

down the “decency and respect” clause because it is unconstitutionally

vague and amounts to viewpoint discrimination.4

For the past 10 years the NEA has been the source of political and

constitutional controversy evoking both emotional and moral debates.5

Since the NEA’s controversial grant revocation from Robert Map-

plethorpe’s homoerotic photographs in 19896 and Andres Serrano’s

2 See U.S. CONST., amend. I (“Congress shall make no law respecting an estab-

lishment of religion, or prohibiting the free exercise thereof; or abridging the free-

dom of speech, or of the press; or the right of the people peaceably to assemble, and

to petition the Government for a redress of grievances.”). Furthermore, following

the controversial grants of Serrano, Mapplethorpe, and the “Finley Four” the NEA

abolished all individual grants in an attempt to avoid further controversial funding.

See Misha Berson, Artists Are Feeling a Cold Snap in Funding, SEATTLE TIMES,

Apr. 29, 1997, at E7.

‘ The Arts, Humanities, and Museums Amendments of 1990, Pub. L. No. 101-

512, � 103(b), 104 Stat. 1963 (codified at 20 U.S.C. � 954(d) Supp. 11 1990)).

4 Finley v. National Endowment for the Arts, 100 F.3d 671, 681 (9th Cir. 1996),

cert. granted, 118 S. Ct. 554 (1997).

1 See id. at 683-84 (holding that “decency and respect” clause to be unconstitu-

tionally vague and constituted viewpoint discrimination); Bella Lewitzky Dance

Found. v. Frohnmayer, 754 F. Supp. 774, 785 (C.D. Cal. 1991) (finding that the

NEA’s “obscenity” restriction on artist applying for grants was unconstitutional); see

also infra note 6-7 (discussing Mapplethorpe and Serrano controversial funding).

6 Robert Mapplethorpe is a photographer who earned an NEA grant for his

photographic art. However, following the controversy over his sexual and homo-

erotic subject matter a prominent museum cancelled a partially government-funded

planned exhibit of his photographs. See Contemporary Arts Ctr. v. Ney, 735 F.

Supp. 743 (S.D. Ohio 1990) (granting temporary restraining order prohibiting sei-

zure of or interference with display of Mapplethorpe exhibit). See also Amy Adler,

What’s Left?: Hate Speech, Pornography, and the Problem for Artistic Expression,

252

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NEA "DECENCY AND RESPECT"

"Piss Christ," in 1990', Congress has sought a method to prevent the

NEA from funding "indecent" and distasteful art.' Many citizens do

not want their tax dollars spent on art that they find indecent, contro-

versial, or against their moral values. However, throughout the ages,

art that has endured the test of time, and contributed the most to the

market place of ideas, was often considered by the status quo of the

day to be distasteful, indecent, and against moral values. The art that

was denied funding in Finley was art the NEA Chairperson found po-

tentially indecent and controversial.

The Supreme Court has recently granted Finley certiorari and will

soon decide whether the NEA grant provisions are constitutional.9

The Court may acquiesce to the Ninth Circuit and decide that the "de-

cency" provision is unconstitutional, which will likely result in the

abolishment of the National Endowment for the ArtsY� However, if

the Supreme Court summarily reverses the Ninth Circuit and holds the

"decency" provision constitutional, it will be legitimized. This deci-

84 CAL. L. REv. 1499, 1541-43 (1996) (asserting that Mapplethorpe's censorship

was lead by congressional conservatives and their condemnation of homosexual and

AIDS-related themes).

7 Serrano's "Piss Christ" is a picture of the crucifix inside a jar filled with the

artist's urine.

' See Cong. Rec. H9410 (Rep. Coleman) (Oct. 11, 1990) ("Works which deeply

offend the sensibilities of significant portions of the public ought not to be supported

with public funds."). However, some theorists argue that discrimination against "of-

fensive" and "indecent" which typically portray sexual situations is "fundamentally

viewpoint-based.

9  In October 1997, the Department of Justice filed a petition of certiorari with

the U.S. Supreme Court on behalf of the National Endowment for the Arts in hopes

of overturning the Ninth Circuit's decision in Finley v. National Endowment for the

Arts. 100 F.3d 671, 681 (9th Cir. 1996), cert. granted, 118 S. Ct. 554 (1997).

Furthermore, it is worthy to note that the Ninth Circuit rejected the suggestion for

rehearing en banc. Finley v. NEA, 112 F.3d 1015 (9th Cir. 1997) (denying of peti-

tion for rehearing and rejection of suggestion for rehearing en banc).

'0 This reaction to the Finley case, given that the political make-up of Congress

is still predominately Republican, would be similar to congressional attempts in the

early part of 1990. See also Robert C. Post, Subsidized Speech, 106 YALE L.J. 151,

191 (1996) ("If courts were routinely to take advantage of... congressional funding

priorities for the NEA, it is unlikely that Congress would long continue to support

the NEA.")

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UCLA ENTERTAINMENT LAW REVIEW

sion would prevent artists from raising the constitutionality issue and

force them to create only “decent” art in order to receive NEA grants.

This conformity seems benign on its face. However, as this Comment

will show, this conformity really amounts to government control of

speech and expression that must be protected under the First Amend-

ment.

The NEA’s grantmaking problem stems from the government’s

subsidization of speech or expression in the form of grants to artists.

The purpose of governmental subsidization for private individual’s

speech and expression is to “provide a voice to a relatively silent en-

tity,”" thereby, promoting freedom of speech and political discourse in

the “marketplace of ideas.”’2 However, viewpoint-based restrictions

on conditional subsidies allow the government to control speech and

subsequently reduce the amount of speech it finds “undesirable.” This

threatens the First Amendment by placing the government in a posi-

tion to decide what is and is not “desirable” speech. The First

Amendment’s very purpose is to ensure that government is not placed

in such a position of power.

Attempts to amend the NEA grant provisions have given rise to

many lawsuits assessing the unconstitutional suppression of certain

types of artistic expression as viewpoint-based discrimination. View-

point discrimination is the most suspect action within the realm of

constitutional law.’3 When the government subsidizes speech it is

permitted to define the goals of that program.”4 However, with the

government subsidy, it is essential to the First Amendment’s protec-

tion that the government remains viewpoint neutral in its efforts to

” See Martin H. Redish & Daryl 1. Kessler, Government Subsidies and Free Ex-

pression, 80 MINN. L. REV. 543, 567 (1996).

12 H. MARCUSE, REPRESSIVE TOLERANCE, reprinted in N. CAPALDI, CLEAR AND

PRESENT DANGER 117 (1969).

13 See, e.g., Members of City Council v. Taxpayers for Vincent, 466 U.S. 789,

804 (1984) (“[Tlhe First Amendment forbids the government to regulate speech in

ways that favor some viewpoints or ideas at the expense of others."); Marjorie

Heins, Viewpoint Discrimination, 24 HASTINGS CONST. L.Q. 99, 100 (1996)

("[Viewpoint-based regulation is] censorship in a most odious form ….”) (quoting

Black, J., concurring, Cox v. Louisiana, 379 U.S. 536, 581(1965)).

“4 See Rust v. Sullivan, 500 U.S. 173, 194 (1991).

[Vol 5:2

NEA "DECENCY AND RESPECT"

support the arts."5 "Government funding does not invariably justify

government control of the content of speech."'6 This Comment pro-

poses that the "decency and respect" provision of the NEA Grant

Act,"7 Section 955(d), invariably constitutes viewpoint discrimination.

The Supreme Court should uphold the Ninth Circuit's decision in

Finley in order to prevent any further unconstitutional restraint on art-

ists' First Amendment freedoms. The NEA did not have viewpoint

discrimination under the old statutory language of "artistic excellence

and merit." These were merely objective criterion for "categorical-

based""' subsidies that are presumptively constitutional criterion and

have less potential to suppress artistic expression. However, when

Congress amended the statute to include the "decency and respect pro-

vision" it crossed the constitutional gray line and made the NEA

grants into viewpoint-based subsidies allowing government to skew

public debate.'9

"s Bollinger further argues that the government has slowly been attempting to

control debate within the marketplace of ideas:

[T]he First Amendment in this century has been one of denying the government the

authority to control the marketplace of ideas through the tool of censorship. That

history has been accompanied by countless expressions of how important it is for

the government to “remain neutral” with respect to that marketplace, of how wary

we ought to be of the government’s motives whenever it seeks to control speech in

the marketplace, of how slippery are concepts like “[decency]” when placed in the

hands of government censors, and of the necessity of living by a rule that says we

will rarely ever permit the government to control or limit speech because it disap-

proves of the “message” or the “content” of that speech.

Lee C. Bollinger, Public Institutions of Culture and the First Amendment: The New

Frontier, 63 U. CIN. L. REV. 1103, 1110 (1995).

16 Finley, 100 F.3d at 681. See also David Cole, Beyond Unconstitutional Con-

ditions: Charting Spheres of Neutrality in Government-Funded Speech, 67 N.Y.U.

L. REv. 675, 680-81 (1992) (“Where the government seeks to prohibit speech di-

rectly, the first amendment demands that it maintain neutrality toward content,

viewpoint, and speaker identity. This neutrality mandate is designed to curb gov-

ernment action that threatens to skew the market-place of ideas or to indoctrinate the

citizenry.”).

7 The Arts, Humanities, and Museums Amendments of 1990, Pub. L. No. 101-

512, � 103(b), 104 Stat. 1963 (codified at 20 U.S.C. � 955(d) Supp. 111990)).

is See Redish & Kessler, supra note 11, at 567.

9 See Heins, supra note 13, at 100 (“Government action that suppresses or bur-

dens speech on the basis of its viewpoint threatens all [First Amendment] values by

skewing public debate, retarding democratic change, depriving people of ideas and

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UCLA ENTERTAINMENT LAW REVIEW

Most critics agree that art is an economic and social imperative;20

however, there is much debate about whether government should be in

the business of subsidizing art, and if so, what restrictions the govern-

ment may constitutionally impose in connection with the funding of

artists. Through the government’s subsidization of art many constitu-

tional problems are encountered. First, when the government condi-

tions the public subsidy on an artist’s promise to relinquish her con-

stitutional right of free expression by not portraying a certain style of

art, the government has created an “unconstitutional condition.” Sec-

ond, courts have been unable to construct a clear legal framework that

distinguishes between permissible content regulation and impermissi-

ble viewpoint discrimination.2′

This Comment contends that the present NEA grant scheme is un-

constitutional and abridges artists’ First Amendment right to free

speech. Part II discusses the history of financial support of public arts

in the United States and the rationale behind the National Foundation

on the Arts and Humanities Act. Part II then discusses the problems

the NEA has encountered as a result of funding art that pushes the bar-

riers of “indecency,” namely homo-erotic and feminist performance

art. Part III discusses the doctrines behind viewpoint discrimination

and unconstitutional conditions, and criticizes the Court’s application

of these doctrines to the facts in Rust and Rosenberger. Part III then

examines Finley’s majority and dissenting opinions and further criti-

cizes the arguments stated in the NEA’s Supreme Court petition for

certiorari. Part IV analyzes the constitutional problems created by the

current NEA grant provisions, including vagueness, chilling effect,

prior restraint on artistic expression, and the court’s lack of adequate

artistic experiences that could contribute to their growth, and otherwise constricting

human liberty.”).

20 See Katha Pollitt, Honk if you Believe in Art, SACRAMENTO BEE, Aug. 3,

1997, at F2 (“[A]rt employs a lot of people, grants for high culture and experimental

projects act as ‘seed money’ for eventual pop-cultural blockbusters.”).

2″ See Heins, supra note 13, at 101 (“[Tfhe Court has further confused [First

Amendment decisions] by sometimes using the terms ‘content’ and ‘viewpoint’ in-

terchangeably. It has justified this interchangeable use by explaining that prohibi-

tions against content and viewpoint discrimination flow from the same concern-

government attempts to control public debate and suppress disfavored ideas.”).

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NEA "DECENCY AND RESPECT"

legal doctrine to devise an effective solution. Additionally, Part IV

discusses whether the NEA merely enriches the artistic communities

of large urban cities while largely ignoring the more rural areas of the

United States, or whether the program benefits all Americans by

bringing art and culture to all areas. Finally, Part V criticizes previ-

ously proposed solutions to the NEA's controversial funding dilemma

and proposes ways to avoid further constitutional controversy, regard-

less of the level of government participation. Under any solution,

however, this Comment concludes that the "decency and respect" pro-

vision is unconstitutional and must be eliminated.

II. HISTORY OF ART SUBSIDIES

A.    Creation of the National Endowment for the Arts

Even before the creation of the NEA in 1965, the United States

was economically supportive of the arts. The first significant support

of the arts began without government involvement during the Indus-

trial Revolution. Wealthy capitalists like J.P. Morgan, Solomon Gug-

genheim, John Rockefeller, and William C. Ralston began to promote

art by subsidizing theatre and music.22

Federal subsidization of the arts was initiated under Roosevelt's

New Deal in an effort to provide employment following the Great De-

pression. Congress created the Federal Arts Project (FAP) to help re-

lieve unemployment through artistic ventures that resulted in "ap-

proximately 1,500 murals, 18,800 sculptures, and 108,000 paintings,

as well as other works of art."23 However, in qualifying for the subsi-

dies more weight was assigned to financial need rather than true "ar-

tistic excellence."24 The government's next significant attempt to sub-

sidize art did not occur until the "Great Society" under the purview of

the Kennedy and Johnson administrations. The Presidents appointed a

Special Assistant on the Arts25 and Congress passed the National

22 Enrique R. Carrasco, The National Endowment for the Arts: A Search for an

Equitable Grant Making Process, 74 GEO. L.J. 1521, 1526 (1986).

23 Id. (citing L. DUBOFF, ART LAW IN A NUTSHELL 159 (1984)).

24 Id. The New Deal assisted such notable artist as Mark Rothko, David Smith

and Jackson Pollack. Id.

25 Id.

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UCLA ENTERTAINMENT LAW REVIEW

Foundation of the Arts and the Humanities Act that created a twenty-

six member National Council on the Arts.26

In creating the program, Congress stressed the importance of free-

dom of expression, stating that “it is necessary and appropriate for the

Federal Government to help create and sustain.., a climate encour-

aging freedom of thought, imagination and inquiry.”’27 The U.S. Sen-

ate reaffirmed the goal of artistic freedom when it amended the statute

so the only criterion by which proposals would be judged by was “ar-

tistic excellence.”,28 Congress persistently expressed the fear that gov-

ernment may become the “czar” of national art, deciding ultimately

what art is good or bad.29 Additionally, artists expressed concern that

too strong a governmental presence in an endeavor to which freedom

is essential, would result in “a spirit of compromise and conservatism

in art.”  To prevent governmental influence in artistic expression, the

NEA was set up in such a way that Congress’s control over its annual

budget was independent of its grantmaking decisions. The NEA’s op-

erating budget is periodically brought before Congress for renewal, at

26 National Arts and Cultural Development Act of 1964, Pub. L. No. 88-579, �

5(a), 78 Stat. 905, 905 (1964), reprinted in 1964 U.S. CODE CONG. & ADMIN. NEWS

1030, 1031. Thereafter transferred to the NEA. H.R. Rep. No. 618, 89th Cong., 1V

Sess. 2 (1965), reprinted in 1965 U.S. CODE CONG. & ADMIN. NEWS 3186, 3187.

27 20 U.S.C. 951(7); Pub. L. 89-209 (1965).

28 S. REP. No. 300, 89th Cong., 1St Sess. 3-4 (1965) (drafting the criterion by

which the proposals would be judged the Senate stressed that “there be given the

fullest attention to freedom of artistic … expression. One of the artist’s … great

values to society is the mirror of self-examination which they raise so that society

can become aware of its shortcomings as well as its strengths…. The standard

should be artistic … excellence.”).

29 Id. Furthermore, the minority of the House of Representatives expressed the

fear that governmental subsidization of the arts “could lead to attempts at political

control of culture.” H.R. REP. NO. 618, 89th Cong., 1st Sess. 21 (1965).

30 See Carrasco, supra note 22, at n.62 (“Actor Charlton Heston, a witness at the

hearings on the bill, succinctly conveyed this idea, stating: ‘[t]he artist’s point of

view, I suppose, has always been reduced to its simplest terms, ‘Give me money but

do not tell me what to do with it.”‘) Id. at 1528; Elizabeth E. DeGrazia, In Search of

Artistic Excellence: Structural Reform of the Endowment for the Arts, 12 CARDOZO

ARTS & ENT. L.J. 133, 136 (1994) (“Senator Strom Thurmond, a Republican from

South Carolina, sparked the attack with the charge that ‘[g]overnment subsidization

of the arts will inevitably lead to the stifling of creativity and initiative.”‘).

[Vol 5:2

NEA "DECENCY AND RESPECT"

which time Congress may abolish the NEA if it deems that it has not

adequately performed its "mission of supporting the arts."'"

With the codification of the National Foundation on the Arts and

Humanities Act, Congress outlined several provisions for the NEA's

federal subsidies. First, Congress established that the primary source

of economic support for the arts should come from private and local

"initiative"32 and that federal subsidies were merely meant to "com-

pliment" private funds.33 Second, the government's objective was

mainly to "[financially] encourage[ ] freedom of thought [and] imagi-

nation and to foster conditions facilitating the release of this creative

talent.”34 Lastly, Congress severely limited the NEA’s ability to steer

or influence the grantee’s work once the grant was issued.35

The NEA is headed by a Chairperson who is appointed by the

President and approved by the Senate. The Chairperson is assisted by

both the twenty-six members of the National Council on the Arts36 and

the peer review panel consisting of highly respected members of the

private art community who specialize in a particular area.37 The job of

the peer review panel is to review grant applications and to identify

and recommend works that meet the artistic excellence standard.38 By

appointing private citizens who serve short terms on the review panel,

instead of government bureaucrats, the program’s grantmaking process

is insulated from political lobbying, congressional influence, or con-

stituent pressure.

3′ See DeGrazia, supra note 30, at n. 14.

32 20 U.S.C. � 951(1) (1982).

I ld. at � 951(4).

34 Id. at � 951(5).

” See Carrasco, supra note 22, at 1530 (“In the administration of [the Act] no

department, agency, officer, or employee of the United States shall exercise any di-

rection, supervision, or control over the policy determination, personnel, or curricu-

lum, or the administration or operation of any school or other non-Federal agency,

institution, organization, or association.”).

36 The twenty-six members of the National Council on the Arts are appointed by

the President from the private sector and approved by the Senate.

37 See 20 U.S.C. � 955(b) (1982).

38 See 20 U.S.C. � 959(c)(4) (Supp. 1991).

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UCLA ENTERTAINMENT LAW REVIEW

At the end of the day, however, the Chairperson is the ultimate

judge in deciding which artists will receive federal art subsidies.39 The

Chairperson serves a four-year term that is staggered against the Presi-

dent’s four-year term to prevent the President from making political

appointments to please his constituents. Usually, the Chairperson con-

firms the recommendations that successfully make it through both the

peer-review panels and the NCA. Between 1982-89, the Chairperson

rejected only 35 out of 33,700 grant proposals recommended by both

the panel and NCA.40 However, as art has embraced more controver-

sial and sexual themes, the Chairperson has recently begun to reject

more grant proposals that survive both reviews.

Though some of the NEA funds are awarded to individual artists,4″

most grants are given to organizations such as theatre groups, operas,

symphonies, museums and mural projects.42 Furthermore, NEA grants

are supplemented by private dollars, so that the NEA’s approval of ar-

tistic quality acts as an endorsement of the private art community by

suggesting that investment in the artist’s work would be prudent.43

The only specific criteria that proposals were initially judged by was

“artistic… merit and professional excellence.”"‘ However, the Coun-

cil also “consider[ed] projects of ‘significant merit’ which would oth-

erwise be unavailable to the public for geographic or economic rea-

sons… [and the council was also asked to] consider projects that

would help artist[s] ‘achieve wider distribution of their works.”’45 The

final congressional amendment to the criteria, before the “obscenity”

39 See 20 U.S.C. � 959(a)(4).

40 See William H. Honan, 2 Who Lost Art Grants Are Up for New Ones, N.Y.

TIMEs, Aug. 2, 1990, at C 19.

41 See Berson, supra note 2 (discussing the termination of individual grants fol-

lowing the Finley incident).

42 See 20 U.S.C. � 954(c).

41 See Donald W. Hawthrone, Subversive Subsidization: How NEA Art Funding

Abridges Private Speech, 40 U. KAN. L. REV. 437, nn.19, 22.

4 20 U.S.C. � 954(c) (1-2) (1982).

45 See Carrasco, supra note 22, at 1533 (quoting 20 U.S.C. � 954(c)(2-3)).

260

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NEA "DECENCY AND RESPECT"

controversy occurred in 1980, said that art that reflected "American

creativity and cultural diversity" should be granted funding.46

B.    Political Controversy and Repercussions Following the

Creation of the NEA

Beginning in the later part of the 1980's, the NEA faced the recur-

ring problem of subsidizing art which Congress and the American

people felt was "controversial," "indecent," and most importantly,

"obscene." For instance, in 1986, Representative Mario Biaggi of the

Bronx, demanded that the NEA pull its funding from a modernized

version of Rigoletto because he felt it portrayed "disparaging ethnic

images".47 The play conveyed a stereotype of Italian-Americans as

being gangsters and racketeers.48 This controversy spawned one of the

first proposals to restrict artistic freedom through a method of content

screening to ensure that the NEA would not fund productions "con-

taining any ethnic or racially offensive material."49 In his attempt to

quell cultural stereotypes, Rep. Biaggi implicitly opposed the funda-

mental goal of NEA - to support, not influence or control, artistic ex-

pression."

This was the government's first serious attempt to control the

content or viewpoint expressed by the artists applying for NEA grants.

The government was not saying that all theatrical interpretations of

46 National Foundation of the Arts and Humanities Amendments of 1973, Publ.

L. No. 93-133, � 2(a)(3)(C), 87 Stat. 461, 462 (1973) (codified at 20 U.S.C. �

954(c)(2), reprinted in 1973 U.S. CONG. & ADMIN. NEws 528, 529).

47 See Carrasco, supra note 22, at 1521, nn.5-7. This controversy resulted in

Rep. Biaggi's proposal of a bill to "ensure that federal government would not fund

productions containing 'any ethnic or racially offensive material' .... [He further

asserted that] ‘there should be [] a sensitivity. I don’t think we should have censor-

ship. But censorship and sensitivity, what separates them is a very fine line.”‘ Id.

The Rigoletto incident “illustrat[ed] a breakdown in relations among the actors: the

taxpaying consumers of the arts, the subsidized artist, and the largess-dispensing

agency…. However, [t]he Biaggi content screening proposal … advocates the use

of an ax to address a problem best solved with a scalpel.” Id. at 1534.

48 Id.

49 Id. at 1522, 1534.

” Even though Rep. Biaggi’s amendment was never passed it expanded Con-

gress’ willingness to implement more viewpoint-based controls over the grantmak-

ing process.

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UCLA ENTERTAINMENT LAW REVIEW

Rigoletto were to be denied funding, although this would have been a

permissible-content based restriction. Rather, the government only re-

stricted those interpretations of Rigoletto that promoted the viewpoint

of Italians as gangsters and racketeers. Under this statute, if Francis

Ford Coppola applied for an NEA film grant for the Oscar winning

film The Godfather, he would be denied funding based on his por-

trayal of Italians, regardless of the films’ technical or visual excel-

lence. The same argument would apply to D.W. Griffith’s A Birth of a

Nation, which was monumental in its contributions to the film-making

science, but whose story glorified the Klu Klux Klan and portrayed

African-Americans as uncivilized animals. The statute would prevent

both good speech and bad speech from being funded – therefore it

was overbroad in its application. The problem is that regardless of

whether the speech is distasteful to a large portion of society, the gov-

ernment, via the NEA, should not be deciding which speech or artistic

message is worthy of being heard. With a standard that is not based

on viewpoint, the NEA will balance the film’s contribution to the art

of filmmaking, both scientifically and stylistically against the message

it conveys. The marketplace or audience may extract the positive

contributions these works make, and remain free to reject the stereo-

types portrayed therein.

The next legislative attempt to narrow the type of art the NEA

could fund was proposed in 1989 by Senator Jesse Helms (R- North

Carolina). He introduced an amendment to the statutory mandate pro-

hibiting the funding of “obscene or indecent” art.5″ Helms’ effort to

control the type of art funded was a direct response to the NEA’s con-

troversial funding of Robert Mapplethorpe’s homoerotic art and An-

dres Serrano’s “Piss Christ.”52 To express its disapproval of the “con-

troversial” funding, Congress withheld from the NEA’s budget the

amount of grant money given to sponsors of the exhibitions showing

“‘ H.R. 27788 101St Cong., 135 CONG. REc. 8806 (daily ed. July 26, 1989)

(amendment number 420 to the Interior Department Appropriations bill) [hereinafter

Helms amendment]. The Helms amendment was eventually barred in favor of the

Fowler amendment which was less restrictive. See Oreskes, Senate Votes to Bar US.

Support of “Obscene or Indecent” Artwork, N.Y. TIMES, July 27, 1989, at Al, col.

1.

52 “Piss Christ” is a photograph of a crucifix immersed in a jar of the artist’s

urine that Senator Helms deemed “blasphemous.”

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1998]               NEA “DECENCY AND RESPECT”                              263

Serrano and Mapplethorpe’s works.53 In proposing the amendment,

Senator Helms argued that he wanted to “prevent the National En-

dowment for the Arts from funding… immoral trash in the fu-

ture… [and that this amendment would not] prevent the production

or creation of vulgar works, it merely prevents the use of federal funds

to support them.”54 His provision would have effectively banned all

art portraying homoerotic, anti-religious, or culturally controversial

themes. Helms saw these restrictions as a common sense approach to

deciding what is and is not appropriate artwork to fund with taxpayer

dollars.55

“  Elizabeth Kastor, House Trims NEA Budget as Reprimand: Drastic Cuts Re-

jected in Arts Funding Bill, WASHINGTON POST, July 13, 1989, at C1.

14  135 CONG. REc. 8807 (daily ed. July 26, 1989) (statements of Sen. Jesse

Helms). The amendment required that:

None of the funds authorized to be appropriated pursuant to this Act may be used to

promote, disseminate, or produce:

(1) obscene or indecent materials, including but not limited to depictions of sado-

masochism, homoeroticism, the exploitation of children, or individuals engaged in

sex acts; or

(2) material which denigrates the objects or beliefs of the adherents of a particular

religion or non-religion; or

(3) material which denigrates, debases, or reviles a person, group, or class of citi-

zens on the basis of race, creed, sex, handicap, age, or national origin.

H.R. 2788, 101″ Cong., 135 CONG. REC. 8806 (daily ed. July 26, 1989) (amendment

number 420 to the Interior Department of Appropriations Bill). If these amend-

ments controlled what types of art are fundable:

[O]ne can easily imagine many recognized masterpieces being condemned by a bu-

reaucrat applying such formless standards. Courbet’s Le Sommeil (1866) depicts

homoeroticism; Boucher’s Mars and Venus Caught by Vulcan (1754) represents

“individuals engaged in sex acts”; the “sexual exploitation of children” is among

the subjects of E.J. Bellocq’s famous Storyville Portraits. Many major American

artists of this century have shown “disrespect” for some beliefs and values of their

countrymen. Andy Warhol’s iconic Mao pictures, de Kooning’s violent depictions

of women, Georgia O’Keefe’s sexually charged flowers, even totally abstract

works, like Conceptual Art and Carl Andre’s minimalist sculptures, which express

anti-capitalist and anti-idealistic sentiments, can be interpreted with little difficulty

as showing disrespect for beliefs and values of some members of he American pub-

lic.

See Hawthrone, supra note 43, at 445.

“  Id. Compare Helms view with James Lileks’s who opposes common sense-

type art because “[America] need[s] to challenge prevailing concepts of patriarchal

trends in representational art by giving grants to women who make challenging ab-

stract sculpture from liposuctioned cellulite.” James Lileks, Kill OSHA! Kill the

UCLA ENTERTAINMENT LAW REVIEW

However, Helms should have questioned whether it was the gov-

ernment’s role to ultimately decide what type of art is in the country’s

best interest.56 Helms should also have considered whether his

amendment was overbroad or vague and prevented funding of art that

does violate NEA standards and art that does not, despite being con-

troversial. Helms first attempt at amending the NEA grantmaking

provisions is evidence of the legislative intent to silence views of those

artists with whom it does not agree. It is noteworthy that most of the

art labeled “controversial” or “indecent” espouses homosexual or

feminist themes. Homosexuality and feminism remain the only topics

permissible to condemn as immoral on the House or Senate floor by

representatives like Helms and California’s Robert Dornan. This

moral condemnation is even more accepted when hidden behind the

questions of “what is art?” and “should the tax-payers be subsidizing

it?” If any representative took the floor in order to berate any artwork

simply because it promotes African-American, Latino, or Jewish

themes he would be shunned as a racist or bigot rather than a repre-

sentative ofr the moral majority.

Furthermore, because Helms’s amendment is overbroad under its

all encompassing standard, books such as Tom Sawyer, Catcher in the

Rye, many of Shakespeare’s plays, and films such as The Godfather57

would not have received NEA literary subsidies, nor would the NEA

fund libraries that carry these works. Lastly, some Senators expressed

concern that Helms’s overbroad amendment would have a “chilling ef-

fect” on artistic expression:

EPA! Kill the IRS! But Please Spare the NEA, AUSTIN AMERICAN-STATESMAN, July

21, 1997, at A9.

56 See Senator Howard Metzenbaum’s comments regarding the amendments-

asking whether or not it is within the government’s role to determine the “art

standards for [the] country.” 135 CONG. REC. 8808 (daily ed. July 26, 1989).

17 See Georges Nahitchevansky, Note, Free Speech and Government Funding:

Does the Government Have to Fund What it Doesn’t Like, 56 BROOK. L. REv. 213,

n. 12 (1990). Shakespeare’s Merchant of Venice portrays Jewish people as greedy

and Taming of the Shrew has come under fire from feminist groups for its subordi-

nation of women. The Godfather, similar to Rigoletto, casts Italian-Americans as

hoodlums and gangsters. Lastly, Tom Sawyer could be censored for its portrayal of

race relations.

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NEA "DECENCY AND RESPECT"

In other words, grant recipients, fearing the loss of the funds would ex-

ercise greater editorial control over the content of [their] exhibitions or

works of art in order to avoid works that might be viewed as controver-

sial [or indecent]. As a result many works might never be seen by the

public, and many artist would limit their expressions so as to avoid

controversy or more importantly, avoid having to return the funds.58

While these concerns were justified and predictive of issues courts

currently face in cases like Finley, the House passed the obscenity

amendment which paved the way for similar legislation. The final

version of the obscenity amendment was less restrictive than the origi-

nal proposed by Helms. The NEA is now required to screen art pro-

posals in accordance with the obscenity standard the Supreme Court

articulated in Miller v. California.”

As with all abridgments of free speech, the restrictions set into

motion the argument for a sliding scale. It is important to keep in mind

the extreme end of this spectrum. The governments in Nazi Germany

and Communist Russia controlled artistic expression because they be-

lieved it was in the best interest of their people. Both regimes ap-

proved only of nationalist art in the classic manner. During World

War II, Germany was burning modernist paintings along with “contro-

versial” books and people. The rationale was that the message the

material conveyed was “obscene,” ..indecent,” ”immoral,” and without

merit. All artists who were considered devoid of any “value” to Nazi

Germany were thrown in concentration camps.60 Even though this il-

lustrates only one extreme of the sliding scale, regimes like Nazi Ger-

I Id. (citing Senator Jeffords 135 CONG. REC. 8808, at 12131 (daily ed. July 26,

1989)).

5  Miller v. California, 413 U.S. 15 (1973). The amendment now reads:

None of the funds may be sued to promote, disseminate, or produce materials

which in the judgment of the National Endowment for the Arts … may be consid-

ered obscene, including but not limited to, depictions of sadomasochism, homo-

eroticism, the sexual exploitation of children, or individuals engaged in sex acts and

such, when taken as a whole, do not have serious literary, artistic, political or scien-

tific value.

20 U.S.C. � 954 (1989). Furthermore, any artist who’s artwork was determined to

be obscene was required to return their grant money. However they were permitted

to appeal the decision. 20 U.S.C. � 954 (1)(1) (1990).

6 After World War II, many believe that the United States government pro-

moted and exported abstract expressionism as a symbol of the free thinking valued

in the United States.

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UCLA ENTERTAINMENT LAW REVIEW

many and Communist Russia evolved from incidental restrictions on

free thinking which slowly turned into censorship.

Shortly after the new obscenity standard went into effect, the

“Finley Four” filed suit in district court claiming that the NEA denied

their grant proposals for political reasons and to avoid further contro-

versy after the Mapplethorpe and Serrano grant revocations. The four

artists had been denied grants despite the fact that their proposals sur-

vived both the Council and Peer Review Panel. A leaked transcript

from the NEA revealed incriminating conversations between then

Chairperson Frohnmayer and the Council. The transcripts show how

the Chairperson warned the Council that these four artists were not

worth losing the NEA’s budget and that the Council and the Chairper-

sons’ decisions must be made in a “political world.”,6′ This blurring of

the agency’s structure is exactly what the founders intended to prevent

in keeping the grantmaking process separate from the administrative

process. Now, both the Chairperson and the NEA have submitted to

political pressure in their grantmaking decisions in an effort to keep

their jobs and the NEA alive.62 Eventually Chairperson Frohnmayer

was fired by President Bush63 as a result of pressure from     ultra-

conservative politician Patrick J. Buchanan during the 1992 elections.

Buchanan’s position on controversial art became clear when he called

the NEA a “liberal establishment” that subsidizes “filthy and blasphe-

mous art.’,61

6, See Honan, supra note 40, at C13.

62 See Faye Fiore, Sidney Yates On 50 Years of Fighting for Arts Funding in

America, L.A. TIMES, Sept. 14, at M3 (in an interview with long time NEA de-

fender, Rep. Yates states that “the NEA’s [criticism] for not taking on controversial

subjects… may be due to the congressional pressure …. the NEA [now needs] to

provide grants and explanations for many of its actions …. “).

6″ See William A. Henry III, A Cheap and Easy Target, TIME, Mar. 9, 1992, at

22.

‘ Judy Keen & Bill Nichols, Buchanan Takes Aim at Arts Fund, USA TODAY,

Feb. 21, 1992, at 4A. This is an example of how politics began to control the NEA

and its grantmaking scheme. Journalist Russel Lynes commented “during the con-

gressional debate surrounding the proposed Endowment, ‘[t]he less the arts have to

do with our political processes … the healthier they will be.”‘ See DeGrazia, supra

note 30, at 151 (quoting LIVINGSTON BIDDLE, OUR GOVERNMENT AND THE ARTS 69

(1988)).

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NEA "DECENCY AND RESPECT"

The controversy continued in April of 1990, when the American

Families Association ("AFA") publicized collected photographs, de-

picting sexual acts, from an exhibit called the "Tongues of Flame."

The AFA included the photos in a pamphlet entitled "Your Tax Dol-

lars Helped Pay For These 'Works of Art,"' and mailed them to mem-

bers of Congress, Christian leaders, radio stations, and newspapers.65

Organizations like the AFA began to actively campaign against the

NEA's subsidization of art it found "offensive" and "blasphemous.",66

In 1989, the AFA solicited contributions from American people who

supported their cause and raised $5.2 million dollars.67 Critics asserted

that at its beginning the NEA funded intelligent and creative artists,

but the "works of some [current] NEA grantees suggested that the

agency [has] turned malformed from its immaculate conception.”68

Even some art critics believe that NEA funded art has taken a dis-

gusting, if not immoral, turn and that the NEA is partly responsible for

fueling the propagation of this “lewd” art.

Many critics ignore that the very purpose of art is to make the

viewer question the status quo. What may be disgusting to one audi-

ence may be thought-provoking material for another. For this reason

the power to grant funding should not ultimately reside with the

NEA’s Chairperson. Other critics argue that if you “[w]alk into an art

museum these days []you may think you have wandered into a peep

show. Pornography is alive and well in art … .69

In 1990, in an effort to subdue this “indecent” and “offensive” art,

Congress passed a toned-down version of Helms’s original amend-

ment to replace the 1989 amendment. This statute requires that the

NEA grants must judge all art in consideration of the “general stan-

dards of decency and respect for the diverse beliefs and values of the

American public.”7� The “decency and respect” provision is the most

restrictive on artistic freedom because it uses subjective judgment

61 Wojnarowicz v. American Family Ass’n., 745 F. Supp. 130, 133-35 (S.D.N.Y.

1990).

66 Id. at 133.

67 Id.

6′ Bruce Fein, Dollars for Depravity?, THE WASHINGTON TIMES, Nov. 19, 1996,

at AI4.

69 See Adler, supra note 6, at 1526.

70 20 U.S.C. � 954(d) (1991).

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UCLA ENTERTAINMENT LAW REVIEW

about “decency” of art for grantmaking decisions. This amendment

has allowed the NEA to blatantly avoid funding any “controversial”

art.

To reinforce the NEA’s compliance with the “decency” provision,

Congress held its budget reauthorization meeting in 1994, to decide

whether to eliminate the NEA by revoking its budget. More specifi-

cally, Congress threatened to cut the budget so drastically it would

leave only enough money for closing costs.       The reauthorization

meeting constituted a legalized form of coercion in which Congress

gave the NEA the choice to fund only non-controversial art, excluding

any themes which were too homoerotic or immoral in the govern-

ment’s eyes. If the NEA refused to comply it would be abolished.

Jane Alexander, then head of the NEA, successfully fought off conser-

vative attempts to abolish the NEA. The program has thus far sur-

vived with a drastically reduced budget, from $99.5 million to $10

million.7″ Following the budget cut, the NEA has only awarded 489

individual grants totaling $6.67 million. These budget cuts have con-

tinued despite the fact that in 1992 there was a 37% increase in mu-

seum attendance, totaling 49.6 million visitors.72 In 1996, 50% more

Americans spent their money attending museums and art exhibitions

than on sporting events.73

There is the argument that the increased interest in art may have

directly resulted from the NEA’s implementation of the “decency” re-

striction in its grantmaking decision. The “decency” provision has

successfully filtered almost all art conveying an indecent or controver-

sial message by refusing to grant the artist funding. This art conveys

messages that would otherwise be available to people if the “decency”

` See He’s Not Pals With Karen Finley?, L.A. TIMES, July 14, 1997, at F2.

Jane Alexander is now stepping down as the Chairman of the NEA. In doing so she

has blamed both the conservatives in Congress and the non-profit art institutions for

NEA’s troubles. She complains that in an effort to retain their reputation as the ul-

timate definers of tasteful art, the non-profit art institutions have resisted efforts to

popularize art enough to create greater participation and support for the arts. See

Suzanne Fields, Dark Reflection on Society We are All Partly to Blame for Culture’s

Decline, THE ARIZONA REPUBLIC, Oct. 22, 1997, at B5.

72 See Edward Rothstein, State of the Arts: A Mixed Report, THE COURIER-

JOURNAL, Mar. 24, 1996, at 03D.

” See Pollit, supra note 20, at F2.

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NEA "DECENCY AND RESPECT"

provision was never amended. Moreover, the chilling effect on artists

caused by congressional threats of budget cuts and viewpoint-based

restrictions like the "decency" provision prevents the audience from

ever expressing their views toward controversial or indecent artwork

because the artists never submit or create it. This is because of the

artists' fear of having their grant revoked, or being explicitly rejected

for a grant, prevents them from expressing any idea that may be

deemed "controversial" or "indecent." What happened to the public's

right to receive messages that are not obscene and are constitutionally

protected speech?74 Congressional desire to control the artist's mes-

sage has forced the NEA to take a two-tiered approach to funding art.

In deciding whom to fund, the NEA believes some artists' messages or

topics are more acceptable and thus more constitutionally protected

than others that may be considered controversial or indecent.

In July 1997, the NEA underwent another attack, and was almost

abolished by Congress, before being saved by a margin of one vote.

These events have brought the NEA into a political battleground

where the agency has become a favorite target for restrictive legisla-

tive reform.

It may be argued that even though the NEA has aided in building

the careers of successful artists, when viewed comparatively to the

history of art, the NEA, which has only existed for about three dec-

ades, is relatively young. Thus, most famous artists, who collectively

represent the history of art, such as Michelangelo, Beethoven, Rubens,

or Louisa May Alcott, created their body of art without the aid of any

formal government program.75 One could further argue that current

artists should also be able to build their careers without the aid of the

NEA.

However, none of these artists subsisted on the financial success of

their art alone. In fact, many of these famous artisans were commis-

"4 See 44 Liquormart v. Rhode Island, 116 S. Ct. 1495 (1996) (holding that re-

strictions on truthful, nonmisleading speech are subject to strict scrutiny and regula-

tions on such speech should be no more extensive than necessary); Virginia Phar-

macy Board v. Virginia Consumer Council, 425 U.S. 748 (1976) (Court found that

the First Amendment forbids the state from deciding that ignorance is preferable to

the free flow of information and that the audience has a right to receive informa-

tion).

" See Fein, supra note 68, at A14.

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sioned by politicians, patrons, and local governments and thus still de-

pended on financial support from public funds. For instance, Michel-

angelo was a painter for the Vatican and the Medici family. Most

early American art was made possible by private financiers like the

Guggenheim, Rockefeller, and Ford families. Additionally, most of

the pre-NEA famous artists were not financially successful during

their lifetime as it was only after their death that the genius of their

artwork was recognized. Thus, to keep art on the cutting edge and

continually evolving into new arenas, there will always be art that the

majority of people do not like or art with whose message they strongly

or even vehemently disagree. “To fund artistic expression only if it is

‘safe’ art… is simply to ignore the qualities of art that should lead

Congress to fund it in the first place-its freshness of vision, its will-

ingness to look anew at what the rest of us overlook [and] are incapa-

ble of seeing.”76

III. GOVERNMENT SUBSIDIZATION OF THE ARTS

A.    Viewpoint Discrimination

The government discriminates on the basis of viewpoint when it

restricts speech by preferring some messages or perspectives to others.

Even when the government chooses to subsidize private speech its

criteria must remain viewpoint-neutral. The government may not

choose which activity to fund based on the viewpoint of the speaker.

As discussed later in Part III, this is because viewpoint discrimination

is the most egregious form of government censorship77 and should

only be tolerated in extraordinary circumstances.

When the government subsidizes speech two situations exist where

the government may find itself under constitutional scrutiny. The first

situation is when “government enlist[s] speakers to convey a particu-

larized message.” Here, government may completely restrict the

speakers. The second situation is when the government “encourages

76 Arthur 1. Jacobs, “One if by Land, Two if by Sea,” 14 NOVA L. REV. 343, 355

(1990).

” See Rosenberger v. Rector & Visitors of the Univ. of Virginia, 115 S. Ct.

2510, 2516 (1995).

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private speech." In this instance the government may only place con-

tent-based restrictions on the speech by limiting the subject matter, not

the viewpoint. If the speaker meets the content-based restriction, such

as "excellent artwork," it is unconstitutional for the government to

choose to subsidize one artist over another on the basis of the artist's

message or viewpoint.

1.     The Problem With Rust

In Rust v. Sullivan,7" the Supreme Court, in a 5-4 vote, upheld a

statute prohibiting abortion counseling at family planning centers

which received Title X public funds.79 The regulations prevented

doctors and nurses from "encourag[ing], promot[ing], or advocat[ing]

abortion as a method of family planning [and from] provid[ing] refer-

ral[s] for abortion [to other non-Title X family planning centers].”8�

Furthermore, the statute required those clinics that insisted on advising

their patients about the availability of abortion to set up “physically

and financially separate” clinics from those clinics operating under Ti-

tle X fimding.8 Therefore, even if a recipient proved that Title X fed-

eral funds were going exclusively toward Title-X approved activities,

the statute required the recipient to “physically” separate the Title X

and non-Title X facilities.82

78 500 U.S. 173 (1991).

7′ Title X permitted the Secretary of Health and Human Services to “make

grants … and enter into contracts with public or nonprofit private entities to assist in

the establishment and operation of voluntary family planning projects which shall

offer a broad range of acceptable and effective family planning methods . . . .” 42

U.S.C. � 300(a) (1988) (emphasis added). These acceptable methods of family

planning prohibited the “use of abortion as a method of family planning or [from

referring patients to outside abortions methods or clinics." 42 C.F.R. � 59.8(a)(1)

(1994).

s  42 C.F.R. � 59.10 (1994).

1' 42 C.F.R. � 59.9 (1994).

82 Cole argues that the restrictions on Rust could be even more infringing on free

speech and still not be unconstitutional:

Under this rationale, the government could have defined the Title X program as a

24-hour-per-day, six day-per-week program, provided 10% of the funding , and re-

quired the recipient not to speak in favor of abortion at any time during the pro-

gram. Such a condition would presumably not be unconstitutional under Rust be-

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The petitioners in Rust argued that the statute constituted view-

point discrimination and violated the First Amendment by prohibiting

either abortion counseling or referral while “compelling the clinic or

counselor to provide only information that promotes continuing a

pregnancy to term.”83 The Court rejected this argument and held that

the restrictions on funding did not discriminate based on viewpoint but

merely defined the limits of the specific public funding to the exclu-

sion of another viewpoint and thus did not violate the recipients’ First

Amendment right to free speech.84 The Court reasoned that the

“[g]overnment can, without violating the Constitution, selectively fund

a program to encourage certain activities it believes to be in the public

interest, without at the same time funding an alternative program

which seeks to deal with the problem in another way.”85 The Court fo-

cused on the scope and purpose of the subsidy, not the explicit en-

dorsement or acceptance of a particular viewpoint. The specific pur-

pose of Title X subsidies was to “foster family planning methods other

than abortion.’”86

Furthermore, the Court relied on the precedent in Harris v.

McRae87 stating that “[a] refusal to fund protected activity without

cause the recipient would still be free to speak about abortion with private funds on

the seventh day.

See Cole, supra note 16, at n.39 (stating that the unconstitutional conditions in Rust

are circular in reasoning).

3 Rust v. Sullivan, 500 U.S. 173, 192 (1991).

s4 Id. at 192-95.

85 Id. at 193.

86 See Redish & Kessler, supra note 11, at 575. “It therefore would be absurd to

hold unconstitutional the government’s choice not to fund pro-abortion counseling.”

Id. The Court endorsed the Government’s argument that:

even though [the statute] restricted the speech of the recipients of federal money, it

did not violate the First Amendment, because the government should not have to [fi-

nancially] support positions with which it does not agree and because these organi-

zations could exercise their own speech in other contexts where they were not feder-

ally funded.

See Bollinger, supra note 15, at 1114-15 (discussing the adverse precedent of Rust

and its application to the viewpoint discrimination discussed by the Ninth Circuit in

Finley v. National Endowment for the Arts).

87 448 U.S. 297 (1980).

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more, cannot be equated with the imposition of a 'penalty' on that ac-

tivity.'"" Lastly, the Court found that not all government-subsidized

activities were subject to the same scrutiny under the First Amend-

ment.89 For example, the Court refused to equate subsidization of fed-

eral family planning clinics with other traditional public fora, such as

universities, where little or no restrictions on speech are tolerable.90

Some scholars have sharply criticized the Court's holding in Rust

because the conditions on Title X funding censored the dissemination

of particular ideas, and were therefore blatantly viewpoint-based.9'

Moreover, the Court in Rust applied a form of review that was too

weak to the issue of viewpoint discrimination. The Court's characteri-

zation of the subsidy being more similar to a benefit than a traditional

public forum allowed it to quickly dismiss any argument for applying

stricter scrutiny.92 "[C]haracterizing the subsidy as either viewpoint-

neutral or skewed to favor one side of a debate – is so inherently

subjective that few could agree on whether [the government] was

‘aiming at the suppression of ideas’ [or using government speech as a

method to endorse a particular view].”93

88 Id. at 317.

89 See id. at 322-23.

90 See Rust 500 U.S. at 199-200. The Court further reasoned that “the university

is a traditional sphere of free expression so fundamental to the functioning of our

society that the Government’s ability to control speech within that sphere by means

of conditions attached to the expenditure of … funds is restricted by the vagueness

and overbreadth doctrines of the First Amendment.” Id. Another significant hold-

ing in Rust was the Court’s announcement of its future “intention to treat nearly all

benefit allocations whose distributional criteria refer to the exercise of preferred

rights the same as it would treat allocations based on immutable characteristics.”

Gary A. Winters, Unconstitutional Conditions as “Nonsubsidies”: When is Defer-

ence Inappropriate?, 80 GEO. L.J. 131, 134 (1991).

9′ See Redish & Kessler, supra note 11, at 577 (“The very description of the

subsidy program [in Rust] as a means of disseminating information concerning fam-

ily planning methods other than abortion inescapably reveals the viewpoint-based,

selective nature of the subsidy, and makes the program unconstitutional ….”).

92 See Winters, supra note 90, at 152 (“Rust is a perfect illustration of the unsat-

isfactory nature of this weak form of review.”).

“   Id. The dissent argued that the statute went further than the government

merely defining the goal of its subsidy. The dissent posited, “[JIf a client asks di-

rectly about abortion, a Title X physician or counselor is required to say.., that the

project does not consider abortion to be an appropriate method of family planning."

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The basic problem with the majority’s analysis in Rust is that if it

is permissible for the government to favor one viewpoint over another

without the court labeling it for what it is-viewpoint discrimina-

tion-the government’s interest in future cases can always be legiti-

mized.94 The government may easily exclude certain “unapproved”

viewpoints by simply defining those particular viewpoints as outside

the purpose of the government subsidy. Thus, the constitutional pro-

scription against viewpoint discrimination is essentially stripped of all

its protective power by giving government a way to circumvent its true

discriminatory legislative intent.

Lastly, the majority is also flawed in its reasoning that the statute

was not viewpoint-based because the family planning centers were not

prevented   from   counseling    patients  about   abortions  in   non-

government-subsidized centers. If a clinic is supported by 5% of gov-

ernment funding, but is economically dependent on that subsidy, the

Rust criteria effectively prevents the clinic from counseling about

abortion. Even though the clinic is allowed to separate its facility into

two “subsidized” and “non-subsidized” clinics, it is not an economi-

cally viable option. Thus, the speaker, or health care provider, will

conform to the government’s viewpoint.

The Court’s decision in Rust has left the government with the un-

derstanding that when public funds are used to subsidize speech it may

constitutionally take sides and sustain or encourage a particular view-

point. Furthermore, under a broader reading, the government may

Id. (citing �59.8(b)(4)). This clearly goes beyond funding a permissible goal and

crosses over into promoting or endorsing the viewpoint of pro-life or anti-abortion.

Furthermore, a doctor endorsing the government’s required viewpoint is more coer-

cive to the patient than it would be outside the clinic where the protesting continues.

The patient is able to discount those viewpoints and expects the government-run

clinic to be viewpoint neutral. See also Winters, supra note 90, at 153 (“Govern-

ment can encourage an enormous range of activities over alternative activities, and

could enact the kind of speech-related subsidies at issue in Rust to carry out these

goals. Thus, equating the legitimate power to encourage and fund an activity with

lack of viewpoint discrimination cedes overwhelming discretion to government.”).

This results in the weakest form of judicial scrutiny-in which the government only

needs to justify its restriction with a significant interest.

94 See id.

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statutorily "impose [broad-based] content restrictions on scientific re-

search grants, arts funding, subsidies to documentary films, and feder-

ally-funded AIDS education”95 without fear of being struck down as

impermissibly viewpoint-biased. The more sweeping or vague the re-

striction, such as “decency,” the more latitude the Court has given

government in defining the viewpoints which do not comport with its

own. Rust seems to stand for the proposition that “[i]f the government

can bar federally-funded family planning counselors from mentioning

abortion in pregnancy counseling, surely it can require artists who re-

ceive federal grants to refrain from creating indecent art.’”96

2.    Does Rosenberger Rescue the First Amendment?

In Rosenberger v. Rector & Visitors of the University of Virginia,97

the Supreme Court struck down a university regulation that prohibited

religious publications from receiving any subsidies from a student ac-

tivities fund.98 The Court relied on the precedent of Perry v. Educa-

tion Association v. Perry Local Educators99 and Cornelius v.

NAACP’00 which required government neutrality in situations of gov-

ernment benefits and subsidies. The Court stated that “[v]iewpoint

discrimination is… an egregious form of content discrimination,” and

the government is not permitted to draft statutes which allow it to use

the viewpoint of the speakers as the rationale for the restrictions on

speech.”‘ Furthermore, when the government creates a limited public

forum for a legitimate purpose, such as limiting the forum to certain

groups or topics, it must respect those limits and not exclude speech

under the rubric of being unreasonable “in light of the purpose served

by the forum.”‘�2 In this case, the university argued that the restric-

9 See Cole, supra note 16, at 676-77.

96 Id. at 677.

97 115 S. Ct. 2510 (1995).

9″ See id at 2520. Specifically, the university withheld funding from those pub-

lications which “promote[d] or manifest[ed] a particular belie[f] in or about a deity

or an ultimate reality.” Id. at 2512.

99 460 U.S. 37 (1983).

‘o 473 U.S. 788 (1985).

lot See id. at2516.

102 Id. at 2517 (quoting Cornelius v. NAACP Legal Defense & Ed. Fund, Inc.,

473 U.S. 788, 804-806 (1985)).

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tions on funding were “content based,” which prevented the plaintiff

from receiving subsidies. However, the Court disagreed and explained

that even though the distinction between religious content and relig-

ious viewpoint is somewhat unclear the university allowed subsidiza-

tion of newspapers which took a secular perspective of religion while

disfavoring those “student journalistic efforts with religious editorial

viewpoints.”‘�3

Unlike in Rust, the Court in Rosenberger stated that “ideologically

driven attempts to suppress a particular point of view are [as] pre-

sumptively unconstitutional in funding, as in other contexts.”‘�4 Thus,

viewpoint neutrality is essential to the subsidy’s openness to contro-

versial ideas and political debate. The majority enforced this idea

when they rejected the dissents’ argument that the university’s regula-

tion was viewpoint neutral because it discriminated against “an entire

class of viewpoints.” The majority explained that public debate is not

“bipolar” and that “[t]he complex and multifaceted nature of public

discourse has not embraced such a contrived description of the mar-

ketplace of ideas …. The dissent’s declaration that debate is not

skewed so long as multiple voices are silenced is simply wrong; the

debate is skewed in multiple ways.”‘�

The Court’s decision in Rosenberger is not only applicable to “re-

ligious” speech. It applies equally to “controversial,” “political,” or

“indecent” speech. Any time the government encourages speech on a

particular topic by offering a benefit or subsidy, including artistic ex-

pression, and excludes those viewpoints that may be considered “con-

troversial” or “indecent,” it skews political debate.’6 Exclusion or

censorship of “controversial” or “indecent” ideas threatens First

Amendment freedoms by preventing political discussion of disfavored

speech. “Speech that is controversial, that ‘induces a condition of un-

rest, creates dissatisfaction with conditions as they are, or even stirs

people to anger,’ is precisely the speech most in need of constitutional

103 Id.

“04 Rosenberger 115 S. Ct. 2510, 2517 (1995).

105 See Heins, supra note 13, at 121 (quoting Rosenberger 115 S. Ct. at 2518).

The Court in Rosenberger explained that if racism is the topic of debate, “then the

exclusion of several views on that problem is just as offensive to the First Amend-

ment as exclusion of only one.” Rosenberger, 115 S. Ct. at 2518.

106 See Heins, supra note 13, at 121-122.

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protection."''7 Thus, the Court in Rosenberger curtailed the applica-

tion of Rust where the government subsidizes and encourages speech

on a particular topic such as art. Rosenberger leaves the public with

the understanding that any time the government defines a benefit pro-

gram which encourages a certain type of speech to the exclusion of

certain ideas which may be considered "political," "controversial," or

"indecent," it has impermissibly discriminated on the basis of view-

point. Since Rosenberger, other circuits have followed this line of rea-

soning."'

107 Id. (quoting Texas v. Johnson, 491 U.S. 397, 476 (1989)).

o  For instance, in Gay Lesbian Bisexual Alliance ("GLBA") v. Pryor, 110 F.3d

1543 (11"h Cir.1997), a gay and lesbian student organization sued the University of

Southern Alabama when a state statute excluded them from receiving public funds.

The statute at issue prohibited the spending of public funds on any group that pro-

moted a lifestyle that supports sodomy or sexual misconduct. The Eleventh Circuit

held that the statute violated the students free speech rights and that Alabama en-

gaged in viewpoint discrimination. Id. at 1548-49. The court reasoned that Rosen-

berger made it clear that "a university might limit the funds it makes available for

student activities to those involving Shakespearean literature .... [H]owever, the

university could not deny funding to critical interpretations of Shakespeare.” Id. at

1549. As applied to the facts in this case the university prevented GLBA from being

considered for funding on the “assumption that GLBA fosters or promotes a viola-

tion of the sodomy or sexual misconduct laws. The statute discriminates against one

particular viewpoint because state funding of groups which foster or promote com-

pliance with the sodomy or sexual misconduct laws remains permissible. This is

blatant viewpoint discrimination.” Id. The court also reinforced Rosenberger’s

analysis as being on-point with regards to viewpoint discrimination and public fo-

rum. Id. at 1550. This may also be an implicit rejection of the analysis in Rust.

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B. Unconstitutional Conditions Doctrine

When the government offers a subsidy conditioned on the

speaker’s agreement to relinquish their First Amendment right to

speak about certain topics or views, a coercive element enters into the

situation. In the coercive situation, the government has the added

power to grant or deny a subsidy. With this greater power, they con-

trol the speaker’s motivation for the speech by dangling monetary

sustenance in front of them in return for a waiver of their constitu-

tional rights. This creates a problem of “unconstitutional conditions,”

an issue that has confused courts and theorists for over a hundred

years.1″9 Some skeptics argue that the above situation is not coercive.

The speaker has no property interest in the subsidy, and by choosing to

assert her constitutional right to free speech instead of accepting the

subsidy she is in no worse a position than if the government had never

offered the subsidy.”‘ This argument misses the catastrophic effect

the exchange can have on political discourse and debate.

The Court in Rust defined an unconstitutional condition as a “con-

dition on the recipient of When the government offers a subsidy con-

ditioned on the speaker’s agreemthe [government] subsidy rather than

on a particular program or service, thus effectively prohibiting the re-

cipient from engaging in the protected conduct outside the scope of the

federally funded program.”1″     The Court has taken advantage of

’09 Andres A. Epstein, The Supreme Court, 1987 Term-Forward: Unconstitu-

tional Conditions, State Power, and the Limits of Consent, 102 HARV. L. REV. 4, 6

(1988). See, e.g., Rust v. Sullivan, 500 U.S. 173 (1991); Posadas de Puerto Rico

Assoc. v. Tourism Co. of Puerto Rico, 478 U.S. 328 (1986); Federal Communica-

tions Comm’n. v. League of Women Voters, 468 U.S. 364 (1984); Regan v. Taxa-

tion With Representation of Wash., 461 U.S. 540 (1983); Harris v. McRae, 448 U.S.

297 (1980) (voting with majority); Speiser v. Randall 357 U.S. 513 (1958) (gov-

ernments denial of a special property tax exemption to veterans refusing to take a

loyalty oath). See also Brooks R. Fudenberg, Unconstitutional Conditions and

Greater Powers: A Separability Approach, 43 UCLA L. REV. 371, 374-76 (1995)

(The Supreme Court wrongly recognized as early as 1841 “that if the government

has the greater power to deny a benefit completely, or forbid an activity entirely it

[is not] unconstitutional to deny that benefit in part.”). Brooks argues that uncon-

stitutional conditions should be subject to the courts strictest form of scrutiny. Id.

… See Redish & Kessler, supra note 11, at 549.

.. Rust v. Sullivan, 500 U.S. 173, 197 (1991).

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Rust's definition of unconstitutional conditions by contracting and ex-

panding the purposes of the government subsidy depending on the

viewpoint of the speaker."2 This contracting or expanding of the sub-

sidy's purpose has given the government tremendous latitude in pick-

ing and choosing which speech deserves to be heard by buying the

speaker's silence on a particular subject matter or viewpoint. De-

pending on the type of forum this may be tolerable in extraordinary

circumstances; however, when the government offers a subsidy and

encourages speech in a forum that has traditionally been a venue for

free and controversial expression, it is unconstitutional to require art-

ists to keep their views on particular subject matters silent in order to

qualify for the subsidy.

1.    Three Cases Set the Framework For Ambiguity

The classic unconstitutional conditions doctrine example is illus-

trated in Speiser v. Randall,"3 where a statute denied veterans a prop-

erty tax exemption if they refused to sign a declaration agreeing not to

advocate the forcible overthrow of the U.S. Government. In other

words, the subsidy at issue, tax-exempt status, was conditioned on the

veterans' waiver of their First Amendment rights. The Court stated

that "[t]o deny an exemption to claimants who engage in speech is in

effect to penalize them for the same speech.”’14 The Speiser court ex-

pressed “anger” over the government’s effort to coerce citizens.”‘

However, the problem with the Court’s analysis in Speiser and other

cases that have a coercive element in the subsidy is that “the Court

does not tell us when inducement becomes unconstitutional coer-

112 See, e.g., U.S. v. Kokinda, 497 U.S. 720 (1990); Cornelius v. NAACP Legal

Defense and Educ. Fund, 473 U.S. 788 (1985). These are cases in which the gov-

ernment defines the speaker’s messages as being outside the limited purpose of the

subsidized program.

… 357U.S. 513 (1958).

114 Id at 518. Furthermore, Justice Black stated in his concurring opinion, “I am

convinced that this whole business of penalizing people because of their views and

expressions concerning government is hopelessly repugnant to the principles of

freedom upon which this nation was founded.” Id. at 531 (J. Black, concurring).

II See Winters, supra note 90, at 143-44.

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cion.””16 After Speiser, the standard for unconstitutional conditions

was as unclear for lawmakers as it was for courts.

Then, in Regan v. Taxation With Representation (“TWR”),117 the

Court found that the Spieser model did not fit and that unconstitutional

conditions did not exist. In TWR, the government conditioned a fed-

eral tax exemption for contributors to non-profit corporations on their

agreement to waive their right to lobby the government.”8 Similar to

the statute in Rust, which did not prevent family planning centers from

speaking about abortion in an entirely separate non-subsidized facility,

the plaintiffs in TWR were allowed to lobby under the condition that

they keep separate books for tax-exempt and non-tax-exempt activi-

ties. In addition, the plaintiffs were to create a separate non-tax-

exempt affiliate for lobbying purpose. However, as discussed in Part

II(A), the problem with both of these options is that the cost to the

speaker is often too great in order to both qualify for the subsidy and

to exercise their First Amendment rights.

The Court maintains that a plaintiff does not have a property inter-

est in the funds that are necessary for the speaker to fully exercise her

First Amendment rights.”‘ However, in the context of art subsidies, it

is unnecessary for the artist to show a property interest in an NEA

grant when the denial of the subsidy is based on the speaker’s view-

point. Furthermore, if the right-privilege distinction were valid, this

Comment might not be written if the government were permitted to

condition law students’ receipt of federal funds on their agreement to

only write positive Comments about government statutes and policy.

`20 “After all, there is no right to a Stafford or Perkins loan; it is a

privilege.”” Lastly, the Court in TWR construed congressional inten-

.6 Id. at 144. Winters asserts that the coercion analysis is unhelpful in unconsti-

tutional conditions analysis because of the “difficulty of adequately defining coer-

cion and when it reaches intolerable levels, [and] considering the multitude of situa-

tions in which beneficiaries are induced [in order] to alter their exercise of preferred

liberties.” Id. at 145.

117 461 U.S. 540, 549 (1983).

“1 Id.

1 Id.at550.

120 See, Michael J. Elston, Artists and Unconstitutional Conditions, 56 LAW &

CONTEMP. PROBS. 327, 341 (1993).

121 Id.

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tions as not coercing plaintiffs into relinquishing their First Amend-

ment rights, but only preventing the use of public funds for lobby-

ing.'22 TWR showed that the Court will look at both the legislative

history of the statute, to assess whether Congress intended to restrict

the affected groups First Amendments rights, as well as at the eco-

nomic feasibility of separate facilities.'23

Finally in Federal Communications Commission. v. League of

Women Voters.24 ("FCC') the Court decided that forcing an entity to

use private funds to segregate their activities in order to exercise their

First Amendment rights was unconstitutional.'25 The Court found the

government imposed an unconstitutional condition by prohibiting

editorializing by public broadcasters who received federal funds. FCC

is distinguishable from TWR because in TWR it was at least economi-

cally and structurally feasible for the plaintiffs to set up a separate tax-

exempt lobbying affiliate with minimal administrative burden. In

FCC, however, it was economically and structurally improbable to

create two broadcast stations because the structure of the public broad-

casting subsidy prevented all editorializing even if the station only re-

ceived one percent of their income from federal subsidies. Thus,

where it is improbable and overly burdensome to require a separate af-

filiate for true expression of free speech, the Court appeared to hold

that this is an unconstitutional condition.

122 Regan, 461 U.S. at 545. The Court further stated that "[i]t is not irrational for

Congress to decide that tax exempt charities such as TWR should not further benefit

at the expense of taxpayers at large by obtaining a further subsidy for lobbying.” Id.

at 550.

23 Blackmun reinforces the majority’s holding and cautioned Congress that

“[s]hould the IRS attempt to limit the control these organizations exercise over the

lobbying of their [non-subsidized] affiliates, the First Amendment problems would

be insurmountable …. [s]uch restrictions would extend far beyond Congress’ mere

refusal to subsidize lobbying.” Id. at 553 (Blackmun, J. concurring).

124 468 U.S. 364 (1984).

125 Id.

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2.    The Reoccurring Problem of Rust

The Supreme Court essentially endorsed the “separate affiliate”’26

argument in Rust and used it to rationalize the restrictions set forth in

Title X funding. The Court reasoned that when restrictions on speech

lie within the confines of a government-funded program and the re-

striction does not prevent the speaker from operating unrestricted on

their own time, then unconstitutional conditions do not exist.’27 Since

the Court avoided a true discussion of unconstitutional conditions, the

economic feasibility of creating a separate affiliate was not even con-

sidered. Rust appears to stand for the proposition that the government

can use its economic power to skew political debate and to influence

the way citizens exercise their constitutional rights without feeling

wrath from the courts.

C.    Finley v. National Endowment for the Arts

As discussed, Karen Finley and four other performance artists filed

suit in federal district court against the NEA claiming that denial of

their grant proposals violated their right to free speech and that the

“decency and respect” provision of the NEA amendment was uncon-

stitutional. Finley is a solo performance artist whose art has involved

her stripping herself naked and smearing her body with chocolate to

express the subordination of women in society. Despite the fact that

the Performance Artists Peer Review Panel unanimously approved all

four artists in Finley, the NEA refused to grant them funding.’28 The

artists claimed that in 20 U.S.C. � 954(d)(1), the “decency and re-

spect” provision was “impermissibly vague and imposed [viewpoint-

based] restrictions on protected speech””29 The statute required that

grant applications be judged “taking into consideration general stan-

126 See Winters supra note 90, at 153 (“The separate affiliate doctrine essentially

embodies the principle that recipients of a subsidy may not be forced to give up ex-

ercises of rights that are funded through wholly private sources. The subsidy must

be narrowly tailored so that it is not withheld from those who would qualify but do

not meet the subsidy characteristic when they use private funds.”).

127 See Rust v. Sullivan, 500 U.S. 173, 196-199 (1991).

128 Finley v. National Endowment for the Arts, 795 F. Supp. 1457, 1462 (C.D.

Cal. 1992), aff’d, 100 F.3d 671 (9th Cir. 1996), cert. granted, 118 S. Ct. 554 (1997).

129 Id. at 674.

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dards of decency and respect for the diverse beliefs and values of the

American public."'"3    In denying the NEA's motion for summary

judgment the district court stated that, contrary to the NEA's reliance

on Rust,"3' Rust does not allow the government to condition the receipt

of NEA grants on the artist agreement to waive their First Amendment

right to free speech or expression.132 Instead, District Judge Tashima

categorized art as a "traditional sphere of free expression"'33 for which

Rust requires heightened scrutiny.'34 The federal district court then

proceeded to strike down the "decency clause" as overbroad, stating

that the only permissible content-based restriction is "artistic merit."'35

The Ninth Circuit affirmed the district court's decision in a 2-1

vote, restating that viewpoint neutrality is essential to the forum of art

because it is a "traditional sphere of free expression"'36 and has long

been "one of many protected forms of speech."'37 Furthermore, the

court struck down the "decency and respect" provision stating that the

provision constituted viewpoint discrimination'3' and was vague. This

resulted in a "chilling effect"'39 on artistic expression. The court chose

to apply the broad interpretation of viewpoint discrimination in Ro-

senberger,'40 finding that the "decency and respect" provision violated

the neutrality that is required in the NEA's funding of artistic expres-

sion."41 When the government funds speech it is prohibited from exer-

cising "control [over] the content of [the funded] speech.”’42 Addi-

130 See 20 U.S.C. � 954(d)(1) (1994).

13′ See Daniel Mach, Note, The Bold and the Beautiful: Art, Public Spaces, and

the First Amendment, 72 N.Y.U. L. REv. 383, 413, 418-19 (1997) (noting that “[tihe

NEA had argued [in the district court case of Finley] that Rust had cabined the ‘un-

constitutional conditions’ doctrine to such an extent that federal arts grants were

now immune from [Finley's] challenges.”).

132 Finley, 795 F. Supp. at 1473 (quoting Rust, 500 U.S. at 200)

113 Finley, 795 F. Supp. at 1464.

114 Id at 1473 (quoting Rust, 500 U.S. at 200).

“I’ See id. at 1475-76.

136 Finley, 100 F.3d at 681.

131 Id. at 675.

’38 See id. at 683-84.

139 See id. at 675.

140 See supra Part II(A).

141 See id. at 683.

142 Finley, 100 F.3d at 681.

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tionally, the Court was not persuaded by the NEA’s argument that art-

ists do not have a property interest in the NEA grants. Nor was it con-

vinced that, due to the limited nature of the grants, the “decency”

clause is necessary to aid the decision-making process.’43 The Ninth

Circuit reasoned that even though the artists “do not have a property

right in the grants[,] they are protected by the due process clause from

arbitrary and discriminatory enforcement of vague standards” when

First Amendment freedoms are at stake.’44 Furthermore, in response to

the NEA scarcity argument, the court adopted the Rosenberger ration-

ale, stating that “the scarcity of a government benefit does not render it

immune from constitutional limitations.”’145

The NEA also argued that the “decency” provision was not uncon-

stitutional because the Chairperson was not required to use the provi-

sion in judging the art.146 However, the court disagreed and found that

Congress did not simply intend for the Chairperson to “tak[e] into

consideration” the “decency and respect” clause in evaluation of grant

proposals.’47 Rather, the court interpreted the clause as a mandatory

criterion along with “artistic merit” and “artistic excellence” with

which all grant proposals must be judged.’44    The “decency and re-

spect” provision was amended to 20 U.S.C. � 955(d) in order to solve

the problem of funding “controversial” or “indecent” artwork.’49 Thus,

Congress would not have effectively solved the controversy by merely

urging that the Chairperson “tak[e] into consideration” the new provi-

sions.’5�

141 See id. at 674-77.

’44 Id. at 675.

’41 Id at 675 (citing Rosenberger v. Rector & Visitors of the Univ. of Virginia,

515 U.S. 819, 835-7 (1995)).

146 Id. at 676.

147 Finley, 100 F.3d at 676.

141 Id Furthermore, the court stated that the Chairperson does not have discre-

tion in the amount of weight given to the “decency and respect clause,” and that

“[the clause] actually restricts the Chairperson’s discretion by requiring him or her

to judge applications according to standards of ‘decency and respect.”‘ Id

149 Id at 677.

150 Id.

The dispute was not over whether NEA should be free to fund indecent or disre-

spectful art, but over the way in which the new limitation would be imposed:

whether Congress should specify categories of art that could not be funded or in-

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In finding that the "decency and respect" provision was void for

vagueness, the court explained that a vague statute created a "danger

of arbitrary and discriminatory application."'' Because the provision

does not specifically define a standard of conduct, it violates artists'

due process rights by requiring them to guess at what "decency" and

"respect mean."'52 The court stated that "[t]hese terms are inherently

ambiguous, varying in meaning from individual to individual,” and

that society is too large to ascertain the content of the phrase “diverse

beliefs and values of the American public.”’53 The provisions’ vague-

ness creates a situation where the decision to fund a particular artist

lies with the “subjective beliefs and values” of the judge and whether

or not the artist’s view comports with that of the judge.’54 This sub-

jectivity creates an environment where “funding may be refused be-

cause of the artist’s political or social message or because the art or the

artist is too controversial … Where First Amendment liberties are at

stake, such a grant of authority violates fundamental principles of due

process.”’5  The U.S. Supreme Court has granted certiorari to Finley,

and the fundamental issues brought to the spotlight in this case and the

effect it will have on the First Amendment will be decided in Summer

of 1998.

1.    The Government’s Argument

The government’s certiorari petition maintains that the Ninth Cir-

cuit’s decision in Finley prevents Congress from making legislative

decisions regarding expenditures of public funds that are properly

struct NEA to consider general standards of “decency and respect” in judging the

artistic merit of a grant application. Congress settled on the latter approach.

Id. Additionally, the court reasoned that in drafting the provision Congress specifi-

cally wanted to avoid the vagueness problem created by the Federal Communication

Commission’s definition of an “indecent communication.” Id. at 678-79.

151 Finley, 100 F.3d at 679-81.

52 Id. at 680.

153 Id

’14 Id. at 680-81.

155 Id

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within its powers granted by the Constitution. 156     The government

further claims that the Chairperson has much more latitude in the grant

decision than the Ninth Circuit reasoned and that ultimately the Chair-

person is not required to reject all grant proposals which do not meet

the “decency and respect provision.”’57

The petition states that not all government funding of the arts

needs to be viewpoint neutral to be constitutional.’58 The petition ar-

gues that the “decency and respect” provision can be construed as

“aesthetic concepts” or guidelines for artists applying for grants.159 In

this context, the provision merely regulates “mode or form” and not

the content of the expression the artist is attempting to convey.’60

The government argues that the Ninth Circuit misapplied the

Court’s reasoning in Rust and Rosenberger to the NEA grant program

because it relies on legislative aesthetic criterion as a basis for award-

ing financial assistance to artists. The government argued that in Rust

the Court reasoned that when a government sets aside public funding

for a particular program it has the right to impose limits as to the pur-

pose of the program.16′ The government similarly reasons that the

NEA was set up to fund art and is ultimately forced to make content-

based decisions because it has a limited amount of grants to award to a

156 Department of Justice’s Petition For a Writ of Certiorari at 15, Finley v.

NEA, 100 F.3d 671 (9th Cir. 1996) 66 U.S.L.W. 3171 (No. 97-371) (Aug. 29,

1997).

117 See id. at 17-18, Finley (No.97-371). However, it must be noted that the

Chairperson’s tremendous discretion may result in viewpoint discrimination in

which he may conveniently justify the rejection or grant of a fellowship under the

pretext of meeting Section 955(d)(1):

Even worse, sympathetic judges may ignore the government’s blatantly viewpoint-

based judgments by recharacterizing the state’s reasons for regulating works of art.

� . When this conclusion, however, is coupled with claims that the work is suffi-

ciently “controversial,” “Offensive,” [] “inappropriate” [or does not adequately

comport with the standards of decency and respect] to merit [a fellowship] courts

should cast a suspicious eye.

See Mach, supra note 131, at 413-14.

158 See Department of Justice’s Petition at 18, Finley (No. 97-371).

159 Id.

160 Id.

161 Id

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potentially unlimited amount of artist'62 The government concludes

that these "content-based" decisions are permissible under the First

Amendment according to Rust'63 under which "Congress may fund the

artistic activities that it believes should be encouraged in the broader

public interest through the application of aesthetic and related criteria

for awarding grants."'64 Thus, the government is asking the Court to

apply lesser scrutiny as in Rust.

The government's petition distinguishes the situation in Rosenber-

ger from the NEA grant scheme because government subsidization of

art does not create a public forum and the Ninth Circuit's application

of Rosenberger is impermissibly broad.'65       The government reasons

that public subsidization of student-run publications creates a type of

public forum where viewpoint discrimination is intolerable, whereas

NEA positive subsidies166 that are not awarded do not create a public

forum.'67 The government further argues that the Court in Rosenber-

ger addressed a particular problem in a specific funding situation. The

petition distinguishes the NEA's denial of grants from the situation in

Rosenberger because the student newspaper in Rosenberger was spe-

cifically denied funds based upon its promotion of religious beliefs.

162 See id. at 19. It is questionable whether these content-based decisions were

as frequent or permissible before the early 1990's when the NEA's budget was sig-

nificantly greater.

163 See id. at 20 (quoting Rust v. Sullivan, 500 U.S. 173, 194 (1991)) ("To hold

that the Government unconstitutionally discriminates on the basis of viewpoint when

it chooses to fund a program dedicated to advance certain permissible goals, because

the program in advancing those goals necessarily discourages alternative goals,

would render numerous government programs constitutionally suspect.").

164 Id. at21.

165 See id. at 22-24.

66 See Redish & Kessler, supra note 11, at 559:

It is tempting to argue that the government does not abridge freedom of speech

when it funds expression in a positive, rather than a negative, manner .... [tradi-

tionally] positive subsidies do not reduce the sum total of expression …. [However

t]he government’s decision to subsidize an [artist] can nevertheless amount to an

abridgment of speech because such a decision may artificially skew a public debate

by inducing some who otherwise would have taken a contrary position (or would

have chosen not to speak at all) to support the government’s views. Such a result

undermines both the communitarian and the autonomy values conceivably under-

lying the First Amendment.

167 Department of Justice’s Petition at 22-23, Finley (No. 97-371).

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The NEA, however, denied Finley and other artists grants because

they did not meet the standards of “decency and diverse values and

beliefs,” a threshold criterion now included in “artistic excellence and

merit.””68 The government asserts that the NEA does not “single out”

any specific artistic expression or interpretation in its refusal to fund a

grant proposal.’69 Lastly, unlike the public forum created by subsidi-

zation of student groups in Rosenberger, the NEA grants are awarded

through a highly selective process that funds “specific artistic catego-

ries.’”170

IV. ANALYSIS OF THE PROBLEMS CREATED BY THE CURRENT NEA

GRANT PROVISION

A.    Vagueness & Overbreadth

A statute is vague when the average person of ordinary intelligence

is uncertain of the meaning of certain provisions within the statute. A

statute is overbroad when it may be interpreted to apply in more situa-

tions than the legislator originally intended, resulting in inconsistent or

arbitrary application. Vagueness and overbreadth are unconstitutional

limits on free speech because they violate a citizen’s due process right

by failing to give notice of how to conform speech to the statute. The

NEA’s “decency and respect” provision creates this same danger and

is, therefore, unconstitutionally vague and overbroad.

The “decency and respect” provision is vague because it leaves

artists unaware of the type of art that is acceptable to be funded. It is

completely unintelligible what “decent” and “respectable” mean in the

context of art. The question of how to define art is not one that is eas-

ily answered, but standards of decency and respect are too subjective

criteria to be useful to artists. Throughout the centuries many artists

and works of art have been plagued by accusations of indecency, only

to be acclaimed by future generations as genius and quite “decent” and

16S See id. at 22.

169 Id.

70 See id. at 22-23.

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"respectable."''  Thus, art that may in fact be "decent" and "respect-

ful," and thus fundable, may be left unexecuted because of the artist's

fear and lack of understanding of what those terms mean as applied to

her artwork.

Contrary to the dissenting argument in Finley, which stated that

the "decency and respect" clause is no more vague than the original

standards of "artistic merit and excellence,"''72 the "decency" provision

attaches a tone of moral disdain to the Panel's evaluations of art that

the old provisions did not.'73 Furthermore, it has been argued that "de-

cency" is a political term, like that of "family-values," which allows

government to impose viewpoint-based judgments in order to suppress

unpopular expression.'74 In the context of the NEA grantmaking pro-

visions, the legislators never attempted to define what "decent" meant,

whereas in other contexts, such as the FCC indecency statutes, the

legislature defined "indecency.''17' This shows Congress's lack of pre-

171 Examples of so-called "indecent" art are: (1) "The Origin of Man"; (2) many

of Picasso's works; (3) Feminist art of the 60's and 70's which, it can be argued, be-

cause of its extreme nature has shocked and shamed the world into acceptance of a

greater role for women in society.

172 Finley v. National Endowment for the Arts, 100 F.3d 671 (9th Cir. 1996)

(Klienfeld, J., dissenting), cert. granted, 118 S. Ct. 554 (1997).

173 Furthermore, unlike the artistic excellence requirement, the "decency" provi-

sion has been determined to be an unconstitutional criterion for judging grant pro-

posals in other circuits, as well as in the Ninth. See Advocates for the Arts v. Thom-

son, 532 F.2d 792 (1st Cir. 1976), cert. denied, 429 U.S. 894 (1976).

174 See DeGrazia, supra note 30, at 167; Bollinger, supra note 15, at I111-12

(analyzing the limits of government power to control the NEA when the subsidize its

existence).

'7 Several cases allow a two-tier approach to protecting first Amendment

speech. Speech at the core of the First Amendment receives full constitutional pro-

tection such as true political speech or criticism of government. Whereas speech

that receives less protection is at the periphery of the First Amendment, such as "of-

fensive" and "indecent speech." See Young v. American Mini Theatres, Inc., 427

U.S. 50 (1976). "Offensive" and "indecent" speech receive less protection because

they are of little social value and thus their restrictions are usually aimed at secon-

dary effects (e.g. protection of children). See FCC v. Pacifica Foundation, 438 U.S.

726 (1978). However, unlike the NEA's "decency and respect" provision, in cases

such as FCC v. Pacifica Foundation and Sable Communications, Inc. v. FCC, Con-

gress at least attempted to define what "decency" meant and thus avoided vagueness

problems.

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cision in reasonably tailoring the restriction on funding art. The word

“decent” is inherently subjective and ideas about what is “decent” vary

across the nation as much as they have across the centuries. Cultural

upbringing, familial rearing, and personal taste, among other things,

form one’s beliefs of decency and respectability. Some people in parts

of the nation believe that any paintings or portrayals of humans in the

nude are indecent, whereas other people have a higher tolerance for

nudity and only find homoerotic portrayals to be indecent. Still others

may be offended by suggestive portrayals of clothed individuals.’76 It

is for this reason that the Miller test expressly rejected utilizing a na-

tional obscenity standard in favor of a community standards measure.

Yet, the legislators ignored the Miller mandate, and took it upon the

national government to be the arbiters of good taste. In direct opposi-

tion of Miller, the vague and overbroad decency and respect provision

creates a national “decency” standard.

“Artistic excellence” does not evoke vagueness problems under the

First Amendment because any selection process involving assessment

of quality requires professional judgment. “Artistic excellence” is a

permissible content-based regulation that sets a threshold for the qual-

ity of art funded.”‘ It connotes professional standards of quality, such

as time spent on detail, lighting, furthering technique, style, and use of

color or texture. Art experts use objective criteria regarding technical

and artistic excellence, as opposed to subjective moral judgments

about art’s content or viewpoint. Additionally, it has been argued that

the term “artistic excellence” can grow with artistic means of expres-

sion and “embrace new forms of art as they develop.”’78 To the con-

trary, the “decency and respect” provision enables the government to

silence the political debate which “controversial” art promotes.

In response to the controversy generated by the Mapplethorpe ex-

hibition and the Serrano photograph, the NEA has applied the decency

176 A 1996 Calvin Klein ad campaign portraying clothed teens in sexually pro-

vocative poses stirred up a national controversy regarding its prurient content.

’ See DeGrazia, supra note 30, at 151. “The injection of criteria for arts selec-

tion in the grantmaking process other than that of artistic excellence are at best invi-

tations and at worst commands for the NEA to discriminate in its grantmaking proc-

ess against an artist that produces or is likely to produce works that are

controversial.” Id.

171 Id. at 168.

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NEA "DECENCY AND RESPECT"

provision too vigorously. It has excluded works that would not be

deemed legally obscene or indecent, but the views expressed in the art

leave Congress weary of voter retribution. Again, this allows Con-

gress to use government subsidies to circumvent the First Amend-

ment's protection against viewpoint-based discrimination.

B.    Chilling Effect

When the vagueness and overbreadth of the "decency" clause is

combined with the increased deterrent of being denied a grant and re-

ducing the chance of private funding, a chilling effect on artistic ex-

pression occurs. Artists will be likely to self-censor any work of art

which may be deemed "indecent." This gives the government the far-

reaching power of squelching expression before its inception. It is im-

practical to suggest that an artist may separate his artistic work into

"decent" and "indecent." Furthermore, because the definition of what

type of art is "indecent" is so inherently subjective, as discussed

above, an artist who photographs her naked body adorned with mud

might not see the expression as "indecent." However, a more conser-

vative individual who believes that the only time people should be na-

ked is in the privacy of their own home, would definitely find this ex-

pression "indecent." Because the NEA's peer review panel is now

composed of lay people, instead of professionals from the private art

community, an artist like Finley, struggling to receive a grant from the

NEA may never even participate in potentially controversial expres-

sion for fear of being judged "indecent."

An artist whose work is denied a grant because it is deemed "inde-

cent" or controversial may be subjected to further repercussions:

[G]overnment patronage has become an imprimatur of quality. Muse-

ums and collectors favor NEA grant recipients, not because they agree

with the viewpoint orientation required by law, but because the NEA is

recognized and respected for identifying artists who produce works of

exceptional quality. Artists ineligible for NEA funding because of the

views their works express may, therefore, find their expressive opportu-

nities more limited than [if] government never supplemented private

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support, regardless of whether the artists even apply for NEA

grants. 179

Thus, because NEA grants act as catalysts for an artist's career, a

rejection, or more severely, a revocation of an NEA grant can finan-

cially and creatively ruin an artist's career."'8 The effect then is to pre-

vent artists from making cutting-edge art for fear that the government

will find it "indecent" and ruin their, reputation, career, and possible

livelihood."''

"7  See Hawthrone, supra note 42, at 441. Hawthrone further asserts that

"[p]rivate funds that, but for government funding, would have been available to the

creator of disfavored artworks can become unavailable by virtue of the expansive

reach of the NEA’s regulations.” See id. at 443.

180 This is supported by Hawthrone’s assertion that:

[t]he NEA plays a crucial role in soliciting private funds for arts institutions. It is

extremely difficult for an arts institution to obtain private support in the absence of

government’s seed money or “stamp of approval,” especially if the institution is

competing for scarce private charitable resources with other institutions that receive

governmental support. Facing such competition, a museum will most likely either

be discouraged from pursuing its course of exhibiting disfavored [or controversial]

art works or find its resources-and therefore its expressive opportunities-severely

limited relative to both its peers and what its own position would be in an art world

without governmental intervention.

Id. at 447-48.

18′ The counter-argument is that artists like Mapplethorpe, Serrano, and Finley

have become infamous media and free speech icons as a result of the NEA’s rejec-

tion of their work. However, this is a faulty argument in that there are no available

records to account for the numerous (possibly thousands) of artists whose careers

have been ruined or unrealized because of the NEA’s rejection of their grant pro-

posal.

NEA “DECENCY AND RESPECT”

The government’s rationale that artists are not being suppressed

from expressing these indecent or controversial ideas because they

may do so without government subsidies is also impractical and unre-

alistic. An artist cannot be expected to divide himself “into a Dr.

Jekyll who produces acceptable art when using federal funds, and a

Mr. Hyde whose creativity [rages] freely while using private funds.”’82

Because of the “decency and respect” provision is vague as to what

type of art may be funded, it “unquestionably silences some speakers

whose messages would [otherwise] be entitled to constitutional pro-

tection.””83

1.    NEA Chairperson Has Unbridled Grantmaking Discretion

Because the Chairperson has unbridled discretion in his application

of the “decency and respect” provision, the grantmaking process is

prone to arbitrary decisions based on external factors beyond the art-

ist’s control. Similar to statutory licensing ordinances, when the per-

son granting the permits or licenses has unbridled discretion without

adequate procedural safeguards, the statute is arguably unconstitu-

tional as a prior restraint.”4 The speaker’s message lacks adequate

protection and risks being silenced before any evaluations on his mes-

sage can be formed. This is tantamount to censorship.

Even though the NEA’s Panel and the National Council on the

Arts have votes, and make their recommendations to the Chairperson,

he or she ultimately retains the power to refuse to fund the art for rea-

sons unrelated to artistic excellence or decency.’85 Additionally, the

Chairperson is an appointed position which in recent years has been

subjected to external political pressure from Congress which threat-

ened to cut the NEA’s budget if it persisted in funding controversial

82 See DeGrazia, supra note 30, at 169.

183 Reno. v. American Civil Liberties Union, 117 S. Ct. 2329, 2346 (1997).

184 See Forsyth County v. The Nationalist Movement, 505 U.S. 123 (1992) (the

ordinance gave unbridled discretion to the administrator in deciding how much to

charge); see also City of Lakewood v. Plain Dealer Publ’g Co., 486 U.S. 750 (1988)

(municipal ordinance placed no limits on Mayor’s ability to grant permits for news-

paper vending machines).

’85 The only procedural safeguard is the artist’s right to appeal the decisions in

which they still bear the burden of proving to the Chairperson that their work is “de-

cent” and meets all statutory requirements.

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art. This political pressure is evidenced by Chairperson’s warning to

the Council and Panel that their endorsement of the Finley Four might

result in the termination of the NEA’s budget.116 The Chairperson then

used his unbridled discretion to deny the artists’ grants regardless of

the Council’s and Panel’s endorsement. In this instance, the equal ac-

cess principles that are integral to a content-based subsidy offered to

artists have been undermined, and the choice to deny access to the

subsidy because of the speaker’s message was made by one person.

The Chairperson is not entirely to blame because she is simply

trying to keep the NEA afloat. It is Congress that has given the NEA

the subjective, overbroad, and vague criteria. The NEA Chairperson

has ultimate discretion in determining grants, and she must shoulder

all responsibility in front of Congress. Perhaps one way to strengthen

the NEA and protect free speech is to give more credibility to the ar-

tistic decisions of the Peer Review Panel and the Council. The Chair-

person’s unmatched power would not be as capricious and there may

develop strength in favor of truly free artistic expression if, for in-

stance, the Panel and council could override the Chairperson’s deci-

sion with a majority vote. This would ensure that the grantmaking

standards were not being applied in an arbitrary manner. Furthermore,

an overriding vote measure would ensure that Panel members, if they

are highly respected professionals in the art community, are receiving

the deference they deserve in deciding what is both excellent and “de-

cent” art. Without at least this type of safeguard the Chairperson is

still left with unfettered discretion, to face Congress alone, and to at-

tempt to guess what Congress meant by the vague and ambiguous

terms “decent” and “respectable.”

The provision should be struck down because the “decency” provi-

sion is vague, the NEA Chairperson wields unbridled discretion in ul-

timately awarding grants, and the grantmaking process lacks sufficient

institutional safeguards. The only valid governmental interest in cre-

ating the “decency” provision is that taxpayers would not be required

to fund art or expression which they find offensive or indecent. If the

governmental interest applied to a more limited subject matter or non-

public fora it might be compelling. However, art has long been a tra-

ditional forum of free expression that appeals to both emotional and

186 See supra Part 11(B) text and accompanying note 57.

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NEA "DECENCY AND RESPECT"

political ideologies. The interest in keeping art free from restrictive

political thought far outweigh any secondary interest in allowing the

taxpayers or one particular audience to decide what expression is ac-

ceptable enough to be funded and which is not. This arbitrary funding

power could result in a "Heckler's Veto,"'87 by allowing the taxpayers

to silence artists by denying them funding simply because they dis-

agree with the artist's views.

C.    NEA Grantmaking Statute Imposes Unconstitutional Conditions

As the grantmaking process now stands, any artist who hopes to

qualify for an NEA grant must give up her constitutional right to freely

express herself. Through the grantmaking decision process, the NEA

retains unwarranted power over the artist. Not only does the NEA re-

tain the power of the purse in determining how much subsidization the

artist's idea receives, but the greater and more permanent power to

make or break the artist's career. As previously discussed, NEA

grants act as a springboard for artists' careers through the significantly

increased chance for private funding. This private funding may never

be realized if the artist chooses to embrace his First Amendment right

to free speech when applying for a grant. The counter-argument is that

artists are always free to express themselves in every offensive way

known to man as long as it is without federal funding. However, as

previously argued, the NEA has become such a substantial source of

funding for artists that denial of a grant greatly reduces an artist's ex-

posure and ultimately burdens the artist's ability to contribute her idea

or viewpoint to the marketplace altogether.

When deciding whether a provision creates an unconstitutional

condition it is necessary to closely scrutinize legislative intent in

drafting the statute.88 Two factors reveal the legislative intent: (1)

whether the statute is aimed at restricting a group's First Amendment

'7 See Feiner v. New York, 340 U.S. 315 (1951) (speaker was silenced when he

made a political speech to a racially-mixed crowd because the police were afraid

they would be unable to control the crowd). See also Cox v. Louisiana, 379 U.S.

536 (1965) (conviction of speaker for disorderly conduct reversed because the Court

determined that police could have controlled the crowd).

... See supra Part III(B) (TWR shows that the Court will look at both congres-

sional intention and whether the provision is aimed at restricting free speech.).

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UCLA ENTERTAINMENT LAW REVIEW

rights; and (2) whether dividing the speech into subsidized and unsub-

sidized speech is economically and practically feasible. In the case of

NEA grants, the legislative history discussed in Part II shows how

Congress repeatedly tried to gain more control over the message an

artist conveys when she receives federal money. All the proposed

amendments to the NEA’s grantmaking statute prior to the “decency

and respect” provision came as direct result of congressmen and their

constituents being offended by controversial messages of NEA funded

artists. Without first determining whether the NEA statute was con-

stitutional, as was their duty, the Congressmen drafted statutes that

violated artists’ First Amendment rights in an effort ensure their

elected positions. The amendments prevented the NEA from funding

controversial artists and reduced the sum total amount of speech in the

marketplace that is believed to be controversial or offensive. The

problem with Biaggi’s proposed amendment in 1986, and Helms’s

amendment in 1989, was that the amendments were too revealing of

the legislator’s true intent – silencing offensive or controversial

views with which they disapproved. Thus, the “decency and respect”

provision was passed in 1990 because it better concealed congres-

sional intent to control artists’ speech.

With respect to the second prong of legislative intent, it is imprac-

tical to expect an artist to divide his or her expression into works that

are fundable and “decent,” and “indecent” works that are non-

fundable. As discussed in Part IV(B), unlike a lobbying group’s abil-

ity to separate their lobbying into tax exempt and non-tax exempt ac-

tivities, artists’ speech is more creative and cannot be separated into

messages that are “decent” and “indecent” artwork. Oftentimes both

themes run parallel within the same work of art and are only discerni-

ble by the subjective viewer. For this separation to take place an artist

must evaluate and censor his artwork in his mind prior to creation and

decide whether a particular work of art might convey an “indecent”

message and would not be worthy of federal funds.

The level of governmental control over artistic expression might

be acceptable if it were proportionate to the amount of funding the

artist received. However, this is not the case. The NEA requires all

artists to meet the “decency and respect” provision in order to receive

any amount of federal funding. Thus, the Court’s reasoning in FCC v.

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League of Women Voters is applicable to NEA grantmaking provi-

sions. Recall that in FCC the Court found that it was unconstitutional

to force a person to build and finance an entirely separate broadcast af-

filiate solely to exercise their right to editorialize if they received one

taxpayer dollar to subsidized the broadcast station. Applying this rea-

soning to the NEA grantmaking provisions, it is unconstitutional to re-

quire any artist receiving one dollar of federal funding to conform all

artistic expression touched by the federal money to be subjectively

"decent" and "respectable." Because artists are unable to separate

their creative mind into "decent" fundable and "indecent" non-

fundable spheres, the government usurps the artist's constitutional

rights by restricting artistic expression protected by First Amendment.

D.    Viewpoint Discrimination

Whether the "decency and respect" provision imposes viewpoint

based restrictions on artistic expression is dependent on whether NEA-

funded artists are more similar to employees at a federally funded

family planning clinic or a student-run newspaper at a public univer-

sity. In the United States, at least, art has historically been a free fo-

rum of expression. In creating the NEA, Congress intended to encour-

age artistic freedom of thought, imagination, and political inquiry.

Therefore, artistic expression appears to be more similar to the unre-

stricted and potentially controversial viewpoints of students rather than

the predetermined speech at a family planning clinic which does not

counsel on abortion. The Supreme Court cannot address the issue of

restrictions on subsidized art without applying the viewpoint discrimi-

nation rationale in Rosenberger. However, the Court's holding in

Rust, that it is not viewpoint discrimination for the government to fund

a particular view without it being necessary to fund the opposite view,

must be distinguished from the NEA paradox in order for art to remain

a free forum of expression.

1.    Making Rust an Exception

The Court in Rust explicitly limited its decision and stated that its

holding was not applicable to universities or public fora which are tra-

ditional forums of free expression that encourage multiple view-

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points.”89 The question then becomes whether art is a traditional forum

of free expression and thus excluded from the holding in Rust. Be-

cause art is inherently diverse in viewpoints and fosters political, in-

tellectual and controversial ideas, it is taught in high schools and uni-

versities to broaden students’ minds.  Students of art gain new

perspectives on their world by having their perceived notion of what is

“decent” and “respectable” challenged.

Imagine you are a freshman at UCLA and attending your first lec-

ture of “Survey on Modem Art,” a General Education requirement.

The art history class is publicly funded and taught by Professor Albert

Boime,”’9 one of the most respected art historians in the country. The

lecture hall is filled with approximately 300 students and commences

with a slide presentation. The first slide is a black and white photo-

graph by Robert Mapplethorpe named, “Man in Polyester Suit.” The

photograph shows a man crossing the street. He is fully clothed ex-

cept for his fully erect penis hanging out his zipper. After the initial

shock wears off and a few students leave, the uneasy laughter subsides

and the next slide appears. This slide is a self-portrait of Map-

plethorpe, bent-over, garbed in leather chaps with a bullfighter’s whip

inserted in his anus. This photo is most likely “indecent” and “disre-

spectful” by the NEA standards. Professor Boime randomly calls on

student after student and asks, “what do you think?” and “how is this

art?”

Because art is a tool used to educate students at government subsi-

dized universities about the importance of freedom of expression and

challenging the norm, art itself must be unrestricted in its ability to

communicate its message to the audience, regardless of whether it is

subsidized. If government is permitted to restrict the message before it

is received by its audience, it artificially skews public debate. This, in

turn, reduces the message’s impact on other potential speakers in the

audience and inadvertently dissuades them from challenging current

political and social norms.

Rust is also distinguishable from Finley because the NEA subsidy

was created to encourage speakers to share multiple viewpoints on

189 Rust v. Sullivan, 500 U.S. 173, 200 (1991).

90 Albert Boime is an art history professor at the University of California, Los

Angeles and has published numerous works on both modern and postmodern art.

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multiple issues. This created a forum for artistic and public expression

to contribute to the marketplace of ideas. In contrast, the government

in Rust did not encourage or create a forum in which multiple view-

points were desired. The government created a restricted forum solely

for the purpose of fostering viewpoints other than abortion. In Rust,

the government sought doctors and medical staff whose speech was

limited to non-abortion related alternatives.'9' In Finley, artists were

sought for their creativity in addressing all issues of society - good

and bad, "indecent" and "decent," "respectful" and "disrespectful."

The Rust subsidy by definition created an identifiable closed forum to

which it was clear how admittance was gained. The speakers were

fully aware and able to conform their speech to the specified topics

such as, contraception, abstinence, adoption, and carrying a child to

term. The NEA subsidy by definition encouraged an open or at least

semi-open forum. However, when the government added a subjective

and vague standard for entry, through the "decency" and "respect"

clause, many speakers were excluded from the subsidy based on their

views. These views are the same views they were encouraged to con-

tribute. The two subsidies are distinguishable based on the goals they

aimed to achieve and the means chosen to achieve those goals. There-

fore, it would not be inconsistent for the Court to find that "decency"

provision is viewpoint-based whereas the Title X subsidy in Rust was

not.

One problem with the majority's decision that the subsidy in Rust

was not viewpoint-based is that they did not consider how burdensome

the restrictions were on the speaker to exercise their First Amendment

rights."'92 The Court never considered whether it was economically or

"9' Rust may be explained under the First Amendment doctrine of "government

speech" in which the government offers a subsidy to a private speaker to express a

particular viewpoint. In government speech situations the audience is able to dis-

count that the speaker is the government and not the individual speaking. When

these type of subsidies are questioned they are subject to rational review and are

valid as long as the funding is rationally related the government's goal. See gener-

ally Steven Shiffrin, Government Speech, 27 UCLA L. REv. 565, 611 (1980); Mark

Yudof, When Governments Speak: Toward a Theory of Government Expression and

the First Amendment, 57 TEX. L. REv. 863 (1979).

92 It may be argued that the Court's decision in Rust was severely flawed, and

given that the government offered subsidies to all other forms of information re-

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effectively realistic to create a financially and administratively sepa-

rate family planning clinic solely for the purpose of exercising the

doctors’ and staffs’ constitutional right to counsel patients about abor-

tion. Unlike Rust, the Court in FCC v. League of Women Voters took

into consideration the economic and administrative burden when inter-

est-balancing and found the burden on free speech was too great. A

possible reason the Court seemed to allow a viewpoint-based restric-

tion in Rust was because the case involved the highly charged issue of

abortion. For policy reasons, among others, the Court may have

wanted to avoid re-opening the floodgates to constitutional litigation

on abortion. It may also be argued that the Title X subsidy forced the

government to violate its mandatory viewpoint neutral stance. In or-

der for a government doctor to be content and viewpoint-neutral in

counseling pregnant women she must provide the patient with all fam-

ily planning options, including both childbirth and abortion. Even

though the Rust decision may seem flawed, it is still valid law. Thus,

Finley must be excluded from Rust’s applicability in order to be up-

held.

2.    Under Rosenberger the “Decency and Respect” Provision is

Viewpoint Discrimination

The facts in Rosenberger that led the Court to find viewpoint dis-

crimination in the university’s policies are readily analogous to the

“decency and respect” provision of the NEA’s grantmaking statute. In

Rosenberger, the subsidy at issue, a student activities fund, was made

available to all student newspapers without a religious view. The

Court held that the university discriminated based on viewpoint be-

cause by not funding religious newspapers it was choosing a secular

perspective over a religious one. Under the “decency and respect”

provision the NEA is forced to choose “decent” or “respectable” artis-

tic viewpoints over the subjectively judged “indecent” or “disrespect-

garding family planning besides abortion, the statute was, in fact, viewpoint-based.

“The very description of the subsidy program as a means of disseminating informa-

tion concerning family planning methods other than abortion inescapably reveals the

viewpoint-based, selective nature of the subsidy, and makes the program unconsti-

tutional …. .” Redish & Kessler, supra note 11, at 576-77.

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ful" artistic viewpoints. Similar to the restriction in Rosenberger, the

"decency" provision is viewpoint-based because the NEA originally

offered the subsidy to works of art which reflect "artistic merit and ex-

cellence." The subsidy encouraged multiple viewpoints and perspec-

tives, even those which are subjectively "indecent" or "offensive," and

thus opened a broadly defined limited forum for art subsidization.'93

Therefore, the "decency and respect" amendment is arguably tar-

geted'94 at those expressions or viewpoints that are subjectively offen-

sive or indecent to a particular audience. Rosenberger holds that

viewpoint discrimination "against speech [or artistic expression] be-

cause of its message is presumptively unconstitutional, even

in… forums created by the [government].”’195 Because the NEA

grants act as a forum limited to all artwork which reflects artistic merit

and excellence, discriminating against messages within the limited fo-

rum by denying artwork subjectively determined to be “indecent” or

“disrespectful” is censorship. Under the “decency and respect” provi-

sion only those works of art which criticize the government in a “de-

cent” and “respectful” manner may be funded. Under this provision, it

is conceivable that a painting of a man tearing-up an American flag

could be funded. However, a painting of the same man, spiting or uri-

nating on the same flag would be denied access to the forum to convey

his message. This is viewpoint discrimination because the former art-

work conveys the same message as the latter-it is only the viewpoint

that proscribes the latter from being funded.

“‘  Rosenberger v. Rector & Visitors of the Univ. of Virginia, 115 S. Ct. 2510,

2517 (1995) (holding that when a university makes funds available to encourage

student expression, the university creates a limited public forum. “Once it has

opened a limited forum, however, the State must respect the lawful boundaries it has

itself set. The State may not exclude speech where its distinction is not ‘reasonable

in light of the purpose served by the forum,’ nor may it discriminate against speech

on the basis of its viewpoint.”)

94 See supra Part II(B). The congressional targeting is evidenced by the first

Helms’ amendment that focused particularly on sexual or homosexual viewpoints.

“When the government targets not subject matter but particular views taken by

speakers on a subject, the violation of the First Amendment is all the more blatant.”

Gay Lesbian Bisexual Alliance v. Pryor, 110 F.3d 1543, 1549 (1 1th Cir. 1997).

“  Gay Lesbian Bisexual Alliance, 110 F.3d at 1549 (citing Rosenberger v.

Rector & Visitors of the Univ. of Virginia, 115 S. Ct. 2510, 2516 (1995)).

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Art that is disliked because of its indecency or viewpoint does not

need to be censored by an amendment to the grantmaking provision in

order to be disapproved of or silenced. If the artwork is so disdainful

to a large majority of taxpayers and to the judges of artistic merit, it

will be silenced by the lack of financial interest it suffers after it has

been subsidized. After artwork has been subsidized by a NEA grant,

private funding takes over the subsidization process. If the work truly

is too terrible, indecent, or lacking in merit, no private entities will

show interest, and the artist will eventually receive the message that

her expression contributes little to the marketplace of ideas. The gov-

ernment may argue that the decency provision is viewpoint neutral be-

cause it prevents an entire class of indecent viewpoints from being

funded. However, this argument was explicitly rejected in Rosenber-

ger in that the marketplace of ideas would be easily skewed by the ab-

sence of such indecent viewpoints.

3.    The Political Lines Drawn in Rust and Rosenberger

The difficulty with analogizing the NEA’s grantmaking scheme to

either Rosenberger or Rust is that in both decisions the Supreme Court

was skirting around politically charged issues. Rust dealt with the

controversial issue of abortion, and Rosenberger concerned religion.

The Court’s decision in Rust was politically consistent with its previ-

ous decisions that burdened or highly restricted a woman’s right to

abortion.’96 It may also be argued that Justice Kennedy and his sup-

porters believe that the Supreme Court and most intellectuals have

been hostile toward religion. Thus, in Rosenberger, the Court may be

arguably straining to find viewpoint discrimination in the university’s

policies in order to support religion at the expense of possibly violat-

ing the Establishment Clause. As discussed previously, the artists who

were denied funding by the NEA in Finley were performance artists

196 See, e.g., Webster v. Reproductive Health Servs., 492 U.S. 490 (1989)

(holding that a state may prohibit all use of public facilities and publicly-employed

staff in abortions); Harris v. McRae, 448 U.S. 297 (1980) (upholding state’s right to

refuse to fund medically-necessary abortions); Maher v. Roe, 432 U.S. 464 (1977)

(holding that Connecticut could constitutionally refuse to give federal financing for

non-therapeutic abortions, even though it provided federal funding for the expense

of ordinary childbirth).

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exploring the topics of homosexuality and feminism. In a perfect ju-

risprudence system defending the First Amendment the Court should

never be convinced by their particular political stance on a controver-

sial topic. This is why the judicial system is supposedly insulated

from political and financial pressures - so that the justices may ana-

lyze the legal merits of a case and avoid political bias. However, even

the Justices are susceptible to moral pressure. The fact that in Rust the

Court came down against abortion, whereas in Rosenberger the Court

decided in favor of religion is likely not a coincidence. The fact that

Finley deals with homosexual and extreme feminist thought probably

will not help its valid constitutional cause. But, if the Justices do not

succumb to this pressure, they will rightly find the NEA's "decency

and respect" provision is a violation of the First Amendment.

E.    The Added Persuasion of Reno v. American Civil Liberties

Union

In Reno v. American Civil Liberties Union'97 the Supreme Court

unanimously struck down a congressional statute which attempted to

make all Internet communications "decent," unoffensive, and non-

obscene. Similar to the "decency and respect" provision in the NEA

grantmaking statute, Congress used the subjective criteria of "offen-

siveness" and "indecency" to restrict free speech on the Internet. Un-

like commercial speech or indecent speech in the presence of children,

artwork like cyberspace is a traditional forum of free expression and

has no history of lesser protection under the First Amendment. In

Reno, the Court stated that, "[although] society may find speech offen-

sive [it] is not a sufficient reason for suppressing it.” As discussed in

Part II(B), “offensiveness” was the precise concern of the legislature

when they amended the “decency and respect” provision to the NEA

grantmaking statute. Helms and his constituents comprised the “of-

fended” audience, and responded to the NEA’s funding of artists they

found offensive and indecent. Thus, they amended the grantmaking

statute to suppress all speech that might offend them, even though the

speech may be perfectly non-offensive and decent to others. Addi-

tionally, the NEA grantmaking statute prohibits funding “obscene”

197 117 S. Ct. 2329 (1997).

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material under the Miller test,”9′ which in Reno the Court said was a

permissible regulation. In Reno, the Court drew the regulatory line in

front of “indecent” material, as should have the legislature in formu-

lating the amendment to the NEA’s grantmaking statute.’99 In Sable

Communications of California, Inc. v. FCC the Court held that

“[s]exual expression which is indecent but not obscene is protected by

the First Amendment.”2,0    Furthermore, unlike the monopoly or scar-

city of broadcast frequencies in television or radio which the Supreme

Court used as its rationale to qualify the level of First Amendment

scrutiny applied in the FCC cases, no scarcity of fora exists in art.20′

F.     The Deception of Government Subsidization ofArt

Allowing the government to subsidize speech permits the govern-

ment to “artificially skew the debate on a particular issue and thereby

artificially shape public attitudes.”,202 Government subsidization of art

deceives the public into believing that the art is chosen because it is

the best representation of artistic expression. In fact, under the current

“decency and respect” standard, the art is chosen simply because a

group of politicians is not offended by its message. In the abstract, the

idea of government subsidization of a private individual’s artistic ex-

pression is an altruistic and benign thought. However, government

programs do not occur in a vacuum, and the recent politicalization of

the NEA and the grantmaking statute has put the government in the

position of determining what expressions of art deserve to have an im-

“’8 The test in Miller v. California, 413 U.S. 15 (1973), is:

(a) whether the average person, applying contemporary community standards would

find that the work, taken as a whole, appeals to the prurient interest; (b) whether the

work depicts or describes, in a patently offensive way, sexual conduct specifically

defined by the applicable state law; and (c) whether the work taken as a whole,

lacks serious literary, artistic, political, or scientific value.

Id. at 24 (internal quotation marks omitted).

‘”  Furthermore, the Court in Reno found that the Communications Decency Act

was vague because of the term “indecent.”

200 492 U.S. 115, 126 (1989).

201 Furthermore, since the focus of the “decency and respect” provision is to pre-

vent the funding of “lewd” or “indecent” artwork, the statute is presumptively at

odds with the First Amendment.

’2′ See Redish & Kessler, supra note 11, at 562.

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NEA "DECENCY AND RESPECT"

pact in the marketplace of ideas.2�3 The subsidization itself promotes

specific individuals' art and, in effect, facilitates and encourages their

expression. Because the government is awarding the grant to a third

person via the NEA, there is more danger of the government manipu-

lating public attitudes about art and skewing public debate. Further-

more, the government does this while disguising their censorship and

control behind the false rationale that an artist is simply not meeting

the NEA's criteria.

203 Id. Redish and Kessler are two legal theorists who provide convincing argu-

ments why government subsidization of speech is restrictive. They assert that sim-

ply because a government subsidy does not "physically prevent expression does not

mean that such [subsidies] fail to ‘abridge’ the free speech right.” Id. at 56. The

theorists further argue that:

[t]he government’s decision to subsidize an entity can nevertheless amount to an

abridgement of speech because such a decision may artificially skew a public de-

bate by inducing some who otherwise would have taken a contrary position (or

would have chosen not to speak at all) to support the government’s views. Such a

result undermines both the communitarian and the autonomy values conceivably

underlying the First Amendment.

Id. at 559. Lastly, Redish and Kessler argue that government subsidization of an

activity, such as art, should be deemed unconstitutional when a statute requires an

applicant to meet specific criteria such that when the “hazards of the government-

sponsored communication outweigh its benefits, the government improperly under-

mines First Amendment values.. . .” Id. at 564.

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At first glance, the government does not appear to violate the First

Amendment when it denies a grant proposal.2″4 The advocates of the

“decency and respect” provision point out that the government is am-

bivalent as to whether the speaker voices their views at all. In other

words, the argument is that the artist may forego applying for the

grant, and then their art will not be subject to whatever restrictions

they feel are oppressive.2″5 However, many art mediums, such as in-

stallation art and the performing arts, would become even less avail-

able to large audiences without governmental support. This is because

these types of art are labor-intensive and would thus need to charge an

even higher ticket price. Museums, galleries, and artists need govern-

ment subsidies to make up the difference for charging a price the pub-

lic can pay. This, in turn, allows the art form to be exposed to a

greater audience and not become centralized in the elite of society.206

Thus, government subsidies give more artists a wider platform to ex-

press themselves while simultaneously expanding society’s exposure

to new ideas and ways of thinking.

One problem with flushing out the true intent behind government

subsidies is that the government may often “seek to disguise what are

in reality viewpoint-based subsidies behind the mask of permissible

categorical subsidies.”,217 In this way, the government may subsidize

only the speech with which it agrees. The “mask of permissible sub-

sidy” has caused confusion among courts in distinguishing between

viewpoint-based and content-neutral restrictions. It may be argued

that the “decency and respect” provision is a viewpoint-based restric-

tion hidden behind the mask of the categorical subsidization of art in

general. The NEA may argue that the “decency and respect” clause

merely helps them choose amongst the abundance of well-qualified

grant proposals and is therefore a proper tool. However, in truth and

204 Id. at 559. This analysis might be totally the opposite when considering the

Mapplethorpe and Serrano situations, in which the NEA revoked the subsidy from a

particular expression protected by the First Amendment.

205 See id. at 553.

206 See DeGrazia, supra note 30, at 152.

207 See Redish & Kessler, supra note 11, at 570.

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in practice, the "decency and respect" clause allows the NEA to ex-

clude any art that may be deemed controversial.

As the Mapplethorpe, Serrano, and Finley Four incidents show,

"controversial" art in today's society typically involves sexual or ho-

mosexual themes or extreme feminist viewpoints. These are issues or

views of which the country's more conservative representatives and

their constituents disapprove as a result of America's puritanical influ-

ences. Thus, when stripped of all its deception, the "decency and re-

spect" provision allows the more conservative constituencies to pre-

vent sexual, homoerotic, or other similar controversial ideas from

being funded.

To make this point more clear, imagine, for example, if the Helms

Amendment either explicitly stated or was interpreted by the NEA to

mean that artists with liberal views on welfare or socialized medicine

could not be funded by NEA grants. Then, to underscore this fact, the

Republican Congress was able to muster enough votes to withhold that

portion of funding from the NEA budget which went to such artists'

views or constantly threatened to abolish the NEA if such views were

in fact funded. Perhaps this hypothetical Congress even went so far as

to come one vote short of abolishing the NEA in order to ensure com-

pliance. Recall that our Congress did exactly this when they drasti-

cally slashed the NEA's budget and forced the NEA to require all mu-

seums to return government funds that went toward "indecent" or

"offensive" exhibits. However, if the speech that Helms and his con-

stituency were trying to suppress was welfare or national health care

advocacy, the restrictions would clearly be rejected by the courts as

impermissible viewpoint-based discrimination.2"8 Free speech is free

speech. Welfare and health care are just as important to protect, and

are just as protected by the Constitution, as voices addressing sexuality

and feminism. The only limit that should be placed on such speech is

the legal limitation imposed by obscenity, not offensiveness, decency,

or respectability. The NEA is already bound by the laws on obscenity,

and the legislators are not even trying to use this legal means against

the Finley Four. Thus, looking at the Helms Amendment from this

20" Like everything else, this too is debatable. However, it is very likely that the

Supreme Court would not allow these partisan restrictions, so the analogy still holds

true.

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analogous but slightly different perspective, the absurdity and danger

the amendment poses to free speech in the marketplace of ideas be-

comes quite clear. Even indecent and unrespectable speech is consti-

tutionally protected2″9 and cannot be discriminated against based on

viewpoint.

V. APPROACHES TO SOLVING THE NEA’s CONSTITUTIONAL DILEMMA

A.    Artistic Excellence – The Better Standard

If the NEA grantmaking standard remained as originally drafted

the NEA could protect itself from government retribution by justifying

every grant with objective standards of “artistic excellence.” Under

the criteria of “artistic excellence,” the NEA merely made broad gen-

eral categorical-based subsidies. Once the agency attempted to ap-

pease Congress by specifying that the type of art that is to be awarded

grants must be “decent,” they differentiated the content of the grant

proposals on the basis of viewpoint. As a result, it is logical to con-

clude that “considerations of ‘decency’ are inherently unrelated to the

quality of the art”"2′ and counterintuitive to the idea of “free expres-

sion.” It is reasonable to believe that a person could find a work of art

to be artistically excellent and at the same time indecent. Map-

plethorpe’s work can arguably be assessed in this manner. His black

and white photographs portraying nude interracial or same-sex couples

reflect his undeniable expertise with lighting, the camera, texture, and

his ability to evoke emotion and communicate silently with the viewer.

The initial premise of the NEA was to subsidize art on the basis of

artistic excellence, to which notions of “decency” are unrelated. Un-

der the current statutory scheme that requires the Council to consider

“decency,” if one grant proposal is “decent” but less artistically excel-

lent than another “indecent” but artistically excellent grant proposal,

the art deemed “indecent,” even though superior in quality, will not be

209 See Sable Communications of Cal., Inc. v. FCC, 492 U.S. 115, 126 (1989)

(“[s]exual expression which is indecent but not obscene is protected by the First

Amendment …. ).

210 See Redish & Kessler, supra note 11, at 580.

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allowed to communicate its message.21 "[I]n such a situation a court

could properly conclude, as a matter of law, that Congress’s concern is

not with issues of artistic quality, but with wholly extraneous norma-

tive moral, social, and lifestyle judgments.,21′ The “decency” clause

extends far beyond permissible constitutional categorical-

based, content-neutral subsidies and actually skews public debate by

subsidizing and promoting only those artworks which are “decent” and

not necessarily of the highest artistic quality. Therefore, the better

standard, and the only standard Congress has created which is truly

workable and viewpoint-neutral, is that of “artistic excellence.”

1.    Government Retains Viewpoint-Neutral Control Over Art

This entire debate does not conclude that the NEA is incapable of

providing grants without violating the Constitution. On the contrary,

viewpoint-neutral decisions to fund particular categories or subjects of

expression are within the confines of the First Amendment.213   The

NEA could provide viewpoint-neutral subsidies by awarding grants to

particular categories of art, such as performance art, film, and musi-

cals, without assessing the “moral” appropriateness of the message or

subject matter. The criteria would be based on objective aesthetic val-

ues. However, when the government chooses to fund speakers on the

basis of their viewpoint, it violates the First Amendment under the

guise of neutrality.2″‘ It is vital to First Amendment values “to draw a

2.. Redish and Kessler argue that “if a particular applicant is denied [funding] on

the grounds that his art is gross or [indecent or] offensive, it would be effectively

impossible for a reviewing court to conclude, for constitutional purposes, that such a

judgment was substantially unrelated to the work’s artistic quality.” Id.

212 id.

213 Categorical subsidies involve government speech and the right to hire a

speaker to give a speech that expresses one particular viewpoint on one particular

issue. Furthermore, when these types of subsidies are questioned they are subject to

rational review and, as long as the funding is rationally related to the governments

goal (of funding particular type of speech), then the funding will pass review. How-

ever, it is notable that regardless of the constitutionality of the subsidization, both

viewpoint-based and categorical-based regulation reduce the “sum total of expres-

sion” contributed to public debate. Id. at 569.

2`4 Redish and Kessler deem this form of government subsidy presumptively un-

constitutional because the government dramatically skews public debate and under-

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line that allows government to subsidize speech in a categorical man-

ner but simultaneously denies it the power to subsidize on the basis of

viewpoint.”,215

B.    Abolishment of the NEA to Prevent Government Interference

Libertarians have always held First Amendment freedoms in high

regard and found that any government involvement in these freedoms

should be rejected. They argue that this is the only true way to prevent

government from censoring ideas that may be “controversial.” Even

though the NEA’s controversy may be solved by abolishing the pro-

gram, its void would leave the country artistically and culturally

empty.

Elizabeth DeGrazia, a law professor who supports reforming the

grantmaking statute, argues that “[g]ranted, the government’s funding

of art should be removed from political processes, however, it does not

necessarily follow that the only way to ensure this is for the NEA to be

abolished.”’216 As has been discussed throughout this Comment, under

the former “artistic merit and excellence” standards the NEA played an

integral part in expanding the marketplace of ideas. To simply destroy

the NEA would be to “throw out the baby with the bath-water.” In

other words, despite the controversy that plagues the NEA, it contin-

ues to do important work by funding even non-controversial programs

in small rural areas that otherwise could not exist.2″7 Thus, it should

mines the Fist Amendment by funding only those viewpoints it agrees with or de-

sires to promote within a particular category. Id. at 568. The theorists also ask the

question:

[W]hy [does] efficient representative government somehow requires the opportu-

nity to control the flow of debate among private [speakers] through the selective use

of viewpoint-based subsidies. At least as a general matter, government should be

able to operate effectively without the need to “deputize” private parties to foster

government views and positions.

Id. at 569-70.

215 Id.

216 See DeGrazia, supra note 30, at 151.

217 It is possible that rural cities do spawn many talented artists worthy of NEA

funding; however, those artists may leave the city because their artistic expression is

neither condoned nor appreciated. Furthermore, controversial artists like Finley,

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NEA "DECENCY AND RESPECT"

be clear from this Comment that the problems with the NEA can be

resolved without terminating all the good work done by the agency.218

C.    Privatization of Funding Art

Most of the individual artists and museums the NEA funds are lo-

cated in urban centers like New York or Los Angeles. It has been

suggested that the NEA has become a national think tank for Holly-

wood and the entertainment industry. One solution to the constitu-

tional problem presented by the "decency" provision is to abolish the

NEA and force Hollywood and the entertainment industry to fund its

own expression.2"9 Hollywood is probably very capable of funding an

NEA-like program by, among other ways, placing a special tax on en-

tertainment-related companies, which would go directly to the art pro-

gram. One major Hollywood blockbuster grosses as much as $200

million nationally and even more world-wide. The NEA's budget be-

fore the cuts was approximately $90 million, an amount which could

be compensated by the entertainment industry as a whole according to

share of market participation. Furthermore, it could be a no-loss

situation if these companies could receive a tax refund for the amount

of money they contributed to the program.

Mapplethorpe, and Serrano constitute a small percentage of the artists awarded

grants by the NEA. "The majority of the NEA budget does not fund cranks who live

to bring a blush to the cheeks of the hated bourgeoisie." See Lileks, supra note 55,

at A9.

218 Another proposed solution is to abolish the NEA and send its budget directly

to the states so they may fund art as they see fit. In the past, Congress "voted down

a proposal that would do away with the NEA and instead send $80 million directly

to the states for arts and arts education." He's Not Pals With Karen Finley?, L.A.

TIMES, July 14, 1997 at F2.

2 9 Because the majority of conservative middle-America has been ignored by

the artistic culture both in receiving NEA funds and retaining its artists, it has been

suggested that those industries which financially benefit the most from the art should

fund it. The NEA opposers argue "that funding art as a jobs program is just pork-

barreling, which we all detest and despise, and if high culture is R[esearch] &

D[evelopment] for Hollywood, why shouldn’t Hollywood pay for it?” See Pollitt,

supra note 20, at F2.

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UCLA ENTERTAINMENT LAW REVIEW

However, if the NEA was privatized, it would become very diffi-

cult, if not impossible to make sure smaller endeavors such as a local

high school or community play in a small obscure town also received

adequate funding. Those in rural communities would feel the most

robbed and would be left to wonder why their “decent” “uncontrover-

sial” art was no longer being funded:

In some cases NEA money keeps the local arts alive, and their loss

would hit a community hard. It takes a lot of money to run a theater, an

orchestra, a tiny opera company in a town of limited means. Big cities

can pick up the slack, but for some small burgs where the local chicken

plant just closed, the NEA is the only thing that lets the community

theater put on “Show Boat.”220

Many of the same problems that arise with the “decency and re-

spect” provision would also arise if privatization occurred, but these

problems would not run afoul of the Constitution. Large conglomer-

ates would be able to influence public thought, attitudes, and debate

even more than they already do. Because corporations are typically

concerned with public image and marketing, they may avoid funding

controversial works of art. Thus, new explosive ideas would stand lit-

tle chance of becoming funded. Industries like Hollywood already

have immense power over culture today. The publicly funded NEA,

with artistic excellence as its standard, was a haven for artists who did

not want to “sell-out” to corporate or industrial ways of thinking. If

the NEA was abolished in favor of private funding, the concept of a

truly “neutral” forum where the marketplace of ideas could flourish

will cease to exist.

VI. CONCLUSION

The First Amendment’s goal is to protect speech that contributes to

the marketplace of ideas. Frequently, speech that is most influential in

public debate is speech that may be considered controversial, indecent,

or offensive to the status quo. Although this speech may be offensive

to some, it must be tolerated in order to broaden the subjective norm of

speech that is acceptable in society. The government, via the NEA, is

in the best position to facilitate a truly neutral marketplace of ideas and

to contribute to America’s culture by subsidizing art in a way that is

220 Lileks, supra note 55, at A9.

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1998]            NEA “DECENCY AND RESPECT”                    313

least restrictive of the artist’s message. However, in the government’s

noble attempt to encourage thought and expression it has attempted to

gain more control over the type of speech allowed to influence the

marketplace and has artificially skewed public debate.

The NEA’s “decency and respect” provision is one such way gov-

ernment controls or censors messages allowed to have an impact on

the marketplace of ideas. Government funding of expression is vital to

a speaker’s ability to convey his message to a broad audience. Tem-

pering the government’s authority in its effort to restrict the speaker’s

message is vital to the preservation of the First Amendment. Thus, the

Court should be increasingly skeptical of restrictions that target certain

messages and situations where the government is able to hide its con-

trol behind false definitions of government subsides.

Volume 06, Issue 2, pp. 149-234, Appel

Copyright, Digitization of Images, and

Art Museums: Cyberspace and Other

New Frontiers

Sharon Appel*

“[W]hile I shall think myself bound to secure every man in the

enjoyment of his copy-right, one must not put manacles upon science.”

Lord Ellenborough, Carey v. Kearsley, 4 Esp. 168, 170, 170

Eng.Rep. 679, 681 (K.B.1803)

I. INTRODUCTION   ……………………………………………………………….. 151

II.THE LAW OF COPYRIGHT ………………………………………………… 154

A. Historical Origins of Copyright Law …………………………… 154

B. Constitutional and Philosophical Underpinnings of

C opyright Law   …………………………………………………………. 157

C. The Copyright Act of 1790 …………………………………………. 158

D. The Copyright Act of 1909 ………………………………………… 159

E. The Copyright Act of 1976 …………………………………………. 161

1. Threshold Requirements for Copyright Protection. 162

B.A. University of Wisconsin-Madison; J.D. Brooklyn Law School; Certificate,

Graduate Program in Museum Studies, George Washington University. Former staff

attorney and hearing officer, Telecommunications, Vermont Public Service Board.

E-mail: sharonappel@worldnet.att.net.  Many thanks to Ralph Oman for his

encouragement, enthusiasm, and advice. Thanks also to Jeffrey Hannigan, Ildiko P.

DeAngelis, and Ellen Zavian for their comments upon earlier drafts, and to Craig

Rutenberg for his flexibility and humor. I dedicate this article to my parents, Rose

and Carl Appel.

UCLA ENTERTAINMENT LAW REVIEW

2. D uration  …………………………………………………………. 163

3. Preemption of Common Law Copyright …………….. 164

4. Form alities ……………………………………………………… 164

5. Copyrightable Subject Matter …………………………… 166

6.   Exclusive  Rights  and  Limitations Upon

SuchR ights  …………………………………………………………. 166

7. Ownership of Copyright …………………………………… 169

8. Compulsory Licenses ………………………………………. 169

9. Infringement, Remedies and Penalties ……………….. 170

F. International Law and Amendments to Copyright Act of

19 7 6  ……………………………………………………………………….. 17 1

1. The Berne Convention Implementation Act of

19 8 8  ……………………………………………………………… 17 1

2. Uruguay Round Agreement Act ………………………… 172

G  F air  U se  ……………………………………………………………………. 174

H. Electronic Rights: The New           Frontier …………………………… 180

1. Introduction    ……………………………………………………. 180

2. Technological Matters and Definition of Terms …… 181

3. Copyright Reform: A Review of Recent History …. 185

a. The Problem      ………………………………………………. 185

b. Early Congressional Reform: National Commission on Ne

Technological Uses of Copyrighted Works ………… 188

c. Executive Efforts at Reform: Information Infrastructure

Task Force  ……………………………………………………… 189

1. The Working Group on Intellectual

Property Rights ………………………………….. 190

2. The Conference on Fair Use …………….. 191

d. From Free Use to Toll Road: Academic

Perspectives on Reform         …………………………………… 193

e. Sum m ary  …………………………………………………… 202

4. 1997-98: New        Laws and Legislative Proposals ….. 204

a. The Digital Millennium         Copyright Act ………….. 204

1. O verview     ………………………………………. 204

a. Copyright Protection and Management

System s  ……………………………………………… 205

b. Limitations on Liability for Copyright

Infringement Relating to Material Online .208

c. Distance Education, Libraries and Archives, and

Electronic Commerce ………………………….. 209

2. A nalysis  ………………………………………… 210

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ART MUSEUMS & COPYRIGHT LAW

a. Copyright Term Extension Act ........................... 212

b. Sum m ary ............................................................ 213

I. Summary and Significance for Museums ............................ 214

III. COPYRIGHT AND ART MUSEUMS: THE DIGITAL

FR O N TIER  .............................................................................. 217

A .  The Problem  ..................................................................... 217

B.   Digitization and Availability of Collections ..................... 218

C.   Digitization,  Interpretation, and   Management     of

C ollections ......................................................................... 227

D. Digitization   and  Generation   of Funds to    Preserve

C ollections ......................................................................... 228

E. Conclusions and Recommendations .................................. 229

IV.   CON  CLU  SION  ........................................................................ 232

I. INTRODUCTION

As art museums approach the twenty-first century, one of the most

potentially explosive problems they confront pertains to copyright: that

branch of the law that restricts the uses that one person or entity may

make of another's creative work.' While a myriad of factors have,

undoubtedly, combined to cause the explosion in copyright-related

issues, and the significance of any one of these factors may be open to

debate, one thing    is indisputable.   The rapid   development and

deployment of revolutionary new technologies is at the core of the

explosion, in particular, technologies that enable reproduction of art

work in digital form, and instantaneous transmission of digitized works

As Marshall Leaffer points out:

Although the term "copyright'" is highly descriptive in one sense, it is a misnomer in

another. Today's copyright goes much farther in protecting works against copying in

the strict sense of the word. Much of what we protect in copyright law today, such as

performance rights, display rights, and derivative work rights, are more akin to rights

to use a work rather than to copy it.

MARHSHALL A. LEAFFER, UNDERSTANDING COPYRIGHT LAW 2 (2d ed. 1995)

[hereinafter LEAFFER, UCL] (emphasis in original). See also Marshall A. Leaffer,

Protecting Authors’ Rights in a Digital Age, 27 U. TOL. L. REV. 1, 4 (Fall 1995)

[hereinafter Leaffer, Protecting Authors 'Rights].

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through the Internet2 and throughout the world.3   On the eve of the

millennium, art museums are moving quickly into the future, digitizing

images, developing products using digitized images, and posting

digitized images on the Internet.4 Yet, they are doing so without

necessarily  understanding, or    even   considering, the   potential

ramifications of their actions as far as the law of copyright is

concerned.

Art museums have long found themselves entangled in nettlesome

copyright issues, such as whether works in their collections are under

copyright protection and, if so, who owns the copyrights in the works,

whether reproductions of works on loan may be included in an

exhibition catalogue, and whether photographs commissioned by the

museum for use in promotional materials are copyrightable by the

museum.6    Likewise, museums have long found that they are both

users of copyrighted works-such as when they wish to make

reproductions of works to which they do not hold the copyright, and

creators of copyrighted works-such as when their staff creates

catalogues, gallery guides, or audio-visual materials.7

Museums have operated relatively smoothly in this environment, in

some cases by obtaining copyright clearances, but, more typically, by

either assuming that as nonprofit institutions their actions are insulated

2 The “Internet” is an international network of computer networks: a collection of

several thousand local, regional, and global computer networks interconnected via the

TCP/Internet Protocol suite. Religious Tech. Center v. Netcom On-Line

Communication Serv., Inc., 907 F. Supp. 1361, 1365 n.2 (N.D. Cal. 1995) (citing

DANIEL P. DERN, THE INTERNET GUIDE FOR NEW USERS 16 (1994). See also infra

note 139.

‘ See Dhruv Khanna and Bruce M. Aitken, The Public’s Need for More

Affordable Bandwidth: The Case for Immediate Regulatory Action, 75 OR L. REV.

347, 351 (1996) (“The current digital revolution has been brought about by the

convergence of a highly competitive [personal computer] industry and the Internet.”).

4 See Kim L. Malone, Comment, Dithering Over Digitization: International

Copyright and Licensing Agreements Between Museums, Artists, and New Media

Publishers, 5 IND. INT’L& COMP. L. REv. 2, 393 (1995).

‘ See Michael S. Shapiro, Not Control, Progress, MUSEUM NEWS, Sept./Oct.

1997, at 37, 38.

6 See Rhoda L. Berkowitz and Marshall A. Leaffer, Copyright and the Art

Museum, 8 COLUM J. ART. & L. 249, 252-53 (1984).

7 Id. at 253.

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ART MUSEUMS & COPYRIGHT LAW

from liability for copyright infringement under the fair use doctrine,8 or

simply failing to recognize that their actions raise any questions

regarding copyright at all.9 While this "ignorance-is-bliss" approach

may have worked well in the past, the curtain on such freewheeling

activity may well be rising. Artists, their heirs and representatives, and

the various entities to whom they have assigned their copyrights, have

become far more cognizant of their rights as copyright holders and

vigilant about exercising them than they were in the past.10 In addition,

an expansion of the rights of copyright holders is currently in progress,

both nationally and internationally, with far-reaching implications for

the application of copyright law to the new frontier of cyberspace,11 as

well as to the routine, day-to-day uses of copyrighted works in which

museums have historically engaged. Consequently, museums have

little choice but to become more knowledgeable about the law of

copyright, its application to the online environment, the efforts at

copyright reform that are currently underway, and how their interests

tie in with the broader issues at stake in the debate regarding copyright

reform. Failure to do so, and to become prominent players in the

debate, will subject museums and the public they serve to the

possibility that the regulatory structure that is ultimately developed will

not adequately protect their interests.

The purpose of this article is to provide a thorough overview of the

law of copyright, including its application to the digital environment;

8 See Shapiro, supra note 5, at 38.

9 See Berkowitz, supra note 6, at 254.

10 See Weil, Not Money, Control, MUSEUM NEWS, Sept.-Oct. 1997, at 36

[hereinafter Weil, Not Money, Control].

” “‘Cyberspace’ is a popular term referring to the world of electronic

communications over computer networks.” Netcom, 907 F. Supp. at 1363 n.1. The

word “cyberspace” is derived from “cybernetics” which, in turn, is derived from the

Greek word for steersman, intending to identify the link between communications

and power. “In giving the definition of Cybernetics… I classed communication and

control together.” Peter Lyman, What is a Digital Library? Technology, Intellectual

Property, and the Public Interest, DAEDALUS, Vol. 125, No. 4 (1996) 1, 2 at 14

(quoting NORBERT WIENER, THE HUMAN USE OF HUMAN BEINGS: CYBERNETICS AND

SOCIETY 23-24 (1967)). “Cyberspace cannot be defined in technological terms alone;

it is a technology that was originally designed to use information as a means to assert

social control.” Id. at 14.

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,UCLA ENTERTAINMENT LAW REVIEW

to highlight the challenges of applying the “old law” to the “new

world” of cyberspace; to survey some of the proposals for copyright

reform that have been propounded in governmental and academic fora;

and to analyze how the newly-enacted Digital Millennium Copyright

Act (“DMCA”)12 and Copyright Term Extension Act (“CTEA”)13 fit

within the debate regarding copyright reform.      The article also

discusses the particular copyright-related issues that museums face

with respect to digitization of images and transmission of digital

images through the Internet. Finally, the article acknowledges the

conflicting interests that museums have by virtue of their status as both

copyright holders and users of copyrighted works, but it argues that

museums should resolve this conflict by focussing on their defining

status as nonprofit institutions that exist to make their works available

and accessible to the public. Consequently, the article concludes that

museums should ally themselves with those forces in the debate that

argue for the contraction of copyright, the expansion of fair use, and

the development of an expansive public domain in cyberspace. The

article further advocates that museums participate in the various

rulemaking proceedings to be conducted under the Digital Millennium

Copyright Act, but that they not limit their participation in the debate

regarding copyright reform to those administrative fora.

II. THE LAW OF COPYRIGHT

A. Historical Origins of Copyright Law

Copyright is a system of property rights protecting certain classes

of intangible products, or “intellectual” property, generally called

works of authorship.14 Whether property rights should be recognized

in products of the mind is a matter of long-standing debate”5 but

12 Pub. L. No. 105-304, 112 Stat. 2860 (1998).

13 Pub. L. No. 105-298, 112 Stat. 2827 (1998).

14 LEAFER, UCL, supra note 1, at 2.

15 See id. at 11 (citing James Boyle, A Theory of Law and Information: Copyright,

Spleens, Blackmail, and Insider Trading, 80 CAL L. REV. 1413 (1992)); Jessica

Litman, The Public Domain, 39 EMORY L.J. 965 (1990). Keith Aoki, Authors,

Inventors and Trademark Owners: Private Intellectual Property and the Public

Domain, Part !, 18 COLUM.-VLA J.L. & ARTS 1, 24 (1993-94).

[Vol 6:2

1999]          ART MUSEUMS & COPYRIGHT LAW                              155

throughout history such rights have been recognized and protected. 16

The law of copyright originated and has evolved continuously in

response to the introduction of new technologies that reproduce and

distribute human expression.17      The modem      world’s first copyright

statute was the Statute of Anne, enacted in England in 1709, effective

1710.18 Although enacted more than two centuries after the fact, its

origins lie in the advent of the printing press-invented in Germany in

1450 and introduced into England in 1476-and in the profound

changes wrought by this revolutionary new technology upon European

society. 19

16 Ancient Jewish Talmudic law, for example, required permission of an author or

his heirs before a work could be copied. Aoki, supra note 15, at 27 n.95 (citing

Victor Hazan, The Origins of Copyright Law in Ancient Jewish Law, 18 BULL.

COPYRIGHT SOC’Y 3, 24-27 (1970)). Similarly, the Roman Catholic Church in

medieval Europe recognized a concept of intellectual property, identifying the

monastery (rather than individual monks) as the author of manuscripts, chronicles

and books, and granting the monastery the right to assign such works. Id. at 27 n.96.

17 LEAFFER, UCL, supra note 1, at 3.

“8 8 Anne, ch. 19 (1710) (Eng.).

19 LEAFFER, UCL, supra note 1, at 3. The print revolution has been described as

being about “the effect on European culture of a new means of communicating ideas

within a society that was essentially aristocratic, [and that] was long to accept a

culture and a tradition of learning which was restricted to certain social groups.”

Peter Lyman, supra note 11, at 2. The printing press revolutionized Western society

during the centuries following its invention by making possible, for the first time in

history, the mass production and distribution of written materials to the general public

independently of the central authority of the Church-State. LEAFFER, UCL, supra

note 1, at 3. See also Sherri L. Burr, The Piracy Gap: Protecting Intellectual

Property in an Era ofArtistic Creativity and Technological Change, 33 WILLAMETTE

L. REv. 245, 245-46 (1997). To control this potential unleashing of the free flow of

uncensored ideas throughout society, the Crown instituted a system of regulation

intended to control the means through which the ideas were distributed: the nascent

publishing industry. As part of this regulatory structure, the Crown, in 1557, granted

a publishing monopoly to the Stationers Company, a group of printers and

booksellers in London. A series of Parliamentary ordinances were also issued,

prohibiting the printing of any book without prior issuance by official censors of a

license to print, and prior consent of the author. Gillian Davies, Copyright and the

Public Interest, IIC STUDIES: STUDIES IN INDUSTRIAL PROPERTY AND COPYRIGHT

LAW, 14, at 7-8 (1994). In this way, the Crown used the Stationers Company as an

instrument of censorship, monopoly and state control. LEAFFER, UCL, supra note 1,

UCLA ENTERTAINMENT LAW REVIEW

The Statute of Anne was enacted for the express purpose of

preventing the publication of books without the consent of their

authors, to thereby stem the pirate trade in books, and to encourage

“learned men to compose and write useful books.”20 To achieve these

ends, the Statute granted to “authors and their assigns’,21 an exclusive

right of publication, but it limited the duration of this right to a term of

21 years for existing works, and two 14-year terms for new books.22 In

doing so, the Statute rewarded authors for their creations23 but

recognized the public’s interest in access to the works by limiting the

duration of the reward.24

The Statute of Anne provides the foundation upon which the

modern concept of copyright in the Western World has been built.25 It

became the model for copyright law in the United States, and is

reflected in both the Constitutional provision that authorizes Congress

at 4-5. In 1694, Parliament abolished the requirement of prior licensing. David

Lange, At Play in the Fields of the Word: Copyright and the Construction of

Authorship in the Post-Literate Millennium, 55 LAW & CONTEMP. PROBS. 139, 140

(1992). However, the Stationers’ monopoly was not withdrawn and pirate presses

began to flourish, creating competition, for the first time, for the Stationers Company.

The Stationers responded by lobbying Parliament for a new licensing act. Davies,

supra, at 7-8. Proponents of a “natural rights” theory, also began to lobby in favor of

institution of copyright: just as individuals have a natural right to property in their

bodies, so too do they have a right to the fruits of their labors, from the fields as well

as from their minds. LEAFFER, UCL, supra note 1, at 13. In response to these

lobbying efforts, Parliament enacted the Statute of Anne. Id. at 4.

20 Anne preamble (Eng.). Note that copyrightable subject matter under the Statute

of Anne was limited to books. See, e.g., Burr, supra note 19, at 247.

21 It is important to recognize that while copyright law is typically characterized

as conferring upon authors the exclusive benefits of copyright, by giving authors the

right to assign this right, the law may ultimately be conferring the benefits of

copyright upon assignees. Such assignees have historically included such entities as

the Stationers Company, other publishing companies, record companies, cable

television companies, and, more recently, computer software companies. See, e.g.,

LEAFFER, UCL, supra note 1, at 1-2. See also infra notes 23 and 33, and

accompanying text.

22 LEAFFER, UCL, supra note 1, at 4.

23 Likewise, the Statute rewarded authors’ assigns for the authors’ creations. See

supra note 21; infra note 33.

24 Id.

25 Davies, supra note 19, at 1; Aoki, supra note 15, at 29 n.107.

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ART MUSEUMS & COPYRIGHT LAW

to legislate copyright protection, and the three omnibus copyright acts

passed by Congress since that time: the Copyright Act of 1790,"

190927 and 1976.28 An understanding of the Statute of Anne and the

concepts and events that underlie it is thus critical to an understanding

of contemporary copyright law because the philosophy upon which it is

based continues to run through the law today.

B. Constitutional and Philosophical Underpinnings of Copyright Law

The direct source of authority for copyright protection in the United

States is Article I, Section 8, Clause 8 of the Constitution, known as the

Patent and Copyright Clause. This section empowers Congress:

To promote the Progress of Science and the useful Arts, by securing for

limited Times to Authors and Inventors, the exclusive Right to their

.  29

respective Writings and Discoveries.

The philosophy embodied in this provision reflects the central

themes of the Statute of Anne: financial incentive to create and

eventual unrestricted public access to creations. Regarding the former,

the grant of "exclusive rights" to authors evidences the belief of the

Framers of the Constitution, akin to the belief of their Parliamentary

counterparts in England, that economic incentives are necessary in

order to stimulate the production of creative works which, in turn

enables the progress of culture.      Without such incentives, the

philosophy goes, no one would create. The essence of this philosophy

has been distilled as follows: "[n]o man but a blockhead ever wrote

except for money.”30

26 Copyright Act of 1790, ch. 15, 1 Stat. 124 (repealed 1831).

27 Copyright Act of 1909, ch. 320, 35 Stat. 1075 (repealed 1976).

28 Copyright Act of 1976, H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 47-50

(1976). See LEAFFER, UCL, supra note 1, at 5.

29 U.S. CONST. art. I., § 8, cl. 8. Note that the scope of copyrightable subject

matter has been expanded over the years to go far beyond what the terms “science,”

“useful arts,” “writings” and “discoveries” might connote. See infra note 37 and

accompanying text.

30 See, e.g., LEAFFER, UCL supra note 1, at 1 (quoting Samuel Johnson, as quoted

in 3 BOSWELL’S LIFE OF JOHNSON 19 (Hill ed. 1934)).

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A countervailing philosophy has, however, also been succinctly

stated:

The general rule of law is, that the noblest of human productions-

knowledge, truths ascertained, conceptions and ideas-become after

voluntary communication to others, free as the air to common use.31

The Patent and Copyright Clause reflects this sentiment as well, in

that it limits the period of time during which authors and inventors may

retain their exclusive rights.    This limitation indicates that the

constitutional goal of eventually making the works freely available to

the public is just as important as that of providing economic incentives

to promote creativity. Therefore, if the author/author’s heirs were ever

to have unrestricted access to creative works, progress would be

impeded and the inefficiencies that the Statute of Anne sought to

eliminate would once again surface. The concept of public access or

public domain32 is, by the express terms of the Patent and Copyright

Clause, just as important in the Constitutional grant of patent and

copyright protection as is the concept of authorial ownership of

intellectual property rights.

C. The Copyright Act of 1790

The Patent and Copyright Clause of the Constitution was adopted

by Congress in 1787. Pursuant to the authority contained in this

section, Congress enacted its first copyright statute, the Copyright Act

of 1790. Modeled upon the Statute of Anne, the Act of 1790 gave

protection to the author or his assigns33 of books, maps and charts for

two 14-year terms: an initial 14-year term and an option to renew for

3″ International News Serv. v. Associated Press, 248 U.S. 215, 250 (1918)

(Brandeis, J., dissenting).

32 For a discussion of the public domain as an intellectual “common” that is a

prerequisite to a culturally and intellectually thriving democracy see Aoki, supra note

15. See also Litman, supra note 15, at 68-69; Wendy J. Gordon, An Inquiry into the

Merits of Copyright: The Challenges of Consistency, Consent, and Encouragement,

41 STAN L. REV. 1343, 1460-61 (1989); Boyle, supra note 15, at 1533.

” Note the distinction between the language of the Patent and Copyright Clause,

which speaks of securing rights for authors, and the language of the statute, which

secures rights for authors and their assigns. For further discussion of this matter, see

supra notes 21, 23.

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ART MUSEUMS & COPYRIGHT LAW

an additional 14 years.34

The Copyright Act of 1790 underwent two general revisions, one in

1831 and one in 1870, and several significant amendments. The net

effect of these revisions and amendments was to: establish federal

jurisdiction for copyright cases; expand copyrightable subject matter to

include musical compositions, photographs, paintings, drawings and

other works intended to be works of fine art; extend the duration of the

initial term of copyright from 14 to 28 years; create requirements

regarding deposit of copies with the Library of Congress; create a

public performance right for dramatic works; create the Copyright

Office as a subdivision of the Library of Congress; and create

provisions requiring affixation of notice as a prerequisite to copyright

protection.35

D. The Copyright Act of 1909

In 1905, President Theodore Roosevelt called for a complete

overhaul of the Copyright Act of 1790 to adapt it to modem conditions.

This resulted in four years of investigation and then passage of the

Copyright Act of 1909.36 Among the more important provisions of the

new Act were the following:

(1)copyrightable subject matter was expanded to include "all the

writings of an author;"'37

34 LEAFFER, UCL, supra note 1, at 6.

31 Id. at 6 n.21-22. See also Ralph S. Brown, Jr., Unification: A Cheerful

Requiem for Common Law Copyright, 24 UCLA L. REv. 1070, 1072 (1977). Note

that since its creation in 1897 to administer copyright registration and deposit, the

Copyright Office has been a separate department within the Library of Congress.

LEAFFER, UCL, supra note 1, at 204.

36 See, LEAFFER, UCL, supra note 1, at 6.

17 17 U.S.C. § 4 (1909 Act). Note also that by the time the 1909 Act was passed,

a broad judicial construction of the term "writings" had emerged. "By writings in

[the Patent and Copyright] clause is meant… to include all forms of writing,

printing, engravings, etchings, etc., by which the ideas in the mind of the author are

given visible expression.” Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58

(1884). The statutory language of “all the writings of an author” reflects this

precedent, as does the Supreme Court’s more recent interpretation of the term: any

physical rendering of the fruits of intellectual activity. Goldstein v. California, 412

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(2)a renewal term of 28 years was established, in addition to the initial

28 year term recognized under the previous statute;38 and

(3)protection under federal law began at the moment of "publication" of

the work39 provided that all authorized copies   contained proper notice

U.S. 546 (1973). Judicial precedent likewise establishes that the term "author,"

within the meaning of the Copyright Act, is not limited to the creator of a written

work. Rather, it is a far broader concept, referring to the creator of any original,

copyrightable work. See, e.g., Remick Music Corp. v. Interstate Hotel Co. of

Nebraska, 58 F. Supp. 523 (D. Neb. 1944).

38 17 U.S.C. § 24 (1909 Act).

3' Although "publication" was a prerequisite to federal copyright protection, the

1909 Act did not include a definition of this critical term, leaving it to develop

through case law instead. LEAFFER, UCL, supra note 1, at 108-109. The Copyright

Act of 1976 attempts to codify this judicial precedent, by defining publication as:

[T]he distribution of copies or phonorecords of a work to the public by sale or other

transfer of ownership, or by rental, lease or lending. The offering to distribute copies

or phonorecords to a group of persons for purposes of further distribution, public

performance, or public display constitutes publication. A public performance or

display of a work does not of itself constitute publication.

17 U.S.C. § 101. Thus, if the author of a creative work voluntarily sells, leases, lends

or gives away the original or tangible copies of the work to the general public, a

“publication” within the meaning of copyright law has occurred. Berkowitz, supra

note 6, at 269. Likewise, if the creator of a copyrightable work authorizes an offer to

the public to dispose of the work in any manner, a publication of the work has

occurred. Id. These examples are to be distinguished from a private sale, such as

where an artist sells a painting to a collector directly from her studio, without having

first offered the painting for sale to the public through a gallery or otherwise; in this

case a publication has not occurred. Id. Similarly, publication does not occur where

a work of art is displayed without an accompanying offer to sell, if care is taken to

deter copying. Thus, the exhibition of a work of art by a museum does not amount to

publication of the work where the public is admitted to view the work with the

understanding that no copying will take place, and that these restrictions will be

enforced by the museum. Id. (citing American Tobacco Co. v. Werckmeister, 207

U.S. 284 (1907)). Finally, a “limited” publication, i.e., one that communicates the

contents of a work to a limited group, for a limited purpose, without transferring the

rights of reproduction, distribution or sale, does not amount to a publication for

purposes of copyright law. LEAFFER, UCL, supra note 1, at 112.

40 Even though both the 1909 Act and the 1976 Act speak in terms of “copies,”

i.e., the plural, the 1976 Act defines “copies” as including the material object in

which the work is first fixed. Berkowitz, supra note 6, at 269 n.91. Thus courts have

found publication by the sale or distribution of a single copy. Id. (citing Pierce &

Business Mfg. Co. v. Werckmeister, 72 Fed. 54 (1st Cir. 1896); Burke v. Nat’l

ART MUSEUMS & COPYRIGHT LAW

of copyright.41

In addition, except for works not intended for reproduction, such as

motion pictures and speeches, unpublished works were not covered by

the Act. This left intact the dual system of state common law

protection for unpublished works42 and federal protection for published

works.

In the decades following passage of the 1909 Act, Congress

amended the Act to reflect changing times and technologies but, in

1955, determined that the Copyright Act should be entirely replaced by

new legislation. Toward this end, Congress authorized a copyright

revision project. This project led to many reports and hearings over a

20-year period, but no definitive results until 1976 when, finally, a new

omnibus Copyright Act was passed, effective January 1, 1978.43

E. The Copyright Act of 1976

The Copyright Act of 1976 (“1976 Act”) went into effect on

January 1, 1978, and governs works created on or after that date. The

1976 Act made several changes to the Act of 1909 and clarified

ambiguities in the law.44 Among the more important provisions are

Broadcasting Co., 598 F.2d 688 (1st Cir. 1979)).

41 17 U.S.C. § 10 (1909 Act). Under the 1909 Act, proper notice required the

following: the copyright symbol (“C” in a circle, “Copr.” or “Copyright”); the

author’s name; and the year date of first publication. 17 U.S.C. §§ 19-21 (1909 Act).

Failure to affix proper notice resulted in injection of the work into the public domain.

41 Common law copyright was a system of protection, by state law, of

unpublished works. See Brown, supra note 35, at 1070. Under common law

copyright, the author of an unpublished copyrightable work had a right to prevent the

copying, publication or use of such unpublished work without his or her consent, and

to obtain damages where any such unauthorized uses occurred. Id. at 1072. In

addition, the duration of common law copyright endured so long as the work

remained unpublished, ceasing only upon publication of the work. For a discussion

of how the Copyright Act of 1976 affects common law copyright, see infra note 57

and accompanying text.

41 LEAFFER, UCL, supra note 1, at 8.

44 Id. at 8. Note that the 1976 Act, and various amendments thereto, also result in

changes to the duration of copyright of certain works created before January 1, 1978.

See 17 U.S.C. §§ 302-304. See also infra notes 49, 57, and 288.

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those discussed below.

1. Threshold Requirements for Copyright Protection

The 1976 Act clarified that copyright protection is available only

for:

[O]riginal works of authorship fixed in any tangible medium of

expression, now known or later developed, from which they can be

perceived, reproduced or otherwise communicated, either directly or

with the aid of a machine or device.45

The operative concepts here are “originality,” “authorship” and

“fixation.”46   Although the Act does not define these terms, the

concepts are central to copyright and are developed extensively in the

case law.47

The 1976 Act also codified the judicially recognized idea-

expression dichotomy, that is, the principle that copyright protection is

available only for a particular expression of an idea, but not for the idea

itself.48

41 17 U.S.C. § 102(a).

6 For a discussion of the significance of the statutory language “now known or

later developed,” see infra, note 127 and accompanying text.

47 As defined by the Supreme Court, “author” means the one “from whom the

work owes its origin.” Burrow-Giles Lithographic Co., Ill U.S. at 58. Other courts

have described the author as the “beginer… or first mover of anything… creator,

originator.” Remick Music Corp. v. Interstate Hotel Co. of Nebraska, 58 F. Supp.

523, 531 (D. Neb. 1944). Originality, like author, is also a critical concept.

Originality, within the meaning of copyright law, requires both independent creation

and creativity. See Feist Publications, Inc. v. Rural Tel. Serv. Co. Inc., 499 U.S. 340

(1990). The requisite level of creativity, however, is minimal; a “modicum” will

suffice. Id.

41 See Baker v. Selden, 101 U.S. 99 (1879), a landmark decision of the U.S.

Supreme Court, holding that a system of bookkeeping, illustrated by ruled lines and

blank columns, was not copyrightable. While the particular expression of the idea,

here the book on bookkeeping, was copyrightable, the underlying idea regarding the

bookkeeping system was not. See also 17 U.S.C. § 102(b). Baker also originated the

“merger doctrine”: where there is only one way in which to express an idea, the

expression of the idea “merges” with the idea itself and, therefore, the expression is

not copyrightable.

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1999]          ART MUSEUMS & COPYRIGHT LAW                               163

2. Duration

For most works created by an individual author, the 1976 Act

replaced the system of two 28-year terms for copyright protection with

a single term of life of the author plus 50 years from the year of death

of the author.49 For anonymous works,50 pseudonymous works51 and

works made for hire,52 however, the term was 100 years from creation

or 75 years from     publication, whichever occurred first.53      For joint

works (except works for hire), the term was 50 years from the death of

the last surviving author.54

49 Note that the Copyright Term Extension Act changes this durational period to

life plus 70 years. 17 U.S.C. § 302(a). Note also that the 1976 Act, as amended by

the CTEA and other legislation, changes the duration of copyright for works created

before January 1, 1978. The combined result is that, with respect to works created

and published before January 1, 1978:

(I)works published 95 or more years ago: public domain;

(2)works published from 1964-1977 have a duration of copyright that is 95 years

from the date of publication, regardless of whether an application for the renewal

term was filed; and

(3)works published before 1964, but less than 95 years ago: term of copyright is 28

years from date of publication, with a renewal term of 67 years. To take advantage

of the renewal term, a timely application for renewal had to be filed with the

Copyright Office.

17 U.S.C. § 304. Regarding duration of copyright for works created before January

1, 1978, but unpublished as of that date, see infra notes 57 and 288.

’0 The 1976 Act defines an “anonymous work” as one on the copies of which no

natural person is identified as the author. 17 U.S.C. § 101.

“‘ The 1976 Act defines a “pseudonymous work” as one on the copies of which

the author is identified under a fictitious name. 17 U.S.C. § 101.

52 The 1976 Act defines “work made for hire” as one: (a) prepared by an

employee within the scope of his or her employment; or (b) specially ordered or

commissioned for use as a contribution to a collective work, part of a motion picture

or other audiovisual work, translation,   supplementary   work, compilation,

instructional text, test, answer material for a test, or atlas, if the parties expressly

agree in a written document signed by them that the work is considered a work for

hire. 17 U.S.C. § 101.

“  17 U.S.C. § 302(c). Note that the CTEA amends this statutory section to

provide for a duration of copyright of 120 years from creation or 95 years from

publication, whichever occurs first.

54 17 U.S.C. § 302(b). The CTEA amends this statutory section to provide for a

duration of copyright of 70 years from the year of death of the last surviving author.

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3. Preemption of Common Law Copyright

Under the 1909 Act, federal copyright protection was only

available to published works.55 Unpublished works were protected, if

at all, by state common law     copyright.56   The 1976 Act, however,

provides federal protection for published as well as unpublished works,

thereby preempting common law copyright.57 Under the 1976 Act all

original works of authorship fixed in a tangible medium of expression,

and created on or after the effective date of the Act, are protected from

the moment created.58

4. Formalities

“Formalities” refers to notice, registration, and deposit. The 1976

Act continued to require notice for all published works and provided

that failure to affix notice would result in forfeiture of copyright.59

5 For a discussion of “publication,” see supra note 39.

56 For a discussion of common law copyright, see supra note 42.

17 17 U.S.C. § 301. Note, however, that while the Copyright Act of 1976

eliminated common-law copyright on a forward-going basis, i.e., with respect to

works created on or after the effective date of the Act (January 1, 1978), it did not

completely eliminate the protections of common law copyright with respect to works

created before the effective date of the Act and unpublished as of that date. With

respect to these works, the 1976 Act, as amended by the Copyright Term Extension

Act: (1) replaces those common law copyrights that existed on January 1, 1978, with

federal copyright, and assigned to such copyrights the durational periods set forth in

the 1976 Act generally (discussed supra (II)(E)(2)); (2) mandates that in no event

may the copyright in such unpublished works expire before December 31, 2002; and

(3)encourages publication of unpublished works by providing that if the work is

published after January 1, 1978, and on or before December 31, 2002, the copyright

in the work will last until December 31, 2047. See 17 U.S.C. § 303.

Note also that the 1976 Act leaves certain works outside its preemptive effect, most

notably, works that are not fixed in a tangible medium of expression, such as: purely

oral works, improvised   music, spontaneous speeches, and    other unfixed

performances. LEAFFER, UCL, supra note 1, at 368; 17 U.S.C. § 301. Thus, the Act

does not preempt state law governing such works.

51 LEAFFER, UCL, supra note 1, at 8; see also 17 U.S.C. § 301.

59 17 U.S.C. §§ 401,405. Note, however, that under a savings provision in the

1976 Act, failure to include notice does not result in forfeiture of copyright if: (1) the

notice has been omitted from a relatively small number of copies distributed to the

public; or (2) the work is registered with the Copyright Office within five years of

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ART MUSEUMS & COPYRIGHT LAW

However, the requirement of notice was eliminated by the Berne

Convention Implementation Act of 1988 ("BCIA"),6° effective March

1, 1989, which was passed by Congress in order to bring U.S. law into

compliance with      international law.61     Thus, while notice is a

prerequisite to copyright protection for works published before March

1, 1989, it is optional for works published after that date.62

Under the deposit requirement, the owner of a copyright in a

published work must deposit two copies of the best edition of the work

with the Copyright Office within three months of publication.63

Failure to do so will not result in forfeiture of copyright, but may result

publication without notice, and a reasonable effort is made to add notice to all copies

that are distributed to the public in the U.S. after the omission is discovered; or (3)

the notice has been omitted in violation of a written requirement that, as a condition

of the copyright owner's authorization of the public distribution of copies, they bear

the prescribed notice. 17 U.S.C. § 405(a). This provision applies to works created

between January 1, 1978, and February 28, 1989. For a discussion of the details of

the notice requirement, see supra note 41.

60 Pub. L. No. 100-568 (1988).

61 More specifically, the BCIA was passed in order to bring U.S. law into

compliance with the Berne Convention for the Protection of Literary and Artistic

Works ("Berne Convention"), the principal treaty governing international copyright

relations. The BCIA and related federal statutes (the NAFTA Act, enacted in 1993 to

bring the. U.S. into compliance with the North Amendment Free Trade Agreement;

and the Uruguay Round Agreements Act ("URAA"), enacted in 1994 as a result of

the Uruguay Round of the General Agreement on Tariffs and Trade) include several

other provisions relevant to the art world such as restoration of copyright in foreign

works that had fallen into the public domain, and recognition of "moral rights" in

works of visual art. See, e.g., LEAFFER, UCL, supra note 1, at 141-45; 125. See also

infra (II)(F).

62 If notice is included, it must comply with the three requirements regarding the

author's name, the year of publication, and the word "copyright." 17 U.S.C. § 401.

Note also that the net result of the savings provision (see supra note 59), in

combination with the BCIA, is that notice: (1) is required for copyright protection for

works created before January 1, 1978; (2) is required for copyright protection for

works created and published between January 1, 1978, and February 28, 1989, except

that defects in notice may be cured by compliance with the requirements of 17 U.S.C.

§ 405(a)(2); and (3) is not required for copyright protection for works created on or

after March 1, 1989.

63 17 U.S.C. § 407.

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in imposition of fines.64

The 1976 Act also provides that copies of the work may be

registered with the Copyright Office. Although not a prerequisite to

establishment of a valid copyright, registration is a prerequisite to: (1)

an action for infringement with respect to works created in the U.S.;

and (2) the remedies of statutory damages and attorneys fees.65

5. Copyrightable Subject Matter

The 1976 Act, as amended, recognizes eight categories of

copyrightable subject matter which, according to legislative history, are

to be construed liberally: (1) literary works; (2) musical works; (3)

dramatic works; (4) pantomimes and choreographic works; (5)

pictorial, graphic, and sculptural works; (6) motion pictures and other

audiovisual works; (7) sound recordings; and (8) architectural works.66

6. Exclusive Rights and Limitations Upon Such Rights

Section 106 of the 1976 Act provides that the copyright owner has

the exclusive rights to:

(1)reproduce the copyrighted work;67

(2)prepare derivative works based upon the copyrighted work;68

(3)distribute copies of the copyrighted work;69

64 Id.

65 17 U.S.C. §§ 408, 411-412. These rules apply to all works created in the U.S.,

whether before or after the effective date of the 1976 Act. 17 U.S.C. § 408.

66 17 U.S.C. § 102(a).

67 This right is implicated only where copies or phonorecords are fixed in a

relatively permanent form; thus, reading a book aloud would not violate the right of

reproduction.

6′ A derivative work is defined as: “a work based upon one or more preexisting

works, such as a translation, musical arrangement, dramatization, fictionalization,

motion  picture version, sound   recording, art reproduction, abridgement,

condensation, or any other form in which a work may be recast, transformed, or

adapted.” 17 U.S.C. § 101.

69 The distribution right refers to the right “to distribute copies or phonorecords of

the copyrighted work to the public by sale or other transfer of ownership, or by

rental, lease, or lending.” 17 U.S.C. § 106(3). This right imparts to the copyright

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ART MUSEUMS & COPYRIGHT LAW

(4) perform the copyrighted work publicly;70 and

(5)display the copyrighted work publicly.71

These rights constitute the "bundle of rights" that comprise

copyright. Thus, they constitute the core of copyright protection.

However, the Copyright Act also sets forth several limitations upon the

exclusive rights. The most important of these, particularly to art

museums, is the doctrine of fair use, which permits unauthorized use of

a copyrighted work where such use, as a matter of public policy, is

"fair." The statutory provision regarding fair use provides that: "the

fair use of a copyrighted work including such use by reproduction in

copies.., for purposes such as criticism, comment, news reporting,

teaching... scholarship      or research    is not an     infringement of

copyright.",72  This section also sets forth four factors that must be

owner the right to control the first public distribution of the work.

70 To perform a work is: "to recite, render, play, dance, or act it, either directly or

by means of any device or process or, in the case of a motion picture or other

audiovisual work, to show its images in any sequence or to make the sounds

accompanying it audible." 17 U.S.C. § 101. The performance right arises in several

contexts in the music industry, and performing rights societies (such as the American

Society of Composers, Authors and Publishers ("ASCAP") and Broadcast Music,

Inc. ("BMI")) have been formed to provide collective representation of copyright

owners and to collect and distribute royalties.

Note also that a performance is public where it: (1) occurs in a place that is open to

the public; (2) occurs at a place where a substantial number of persons outside of the

normal circle of family and friends is gathered; (3) is transmitted or otherwise

communicated to a place described in (1) and (2); or (4) is transmitted or otherwise

communicated to the public by means of any device or process, whether or not the

members of the public capable of receiving it actually do so in the same place and

time. 17 U.S.C. § 101.

"' To display a work is: "to show a copy of it, either directly or by means of a

film, slide, television image, or any other device or process or, in the case of a motion

picture or other audiovisual work, to show individual images nonsequentially." 17

U.S.C. § 101. "Public" is defined with respect to the display right in the same way as

it is defined with respect to the performance right. See supra note 70.

Note also that Section 106 of the 1976 Act also recognizes a sixth exclusive right

with respect to sound recordings: the right to perform the copyrighted work publicly

by means of a digital audio transmission.

7 17 U.S.C. § 107 (emphasis added).

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considered in determining whether a particular use is “fair” within the

meaning of the law: (1) purpose and character of the use; (2) nature of

the copyrighted work; (3) amount and substantiality of the portion

used; and (4) effect of the use upon the market for or value of the

copyrighted work.73

Five other limitations upon the exclusive rights are also of

particular note to museums and other nonprofit institutions. First, an

important, but limited, exception to the reproduction right is available

to public archives and libraries, and their employees, who reproduce

and distribute copyrighted works for noncommercial purposes.74

Second, the doctrine of “first sale” limits the distribution right by

allowing the owner of a particular copy of the work to sell or otherwise

dispose of it without the permission of the copyright owner.75 Third,

the performance right is limited by an exception that allows nonprofit

performances of copyrighted nondramatic literary and musical works

under certain circumstances.76 Fourth, the display right is qualified by

an exception that allows the owner of a lawfully made copy to display

it publicly, either directly or by the projection of one image at a time, to

viewers present where the copy is located.77 Finally, the “face-to-face

teaching” exception limits the performance and display rights. This

73 17 U.S.C. § 107. For a full discussion of fair use, see infra (II)(G).

7  17 U.S.C. § 108. Note that the DMCA and CTEA update this statutory section.

See infra note 269 and accompanying text.

75 17 U.S.C. § 109(a). The rationale for this doctrine reflects the intangible nature

of intellectual property. As discussed infra (II)(E)(7), copyright law distinguishes

between ownership of the material object (tangible property) and ownership of the

copyright in that object (intellectual property). Without the first sale doctrine, the

copyright owner could interfere with the property right of the owner of the material

object to “freely alienate” her tangible property. LEAFFER, UCL, supra note 1, at

238. Note that this exception only applies if the copy was lawfully made. Id. For a

discussion of the DMCA and the first sale doctrine, see infra note 272 and

accompanying text.

76 The requirements are that: (1) the performance is made directly to the public

and is not transmitted; (2) there is no direct or indirect commercial advantage; (3) the

performers, promoters and organizers are not paid for the performance; and (4) there

is no admission charge (or, if there is, the proceeds, after deducting the costs of the

performance, are used exclusively for educational, religious or charitable purposes).

17 U.S.C. § 110(4).

“  17 U.S.C. § 109(c).

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ART MUSEUMS & COPYRIGHT LAW

exception allows the performance or display of a copyrighted 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...,78

7. Ownership of Copyright

Also of major significance regarding exclusive rights, the 1976 Act

specifically provides that ownership of copyright is divisible, and the

copyright owner may license or assign parts of the copyright to third

parties who may bring suit for infringement of their ownership rights.79

Likewise, the Act explicitly provides that ownership of the work is

distinct from ownership of the copyright in the work, and that one may

be conveyed without the other.80    Finally, the Act provides that, in

order to be valid, a transfer of copyright must be in writing and signed

by the owner of the copyright or the owner's duly authorized agent.81

8. Compulsory Licenses

A compulsory license system is one in which the prospective user

of the copyrighted work obtains the right to use the work without the

copyright owner's permission by paying a mandatory licensing fee.

The 1976 Act included four compulsory licenses: cable television;82

mechanical recording;83 public broadcasting;84 and jukebox.      Since

78 17 U.S.C. § 110(1).

79 17 U.S.C. § 201(d).

'0 17 U.S.C. § 202.

81 17 U.S.C. § 204(a). The 1976 Act thus reverses the "Pushman presumption,"

which held that the sale by the author of an unpublished manuscript or work of fine

art automatically transferred copyright, unless the author specifically reserved the

copyright. Pushman v. New York Graphic Society, Inc., 287 N.Y 302, 39 N.E.2d 249

(1942). As for transfers of published works, the 1909 Act, like the 1976 Act,

required a writing for a complete transfer of copyright; but, unlike the 1976 Act, the

1909 Act did not require a writing for transfer of an exclusive license. 17 U.S.C. §

28 (1909 Act).

82 17 U.S.C. § I11.

83 17 U.S.C. § 115.

84 17 U.S.C. § 118.

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UCLA ENTERTAINMENT LAW REVIEW

passage of the 1976 Act, the jukebox license has been repealed85 and

the satellite retransmission license86 and digital audio tape device

license have been added.87

9. Infringement, Remedies and Penalties

Copyright infringement is defined as the unprivileged violation of

any of the copyright owner’s exclusive rights.88 Thus, reproduction,

adaptation, distribution, publication, performance, or public display of

a copyrighted work without permission of the copyright owner

amounts to infringement unless it falls within one of the exceptions to

the copyright owner’s exclusive rights.89 To establish infringement the

copyright owner must prove: (1) ownership of a valid copyright in the

work; (2) copying9° by the defendant; and (3) that defendant’s copying

amounts to an improper appropriation.91

In addition to direct infringement, infringement may be vicarious,

as in an employer/employee relationship,92 or contributory, where one

85 See LEAFFER, UCL, supra note 1, at 223, 266.

86 17 U.S.C. § 119; LEAFFER, UCL, supra note 1, at 9.

87 The Audio Home Recording Act of 1992, Publ. L. 102-563, 106 Stat. 4237

(1992) added a new Chap. 10 to Title 17. LEAFFER, UCL, supra note 1, at 9, 223.

88 17 U.S.C. § 501(a).

89 See id.

9′ The term “copying” in the second prong of this test is a term of art that

subsumes two other critical concepts. First, the plaintiff must prove that the two

works are “substantially similar” and that the defendant took an improper amount of

the plaintiff’s work. Second, the plaintiff must prove that the defendant, in fact,

copied the work. While direct evidence of copying is rarely available, the plaintiff

can nonetheless satisfy his burden of proof by showing that the defendant had access

to his work, and that the similarities between the two works are probative of copying.

LEAFFER, UCL, supra note 1, at 285-86. See also Selle v. Gibb, 741 F. 2d 896 (7th

Cir. 1984).

91 LEAFFER, UCL, supra note 1, at 285.

92 See, e.g., Netcom, 907 F. Supp. 1361. Under the doctrine of “vicarious

liability,” one who has the right or power to supervise the acts of another, and has a

financial stake in such acts, may be liable for such acts, even in the absence of

knowledge of, or participation in, the acts. LEAFFER, UCL, supra note 1, at 316. For

a discussion of the DMCA’s provisions regarding liability of online service

providers, providers of network access, and entities that offer the transmission,

routing or providing of connections for digital online communications, see infra

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ART MUSEUMS & COPYRIGHT LAW

has reason to know of someone else's infringing activity and actively

participates in it by inducing, materially contributing to, or furthering

the infringing acts.93

Remedies for infringement include injunctions, actual damages,

statutory damages, lost profits, impoundment and destruction of

infringing copies, and attorneys fees.94  Criminal penalties are also

available for certain specified acts.95

F. International Law and Amendments to Copyright Act of 1976

Since enactment of the Copyright Act of 1976, the U.S. has entered

into several international treaties that include provisions regarding

copyright. To bring U.S. law into compliance with the requirements of

these treaties, Congress has enacted several federal laws that amend the

1976 Act. Among the more significant amendments, particularly with

respect to the fine arts, are the following.96

1. The Berne Convention Implementation Act of 1988

The BCIA amended the 1976 Copyright Act to bring it into

compliance with the requirements of the Berne Convention, which the

U.S. joined effective March 1, 1989. The most important amendments

are as follows:

(1)Notice: for works published on or after March 1, 1989, notice is not

required and failure to affix notice can no longer result in forfeiture of

copyright;97

(2)Registration: for works created in countries that are parties to the

Convention, registration with the Copyright Office is no longer a

(1I)(H)(4)(a)(1)(b).

9 See id.

9  17 U.S.C. § 502-505.

95 17 U.S.C. § 506.

96 Note also that in addition to the statutes discussed in this section, the Digital

Millennium Copyright Act also amends U.S. law to bring it into compliance with

international treaties (Title I of the DMCA implements the WIPO Copyright Treaty

and Performances and Phonograms Treaty, both of which the U.S. entered into in

1996). The DMCA is discussed in detail infra (II)(H)(4).

97 17 U.S.C. § 405 (as amended by BCIA). See also supra (II)(E)(4).

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prerequisite to bringing a suit for copyright infringement (except for

works whose country of origin is the U.S.) 9; and

(3)Recording: recording an interest in copyright in the Copyright Office

is no longer a prerequisite to bringing a suit for infringement.99

2. Uruguay Round Agreements Act (“URAA”)°00

The URAA, which implements negotiations completed under the

Uruguay Round of the General Agreement on Tariffs and Trade

(“GATT”),’°1 restores copyright status to vast numbers of foreign

9′ 17 U.S.C. § 411, as amended by the BCIA and DMCA.

99 17 U.S.C. § 205. Note also that in drafting the BCIA, Congress took a

“minimalist” approach, meaning that it made only those changes to the 1976 Act that

were absolutely essential to comply with the Berne Convention. In doing so, it

declined to include Article 18 of the Convention, known as the “retroactivity”

provision. This section requires member nations, upon joining the Convention, to

protect all works from other member countries whose copyrights have not yet expired

in their countries of origin. Adopting this section would have resulted in restoration

of copyright protection to foreign works that had fallen into the public domain in the

U.S. for failure to comply with formalities such as notice and renewal. However,

Congress ultimately did amend the 1976 Act to include sweeping restoration

provisions, through the Uruguay Round Agreements Act, enacted in 1994. LEAFFER,

UCL, supra note 1, at 141, 144, 379. See also infra (II)(F)(2).

100 Pub. L. No. 103-465, 108 Stat. 4809 (1994).

The obligations of the United States under the GATT (renamed and

restructured as the World Trade Organization (“WTO”) as of January 1, 1995) are

based on the Uruguay Round negotiations pursuant to the GATT. The Uruguay

Round resulted in, among other things, the Agreement on Trade Related Aspects of

Intellectual Property (“TRIPS”), and it is TRIPS that is the basis for the amendments

to the Copyright Act that retroactively restore copyright. More specifically, Article 9

of TRIPS provides that “members shall comply with Articles 1-21 and the Appendix

of the Berne Convention.” Thus, TRIPS requires compliance with the retroactivity

provisions of Article 18 of the Berne Convention. LEAFFER, UCL, supra note 1, at

395, 143 n.226. The TRIPS Agreement is also of great significance for reasons that

go beyond its restoration provisions. The substantive provisions of the TRIPS

agreement cover all aspects of intellectual property. Id. at 396. These provisions,

together with TRIPS’ enforcement provisions, and the fact that 117 countries are

parties to the Agreement, result in the expansion of copyright protection throughout

the world. Marci Hamilton, The TRIPS Agreement: Imperialistic, Outdated, and

Overprotective, 29 VAND. J. TRANSAC’L L. 613, 615 (1996) In particular, TRIPS

provides detailed rules for minimum standards of protection for intellectual property,

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works'02 that had been in the public domain in the U.S. Specifically,

the URAA restores copyright in foreign works that had lost copyright

protection under U.S. law because of noncompliance with formalities

or because the work did not originate in a country with which the U.S.

has copyright relations.103    To qualify for restoration the work must

meet certain requirements.°4 If these requirements are met, copyright

which incorporate by reference the minimum standard contained in Articles 1-21 of

the Berne Convention (except, at the insistence of the U.S., Article 6 bis, which

grants moral rights, was not included). TRIPS also includes detailed provisions for

Most Favored Nation ("MFN") treatment with limited exceptions. MFN likewise

contributes to the global expansion of copyright by requiring that any benefit granted

by a party to the Agreement to the nationals of any other country be accorded

immediately and unconditionally to the nationals of all other WTO members. TRIPS

also explicitly requires protection for computer programs and other compilations of

data. TRIPS' enforcement provisions further fortify the Agreement by: requiring

contracting parties to provide civil and administrative procedures and remedies;

including measures for prohibiting the importation of infringing goods; and including

criminal penalties for willful infringement. Finally, TRIPS' dispute settlement

procedures, which apply where a member is alleged to have violated the substantive

or procedural provisions of the Agreement, strengthen the Agreement. Penalties

include suspension of concessions which otherwise would be due the offending party.

LEAFFER, UCL, supra note 1, at 396.

As for the significance of TRIPS with respect to copyright in cyberspace see

Hamilton, Imperialistic, Outdated, and Overprotective. See also infra note 149.

102 One commentator estimates that the number ranges from the tens of thousand

to hundreds of thousand. Stephen E. Weil, Fair Use/Museum Use: How Close is the

Overlap?, 12 VISUAL RESOURCES 353, 354 (1997).

103 LEAFFER, UCL, supra note 1, at 143-44.

"04 The work must meet the following three requirements: (1) it must be protected

by copyright, and not be in the public domain, in its source country; (2) at the time

the work was created: (a) at least one author or rightholder of the work must have

been a national or domiciliary of an eligible country; and (b) if the work was

published, it must have been first published in an eligible country and not published

in the U.S. during the 30-day period following publication in such eligible country;

(3) it must have fallen into the public domain under U.S. law because: (a) of failure to

comply with formalities such as copyright notice, registration or renewal; (b) of lack

of copyright relations between the U.S. and the source country; or (c) the work was a

sound recording published before February 15, 1972; and (4) if the source country for

the work is an eligible country solely via its adherence to the WIPO Performances

and Phonograms Treaty, is a sound recording. 17 U.S.C. § 104(A)(h)(6).

Note, however, that Uruguay Round restoration provisions do not affect the public

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will be restored for the remainder of the term of copyright that would

have applied if the work had not entered the public domain.°05

The URAA also includes provisions to protect the interests of

“reliance parties,”–persons who have used the works extensively and

invested substantially in their exploitation, without permission, in

reliance on their status as within the public domain.106            These

provisions condition liability of reliance parties for unauthorized use of

a restored work upon receipt by the reliance party of notice that the

copyright has been restored.107

G Fair Use

The ultimate purpose of American copyright law is plainly stated in

the Constitution. The law exists “to promote the progress of science

and the useful arts” or, in plain, contemporary English, to promote the

advancement of society at large. While the same clause in the

Constitution that defines the purpose of copyright law as the promotion

domain status of works of U.S. authors who forfeited copyright for failure to comply

with formalities. Likewise, works of foreign authors who first published their works

in the U.S. will also remain in the public domain. LEAFFER, UCL, supra note 1, at

143-44.

105 LEAFFER, UCL, supra note 1, at 144. Ownership rights in restored works vest

initially in the author as determined by the law of the source country. 17 U.S.C. §

104A(b). As for the term of protection, it is the same as it would have been had the

work not lost copyright protection. 17 U.S.C. § 104A(a)(1).

106 17 U.S.C. § 104A(h)(4). An example of a reliance party would be an art

museum that has created a line of umbrellas upon which are printed images of works

the museum had believed to be in the public domain.

107 The URAA sets forth detailed provisions regarding notification and provides

that: (1) the reliance party may: (1) continue the performance, distribution, or display

of the work for 12 months from the earliest notice; and (2) during the 12-month

period commencing on the date of receipt of actual notice or notice via publication in

the Federal Register (whichever occurs first), sell or otherwise dispose of copies of

the work made before the date of restoration of copyright without authorization of the

restored work’s copyright owner. 17 U.S.C. § 104A(c)-(e). As for use of derivative

works, if the derivative work was created before enactment of the URAA, the

reliance party may continue to exploit that work for the duration of the restored

copyright, provided that the reliance party pays to the owner of the copyright

reasonable compensation for its use. LEAFFER, UCL, supra note 1, at 145; 17 U.S.C.

§ 104A.

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of science and the useful arts also grants to authors of creative works

the right to enjoy the financial fruits of their labors, the plain language

of the clause evidences that this grant of monopoly is subservient to the

primary goal of promoting the progress of society as a whole. The

Patent and Copyright Clause thus reflects a tension between the right

of the public to have access to creative works and the right of authors

of creative works to benefit financially from their efforts. The plain

language of the clause, however, resolves the tension in favor of the

public. It is the promotion of progress that is, by its terms, the purpose

of the Patent and Copyright Clause. Granting economic monopolies to

authors is simply a means to this end.108

The language of the Patent and Copyright Clause raises questions

about the nature of the relationship between fair use and the law of

copyright generally. The Supreme Court has analyzed this question as

follows:

From the infancy of copyright protection, some opportunity for fair use

of copyrighted materials has been thought necessary to fulfill copyright's

very purpose, "[t]o promote the Progress of Science and useful Arts…

“…. For as Justice Story explained, “[i]n truth, in literature, in science

and in art, there are, and can be, few, if any, things, which in an abstract

sense, are strictly new and original throughout. Every book in literature,

science and art, borrows, and must necessarily borrow, and use much

which was well known and used before.”… Similarly, Lord

Ellenborough expressed the inherent tension in the need simultaneously

to protect copyrighted material and to allow others to build upon it when

he wrote, “while I shall think myself bound to secure every man in the

enjoyment of his copy-right, one must not put manacles upon

science.”… In copyright cases brought under the Statute of Anne of

1710, English courts held that in some instances “fair abridgements”

would not infringe an author’s rights,.., and although the First congress

enacted our initial copyright statute… without any explicit reference to

“fair use,” as it later came to be known, the doctrine was recognized by

the American courts nonetheless.109

The Supreme Court has repeatedly held this to be the case. See, e.g., Fox Film

Corp. v. Doyal, 286 U.S. 123, 126-27 (1932); Twentieth Century Music Corp. v.

Aiken, 422 U.S. 151, 156 (1975).

109 Campbell v. Acuff-Rose Music, Inc., 114 S.Ct. 1164, 1169-70 (1994)

(emphasis added) (citations omitted).

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The doctrine of fair use continued to be recognized by courts over

the years, but was not included in American statutory law until it was

incorporated into the Copyright Act of 1976. Section 107 of the 1976

Act provides as follows:

[T]he fair use of a copyrighted work.., for purposes such as criticism,

comment, news reporting, teaching… scholarship, or research, is not an

infringement of copyright. In determining whether the use made of a

work in any particular case is fair use the factors to be considered shall

include-

(1) the purpose and character of the use, including whether such use is of

a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the

copyrighted work as a whole; and

(4) the effect of the use upon the market for or value of the copyrighted

work.110

Fair use thus emerges as an essential component of copyright law,

without which the Constitutional goal of promotion of science and the

useful arts could not be achieved.      A   rigid view  of copyright

protection-one that would prevent all unauthorized public access to

copyrighted work during the duration of copyright-would thwart the

progress of culture. As Lord Ellenborough summed it up at the dawn

of the nineteenth century, “one must not put manacles upon science.”lIII

The doctrine of fair use has frequently been called “the most

troublesome in the whole law of copyright.”’112 Since passage of the

Copyright Act of 1976, the Supreme Court has been called upon to

issue decisions on fair use three times.113 The Court’s most recent

pronouncement, in Campbell v. Acuff-Rose Music, Inc., is perhaps its

clearest. The issue in Campbell was whether the unauthorized use by

10 17 U.S.C. § 107.

.. Campbell, 114 S.Ct. at 1169 (quoting Carey v. Kearsley, 4 Esp. 168, 170, 170

Eng.Rep. 679, 681 (K.B.1803)). See also supra note text accompanying note 109.

..2 See, e.g., Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939).

..3 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984);

Harper & Row v. Nation Enters., 471 U.S. 539, 558 (1985); Campbell, 114 S. Ct.

1164

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the rap music group 2 Live Crew of certain material from Roy

Orbison's copyrighted song "Oh, Pretty Woman" in a parody version

of the song constituted a fair use of the song within the meaning of the

Copyright Act. The Court held that it did, stressing the transformative

value of the new work.114

An equally important issue in Campbell, however, was whether the

commercial purpose and use of the parody precluded it from protection

under the fair use doctrine. The Court held that it did not and stressed

that the four statutory fair use factors should be explored and weighed

together, that commercial nature is only one element of one factor, and

that the central question is not whether the allegedly infringing work

suppresses demand for the original, but whether it serves as a market

substitute."5 This holding clarifies earlier Supreme Court decisions on

the subject of whether unauthorized use of copyrighted material for a

commercial purpose precludes application of the fair use doctrine, and

settles what had been a vigorous debate among the courts and

commentators on the subject.116

Another recent case that may have far-reaching implications for the

fair use debate generally, and for the art world in particular, is Ringgold

v. Black Entertainment.17 The issue in Ringgold was whether the

unauthorized display of a copyrighted work of art on television for 27

seconds as part of a background set on a weekly soap opera was

permissible as either de minimis or fair use. In rejecting the de minimis

defense, the court pointed to regulations issued by the Library of

Congress that require royalties to be paid by broadcasters when a

visual work is displayed in the background. The court likewise

rejected the fair use defense, holding that such defense must be

evaluated in light of the actual context in which the work is used and

114 The degree to which an allegedly infringing use "transforms" a work is likely

to be a particularly important question in the debate over fair use in cyberspace. See

infra (II)(H)(3)(d).

11 Campbell, 114 S.Ct. at 1176, 1178. See also Pierre N. Leval, Campbell v.

Acuff-Rose: Justice Souter's Rescue of Fair Use, 13 CARDOzO ARTS & ENT. L.J. 19

(1994).

116 See, e.g., Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REv.

1086 (1990); Leval, supra note 115.

17 126 F.3d 70 (2d Cir. 1997).

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that in Ringgold, the work had been used for the precise purpose for

which it had been created: to be decorative. The court further held that

an artist is only required to show “a ‘traditional, reasonable or likely to

be developed’ market for licensing [the] work as set decoration” to

defeat a fair use defense.”118 The court’s reading of fair use in this case

is arguably narrow and at odds with the broad reading of fair use

voiced by the Supreme Court in Campbell.

Also on the subject of fair use and art is Rogers v. Koons,119 which

imposes liability on an appropriationist artist’20 for unlawful copying.

“‘ Id. at 81 (quoting Campbell v. Acuff-Rose, 114 S.Ct. at 1177).

19 960 F.2d 301 (2d Cir. 1991), cert. denied, 113 S. Ct. 365 (1992).

120 “Appropriationist art” is art “in which one artist takes as her or his own

images, often the extremely well-known images of another.” Willajeanne F. McLean,

All’s Not Fair in Art and War: A Look at the Fair Use Defense After Rogers v. Koons,

59 BROOKLYN L. REV. 373, 384 n.66 (1993) (quoting ARTHUR C. DANTO, Narratives

of the End of Art, in ENCOUNTERS & REFLECTIONS: ART IN THE HISTORICAL PRESET

331, 332 (1990)). This case has led to a flurry of commentary. See, e.g., Note, The

Art of Applying the Fair Use Doctrine: The Postmodern-Art Challenge to the

Copyright Law, 13 REV. LITIG. 685 (1994).

Appropriationism falls within the rubric of “Postmodemism.” Postmodemism is

characterized by a rejection of the concept of objectivity and certainty, and of reality

as static and objective, and an embracing, instead, of a fundamentally subjective

world view. Postmodemism rejects the Modernist and Enlightenment world view

which holds that: an objective body of knowledge exists that is neutral and value-

free; humankind is capable of discovering and mastering such knowledge; and the

pursuit of knowledge benefits all of humankind and not just a particular social or

economic class. Dan Thu Thi Phan, Will Fair Use Function on the Internet? 98

COLUM L. REV. 169, 207 (1998). Instead, Postmodemists argue that language/text is

a social construct and that meaning is not inherent in the text itself; rather, it is

ascribed to the text by the individual reading the text on the basis of that particular

individual’s experience, perspective and world view. Thus, postmodernists maintain

that each reader transforms the text by bringing his or her own interpretation to it,

thereby acting as a collaborator in an endless process of reading, writing and editing.

Id. at 208. See also, Heather J. Meeker, Comment, The Ineluctable Modality of the

Visible: Fair Use and Fine Arts in the Post-Modern Era, 10 U. MIAMI ENT. &

SPORTS L. REV. 195 (1993).

Post-modem artists… speak in a symbolic language of quotations and

allusions…. The style and philosophy of post-Modernism is heavily dependent

upon the practice of Appropriationism, which gives contemporary art its unique and

irreverent flair.

To the law, appropriation is simple copyright infringement, for which only minor

exceptions are allowed through the doctrine of fair use. Appropriationists have tried

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In Rogers, the defendant artist had commissioned the creation of a

three-dimensional, life-size version of a photograph of a seated man

and woman with a string of eight puppies sitting across their laps. The

court rejected the defendant's argument that his sculpture constituted a

parody of the photograph and was entitled to protection under the fair

use doctrine on the ground that while the sculpture might have

constituted a "satirical critique of our materialistic society [as

defendant contended], it is difficult to discern any parody of the

photograph ‘Puppies’ itself.”,12′    The court stressed that “the copied

work must be, at least in part, an object of the parody, otherwise there

would be no need to conjure up the original work.”122

These cases demonstrate that by casting fair use as a defense to

infringement and requiring that the determination of whether a use is

fair be a judicial determination, the law requires the would-be fair use

claimant to take a “wait-and-see” or “act now, pay later” approach.123

Thus, while fair use is a central component of copyright law, the

procedure through which a fair use claimant must establish his or her

to avoid liability by invoking the defense of fair use, to little avail. The

philosophical underpinnings of post-Modernism and intellectual property are

fundamentally at odds.

Id. at 195, 220.

121 Rogers, 960 F.2d at 310.

I22 ld. Note that in concluding that the sculpture did not constitute a parody of the

photograph, the court is arguably ill-versed in the language of contemporary art, and

engaging in precisely the kind of judgment of artistic merit that the Supreme Court,

in the landmark case of Bleistein v. Donaldson Lithographic Co., 188 U.S. 239

(1903), proclaimed was inappropriate. In the words of Justice Holmes:

It would be a dangerous undertaking for persons trained only to the law to constitute

themselves final judges of the worth of pictorial illustrations, outside of the

narrowest and most obvious limits. At one extreme some works of genius would be

sure to miss appreciation. Their very novelty would make them repulsive until the

public had learned the new language in which their author spoke…. At the other

end, copyright would be denied to pictures which appealed to a public less educated

than the judge.

Id. at 251-52.

123 See, e.g., Burr, supra note 19, at 252. In the words of one commentator, “fair

use is a troublesome privilege because it requires a hideously expensive trial to prove

that one’s actions come within its shelter.” Jessica Litman, Innovation and the

Information Environment:Revising Copyright Law for the Information Age, 75 OR L.

REv. 19, 45-46 (1996).

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claim is one that necessarily exposes the claimant to substantial risk

and expense.

H. Electronic Rights: The New Frontier

1. Introduction

Copyright law is grounded in the concepts of author, originality,

fixation, and reproduction of creative works via print media.124 As

history shows, it has been continuously adapted to respond to changing

times and technologies. However, two critical factors distinguish the

current technological era from any that has preceded it. These factors

present an unparalleled challenge to copyright. First, new digital and

telecommunications technologies radically alter the ways in which

creative works may be stored, modified and distributed,125 thereby

challenging the fundamental concepts of author, originality and

fixation upon which copyright is based.126      Second, the pace of

technological   change   in   the  digital  and   telecommunications

environment far surpasses the pace of technological change in any

preceding era, rendering it virtually impossible for regulatory reform to

keep   up   with   technological innovation.127     Together, digital

technologies and the telecommunications revolution pose a challenge

to copyright law of an unprecedented nature.

The executive, legislative, and judicial branches of government, as

well as the academy, have long recognized that various conundrums

124 See, e.g., Litman, supra note 123.

12 See, e.g., Leaffer, Protecting Authors’ Rights, supra note 1, at 6.

126 See, e.g., Margaret Chon, New Wine Bursting from Old Bottles: Collaborative

Internet Art, 75 OR. L. REv. 257, 258-61(1996); DON E. TOMLINSON, COMPUTER

MANIPULATION AND CREATION OF IMAGES AND SOUNDS: ASSESSING THE IMPACT 1, 9-

10, (The Annenberg Washington Program 1993). See also infra (II)(H)(3)(d);

(II)(H)(2).

127 Although the 1976 Act attempts to ensure its continued vitality with respect to

new technologies by explicitly providing that “Copyright protection subsists … in

original works of authorship fixed in any tangible medium of expression, now known

or later developed…. ” 17 U.S.C. § 102(a) (emphasis added), this language ignores

the possibility that the nature and capabilities of new technologies may, in

themselves, render the Act’s provisions obsolete.

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result from the intersection of copyright law with the digital

environment. A variety of approaches to copyright reform have

emerged in response to this recognition. These include establishment

by Congress of the National Commission on New Technological Uses

of Copyrighted Works ("CONTU") following passage of its omnibus

Copyright Act of 1976; the widely ranging proposals for copyright

reform appearing in the academic literature; and most recently, the

enactment of the Digital Millennium Copyright Act and Copyright

Term Extension Act.

This section defines basic technological terms and surveys the

recent history of copyright reform. It then reviews the new laws and

analyzes the extent to which they reflect the debate regarding copyright

reform that has been underway for the past several years. It concludes

that the Digital Millennium Copyright Act extends existing legal

precepts to the digital environment and confers new rights upon

copyright holders in that environment, while the Copyright Term

Extension Act significantly lengthens the duration of most copyrights.

Consequently, it further concludes that the two new laws serve to

strengthen the rights of copyright holders.'28

2. Technological Matters and Definition of Terms

"Digitization" is the process of translating information that exists in

textual, visual or audio form into a binary code (literally, a sequence of

O's and l's), which can then be read by a computer.129 It is a universal

language into which any communications medium may be translated.

Digitization has led to media convergence which has, in turn, led to the

development of "multimedia" (the interactive presentation of video,

audio, graphics, animation, text and data)130 and "hypermedia" (a

computer-based medium combining multimedia with high levels of

121 See infra, (I9)(H)(4).

129 Tomlinson, supra note 126, at 9 n.20. "The letter "A," for example, can be

represented to a computer by the eight bits: 10000011 ." Id.

`30 Heather J. Meeker, Note, Multimedia and Copyright, 20 RUTGERS COMPUTER

& TECH. L.J. 375, 376 (1994) (quoting DAVID L. GERSH & SHERI JEFFREY,

STRUCTURING THE MULTIMEDIA DEAL 1 (Monograph, Stroock & Stroock & Lavan

1992)).

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user interaction, thereby enabling users to link one piece of information

within a system with any other piece of information in that system in

an infinite number of ways).131 The digitization of media has also

meant that, for the first time in history, the economic value of a

creative work is no longer inextricably linked to the physical form in

which the work was initially embodied. Rather, its value lies in the

work's content.132

In addition to allowing the storage of all creative works in a

universal language, digital technologies, in particular, compression

techniques, allow for the storage of enormous quantities of data in ever

smaller volumes.133 This has led to the development of the CD-ROM

(Compact Disk-Read Only Memory, a high- capacity digital storage

medium capable of carrying multimedia and hypermedia.134

Digital technology has also revolutionized the nature and

process of reproduction of creative works. First, the quality of digital

reproduction is, in certain respects, superior to that of its analog

predecessor.135   Second, digitization enables easy manipulation of

"I BOB COTTON & RICHARD OLIVER, UNDERSTANDING HYPERMEDIA 2000, 13,

48-49, 176 (2d ed. 1997).

132 Id. at 13.

133 Leaffer, Protecting Authors' Rights, supra note 1, at 6.

114 COTTON, supra note 131, 177. The user views a CD-ROM on her computer by

placing it in a ROM drive, which "reads" the signals stored on the disk. Timothy

Everett Nielander, The Mighty Morphin Ninja Mallard: the Standard for Analysis of

Derivative Work Infringement in the Digital Age, 4 TEX. WESLEYAN L. REV. 1, 4

(1997) [hereinafter Nielander, Digital Age Infringement].

131 With analog technology, reproduction occurs through transference of an

electronic signal of waveforms that degrade every time they are transferred; thus,

quality declines with each successive copy. TOMLINSON, supra note 126, at 9. See

also Barbara Hoffman, From Virtual Gallery to the Legal Web, N.Y L.J., March 15,

1996, Entertainment Update at 5. With digital reproduction technology, on the other

hand, the quality of successive copies of the initial digital version of the original

work does not decline; copies are identical to the initial digital version. PETER

ROBINSON, THE DIGITIZATION OF PRIMARY TEXTUAL SOURCES 13 (Office for

Humanities Communication Publications Number 4 (1993)). However, the initial

digital image of the original work is not an exact copy of the original work. See e.g.,

id. at 4-5, 9-10; AZRIEL ROSENFELD, AVINASH C. KAK, DIGITAL PICTURE

PROCESSING, VOL.1, 5, 71-72, 106, 111-23 (2d ed. 1982); IOANIS PITAS, DIGITAL

IMAGE PROCESSING ALGORITHMS 2-3 (1993). Thus, while digitization is widely

touted as a technological innovation that permits the creation of “perfect copies,” this

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creative works in ways that were previously impossible. Alterations

are difficult to detect without access to the original, and it may be

difficult even to define "the original.'36

Finally, the telecommunications revolution has combined with the

digital revolution to create radical new possibilities for the distribution

and    generation    of    creative   works.        In   particular,   the

telecommunications revolution has spawned the development of data

transmission services that permit the transfer of vast quantities of

digitized material through telecommunications networks at lightening

speed.'37 These technologies, together with the increase in the use of

personal computers ("PCs")138 and of the Internet, 139 mean that images,

is misleading because it erroneously implies that digitization results in perfect copies

of the original creative work.

136 The process of digitizing an image, for example, occurs via a scanner or

electric camera converting the image into a string of numbers that a computer can

read and produce on a screen. Geoffrey Samuels, Cybermuse: The Site Licensing

Solution, MUSEUM NEWS, May/June 1996, at 54. The scanning device or camera

divides the image into thousands of square or rectangular units known as picture

elements, or "pixels," and then assigns to each pixel a numerical value that acts as a

descriptor of the color or other visual characteristics of the area. The image can then

be manipulated and altered, simply by changing values for the various characteristics.

TOMLINSON, supra note 126, at 9 n.20; Nielander, Digital Age Infringement, supra

note 134, at 20.

137 Khanna, supra note 3, at 349-51. See also, Bill Gates Has Marilyn's Digitized

Legs, As Well As a Bank of 500, 000 More Images that You Just Might Want, So...

Download a Pose, THE DALLAS MORNING NEWS, Mar. 25, 1996, at Business 20.

(New technologies will continue to be developed that will further increase the speed

at which digital information can be sent between computers, and the size and quality

of the monitors.).

.3. More than one-third of the 100 million households in the U.S. had at least one

PC. Khanna, supra note 3, at 347.

"I The Internet is an international network of interconnected computer networks

that, "[1]ink[ ] people together via computer terminals and telephone lines (and in

some cases wireless radio connections) in a web of networks and shared software,

allowing users to communicate with one another wherever they are in the ‘net.”‘

John Gladstone Mills III, Entertainment on the Internet: First Amendment and

Copyright Issues, J. PAT. & TRADEMARK OFF. SoC’Y (July 1997) 461, 462-63 n.3.

The Internet is an outgrowth of ARPAnet, a computer network developed by the

Advanced Research Project Agency (“ARPA”) of the Department of Defense, which

was designed to enable computers operated by the military, defense contractors, and

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text, and sound may now be distributed to and by virtually anyone with

a computer and a modem, or other means of accessing the Internet,

anywhere in the world. 140 Thus, the new technologies transform every

Internet user into a potential publisher and distributor. Similarly, given

the ease with which digitized works may be altered, and the interactive

nature of Internet use, the transmission of digitized works through the

telecommunications network transforms every Internet user from a

passive observer of a digital work (as is the case with CD-ROM use)

universities conducting defense-related research to communicate with one another by

redundant channels even if some portions of the network were damaged in a war.

Although ARPAnet no longer exists, it provided a prototype for the development of

civilian networks that ultimately linked with one another to form the embryo of the

Internet. Reno v. A.C.L.U., 521 U.S. 844, 850 (1997). The Internet has undergone

extraordinary growth, from 25 million people worldwide accessing it in 1995 (Mills,

Entertainment on the Internet, at 462-63 n.3) to 40 million people in 1996, with more

than 200 million expected in 1999. See Reno, 521 U.S. at 851. The primary means

of accessing the Internet is via a “personal computer… a modem.., a

communications program, access to a telephone line, and an account with and [sic]

Internet service provider,” Mills, at 462-63 n.3, but alternative means of access exist.

Internet Service Providers, generally commercial entities that charge a monthly fee,

provide access to computers and networks linked directly to the Internet. A variety of

Internet applications exist, and are being developed. Existing applications include

electronic mail (“e-mail”), mailing list services (“list-servs”), “newsgroups,” “chat

rooms,” and the World Wide Web (“the Web”). All of these methods may be used to

transmit text, and most can transmit images and sound as well. These applications

together constitute a unique medium known as ‘cyberspace,’ located in no particular

geographical location but available to anyone, anywhere in the world, with access to

the Internet. Reno, 521 U.S. at 851.

The World Wide Web (“Web”) consists of vast numbers of digitized works stored

in computers all over the world and allows users to search for and retrieve

information stored in remote computers, as well as, in some cases, to communicate

back to designated sites.   The Web is the most well-known category of

communication over the Internet. Reno, 521 U.S. at 852.

From the publishers’ perspective, the Internet constitutes a vast platform from

which to address and hear from a world-wide audience of millions of readers,

viewers, researchers, and buyers. Any person or organization with a computer

connected to the Internet can “publish” information. Publishers include government

agencies, educational institutions, commercial entities, advocacy groups, and anyone

else who posts material on the Internet. Id.

’40 Mills, supra note 139 at 464. Likewise, images, text and sound, may be

transmitted from “everyone to anywhere.” LEAFFER, UCL, supra note 1, at 6.

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into a potential author, co-author, group author, transformer, or creator

of derivative works.'41 The traditional notion of fixation of creative

works is likewise challenged by the fact that works that have been

posted on the Internet have the potential to evolve continuously. 142

In sum, the digital and telecommunications revolutions combine to

disrupt the foundation upon which traditional copyright law rests.

3. Copyright in Cyberspace: A Review of Recent History

a. The Problem

In the words of one copyright scholar:

The digital revolution will make us rethink all of the fundamental givens

of copyright law.

... [T]he Copyright Act places subject matter in eight discrete

categories…. What category you place a work in will determine the

scope of rights each work enjoys…. Digitization plays havoc with

traditional categories …. For example, how does one classify a work,

received by an on-line service, of an actor reciting a piece of poetry,

where visual images and music are transmitted? Is it a literary work,

dramatic work, or a sound recording?

Copyright is based on the concept of a fixed text whose contents are

static, permanent, unchanging. The Act confers the copyright privilege

only on those works that are “fixed in a tangible medium of expression.”

Traditionally, the author has been able to determine the finished

product… . By contrast, digitized information is not frozen in print.

The digital world is an interactive one, radically different than the world

of the printing press on which so much of our current copyright law is

based…. In a way, we may be returning to an earlier era where stories

were passed on from mouth to ear, without an authoritative version. But

our system of copyright makes no accommodation whatsoever for

141 Lyman, supra note 19, at 7.

142 Thus, the presentation of digital works via CD-ROM is to be distinguished

from the presentation of digital works on the Internet. With the former, the user may

not manipulate, modify, download, upload, etc. Rather, the user may only view the

material. With the Internet, on the other hand, the user may alter the work, distort it,

incorporate it into a new work, transmit it to someone else in its original, untouched

form, or in a modified state, etc.

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expressions which do not become fixed at some point or for cultural

expressions which lack a specific author. Will we look back at copyright

law as a Gutenberg artifact, without relevancy to the way in which

expressive information is produced and disseminated?143

Despite these and other questions regarding the merits of applying

existing copyright principles to the digital environment, the one

certainty is that at least some courts will attempt to do so144 unless the

Copyright Act is radically overhauled.145 This was the approach taken

by the court in Tasini v. New York Times.146 Tasini involved a claim by

freelance writers that their sale of stories to the New York Times and

other newspapers and magazines for publication in the daily edition did

not include the right to republish the stories electronically when the

daily editions were reformatted for online databases. The court framed

the question differently, however, and ruled that the publishers had

published the articles as part of original compilations (as opposed to

publishing each story as an independent document); the publishers held

copyrights in those compilations; and the copyrights in the

compilations included the right to publish the compilations in any

medium of the publishers’ choosing, whether print, online, CD-ROM

or otherwise.    The court further held that such new        modes of

publication amount to “revisions” to the collective works and under

section 201(c) of the Copyright Act, the owner of the copyright in a

compilation has a right to make revisions to that compilation.147

143 Leaffer, Protecting Artists’Rights, supra note 1, at 7-8.

’4 See, e.g., Religious Tech. Cr, 907 F. Supp. at 1365 n.ll; Tasini v. New York

Times, 972 F. Supp. 804 (S.D.N.Y 1997).

14′ Although the Digital Millennium Copyright Act and Copyright Term

Extension Act amend the 1976 Act, in no way do they radically revise it. For a full

discussion of the new laws, see infra (II)(H)(4).

146 Tasini, 972 F. Supp. 804.

147 Id. According to one court, the owner of the copyright in a compilation does

not have the right under § 201(c) to make copies of individual works that are part of

the compilation. Ryan v. Carl Corp., 23 F. Supp. 2d 1146 (N.D. Cal. 1998). In Ryan,

the court held that while § 201(c) gives the owner of the copyright in a compilation

the right to make copies of the entire compilation, it does not give the copyright

owner the right to make copies of individual works that are included in the

compilation. Id. at 1149. That right, the court held, is retained by the owner of the

copyright in the individual work. Id. at 1150-51. The court’s reasoning was based on

its interpretation of § 201(c), which grants the owner of the copyright in a

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Regarding the arguably inequitable repercussions that flow from its

ruling, the court stated:

[P]laintiffs insist that the framers of Section 201(c) never intended the

windfall for publishers permitted under this court’s ruling. This may

well be. If today’s result was unintended, it is only because Congress

could not have fully anticipated the ways in which modem technology

would create such lucrative markets for revisions; it is not because

Congress intended for the term revision to apply any less broadly than

the court applies it today. In other words, though plaintiffs contend

mightily that the disputed electronic reproductions do not produce

revisions of defendants’ collective works, plaintiffs’ real complaint lies

in the fact that modem technology has created a situation in which

revision rights are much more valuable than anticipated as of the time

the specific terms of the Copyright Act were being negotiated. If

Congress agrees with plaintiffs that, in today’s world of pricey electronic

information systems, Section 201(c) no longer serves its intended

purposes, Congress is of course free to revise that provision to achieve a

more equitable result. Until and unless this happens, however, the courts

must apply Section 201(c) according to its terms, and not on the basis of

speculation as to how Congress might have done things differently had it

148

known then what it knows now.

The decision is on appeal.149

compilation the “privilege of reproducing and distributing the contribution as part of

that particular collective work, any revision of that collective work, and any later

collective work in the same series.” Id. at 1149 (quoting 17 U.S.C. § 201(c))

(emphasis added). The court held that the right to reproduce the individual work as

part of a compilation meant precisely that, and did not include the right to reproduce

individually particular works included within the compilation. Id. at 1149-50.

148 Tasini, 972 F. Supp. at 827. Note that, despite the Court’s invitation to

Congress to amend § 201(c) of the Copyright Act, Congress declined to do so, at

least via the DMCA.

149 Id., appeal docketed, No. 97-9181 (2d Cir. Sept. 23, 1997). Note also that,

given the global nature of the contemporary world and the online environment, an

understanding of the issues regarding copyright in cyberspace requires some

understanding of the current state of international copyright law, as well as domestic

law. As discussed supra note 101, the TRIPS Agreement, in combination with the

fact that over 117 countries are parties to it, results in the expansion of copyright

worldwide. Yet, as at least one commentator has argued, TRIPS fails to address the

issues regarding public access to copyrighted works caused by the fact that a large

portion of the international intellectual property market will soon be online. See,

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b. Early Congressional Reform: the National Commission

on   New    Technological Uses     of  Copyrighted    Works

(“CONTU”)

Although the House Report had provided that computer databases

and programs were copyrightable as literary works, the Copyright Act

of 1976, as originally enacted, did not include computer programs as

copyrightable material.150 This disparity reflects the fact that at the

time it enacted the 1976 Act, Congress was aware of the existence of

electronic databases, but did not fully understand the implications of

such technologies.151   To further investigate the subject, Congress

established the National Commission on New Technological Uses of

Copyrighted Works (“CONTU”).152 CONTU issued its final report in

1979, leading Congress to amend the Copyright Act to recognize

computer programs as copyrightable subject matter, and to define

computer program as “a set of statements or instructions to be used

directly or indirectly in a computer in order to bring about a certain

result.”’153 The CONTU      Report also reached the controversial

conclusion that the placement of a copyrighted work into a computer,

or “inputting” the work, amounted to preparation of a copy within the

meaning of copyright law. 154

Two of CONTU’s Commissioners disagreed with these conclusions

and filed separate opinions. Commissioner Hershey, in dissent, argued

that computer programs, unlike other forms of copyrightable subject

matter, are essentially mechanical, labor-saving devices that do not

Hamilton, supra note 101, at 613-15. In doing so, this argument continues, TRIPS

gives publishers and other copyright holders the ability to inappropriately restrict

access to ideas and information, and to require payment as a precondition to

accessing online works, thereby precluding the poor, and others who are less than

“relatively wealthy,” from participating in the online environment. Id. at 615, 629.

The answer to this problem, according to this perspective, is not abandonment of

copyright, but, rather, to balance universal access with copyright protection by

creation of a “free-use zone.” Id. at 622-23. For further discussion of “free-use”

zones and related matters, see infra (II)(H)(3)(d).

150 LEAFFER, UCL, supra note 1, at 73-74.

“‘ Tasini, 972 F. Supp. at 818.

152 Id.

153 17 U.S.C. § 101. See also LEAFFER, UCL, supra note 1, at 74.

114 Chon, supra note 126, at 260 n.8.

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communicate with people, and, therefore, are not entitled to copyright

protection.  Adopting a more qualified approach, Commissioner

Nimmer, in a concurring opinion, argued that copyright protection

should only be granted to computer programs that produce a

copyrightable output such as a video game that produces an audio-

visual work. Full protection for computer programs, he argued, would

strain the meaning of "writings" and "authors," thereby excessively

broadening copyright law and transforming it into a general

"misappropriation" law.155   The subject of the proper scope of

expansion of copyright law continues to be highly controversial, as

does the question whether placement of a transient copy of a work into

the memory of a computer should constitute the making of a copy

within the meaning of the Copyright Act.156

c. Executive Efforts at Reform: Information Infrastructure

Task Force ("IITF")

In 1993, President Clinton formed the Information Infrastructure

Task Force ("IITF") to articulate and implement his Administration's

vision of the National Information Infrastructure ("NII").'57 The IITF

is organized into three committees: the Telecommunications Policy

Committee, the Committee on Applications and Technology, and the

Information Policy Committee.      Within the Information Policy

Committee, the Working Group on Intellectual Property Rights

("Working Group") was established to examine the intellectual

property implications of the NII and to make recommendations to

Congress and the President regarding changes to U.S. intellectual

property law and policy.158

'" LEAFFER, UCL, supra note 1, at 74-75. See also Chon, supra note 126, at 260

n.9.

156 See infra (II)(H)(3)(d).

157 THE CONFERENCE ON FAIR USE ("CONFU'), REPORT TO THE COMMISIONER ON

THE CONCLUSION OF THE FIRST PHASE OF THE CONFERENCE ON FAIR USE 1 (Sept.

1997).

"I Id. See also, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION

INFRASTRUCTURE: THE REPORT OF THE WORKING GROUP ON INTELLECTUAL

PROPERTY RIGHTS, ExECUTIvE SUMMARY      1 (Nov. 1995) (available at

).

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1 .The Working Group on Intellectual Property Rights

The Working Group released a preliminary report (“Green Paper”)

on July 7, 1994, which expressed significant concerns over the ability

of existing copyright law to provide the public with adequate access to

copyrighted works transmitted digitally.159 These concerns propelled

the Working Group to convene a Conference on Fair Use (“CONFU”),

as a means of bringing together copyright holders and users to discuss

fair use. CONFU was still in session at the time the Working Group

issued its final report (“White Paper”), on November 15, 1995.160

The White Paper concludes that existing copyright law, if properly

interpreted, is adequate to protect the interests of copyright owners in

cyberspace.161 The White Paper further concludes that since any use of

a computer to view, read, hear, or otherwise access a work in digital

form requires reproducing that work in a computer’s memory, and

since the Copyright Act gives the copyright holder exclusive control

over reproductions, it is necessary to have either a statutory privilege or

the copyright owner’s permission to view, read, hear, or otherwise

access a digital work.162 The White Paper also concludes that the right

of reproduction is implicated by: (1) placement of a work into a

computer’s random access memory (“RAM”); (2) scanning of a printed

work into a digital file; (3) digitization of photographs, movies, and

other works; (4) “uploading” of a digitized file from a user’s computer

to a bulletin board system or other server; (5) “downloading” of a

digital file to users; and (6) use of an end user’s computer as a “dumb”

terminal to access a file on another computer, where a copy of any

portion viewed is made in the temporary memory of the user’s

computer. 163

“9 CONFU, supra note 157, at 2.

160 Id. at 9-10.

161 EXECUTIVE SUMMARY, supra note 158, at 3. See also Litman, supra note 123,

at 20-21.

162 Litman, Revising Copyright Law, supra note 123, at 21.

163 MARIE C. MALARO, A LEGAL PRIMER ON MANAGING MUSEUM COLLECTIONS

176-178 n.314-21 and accompanying text (2d ed. 1998). Note that the Digital

Millennium Copyright Act does not appear to displace these conclusions regarding

the reproduction right.

As described in an open letter written by Prof. James Boyle and supported by more

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Regarding liability, the White Paper concludes that individuals,

as well as their Internet service providers and the proprietors of any

computers that assist in the transfer of files, are liable for copyright

infringement whether or not they have knowledge that intellectual

property rights have been violated.164 As a policy matter, the White

Paper holds that it is online service providers that are in the best

position to know the identity and activities of their subscribers and to

stop unlawful activity.'65

2. The Conference on Fair Use ("CONFU")

The formation of CONFU was triggered by the Working Group's

preliminary report, the Green Paper, and its: (1) expression of concern

over the ability of existing copyright law to provide the public with

adequate access to copyrighted works transmitted digitally; and (2) call

for a conference to discuss the matter. 166 CONFU held its first meeting

in September, 1994, and issued proposed guidelines ("Guidelines") as

part of its Final Report, issued in September 1997.167

As the preamble to CONFU's Guidelines makes clear, the

Guidelines do not constitute binding authority, because "only the courts

than 100 other law professors to Bruce A. Lehman, the Assistant Secretary of

Commerce and head of the Working Group, the White Paper presents an inaccurate

and one-sided picture of fair use, characterizing it as a means of avoiding the

transaction costs of obtaining permission from the copyright owner- transaction

costs which, the White Paper goes on to incorrectly conclude, will be largely

eliminated when the Internet becomes more efficient and commercially viable,

because obtaining licensing from the copyright owner would, at that point, become

easy. Phan, supra note 120, at 197-98.

"6 Litman, supra, note 123, at 21-22. See also, William 0. Ferron, Jr.,

Christopher J. Daley-Watson, Michael L. Kiklis, On-Line Copyright Issues, Recent

Case Law and Legislative Changes Affecting Internet and Other On-Line Publishers

(Part I), 79 J. PAT. & TRDMRK. Soc'Y, Jan. 1997, at 5, 24-25; EXECUTIVE SUMMARY,

supra note 160, at 4-5.

165 Ferron, supra note 164, at 25-26; EXECUTIVE SUMMARY, supra note 158, at 4-

5. For a discussion of the DMCA's provisions regarding liability for online service

providers, which presumably preempt those of the White Paper, see infra

(II)(H)(4)(a)(1)(b).

"6 See CONFU, supra note 157, at 16-17, 20.

167 Id. at Appx. G-K.

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can authoritatively determine whether a particular use is fair

use…. ,,168  Thus, the Guidelines merely “represent the endorsers’

consensus of conditions under which fair use should generally apply

and examples of when permission is required.”’169 The stated purpose

of the Guidelines, then, is:

[T]o provide guidance on the application of fair use principles by

educational institutions [including museums], educators, scholars and

students … who wish to digitize copyrighted visual images.., develop

multimedia projects using portions of copyrighted works… [or who

wish] to use copyrighted works for distance education [ ] under fair use

rather than by seeking authorization from the copyright owners for non-

commercial educational purposes.170

Although the impetus for CONFU’s formation was concern about

the public’s ability under existing law to access copyrighted works

transmitted digitally, and although the stated purpose of the Guidelines

is to facilitate use of copyrighted works via fair use rather than

authorization from copyright holders, in the final analysis the

Guidelines require that authorization be sought prior to use. In so

requiring, the Guidelines severely restrict the application of fair use in

the electronic environment. More specifically, the Guidelines: (1)

require that access to, or display or distribution of, images digitized

under the Guidelines be limited to the institution’s secure electronic

network;171 (2) limit the duration of digital image collections;172 (3)

require   a  “reasonable    inquiry”’173  into  the   copyright   owner’s

168 Id. atAppx. Q § 1.1.

169 Id.

“0 Id. (Emphasis added.)

171 Id. at Appx. H, § 2.3.3.

172 Id. at Appx. H, § 2.4.

113 “Reasonable inquiry” is defined as a search for information about the image

including, at a minimum:

(1) [C]hecking any information within the control of the educational institution,

including slide catalogs and logs… ; (2) asking relevant faculty, departmental staff,

and librarians, including visual resource collections administrators… ; (3)

consulting standard reference publications and databases… ; and (4) consulting

rights reproduction collectives and/or major professional associations representing

image creators in the appropriate medium.

Id. at Appx. H, § 5.2.

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whereabouts in an attempt to obtain permission for a particular use;174

(4) require attribution and acknowledgement, i.e., crediting of the

sources and providing of relevant information regarding ownership of

copyright;175 (5) admonish educators, scholars and students to respect

the integrity of the original images and to use caution in making any

alterations to the image;'76 and (6) stress that even as an institution

proceeds to digitize copyrighted images as permitted under the

Guidelines, it should "simultaneously conduct the process of seeking

permission to retain and use the images."'177 The extent to which the

Guidelines have force or effect, always a question, is even more

doubtful in light of passage of the DMCA.178

d. From Free Use to Toll Road: Academic Perspectives on

Reform

Proposals for reform of copyright law to make it applicable to the

digital environment have, at least up until enactment of the Digital

Millennium Copyright Act and Copyright Term Extension Act,

abounded in the academic literature, reflecting different philosophical

and political perspectives. As discussed above, under the law as

interpreted by the White Paper, uploading, downloading, and other

common manipulation of copyrighted material by Internet users

constitutes copying within the meaning of copyright law, and is

unlawful unless done with the copyright owner's permission or via

statutory privilege.179 For those who accept the rationale upon which

this approach is based, a question arises as to how to prevent,

apprehend, or collect revenues for such activity. Among the potential

" Id. atAppx. H, § 5.1.

17S Id. at Appx. H, § 5.3.

"76 Id. at Appx. H, §§ 5.6, 5.7.

177 Id. at Appx. H, § 5.1. Where the image is from a known source, it may be

used for one academic term and may be retained in digital form while permission is

sought. Id. at Appx. H, § 2.4.1. Where the rights holder of an image is unknown,

however, a digital version of the image may be used "for up to 3 years from first use,

provided that a reasonable inquiry... is conducted by the institution seeking

permission to digitize, retain, and reuse the digitized image." Id. at Appx. H., § 2.4.2.

178 For a full discussion of the DMCA, see infra, (II)(H)(4)(a).

"9 See supra notes 154-56 and accompanying text.

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solutions recommended in the literature are the following: development

of an online regulatory protection scheme or protocol through which

the Internet user would participate in policing;180 technological “self-

help,” or encryption techniques that render works unviewable unless

the user pays a fee to obtain a decryption key;181 and licensing

arrangements.182 On the other side of the fence are those who believe

that copyright is anachronistic on the ground that it is based upon

notions of authorship, originality, fixation, and reproduction via print

media that are antiquated, inapplicable to the digital environment, and

inconsistent with the contemporary “Postmodern”183 era in which we

live. Emerging somewhere in between are a variety of middle-of-the-

road perspectives that would apply copyright to the online environment

but establish a broader zone of fair use. A review of some of these

proposals, and the schools of thought from which they derive, is

essential in order to understand the breadth of the debate regarding

amendment of copyright law, the ideological context within which the

debate is occurring, and how the Digital Millennium Copyright Act

and Copyright Term Extension Act fit within this debate.

In the words of one contemporary observer on the copyright scene,

Prof. Neil Weinstock Netanel:

[A]n extraordinarily bitter battle is raging in Congress, the courts, law

reviews, Internet discussion groups, and numerous international fora

over the purpose and scope of copyright as we enter the digital age. On

one side are U.S. business leaders, government officials, and others who

have called for expanded copyright protection to support commercial

development of the much heralded National and Global Information

Infrastructures. These proponents of an expansive copyright have drawn

heavily upon emerging scholarship that applies an amalgam of

neoclassical and new  institutional economic property theory to

copyright. 184

180 Mills, supra note 139, at 493-94.

181 Leaffer, Protecting Authors’ Rights, supra note 1, at 10-11.

182 Id. at 11-12.

183 For a discussion of Postmodernism, see supra note 120.

814 Neil Weinstock Netanel, Copyright and a Democratic Civil Society, 106 YALE

L.J. 283, 285-86 (1996).

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[Neoclassicists] favor a proprietary copyright regime in which, absent

incurable market failure, owners have the absolute right… to prevent

unauthorized uses and to set licensing prices through ex ante

negotiations.185

Neoclassicists assert that, as new collective licensing institutions and

computerized tracking systems sharply reduce negotiating costs and as

digital technology makes possible ever more exact price discrimination,

a regime of property rules and market transactions should be the

cyberspace norm.

On the other side, numerous critics have expressed serious misgivings

over the political, cultural, and economic ramifications of expanded

protection. In so doing, many such critics have espoused, in one form or

another, what might be termed a minimalist position.187

[T~he minimalist position has led some critics to a utopian vision of a

world without copyright, where we all would be free to engage in

collaborative, creative play. These critics believe that little or no

copyright incentive is required to encourage creative activity and

interaction on the Internet and, therefore, that copyright as we know it is

not needed in the digital world. 188

Somewhat more moderately, other critics would make room for some

form of copyright in cyberspace, but would insist on maintaining in the

digital network environment the same "free use zones" that have arisen

in the hard copy world.189

As for Prof. Netanel's views, he recommends what is, in his words,

a "democratic paradigm,"--a conceptual framework for copyright that

rejects both the expansionism of neoclassicist economics and the

"85 Id. at 320.

186 Id. at 372.

1897 Id. at 287.

"s8 Id. at 338.

"89 Id. at 339.

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UCLA ENTERTAINMENT LAW REVIEW

minimalism of many critics.190 The democratic paradigm holds that

copyright is a state measure that uses market institutions to promote the

democratic character of civil society.     Although the democratic

paradigm would require that copyright protection be sufficiently strong

to support copyright’s production and structural functions, it would at

the same time accord authors a limited proprietary right to encourage

transformative and educative uses of existing works.191 It would also

advocate different treatment for different types of transformative uses

in an effort to maintain incentives for the creation and distribution of

original work without unduly suppressing secondary borrowing.192

This analytical structure, although it may overstate the perspectives

at the poles, provides a useful prism through which to analyze the

various proposals for reform. First are the proposals from, in the words

of Prof. Netanel, the neoclassical end of the spectrum. Neoclassicists

argue that copyright is necessary because, without it, unbridled

competition from free riders-persons who would be able to copy and

distribute the work without paying copyright royalties-would result,

driving the price for user access to its near-zero marginal cost. This

“free rider” problem, in turn, would greatly impair the ability of

authors and publishers to recover their fixed production costs. Thus,

this perspective continues, only authors and publishers unconcerned

with monetary remuneration would produce and distribute creative

expression, thereby resulting in underproduction and underdistribution

of creative works.193

The neoclassicist solution to this problem is to institute online

collective licensing schemes194 and computerized tracking systems

based on property rules and market transactions. The extension of

190 Id. at 288.

191 Id.

192 Id. at 378.

19′ Id. at 292.

’94 Online collective licensing systems would be analogous to ASCAP, BMI, and

the Copyright Clearance Center, collective licensing organizations that exist in the

off-line universe. Such organizations typically enforce the copyrights of their

members by granting users a blanket license to use works in the organization’s

catalogue, thereby enabling authors to receive payment from users who are widely

dispersed and who would otherwise likely use the works without permission and

without paying. Id. at 375.

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copyright to such private uses as online browsing and viewing would,

in the view of neoclassicists, enable the market pricing system to

efficiently and fully allocate resources, giving copyright holders the

ability "'to channel their investments more precisely to meet ... newly

articulated patterns of demand.'"195

These licensing systems, if implemented, would likely result in

elimination of free use on the Internet and establishment of a "pay-per-

view" system.      Although such    licensing systems would allow

copyrighted works to be lawfully accessed (viewed, downloaded,

uploaded, manipulated, etc.) without the prior authorization of the

copyright owner, payment of a fee for access would likely be required.

In such a scenario, Internet use would be strictly monitored and

recorded, and each Internet account would be billed for all locations

"visited" with charges assessed for each "trip."''96

At the other end of the spectrum are those "minimalists"--

Postmodernists and others-who argue that copyright should be

abolished on the ground that it is anachronistic in the electronic

environment and/or misplaced in the first instance. Several strands of

thought appear at this end of the spectrum. One view argues that

intellectual property law is a means of undemocratically withdrawing

material from the public domain into the private domain of the

economically and politically powerful.197   This view holds that the

fundamental concepts of author, originality, and financial incentive as

necessary to induce creativity are, in the end, a fiction used to create an

illusion of copyright holders as "romantic" authors, "unique and

transcendent being[s], possessing originality of spirit”, geniuses, whose

works are inherently creative and original.198 This view further holds

that the concept of the romantic author was fabricated to deflect

’9′ Id. at 372 n.398 and accompanying text (quoting PAUL GOLDSTEIN,

COPYRIGHT’S HIGHWAY: FROM GUTENBERG TO THE CELESTIAL JUKEBOX 200 (1994)).

196 The DMCA increases the likelihood that this scenario will develop. See infra

(II)(H)(4)(a).

9 Aoki, supra note 15 at 2.

‘g See, e.g., Id.. “As some recent scholars have suggested, the trope of the

Romantic Author serves to suppress information’s contradictory character and

provides the legal regime with an attractive figure on whom to confer property

rights.” Id. at 72.

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attention away from the fact that the vast majority of copyright-holders

are mega-corporate entities, such as the publishing, cable television

and software industries, which have been deeply involved in the

lobbying process through which copyright law has been created, and

which have created a law that benefits them and confers monopolies

upon them, thereby undemocratically enabling them to control access

to and use of the vast body of material that comprises their

industries.199

Another view at the minimalist end of the spectrum holds that the

model of romantic authorship erroneously assumes that most, or most

significant, cultural production is highly individualized, thereby

relegating other types of cultural production, such as semi-anonymous

(e.g., folkloric) or collaborative production, to the status of mere

“sources.” By doing so, this view continues, the romantic model of

authorship inappropriately focusses attention upon the originality that

an author brings to pre-existing “source” materials rather than on the

degree to which all authorship is influenced by such “sources;” it also

inappropriately grants one class of authors monopoly rights in the

reworked sources, thereby denying other prospective authors free

access to such material. The net result, this perspective concludes, is

the conversion of source material that is in the public domain into

private intellectual property.200 This view further posits that the fit

between copyright’s theory of authorship and originality, and the

reality of the electronic environment, is even more strained than in the

print environment, given the possibilities for manipulation, alteration,

and collaborative authorship of digitized works.201

For those minimalists who subscribe to these views with little

qualification and define the coming era as “post-literate, post modem,

199 Litman, supra note 123, at 43, 47. In 1990, the copyright industries generated

$331.5 billion, or 5.8% of the U.S. gross national product, and employed 5.6 million

people or 4.8% of total U.S. employment. Equally significant, in 1990, a subset of

core copyright industries (pre-recorded music, motion pictures, home videos, books,

periodicals, newspapers, and computer software) generated foreign sales of $34

billion. As of 1995, software produced by U.S. companies constituted more than half

of the world market. These numbers will only increase in the coming years.

LEAFFER, UCL, supra note 1, at 2.

200 Aoki, supra note 15, at 39-40.

201 See, e.g., Chon, supra note 126, at 264.

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post structuralist, antiformalist, and surfictive,”202 the end of copyright

is at hand. These minimalists argue that:

[W]hatever theoretical justification there may have been for copyright

under the regime of the press and the linear text, in the post-literate

millennium that lies ahead, given the technologies that are already at

hand, we will surely encounter the end of authorship as we have known

it, and the emergence of a new experience of creative play.203

[A]uthorship… will survive, though in radically personal form, and the

constraining figure of societal (or state) authority [ ] will vanish-and

with it, in all likelihood, intellectual property as we know it.204

A less extreme perspective on copyright reform is articulated by

those minimalists who are sympathetic to some of the elements of

these views but who believe that rather than eliminating copyright,

what is necessary is a shifting of copyright’s balance which, in their

view, weighs heavily in favor of copyright holders rather than the

general public. A variety of proposals emerge from this camp, many of

which share populist elements.      One such proposal stresses that

copyright law has always been formulated, in large part, by copyright-

intensive industries, and that the general public has never had the

opportunity to influence the drafting process to ensure that the law

does not unduly burden private, non-commercial use of copyrighted

works.205   This view recommends that copyright be recast as an

exclusive right of commercial exploitation, and that the crucial

distinction between lawful and unlawful copying be whether someone

has “[made] money (or tr[ied] to) from someone else’s work without

permission” or has engaged in “large-scale interference with the

copyright holders’ opportunities to do so.”’206

Another proposal of a populist nature focusses upon the new forms

of collaborative authorship that have come about through the Internet.

To recognize such authorship, this proposal would create an expanded

202 See, e.g., Lange, supra note 19, at 139.

203 Id. at 147.

204 Id. at 148.

205 Litman, supra note 123, at 23.

206 Id. at 39-41.

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“joint work” category.207

Also emerging from the populist literature is a proposal that

national and international policymakers create an online “free use”

zone that would permit the type of free use of copyrighted works that is

lawful outside of cyberspace. This proposal would authorize online

“borrowing” and “browsing” of copyrighted works without the

copyright holders’ permission or payment of a fee. More specifically:

(1) “browsing,” with the exception of browsing in online public

libraries, would include brief perusal of a work, but would not include

permanent downloading;208 (2) an online version of the existing library

lending and photocopying exemption would be created; this exemption

would hold libraries responsible for ensuring that their electronic

“borrowers” do not download copyrighted works or retain works

beyond a limited period of time; and (3) a “personal lending”

exemption would be created, allowing individuals to transmit copies of

works online to friends and family for personal and private use.209

As for Prof. Netanel’s “democratic paradigm,” this is essentially a

traditional view of copyright law with an emphasis on the

“transformative value” component of fair use discussed by the

Supreme Court in Campbell v. Acuff-Rose,210 and the Second Circuit

Court of Appeals in Rogers v. Koons.211 This view argues that digital

technologies will radically alter copyright markets, substantially

diminishing authors’ revenues from the sale of hard copies. To

compensate for the loss in hard copy sales and to continue to provide

an incentive for the production of creative works, copyright should be

extended to many digital uses,212 such as online browsing, personal

downloading, and related activities, for which a fee should be

charged.213 Rejecting the neoclassicist embrace of collective licensing,

however, because of the monopoly power and pricing problems that

207 Chon, supra note 126, at 275.

208 Devices that permit publishers to distinguish between the two, already exist.

Hamilton, Imperialistic, Outdated and Overprotective, supra note 101, at 623.

209 Id. at 631.

210 See supra notes 109-116 and accompanying text.

211 See supra notes 119-122 and accompanying text.

212 Netanel, supra note 184, at 373.

213 Id. at 373-74.

200

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typically develop   with  collective licensing  organizations,214 the

democratic paradigm instead recommends that a more measured

assessment be conducted of the extent to which online activities such

as browsing and personal downloading, if permitted on a mass scale,

would erode existing copyright markets. To the extent that private use

licenses are ultimately instituted, this view recommends that a system

of state regulation likewise be instituted to ensure that user license fees

are reasonable.215

This view also stresses that copyright's reproduction right and

derivative right have been inappropriately expanded, resulting in the

prohibition of uses that are truly transformative on the pretext that they

appropriate the original work's expression.216       The democratic

paradigm posits that the solution to this problem is to apply different

treatment to different types of transformative uses, so that incentives

for authors are maintained secondary borrowing is not inordinately

restricted.217

The importance of transformative value is also stressed by several

other commentators in the literature and forms the basis for other

proposals for reform. The common thread running through these

proposals is that the Internet's unique combination of capabilities-

interactivity, independent   publication,  instantaneous  worldwide

dissemination-permit infinite transformation of existing works, and

that such transformation should be encouraged.218 One view holds that

the use is transformative if it adds value to the original material such

that the original is transformed in the creation of "new information,

new aesthetics, new insights, or new understandings that are of the

very type that the fair use doctrine intends to protect for the enrichment

of the public interest.''219 Applied to the Internet, such transformative

uses could include displaying the work and then creating a dialogue

about it, digitally altering the original work and incorporating it into a

214 Id. at 375.

215 Id. at 376.

216 If the use is truly transformative then, by definition, it is not appropriative.

217 Id. at 376-79.

218 See, e.g., Phan, supra note 120, at 215.

219 Id.

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new work, or creating hypertext links to other works.220 To facilitate

the proper balancing of the copyright holder’s economic interest with

the public interest, however, transformative use would still be

evaluated along with the other four factors in the fair use analysis.221

Moreover, the copyright holder would still have the opportunity to

rebut a presumption of fair use if analysis of the other four factors

demonstrated that the taking was excessive.222

Other commentators likewise point to the fact that digital images

and other online material may be easily altered and manipulated, and to

the heavy flood of derivative right infringement cases that could result

from  such alteration.223  One test proposed in the literature for

determining whether the derivative right has been infringed holds that

expressive characterization in a work of authorship has distinct

elements, and that protection should extend to cover each of these

expressive qualities individually. Under this view, infringement would

occur if a “distinct expressive characteristic” from the original were

cognizable in the derivative work, and if the derivative “generate[d] the

identity of the original work in the mind of the observer.”,224

e. Summary

While much disagreement exists regarding what the law should be,

certain general principles of law may be identified as governing, at

least until enactment of the Digital Millennium Copyright Act and

Copyright Term Extension Act.

First, when copyrighted material is transmitted electronically at

least three of the rights that are part of the bundle of rights that

comprise copyright are implicated. They are the rights to reproduce,

display, and perform the copyrighted work.225

-Reproduction within the meaning of the Copyright Act occurs when a

computer program is read into RAM.226 This is so despite the fact that

220 Id.

221  Id.

222 Id. at 216.

223 Nielander, supra note 134, at 16.

224  Id.

225 Ferron, supra note 164, at 7.

226 MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511 (9th Cir. 1993) cert.

202

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reproduction, by definition, requires fixation in a tangible form that is

“sufficiently permanent or stable to permit it to be perceived,

reproduced, or otherwise communicated for a period of more than

transitory duration.”’227

-The performance right is implicated because to perform a work

means “to recite, render, play, dance or act it, either directly or by means

of any device or process.”’228 Such devices and processes include, “all

kinds of equipment for reproducing or amplifying sounds or visual

images, any sort of transmitting apparatus, any type of electronic

retrieval system, and any other techniques and systems not yet in use or

even invented.”’229 Since transmission of a copyrighted work via a

computer network amounts to rendering the work by means of a

transmitting apparatus or electronic retrieval system, it follows that the

performance right is implicated.230

- Likewise, the display right is implicated in that under the Copyright

Act to display a work means “to show a copy of it, either directly or by

means of. . . “any other device or process…,231

In sum, the mere act of posting material on the Internet implicates

these rights.

Second, the basic activities in which Internet users routinely

engage- downloading, uploading, and forwarding material, to name a

few-implicate the three rights discussed above and constitute

copyright infringement unless authorized by the copyright owner or

protected via fair use or other statutory privilege.232

Finally, digital manipulation of a copyrighted work could constitute

violation of the copyright owner’s exclusive right to make derivative

dismissed 114 S.Ct. 671 (1994).  For a discussion of the merits of MAI’s

interpretation of the law, see MALARO, supra note 163, at 177-78 nn.318-21 and

accompanying text. See also supra notes 154 and 156 and accompanying text.

227 Ferron, supra note 164, at 14 (quoting H.R. REP. 1476, 94th Cong., 2d Sess. at

62 (1976).

22. 17U.S.C. § 101.

229 Ferron, supra note 164, at 7 (quoting H.R. REP. 94-1476 at 63).

230 Id. at 8.

231 17U.S.C. § 101.

232 See, e.g., Litman, supra note 123, at 21.

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works.233

4. 1997-98: New Laws and Legislative Proposals

During its 1997-98 session, Congress considered several legislative

proposals directed at amending copyright law to make it explicitly

applicable to the digital environment. The most significant proposals

to become law were the Digital Millennium Copyright Act and

Copyright Term Extension Act. The central provisions of these two

laws, focussing upon those that have particular significance for

museums and other nonprofit institutions, are discussed below. Also

discussed are some of the other legislative proposals considered by

Congress that are of particular note.

a. The Digital Millennium Copyright Act

1. Overview

The   DMCA      implements    the  World    Intellectual Property

Organization (“WIPO”) Treaties signed by the U.S. in 1996.234       In

doing so, it declares unlawful and institutes penalties for: (a)

circumventing technological measures that control access to and

reproduction of copyrighted works transmitted digitally; (b) providing,

distributing, or importing for distribution copyright management

information that is false; and (c) removing or altering copyright

management information.235

233 See supra notes 220-21 and accompanying text.

234 DMCA, 17 U.S.C. Ch. 12. The DMCA is organized into the following five

titles: Title I, known as the WIPO Copyright and Performances and Phonograms

Treaties Implementation Act of 1998, beginning with section 101; Title II, known as

the Online Copyright Infringement Liability Act, beginning with section 201; Title

III, known as the Computer Maintenance Competition Assurance Act, beginning with

section 301; Title IV, Miscellaneous provisions, beginning with section 401; and Title

V, known as the Vessel Hull Design Protection Act, beginning with section 501. The

provisions most relevant to museums are contained in Titles I, II, and IV.

235 17 U.S.C. §§ 1201-1205. “Copyright management information” is defined as:

certain information, including the title, name of author and copyright owner, and

terms and conditions for use of a copyrighted work. 17 U.S.C. § 1202(c).

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In addition to implementing the WIPO treaties, the DMCA also

limits the liability of online service providers, providers of network

access, and entities that offer the transmission, routing, or providing of

connections for digital online communications (collectively "service

providers") for copyright infringement that occurs on networks that

they operate but over which they do not exercise editorial control.236

Finally, the DMCA requires the Library of Congress, Copyright

Office, and Department of Commerce, variously, to conduct specified

studies and rulemaking proceedings, participate in international fora,

and provide advice on a wide range of copyright-related matters.237 It

further directs these administrative entities to report to Congress on a

variety of matters relating to the new law, including its impact upon the

public's ability to freely access and make non-infringing uses of

copyrighted works, and its adequacy in protecting copyright owners

against unauthorized access to their encrypted copyrighted works.238

a.   Copyright Protection and Management Systems239

The DMCA contains anti-circumvention provisions240 that prohibit

both circumvention of technological measures that control access to

protected works (e.g., encryption)241 and manufacturing or trafficking

in  technology   designed   to  circumvent encryption     measures.242

Exempted from these provisions are: (1) users of a copyrighted

work that is in a particular class, if the prohibition is likely to adversely

affect such persons in their ability to make noninfringing uses of that

236 17 U.S.C. § 512. Note that the term "service provider" is defined broadly.

Any entity that meets the definition of service provider, including a museum, is

protected by  the  DMCA's liability limitation provisions.   See  infra

(II)(H)(4)(a)(1)(b).

7 See infra notes 250-52 and accompanying text; note 273 and accompanying

text; notes 281-82 and accompanying text.

28 17 U.S.C. §§1201(a)(1)(C), 1201(g)(5). See also infra note 254 and

accompanying text; notes 270-72 and accompanying text; note 279 and

accompanying text; notes 283-84 and accompanying text.

239 17 U.S.C. §§ 1201-1205.

240 17 U.S.C. § 1201.

241 17 U.S.C. § 1201(a)(1)(A).

242 17 U.S.C. § 1201(a)(2)-(3).

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class of works;243 (2) nonprofit libraries, archives, or educational

institutions that gain access to a commercially exploited copyrighted

work solely to make a good faith determination of whether to acquire

the  work;244   (3)  lawfully   authorized   investigative, protective,

"information security,'245 or intelligence activities of governmental

entities;246 (4) activity intended to achieve interoperability of computer

programs;247 and (5) circumvention that occurs in the course of good

faith encryption research.248

These provisions do not go into effect until two years after the date

of enactment of the law.249      During this time, and during each

succeeding three-year period, the Register of Copyrights ("Register")

shall consult with the Assistant Secretary for Communications and

Information of the Department of Commerce ("Secretary"). Upon

recommendation     of  the   Register, the    Librarian  of   Congress

("Librarian") is required to conduct a rulemaking proceeding to

determine whether the anti-circumvention provisions adversely affect

copyright users in their ability to make noninfringing uses of a

particular class of copyrighted works.250 In conducting the rulemaking,

the Librarian must examine: (1) the availability of copyrighted works

for use; (2) the availability of copyrighted works for nonprofit archival,

preservation, and educational purposes; (3) the impact of the anti-

circumvention provisions on traditional fair use activities such as

criticism, comment, news reporting, teaching, scholarship, or research;

and (4) the effect of circumvention of encryption measures on the

243 17 U.S.C. § 1201(a)(1)(B). Interpretation of this section and, in particular, the

term "adversely affected," is likely to have a significant effect upon how the fair use

doctrine is held to apply to the Internet. The DMCA directs the Librarian of

Congress to interpret this section in a rulemaking proceeding. See 17 U.S.C. §

1202(a)(1)(C); see also infra notes 250-52 and accompanying text.

244 17 U.S.C. § 1201(d). Note that certain conditions apply. See id.

245 "Information security" is defined as "activities carried out in order to identify

and address the vulnerabilities of a government computer, computer system, or

computer network." 17 U.S.C. § 120 1(e).

246 17 U.S.C. § 1201(e).

247 17 U.S.C. § 1201(f).

248 17 U.S.C. § 1201(g)(1)-(4).

249 17 U.S.C. § 1201(a)(1)(A).

250 17 U.S.C. § 1201(a)(l)(C).

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market for or value of copyrighted works.251        If the Librarian

determines that copyright users are adversely affected, she must

publish the affected class of works; the prohibition will then be

inapplicable to users of the affected class of works for the ensuing

three-year period.252

The DMCA also permits anti-encryption activity in connection with

good faith encryption research.253 It further directs the Register and the

Secretary to report jointly to Congress on the effect of these provisions

on: (1) encryption research and the development of encryption

technology; (2) the adequacy      and   effectiveness of encryption

techniques to protect copyrighted works; and (3) protection of

copyright owners against unauthorized access to their encrypted

copyrighted works.254

In addition to containing anti-circumvention provisions, the DMCA

also contains a section regarding the integrity of copyright

management information.255      This section declares unlawful the

provision or distribution of false copyright management information

with the intent to induce or conceal infringement.256 Likewise, it bars

the removal or alteration of copyright management information.257

Exempted    from   this prohibition  are: (1) lawfully    authorized

investigative, protective, information security, or intelligence activities

of governmental entities;258 and (2) certain transmissions by broadcast

stations or cable television systems.259

The DMCA also creates civil remedies to apply to both the

circumvention   of technological protection     measures   and   the

falsification of copyright management information.260 In addition, it

establishes criminal penalties for willful violations committed for

251 Id.

252 17 U.S.C. § 120 1(a)(1)(D).

253 17 U.S.C. § 1201(g)(2)-(4).

254 17 U.S.C. § 1201(g)(5).

251 17 U.S.C. § 1202.

256 17 U.S.C. § 1202(a).

257 17 U.S.C. § 1202(b).

258 17 U.S.C. § 1202(d).

259 17 U.S.C. § 1202(e).

260 17 U.S.C. § 1203(a)-(c).

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commercial advantage or private financial gain.261 Of particular note

to museums, the criminal penalties do not apply to nonprofit libraries,

archives, and educational institutions.262

b.    Limitations on Liability for Copyright Infringement

Relating to Material Online263

The DMCA limits the liability for copyright infringement of

entities that offer the transmission, routing, or providing of connections

for digital online communications by reason of the intermediate and

transient storage or transmission of material through the provider’s

system or network if: (1) the transmission is not initiated by the

provider; (2) the transmission or storage is carried out through an

automatic process, and the provider does not select or modify the

material or select the recipients of it; and (3) the material is not

ordinarily accessible to anyone other than the intended recipients, and

no copy of it is maintained any longer than is required to complete the

transmission.264

The DMCA also limits the liability of service providers for material

residing on their systems or networks at the direction of users if the

provider: (1) lacks knowledge that the material is infringing; (2) does

not receive a financial benefit from the infringing activity; and (3)

upon   receiving  notification of claimed    infringement responds

expeditiously to remove or disable access to the material.265   This

liability limitation only applies, however, where the provider: (1)

designates an agent to receive notifications of claimed infringement;266

(2) implements a policy for terminating subscribers who are repeat

infringers; and (3) accommodates and does not interfere with standard

technical measures used by copyright owners to identify or protect

261 The penalties are: up to $500,000, or imprisonment for up to 5 years, or both,

for the first offense; and up to $1,000,000, or imprisonment for up to 10 years, or

both, for the second offense. 17 U.S.C. § 1204(a).

262 17 U.S.C. § 1204(b).

263 17 U.S.C. § 512.

264 17 U.S.C. § 512(a), (k)(1)(A).

265 17 U.S.C. § 512(c)(1), (k)(1)(B).

266 17 U.S.C. § 512(c)(2)-(3).

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their copyrighted works.267

As for educational institutions that function as service providers,

the DMCA specifies that certain liability limitation provisions apply

when faculty members or graduate students perform a teaching or

research function.268

c.  Distance   Education,   Libraries   and   Archives,

Electronic Commerce, and Other Matters

The DMCA also contains miscellaneous provisions that expand

certain existing rights of libraries and archives to reproduce and

distribute copies or phonorecords, to authorize three copies or

phonorecords to be produced or distributed for preservation, security,

or replacement purposes.269 In addition, the Act directs the Register to

submit recommendations to Congress on how to promote distance

education through digital technologies while maintaining a balance

between the rights of copyright owners and the needs of copyright

users.270

Also of note, the DMCA requires the Register and Secretary to

report to Congress on: (1) the effects of Title I of the DMCA (the

WIPO Copyright Treaties Implementation Act)27' and the development

of electronic commerce and associated technology on the operation of

sections 109 and 117 of the Copyright Act of 1976; and (2) the

relationship between existing and emergent technology and the

operation of such provisions.272

Finally, the DMCA mandates that the Register: (1) advise

Congress, Federal agencies and departments, and the Judiciary on

267 17 U.S.C. § 512(i)(1)(A)-(B).

268 17 U.S.C. § 512(e). This provision would, presumably, apply to art museums

that are part of universities, where their staff performs teaching or research functions.

269 17 U.S.C. § 108(b). Note that several technical requirements qualify these

rights. For rules regarding unpublished works see 17 U.S.C. § 108(b); for published

works see 17 U.S.C. § 198(c).

270 DMCA § 403.

271 See supra note 234 and accompanying text.

272 DMCA, § 403. Note that museums, as educational institutions, would

arguably be eligible for any exemption that is ultimately developed pursuant to this

provision. See also infra note 284 and accompanying text.

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national and international issues relating to copyright; (2) participate in

meetings relating to copyright of international organizations and with

foreign officials; and (3) conduct studies and programs regarding

copyright and related matters, including educational programs

conducted cooperatively with foreign intellectual property offices and

international intergovernmental organizations.273

2. Analysis

The Digital Millennium Copyright Act clarifies that existing

copyright law, and the principles of authorship and originality upon

which traditional copyright law is based, apply to the digital

environment. To the extent that the new law changes existing law, it

does so by strengthening the rights of copyright holders. Also of

profound significance, the combined effect of the DMCA and the

deployment of encryption technologies is that copyright owners, for the

first time in history, have both the right and the ability to completely

control access to copyrighted works. Finally, the DMCA arguably

serves to increase the value of copyrights.

The DMCA accomplishes these results through a variety of

vehicles.   First, it declares unlawful the circumvention of and

trafficking in  technology   designed  to   control access to  and

reproduction of copyrighted works.274 It also institutes a wide range of

civil275 and criminal penalties276 for such actions. Finally, it conditions

the service provider liability limitation provisions on such providers

accommodating, and not interfering with, encryption measures used by

copyright owners to protect copyrighted works.277 The net result is to

facilitate the use of encryption mechanisms on the Internet, and thereby

pave the way for the transformation of the Internet from its current

incarnation as a kind of global public library to something more like a

global pay-per-view shopping mall or “celestial jukebox.”278

273 17 U.S.C § 701(b).

274 17 U.S.C. §§ 1201(a)(1)(A), (a)(2)-(3).

275 17 U.S.C. § 1203.

276 17 U.S.C. § 1204(a).

277 17 U.S.C. § 512(i)(1)(B).

278 See GOLDSTEIN, supra note 195, at 28. Goldstein’s book describes a future

that promises:

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The DMCA further serves to protect the interests of copyright

holders by requiring the Register and Secretary to report to Congress

on the effectiveness of encryption measures to protect copyrighted

works and to protect copyright owners against unauthorized access to

their works.279    These provisions create an opening for copyright

holders to lobby for amending the law to provide additional protection

for them.

In sum, while the debate regarding copyright reform-particularly

the debate occurring in the scholarly literature-reflects a broad range

of perspectives, the reform instituted by the DMCA reflects a narrow

range of views. For example, the law does not encourage the myriad

opportunities for collaborative authorship, generation of derivative

works, or "creative free play" made possible by the Internet. Instead, it

focusses on the first iteration of the work that is placed online and on

protecting the holder of the copyright in that work. In the final

analysis, the new law adopts a traditional approach to copyright law

and, in large part, reflects a neoclassicist point of view.

The DMCA does not, however, represent an unqualified or

immediate victory     for copyright holders.     First, the prohibitions

regarding circumvention of technological measures that control access

to copyrighted works do not take effect until two years after the date of

enactment of the law.280 During this two-year period, and during each

succeeding three-year period, the Librarian of Congress, if the Register

of Copyrights so recommends, is required to conduct a rulemaking

[D]azzling new possibilities for access to entertainment and information: a celestial

jukebox. Whether it takes the form of a technology-packed satellite orbiting

thousands of miles above the earth or remains entirely earth-bound, linked by cable,

fiber optics, and telephone wires, the celestial jukebox will give millions of people

access to a vast range of films, sound recordings, and printed material, awaiting only

a subscriber’s electronic command for it to pop up on his television or computer

screen.

None of this will come free. The celestial jukebox will bill subscribers much as the

telephone company does or, if it is linked to the subscriber’s bank account, by simply

debiting his balance. Pricing may be more refined, however. Where the telephone

company charges calls on the basis of length and time of day, the celestial jukebox

will also be able to charge according to the value of the work transmitted.

279 17 U.S.C. § 1201(g)(5). See also supra note 196 and accompanying text.

280 17 U.S.C. § 1201(a)(1)(A).

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proceeding to determine whether the anti-circumvention provisions are

adversely  affecting  copyright users in    their ability to   make

noninfringing uses of copyrighted works, in particular, use of works for

nonprofit archival, preservation, and educational purposes, and for

traditional fair use activities such as criticism, comment, news

reporting, teaching, scholarship, and research.28′ If the Librarian

ultimately concludes that users are adversely affected, the Librarian

must publish the affected class of works and users will not be bound by

the anti-circumvention provisions for the particular class of works for

the ensuing three-year period.282 This administrative process should

help to ensure that copyright users, including nonprofit educational

organizations such as museums, have a continuing opportunity to

present their views, to comment on how the development of copyright

enforcement on the Internet is affecting their ability to access-creative

works, and to lobby for revisions to the law that they deem appropriate.

Finally, the provision regarding submission by the Register to Congress

of recommendations regarding distance education specifies that the

rights of copyright owners and users must be balanced,283 and

explicitly recognizes that it may be necessary to create an exemption

from exclusive rights of copyright owners with respect to distance

education.284

a. The Copyright Term Extension Act

The Copyright Term Extension Act extends the term of copyright

for works created on or after January 1, 1978, by 20 years, to make the

term consistent with the term of copyright in the European Union.285

Thus, for works created by an individual author, the duration of

copyright has been increased from 50 to 70 years from the year of

281 17 U.S.C. § 1201(a)(1)(C). See also supra notes 237-38 and accompanying

text; notes 250-52 and accompany text.

282 Id.

283 DMCA, § 403(a).

284 DMCA, § 403(b)(1). Museums, as educational institutions, would arguably

qualify for any exemption created under this section. See supra note 270 and

accompanying text.

285 Congress Amends Copyright Law for Digital Era, AvisO, Nov. 1998, at 2.

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death of the author.286 Similarly, the duration of copyright for joint

works is now 70 years from the year of death of the last surviving

author.287 For anonymous works, pseudonymous works, and works for

hire, it is 95 years from the year of first publication, or 120 years from

creation, whichever occurs first.288

The duration of copyright has thus evolved from two 14-year terms

under the original 1790 Act, to up to 120 years from the year of death

of the author, on the eve of the twenty-first century. Whether the new

durational periods legislated by the Copyright Term Extension Act

comport with the constitutional mandate that intellectual property

protection endure for limited times only is debatable. This issue is

udner review in Eldred v. Reno. 289

b. Summary

During its 1997-98 session, in addition to enacting the Digital

Millennium Copyright Act and the Copyright Term Extension Act,

Congress also enacted the No Electronic Theft ("NET") Act, which

institutes criminal penalties for "willful copyright infiingement"

regardless of financial gain.290    Other proposals were directed at

286 17 U.S.C. § 302(a).

287 17 U.S.C. § 302(b).

288 17 U.S.C. § 302(c). Note that the CTEA also changes the duration of

copyright with respect to works created before January 1, 1978. For works created,

but not published or copyrighted before January 1, 1978, the term of copyright is that

specified by 17 U.S.C. § 302, with the caveat that in no case shall the term of

copyright in such a work expire before December 31, 2002, and, if the work is

published on or before December 31, 2002, the term of copyright will not expire

before December 31, 2047. 17 U.S.C. § 303. For works created before January 1,

1978, and published before that date, the CTEA extends the renewal term of

copyright by 20 years. Thus, for works in their first term of copyright on January 1,

1978, the first term of copyright is 28 years; the renewal term is 67 years. 17 U.S.C.

§ 304(a). For works in their renewal term of copyright on January 1, 1978, the

duration of copyright is 95 years from the date the copyright was originally secured.

17 U.S.C. § 304(b). See also supra notes 49, 57.

289  Case No. 1:99CV0065 JLG (D.D.C. filed Jan. 11, 1999). For a discussion of

the "limited Times" language of the Patent and Copyright Clause see supra (11)(B);

see also supra, note 34 and accompanying text.

290 P.L. 105-47. 111 Stat. 2678; see Jason Hall, Lauryn Guttenplan Grant,

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creating greater copyright protection for databases291 and requiring

Internet service providers to offer screening software.292

The various legislative proposals that Congress entertained-with

their provisions regarding greater protection of databases, civil and

criminal liability for circumventing encryption measures, criminal

liability for infringement, and a substantially lengthened copyright

term–demonstrate that expansion of copyright is in progress, with

increased protection for copyright holders, increasingly restricted

public access, micro-monitoring of electronic uses, and the possibility

of additional expansion on the way.      Expansion of copyright is

certainly in progress in the international arena and, given increasing

internationalization, the increasingly global nature of the economy, and

the global nature of the Internet, the expansion of copyright

domestically is related to its expansion worldwide.293

I. Summary and Significance for Museums

In summary, copyright law sets forth the advancement of society as

a whole as its central goal and it prescribes a means to this end: the

establishment of economic incentives to stimulate the production of

creative works. Its history shows that it originated in response to the

development of new technology and has been rewritten many times to

respond to new technologies. The challenge to copyright law today,

however, stems not merely from the fact that yet another round of new

technologies has been introduced, but from the fact that the capabilities

of the new technologies challenge the concepts that are at the core of

copyright law.

Also threatening the foundation upon which copyright law rests is

the fact that the balance that copyright law seeks to achieve is shifting

in favor of copyright holders. This shift is the result of the confluence

of several factors including: relaxation of formalities; extension of the

Legislative Update 1998, ALI-ABA COURSE OF STUDY MATERIALS, LEGAL

PROBLEMS OF MUSEUM ADMINISTRATION, March 26-28, 1998, at 151.

291 Collections of Information Antipiracy Act (H.R. 2652). Id. at 152.

292 The Family-Friendly Internet Access Act of 1997 (H.R. 1180); The Internet

Freedom and Child Protection Act (H.R. 774). Id.

293 The expansion of domestic copyright law should be viewed within the broader

context of the global expansion of copyright law. See supra notes 101, 149.

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duration of copyright protection; expansion of the scope of

copyrightable subject matter; restoration of copyright to foreign works

that had fallen into the public domain; the global expansion of

copyright; the development of encryption technologies; and, most

recently, the implementation of legislation that outlaws online anti-

encryption activity, with limited exemptions, and punishes such

activity with civil and criminal penalties.  Finally, the fair use

doctrine-traditionally relied upon to help ensure that the public's

access to creative works is not unduly restricted-is itself being

restricted, at least with respect to its application to the digital

environment. First, to the extent that the Guidelines issued by CONFU

continue to have any relevance or effect, they restrict existing fair use

principles by requiring users to seek permission prior to using an

image. Second, and of more enduring significance, the implementation

of encryption technologies and pay-per-view viewing on the Internet

facilitated by the DMCA will likely have a chilling effect on traditional

fair use activities. This is so despite the fact that the DMCA contains

an exemption that appears to allow anti-encryption activities with

respect to traditional fair use purposes294 because the exemption

amounts to an "after-the-fact" approach.   If the status quo is

encryption, then de-encrypting works will require affirmative action on

the part of the user, and there is no reason to assume that all users will

have the ways or means to access anti-encryption technology. In

addition, for the reasons discussed earlier, relying on fair use exposes

the claimant to substantial risk and expense.295 The net result is an

increase in the number of works under copyright protection, a

fortification of the rights of copyright holders, and the erection of ever

more formidable barriers to public access.

At the same time, determining whether a work is under copyright

protection and, if so, whether use without permission from the

copyright holder is lawful, is a labyrinthine process with no fail-safe

outcome. Answering copyright-related questions requires application

not only of the Copyright Act of 1976 (as amended by the DMCA,

CTEA, and other federal laws), the Copyright Act of 1909, and several

294 17 U.S.C. § 1201(a)(1)(B); see also supra note 243 and accompanying text.

295 See supra (ll)(G).

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other federal statutes enacted to bring U.S. law into compliance with

international treaties, but predictions about how this unwieldy body of

law will be held to apply in cyberspace.

The current state of copyright law, and the direction in which it is

heading, pose two central problems for art museums-institutions that

are dedicated to the presentation and interpretation of creative works

for the benefit of the public.296 The immediate problem is that in order

to determine the kinds of uses they may lawfully make of a work, their

already overburdened staffs, which rarely include a lawyer, must apply

an extraordinarily complicated body of national and international law

and predict what future law will be. Moreover, if a museum actually

manages to find the resources to devote to such an endeavor, and it

discovers that it does not hold the copyright to a work it wishes to use,

it will find itself faced with a Solomon’s choice. Its options will be to:

(1)seek the permission of the copyright holder, which is often

impractical (either because it does not know who owns the copyright, or

because the time between when it investigates copyright status and when

it needs to use the image is short, or because it does not have the

resources to devote to seeking permission); or

(2)refrain from using the image, which ultimately will prejudice the

public interest-the very interest that the museum, and copyright law

generally, are intended to serve;297 or

(3)use the image and hope that doing so amounts to a “fair use” within

the meaning of the law, which may expose the museum to liability

because fair use is a judicial determination, made on a case-by-case

basis.

This problem is particularly pronounced for museums with

collections of contemporary art because works of contemporary art are

typically under copyright and museums that own such works often do

not own the copyrights in the works. These museums rely heavily on

traditional notions of fair use to carry on routine activities such as

public programming, publication of brochures and gallery guides, and

publicizing exhibitions.298

In the long-term, however, all art museums face a more serious

296 See infra (III)(A).

297 Id.

298 Weil, supra note 10, at 38; see supra (II)(E)(7).

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problem, and it is one they share with the public at large: a shrinking

public domain and a cordoning off of creative works that previously

could have been more freely accessed. Restricted access to creative

works will inevitably limit artists in their ability to create new art, and

hamstring museums, and others, in their ability to exhibit, interpret,

and acquire art.

In sum, despite the short-term benefits that some museums might

enjoy from enhanced copyright protection, the long-term losses for

museums, artists, and the public would likely be far more significant.

III.    COPYRIGHT       AND    ART    MUSEUMS: THE         DIGITAL

FRONTIER

A. The Problem

Museums and the law of copyright share the common purpose of

promoting the progress of science and the arts.299 As defined under

federal law, a museum is, "a public or private nonprofit agency or

institution organized on a permanent basis for essentially educational

or aesthetic purposes which, utilizing a professional staff, owns or

utilizes tangible objects, cares for them, and exhibits them to the public

on a regular basis.''300 An art museum is defined more specifically as,

"a permanent, nonprofit institution, essentially educational and

aesthetic in purpose, with professional staff, which acquires or owns

works of art, cares for them, interprets them, and exhibits them to the

public on some regular schedule."301 The nature of the museum's

relationship to the public is, in effect, that of a charitable trust.

Museums hold their collections in trust for the public, and the trustees

of a museum owe a fiduciary duty to the public in carrying out their

299 The origin of the modem museum dates back at least to the Second Century

A.D., when Ptolemy built the Temple of the Muses in Alexandria: a site including a

library and collection of antiquities, where music, dance and poetry were performed.

MALARO, supra note 163, at 3 n.1. The "muses," in Greek mythology, were nine

sister goddesses who presided over poetry, song, the sciences and arts.

o   Museum Services Act, 20 U.S.C. § 968(4).

301 Professional Practices in Art Museums, Report of the Ethics & Standards

Committee, (American Association of Museum Directors (1981)).

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responsibilities.302

As its legal definition makes clear, among the central obligations of

an art museum are the duties to make its collections available to the

public, to interpret its collections in a way that makes them accessible

to the public and that educates the public, and to care for and manage

its collections. Additionally, museums must ensure that they have the

resources necessary to fulfill these obligations. Museums increasingly

face questions regarding copyright and digitization of images in

connection with carrying out these responsibilities.

B. Digitization and Availability of Collections

Given the explosive growth in Internet use among the public,303

and the fact that for vast numbers of persons the Internet is as natural a

part of life as is an electric light,3°4 art museums are facing increasing

pressure to make their collections available via online exhibition on the

Internet.305 The posting of images on the Internet by a museum poses a

host of legal questions regarding copyright, including whether the

museum holds the copyright to the image, or a license to present it

online and, if not, whether it is “fair” within the meaning of the fair use

doctrine for the museum to post the images, and these are questions

that the museum    is often ill-equipped to answer.    Related legal

problems include the fact that visitors to the museum’s website could

be engaged in copyright infringement every time they download,

upload, or forward copyrighted material or engage in other common

online activities.306 This could result in liability upon the museum on a

theory of contributory infringement, vicarious liability, or the like,

unless the museum takes special care to inform users of possible

302 MALARO, supra note 163, at 8, 16.

303 See supra note 139.

304 See, e.g., Wendy J. Gordon, John Carlin, Rochelle Cooper Dreyfuss, Marci A.

Hamilton, Peter Jaszi, Beryl Jones, Jaron Lanier, Martha Woodmansee, Russ

VerSteeg and Diane Zimmerman, Virtual Reality, Appropriation, and Property Rights

in Art: A Roundtable Discussion, 13 CARDoZO ARTS & ENT. L.J. 91, 92 (1994).

305 See, e.g., Christine Steiner, The Double-Edged Sword: Museums and the Fair

Use Doctrine, MUSEUM NEWS, Sept./Oct. 1997, at 32, 33.

306 See supra (II)(H)(3)(e).

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limitations on use.307

In addition to the many layers of copyright questions that exist

regarding online posting of images, other issues include ethics and

control. Once an image is available electronically on the Internet, it is

subject to manipulation and alteration.308 Given the historic concern of

museums with the integrity of the art in their collections, some

museums are concerned about the ceding of control that occurs when

an   image   is  displayed   online.309   Although    encryption   could,

theoretically, address some concerns that museums hold in this regard,

the "flip side" would be that encrypting images, by definition, would

create barriers to the viewing of images, thereby defeating th central

educational purpose museums' have in placing images online.310

307 Steiner, supra note 305, at 34.

308 Note that given the "read-only" nature of CD-ROMs, digital images presented

on CD-ROM cannot be altered by the user. See supra (II)(H)(1)-(2).

31 See, e.g., Corey S. Powell, The Rights Stuff: Buying and Selling Art in a

Digital World, SCI. AM. Jan. 1995, at 30; Jane Lusaka, Susannah Cassedy O'Donnell

& John Strand, Whose 800-lb. Gorilla Is It: Corbis Corporation Pursues Museums,

MUSEUM NEWS, May/June 1996, at 34, 36; Lyndel King, The Fair Use Dilemma,

MUSEUM NEWS, July/Aug. 1997, at 36, 37; Steiner, Double-Edged Sword, supra note

247, at 49; Malone, supra note 4; Suzanne Muchnic, Technoarts; In Cyberspace, Can

Anyone Really Appreciate Art? CD-ROMs Are Giving Home Computer Users Access

to Museums and Private Collections. But Some Institutions are Holding Back From

the Digital Age for Fear of Losing Control-And Dollars, L.A. TIMES, Apr. 3, 1994,

at Calendar 4; Suzanne Muchnic, ArtWorld Meets the Techno World; The Arts: An

International Group of Museum Directors is Gathering in Seattle to Ponder the

Technological New Age and the Impact on Institutions, L.A. TIMES, June 1, 1994, at

F-I; T. D. Mobley-Martinez, A Museum Walk on the Web, ALBUQUERQUE TRIBUNE,

May 15, 1998, at C3.

3"0 It is also possible that the unauthorized manipulation and alteration of digitized

art would violate the moral rights of the artist who created the underlying work.

While this would likely not be the case in the U.S. (the U.S. statute that recognizes

moral rights in works of art, the Visual Artists Rights Act of 1990 ("VARA"), Pub. L.

No. 101-650, 104 Stat. 5128 (1990), explicitly states that the rights it creates "shall

not apply to any reproduction" of works of art, 17 U.S.C. § 106A(c)(3)), it could be

the case elsewhere. Given the possibilities for global transmission of images via the

Internet, it is possible that moral rights claims would be recognized in countries that

apply a broader interpretation of moral rights, such as those in which article 6 bis of

the Berne Convention governs. See supra note 101.

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Control over digitized images is an issue for museums for reasons

that go beyond concern for the integrity of the digitized image.

Museums are also concerned about who has control over the revenues

that can potentially result from the posting of digitized images on the

Internet.311 As discussed earlier, the possibility that online collective

licensing systems will be introduced in the not-so-distant future is a

distinct one, and enactment of the DMCA only makes this eventuality

more likely. Given the massive, and ever-growing number of Internet

users worldwide, significant revenues would likely be generated from

introduction of such a system.312 Consequently, some museums are

concerned about the timing of introducing digitized images online.313

They make the argument that rather than rushing to place their

collections online, it may be more prudent to wait and see what types

of licensing systems and technologies are ultimately developed and to

then determine the means through which they can generate the most

revenues from the display of images electronically.314

Another piece of the discussion about control concerns who will

actually digitize the image-a for-profit corporation or a non-profit

entity.315 Corbis Corp. (“Corbis”)316 is, by several orders of magnitude,

the world’s largest player in the realm of digitizing images.317 Created

by Bill Gates, the multi-billionaire chairman of Microsoft Corporation

(“Microsoft”),318 its self-described purpose is to “‘capture the entire

human experience throughout history”‘ and to then collect royalties for

each use of a digitized image.319 Since 1989, when its predecessor

Interactive Home Systems was formed, Corbis has been buying

31 See, e.g., supra, note 309 and articles cited therein.

312 See supra (II)(H)(3)(d).

313 Id.

314 See, e.g., Lusaka, supra note 309, at 75.

315 Id.

316 “Corbis” is a Latin term for “basket.” Id. at 34.

317 See, e.g., id.; Katie Hafner, Jennifer Tanaka & N’gai Croal, Focus on

Technology: Picture This, NEWSWEEK, June 24, 1996, at 88.

318 Lusaka, supra note 309, at 34.

319 Hafner, supra note 317, at 88 (quoting Doug Rowan, Chief Executive Officer

of Corbis, until his resignation in May, 1997). See also Michele Matassa Flores,

Corbis Corp. ‘s Vision for its Digital Archive Changing Direction, DALLAS MORNING

NEWS, Dec. 8, 1997, at 2D.

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paintings, prints, drawings and other works of art, including the

copyrights to such works, buying the copyrights to other works that it

does not ultimately purchase, and entering into licensing agreements

that permit specified uses of other works.° Corbis's stated purpose in

purchasing the rights to digitize images is "'to create new uses and

markets for high-quality visual content."'321 Its goal is to develop the

world's foremost archive of rights to digital images, and to control the

content that it believes will fuel the growth of electronic publishing and

the Internet.322 While Corbis allows the free downloading of images

from its website, its plans are to ultimately institute a subscription

charge.323 With a collection of over 1.3 million high-quality digital

images and access to a total of more than 23 million images 324-

including the rights to the archives of some of the world's most

prominent museums,325 the world's largest photo archive,326 other

notable photo archives,327 and additional acquisitions on the way328-

Corbis intends, one day, to provide "one-stop shopping" for anyone in

320 See, e.g., Lusaka, supra note 309, at 34.

321 Id.

322 DALLAS, supra note 137, at 20.

323 Id.

324 Andrea Siedsma, Bill Gates Buys Encinitas Digital Imagery Firm, SAN DIEGO

BUSINESS JOURNAL, Feb. 9, 1998 (Vol. 19, No. 6) at 11; Corbis Acquires Westlight,

M2 PREsswiRE, May 13, 1998; and Tim Phillips, Computing and the Net: Beyond the

Glass Case, THE GUARDIAN (LONDON), May 14, 1998, at 4.

325 These museums include the Hermitage Gallery in St. Petersburg, the National

Gallery in London, the State Russian Museum, the National Gallery in Washington,

the Philadelphia Museum of Art, the Seattle Art Museum, the Kimbell Art Museum,

the Royal Ontario Museum, the Barnes Foundation, the Detroit Institute of Fine Arts,

the Corcoran Gallery of Art, and the Bass Museum of Art. DALLAS, supra note 137;

Corbis & Detroit Institute of Fine Arts Announce Partnership, M2 PRESSWIRE, Feb.

29, 1996; Corbis Corporation Announces Agreements with Washington's Corcoran

Gallery and Miami Beach's Bass Museum, BUSINESS WIRE, Dec. 16, 1997.

326 The Bettman Archive. DALLAS, supra note 137.

327 Corbis acquired Digital Stock Corp., a provider of royalty-free commercial

imagery to graphic designers, advertising firms, Nike, Mercedes-Benz and other

commercial entities, in February, 1998. Siedsma, supra note 324.

328 For example, in May, 1998, Corbis announced plans to acquire Westlight, a

commercial stock photography agency with a collection of more than three million

images. Supra note 324.

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the market for images.329 Corbis’s view is that “content is king,”330

and it has stated that it wants to be “‘the premier place to come to for

digital content.”331

To the extent that Microsoft has shown a striking ability to

dominate parts of computer markets, such as those for computer

operating software, some museums and others have expressed concern

that a similar pattern of dominance could develop in the emerging

market for commercially exploitable digital image databases, in light of

the involvement of Bill Gates in both Microsoft and Corbis.332        The

specific concern that has been articulated is that Corbis could radically

reduce access to images in the public domain by creating digital

photographs of such works, and claiming copyright in the digital

329 Id. Regarding the global reach of Corbis’ activities, note that Corbis has

recently entered into an agreement with Japan’s leading photo agency, Pacific Press

Service (“PPS”), through which PPS will represent Corbis in the licensing of its

archive to Japanese customers. Corbis Expands its Worldwide Image Distribution:

Agreement With Leading Japanese Photo Agency, Pacific Press Service, Increases

Corbis’Presence in Japan, BUSINESS WIRE, Aug. 4, 1997.

On a related point, Marubun Corp., a trader specializing in electronics, has signed a

general agency contract with Digital Projection Ltd. of Britain to sell digital

projectors for large displays in Japan. Marubun to Sell Digital Projectors, JIJI PRESS

TICKER SERVICE, Apr. 21, 1997. The projectors will be used to display digital images

on giant screens at theaters, museums, aquariums and racetracks. The system was

developed through the joint efforts and investments of Digital Projection Ltd (15

million British Pounds) and Texas Instrument Inc. of the U.S. ($500 million), since

1992. Marubun’s projections regarding sale are 380 million Japanese Yen by the end

of 1997, 750 million Yen in 1998, and 1 billion Yen in 1999. Id.

Nippon Telegraph & Telephone (“NTT”) has also developed a super high definition

(“SHD”) digital image processing system. NTT’s image processing system has a

resolving power 14 times greater than that of normal television. The SHD

technology represents the culmination of a decade of research, and NTT intends to

apply the system in the areas of medicine, printing, publishing and film production.

As for art museums, the Whitney Museum of American Art in New York has used

NTT’s SHD system to display more than 80 works of art on a large color monitor.

Whitney Museum’s Preview Uses Image System of N77T, JIJI PRESS TICKER SERVICE,

Mar. 14, 1997.

330 See, e.g., Hafner, supra note 317; DALLAS, supra note 137.

13′ Lusaka, supra note 309, at 78.

332 See id. at 77-78.

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photographs.333 While a recent district court decision-The Bridgeman

Art Library, Ltd. v. Corel Corp.334--has rejected such a copyright

claim, holding that a photograph that is a substantially exact

reproduction of a public domain work lacks sufficient originality to be

copyrightable, the decision is on appeal.335 The ultimate resolution of

this case could have a significant impact upon the development of the

market for digital images of works of art, in particular, on the ability of

suppliers of digital images to enter that market. It could likewise have

a significant effect upon the ability of the public to freely access such

images at little or no cost. By holding that a photograph of a work of

333 Id. at 77-78; see also DALLAS, supra note 137.

314 Bridgeman, 27 F. Supp. 2d. 421 (S.D.N.Y. 1998), aff'd on reargument and

reconsideration 1999 WL 85513 at *8-9.

13' The Bridgeman Art Library, Ltd. v. Corel Corp., appeal docketed, No. 98-9625

(2d Cir. Dec. 11, 1998). A legal question exists as to whether a digital photograph of

a creative work has sufficient originality to meet the threshold requirements of

copyright protection and, if so, whether the creation of such a digital photograph

would render it unlawful for someone else to create another digital photograph of the

same work without authorization. A subset of this question is whether a digital

photograph of a work that is in the public domain is copyrightable. These and related

matters were at issue in Bridgeman L In particular, the court examined the question

of whether photographs of works that are in the public domain are copyrightable.

The court recently issued its decision, ruling that because the photographs were

published in the United Kingdom ("UK"), the issue of whether they are copyrightable

must be decided under UK law. Bridgeman,, 27 F. Supp. 2d. at 426. The court

further held that the photographs failed to meet the originality requirement of the

governing UK law. Id. In so holding, the court stressed that "Bridgeman's images

are substantially exact reproductions of public domain works, albeit in a different

medium," id., that "[t]he images were copied from the underlying works without any

avoidable addition, alteration or transformation,” Id. and that “the originality

requirement is not met where the work in question is ‘wholly copied from an existing

work, without any significant addition, alteration, transformation, or combination

with other material.”‘ Id. (quoting 2 MELVILLE B. NIMMER AND PAUL E. GELLER,

INTERNATIONAL COPYRIGHT LAW & PRACTICE § 2[l][b][ii], at UK-19). Thye court

also explicitly state that given that UK law regarding originality appears to be

substantially the same as U.S. law on the subject, it would have reached the same

result under American law. Id. at 427 nn.41, 47 and accompanying text. The court

affirmed this ruling in Bridgeman 11, stating that “[t]he Court has held as a matter of

law, and reiterates, that plaintiff’s works are not original under either British or

United States law.” Bridgeman, 1999 WL 85513 at *8.

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art that is in the public domain is not copyrightable, the district court’s

decision eliminates one potential legal barrier to competitors entering

the market-the specter of liability for copyright infringement-at

least until an appellate court reverses the district court’s holding. The

question whether additional legal, economic, or other barriers to entry

exist, and how such barriers might affect the public’s ability to access

digital images of works of art, is, of course, another matter.

In the meantime, although theoretically there are at least some

alternative creators of digital images, 336 it does not appear that any

commercial entity is ready to enter the market to compete vigorously

with Corbis.337

336 Grolier, Inc., the multimedia unit of Lagardere Groupe SA, recently won the

exclusive rights, for a ten-year period, to create CD-ROMs of the work of the Spanish

painter, Pablo Picasso. DALLAS, supra note 134. Another entity, Hitachi America,

Ltd., a subsidiary of Hitachi Ltd., has created a propriety digital image system

through which images may be digitized and restored. See Hitachi Launches Online

“Viewseum “, MULTIMEDIA &VIDEODISC MONITOR, Feb. 1, 1996, at § 2.

337 Note, however, that Getty Images, co-founded by Mark Getty (heir to part of

the Getty Oil fortune) and Jonathan Klein in 1995, has also become a player in the

digital image market. Its acquisitions since 1995 have included: Tony Stone, a stock

photography collection with more than 1 million photos; the world’s second largest

photography collection (only the Bettman Archive, now owned by Corbis, is larger),

the Hulton Deutsch collection (renamed Hulton Getty) with more than 16 million

images dating from the early days of photography; Allsport, a leading sports agency;

Gamma Liaison, an American news and photojournalism agency; and Energy Firm, a

stock footage library. Hannah Gal, A Picture of Wealth; Bill Gates and Mark Getty,

Two of the World’s Richest Men, are Vyingfor Control of One of the World’s Richest

Emerging Markets-the Business of Selling and Distributing Digital Images, THE

INDEPENDENT (LONDON), Apr. 14, 1998, at N2 N. Also of note, Getty Images

announced a merger with PhotoDisc, a royalty-free image company (pay once for

unlimited use) in February, 1998, Id.

Creation of a digital image fine art library “to rival giants such as Microsoft’s

Corbis and the Hulton-Getty library” is also underway in Europe as a result of

funding pledged by the European Commission’s Info2000 programme. EC Backs

Artweb, NEW MEDIA AGE, Dec. 18, 1997, at 2. Artweb, a consortium of the three

largest European Specialist art libraries (the Bridgeman Art Library in London,

Bildarchiv Preussischer Besitz in Berlin, and Giraudon in Paris) plans to offer a

single point of access over the Internet to a combined database of art images. Artweb

plans to introduce its Internet service gradually, rather than attempting a full launch

for the year 2000. Id.

[Vol 6:2

ART MUSEUMS & COPYRIGHT LAW

On the nonprofit front, however, some potential alternatives to

Corbis have begun to emerge. Foremost is the Museum Educational

Site Licensing Project ("MESL"), launched in 1995 through the

collaborative efforts of the Getty Information Institute and MUSE

Educational Media.338     MESL's aim     is to develop collectives or

consortia to serve as vendors to the education market of high quality

digital images from the collections of museums and universities.

Toward this end, MESL launched a pilot project, involving seven

museums and seven universities, to develop and test a model of

licensing visual material across closed campus networks.339 MESL's

vision is of a non-profit entity that would provide easy access to the

collections of museums, in high-quality digital form, with full

documentation, cataloging, and contextualizing materials.340    MESL

has created a digital library of more than 9000 images, and has

exhibited this library at each of the universities that participated in its

pilot project.34'

Two other non-profit licensing consortia have also recently formed:

331 Steiner, supra note 305 at 49; Samuels, supra note 136, at 67; David L. Green,

Museums Collaborate in New Marketing Ventures for Digital Images, ARL: A

BIMONTHLY NEWSLETTER OF RESEARCH LIBRARY ISSUES AND ACTIONS, Aug. 1997

(No. 193), 1.

"' The museums and universities are: the Fowler Museum of Cultural History (at

UCLA); George Eastman House, Rochester, NY; The Harvard University Art

Museums; The Library of Congress; The Museum of Fine Arts, Houston; The

National Gallery of Art; and The National Museum of American Art, Washington.

The universities are: American University; Columbia University; Cornell University;

University of Illinois at Champaign-Urbana; University of Maryland; University of

Michigan; and University of Virginia. Green, supra note 338, at 4 n.2.

340 Id. at 1.

341 For a full discussion of the work of MESL see the two volume project report it

issued: DELIVERING DIGITAL IMAGES: CULTURAL HERITAGE RESOURCES FOR

EDUCATION; and IMAGES ONLINE: PERSPECTIVES ON THE MUSEUM EDUCATIONAL

SITE       LICENSING       PROJECT       (1998)       (available     at

. On a related subject,

note the formation of LUNA Imaging, Inc., a joint venture of the J. Paul Getty Trust

and Eastman Kodak Company, formed to offer digital imaging services and

electronic publications to the academic community worldwide. Heather Pemberton,

Getty Trust and Kodak to Develop Digital Collections for the Arts; Photo CDs, CD-

ROM PROFESSIONAL, Sept. 1993 (Vol. 6, No. 5), at 139.

1999]

225

UCLA ENTERTAINMENT LAW REVIEW

the Art Museum Image Consortium (“AMICO”) and the Museum

Digital Library Collection, Inc. (“MDLC”).342 AMICO, a project of

the Association of Art Museum Directors (“AAMD”),343 is a nonprofit

corporation   formed   to   serve  the   museum     and   educational

communities.344 It intends to provide museums with a library of digital

materials for licensing to educational users.345   Its goals include

creating a collective library of art for educational use; providing

members with access to collective holdings; negotiating digital rights

with artists, artists’ estates, artists’ rights societies and other rights

holders; and improving technological, administrative, and documentary

practices of members.346     AMICO    expects to be ready for full

subscription by the 1999 academic year.347        While initially its

membership is to be comprised of art museums, its library is intended

to be broader, and its first phase will focus on developing a university

site license, followed by licenses for museums, school grades K-12,

and public libraries.348

MDLC has been developed in close consultation with the American

Association   of  Museums     (“AAM”).349      Unlike   AMICO, its

membership will be open to all museums, not only art museums, and,

while its initial focus will be on developing an educational site license,

it will also work to develop a commercial licensing division.350 MDLC

expects to be open to museums for membership in the fall of 1999.351

In sum, while a small number of commercial alternatives to Corbis

342 AMICO and MDLC are planning consortia that intend to build digital libraries

and offer non-exclusive licenses, enabling museums to digitize and market individual

works. Green, supra note 338, at 2; see also  (MDLC

internet site). Note also that the literature refers to the organization alternatively as

the Museum Digital Licensing Collective, Inc. and the Museum Licensing

Cooperative.

341 Id. at 2. AAMD represents 170 of the larger art museums in the U.S., Canada

and Mexico. Id.

3″ Steiner, supra note 305, at 49.

… Id. at 49.

346 Id.

347 Green, supra note 338, at 2.

348 Id.

349 Id.

350 Id. at 3.

351 MDLC internet site, supra note 342.

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ART MUSEUMS & COPYRIGHT LAW

currently exist, and a few non-profit alternatives are "in the works,"

Corbis appears to be, if not "the only show in town," at least the

biggest, and most available.

C. Digitization, Interpretation and Management of Collections

Just as the digital revolution-and the massive number of persons

who have joined it-have placed pressure on art museums to make

their collections available online, so too has the revolution caused

museums to integrate digitized images into their educational efforts.

"Digital docents," for example, interactive audio tours featuring a

touch-screen computer and head phones, are now available.352 On a

more expansive scale, "micro galleries" have been installed in some

museums, displaying an interactive, digital, hypertext353 catalogue of

the entire collection of the museum.354

Museums have also begun to use digitized images in the

interpretive materials that accompany the live display of art objects, for

example, interactive computers and multi-media productions that

accompany special exhibitions.355 Likewise, museums have begun to

incorporate "thumbnail" digital images of objects in their collections

into their collections management record keeping.356

352 Lonna O'Neal Parker, Digital Docents: Computers Give Interactive Audio

Tours, THE WASHINGTON POST, July 8, 1997, at El.

353 "Hypertext" consists of "'randomly connected pieces of information through

machine-supported links that allow [the user] to touch a screen or indicate a

highlighted word with a mouse for a definition or connection to other avenues of

information.”‘ Note, Dithering Over Digitization, supra note 4, at 404 n.65 (quoting

Maxwell L. Anderson et al., ART MUSEUMS ON THE INFORMATION SUPERHIGHWAY:

INFORMATION TECHNOLOGY PRIMER, AAMD 1994 Annual Meeting, June 1-4, 1994,

Seattle, glossary 24). See also Patricia Sanders, The New Exhibition: The Museum as

Hypertext, ARTWEEK, Nov. 1997, at 12.

114 The National Gallery in London, the National Gallery in Washington, the

Louvre in Paris, the Museum of Modem Art in New York, for example, all have

microgalleries. See, e.g., Bernard Sharratt, Please Touch the Paintings, N.Y TIMES

BOOK REVIEW, Mar. 6, 1994, at 3; John Burgess, Cybertalk: Art Lovers, Meet Your

New Guide, WASHINGTON POST, June 20, 1994, at F17, 22; Steven Vincent, High Art,

High Technology, ART & AUCTION, Feb. 1993, at 78, 81.

355 See, e.g., Parker, supra note 352.

356 See, e.g., Weil, supra note 10, at 36, 38, 41.

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227

UCLA ENTERTAINMENT LAW REVIEW

In all of these examples regarding the use by museums of digitized

images as interpretive and administrative aids, many of the same

copyright questions arise as in the context of museums placing images

online. Does the museum hold the copyright to the image? If not, is it

possible to identify the holder of the copyright and to contact that

entity for permission? Alternatively, if the museum does not hold the

copyright, can it nonetheless display the image electronically without

risking liability on some other ground? When, if at all, can a museum

assume that it will be insulated from liability on fair use grounds?

Again, museums are placed in the untenable position of having

overburdened    staffs  investigating  legal  questions   that  cannot

necessarily be accurately answered.357

D. Digitization and Generation of Funds to Preserve Collections

Another area in which issues pertaining to copyright and

digitization abound in the museum world is in the realm of product

development. As museums face increasing financial pressures, many

are developing products for commercial sale through museum gift

shops,358 catalogues, websites and, most recently, television.359 CD-

ROM databases of art in museums’ collections are, for example,

widely available, and typically include digitized images, as well as

textual and audio material.36°

317 While many of these uses arguably would fall under fair use, many

circumstances could tip the argument in favor of a fmding of infringement. For

example, if a digitized image is used in an educational material such as a “digital

docent,” and that image is also available for sale in the Museum’s gift shop on a

mousepad or tee-shirt, could a court hold that the digital docent was, in effect,

advertising for the museum’s products, thereby excluding a finding of fair use?

358 The Metropolitan Museum of Art, for example, opened 14 shops in the United

States, and 19 shops in foreign countries, between 1986 and 1996. During that period

revenues from merchandising more than doubled, from $38 million in 1986 to $79

million in 1996. Shapiro, supra note 5, at 39.

319 See, e.g., Jill I. Prater, When Museums Act Like Gift Shops: The Discordant

Derivative Works Exception to the Termination Clause, 17 LoY. L.A. ENT. L.J. 97

(1996).

360 See, e.g., Peter Jasco & Judit Tiszi, Multimedia Databases of Fine Arts CD-

ROM and Online; Products From Eight Vendors, DATABASE, Dec. 1996 (No. 6, Vol.

19), at 12. CD-ROMs showing art objects from the collections of the Barnes

228

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ART MUSEUMS & COPYRIGHT LAW

The legal questions that arise here are the same as those that arise

in the context of digitized images used for educational purposes, but

here the museum's need for permission to use the images is far

stronger.   Where the purpose of the use is commercial and no

comment, transformation, or interpretation is involved, neither fair use

nor any other exemption is likely to apply. Thus, even where museums

are seeking to develop products purely as a means of generating

income so that they can properly care for and manage their collections,

they must tread lightly. The fact that the ultimate purpose of their

commercial activities is educational will not necessarily insulate

museums from liability in connection with such commercial

exploits.361

E. Conclusions and Recommendations

The parameters of the debate regarding copyright law have

historically been shaped, and continue to be shaped, by legislators and

lobbyists, with little involvement by others.362 This trend persists in

the debate regarding copyright in cyberspace.363      Consequently, art

museums, artists, and supporters of the arts must become more

involved in the national and international fora in which the debate is

Foundation, the Art Institute of Chicago and the National Gallery of London are

available, to name a few. Id. Note, however, that a recent article in The New York

Times reports that the "museum-on-a-disk market" has collapsed. The article

suggests that part of the reason for the decline in popularity is that most art CD-

ROMs fail to make adequate use of the CD-ROM's unique audio and visual

capabilities, and ability to store huge quantities of information that can be sorted and

linked in complex ways. Lee Rosenbaum, Art Lovers Cool to Lure of CD-ROMs,

N.Y. TIMES, July 23, 1998, at G6.

361 See Religious Tech Ctr, 907 F. Supp. 1361. Note also that while a provision

exempting nonprofit organizations from liability for copyright infringement in cases

of good faith reliance upon fair use previously existed, Congress eliminated this

exemption, effective January 1, 1978, commenting that the "the line between

commercial and 'nonprofit' organizations is increasingly difficult to draw." Shapiro,

supra note 5, at 39 (quoting H.R. REP. No. 1476, 94th Cong., 2nd sess. 62-63

(1976)). The DMCA, however, creates a similar exemption with respect to criminal

liability. 17 U.S.C. § 1204(b). See also supra, notes 261-62 and accompanying text.

362 See supra notes 205-206 and accompanying text.

363 See id.; see also supra (II)(H)(3)(d).

1999]

UCLA ENTERTAINMENT LAW REVIEW

occurring to ensure that the contours and content of the debate reflect

their concerns. Failure to do so will subject museums, and the public

they serve, to the risk that the regulatory regime that is ultimately

developed will not adequately protect their interests.

Although art museums have been involved in the debate regarding

application of copyright law to the digital environment in some fora-

for example, in the Administration’s Conference on Fair Use-they

have done so primarily in conjunction with schools and libraries, and it

is not clear that the interests of the two groups are entirely coextensive.

Moreover, the Guidelines issued by CONFU restrict existing fair use

principles, thereby contravening the interests of museums. It is also

not clear to what extent the Guidelines ever had any force or effect and,

in light of enactment of the DMCA, whether they have been

preempted. Museums have, perhaps more effectively, been involved in

representing their interests before Congress as it considered the

DMCA.364 But, given the DMCA’s provisions regarding initiation of

several rulemaking proceedings, museums continue to be confronted

with the need to formulate, and lobby for implementation of, their

position regarding copyright in the electronic environment.

The current economic, political, and cultural environment presents

a variety of challenges to the development by art museums of a

uniform   position regarding copyright reform.      Of paramount

importance, museums do not exist as a monolithic entity. On the

contrary, they are split into various camps, along various lines,

including whether their collections consist primarily of works of older

art that are either in the public domain, or to which they hold the

copyright, or whether their collections consist primarily of works of

contemporary art that are not in the public domain and to which they

do not hold the copyright. In addition, regardless of the “fault lines,”

most museums play divergent roles. They are at different times, or at

the same time, copyright holders, copyright users, vehicles for

educating the public regarding the works in their collections and

related artistic and cultural matters, and creators of products and

services for the purpose of generating revenues. The position that a

museum, or an association of museums, takes in the debate regarding

… Congress Updates Copyright Law for Digital Era, Aviso, Nov. 1998, at 1,2.

230

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ART MUSEUMS & COPYRIGHT LAW

copyright in cyberspace will likely relate to which of these roles the

museum is performing, and which of these functions it wishes to

promote.365 If a museum focusses upon its status as a copyright holder

(e.g., an art museum with a collection of older art) it is more likely to

support expansion of copyright and approach presentation of its

collections online as a way of generating income. Conversely, if it

focusses upon its status as a copyright user (e.g., a museum with a

collection of contemporary art) it will likely endorse restriction of

copyright, expansion of fair use, establishment of online free use

zones, and view presentation of its collections online as fundamentally

educative and nonprofit.366

The position that art museums take regarding copyright in the

electronic environment thus ties in with a broader issue facing

museums and nonprofit organizations in general, namely, the extent to

which a museum or other nonprofit entity may engage in profit-

oriented activity without jeopardizing its status as a nonprofit

educational institution. It is true that in the contemporary arena of

privatization, shrinking interest in public institutions, and shrinking

public funds for nonprofits, museums are facing enormous financial

pressures.  But, these are institutional questions that confront the

nonprofit sector as a whole and that should be debated within that

context.367 To view copyright law as a potential, or partial, remedy to

the   financial problems   plaguing   museums    would   not   only

inappropriately divert museums from their core nonprofit, educational

functions and further contribute to their transformation from nonprofit

entities into market players, but it would deflect attention from the

institutional problems plaguing the nonprofit sector as a whole-

problems that must be ameliorated if museums are to experience any

long-term relief from their financial problems.

The question remains: if art museums should not approach

365 See, e.g., Weil, supra note 10, at 38, 41. See also supra note 364, at 2 ("AAM

[The American Association of Museums] continues to represent museums before

Congress and the U.S. Copyright Office as both owners and users of copyrighted

works-a difficult balancing act.”)

366 Id.

367 See, e.g., MARIE C. MALARO, MUSEUM GOVERNANCE: MISSION, ETHICS

POLICY (1994) 22-28.

1999]

UCLA ENTERTAINMENT LAW REVIEW

copyright reform as a vehicle through which to ameliorate their

budgetary problems, then how should they approach it? The answer

lies in the fundamental nature of art museums as educational, nonprofit

institutions that hold their collections in trust for the public, and that

have a responsibility to make these collections available to the public.

To help fulfill this responsibility, museums should advocate for the

contraction of copyright, the expansion of fair use, and the

development of an expansive public domain in cyberspace. The

various rulemaking proceedings mandated by the Digital Millennium

Copyright Act provide one forum for such activities; but museums

should, in no way, view themselves as limited in their advocacy efforts

to such domestic administrative fora.

IV. CONCLUSION

The law of copyright is at war with itself, at least with respect to its

application in cyberspace. By holding that downloading, uploading,

and other routine activities that are necessary to fully realize the

educational potential of the Internet amount to copying within the

meaning of copyright law, the law thwarts one of its essential purposes.

The law deals another blow to the public/copyright user half of the

copyright equation by creating a hospitable environment for the use of

encryption technology, thereby paving the way for the transformation

of the Internet into a pay-per-view cybermall.  The battle is a

particularly ironic one for museums, given that museums and the law

of copyright share the same underlying purpose of promoting science

and the arts, and the progress of culture. To impose potential liability

upon museums and their electronic visitors for copyright infringement

in connection with the electronic presentation and viewing of digitized

works of art contravenes the essential purpose of copyright law, and

threatens the ability of museums to carry out their mission in the

electronic times in which we live.

CONFU to the rescue? Not likely. The Guidelines proposed by the

Administration’s Conference on Fair Use place a weighty burden on

museums and other educational institutions to seek prior permission to

use copyrighted works, and inappropriately contract, rather than

expand, the concept of fair use. Moreover, the Guidelines are likely

moot in light of the recently-enacted Digital Millennium Copyright

[Vol 6:2

ART MUSEUMS & COPYRIGHT LAW

Act. Nor can museums expect much relief from the new legislation,

despite the fact that it gives lip service to fair use and acknowledges

that nonprofit, educational institutions may have a legitimate need for

free access to copyrighted works, unless they are prepared to articulate

their vision of how fair use should develop under the new law. Thus,

museums should gear themselves up for vigorous representation of

their interests in the various rulemaking proceedings that are to be

commenced under the Digital Millennium Copyright Act and in any

other national and international fora that they deem appropriate. They

should likewise focus renewed attention on their core educational

functions, their defining nonprofit status, and their public trust

responsibilities, and, with these matters in mind, expand their

participation, nationally and internationally, in the debate regarding

copyright in cyberspace. In doing so, museums should, consistent with

their core responsibilities, ally themselves with those forces in the

debate that advocate for broad public access, expanded fair use, free

use zones, and the like.

The law of copyright has always involved a conflict between the

rights of copyright holders, and the right of the public to have

unrestricted access to creative works, with profound consequences for

society as a whole. In the online world of cyberspace, however, where

anyone with access to the Internet can communicate with everyone,

anywhere,368 the conflict is particularly charged, the stakes are

unprecedentedly high, and the prospect of manacles in cyberspace369

looms at the frontier.

361 See supra note 140 and accompanying text.

369 See supra at 1; see also supra notes 109 and 111, and accompanying text.

1999]

Volume 05, Issue 2, pp 221-250, Otake

The Continuing Viability of The

Deterrence Rationale In Trademark

Infringement Accountings

Bryan M. Otake”

I.    INTRODUCTION

Trademark enforcement is of great concern to American commerce

in general’ and the entertainment industry2 in particular. Producers of

entertainment products devote considerable efforts and resources to

the cultivation of customer loyalty and brand identification. Recently,

the entertainment industry has become one of America’s major pro-

ducers of economic wealth and jobs. However, increasing numbers of

counterfeiters and trademark infringers are threatening the vigor of this

economic sector.

. Executive Editor, UCLA Entertainment Law Review, 1996-97. J.D., UCLA School

of Law, 1998; B.A., U.C. Berkeley, 1994. I would like to thank Michael Steuch for

his encouragement of the submission of this Comment; Derek Kroeger for his edito-

rial suggestions; my father, my mother, and Leo for their unflagging support and

love.

1 Wendy J. Gordon, On Owning Information: Intellectual Property and the

Restitutionary Impulse, 78 VA. L. REv. 149, 156 (attributing expansion of U.S. intel-

lectual property rights to concerns over fairness and changing economic conditions).

2 The term “entertainment industry,” a notoriously elastic rubric, is used herein-

after in to refer to commercial and business activities engaged in the production and

promotion of music, audiovisual works, recreational computer software, amusement

parks, professional sports, fictional literary works, performance art, and other rec-

reational pastimes.

UCLA ENTERTAINMENT LAW REVIEW

Plaintiff trademark holders theoretically have a number of legal

statutes and remedies at their disposal in the battle against counterfeit-

ers. One particularly powerful weapon in the escalating war against

trademark infringement is the remedy of an accounting of an in-

fringer’s profits, which is provided for in the Lanham Act of 1946.3

Many jurisdictions permit an accounting of a defendant infringer’s

profits under the rationales of (1) plaintiff compensation; (2) unjust

enrichment; and (3) deterrence.4

The issuance of the accounting remedy in trademark cases, how-

ever, is not a common occurrence.5 Federal district courts have been

markedly reluctant in issuing the accounting remedy, to the disap-

proval of the appellate courts.6 A fair number of academics have also

attacked the accounting remedy as anachronistic and improper. One

commentator likened an accounting to a “common law dinosaur sur-

viving more by tradition than utility.”’7 Others have attempted to ret-

rofit the accounting process and proposed its simplification.9

Despite the pronouncement by many courts that the use of the de-

terrence rationale as a basis for an accounting is “firmly established,””0

lingering confusion remains over the role of deterrence in the Lanham

3 Trade-Mark Act of 1946, ch 540, 60 Stat 427, codified at 15 U.S.C. � 1051 et

seq.

4 George Basch Co, Inc. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992); see

generally, CHARLES E. MCKENNEY AND GEORGE F. LONG, III, FEDERAL UNFAIR

COMPETITTION: LANHAM ACT � 43(a) � 10.04[2], at 10-44 (6th release 1995).

5 See, e.g., Cuisinarts, Inc. v. Robot-Coupe Int’l Corp., 580 F. Supp. 634, 637

(S.D.N.Y. 1984) (observing the evidentiary difficulties in determining customer con-

fusion.); 4 J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION � 30:62

at 498 (4th ed. 1997) (accounting of profits granted when judge “gets mad” at defen-

dant).

6 William G. Barber, Recovery of Profits Under the Lanham Act: Are the Dis-

trict Courts Doing Their Job, 82 TRADEMARK REP. 141 (1992).

7 James M. Koelemay, Jr., Monetary Relieffor Trademark Infringement Under

the Lanham Act, 72 TRADEMARK REP. 458, 537 (1982).

‘ Dennis S. Corgill, Measuring the Gains of Trademark Infringement, 65

FORDHAM L. REv. 1909 (1997) (proposing revision based on statistical models).

9 E.g, Christopher P. Bussert and Theodore H. Davis, Jr., Calculating Profits

Under Section 35 of the Lanham Act: A Practitioner’s Guide, 82 TRADEMARK REP.

182 (1992).

10 See Corgill, supra note 8, at 1909, 1929-3 1.

[Vol 5:2

1998] TRADEMARK INFRINGEMENT ACCOUNTINGS                       223

Act. Even the seminal academic commentary on trademark account-

ings of profits argues that deterrence should be precluded from being

the sole basis for an accounting.” Some decisions reflect continuing

confusion over interpretation of the Lanham Act’s statement that no

remedy should constitute a “penalty.” Moreover, it has been suggested

that where an accounting is impossible under a compensatory ration-

ale, other remedies such as a reasonable royalty or an award of attor-

ney fees may be equally effective.

The primary objective of this Comment is to reaffirm the deter-

rence rationale as a basis for an accounting through a survey of the

cases and theories in trademark law and remedies. Though some aca-

demic light has already been cast in this area, the continued confusion

indicates that this is a field worthy of continued explication. Both

practitioners and law students would benefit from a “ventilation” of

the salient issues involved. Thus, this Comment will critically survey

the role of deterrence in trademark infringement. In the process, this

work will illustrate the short-comings of other remedial schemes and

the continued judicial strictures on the establishment of trademark

remedies. The Comment will then argue why the continued use of the

deterrence regime is both necessary and useful as a weapon against the

ever increasing wave of trademark piracy in terms of policy and effi-

cacy.

Protection of the trademark holder from repeated violations by the

professional trademark counterfeiter and the brazen corporate infringer

has been slighted in an attempt to restrict the Lanham Act to the pre-

vention of customer confusion. This survey of the extant case law and

literature will attempt to repair the imbalance. Part II of this Comment

will describe the general purpose of trademark law and the creation of

statutory remedies for trademark infringement in the Lanham Act.

Part III will detail the types of remedies available under the Act, in-

cluding the remedy of an accounting of profits. Part IV will delineate

the various rationales for an accounting of profits in trademark cases

and highlight their advantages and limitations. Part V will present ar-

guments for the continued use of the deterrence rationale as a basis for

an accounting of profits, in the process critiquing various alternatives

to an accounting of profits for the goal of deterring counterfeiters.

1 Koelemay, supra note 7.

UCLA ENTERTAINMENT LAW REVIEW

It should be emphasized that this work is meant to be a reference

source for those who want to know more about the role of deterrence

in the awarding of profits in trademark infringement cases. It is hoped

that this survey will help to alleviate some of the confusion that clouds

trademark remedies.

II.   PROTECTION OF TRADEMARKS AND THE LANHAM TRADEMARK

ACT

A.     Role of Trademarks

A “trademark” is a “word, slogan, design, picture, or any other

symbol used to identify and distinguish goods.”’12 For purposes of the

law, it is unimportant if the consumer forgets the name of the particu-

lar manufacturer as long as the mark distinguishes similar goods and

services at the time of examination or purchase. 13

The U.S. Supreme Court has described the purpose of trademark

law in the following fashion:

“The protection of trade-marks is the law’s recognition of the psycho-

logical function of symbols. If it is true that we live by symbols, it is no

less true that we purchase goods by them. A trade-mark is a merchan-

dising short-cut which induces a purchaser to select what he wants, or

what he has been led to believe he wants. The owner of a mark exploits

this human propensity by making every effort to impregnate the atmos-

phere of the market with the drawing power of a congenial symbol.

Whatever the means employed, the aim is the same- to convey through

the mark, in the minds of potential customers, the desirability of the

commodity upon which it appears. Once this is attained, the trademark

owner has something of value. If another poaches upon the commercial

magnetism of the symbol he has created, the owner can obtain legal re-

dress.”’14

12 j. THOMAS MCCARTHY, MCCARTHY’S DESK ENCYCLOPEDIA OF INTEL-

LECTUAL PROPERTY. 339 (1991).

13 SIDNEY A. DIAMOND, TRADEMARK PROBLEMS AND How TO AVOID THEM 6-7

(rev. ed. 1981).

14 Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205

(1942).

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The importance of protecting the trademark holder has not been

lost on Congress in its formulation of intellectual property legisla-

tion.15 As one of the main groups affected by trademark legislation,

the entertainment industry has followed with great interest the creation

of trademark rights and their protection. The uses of trademarks in the

arts and entertainment field include: the protection of movie titles;16

the use of characters from     fictional literary works;17 home video

games;18 computer entertainment software;19 the names of musical

groups;    the use of deceased entertainers in advertising;21 and the

protection of cross-marketed products with identifying marks.

15 “Trade-marks, indeed, are the essence of competition, because they make

possible a choice between competing articles by enabling the buyer to distinguish

one from the other. Trade-marks encourage the maintenance of quality by securing

to the producer the benefit of the good reputation which excellence creates.” S. REP.

No. 1333, 1946 U.S. CODE CONG. SERV. 1275.

16 E.g., Universal City Studios, Inc. v. Montgomery Ward & Co., Inc., 207

U.S.P.Q. 852 (N.D. II. 1980) (infringing plaintiffs trademark in motion picture

names “Jaws” and “Jaws 2″); Columbia Pictures Industries, Inc. v. Miller, 211

U.S.P.Q. 816 (using “Clothes Encounters” found to conflict with trademark in movie

title “Close Encounters”).

17 E.g., John Marks, Goodbye, Darth Vader. Hello, Gandalf, U.S. NEWS &

WORLD REPORT (March 10, 1997), at 56 (noting trademark dispute over character

name “Gandalf” and expected profits for trademark holder of J.R.R. Tolkien’s “Lord

of the Rings” if film version of literary trilogy is produced).

“  E.g., Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007, 1010 (9th Cir.

1994), cert. denied sub nom. Sheng v. Nintendo ofAm., Inc., 115 S.Ct. 2256 (1995)

(finding applicability of both trademark and copyright remedies for imitation of

home video game cartridges).

19  Steven Schortgen, Note, “Dressing” Up Software Interface Protection: The

Application of Two Pesos to “Look and Feel,