All posts by Kevin Smith, J.D.

Here we go again: latest GSU ruling an odd victory for libraries

April 1, 2016 Kevin Smith, J.D. 5 Comments

My first thought when I read the new ruling in the Georgia State copyright lawsuit brought by publishers over e-reserves was of one of those informal rules that all law students learn — don’t tick off your judge. From the first days of the original trial, the arrogant antics of the attorneys representing the publisher plaintiffs — Oxford University Press, Cambridge University Press, and Sage Publishing — clearly put them in a bad light in the Judge Evans’ eyes. Those chickens came home to roost in this latest opinion, especially where the plaintiffs are chided for having filed a declaration about what licenses were available for excerpts back in 2009, even after the Judge told them not to, since that information had not been introduced as evidence in the original trial. All of that evidence was stricken, and the Judge based her new opinion on the evidence that was before her in that first trial. I can imagine that the publishers might use that ruling as a basis for yet another appeal, but if they do so, they had better be able to prove that the evidence is genuine and reliable, and to explain why, if it is, they did not produce it at trial back in 2011.

But I have put the cart before the horse; let’s look at the ruling we just received from the District Court. In case some have lost track, this case was originally decided by a 2012 ruling by Judge Evans that found infringement in only five of 74 challenged excerpts, and awarded court costs and attorney’s fees to GSU as the “prevailing party” in the case. The publishers appealed that decision to the Eleventh Circuit Court of Appeals, which vacated the trial court holding in 2014, sending the case back to Judge Evans with a set of instructions on how to improve the fair use analysis for these challenged excerpts. As has been noted many times before, the publishers lost nearly all of the big principles they had wanted to establish in the case; the Court of Appeals refuted most of the publishers’ arguments even as it did what they asked and vacated the first ruling.

Now, using the new fair use analysis directed by the Court of Appeals, Judge Evans has handed the publishers yet another loss. One wonders how many times they will have to lose this case before they finally learn something about the state of copyright law today. Still, this loss for the publishers is only the oddest sort of victory for libraries.

The new fair use analysis that Judge Evans uses is carefully designed for situations where the challenged use in not transformative; the non-transformative nature of the use means that the small portions used must be scrutinized very carefully, and it means that the fourth factor — the potential impact of the use on the market for or value of the original — gets extra weight. It is very important to notice this fact, because it means that this analysis used by Judge Evans will not be applicable in many other situations, especially in academia, where the uses are, unlike with e-reserves, transformative.

Even though both the trial court and the Court of Appeals have held that e-reserves are not transformative, both courts have affirmed that the first fair use factor — the purpose and character of the use — will still favor fair use when that purpose is non-profit and educational. So throughout this new decision, Judge Evans continues to hold that the first factor always favors fair use.

The analysis of the other factors has changed, however. For factor two, the nature of the original, Judge Evans does not make a blanket assumption, owing to instructions from the Eleventh Circuit, but looks at the nature of each excerpt. In most cases, she finds that informational matter is mixed with more individualized scholarly commentary, and the result is that this factor is usually neutral — neither favoring nor disfavoring fair use. In the few cases where it counts against fair use, it has little impact (the Judge says this factor is only 5% of each decision).

In the same way, factor three now gets a more careful and specific analysis. The 10% or one chapter rule that Judge Evans used in her first opinion is gone, at the instruction of the Court of Appeals. Instead, Judge Evans looks at each excerpt and evaluates its appropriateness to the allowable purpose (from factor one) and its potential to substitute for a purchase of the book (market substitution, anticipating factor four). In many cases, she finds that the excerpts are a very small number of pages and a small percentage of the entire work (so not a market substitute), are are also narrowly tailored to accomplish a specific teaching objective. In those cases, this factor will favor fair use.

Factor four, which the Judge now believes should constitute 40% of the fair use decision in this particular situation, is where most of the action is in this ruling. The analysis, the Judge says, is two-fold, looking at both harm to the potential market for the original and harm to the value of the work, which means looking at the importance of the licensing market. About this latter source of potential value, the Judge says that she must decide “how much this particular revenue source contributed to the value of the copyright in the work, noting that where there is no significant demand for excerpts, the likelihood of repetitive unpaid use is diminished” (p. 9). The result of this inquiry is that a lot of financial information about each book — its sales over time and the amount of revenue derived from the permissions market — is very important in the fourth factor analysis. The charts for many of the books that reflect this information make for fascinating reading, and contain information I suspect the publishers would rather not have made public. This is where it becomes most difficult for libraries to apply the analysis that Judge Evans is using, because the Court has access to information, and time to analyze it, that is not available to libraries as they consider e-reserve requests. Still, I think it is important to note that the standard the Judge is using in this evaluation is pretty high and it is focused on value to the authors and to users:

[W]e must determine how much of that value (the value of the work to its author and the potential buyers) the implied licensee-fair users can capture before the value of the remaining market is so diminished that it no longer makes economic sense for the author — or a subsequent holder of the copyright — to propagate the work in the first place (page 8, quoting the 11th Circuit).

In other words, this analysis is opening up a significant space in the idea of market harm, which permits potential fair users to diminish the value of the work in question to some degree, as long as that reduction in value is not so steep as to discourage writing and publishing these academic books. Licensing, in this analysis, is the remedy only for that kind of steep loss of value; it is not a mere right of the copyright holder to obtain all the value from the work that is possible.

Judge Evans applied this complex formula for fair use to 48 challenged excerpts. It was only 48 because for 26 of the ones discussed in her original ruling she found that there had been no prima facie case for copyright infringement made out, either because the publishers could not show they held the copyright or because there was no evidence that any students had used the excerpt. This part of the ruling was not challenged, so only these 48 fair use rulings had to be redone. Bottom line is that she found fair use for 41 of the 48, and infringement only in seven cases. As Brandon Butler points out in his discussion of the ruling, even that might overestimate the infringement, since it appears that the summary in the decision may list at least some instances of infringement that were actually found, in the specific analysis, to be fair use.

So this ruling, like each ruling in the case, is clearly a disaster for the plaintiff publishers. Once again it establishes that there is significant space for fair use in higher education, even when that use is not transformative. Nevertheless, it is a difficult victory for libraries, in the sense that the analysis it uses is not one we can replicate; we simply do not have access to the extensive data about revenue, of which Judge Evans makes such complex use. So what can libraries do, now that we have this additional “guidance” about e-reserves from the courts? I think there are two fundamental takeaways.

First, we should continue to do what we have been doing — making careful fair use decisions and relying on those decisions when we feel the use is fair. While we do not have much of the information used by the Court in this latest ruling, we still do have the security provided by section 504 (c)3 of the copyright law, which tells us that if we make good faith fair use decisions we, as employees of non-profit educational institutions or libraries, are not subject to statutory damages. This greatly lowers our risk, and adds to the disincentive to sue academic libraries that must surely stem from the GSU experience. All we can do, then, is to continue to think carefully about each instance of fair use, and make responsible decisions. We still have some rules of thumb, and also some places where we will need to think in a more granular way. But nothing in these rulings need fundamentally upset good, responsible library practice.

The second takeaway from this decision is that we should resort to paying for licenses only very rarely, and when there is no other alternative. The simple fact is that the nature of the analysis that the Court of Appeals pushed Judge Evans into is such that licensing income for the publishers narrows the scope for fair use by libraries. To my mind, this means that whenever we are faced with an e-reserves request that may not fall easily into fair use, we should look at ways to improve the fair use situation before we decide to license the excerpt. Can we link to an already licensed version? Can we shorten the excerpt? Buying a separate license should be a last resort. Doing extensive business with the Copyright Clearance Center, including purchase of their blanket campus license, is not, in my opinion, a way to buy reassurance and security; instead, it increases the risk that our space for fair use will shrink over time.

[personal note — this will certainly be my last word here at the Scholarly Communications @ Duke site, and it is fitting that it deal with the Georgia State case, about which this site has seen so much commentary. For the sake of continuing this conversation and including more discussants, I am also going to post this piece on the new group blog of which I am a part, IO: In the Open. Apologies if the repetition is annoying to anyone.]

Moving into the open

March 22, 2016 Kevin Smith, J.D. 3 Comments

Since it was announced that I will move shortly to the University of Kansas, several people have asked me if I intend to continue blogging, and have kindly encouraged me to do so. This blog, of course, will remain one of the communication outlets for the Scholarly Communications program at Duke, and my Duke colleagues Paolo Mangiafico and Haley Walton, as well as others, will fill the space, I am sure, with interesting and worthwhile reads.

I do intend to keep blogging, however, at a different site and in a different format. Over the past few weeks, some colleagues and I have assembled a great group of people interested in scholarship, publishing and libraries, and I am excited to announce a new, collective blog called IO: In the Open.

On this new site, this group of people will be writing about how scholarship and scholarly publishing is changing and can change in ways that better adapt to new technologies, needs, and economics:

Amy Buckland
Institutional Repository Manager, University of Chicago Library

William Cross
Director, Copyright & Digital Scholarship, North Carolina State University Libraries

Ellen Finnie
Head, Scholarly Communications & Collection Strategy, MIT Libraries

Patricia Hswe
Digital Content Strategist, Penn State University Library

Lisa Macklin
Director, Scholarly Communications Office, Emory University Library

John Sherer
Director, University of North Carolina Press

Sarah Shreeves
Associate Dean for Digital Strategies, University of Miami Libraries

Kevin Smith
Dean of Libraries, University of Kansas

Claire Stewart
Associate University Librarian for Research & Learning, University of Minnesota

Shan Sutton
Vice Dean, University of Arizona Libraries

The title of this new blog should not surprise folks. It is born out of the conviction that scholarship should be open because…

Scholarship in the open is better business – it provides a clearer perspective on what it actually costs to produce articles, books and other scholarly output.

Scholarship in the open is better for libraries – it connects us more directly with our researchers and with the life entire life cycle of research. It improves our ability to disseminate the outcomes of research and get the materials they need into the hands of students, teachers and others quickly and efficiently.

Scholarship in the open pushes us towards better copyright laws — it encourages us to think about how copyright could better align with author incentives and reminds us that, because the reasons creators create are so various, the law needs more flexibility than it currently has.

Scholarship in the open is better scholarship – it can be read and evaluated by a much larger and more varied audience. It takes the initial process of evaluating works of scholarship out of the hands of a small elite, some of whom are ill-prepared for the task, and offers the potential for more diverse ways of measuring impact and providing more complete information for the hiring, tenure and promotion process.

Our first blog post at IO: In the Open, by Ellen Finnie of MIT, will focus on the vital issue of how we spend our money in libraries, and how we can think in broader terms about the value of scholarly resources. Ellen’s post, with its interesting analogy to food-supply chains, will be published on IO within the next day or so.

I hope that the people who have followed Scholarly Communications @ Duke so faithfully over the years will also subscribe to IO: In the Open. We believe you will find a interesting, committed and diverse set of voices there that will help shape the discussion of these issues in years to come.

If you follow this blog on Twitter (Twitter handle @klsmith4906), that account will also tweet out new post from IO: In the Open. Or, you can follow our new IO Twitter account: https://twitter.com/IOIntheOpen. You can also subscribe directly to the IO: In the Open blog posts by using the widget on the side of the IO page.

Some radical thoughts about Sci-Hub

March 3, 2016 Kevin Smith, J.D. 33 Comments

Radical, as I like to remind folks, means to get to the root of an issue (same derivation as radish). So when I say I am offering some radical thoughts about Sci-Hub and the controversy it has generated, I mean that I hope to use the discussion to ask some very basic, “at the roots,” questions about copyright, not that I intend to shock anyone.

My radical thoughts have been prompted by the many very conventional reactions to stories about Sci-Hub, which collects academic papers using .edu proxies and makes them available without charge and in disregard of the rules imposed on distribution by the copyright holders. These reactions have followed two predictable trajectories, with one group calling what the site and its founder Alexandra Elbakyan are doing civil disobedience. Indeed, Ms. Elbakyan herself has apparently cited Article 27 of the U.N. Declaration on Human Rights as a justification of her project, which now host nearly 50 million articles. On the other side of the debate are those who are shocked by this disregard of the law, and especially by the apparent willingness of some libraries or librarians to use Sci-Hub to obtain research materials for their patrons. All this debate, by the way, has been provoked by a lawsuit against Sci-Hub brought by publishing giant Elsevier, a move which has predictably increased attention to the site.

One thing that has been particularly disturbing to me about the various statements expressing outrage over Sci-Hub is how focused they are on the values and opportunities of the developed world. One comment I saw pleaded with librarians to respect the law and not to use Sci-Hub “just to save money.” Such moralizing misses a couple of basic points, I think. The first is that Sci-Hub seems directed at, and is certainly mostly used by, researchers and students in the developing world, where it is not merely a matter of “saving some money,” it is a question of finding any way at all to get access to scientific and medical research. We tend to forget that a $30 paywall, while a mere inconvenience to those of us in the U.S. or Europe, can be an insurmountable roadblock for someone in Cambodia or Malawi who is trying to learn about a medical condition.

Another point about the righteous defense of “the law” in some of these comments is that laws come in different forms and carry different kinds of moral authority. Lawyers distinguish, for example, between illegal acts that are “wrong in themselves” (malum in se) and those that are only “wrong because prohibited,” or malum prohibitum. ( there is a discussion of this distinction, for those with a sense of humor, in the movie Legally Blonde). Copyright infringement is, of course, the latter; a violation of the law but not of any moral imperative. Such a law merely enshrines a decision about the distribution of resources, and it can be changed without causing the collapse of human society. Precisely the kind of situation where acts of civil disobedience to provoke discussion and change are most supportable.

This is where the radicalism comes in, when we look at what copyright law does, how it has been used over time, and what Sci-Hub is actually doing. These questions were raised for me by the fascinating comment by Thomas Munro on this blog post, which is itself defending the idea of Sci-Hub as civil disobedience. Dr Munro’s comment, the first that follows the post, points out that Sci-Hub is doing what U.S. publishers did for a long time — she is refusing to recognize copyrights granted by other countries. Dr. Munro writes as follows:

What Elbakyan is doing – ignoring foreign copyright – was official US government policy for more than a century. As a result, books were much cheaper than in Europe and literacy skyrocketed. When the US finally caved, in 1888, the editors of ‘Scientific American’ thundered that “The extension of copyright monopoly to foreigners will enable them to draw millions out of the country” and that it would turn US customs officers into “pimps and ferrets for these foreigners”.
As one Senator said in voting against the bill: “An international copyright is simply a monopoly … what is known as protection, or taxing the people to make a few persons rich … It seems to me that there can be no excuse for carrying this restriction upon human knowledge.”

That the publishing industry thrived in the U.S. by ignoring copyright is a well-known but little discussed aspect of our history with scholarly communication. Perhaps those early American publishers did not see themselves as practicing civil disobedience; they may have just been trying to maximize profits. But their willingness to ignore foreign copyrights when it served what they believed was a more important purpose really does call us to the root of the matter. Copyright law is an instrumentality, not a good in itself. It’s role in our legal system is to encourage creativity and the production of knowledge. When it ceases to do that it deserves to be challenged and changed.

I believe that copyright has a continuing role to play in the academy and in the reform of scholarly communications. But we do no favors to that role when we treat copyright law as enshrined and inviolable, as if it had been decreed from Mt. Sinai. Instead we should focus on what the law is intended to accomplish, where and why it fails in its purpose, and how we can make it more adaptable for the digital age. One key to a clearer assessment of copyright law is to know its history a little better, and in his blog comment Dr. Munro also offered us a pointer for that task — a citation to a doctoral dissertation, now freely available an e-book:

Eric Anderson. (2010). Pimps and Ferrets: Copyright and Culture in the United States, 1831-1891. http://archive.org/details/PimpsAndFerretsCopyrightAndCultureInTheUnitedStates1831-1891

I haven’t read Anderson’s book yet, but I am anticipating a more detailed and nuanced view of how copyright has been used and abused through the vicissitudes of American history.

Prognosticating about the new LoC

February 29, 2016 Kevin Smith, J.D. 2 Comments

It is safe to say that President Obama’s nomination of Dr. Carla Hayden to be the next Librarian of Congress drew rave reviews from the library community. Most Librarians of Congress have been researchers and academics rather than professional librarians. That tradition has worked well over the years, but times are changing quickly for libraries these days. The technical, planning and business skills that come from years of daily service in a large library system, which Dr. Hayden has, seem more important than ever now. Indeed, some of the problems the Library currently has could be attributed to neglect of the technical side of library work by the current Librarian, who clearly stayed in place too long.

So it is not a surprise that library organizations were quick to praise the nomination of Dr. Hayden, who is currently CEO of the Enoch Pratt Free Library in Baltimore. As Inside Higher Ed tells us, Dr. Hayden is credited with improving the finances at Enoch Pratt and with new technological initiatives. Just what the LoC needs.

It is also interesting to see that open access advocates have been equally pleased with this nomination. Public Knowledge, for example, issued this statement welcoming the nomination. The reaction from writer, blogger and open access advocate Cory Doctorow was a little less restrained, referring to Dr. Hayden as “a rip-snortin’, copyfightin’, surveillance-hatin’ no-foolin’ LIBRARIAN.” And TechDirt notes that the President explicitly mentioned open access is his statement about Dr. Hayden. As a reason for nominating a candidate for Librarian of Congress, support for open access is as unprecedented as is Dr. Hayden’s gender or ethnic background.

All this begs the question of what the chances are that Dr. Hayden will be confirmed. Of course, she might encounter difficulties just because of the general dysfunction in Congress or because of a desire to obstruct anything the President thinks is a good idea. Carla Hayden’s nomination may just be collateral damage in the ongoing conflict between the White House and Capitol Hill. But let’s assume for a minute that the nomination does move through the process in Congress — it would be very unusual to see a fight over a Librarian of Congress, after all — and consider the possibilities.

One consideration would be the attitude of the groups that lobby on behalf of Big Content. The RIAA issued this statement in support(?) of the nomination, which certainly seems to damn with faint praise. In fact, Cory Doctorow reads this statement as evidence that the RIAA is afraid of Dr. Hayden. Could it be that she might push the Copyright Office a little bit out of the embrace with Big Content that it has enjoyed in recent years?

This possibility points us to the real drama of the nomination, in my opinion (if drama is not too, well, dramatic a word to use). The issue, anyway, is the effect that Dr. Hayden’s nomination might have on the efforts to move the Copyright Office out of the Library of Congress. The reasons given for this effort, which I wrote about here and here, seem twofold. The first is the fact that the LoC technical infrastructure has become out of date. As I said in the earlier post, that is something we might expect a new Librarian to address, and it seems certain that Dr. Hayden would be well-placed to make those improvements. So if that is the concern, it seems that her appointment should slow the momentum to make the CO an independent agency, or to move it to the Department of Commerce.

But statements regarding the idea of moving the CO also make some veiled references to a conflict of mission between the Copyright Office and libraries. This can only refer to that trend toward the CO becoming a lobbying arm of the content industries, and that conflict — it is shameful, in my opinion, to admit publicly that the Copyright Office is not first and foremost dedicated to the public interest, as are libraries — is only likely to get worse with the nomination of Dr. Hayden. So if we see foot-dragging and an unwillingness to act on this nomination, I think there will be more behind that inaction than just generic reluctance to accept this President’s nominations. I think we will be seeing the quiet but firm opposition of the lobbyists from Big Content, who may be hard-pressed to oppose Dr. Hayden openly but will very likely want to sabotage the nomination in order to preserve their regulatory stranglehold over the Copyright Office.

Backing into the public domain

February 17, 2016 Kevin Smith, J.D.

The last time I wrote about the lawsuit and subsequent ruling over the copyright status of “Happy Birthday To You,” I was trying to clarify that, in spite of media reports, the court had not declared “Happy Birthday” to be in the public domain; it merely said that Warner Chappell music was not able to demonstrate that they held the rights in the song. In effect, the court ruling turned “Happy Birthday” into one of the very few judicially-recognized orphan works.

I was a little startled, therefore, to see headlines last week saying that a settlement in the case was asking the judge to declare “Happy Birthday” to really be in the public domain. My first reaction was to wonder if a court can actually do that. Public domain status is not actually defined anywhere in the law; it is, rather, an absence of copyright protection. So the question that popped into my head was, if there is not sufficient evidence to determine whether or not there is copyright protection for the song, can a court just declare that any putative protection that might exist is simply void? Can the court do a kind of quitclaim on copyright for a particular work?

A little more attention to the issue reminded me that this is not, in fact, what is happening (there is another story about the settlement, with a less dramatic headline, from the New York Times, here). In fact, the Judge is being asked to approve a settlement document in which several of the parties in the case explicitly deny that the song is in the public domain, but agree to release any claims they may have. They go on to state that they know of no other claimants who could assert ownership, so they believe that, with the release made by the settlement (assuming it is approved), “Happy Birthday To You” will be in the public domain. So the “quitclaim” here is from the parties, as logic suggests it must be (see sections 2.2.1 and 2.2.2 in the settlement document linked above). But these portions of the settlement also contain a promise that the parties will not object to a declaratory judgment from the court, sought by the plaintiffs, that the song will be in the public domain as of the final settlement date.

In a conversation about this, some friends and I joked that we had found a new solution to the orphan works problem — just ask courts for declaratory judgments that no copyrights continue to exist in such works. A court would not do that, of course, without at least having all the known possible claimants before it and willing to relinquish their claims. And it is a risky strategy for any court, because in theory an unknown claimant could arise at a later date, and it is not clear what effect such a declaratory judgment might have on their rights, if they had evidence that supported their claim. That is unlikely in most cases, and extremely unlikely in the “Happy Birthday” case, where all the potential claimants seem to be at the table. Nevertheless, this result in a particular situation does not really offer a positive way forward for most orphan works.

If declaratory judgments are a poor way to address most orphan works because they attempt to adjudicate the rights of unknown parties who do not have a voice, the same might be said of the Copyright Office’s extended collective licensing scheme, which seeks to collect money on behalf of those unknown rights holders. Such a plan would create a situation not unlike that which prevailed for years around “Happy Birthday” — users paying the wrong party for the right to use a work for which the real rights holder is unknown.

It seems clear to me that the best solution to the orphan works problem in many situations, including mass digitization of distinct and distinctive collections by libraries, is fair use. The HathiTrust and Google Books cases pointed us in that direction in a way that this lawsuit over “Happy Birthday” cannot. Nevertheless, that case does serve as a reminder, at least to me, of the variety of resources that courts have at their disposal that might address an orphan works situation. Several common law doctrines used to preserve equity in property disputes come to mind — the doctrine of abandonment, for example, or even adverse possession. Perhaps most useful would be laches, a common law doctrine that tells courts that they can refuse to hear a claim (usually in equity, whereas copyright claims are claims in law) if the party asserting its rights has “slept on” those rights, which is to say has unreasonably delayed or been negligent in enforcing them.

Courts have a great deal of space to deal creatively with disputes, which is one of the best things about our common law system. Various doctrines have evolved over time that could help courts preserve fairness in a dispute over some use of an orphan work, presuming that a claimant comes forward at some point. But the truth is that none of these fall-back positions are really needed in most cases because Congress gave us a statutory solution for this issue, although it is rooted in common law itself — fair use.

Steal this book?

February 11, 2016 Kevin Smith, J.D. 6 Comments

Last week I was researching a copyright and fair use issue for a faculty member, and needed to see a copy of a book held by Duke’s Rubenstein Rare Book and Manuscript Library. As I explained the issue and what material I wanted to use to the Rubenstein staff, a researcher sitting nearby listened intently. As soon as we finished, she told me that she was the President of the Authors Guild and that they were suing Google over fair use. She began to explain to me why Google was wrong, but that the author for whom I was doing the research should be allowed to rely on fair use. When I introduced myself as a lawyer and copyright specialist for the Libraries, the conversation came to a polite but stilted conclusion.

This week, however, I got a chance to see more fully what that researcher, whose name is Roxana Robinson and who was giving a lecture that afternoon in the Library, has to say about Google, in a column she wrote for the Wall Street Journal called “How Google Stole the Work of Millions of Authors” (behind a paywall). Ms. Robinson, a novelist and biographer, unfortunately proves what I suspected at the time of our encounter, that her perspective on fair use is based on a preconceived idea about who are good users entitled to rely on fair use (authors) and who are bad, unworthy users (Google), rather than on an understanding of the careful legal analysis of specific uses that actually underlies these decisions.

The WSJ column employs some interesting rhetoric, starting with its title, which is clearly intended to provoke a visceral response. Many people have noted that the language of theft and stealing is inappropriate when the issue is copyright infringement. This point is made in great detail in William Patry’s book “Moral Panics and the Copyright Wars.” As is true for most crimes, the definition of theft includes an intention, a mental state or “mens rea” that is a required element of that crime. For theft this intention is “to deprive the true owner of [the personal property]” (definition from Black’s Law Dictionary, Seventh edition). Because of the nature of intellectual property, copyright infringement never meets this definition; that is why the law has a different word — infringement — for the unauthorized taking of someone else’s IP.

So the headline of Ms. Robinson’s column is legally incorrect and intended, I think, to stir up her base rather than to make an argument that could sway the Supreme Court (for more on this point, see the rebuttal published in Fortune “Why the Authors Guild is Still Wrong about Google’s Book Scanning“).

The column also makes a couple of sardonic remarks about quotes that can be found using Google Books. Here the argument breaks down pretty badly, because both of the quotes Ms. Robinson chooses, one from Shakespeare and one from Emerson, are in the public domain. Her effort to be ironic seriously backfires here, because her own column is actually proving the utility of the Google Books database in a way that emphasizes its lawful use of PD texts. Rhetoric has truly overcome logic.

It is worthwhile, nevertheless, to think a minute about the logic structure of the argument that what Google has done is infringement. Ms. Robinson makes the point that there are many books that were scanned by Google, that Google is a profitable company, and that no authorization for the scanning was asked for or given by the authors of the works that were scanned. All of this is true, of course, but it does not amount to an argument that Google has infringed any copyrights. What is missing, at least as I see it, is any notice that the authors have been harmed. The rhetoric of the column clearly tells us that the Authors Guild, and at least some individual authors who are involved in the lawsuit, are angry. But it does not explain a fundamental element of any tort action — harm.

The two courts that have considered this case both found that there was no harm done here — no negative impact on the market for or value of the works in question, to use the language that is part of a fair use analysis. Users cannot obtain any significant portions of books that are limited to snippet views; the AG’s own experts were unable to retrieve as much as 16% of any work using word searches and snippet results, and even that amount of text was randomized in a way that made reading a coherent piece of the work impossible. The is just no evidence that any sales are lost due to this finding aid, and it is quite possible that sales will be gained.

There is, of course, the question of a licensing market. But that is almost a silly question. A market for licensing scans to create an index has never existed, and it is impossible to imagine that any of the authors had such an idea in mind when they wrote their works. As Judge Leval said in his decision for the Second Circuit Court of Appeals, this is not really even a use of the work, it is a use of information about the work, for which a secondary licensing market simply is not appropriate. Creating such a market would be revolutionary, and it would do much more harm to the overall environment for books and reading than anything Google could think up. What the Authors Guild seems to be saying here is that Google should pay us for something we never thought we would or should get paid for, simply because they have a lot of money. Perhaps when we recognize how weak that argument actually is it becomes understandable that Ms. Robinson relied on overheated rhetoric rather than legal or logical arguments. But if the purpose of her essay is to convince people that the Supreme Court needs to take the case to right a serious wrong, it falls far short, and is unlikely to convince the nine citizens whose opinion on that issue matters the most.

Copyright MOOCs, new and refreshed

January 6, 2016 Kevin Smith, J.D. 6 Comments

When my colleagues Anne Gilliland and Lisa Macklin and I released our first Coursera MOOC about copyright, called Copyright for Educators and Librarians, we were very pleased with the reaction. Although our enrollment for that first MOOC was, at just over 10,000 participants, rather low by MOOC standards, we had a higher than normal percentage of completions, and the feedback we got from colleagues was quite positive.

That course ran in the summer of 2014. In July of 2015, we were able to release a new version of the same course in an on-demand format, meaning that participants are able to start the course whenever they wish and can proceed at their own pace without a proscribed ending point.

The move to on-demand is important because it brought us a bit closer to our overall goal, which has been to provide a form of copyright education that is accessible in the several sense of that word to all of our colleagues in education, especially. The course is still free, although there is a small fee if the participants want to receive a “verified certificate” of completion. We began this project aware that the Center for Intellectual Property at UMUC had recently closed, so the education community had lost access to their series of course offering on copyright that carried continuing education credit. Our hope was to provide an opportunity to learn about copyright that was free to all, but also could be used, through the verified certificates, by those colleagues who want to learn about the subject AND get some form of (less expensive) credit for this professional development activity.

Now we have taken another big step toward that goal, with the release today of our second MOOC, on Copyright for Multimedia. Like the first course, this MOOC is on-demand, free to take, and relatively short – four substantive modules and an introduction. In this second course, the modules focus on four different media – data, images, music and film. It grew out of our awareness how often the questions brought to us focus on different media. Many of our colleagues seem confused about how copyright “rules” from the print world, apply in an environment rich with diverse forms of expression and communication. This confusion is understandable, since copyright was born with print technology and continues to adapt only uncomfortably to these “new” media.

When we are asked about what “copyright for music,” or “copyright for film,” looks like, we try to emphasis that the one copyright law in the U.S. is intended to apply without regard to medium of expression. Nevertheless, it is perfectly true that some provisions of the law are media-specific. More significantly, the circumstances in which different media are used are often quite different from the more familiar facts surrounding the use and distribution of print. There is an lawyer’s maxim that says, “change the facts and you change the outcome,” and that is never more true that when we are talking about different media.

Our new MOOC tries to address these differences, and also to further develop the framework for analyzing a copyright issue that we built in the first course. Now that both MOOCs are available on the Coursera platform, we hope that they will be a continuing resource to improve copyright understanding for our colleagues.

I want to add a couple of personal notes to this announcement of the two-part series of MOOCs on copyright.

First, I want to say what a wonderful experience it has been to work with Lisa and Anne, who are as smart and creative about teaching as they are about copyright, as well as with the online course team at Duke. I want especially to note my sense of awe at the creative, complex and realistic scenarios that Anne Gilliland can think up to tease out the implications of copyright in different situations; I hope our participants find them as thought-provoking and amusing as I do.

Second, because of the announcement issued today about my new position as Dean of Libraries at the University of Kansas, and thus my departure from Duke, it seems unlikely that I will participate in any more MOOCs in this series. Our original plan was for three courses, but the two we now have stand alone and, we hope, also work together as a series. It is now an open question whether there will be a third MOOC in this series, but the process of creating these two has been delightful, and the product, I profoundly hope, useful to our colleagues and to many others.

Libraries, Scholarly Publishing, Technologies, Uncategorized

Rebels in the Campus Bookstore

December 15, 2015 Kevin Smith, J.D. 4 Comments

A guest post by Will Cross, Director of Copyright and Digital Scholarship at North Carolina State University

As the semester winds down most normal people are sweating through final projects, scheduling visits with family and friends, or looking forward to a well-deserved holiday break by the fire (or at least the warming glow of the new Star Wars movie). I can’t stop thinking about textbooks.

Several recent events have kept this topic on my mind. First, Kevin and I are preparing to teach a class in the spring and we’re currently putting the finishing touches on our assigned readings. Sitting at the breakfast table working through the syllabus, I was struck by a seemingly-unrelated comment from my wife, Kimberly, who is finishing her first semester in a doctoral program. Making her own plans for the spring, she noted “I need to decide if I’m going to renew my statistics textbook.”

Readers who have been out of school for a few years might be surprised that many students like Kimberly rent, rather than purchase, their more expensive textbooks. If textbook rental companies like Chegg and College Book Renter are not familiar names, you may also be surprised by how quickly textbook prices have spiraled out of control in the past decade. Increasing at nearly triple the rate of inflation, textbook costs have outpaced rises in health care and housing prices, leaving students with an expected bill of more than $1,200 a year.

Faced with these unsustainable costs, students like Kimberly find themselves in an arms race, seeking alternative channels to acquire textbooks while publishers work to plug leaks in their captive marketplace. Indeed, one of the largest copyright cases decided by the Supreme Court in recent years resulted from publishers’ attempt to create a “super-property” right in order to quash the sale of less expensive international textbooks. The following year a casebook company attempted something similar using license provisions to strip property rights from students who “purchased” (ironically) their property law textbook.

While prices have gone up, student spending has not always followed suit, with many students renting, borrowing, or pirating textbooks. Many more simply choose their courses and majors based on the costs of textbooks or delay their purchases to determine the extent to which a title is used in class, setting them back days or weeks in assigned readings. Of greatest concern, a recent PIRG survey revealed that more than 65% of students simply muddle through with no textbook, even though the majority recognized that this presented a “significant concern” for their ability to successfully complete the course. As a result, more than 10% of students fail a course each year because they simply cannot afford the book.

Textbook costs have priced many students out of equal participation in higher education and colleges and universities should regard this as social justice issue that threatens students’ academic progress. Students have written powerfully about these issues on social media, using hashtags like #textbookbroke to document the burdens

created by high prices. For example, tweets from Kansas’ #KUopentextbook project have documented the harm done by students’ lost opportunities to travel to conferences, take unpaid internships, and compete on equal footing in the classroom. As one student put it, “my wage shouldn’t determine my GPA.”

Closed, commercial textbooks also do significant harm to instructional design and academic freedom, forcing instructors to use one-size-fits-all books rather than diverse, tailored course materials. This issue received national attention in November when an instructor was formally reprimanded for refusing to assign a $180 algebra book written by the chair and vice chair of his department. As SPARC’s Nicole Allen notes, the well-intentioned practice of assigning a single book for multiple sections was designed to support a strong local used-book market but in practice it often entrenches a system of static commercial works. It can also homogenize educational materials, limiting them to publisher-approved narratives that inhibit an instructor’s ability to bring her own voice and experience into the classroom. Indeed, many publishers include value-added materials like test banks and pre-made assignments designed to create textbooks that are fully “teacher-proof.”

Students are often caught in the crossfire of a broken textbook market where books are sold by a small group of for-profit publishers who control 80% of the market, and purchasing decisions are made by faculty instructors but students are asked to pick up the bill. This situation – where for-profit publishers leverage faculty incentives to exploit a captive academic market – should sound familiar to anyone working to bring open access to scholarly publishing. The scale, however, is quite different: the textbook market exceeds the scholarly journal market by roughly $4 billion each year.

As they have with open access, academic stakeholders have begun to rebel, designing open materials that are not just cheaper than closed works but are positively better. These open educational resources (OER’s) may be peer-reviewed Creative Commons-licensed textbooks like those found in Rice University’s OpenStax program or the University of Minnesota-led Open Textbook Network. They also encompass modular learning objects like those found in the MERLOT repository or even full courses like those offered through MIT’s OpenCourseWare. Community colleges and system-wide efforts like Affordable Learning Georgia have been particularly effective in this space, with programs like Tidewater’s “Z-Degree” that completely remove student textbook costs from the equation.

In the past several years, academic libraries have joined the fray, raising awareness, offering grants, and collaborating with faculty authors to create a diverse body of open educational resources. In the NCSU Libraries, we have followed the outstanding examples of institutions like Temple and UMass-Amherst by offering grants for faculty members to replace closed, commercial works with open, pedagogically-transformative OERs. These projects create massive efficiencies for libraries – spending a few thousand dollars to save students millions – and a growing body of empirical data indicates that student learning and retention are improved by open materials.

It’s no surprise that an open textbook would be more effective than one that a third of students can’t afford to buy. The greatest potential for OERs, however, comes from the way they empower instructors and engage with library expertise. The “teacher proof” books offered today frequently reduce instructors to hired hands, reciting homogenized narratives approved by for-profit publishers. In contrast, as one recent study concluded, an OER “puts ownership of curriculum directly back into the hands of teachers, both encouraging them to reflect on how the materials might be redesigned and improved and empowering them to make these improvements directly.” Combined with support from libraries for instructional design, copyright and licensing, and digital competencies, OERs have the potential to transform pedagogy at the deepest levels.

For today’s students, textbook prices mean more than just a few extra days of subsisting on ramen noodles. Too often, students have to choose between adding another thousand dollars to an already historical debt load or trying to get by without essential resources and closed, and commercial textbooks often leave faculty instructors with no choice at all. These, to borrow a phrase, aren’t the books we’re looking for.

Swatting three bugs at once

December 1, 2015 Kevin Smith, J.D. 1 Comment

In was warm here in North Carolina over the Thanksgiving holiday, and, like many of our neighbors, we left our doors open during the day to enjoy the pleasant breeze. The downside, however, was that while watching a football game on Sunday, I found myself swatting ineffectively at several small insects that found their way into the house in spite of our screens. I was reminded of that experience today (the weather is sadly much cooler) when a question about ILL and DVDs was forwarded to me. It seemed there were three different misapprehensions at work in the question, so I want to take this opportunity to swat these three “bugs” in one blog post (but I am absolutely am not comparing any of the folks who posed this question to insects; it is just that the misunderstandings of copyright law represented therein are “pesky”). In addition to debunking these three worries, I also want to acknowledge two caveats that arose as I discussed this situation with some colleagues.

So here is the problem. A librarian is searching for a DVD of a relatively obscure foreign-language film from 1938, and concludes that she cannot obtain a copy through ILL because the professor who is requesting the film plans to show it in her classroom. The request went to a librarian list as a plea for help in finding a copy of the film to purchase because, the librarian had concluded, ILL was not an option.

As I say, I think there are three potential misapprehensions behind this conclusion that sometimes cause librarians to restrict their options for obtaining material out of a misplaced fear of copyright problems.

The first possible reason someone might be hesitant in this situation is the notion that audio/visual works cannot be loaned through ILL. It is easy to see the source of this mistake, since various A/V materials are explicitly excluded from the two provisions in section 108 of the copyright law that authorize copying for ILL (subsections d and e). But we must remember that those two subsections of section 108 are only about making copies for ILL; they have no impact on the issue of loaning originals. So where an original of a DVD (that is, a lawfully-made copy that is made with the direct authorization of the rights holder) is requested, ILL is perfectly OK.

Now here is one of the caveats. Many institutions decide not to loan audio/visual works because of work flow and availability issues. They may fear damage that can occur during mailing. Those are perfectly fine reasons to decline to loan a DVD, and the holding library is entitle to make such a decision. Just because the law allows a practice does not mean any particular person or entity is required to do it. But it is important to recognize that a decision not to loan A/V works through ILL is just that, a decision. It is not based on a legal prohibition.

The next potential misconception here is that the doctrine of first sale, which is what really does underlie all lending of originals from a U.S. library, somehow does not apply to the particular DVD in question. But first sale, found in section 109 of the copyright act, does allow the lending of any type of original of a copyright-protected work (with a narrow exception for computer software that is not relevant to this discussion). Whether it is a copy of a book, a filmstrip, a music CD, or a DVD, first sale — which is an exception to the exclusive right over distribution — allows lending of the lawfully made original. It does not matter if that loan is accomplished through ILL, or library reserve, or simply between two friends. Nor does it matter, after the Supreme Court ruling in Kirtsaeng v. John Wiley, where the lawfully-made original came from; as long as it was original made with the consent of the rights holder (i.e. not a bootlegged copy) it can be loaned.

Here is a good place for my second caveat. These rules from the copyright act about ILL, lending of originals and, in a moment, classroom showings, are default rules. They are in place unless they have been changed by an agreement between individual parties. Where there is such an agreement, it is the agreement that provides the rules and restrictions for those parties, while the default rules of the copyright law apply to everyone else and in regard to any other topic or material. So if the specific DVD was obtained under a license that prohibited lending or ruled out classroom showings, that license should be obeyed. Likewise if the film is part of a licensed database. But most individual DVDs do not come with their own license. Instead, they are purchased under the default rules for distribution, performance, and lending that I am describing here.

Which brings me to the last potential misunderstanding, that a borrowed DVD cannot be used for a classroom showing. Classroom showing is allowed, as most academics know, as an exception to the exclusive right over public performance. Actually, the exception is somewhat broader than in-class performance; it allows a public performance or display of a copyrighted work in any “face-to-face teach activity” that takes place in “a classroom or similar place devoted to instruction.” So it is easy to imagine a film showing that would qualify, as part of an in-person teaching activity, even when not directly connected to a scheduled class or a regular course. More importantly, for our issue, the copy used for such a showing need only be “lawfully-made,” the same requirement as for the application of first sale, described above. There is nothing to prevent a classroom showing of a DVD that is borrowed from the library, from Redbox, from your neighbor, or through ILL.

This problem has given us a chance to examine three potential misunderstandings that can sometimes cause librarians to restrict their own activities unnecessarily, out of fear of copyright issues. It is easy to see how such misconceptions arise, since the law is complicated on these points. But, properly understood, the law often gives more leeway to libraries than we often realize. It is nice to have the chance to dispel these myths. Now if I could just get those bugs out of the house!

Google Books, Fair Use, and the Public Good

October 18, 2015 Kevin Smith, J.D. 10 Comments

Note — thanks to several readers who pointed out that I had carelessly misspelled Judge Leval’s name in my original posting. That error has now been corrected.

On Friday the Second Circuit Court of Appeals issued its ruling in the appeal of the Authors Guild lawsuit against Google over the Google book search project. The decision was a complete vindication of the District Court’s dismissal of the case, affirming fair use and rejecting all of the counterarguments offered by the Authors Guild.

As it happens, I was traveling when the decision came down, confirming a troubling tendency of the federal courts to issue important copyright opinions when I am out-of-pocket. (My wife says that it is not about me, but what sense does that make?) In any case, that slight delay allows me to benefit richly from the analyses posted by some very smart colleagues. Here are several great places to read about the decision:

From Brandon Butler of American University.

From Corynne McSherry of the Electronic Freedom Foundation

From Krista Cox of the Association of Research Libraries

From Carrie Russell at the American Library Association

I want to add, or really just pull out from these previous posts, three points that I think are especially important.

First, Judge Pierre Leval, who wrote the opinion, does a nice job of drawing a line from the idea of transformative uses to the public purpose of copyright law. This is hardly surprising, since it was Judge Leval who wrote the 1990 article that coined the term transformative use and had such an influence on the Supreme Court in its 1994 decision in Campbell v. Acuff-Rose Music. In this ruling, Judge Leval reminds us quite forcibly that the primary beneficiary intended by copyright law is the public, through “access to knowledge” (p.13) and “expand[ed] public learning” (p. 15). Economic benefits for authors are instrumental, not the ultimate goal of the copyright monopoly. Then Judge Leval explains how this analysis of transformation serves those goals, clarifying why fair use is an essential part of copyright’s fundamental purpose. He tells us that transformation is an answer to the question of how a borrowing from a copyrighted work can be justified. The court, on behalf of a rights holder, asks a user “why did you do this?” When the answer to that question is “because I wanted to make a new contribution to knowledge,” that is a transformative purpose. And, by definition, it is a purpose that benefits the public, which justifies whatever minor loss a rights holder might suffer from the use. The second step in Judge Leval’s analysis, asking if the new use is a market substitute for the original, ensures that that loss is not so great as to outweigh the benefit. Thus we have a coherent analysis that recognizes the public purpose of copyright and still respects it chosen method for accomplishing that purpose.

Another important thing we can learn from Judge Leval’s opinion is about the difference between a transformative use and a derivative work. The Author’s Guild (really some individual authors set up as plaintiffs because the AG has been found to lack standing to sue in this case) argues that allowing the Google Books’ search function usurps a right held by those authors to license indexing of their works. This is ridiculous on its face, of course — imagine the effect such a right would have on libraries — but the judge does a nice job of explaining why it is so wrong. The decisions rest heavily on the idea/expression dichotomy that is fundamental in copyright, and stresses that what is presented in the Google Books “snippet view” is more information about books (facts) rather than expressive content from those books. A derivative work, Judge Leval suggests, is one that represents protected aspects — the expressive content — of the original in an altered form (such as a translation or a movie script). A transformative use, on the other hand, uses information about the works, as in an index, or uses their content for a different expressive purpose, as in parody or scholarly comment. This is a difficult distinction to make, as all of us who work in copyright know all too well, and it remains to be seen if the approach outlined above will hold up or prove useful in the full range of situations. But it is a pointer toward a coherent way to understand a difficult part of the copyright balance.

As an aside, while reading the opinion in this case I was struck by how well the four fair use factors were handled, in a way that showed that the test used by Judge Leval respected all of the factors while essentially applying two basic questions — is the use transformative and does the new work create a market substitute for the original. In fact, I can suggest three specific passages that are especially exciting, I think, for the application of fair use and the issue of transformation — footnote 21 and accompanying text, which helpfully clarifies the relationship of the second fair use factor to the analysis of transformation; the full paragraph on page 33, that considers the use and misuse of the third factor; and the careful distinction of Google snippets from a case involving telephone ringtones that is found on pages 40-41. These are discussions that I think will have a significant impact on our ongoing consideration of fair use.

Finally, we should note that the Authors Guild has already indicated its intention to ask the Supreme Court to review this decision. This is a very bad idea, indicating that the AG simply does not know when to cut its losses and stop wasting the money provided by its members. The real point, however, is that the Supreme Court is not likely to take the case anyway. This is not a situation where a fundamental Constitutional issues is involved, as it was in the Campbell case (fair use as a protection for free expression) nor one where a fundamental point about our obligations in the international arena was at issue, as it was in the Kirtsaeng case about the application of first sale to works of foreign manufacture. In short, this is just a case about a greedy plaintiff who wants to be given an even bigger slice of the copyright pie, which the courts have determined repeatedly it does not deserve. This is not the sort of issue that attracts the very limited attention of the Supreme Court. In fact, reading the Court of Appeals’ ruling leaves one with a sense that many of the AG’s arguments were rather silly, and there is no reason to believe they would be less silly when presented to the Supreme Court in a petition for certiorari.

There are some who have argued that there is a split among the Circuit Courts of Appeal over transformative use, which is also a situation that can lead to Supreme Court review. But that split has always been predicated on the idea that other courts, especially the Ninth Circuit, have carried the idea of transformation too far and departed from the ambit of the original doctrine. The fact that it is Judge Leval, the author of that approach to fair use, who wrote this opinion, effectively undermines that claim. In short, this decision closes a circle that outlines a capacious and flexible approach to fair use. For getting us to this point, I suppose we should thank the Authors Guild for the unintentional support they have provided for a balanced copyright law in the digital age.

Discussions about the changing world of scholarly communications and copyright