This statement strikes me as deliberately misleading.  Publishers are not afforded any period of copyright protection by the copyright law, anymore than plumbers or ophthalmologist are.  This kind of misinformation is intended to create the illusion that publishers’ business models are somehow favored by federal law and thus inviolate, but that is not true.  Only one group is afforded copyright protection and the term for which that protection lasts — authors (under section 201(a) of the copyright law, Title 17 of the U.S. code).  If publishers hold any rights, they hold those rights only because they are transferred to them by the authors whose works they publish.  And if those authors choose, they can transfer less than the full copyright, and for less than the full term of protection.

Increasingly the transfer of copyright to publishers in exchange for using their distribution networks seems like a very bad bargain indeed.  As the ongoing boycott of Elsevier dramatically indicates, scholarly authors are becoming much more vocal and open as they demand a better solution for distributing their works.  It has always been problematic to give away the rights under copyright for free to publishers who then sold the works at a high profit, in which authors did not share.  Now there are many other options available to authors, many of which publishers are anxiously trying to undermine.  It is very important to some publishers that authors do not come to understand the power they have based on the fact that they hold all of the rights under copyright and can leverage those rights to do what is best for them.

Statements like the one from Wiley Blackwell reflect, I think, an increasing sense of panic in the publishing community.  Disinformation is seen as one way to fight the growing realization that they may become as irrelevant in the Internet age as blacksmith and buggy whip makers became in the age of the automobile.

We see this sense of panic manifest in several ways.  When Oxford University Press tries to claim that essays written for edited volumes are “work made for hire,” they are grasping at a legal straw that cannot hold up for them.  Likewise when publishers like Elsevier and the American Chemical Society write publication contracts that try to make authors’ retention of rights, or not, dependent on the kinds of internal policies that exist on the authors’ university campuses.  Such contracts are more cries of anger and fear than legal agreements.  In all of these cases, the publishers are looking for a legal lever they can push that will stave off irrelevance.  But the law does not work that way in general, and copyright is written to benefit authors and give them control over their works, not to prop up a particular business model.

Companies that survive are those that adapt to technological change, not those that desperately try to use legal coercion to prevent the change.  The movie industry learned this when their attempt to prevent home video recording failed; they were forced to adapt, and they found new ways to flourish.

Instead of resisting public access to taxpayer-funded research and writing byzantine contract language intend to punish authors who seek to exploit their legal rights, publishers need to look at how they can provide services to authors that will be necessary and desirable in the digital environment for scholarship.  Last month I had lunch with an official of a major publisher who talked about this approach to his business and was full of creative ideas.  Unfortunately, he is still a minority voice.  But misrepresenting the state of the copyright law is not the future for the publishing industry; services for authors is the future.  It is time for publishers to stop grasping at straws, for authors to stop giving away all of their rights under copyright, and for both groups to work together to figure out what the future of scholarship is going to look like.

There is something particularly galling for a scholar about having her article described as “work for hire.”  It implies a lack of academic freedom and even a “hired pen” approach to scholarship.  Most universities, which actually might have a strong case if they claimed faculty works as “works made for hire,” long since decided that the obvious ill-will and hassle that would attend such claims made them unpalatable.  OUP, on the other hand, does not seem to have learned the same lesson or, in fact, to even understand the law correctly.

I have to say first that I do not know how widespread this practice is, even within OUP.  This is the first time I have heard of this situation.  It may apply only to essays written for inclusion in collected, thematic volumes.  Or it may just be a test foray into a really bad idea.

By way of introduction, it is important to note that there are two ways for a work to be a work for hire.  First, it can be a work created by a regular employee within the scope of his or her employment.  That definition could likely fit faculty writings, but it has almost never been used to contest faculty ownership.  Alternatively, a work by an independent contractor — someone who is not a regular employee — can be a work for hire if two conditions are met.  First, the work must fall into one of nine categories enumerated in the law.  And second, there must be an express, written and signed agreement between the employer and the contractor “that the work shall be considered a work made for hire.”

OUP obviously hopes to take advantage of the second path to work for hire, since the first one would not apply.  A “contribution to a collective work” is one of the permissible categories for independently contracted  works made for hire.  But I think OUP has a big problem meeting the second requirement.

It is important to note also that the effect of work for hire is the same in either situation –  the employer is designated the “author” from the moment the work is created.  The person who actual puts pen to paper, as it were, has no rights at all in the work.  That fact probably explains some about why OUP would make this foolish move, and it is also part of the reason why their attempt to turn faculty writings into work for hire is likely to fail.

As to why OUP would do this, I think there are a couple of legal benefits for authors that OUP hopes to avoid having their contributors enjoy.  One would be the termination right, which allows an author or other creator to terminate a transfer of copyright after thirty-five years, regardless of the terms of the original contract.  This right, while it may seem obscure, has recently gotten attention as the legal window through which composers and performers of profitable music from the late 1970′s has just opened.  The one way to prevent an author from terminating a transfer of rights is to own the work as a work for hire, so that no transfer was ever required.  I suspect some legal beagle at OUP saw the controversies over music and thought this might be a good idea.  It is not.

The other thing that having these contributions classified as work for hire would prevent would be prior licenses.  As more faculties adopt open access policies, which usually take the form of a prior license to the institution for repository deposit, the possibility arises of an eventual contest between a prior license contained in such a policy and a later transfer of the copyright through a publication contract.  OUP may be test-driving an idea for avoiding that situation — if the faculty author is classified as a non-author by the work for hire doctrine, they would be unable to grant any prior licenses, since they never held any rights.

So why do I think this move is stupid, and doomed to fail?  Three reasons.

First, nothing is more surely designed to make faculty authors angry than to tell them they are not the authors of the scholarship they offer to publishers.  As a group, faculty authors have been pretty docile toward publishers for a long time, but foolish and tone-deaf moves by publishers have begun to stir faculty anger toward presses they once considered friends and colleagues.  If a claim like this, which denies the fundamental dignity of authorship to scholars, becomes widespread, that slow rebellion will speed up very quickly.

Second, in the work for hire battle, presses are likely to lose.  As I said above, universities could, if they choose, assert a convincing case that faculty are regular employees whose writings are created within the scope of their employment.  Were OUP really to assert its WFH claim to defeat a prior license, the institution could claim that, as the regular employer of the scholar, it was the author and so the agreement with OUP would be void as outside the ability of the faculty member to sign.

Finally, and most importantly, there are two cases in the U.S. courts that have held that, in an independent contractor situation, an agreement designating the work as a work made for hire must be signed, or at least formed (meaning that both parties understood), prior to the creation of the work.  There is an excellent discussion of those cases on the website of copyright attorney Ivan Hoffman.  By making the work for hire provision part of a submission agreement, OUP would be unable to show that such an agreement would even have been contemplated by the author, much less agreed to.  So this is a move which can only have negative consequences for OUP.  The cost in bad feeling is very high, and it cannot, I don’t think, succeed as a legal maneuver, even if OUP thinks it is worth that high cost.

At least some of this structure would need to change if the Copyright Office goes forward with a proposal to create a kind of small claims court system to adjudicate copyright infringement cases.  In 2006 the Copyright office first created a report raising this possibility, and it is currently seeking public comments about the feasibility of suggesting such a move to Congress.

The origin of the suggestion is the concern that it has become so expensive to pursue a claim in the federal courts.  Access to the courts for those of limited means (which of us isn’t?) is an ongoing issue, and the Copyright Office is to be commended for taking on this difficult problem.  But the report on which the public is invited to comment is a very strange document; a model of equivocation and “yes, but” statements.

The most striking thing about the report, which seems to have been a sidebar to the 2006 study of Orphan Works, is how completely it represents the point of view of rights holders and gives scant attention to the concerns of potential defendants and to the public interest.  Photographers especially, it seems, complained that the federal courts were too costly, and the report seems to adopt their arguments wholesale, and then pauses occasionally to note qualifications and objections to those arguments.

The most obvious example of this qualified one-sidedness is found in two paragraphs on the second page.  In the first, the Copyright Office says that it “expresses no definitive view on the extent to which the current system hinders the ability of authors and copyright holders to pursue small infringement claims.”  But it immediately goes to assert that it is “clear” that there are “serious questions about the effectiveness of the current system.”  I have no problem with that at all; it is probably correct.  Where I do have a problem is in the next paragraph, about defendants:

Some have also asserted that the existing system for adjudication of copyright infringement claims can in some cases be too burdensome for defendants who are accused of infringement. While it is not difficult to imagine that a wealthy plaintiff in a copyright infringement suit could make the litigation very costly for a defendant of modest means, the Office is not aware whether this has in fact been a significant problem.

Really?  The Office is not aware of a problem for defendants with the high cost of defending an accusation of infringement?  I wonder where they have been.  Surely the RIAA tactic of sending out “settlement letters” asking for a few thousand dollars from accused file-sharers is premised on the idea that many people will be too frightened or too poor to defend themselves in the federal courts.  And the company Righthaven, which seems to be in its death throes, built a business model on suing small bloggers and the like in the obvious expectation that most of them would not have the means to defend themselves.

In fairness, the Copyright Office report does note what seems to me to be an important argument against a small claims system.  The Copyright Act already has built-in the answer for plaintiffs who are intimidated by costs.  The statutory damages, which are excessively high (up to $150,000 per act of infringement), clearly are intended to help plaintiffs overcome the expense of litigation, especially since they obviate the necessity of proving actual damages.  Also, the Copyright Act explicitly allows the prevailing party to ask the court to assess attorney’s fees and costs to the other side.  While the Office notes that these facts might make a new system unnecessary even for plaintiffs with small claims, it again fails to address the question from the other side, that of the defendant.

If there were a small claims court system (state courts, or an entirely new federal tribunal?), would it be empowered to award the same level of statutory damages?  If so, the system would merely provide potential plaintiffs with a cheaper weapon for intimidating defendants into settling early to avoid a grotesquely large potential loss.  Only if statutory damages were reduced or eliminated at the small claims level, and if potential awards of attorney’s fees were capped, could the system be equitable for both potential plaintiffs and defendants.

Perhaps the most troublesome aspect of implementing a small claims system for copyright infringement suits is the issue of how fair use would be handled.  The artists’ blog linked above raises this question, since small artists are often on both sides of copyright complaints.  Fair use, they note, is very fact specific and depends on both a minute analysis of the particular circumstances and a thorough knowledge of judicial precedent, which is where courts learn how to understand a situation through the prism of the fair use factors.  If copyright infringement claims were heard by a small claims system, it is doubtful that the judges would have the needed expertise, or the resources to obtain it.  My biggest fear out of such a system is that it would be even harder than it now is to convince a tribunal that fair use is a central aspect of the copyright scheme that needs serious consideration and not merely a defense to be examined and dismissed in a cursory fashion (as already happens too often).

I am not convinced that a small claims system for copyright is necessary, but I am not firmly against such a system either.  Most important, it seems to me, is being certain that the judicial structures we put in place do not intensify the chilling effects on socially beneficial uses that are already one of copyright’s biggest problems.

This is part of the real irony of SOPA, the bill currently being considered by the House of Representatives that would fundamentally alter how the Internet works in the U.S. in order to protect the traditional entertainment industries.  Such a bill, which would kill innovation in the name of protectionism, may be unconstitutional. That it is a bad idea is especially clear when we look at how other countries are considering adjusting their copyright laws precisely to better support innovation and economic growth.

In Brazil, a third draft of proposed copyright legislation has recently been released.  As Pedro Paranagua, a Brazilian copyright expert, tells us, there is both good and bad in the bill, but as I read his list of incorporated provisions, I am jealous of the attention being given to the real purpose of copyright, which is economic development through innovation.  Exhaustion of rights, what we call first sale in the U.S., would be defined in a way to prevent the recent debacle in which Omega abused copyright, in my opinion, to suppress legitimate price competition for its watches.  Collecting societies would be overseen by government watchdogs, and contract principles about serving the public interest and avoiding undue burdens would be explicitly incorporated into the copyright law.  Compulsory licenses would be available for uses of orphan works, and creators would have the explicit ability to dedicate their work to the public domain.  Finally, there is a proposed set of exceptions that covers at a lot of the socially beneficial uses that are still unreasonably controversial in the U.S.

Even one of the things that Pedro is nervous about, ISP liability under a notice and take down scheme, seems like a good idea that the U.S. must fight to maintain.  The notice and take-down system under the DMCA has allowed a lot of innovative businesses to thrive (YouTube being the most prominent), and that system is under severe threat if the provisions of SOPA get enacted.  So while Paranagua worries about a DMCA-style regime in Brazil, I am desperately hoping that we can keep that regime in place in the U.S.

Brazil has also been at the forefront of the World Intellectual Property Organizations discussion of limitations and exceptions.  The resulting WIPO agenda, looking primarily at exceptions for libraries and for access for persons with disabilities, reflects many of the ideas mention above, including cross-border uses (the subject of first sale and the Costco dispute), a solution to the problem of orphan works, and the relationship between copyright law and private contracts.

This last issue brings me to the most detailed document I have been looking at recently, the “Consultation on Copyright” released by the British government.  The UK has undertaken a thorough review of their copyright law in the past couple of years, explicitly to address the places where copyright interferes with innovation rather than fostering it.  The consultation is seeking hard data about the impact of the changes that were proposed by the commission it set up, called the Hargreaves Commission.  Many of the provisions are similar to the ones I have already mentioned.  But here is the language the really caught my eye:

The Government agrees that, where a copyright exception has been established in UK law in order to serve certain public purposes, restrictions should not be re-imposed by other means, such as contractual terms, in such ways as to undermine the benefits of the exception.
Although contract terms that purport to limit existing exceptions are widespread, it is far from clear whether such terms are enforceable under current contract law. Making it clear that every exception can be used to its fullest extent without being restricted by contract will introduce legal and practical certainty for those who rely on them.

I have argued in the past that contracts should not be allowed to preempt copyright’s limitations and exceptions, at least in cases where the contract at issue is not subject to “arms length” negotiation.  Here the Conservative government seems to be embracing that position (not because I suggested it, of course, but because the Hargreaves commission did) and even carrying it further.  Recognizing that copyright exists to serve a public purpose, and that that purpose should not be undermined by one-sided private agreement, such a “click-through” contracts on websites, would be an important step toward providing the consistency and certainty that all law-making aims for.

The point of this very quick and cursory survey of international proposals for copyright reform is simple.  Throughout the world, even in those countries that, unlike the U.S., embrace a natural-rights account of copyright, reform is focused on supporting innovation and not allowing a system that worked in the past become an obstacle for the future.  Yet in the U.S. all of our copyright proposals, and even statements from our Registrar of Copyrights, seem focused on protecting the old ways and staving off as long as possible the innovation that provides our best economic hope.  If we cannot learn from our competitors and our trading partners, we will certainly be left behind.

Now, however, answers to the suit have been filed, both by the named defendants and by a potential defendant.

The defendants’ answer, filed on Dec. 2,  is a very lawyerly document, and for that reason it might disappoint some readers.  There are no lofty assertions about public benefits and the purpose of fair use ( I will make those assertions on their behalf).  Instead, the defendants’ answer does what it is required by the rules of federal civil procedure to do; it goes point-by-point through the complaint and, largely, admits the factual assertions while denying the conclusions of law.  It also states quite baldly the defenses on which these parties intend to rely.  We have a system called “notice pleading” in the U.S., and the defendants are only required to give notice to the court and the plaintiffs of the arguments they intend to make.

Nevertheless, we can see the broad outline of a response here.  The plaintiff’s complaint focused nearly exclusively on section 108 of the Copyright Act, the so-called “library exceptions” which deal with preservation and copying made for patrons (the foundation of inter-library loan).  The plaintiffs want the court to conclude, it seems, that this one section of the law entirely encompasses all that a library is entitled to do with copyrighted material.  As they go through the points alleged in the complaint, the defendants repeatedly assert that “Section 108 of the Copyright Act is one of many limitations on copyright holders’ rights” and “that plaintiffs description of section 108 is incomplete and therefore mischaracterizes the statute.”  What is left out, of course, is that section 108 states explicitly that fair use –section 107 — is still available and that nothing in 108 “affects the right of fair use” (section 108 (f)(4).

Fair use, which exists for the purpose of allowing exactly the activities that Hathi is designed for — research, teaching and scholarship — will naturally be the heart of this case, however badly the plaintiffs wish this were not so.  But the defendants raise several other defenses as well, including sovereign immunity (since all but one of the defendants are public institution),  the plaintiffs’ lack of standing (since they cannot show that they or their members own most of the works at issue), the statute of limitations, and the fact that many of the works that the AG wants to impound are actually in the public domain.  And, of course, these defendants assert fair use.  In fact, they assert a whole slew of the exceptions that Congress built in to the copyright law.  One of the places we will learn most from this case will be where the defense weaves together sections 107, 108, 109, 110 and 121 into, I imagine, a thicket of justification that emphasizes how comprehensively Congress intended to permit the socially beneficial uses that Hathi will facilitate.

The reference to section 121, which allows reproduction of copyrighted materials “for blind or other people with disabilities,” took on added importance on Dec. 9, when the National Federation of the Blind filed a motion asking the court to let it intervene as a defendant in the case.  Such intervention is allowed in federal procedure “as a matter of right” when a party can show that it has a substantial and legally protectable interest in the matter at hand, that they could be harmed by a decision, and that their interests will not be adequately represented by the parties already involved.

Unlike the formal defendant’s answer, this document does make a full-blown argument, and it is a compelling one.  The National Federation For the Blind tells several stories of university students and teachers whose ability to do their work is hampered by the laborious, and sometimes impossible, process of obtaining copies of works that can be read by a computer text-to-voice reader.   They provide a vivid picture of how the Hathi Trust project “would allow blind students and faculty to participate fully in university life,” and that this has been a major purpose of the Trust since its inception.

The spare language of the one document, and the fully developed rhetoric of the other, combine to produce a convincing picture of what fair use and the other exceptions to the copyright monopoly were intended not merely to allow but to facilitate.  Research, teaching, scholarship and access for persons with visual impairments.  If copyright is allowed to impede the advancement of these purposes through mass digitization, and in the name of tying these files up until a private organization figures out a way to make money from them — to reap where they did not sow, as it were — then copyright law will have proved a failure indeed.  But I do not believe that a court will allow that to happen.

This conversation came to mind as I read two documents released by the Copyright Office in the past couple of weeks.  The constituency of the Copyright Office, presumably, is the public as a whole, and their role ought to be more neutral than mine, seeking the balance between protection and use that has always been at the core of copyright law.  In these two documents, however, the tendency to think that, as the Copyright Office, advocacy for anything that increases copyright’s strength and reach is the proper role, shows through.  The needs and voices of owners in the legacy content industries seem to get extra weight, while the needs of users, who are more diffuse and do not have as many dedicated lobbyists, get less attention.

In its brief report on “Priorities and Special Projects of the United States Copyright Office” the Office details the studies, legislation and administrative projects that it intends to work on for the next two years.  In its legislative priorities, the first three listed are “Rogue Websites,” “Illegal Streaming,” and “Public Performance Right in Sound Recordings.”  Each of these priorities is an endorsement of particular legislative action by Congress — the first clearly endorses the bill alternately called PROTECTS IP or SOPA or ePARISITES.  Indeed, each of these priorities seems to be dictated by the current lobbying activities of the entertainment industry, and each is a very much non-neutral endorsement of greater scope for and stronger enforcement of copyright protections.  There is little sign that the voices arguing that copyright already reaches too far and is over-enforced are being heard.

Other priorities do seem more neutral.  The Copyright Office wants to “continue to provide analysis and support to Congress” on orphan works, and it repeats its intention of making legislative recommendations based on the report of the Section 108 Study Group, which addressed the specific exceptions to copyright for libraries.

This last priority created a rather humorous situation for me last week when I was contacted by a member of the library press seeking information about this “new” report on section 108.  In fact, the report was issued in 2008.  Nothing has come of it in three and a half years, and, even if all of its recommendations were suddenly adopted, it would do little to improve the situation for libraries because the Study Group was unable to find agreement on the most pressing issues.  The Copyright Office does not mention the more comprehensive proposal on library exceptions made by IFLA to the World Intellectual Property Organization.

My real interest focused on the Copyright Office’s desire to do something about orphan works.  In addition to the legislative priority listed, the report promised a study document on mass digitization, which would naturally have to address orphan works, and that document was issued a few days ago.  Here we get a glimpse of how the Copyright Office plans to address the difficulties posed by orphan works.

The report makes the CO’s preferred approach very clear — “As a practical matter, the issue of orphan works cannot reasonably be divorced from the issue of licensing.”  This is an interesting statement, since the last proposal to resolve the issue that the CO nearly got Congress to adopt a few years ago did not rely on licensing, but addressed the issue by reducing the potential damages for using an orphan work after a reasonably diligent attempt to find a rights holder.  There clearly are other approaches, but the appetite  of industry lobbyists has, since the Google Books case, been whetted by the possibility of profiting from other people’s (orphaned) works, and the CO has been swept up in the licensing fever.

The report gives a detailed and very helpful discussion of the various types of licenses that could be used, but it never addresses the question that seems most pressing if orphan works are to be licensed — who is going to get paid?  If works are genuinely orphaned, there is no rights holder to pay, so orphan works licensing proposals must decide who is going to sell the licenses and where the money is to go.  Other countries have adopted licensing schemes, and often the licensing is done by the government; in the U.S., however, I think we have to assume that private collective rights organizations (who are given prominent mention in the report) would collect the money and, perhaps after some period of time, keep it.

This report is about more than orphan works, of course; it addresses the broad issue of legal concerns in mass digitization.  I was interested to see how fair use was treated, both in that broader context and in relation to orphan works.  I was disappointed in both regards.

In the general discussion of mass digitization, fair use is pretty much summarily dismissed by the Copyright Office.  It begins with the assertion that “the large scale scanning and dissemination of entire books is difficult to square with fair use,” which seems to beg the question.  The rest of the section reads like a legal brief against Google’s position on fair use in the book scanning case.  Nowhere does the report consider what difference it might make for a fair use claim if the project were wholly non-commercial, nor do they consider that fair use might be part of an overall project strategy that included other approaches, such as selected permission-seeking.  The report treats fair use as an all-or-nothing approach and dismisses it as unworkable without the nuanced consideration it demands.

More troubling is the fact that, having dismissed fair use in the broader context of mass digitization, the Copyright Office never discusses it in the more narrow field of orphan works.  With orphans, of course, fair use seems like a stronger argument, since there is no market that can be harmed by the use, especially if it is itself non-commercial.  But it seems clear that the CO is committed to creating such a market by pushing a licensing scheme, and is not willing to discuss any option that might undermine its predetermined conclusion.