My last post about copyright assignment and different versions of a scholarly article set off a small controversy, some of which can be found in the comments to that ppost and some of which took place on other social media venues.  Yesterday Richard Poynder posted to the Lib-License list about this discussion, and I felt compelled to respond, since it seems clear this is not an isolated misunderstanding that will fade away.

Here is part of Richard’s post, which summarizes the discussion:

Last week, the Scholarly Communications Officer at Duke University in the US, Kevin Smith, published a blog post challenging a widely held assumption amongst OA advocates that when scholars transfer copyright in their papers they transfer only the final version of the article.

This is not true, Smith argued.

If correct, this would seem to have important implications for Green OA, not least because it would mean that publishers have greater control over self-archiving than OA advocates assume.

However Charles Oppenheim, a UK-based copyright specialist, believes that OA advocates are correct in thinking that when an author signs a copyright assignment only the rights in the final version of the paper are transferred, and so authors retain the rights to all earlier versions of their work, certainly under UK and EU law. As such, they are free to post earlier versions of their papers on the Web.

And here is the response that I just sent to the LibLicense list, in which I focus on copyright as protection over expressive content, rather than arbitrary distinctions between different versions of that content:

I had really hoped I could ignore this rather muddled controversy, mostly due to a lack of time to address it.  But a tweet from Nancy Sims, of the University of Minnesota, made me realize that my original post used slightly careless language that may contribute to the confusion.  So I feel I should set that straight, and respond to the whole business.

I wrote that different versions of an article were derivatives of one another.  That is probably a defensible position, but Nancy made the point much clearer — the different versions are still the same work, so subject to a single copyright.

Throughout this discussion, the proponents of the position that copyright is transferred only in a final version really do not make any legal arguments as such, just an assertion of what they wish were the situation (I wish it were too).  But here is a legal point — the U.S. copyright law makes the difficulty with this position pretty clearly in section 202 when it states the obvious principle that copyright is distinct from any particular material object that embodies the copyrighted work.   So it is simply not true to say that version A has a copyright and version B has a different copyright.  The copyright is in the expressive content, not in different versions; if all embody substantially the same expression, they are all the one work, for copyright purposes, because the copyright protects that expressive content.  Hence Nancy’s perfectly correct remark that the different versions are the same work, from a copyright perspective.

Part of the point I wanted to make in my original post is that this notion of versions is, at least in part, an artificial construction that publishers use to assert control while also giving the appearance of generosity in their licensing back to authors of very limited rights to use earlier versions.  The versions are artificially based on steps in the publication permission process (before submission, peer-review, submission, publication), not on anything intrinsic to the work itself that would justify a change in copyright status.  If we look at how articles are really composed — usually by composing one file and then editing it repeatedly, it is easy to see how artificial, in the sense of unrelated to content, the distinctions are.  How much time must elapse before a revision is a different version?  If I do some revisions, then go have a cup of tea before returning to make other revisions, have I created two different “versions” entitled to separate copyright protection?  The question is absurd, of course, and shows how unworkable the idea of different copyrights in different versions of the same work would be.

It has been said that no publisher makes the claim I am here suggesting.  But if we look at actual copyright transfer agreements it is easy to see that they do.  The default policies for Wiley, for example tell authors that they can archive a pre-print and archive a post-print, subject to certain conditions, including rules about the types of repositories that the archiving can take place in and a limitation to non-commercial reuse.  If an author transfers rights only in the final version, how can Wiley make restrictions on the use of these earlier versions?  The better — indeed the only logical — interpretation is that the copyright that is transferred covers the work as a whole, which is the nature of copyright, and that Wiley then licenses back to authors certain rights to reuse different versions.  Those version rights are based on what Wiley wants to allow and to hold on to, not on any legal distinction between the versions.  Elsevier’s policies are similar — they allow the preprint to be used on any website, the post-print to be self-archived on a scholarly website ONLY if the institution does not have a mandate and with acknowledgement of the publisher, and do not allow any archiving of the final version.  Again, all of this is grounded on a claim that a copyright that is inclusive of the different versions, because they are the same work, has been transferred to Elsevier.

Let’s imagine what would happen if a dispute ever arose over a use of an earlier version of an article after the copyright had been transferred.  A court would be asked to determine if the use of the earlier version was an infringement of the copyright held by the assignee.  Courts have a standard for making this determination; it is “substantial similarity.”  So if the re-used version of the work was substantially similar to the work in which the copyright was assigned — that language is itself bound up in the misunderstanding I am trying to refute — a court would probably find infringement.  This has been that case in situations where the works were much more different that two versions of a scholarly article.  George Harrison, for example, was found to have infringed the copyright in the song “He’s So Fine” when he wrote “My Sweet Lord,” even though the court acknowledged that it was probably a case of unconscious borrowing (see Bright Tunes Music v. Harrisongs Music, 420 F. Supp. 177, S.D.N.Y. 1976).  And the author of a sequel novel to “Catcher in the Rye” was held to have infringed copyright in Salinger’s novel even though they told very different stories, due to similarities in characters and incidents (Salinger v. Colting, 607 F. 3d 68, 2d Cir. 2010).  If these very different “versions” of the same work were held to be copyright infringement, how is it possible that two versions of the same scholarly article could have separate and distinct copyrights?

In many ways I wish it were true that each version had a distinct copyright, so that transfer of the rights in one version did not impact reuse of the earlier version.  That situation would make academic reuse much easier, and it would conform to a basic sense that most academics have that they still “own” something, even after they assign the copyright.  But that position is contrary to the very foundations of copyright law (and not just U.S. law), which vests rights in the content of expression, not in versions that represent artificial points in the process of composition or publication.  And much as this mistaken idea may be attractive, it has dangerous consequences; it gives authors a false sense that the consequences of signing a copyright transfer agreement are less draconian than they really are.  Instead of plying our faculty with these comforting illusions, we need to help them understand that copyright is a valuable asset that should not be given away without very careful thought, precisely because, once it is given away, all reuse of the expression in the article, regardless of version, is entirely governed by whatever rights, if any, are licensed back to the author in the transfer agreement.

Starting today, the Electronic Frontier Foundation is sponsoring Copyright Week, which will last for six days.  Each day is dedicated to one of six principles that, EFF asserts, should guide copyright policy and practice.  They are, in my opinion, excellent principles, that really connect back to the original purpose of copyright as an engine for cultural growth and development.

Copyright Week begins today, and the first principle is “Transparency.”  Transparency is always an important element of public policy, and recently it has been especially threatened by bilateral and multilaterial trade negotiations, which take copyright discussions out of the (relatively) public arena of lawmaking and move them to the often quite secret space where a few bureaucrats work out agreements with little regard for the overall public interest and little awareness of consequences of their agreements outside of their limited vision.  That kind of negotiation and back room dealing brought us SOPA two years ago, and it is no coincidence that Copyright Week, which will end on the second anniversary of the “great SOPA blackout,” kicks off with the newest SOPA-like threat, the “Trans-Pacific Partnership Agreement” or TPP.

Partners in the Copyright Week program include the American Library Association and the Association of Research Libraries.  To get the ARL’s take on TPP, please read this blog post.

The overall schedule for Copyright Week can be found here, where each day a set of links about the theme for that day will offer readers perspective on the principle for that day.  You can also follow the ARL’s Policy Notes blog for the principles and links. It promises to be an interesting and informative six days; a chance for all of us to learn something and to gain a more comprehensive view of the copyright debates that are going on around us.

To finish my thoughts about the Duke University Libraries Seminar on the Future of Researc h Libraries and the presentation made by Professor Ian Baucom, I want to turn to the final two issues we discussed – globalization and publishing.  And I want to be very clear that although I refer to Ian’s remarks a lot, these posts are based on my memories of, and conclusions from, what he said; I am solely responsible for anything that seems over-simplified or poorly-reasoned; Ian is much too smart to be blamed for such failings.

Support for the increasingly global mission of universities, including Duke, is a difficult problem for academic libraries.  We are accustomed to thinking in terms of collections tied to a physical location, of course.  In the digital age, we also are beginning to think of a global digital library; lots of the efforts toward public access and open access are directed toward the goal of a global library of digital resources that is accessible to all.  But Ian reminded us that it is wrong to think of this as a clean disjunction.  In between these two options, the physical domestic collection and the entirely digital global one, are the satellite campuses that many schools, including NYU (in Singapore) and Duke (in Kunshan), are beginning to operate.  As Ian told us, the global university really has three foci — the “original” domestic campus, overseas campuses in diverse parts of the world, and the online campus that is truly global.  Universities are stretching out in all of these directions, and libraries will continue to be challenged to provide support for the full spectrum of global education.

One thing I especially liked in Ian’s discussion of global education was his approach to MOOCs.  Throughout his talk, Ian emphasized the difference between offering a bunch of courses and teaching a curriculum; in a sense this is a version of the distinction between information and knowledge.  MOOCs, at this point, are largely collections of classes that individuals can take for personal enrichment and, sometimes, for specific, “one-off” types of credit.  But we have yet to see a workable curriculum based on such open online courses, although that may come eventually.  Until then, the importance of all three parts of the vision Ian outlined for global education remain important; as we expand globally, we cannot leapfrog over those physical centers for education, because they offer what purely online education as yet does not — a way to pursue an organized and intellectually coherent course of study.

The issue of publication arose in the conversation partly from Ian’s emphasis on interdisciplinary study and partly from the discussion of global learning.  I specifically asked Ian about the impact of increasingly interdisciplinary research on the publication of scholarship.  He responded by talking about his own work in environmental humanities.  When he began that collaborative work with climate scientists, he said, there was no obvious outlet for scholarship in this area.  Because it defied the traditional niches of scholarship and because it was developing so quickly, traditional publication outlets were unavailable or inappropriate.  Over time, outlets for this area of scholarship have developed, but, Ian told us, they are mostly directly online and openly accessible.  In short, the needs of rapidly developing interdisciplinary scholarship have caused it to leap over traditional publishing and move directly online.  The journals and online centers for this area of scholarship that have developed are very high quality, Ian said, but he reminded us that libraries have an important role to play in this evolution of publication venues that do not participate in the traditional imprimatur process of impact factor and journal branding.

In regard to the global focus of education, Ian made an interesting point about the “flow” of scholarship.  As we begin the process of of expanding our reach globally, we often think about how to make English-language scholarship more broadly accessible abroad.  But scholarly work is already happening in all of the nations to which we wish to expand; our potential partners are also producing work, and familiarity with that scholarship is likely to be as necessary for successful partnership as their familiarity with American work.  So Ian suggested that there was a huge opportunity for libraries to work on “reversing the flow” and beginning to organize to translate major works of contemporary scholarship from other nations into English.  Presumably this would require very targeted efforts and extensive collaboration.  Indeed, perhaps the best lesson from this suggestion, and from Ian’s entire talk, was that libraries need to have large, even outrageous, ambitions, but also to accept that none of us can realize those ambitions alone — we will need lots of collaborators — and that we must accept small-scale projects as the gateway to large-scale change. As the old union organizing song tells us, many stones can form an arch, but singly none.

Finally, I want to share a reflection I had about how we measure the value of libraries in this age of change and the de-emphasis on physical collections.  For years the ARL focused its metrics of quality on the size of those physical collections of books and journals.  Some years ago, it moved to looking at expenditures, as a way to account for all the resources that libraries were buying that were not physical and thus not amenable to enumeration.  But today, when new and high-quality resources are springing up online that do not offer either a way to be physically counted or a cost that can be tabulated, and especially as libraries themselves begin to “publish” such resources, even expenditures seems an inappropriate metric.  What we really need is a way to count readers, to tabulate the differences we have made in the scholarly lives of faculty, staff and the broader public, whether that impact was accomplished through books that were checked out, journal packages that were purchased, open access resources that we have hosted or digital collections that we scan and curate.  If librarians want to compete to feel good about our continuing role in the fast-changing world of scholarly communications, we should look at the lives we touch, rather than becoming too attached to the formats and costs of the resources through which we touch them.

The American Association of University Professors recently issued a draft report, seeking comment, on the topic “Defending the Freedom to Innovate: Faculty Intellectual Property (IP) Rights After Stanford v. Roche.”  The report is very interesting; a strongly-worded warning that universities might be trying to assert more ownership over the IP rights in works created by faculty as the potential monetary value of that IP continues to rise.  I want to make one comment about the report itself, and then use one of its significant themes to make some further observations.

By way of background, Stanford v. Roche was a patent dispute that was decided by the Supreme Court in 2011.  At issue was a diagnostic test for the HIV virus that was developed by a Stanford faculty member who worked both in a Federal-funded lab at Stanford and for a private biotech company.  Part of the problem was conflicting language in the two employment agreements — when he joined the Stanford faculty, Professor Holodniy agreed that he would assign the rights and title in his inventions to Stanford, but when he was employed by Cetus, his agreement “hereby” assigned those rights in anything he invented to Cetus.  The Supreme Court held that the immediate assignment in the Cetus contract overrode a promised assignment in the Stanford contract.  Along the way they rejected Stanford’s proposed interpretation of the Bayh-Dole act claiming that that Federal law required that Universities receiving Federal funds own the patents in inventions that came out of those labs.  Instead, the Court affirmed that eligibility for patent rights (they are not automatic) vests initially in the inventor and are then subject to assignments made by employment contracts.  Universities are allowed to own and exploit patents to inventions that arise from work done by their faculty under federal grants, according to Bayh-Dole, but they do not automatically own those rights under the legislation.  Since the Roche assignment was immediately effective, it trumped a promise to assign made in the Stanford contract.

The AAUP report focuses on the declaration that faculty own those inchoate patent rights, at least in the absence of a direct and immediate assignment to the university.  But it is important to recognize that Stanford v. Roche involved compete assignments of those rights, both of which were made as conditions of employment.

That is why I am troubled by the easy analogy that the AAUP report makes between patent rights and copyright.  It suggests in several places that ownership of copyrighted materials could be treated as employer-owned, just as Stanford was allegedly suggesting patent rights should be.  But the report doesn’t really offer much substance behind this threat, citing only a conflict of interest policy at the University of Pennsylvania, which has no bearing on copyright ownership, and an academic article written by some university attorneys.  Yet copyrights are really quite different.  Unlike patents, they arise automatically as soon as original expression is fixed in a tangible medium of expression.  Patent rights, on the other hand, require an application process that is long, costly and requires the specialized services of a patent lawyer.  It is odd to me that in the section of the report defining the different types of IP rights, this difference is not mentioned.

The reason this seems significant to me is because it provides a possible rationale for a university to make a claim over patents developed on campus, and that reason does not apply equally to copyrights.  When an invention developed on campus is patented, often the university invests significantly in obtaining those rights; unlike copyrights they do not simply arise directly as fruits of the research.  While copyrights really are just spontaneous developments from the direct tasks faculty are hired to do, patent rights are not, even if the inventions themselves are.  Patent rights cost money — often something over $20,000  — well beyond the investments made in the research itself.  So even if we accept the AAUP’s argument that the investment a university makes in supporting the research that leads to an invention should not automatically give that institution a right to share in any profits, the investment in actually obtaining the rights over that invention also needs to be considered.  And the fact that no similar costs are associated with copyrights provides a sound reason, in my opinion, for the normal differentiation, which is that institutions make no or limited claims over copyrights (as “work made for hire”) but assert a greater interest in patent rights, if they can be secured.

What really struck me about the report, however, and it is an emphasis I fully agree with, is its argument that both the universities and faculty research share an obligation to put scholarship in the service of society:

Patents are regularly used in industry to exclude others from using inventions.  But faculty members should often be focused instead on creating conditions that give the public access to inventions… Commercial development of university knowledge to stimulate economic growth is unquestionably good.  But some administrative practices associated with patenting and licensing operations may negatively affect economic growth as well as scholarship.

This is exactly right.  In both the patent and the copyright arenas, concern for social welfare and the maximum impact of scholarship on economic and cultural development should have pride of place in IP practices.  But in the copyright arena, we need to acknowledge that it is not usually institutional policies that undermine public access and economic development, it is the ingrained practice of giving copyrights away for free to commercial interest so that they can be exploited for private gain.  It is unfortunate that the AAUP does not take the next step in its logic and remind its members that making provision for open access is a vital part of the commitment that the Association encourages.

“[F]aculty members should often be focused instead on creating conditions that give the public access.”  To do this, faculty authors must move beyond the practice, tied as it is to centuries-old technology, of surrendering copyright without remuneration AND without any guarantee that the fruits of their research will actually reach those who could benefit most from them.

During this Open Access Week, I hope the AAUP will look at this obvious extension of the appeal it is making in its draft report.  University exploitation of patents may well be a threat to academic freedom and to public benefit, but so are the commercial companies that exploit the copyrighted products of academic labor for huge profits and lock up access to scholarship in order to defend those profits.  Universities are harmed by this system, scholars are harmed by it, and society is harmed by it.  The threats against which faculty IP rights need to be defended come from several directions, and the AAUP needs to recognize that.

Many people probably saw this story about a scientist who inquired about payment after she was asked to blog on a prominent scientific web site and was called a “whore” for declining to provide her writings for free.  There are troubling gender and racial dynamics behind this outlandish reply, of course, but it also strikes me as very telling about the attitude toward scholarship and the value of copyrighted work.  The expectation that scholars will give away their work for free is so ingrained that any suggested departure is treated quite rudely, to say the least.  The result is that faculty scholarship makes money for lots of people, but not for the authors (at least, not directly) and certainly not for their universities, who have to pay millions to buy back the work they supported in the first place.

If we stop and think about it, this is an offensive situation.  The remark of that blog editor has the salutary effect of illustrating just how offensive the routine expectations of publishers really are.  Scholars need to defend their IP rights, as the AAUP report calls on them to do, and that defense should start with a refusal to transfer their copyrights without much stronger assurances that their work will be available to provide the social, economic and scholarly impact for which it was written for in the first place.  Perhaps the AAUP could begin to organize that kind of response, in order to make good their commitment to public access and economic growth.

I do not usually link and re-post my own work on this site, but this situation is a little different.  I have written two columns for Library Journal’s Peer-to-Peer column about the WIPO’s successful negotiations to arrive at a treaty dealing with copyright limitations for the blind and visually impaired.  It seems odd  not to address those negotiations and the treaty that came out of them at all in this space, but there is also no reason to reiterate what is available on the Library Journal site.

So in the interests of appropriate inclusion and efficiency, here is the link to the column I wrote before a treaty had been agreed on, and here is the column released today that addresses the result of the negotiation process.  There are lots of other sources of information about the treaty, but I hope readers find these comments useful.

The decision in the Kirtsaeng v. Wiley case was released this morning, and the outcome is wonderful for libraries.  I have not had the chance to read the whole opinion yet, but the upshot is that the Second Circuit rule that said that First Sale applied only to materials manufactured in the United States was reversed.  The Supreme Court majority appears to have ruled that First Sale applies to all non-pirated goods — that is, all works that are originally manufacture under authority of the rights holder in a way that would entitle them to protection under U.S. law.  In other words, if the work can be protected by copyright in the U.S., it is also subject to the rule in the U.S. that allows library lending and second-hand sales.

The opinion is here.

It appears that the Court took very seriously that “parade of horribles” that were suggested if they upheld the Second Circuit — libraries would be unable to lend some materials without a license from publishers., student could be prevented from buying or selling second-hand textbooks, etc.  According to the Court, these were too distressing, and too likely to occur.  Furthermore, the Court held that a “non-geographical” reading of the language of First Sale in section 109 of the Copyright Act is a more sensible construal of the words that are actually used.

It seems that libraries have really ducked a bullet here.  Business as usual is the way forward, for which we must be grateful to the Supreme Court.  We probably should also be prepared to see this issue come before Congress, so we will likely again be called upon to defend the value of what we do and the need to have the law, at least, not step in the way of that very important work.

I seldom write a post that is just a link to someone else’s work, but I am afraid that non-specialists, especially in the U.S., may not regularly read the blog of Canadian law professor Ariel Katz.  And this post about the GSU case deserves widespread attention.  Katz does a wonderful job of pointing us to the real motive in the lawsuit — to force colleges and universities to purchase licenses with the Copyright Clearance Center.  This, he suggests, is an alternative to each publisher raising its own prices even further than they already have, and he sees in such an attempt a form of collusion amongst publishers to forcibly fix prices at a level higher than the competitive market, left to its own devices without judicial intervention, would bear. Katz’s conclusion is that the Department of Justice, which suggested that it might intervene in the case on the side of the publishers, should really intervene on the side of the defendant in order to prevent what Katz argues is an illegal attempt to fix prices.  He neatly compares the CCC to the so-called “patent pools” which were dismantled years ago using anti-trust laws, and  to the DoJ’s own recent efforts to prevent price-fixing in the eBook market.  For consistency, he argues, the DoJ should pursue the same path against the efforts that publishers are making in the GSU lawsuit.