Feelin’ stronger every day

I don’t mean this to sound vindictive or smug, but the publisher John Wiley keeps filing, and losing, lawsuits intended to enforce ever-stronger copyright claims, that, in the outcome, can only be encouraging to those of us who seek a more balanced law that both protects copyright holders and supports reuse rights.

Wiley was the plaintiff is the case recently decided by the U.S. Supreme Court that held that the doctrine of first sale applied, in the U.S., to any lawfully made work, regardless of the place of manufacture.  Wiley, of course, wanted the Court to limit first sale to works manufactured in the U.S. so it could choke off second-hand sales, at least for textbooks, but instead clarified the law in exactly the opposite direction. And then, in another set of cases, Wiley, joined by the American Institute of Physics, filed three different lawsuits, in different jurisdictions, alleging that law firms that filed copies of scholarly articles as disclosures of “prior art” with patent applications were infringing copyright if they did not pay for licenses for each article.   The two losses they have recorded thus far in those cases are more evidence of the robust notion of fair use our courts are developing for the digital age.

In one of those lost cases, in Northern District of Texas, the judge dismissed the case on summary judgment back in May, holding that fair use protected the challenged copying and distribution.  But that decision was announced from the bench, and as far as I know we do not have a written opinion yet that we can parse to see how it might apply in other situations.

Late last month, however, the other court in which such a lawsuit was filed did issue an opinion.  Actually, a magistrate judge assigned to consider the case by the federal district court in Minnesota issued a “report and recommendation” that strongly supports fair use for the situation in question.  It also offers an analysis that could easily provide an analogy to activities in higher education, including the e-reserves system that is being challenged in the Georgia State University lawsuit.

It is worth spending some time looking at the report and recommendation of the Minnesota magistrate.  His basic recommendation is that the suit be dismissed on summary judgment because the challenged use of copyrighted articles is fair use.  Apparently because of the North Texas case, Wiley had pared back its claims, allowing that the actual filing of articles with a patent application, and a single copy retained by the law firm in its case file, was fair use.  But if Wiley thought that this common sense concession would allow it to force firms that did more, such as maintaining a database of articles for its attorneys or sending copies of articles to clients, to pay licensing fees, it was badly mistaken.  The Magistrate Judge’s recommendation is a sweeping assertion of fair use, and there are four aspects of his analysis that I want to highlight.

First, and perhaps most importantly, Judge Keyes asserts that the use made by Schwegman, Lundberg & Woessner, the law firm that was sued, is transformative.  He finds transformation in the use of the articles in question for a different “intrinsic purpose” than that for which they were published:

This conclusion does not change merely because the “copying” Schwegman engaged in did not alter the content of the Articles.  That lack of alteration may make the label “transformative use” a messy fit… But reproduction of an original without any change can still qualify as fair use when the use’s purpose and character differs from the object of the original, such as photocopying for use in a classroom.

In reaching this decision that Schwegman’s purpose in using these articles, which was to comply with government requirements, to compare the invention to “prior art,” and to represent its’ clients interests, “did not supersede the intrinsic purpose of the original,” the Judge also stated a case for why the copying at issue in the Georgia State e-reserves case can similarly be viewed as transformative.  Indeed, he made that point explicit, since teaching is a different “intrinsic purpose” than that for which they were written and published, which the judge said was to inform the scientific community of new research  and allow for the testing of methods and conclusions.

Next, the Magistrate Judge directly refuted the claim by the two publishers that the Texaco case, which refused to allow fair use for copying within the research arm of a commercial company, should also be applied to reject fair use for this law firm (which is, of course, a commercial entity).  Here again the Judge made a careful distinction between the purpose that was rejected in Texaco and the purpose for which Schwegman was making its copies:

Here, there is no evidence that would allow a reasonable jury to conclude that Schwegman is similarly [to Texaco] maintaining mini-research libraries so that it can avoid paying for separate licenses for each of its lawyers, thereby superseding the original purpose of the Articles… the evidentiary character of Schwegman’s copying differentiates the firm’s use of the Articles from the Articles’ original purpose.

At this point as well as others, this recommendation undermines a central claim of the publishers in the Georgia State case.  Just because a licensing market exists, and the use to which the excerpts from published works are put therefore saves the users some money, that does not undermine fair use, Judge Keyes tells us, when the purpose of the use is intrinsically different from the original purpose.  If the Eleventh Circuit Court of Appeals applies this type of reasoning in the GSU appeal, we could see an even broader fair use ruling in Georgia State’s favor than we got from the District Court.  No guarantees, of course, that the Eleventh Circuit will take this approach, but this analysis in the Schwegman case is one more support for that possibility.

Several times in his report, Judge Keyes points out that the loss of licensing fees would have no impact at all on the incentives that scholarly authors have to write the articles that are at issue in the case.  This incentive-based approach is the right one to take, in my opinion, since it looks at exactly the question copyright law should be focused on — what is needed to ensure the optimal level of ongoing creation and innovation.  Since scholars do not get paid for their scholarly articles, and any small amounts that may trickle down to them from licensing fees are irrelevant to the decision to report on their work, the Judge says that the fact that “the Publishers may have lost licensing revenue from Schwegman’s copying is not determinative and does not create a fact issue for trial.” I have italicized the last part of this sentence to emphasize that Judge Keyes does not think this is a hard case or a compelling argument, since the standard he is applying, in recommending summary judgment, is whether any reasonable jury could find otherwise.  He believes they could not, given the facts that surround scholarly communications today.

Finally, there is a fascinating part of this recommendation that points out, I think, what good citizens libraries really are in the copyright realm.  The law firm, you see, could not account for where it obtained the original copy of some of these articles, so the publishers argued that this lack of an authorized or licensed original should defeat fair use, alleging “bad faith” and citing the Harper & Row case.  But without evidence of actual piracy, the Judge rejects this claim and holds that no reasonable jury could find that there was bad faith by Schwegman that would prevent a holding of fair use.  I find this important because most academic libraries either do own purchased copies of the books they excerpt for e-reserves or make every attempt to obtain them if a request is made for a book the library does not already own. I am frequently asked by librarians how hard they should search for a copy to purchase.  I believe this is a good practice, for both copyright and pedagogical reasons, but the Schwegman case is a reminder that by doing this we may be going beyond the absolute requirements of a fair use argument.  The fact is that, in spite of some over-heated rhetoric from the publishing industry (a former president of the AAP once called all librarians pirates), libraries try hard to be good citizen and to respect the appropriate boundaries of copyright.  What is causing problems these days is the publishers’ deep fear of the digital environment and their efforts, in response to that fear, to push the boundaries of copyright further and further, even to the point that its justifying purpose of supporting authorship and innovation is undermined.

The Schwegman report is just that, a report and recommendation.  It remains to be seen if the District Court judge responsible for the case will adopt it or not.  But the fact that it is out there, and is so supportive of a fair use argument that would allow and endorse library practices that the publishing industry has challenged, is another data point for our consideration.  It serves as a reminder that the key to finding favor in the fair use analysis is to be doing something the court believes is important and beneficial.  When we make limited copies to teach our students and support our researchers, we are on the side of the angels, and we continue to get these examples that must, over time, accumulate into a body of support for library practices.  It is the publishers like Wiley, who are in the position of asking courts to stretch copyright law solely to support new income streams, that are and will continue to be, in spite of their offensive strategies, always on the defensive.