Category Archives: Copyright Issues and Legislation

Copyright Issues and Legislation, Libraries

Sorry she asked?

At the end of her massive ruling in the Georgia State University copyright case, Judge Orinda Evans directed the plaintiff publishers to file a proposed text and rationale for whatever injunction and declaratory relief they think is called for in light of the decision.  She also gave the defendants time to respond to whatever the publishers proposed.  All this is pretty standard for a case like this.

The publishers made their proposal a couple of weeks ago, and I wrote about it here.  Basically they suggested that enough infringement had been found to justify the extremely sweeping injunction they had originally suggested back in February, before the trial had been held.  Perhaps recognizing that this was quite a stretch, they proposed an alternative that they said was more narrowly tailored to the Judge’s actual ruling.  In fact, their “c0mpromise” position proposed to lump all of the different criteria that the Judge had considered in her careful balancing of the fair use criteria into one big pot and call them all requirements for any fair use.  In short, they took criteria that the Judge considered as either/or and asked that they be made both/and.

Now GSU has responded, and the response could not be more different.  Where the publishers suggest that their original, pretrial, “throw the book at them” injunction would still be appropriate, the defendants assert that no injunction at all is called for.  It is probably not unusual for the two sides to have such divergent views about the remedy even after a ruling, but one has to think that, given that she has now been presented with the full range of options that were before her in the first place, Judge Evans wonders if it was worthwhile even to ask the parties in the first place.

The filing by GSU begins, appropriately in my opinion, by pointing out that very little infringement was actually found by the Judge in her May 11 ruling.  The plaintiff publishers refer over and over again to “systematic and widespread” infringement; even their statements to the press contained this kind of language.  Yet the Judge only found five instances of infringement out of the 99 excerpts that were at issue at trial and the 74 excerpts that she ultimately analyzed (25 were voluntarily withdrawn by the plaintiffs after trial).  The defendants point out that not only is this not systematic and widespread infringement, it is not even the pattern of “ongoing and continuous violation of federal law” that is necessary to justify any injunction in this case.

Because Georgia State is a state institution, lawsuits against it in federal court are severely circumscribed.  The Federal Courts cannot award money damages to a plaintiff, for example, because that would give those courts too much power over state treasuries.  They can order injunctions, telling the state how to behave in the future, only when there is an “ongoing and continuous violation of federal law.”  The language comes from a Supreme Court case called Ex Parte Young, and Georgia State is asserting that that standard has not been met, not when so few infringements were found in such a large pool of excerpts examined.

GSU makes the point that this is a very small percentage, which represents the behavior of only 3 professors from amongst the 33 whose fair use decisions were challenged at trial.  And they remind the judge that no copyrights at all that are held by one of the plaintiffs, Cambridge University Press, were found to have been infringed.  For all these reasons, they argue that no injunction should be issued or, under the rules of Ex Parte Young, can be issued.

Instead, GSU essentially asks for a “declaratory judgement,” which is a binding statement from the court that establishes the rights of the parties without providing any enforcement mechanism.  The basis for this request is that GSU has already modified their copyright policy in accord with the May 11 ruling.  In these amendments they have addresses the two aspects of the 2009 policy that the Judge criticized in her decision.  First, the revised policy now limits the amount of a work that can be used for digital course readings to 10% or one chapter, whichever is less.  Second, they built in the idea that if a digital excerpt license for the work is readily available from the publisher or the Copyright Clearance Center, that availability weighs the fourth factor against fair use, and it tips the balance if more that 10%/one chapter is being used.

These changes track the Judge’s ruling quite closely.  So GSU is arguing that, having amended their policy (which the Judge admitted was a good faith attempt to obey the copyright law in the first place) to correct the flaws the Judge found, all that is needed is a declaratory judgment that the policy now correctly defines fair use for the GSU faculty.

In this exchange of proposed remedies, the tendency of the plaintiffs to over-reach the evidence and make sweeping statements without justification has again been obvious.  The proposal that the judge can bring the trial phase of the case to a close by simply acknowledging that the amended policy now conforms with her findings of fact and conclusions of law makes a great deal of sense.  It might seem anti-climatic, especially given the size of that May 11 set of findings, but it is the sensible and prudent course.  And, naturally, it will set up the next stage of the case — the inevitable, I believe, appeal by the publishers.

Copyright Issues and Legislation, Fair Use, Libraries

Publishers file response to GSU ruling

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Yesterday the three plaintiff publishers in the copyright infringement case against Georgia State filed their proposed injunction, as the Judge required that they do, and a memorandum of law in support of that proposal.  So now we have a chance to examine their first legal response (as opposed to press releases) to the ruling Judge Evans handed down three weeks ago.

First a couple of comments about the memorandum of law.  There is a statement in it which asserts that the May 11 order found enough infringement to justify imposing the original injunction the publishers suggested back before the trial.  This is wishful thinking indeed, considering how many points the Judge has found in favor of GSU since that sweeping proposed injunction was offered.  And remember, the Court found only 5 instances of infringement out of the 75 excerpts examined or 5 out of 95 if we count the ones consider at trial and subsequently withdrawn by the plaintiffs.   But this hardly seems like a serious hope on the part of the three publishers, and the rest of the memorandum is spent explaining and defending the alternate proposal they offer, which is, they say, more narrowly tailor to track the Court’s fair use analysis.

One other comment in the memorandum caught my eye — the assertion that the GSU policy “did nothing” to limit GSU’s copying for electronic reserves to “decidedly small” excerpts.  This is technically a true statement but seems to misrepresent the Judge’s exact words and their implication (in fairness, the plaintiffs do quote those exact words later on).  What the Judge did say was the the GSU policy did cause the infringement “in that it did not limit copying in those instances [the five infringements] to decidedly small excerpts as required by this order.” She does not say that the policy did nothing to limit the copying, only that it did not conform to an arbitrary standard which was not available to GSU when the policy was implemented.  Hardly a culpable lapse, and the Judge does go on to say that the policy was a good faith attempt to comply with the law.

The phrase “in those instances” may be very important as this case proceeds, because much will turn on whether or not the Judge thinks the instances of infringement that she found rise to the level of “ongoing and continuous” violation of federal law.  The publishers assert that it does, and use those words over and over.  They need to make this argument in order to get an injunction that broadly proscribes future behavior by GSU. The exception to sovereign immunity on which this case is founded allows a court to issue an injunction only to prevent such “ongoing and continuous” violation.  So it is possible that the Judge could decline to issue an injunction at all by ruling that the few infringements she found amongst the many excerpts she examined do not suggest a pattern of ongoing and continuous violation.  Or she could simply order small tweaks to the GSU policy.

In their (alternate) proposed injunction, the publishers ask for much more.  They want GSU to be enjoined from ever using any excerpts from Sage, Oxford or Cambridge works without permission unless a strict set of conditions is met.  Those conditions include meeting all of the fair use factors (it would no longer be a balancing test), as they have been defined by the Judge, although the injunction combines factors three and four into a single set of requirements.  The proposal says that, to be used by GSU without payment, any excerpt from these three publishers must be “strictly without charge for nonprofit educational purposes” AND be “narrowly tailored” to “fulfill a legitimate purpose in the course curriculum” AND not be the heart of the work AND not be more than 10% or a single chapter, whichever is less.  Alternatively, if a digital license is not available from either the CCC or directly from the publisher (they want GSU to pursue both options), the excerpt must still be sufficiently small “as not to cause actual or potential market harm to the work.”

These requirements are taken very closely from the analysis Judge Evans used, but they are shaped into a less flexible test than the Judge actually employed.  For example, in the one case where the use of the “heart” of a work led to a finding of infringement by Judge Evans, that excerpt also exceeded her standard in terms of length (it was two chapters and 12.5%).  Because the third factor did not favor fair use, the factors were tied, and the Judge looked at the issue of the centrality of the excerpt to break the tie.  Thus she never actually asserted, as the proposed injunction would have her do (it connects length and centrality with a conjunction, not a disjunction), that an excerpted could be infringing if it was the heart of the work even if it was sufficiently short to meet her basic third-prong test.

The proposed injunction goes on to impose additional requirements on GSU, which look very like what was suggested in the publishers’ first proposal.  GSU would have to rewrite its policy to conform with the publishers’ reading of Judge Evans’ ruling, and state explicitly that the fair use checklist had been superseded.  They would have to document extensively, including evidence of an inquiry about a license made to both the CCC and the publisher for every excerpt.  Faculty would be required to see the entire proposed order every time they tried to upload anything, and to be threatened with sanctions if they disobey it in any particular.  The Provost would have to certify compliance to the Court each semester for the next three years.  And perhaps most objectionably, GSU would be required to provide the publishers with access to its course management system so that they could verify compliance.

The proposed order is clearly intended to humiliate GSU and to make fair use as difficult as possible for them.  It reads to me like a party who actually won very little at the trial still trying to spike the ball in the other parties’ face.  I hope the Judge will see it as yet another attempt to overreach the evidence on the part of the publishers.

One thing I can say with confidence.  If the publishers are given the right to poke around in GSU’s course management system, faculty will be outraged, at GSU and elsewhere.  That outrage might lead some to look for “underground” methods for sharing academic readings, which would be unfortunate.  It might also lead to difficulties in finding faculty authors who will be willing to continue to provide free content and free labor to these three publishers.

GSU now has 15 days to respond to this proposal, and then the Judge will decide what she will order.  It is likely her order will not be exactly what either side wants, and that the case will then move to the Eleventh Circuit Court of Appeals.

Copyright in the Classroom, Copyright Issues and Legislation, Fair Use, Libraries

More on GSU and the publisher response

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Now that I am back from vacation and have read the GSU ruling and some of the commentary more thoroughly, I wanted to add a few additional comments.  In many cases these may be repetitive of things others have already said; I have not read all the commentary, of course, and some of this writing is for my own sake as much as yours.  If it is redundant, I apologize.

I do hope most folks either have read or will read Brandon Butler’s “Issue Brief” for the Association of Research Libraries, which does a great job of analyzing the ruling.

The main thing that struck me as I read the fair use discussions for the individual excerpts that were in question in the case is that Judge Evans really did understand that fair use is a balancing test.  Although some parts of her reasoning are more mechanical than I would like, she does not take a bright-line view of any of the factors.  It seems worth a look, to me, at the way she relates the four factors in her discussion.

First, she finds that the first two factors — the purpose and character of the use and the nature of the original — always favor fair use in regard to the specific use and the specific works before her.  This is true even though she declines to hold that the provision of short course readings is transformative, which is the key determinant in most fair use rulings over the past few decades.  Instead, she sees this activity as at the heart of what fair use is intended to be, according to its own express terms.  On the nature of the original, she holds that the works in question were all published and factual in nature.

This point about the second factor is likely to be the focus of some disagreement from the publishers.  They wanted the court to hold that factor two did not favor fair use, apparently because of the effort involved in writing and publishing academic works.  No one is more respectful of the labor of scholarship than I am, but hard work by itself does not get one a copyright or insulate one’s copyright from fair use.  The Judge observed that educational works are exactly the works that fair use is focused on, with its favored purposes of research, scholarship and teaching.  She also noted that permission fees make up no part of the incentive for academic authors to write their works (p. 81ff).  This, to my mind, is the key reason for finding that factor two favors fair use in this case (although the Judge called it an “additional consideration”).

On the other side of the analysis, Judge Evans presumed, at least as an initial matter, that factor four, the impact of the use on the market for or value of the original, always favored the plaintiffs, which is to say it counted against fair use.

Which brings us to the third factor, the amount used.  This was the “swing vote” in most of the individual analyses, and the Judge applied a clear but quite narrow rule.  Ten percent of a work was acceptable as fair use if the book had fewer than 10 chapters, and a single chapter was considered fair use for books that contained 10 or more chapters.  This rule, which was applied quite strictly to decide if a “decidedly small” portion of the work had been used (that was the standard Judge Evans applied for this particular type of use), had some odd results; as little as 3% of a work was considered too much for fair use in a situation where the work was long and had many chapters.

But notice something important.  When the third factor disfavored fair use, the factor analysis stood at two in favor (one and two) and two against (three and four).  In those cases the Judge went on to do additional analysis, asking several further questions.  Was the heart of the work used? (she declined to assume that all e-reserve uses involved the heart of a work)  Was there a “readily available” license for reproduction of the excerpt in digital form? Were licensing fees an important part of the value of the original work in question? (Judge Evans held that they usually were not, so this was an important question).

The results of this additional analysis were what finally determined whether or not a use was fair if the third factor threshold the Judge had set was exceeded.  When the amount used was within her guideline of 10% or one chapter, the availability of a license for digital distribution did not sway the analysis against fair use.  And when a license for a digital excerpt was not available, the amount used was less important (although the leeway here is small, for Judge Evans).

If this rule about amount seems unduly restrictive, libraries would do well to remember three other findings from the ruling that impact how we might view this guideline.  First, she held that percentages should be calculated based on the total number of pages in the book, which makes for a much easier and quicker determination of amount than the method of counting the plaintiffs sought.  Second, she held that individual chapters by different authors in an edited volume should by counted by the same method and not as if each were an individual work, which also simplified the process of decision-making.  Third, she rejected the idea that a use that was fair use in one semester must be paid for in a subsequent semester.

All three publisher plaintiffs, along with the two organizations (the Copyright Clearance Center and the Association of American Publishers) that bankrolled them, have now issued initial responses to the verdict.  Overall their objections are quite vague.  Several of the responses refer to legal or factual “errors” in the ruling, but they do not specify what they are.  The AAP does disagree with the Judge’s finding that the loss of permission revenues because of fair use imperils their business; they repeat this absurd claim even after the Judge pointed out, based on figures supplied by the plaintiffs themselves, that these publishers made less than one quarter of one percent of their 2009 revenues from academic book and journal permissions.

All of the publishers assert that there is error in the judge failing to consider what the AAP calls the “full context” of the activities at GSU.  Sage and Oxford (who issued identical statements) suggest a “pattern and practice” of infringement , while Cambridge refers to “systematic and industrial-scale unauthorized reproduction.”  It is hard to know what to make of these assertions, other than that they arise out of sheer frustration.  Since the Judge has just found that only five of the excerpts before her were infringing, “systematic” and “pattern” seem like inappropriate words.  The Judge had to decide the case based on the specific allegations and evidence before her, and the plaintiffs were the ones who produced those allegations.  So if only five out of 99 (or 75, depending on where you start counting) were infringing, no pattern of systematic infringement has been proved.

The Cambridge statement has the strongest hint of an appeal, saying that they look forward to working with their “partners” to “resolve this issue.”  It also has the chutzpah to evoke “our authors” as victims of the ruling.  How many times can we repeat what publishers hate to admit in public, that the vast majority of academic authors are not paid for their scholarly writings (by publishers, at least) and do not consider permission fees when deciding whether, what or where to publish?

So where do we go from here?  We need to remember that this is only a District Court ruling, which is not binding on any university other than GSU, that no remedy has yet been ordered, and that it is likely to be appealed.  Nevertheless, it is a carefully reasoned ruling with lots of specifics for libraries and universities to consider.  Some institutions may decide that the Judge has defined a safe harbor and that they want to anchor there; in that case it is worth noting that some of the analysis she applies would be difficult to replicate without detailed financial information from publishers.  More likely, schools will look at this ruling and tinker with their own policies a bit.  Given both its substance and the still-early stage of the proceedings (really, even after 4 years and 350 pages this is not the final word), this decision is not, in my opinion anyway, a cause for large-sale or precipitous changes at most institutions, a fact that even the publisher statements seem to admit.

Copyright in the Classroom, Copyright Issues and Legislation, Fair Use

The GSU decision — not an easy road for anyone

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Overall there is good news for libraries in the decision issued late yesterday in the Georgia State University e-reserves copyright case.  Most of the extreme positions advocated by the plaintiff publishers were rejected, and Judge Evans found copyright infringement in only five excerpts from among the 99 specific reading that had been challenged in the case.

That means she found fair use, or, occasionally, some other justification, in 94 instances, or 95% of the time.

But that does not make this an easy decision for libraries to deal with.  Indeed, it poses a difficult challenge for everyone involved, it seems.  For the Judge, it was a monumental labor that took almost a year to complete.  She wrote 350 pages, working through a raft of legal arguments first and then painstakingly applying them to each of the challenged readings.  And for me, with a week’s vacation pending, I am trying to make sense of this tome before I leave, which is why I am writing this at four in the morning on a Saturday (please excuse typos!).

For the publishers who brought the suit – Oxford, Cambridge and Sage – there are some bitter disappointments.  Judge Evans explicitly rejects the Guidelines for Classroom Copying as the standard to be applied.  She also found the two major cases on which plaintiffs relied, American Geophysical Union v. Texaco and Princeton University Press v. Michigan Document Services, to be inappropriate analogies for the situation before her.

One holding that is certain to generate much discussion is Judge Evans’ rejection of the so-called “subsequent semester” rule, which had evolved from the Classroom Copying guidelines and led many institutions to assert that a liberal interpretation of fair use was permissible once but that permission had to be sought for subsequent uses of the same text.  Judge Evans found this restrictive approach to be “an impractical, unnecessary limitation” (p. 71).

Perhaps most distressing for publishers is the Judge’s statement that permission fees are “not a significant percentage of Plaintiff’s overall revenues” and that their loss through the assertion of fair use does not threaten the publishers’ business.  She calls this latter argument “glib” (p. 84).

In spite of all this, there are significant aspects of this ruling that will prove very difficult for libraries as well.  Two aspects seem especially likely to stir up consternation.

First, the Judge applies a strict standard for the amount of a work that is permissible under fair use in this situation.  The percentage she selects is 10%, or a single chapter.  In putting this percentage into practice, she bases the calculation on the total page count of a book (this was an issue at trial, with publishers arguing that only the actual text of the work should be counted), and rejects any distinction for books that are edited, in which each chapter has a different author (p. 88).  This is a less flexible standard than many libraries would like, I think, and it seems too rigid to be a good fit with the overall structure of fair use.

Second, the Judge bases many of her analyses of the fourth fair use factor on the percentage of the overall revenue that publishers realize for a particular title that comes from permission fees.  She criticizes the GSU policy for not providing sufficient guidance for making a determination about this kind of market impact, but immediately acknowledges that the standard she is applying “would likely be futile for prospective determinations (in advance of litigation)” (p. 337).  This is simply an unhelpful approach, since libraries and faculty members must make such prospective determinations without knowing all the information that publishers provided, under court order, to the judge.  Recognizing this, Judge Evans says that “the only practical way to deal with factor four in advance likely is to assume that it strongly favors the plaintiff-publisher (if licensed digital excerpts are available) (p. 338).

Hard as it may be to be told to make this assumption, even though the judge has found it not to be the case in most of the instances before her, we should pay attention to her qualification of it.  The permissions we should look for are those available for digital excerpts.  In another place she asserts that she will consider the permissions market in the fourth factor analysis only when a license is “readily available” at a “reasonable” price for a “convenient” format (p. 89). She explains that the license must, to qualify as convenient, allow digital excerpts.  This standard is actually hard for some publishers to meet in their current licensing postures.  No infringements of Cambridge works were found, for example, probably in part because Cambridge allows only very limited licensing through the CCC.  If publishers do not license in a way that facilitates reasonable educational use in the digital environment, the fourth factor will, she seems to be saying, cease to favor them.

Two more quick points, and then I will try to summarize the fair use analysis the Judge is recommending.

First, it is very important that the Judge finds that GSU’s copyright policy was a good faith effort to comply with the copyright law by interpreting fair use (p. 338). She criticizes the policy on two points – its failure to define the strict percentage limit she says is necessary and for not providing guidance about market harm, which she admits would be impossible.  But she does not believe the policy was a sham or merely “cover” for doing whatever the faculty wanted, as publishers asserted.  This would be a significant finding if money damages were at issue, due to the waiver of statutory damages in the law for educational institutions that make good faith fair use decisions.

The second point I think is interesting is the fact that Judge Evan considered hit counts when making determinations about some of the disputed excerpts.  In some cases she cuts short the fair use analysis because hit counts suggest that no students actually read the material.  In those cases she calls the copying “de minimis” and ends her analysis (see p. 96, i.e.).  This means that it will be hard to dispute about specific readings without knowing whether or not they were actually read (we know, sadly, that many such assignments are not).  Putting infringing material in a system, apparently, is not enough to establish liability; plaintiffs will have to show it has been used.

So here is the bottom line on the fair use analysis Judge Evans has outlined (pp. 87 – 89 of the opinion).  The first factor – purpose and character of the use – heavily favors fair use because it is for non-profit teaching and research.  She mentions the section 107 reference to “multiple copies for classroom use” and she does not employ a “transformational” approach.  She finds that the second factor also favors fair use, since all of the works at issue were non-fiction and educational in nature.  The third factor can go either way, depending on whether or not the excerpt is less than 10% or a single chapter.  The fourth factor is where the difficulty lies; Judge Evans finds that it “heavily favors” the plaintiffs IF a license for the appropriate format is readily available at a reasonable price.  There is lots of room to debate this part of the analysis, and lots of uncertainty, I think, about how it can be applied.

The Judge has deferred any action on crafting a remedy for the few infringements that she found.  She has asked the plaintiff to suggest an injunction, which will be difficult to craft to fit this ruling and will have to look very different from the one they suggested 18 months ago.  GSU will have a chance to object to any draft injunction, so the remedies phase of the case will go on for a while.

In general I expect librarians to be happy about the outcome of this case.  It suggests that suing libraries is an unprofitable adventure, when 95% of the challenged uses were upheld.  But there will also be a good deal of hand-wringing about the uncertainties that the Judge has left us with, the places where we need information we cannot reasonably obtain, and the mechanical application of a strict percentage.  We will spend considerable time, I think, debating whether and how to implement Judge Evans’ rules into our own copyright policies.  In the meanwhile, of course, the ruling is nearly certain to be appealed.

(Note that the opinion is not yet up on the free sites that I usually link to, but three different comments to  my previous post have provided links to PDF copies)

Copyright Issues and Legislation, Fair Use, Libraries

A safe harbor, not an anchor

Whenever Jonathan Band writes a “Friend of the Court” brief on behalf of the Library Copyright Alliance, it is sure to be worth careful reading.  One not only learns a lot about the particular case from Jonathan’s filings, but also a good deal about the legal and social place of libraries the U.S.

Jonathan’s most recent brief amici curia was filed ten days ago in the case brought by the Authors Guild against the Hathi Trust and five of its university partners. In some ways it is an unlikely case in which to seek any enlightenment, since the posture and the legal theories advanced by the plaintiffs are odd, to say the least.  While it is hard to see this complaint going very far, the consequences if it did, and especially if the recent motion for partial summary judgment filed by the Authors Guild garnered any credence from a court, would be catastrophic for libraries.  Fortunately, Jonathan’s brief in response to that motion is smart and, I think, devastating.  And, as usual, it tells libraries some important things about themselves.

The motion, which I discussed here several weeks ago, argues that the only exception that libraries can rely on in the Copyright Act is section 108, the specific exception that authorizes some preservation and interlibrary loan activities.  It explicitly claims that fair use is unavailable to libraries, whose rights, it asserts, are entirely circumscribed by section 108.

In short, the AG would transform a safe harbor included in the copyright law promote certain library services into an anchor that would restrain libraries from performing many of their day-to-day activities.  Or, as Jonathan puts it, “They [the Authors Guild] seek to transform an exception intended to benefit libraries into a regulation that restricts libraries.”

Jon goes on to list many of the library activities that the public depends upon that would be of doubtful legality if the Authors Guild’s argument was taken seriously, ranging from ordinary, daily lending of materials to digital exhibits.  One of his most effective arguments is based on the many portions of the Library of Congress’ American Memory project that explicitly rely on fair use.  As the brief says, under the plaintiffs’ theory, the Library of Congress, in which the Copyright Office itself resides, would be “a serial copyright infringer.”

The absurd results of this radical and insupportable theory advanced by the Authors Guild are balanced by arguments both that the plain language of the law (and its legislative history) support the obvious proposition that fair use is available for libraries, and that, in fact, section 108 would permit the orphan works project that Hathi proposed and the Authors Guild seeks to prevent.

So the brief effectively counters the bizarre theory advanced by the AG.  But it also implicitly tells us two things about where libraries stand today that are worth noting.

First, it reminds us that libraries are always adapting to the changing needs of their patrons, many of which today are driven by rapid advancements in technology.  The ways people encounter culture shift with alarming regularity and libraries must stay abreast of these shifts.  Fair use, which has existed in U.S. law for over 170 years, has always been a key part of libraries’ ability to respond to patron needs, and Congress recognized the continuing need for libraries to be able to rely on fair use when it drafted the 1976 Copyright Act.  Section 108 is important for libraries, and it still has a role to play in library services.  But fair use is, perhaps, more important in an era of rapid change.  As Jon writes (quoting a 1990 case):

While the specific exceptions provide courts with no discretion, fair use is “’an equitable
rule of reason’ which permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which the law is designed to foster.”

The second, more troubling, reminder from this case and Jon’s filing is that the Authors Guild has shown itself willing to launch an extremely broad and devastating attack on libraries in order to protect some strange fantasy about how they can make more money.  Libraries have always been, and should remain, the best ally of authors who seek to find readers. It is foolish and short-sighted of the Author’s Guild to turn on libraries, and to advance a theory that would cripple them, without apparently realizing how much harm those actions could do to authors.

In a previous debate about this case, a commentator wrote “I don’t care about readers, I want buyers.”  It seems this attitude is assumed by the leaders of the Authors Guild, but it is disturbing for three reasons.

First, this attitude neglects the fact that library readers often become buyers.  Marketing their books is something authors expect from publishers, but if libraries are taken out of that equation, it will grow more difficult.  Especially in the world of online purchasing, the ability to discover and browse a book at a library is one of the best routes to placing an order for that book.

Second, not all authors (or even most, I daresay) share this attitude.  The majority of authors, including all scholarly authors, write, I hope, to be read.  Many are simply not motivated by the lure of profit, since profit is unavailable.  When profit is possible, it can be very important, but it does suppliant, in most authors I believe, the fundamental desire to communicate, to be read.

Finally, when the desire to make a profit does overcome the desire to express oneself and to be read, the result is inevitable an uninteresting book.  Those who do not think first about readers do not deserve any.

If the diverse members of the Authors Guild do not all share this assumption that readers and buyers are distinguishable, and only the latter are desirable, than they are seriously misrepresented by this filling, and should be grateful, along with the library community, to Jon Band for his work on behalf of readers everywhere.

Copyright Issues and Legislation, international IP, Orphan works, Public Domain

How to solve the Berne Problem, part 1

The conference on Orphan Works & Mass Digitization, hosted by the Law School at the University of California, Berkeley last week, was exciting — at least to the 230 copyright geeks like me who attended — and filled with well-researched papers.  The three White Papers that were prepared by the Samuelson Law, Technology & Public Policy Clinic (written by former Duke Scholarly Communications Intern David Hansen) are well worth reading.  In this first post I want to look at a basic terminological issue and then focus on two general observations from the event.  In a subsequent post I will describe three specific suggestions made by conference speakers for solving the orphan works problem.

It is the phrase “orphan works problem” itself that sparked terminological debate.  Several speakers were uncomfortable with that expression, and an alternative – “hostage works” – seemed to gain some traction among participants.  But the suggestion that really got to the root of the issue was that we should refer to the proliferation of works still in copyright protection but for which no rights holder can be located as the “Berne problem.”  This is appropriate because the problem was so severely exacerbated by U.S. adherence to the Berne Convention in 1988 and the legislative changes that that decision required.  Four steps contributed significantly to the problematic situation we are currently in:

  1. The move to automatic protection, which often makes people into rights holders against their will and without their knowledge,
  2. Copyright term extension, which inevitably makes heirs or successors-in-interest into rights holders, again often unawares,
  3. The end of the renewal requirement, so that rights holders no longer have a chance to indicate their continued interest in a work; thus no “abandoned” works move any longer into the public domain,
  4. The end of the registration requirement, which now makes locating rights holders so much more difficult.

The combined effect of these changes to U.S. copyright law, all accomplished between 1978 and 1989, has been to create a huge class of orphan works.  So it is not surprising that many of the suggestions for how to deal with the problem pushed toward reversing or mitigating some of these changes.  Registries, for example, were a common theme; under these various proposals to create registries to assist in finding copyright holders for different types of works, we would simply be recreating (hopefully more efficiently) the registration database of the Copyright Office, which once could claim mandated comprehensiveness but unfortunately can do so no longer.

The first observation from the conference is that nearly all of the speakers (except the industry representatives and Registrar of Copyright Maria Pallante) seemed to think that legislation to solve orphan works is probably impossible and likely a bad idea.  The political climate in Washington makes attention to copyright issues unpalatable, and the proposal we saw several years ago was unattractive to many of the speakers.  Instead of newly created legislative schemes, potentially with burdensome and impractical requirements, many of the speakers looked for small changes that could be accomplished either in common law – by action of the courts, that is – or by simple legislative amendments to portion of the law as it currently stands.  In our next post we will examine some of these more modest suggestions.

Closely related to this distrust of the legislative process as a path for solving orphan works was a clear distaste, again expressed by multiple speakers, for solutions that would create a regime of extended collective licensing (ECL).  Such ECL programs would, of course, require a complex legislative enactment, and examples where such programs are in place were widely considered failures on a practical level; a professor from Canada, which has such a plan, was especially clear that this is not a workable option.  On the level of policy, an ECL scheme, where potential users of orphan works apply to some government-authorized board for permission and pay a fee, was denounced as economically inefficient.  The purpose of legislative licensing schemes is to facilitate the transactions so that users can find owners and owners benefit from the uses.  With orphan works, of course, there is no owner to be found so no transaction like this is actually facilitated.  Instead, the fee that would be paid to some collective organization would amount simply to a tax on use, with no economic benefit or incentive for creators at all.  One speaker refer to this sort of approach as similar to the medieval practice of selling indulgences, based on a dogmatic conviction that all unauthorized uses are a form of “sin.”  Any program based on such a foundation, rather than on solid economics, incentives for creation and cultural development, would be bad policy from the copyright point of view.

Copyright Issues and Legislation, international IP, Libraries

First sale goes to the Supreme Court, again

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With the Orphan Works conference taking place last week, there is an awful lot to blog about.  I will address the conference in the next couple of postings (unless there is a GSU decision), but for now I want to look at another round in the John Wiley v. Kirtsaeng case.

Lest we have forgotten, Kirtsaeng was the latest in a series of cases asking to what degree the doctrine of first sale, which says that the purchaser of a lawful copy of a work may further distribute that copy as she pleases, applies to copies of works that were manufactured and sold abroad.  In 2010 the Supreme Court looked at this issue in Costco V. Omega.  In that case, Justice Kagan recused herself because she had worked on the case as Solicitor General for the Obama administration, urging a ruling in support of Omega watches over Costco, which was importing watches purchased cheaply overseas and underselling the MSRP in the US.  The Ninth Circuit agreed with SG Kagan and ruled against Costco, holding that the US doctrine of first sale did not apply when an item was made and purchased overseas.  The Supreme Court, without now-Justice Kagan, split 4-4, a vote which left the Ninth Circuit’s ruling in place but did not make it binding precedent for the rest of the country.

Then, in 2011, the Second Circuit upheld a lower court in ruling that Mr. Kirtsaeng was an infringer for reselling copyrighted textbooks that his family members bought in Thailand and sent to him in the US, where he could get a higher price for them than had been paid.  The Second Circuit handed down a sweeping ruling, which I criticized here, in which the two-judge majority went further than Costco and maintained that first sale would not apply even if the work that had been manufactured abroad was sold in the US with the authorization of the rights holder.  As I said in my earlier post, this created a situation where the copyright holder could knowingly and deliberately take advantage of all the protections of US law without being subject to one of its most important limitations.

Now the Supreme Court has agreed to review the case, and many people hope that they will correct the overly broad ruling made in the Second Circuit.

One of the things that often leads the Supreme Court to agree to hear a case is a split amongst the Circuit Courts of Appeal on a particular point of law.  Here such a split is very clear.  The Second Circuit holds that a foreign-made work can never be resold in the US by any purchaser without the consent of the rights holder.  The Ninth Circuit, in the Costco case, says that such a work may be resold in the US, but only after an authorized “first sale” in the US.  And the Third Circuit believes that a US resale is alright anytime the original sale was authorized by the rights holder, even if that sale occurred outside the US (so that both the resales in Costco and Kirtsaeng would be legit).  Given Justice Kagan’s position in the Costco case, I would guess, if I had to guess, that the Court would opt for the Ninth Circuit rule, which mitigates the absurd results from Kirtsaeng but still narrows first sale considerably over what the Third Circuit would allow.

I hope that as the Justices consider this case they will recall that, by adhering to the Berne Convention and the WTO’s TRIPS agreement, nearly all countries now extend “national treatment” to the citizens of every other signatory nation.  This means, I believe, that we should read the requirement of “lawfully made” quite broadly.  As long as a work is not pirated — that is, it is made and/or initially sold with authorization of the rights holder — we should recognize that it is entitled to full protection under US law and therefore ought to be subject to all of the limitations of that law.  If rights holders want to practice price discrimination in different countries, they should rely on the cost of exporting to enforce those differentials and accept a certain percentage of “gray market” goods.  But that is not what I expect to happen.

If my expectations rather than my hopes are fulfilled, it will be difficult for libraries to be secure in lending any of the works they purchase abroad, especially film.  And vendors who sell to libraries might have to bear the extra expense of selling through a US outlet, if libraries become fearful of buying abroad.  It is an issue that the library community, which depends for its most fundamental activities on first sale, needs to continue to watch closely.

 

Copyright in the Classroom, Copyright Issues and Legislation, Scholarly Publishing

Seeking a boundary

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Is it just me, or do there seem to be a lot of lawsuits filed by publishers in the higher education space recently?  It is increasingly obvious that the disruption caused by the digital environment has led publishers to embrace litigation as a strategy for protecting their business models, and that that strategy cannot be good for the overall well-being of higher ed.

The latest such lawsuit, filed on March 16 in the Southern District of New York, comes from three major textbook publishers – Pearson Education, Cengage Learning, and MacMillian Higher Education – and targets a new Internet-based business called Boundless Learning that purports, according to the complaint, to create textbooks, using open educational resources, that parallel and can replace the high-priced textbooks that each of these publishers offer.  The sum of the complaint is that Boundless copies the selection, arrangement and organization of their textbooks much too closely and so constitutes copyright infringement.

One should never form conclusions about a lawsuit based only on the complaint, which is inevitably just one side of the story and is always pitched to make the defendant’s behavior look as dastardly as possible.  Nevertheless, it seems safe to conclude that this lawsuit is not as farfetched as some of the ones we have seen recently.  The plaintiffs are really just asking the court to help draw a line that has never been very clear in copyright jurisprudence, the line between idea and expression.  Their description of the situation makes it sound like the placement of that line is obvious, but it probably is not.  What it certainly is, however, is a vital line for higher education to examine and understand.

I occasionally run across an interesting assumption about copyright, which I think is common both in academia and in the wider world.  It is the belief that if you want to reuse an image or a figure without permission, you can simply redraw it and avoid all copyright entanglements.  Like all simple rules in copyright, this one is not true; the standard for infringement is “substantial similarity,” and a redrawn figure or image that is substantially similar to the original could still be found to be infringing.  Far better, I tell those who raise this possibility with me, to use the original figure or picture in a way that supports the assertion of fair use, or to get permission.

From the complaint, it sounds like Boundless Learning is doing something similar to this “redrawing” in hopes of avoiding copyright problems.  The plaintiffs assert that Boundless creates “shadow versions” of their copyrighted textbooks, imitating the arrangement of topics and sub-topics, the depth of coverage for each area, and even the choice of illustrative examples.  I fail to see how a running and a fishing bear illustrate the First and Second Laws of Thermodynamics, but the complaint claims that the Boundless biology text imitates Pearson’s standard text on the subject down to such similar, but not identical, pictures.

So the question is directly posed about where the line between idea and expression is to be fixed.  Is the example of a bear merely an idea, which cannot be protected by copyright, or does it represent a creative and expressive decision by the Pearson authors which is infringed even by a different picture?  To put it another way, how much actual expression must be copied, if any, to infringe on another’s protected expression?  We have seen the “derivative works” right expand a great deal over the years, so that today even characters in a work of fiction are often protected even when the alleged infringing character copies no actual expression from the original (as in the recent Catcher in the Rye sequel case).  Is there a boundary on that right?

Since scholarship is an inevitably cumulative process, in which each new work builds, more or less explicitly, on what has been done before, the boundaries of the derivative works right and the line between protected expression and public domain ideas are very important to understand.  If this case brings us a little more clarity, that would be good.  But the judge will need to be very careful not to develop rules that would inhibit the basic processes of teaching and research.

Finally, I want to point out an oddity I noticed in the complaint that was filed to initiate this case and which will bear watching (no pun intended).  In addition to naming Boundless as a defendant, the complaint lists 10 “Doe” defendants; people who are alleged to be complicit in the claimed infringement but whose names are not known and can only be discovered through court orders.  Naming such John and Jane Does is a common technique in file sharing lawsuits and in some of the more notorious copyright “trolling” cases.  But in this complaint it is quite odd, because we have no real clue what role these people are alleged to have played or why they are being sued.  Are they students who have ordered “shadow” textbooks from Boundless, employees of Boundless, or faculty members who have recommended Boundless to impoverished students? As the case goes forward, we may learn something about how to draw the line between idea and expression, and we may also discover just who the publishers are willing to target in their campaigns to use litigation to protect their markets, if and when the identities of these Doe defendants are revealed.

Copyright Issues and Legislation, Open Access and Institutional Repositories

Momentum

I am leaving later today to fly to Bahrain, where I will be part of an international panel discussing open access at the annual meeting of the Special Libraries Association, Arab Gulf Chapter.  Libraries in the region, as I understand it,  have not yet taken significant steps toward open access to scholarship, but they are anxious to learn.  I think the spread of interest in the whys and hows of open access all over the world indicates how great the momentum behind this movement is.  Even Elsevier called open access the wave of the future recently, even as they continue to try to stem that tide.

Public access, of course, is a subset of open access, referring specifically to access provided for the public to the results of research that is supported by significant government investments.  The arguments for public access are so obvious that it may be the easiest form of open access to defend and to spread.  Taxpayers deserve access to the research products they have paid for; even the sponsors of the ill-fated Research Works Act acknowledged this as they stepped away from the foolish proposal.  And public access increases the accountability of governments for how they spend the money that is loaned to them by their citizens.  Many other countries are way ahead of the US in providing this accountability.

All of this makes the recent statement by the Association of American Publishers opposing open access mandates from government funders seem all the more ill-advised.  In some ways the language of the statement seems more carefully crafted and restrained, but close examination still proves that the arguments put forward are fundamentally misleading.

My favorite howler is this: “FRPAA [the current legislation that would expand public access mandates in the US] is little more than an attempt at intellectual eminent domain, but without fair compensation to authors and publishers,” said Tom Allen, President and CEO, AAP.”  Really?  It is hard to believe that the CEO said this , since it seems like a statement calculated to show how weak the publishers’ position really is.

FRPAA, of course, is nothing like eminent domain, for the simple reason that the government has invested in the creation of the intellectual property at issue in the first place.  Indeed, what the publishers want is a continuation of the “land grab” from which they have long benefited; they want property that is really a public good — created with public funds on many levels — turned over to them and reserved for private gain.  And do they really want to raise the issue of fair compensation for authors?  Scholarly authors are often paid with public funds and have their research supported with public funds.  Yet publishers take that work without any compensation to the authors.  Only when they pay for the products they subsequently sell can publishers ask about fairness.

Later in the statement, the AAP provides a list of the ways in which they invest in the products of scholarship — “validation, digital enhancement, production, interoperability and distribution.”  It is true that this is a list of services that publishers provide, more or less well.  Interoperability, for example, is better served by open access than traditional publication.  But let’s admit that these are services that publishers provide.  None of them however, create a proprietary interest in the works in question, and they are all services that authors should be free to evaluate.  If authors (who are the sole owners of copyright until they decide otherwise) believe that these services are not worth the cost of surrendering their rights, or that they can obtain them better through other forms of publishing, they should be free to do so.  The overwhelming support for public access by the research community suggests that they do believe that.

Finally, the AAP statement complains about the six month embargo that would be the maximum allowed under FRPAA.  I have heard several versions of this complaint, and suggestions that for some disciplines the embargo window should be much longer, even as much as five years.  To those concerns, I would respond that it is important not to confuse the period of time during which a work is useful in a particular discipline with the period of time during which it is profitable.  In biomedical sciences, research dates quickly.  But in other fields, and especially in the humanities, the usefulness of an article can be quite long-lived.  But these embargo windows are not intended to define the term of usability; they are merely there to protect publishers’ ability to profit from the article.  And the window of profitability is certainly much shorter in these fields than the window of usability; subscription sales are exhausted within a very short time after publication, even if scholars continue to consult a particular articles for many years.

I am reasonably certain that the six month embargo included in FRPAA as introduced will be vigorously negotiated, and perhaps variable windows will be introduced.  That’s fine, but I hope the negotiations will be based on real data and not unfounded and incredible assertions.  Publishers need to show us the curve that illustrates their profits.  Do they really continue to make significant revenue after six months?  After one year?  Everything I have seen suggests that six months is very reasonable, when viewed as a window for profitability.  If I am wrong, publishers need to show me that data.  Since I and my colleagues are the ones who create their products, they owe us that much, at least.

Copyright Issues and Legislation, Fair Use, Libraries

A masterpiece of misdirection

On February 28, the Authors Guild filed a memorandum in support of its “motion for partial judgment on the pleadings” in its lawsuit against the Hathi Trust and five of its partner libraries, asking the judge to rule that the activities the AG has complained about – the mass digitization of books and the proposed orphan works project — are not protected by the specific library exceptions found in section 108 of the copyright law and that Hathi Trust cannot even assert, much less successfully rely upon, fair use, which is section 107 of that law.  There is a news report on the motion from Publishers Weekly here.

The memorandum strikes me as a masterpiece of misdirection, trying to make plausible arguments that do not quite fit the actual case in front of the judge.  The problem is that if the judge accepts these arguments, it could be devastating for libraries.  At its heart, the motion argues that libraries do not have any fair use rights, since their entire set of privileges under the copyright act are encompassed by section 108.  I think there are lots of reasons to reject this logic, which runs counter to the express language that Congress used in section 108 itself, which says (in subsection (f)(4)) that “Nothing in this section… in any way affects the right of fair use.

One way to see the flaw in the AG’s argument is to look at the odd results that arise if it is accepted.  For one thing, libraries would thereby become disadvantaged actors under the copyright act.  Other institutions and persons would still have the broad and flexible opportunities under fair use, but libraries would not.  Indeed, in the other lawsuit about mass digitization in which the Authors Guild is a plaintiff, against Google itself, Google will be able to argue fair use to justify its mass digitization, if the case gets that far.  But the plaintiffs argue that libraries cannot assert the same defense in regard to the same activity, simply because they are libraries, and thus disadvantaged by the existence of an exception that was supposed to benefit them.

By the way, this logic runs counter to the legislative history of the codification of fair use.  Congress explicitly stated that it did not intend to change or harden the judicial application of fair use; they wanted judges to continue to be free to apply the factors to specific circumstances to make equitable decisions.  But if placing section 107 in the same law as all the specific exceptions limits its application to situations not covered by those exceptions, that judicial freedom is undermined and the clear intent of Congress frustrated.

The are many other specific exceptions in the copyright law, and viewing them as limits on fair use again shows the absurdity of the argument.  There is an exception that allows photographers to take pictures of publicly visible architectural works, even when those works are protected by copyright.  If that exception is taken as the entire expression of the rights of photographers, then they could not argue fair use when taking photographs of other publicly visible copyrighted works, like a piece of public sculpture. That result is absurd, of course, and was implicitly rejected by cases allowing such photography.  There is also an exception that allows public performance of music in the context of religious worship, but its existence does not mean that someone who sings a song in public outside of a worship service would not be able to argue fair use.

It is interesting to note that a consultation on copyright in Ireland, which issued this consultation paper earlier in the year, suggests the value of a fair use provision for the Irish copyright law and makes the point that each of the specific exceptions can actually be seen as examples of fair use (see page 120).  If each specific exception is read as an instantiation of the fair use analysis for a particular situation, the logic of ensuring that fair use always remains an option (as 108(f)(4) tries to do) is particularly clear. (Hat tip to David Hansen for bringing this paper to my attention)

One more potential absurdity – If libraries have no fair use rights, would it automatically be infringement for a library to capture and print a single still image from a film for a student to include in a paper?  Section 108 excludes film from all but its preservation sections, so making a copy for a patron from a film would not be permitted under the 108 subsections on copying for users.  Yet this activity would seem like an obvious fair use if anyone else did it.  Why, we should ask, would libraries (and their users) be penalized simply for being libraries?

One of the difficulties here is that fair use is sometimes equated to “fair dealing” or “fair practice” in international copyright law.  Those terms tend to be blanket concepts that incorporate but do not expand upon the specific exceptions within each national law.  Fair use is different.  It is a separate and free standing exception within the US scheme. We need to remember that the US law was not written within the context of international copyright harmonization and does not conform, in any number of ways, to the usual pattern of copyright in other countries. That fair use is a separate exception and not simply a blanket term or gap filler is proved, I think, by the specific reference inside section 108 to fair use as an alternative option for libraries.  It is also a fact recognized and pointed out by the Irish paper on copyright linked above, which suggests that fair use can be seen as “a doctrine that defines the ambit of copyrightability and thus not an infringement at all.”  As a boundary definition on the exclusive rights and the basic analysis underlying all of the specific copyright exceptions, fair use would, again, always be an appropriate defense that courts should never rule out as a potential argument.

The most creative part of the memorandum supporting the plaintiff’s motion is its attempt to convince the judge to ignore section 108(f)(4), the fair use “savings clause” quoted above.  That language seems pretty categorical, and the phrase “right of fair use” certainly suggests that fair use is a positive right that does not simply fall away when more specific exceptions to copyright are enumerated.  The plaintiffs ask the judge to ignore this phrase with two arguments.

First, they refer to the general principle that “the specific governs the general.”  Because fair use is, allegedly, general, and section 108 is specific, it is asserted that 108 preempts the application of fair use in libraries.  But as we have just seen, fair use is a positive right that Congress acknowledged by inserting section 107 into the law but did not intend to limit.  So it is a different sort of thing; it is not merely a general principle that can be set aside by specific rules, but a distinct exception — or even a boundary definition — intended to do its own work within the framework of the law.

Second, the plaintiffs rely on a different case, Corley v. Universal Studios, in which a judge dismissed a similar fair use “savings clause” in the Digital Millennium Copyright Act.  The problem is that that dismissal, which has not been followed by other courts even when interpreting the DMCA, is based on an entirely different reason than the one being asserted by the Authors Guild.  The judge in Corley held that the activity in question, circumventing technological measures intended to prevent copying, was simply not the sort of thing that fair use was intended to apply to.  He did not reject the “savings clause,” he merely found that the activity before him was outside its scope.  In the Hathi case, of course, the activities in question are directly within the ambit of fair use, and the judge should respect the clear intention that Congress expressed as powerfully as it could in 108(f)(4).  Whatever the ultimate decision about fair use may be, the defendants must be allowed to argue it if the structure of US copyright law is not to be grossly undermined.