Category Archives: Copyright Issues and Legislation

Copyright Issues and Legislation, Public Domain

What is, what could have been, and what should be done

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[NB — Sharp-eyed readers have pointed out correctly that the authors listed in the first paragraph (at the *) all died in 1963, not 1943.  The list should have included Stephan Vincent Benet, Simone Weil, Radclyffe Hall, Beatrix Potter and R.G. Collingwood as those who died in 1943 and whose works, therefore, would be entering the public domain except for the oddities of U.S. law.  I apologize for the overly-hasty research that led to the mistake, and am grateful to those who pointed it out.]

January 1st of each year is celebrated by the geeky few who track such things as “Public Domain Day.”  That is because the works whose copyrights expired in the previous year officially enter the public domain, through a convention adopted into the copyright laws of most nations, on January 1 of the following year.  Thus, on January 1, 2014, works written by authors who died in 1943 (2013 minus 70) should enter the public domain, and do so in most countries.  Thus this year should be the beginning of free public use of works written by Robert Frost, C.S. Lewis, Sylvia Plath, W.E.B. DuBois and many others*.

Unfortunately, the various ways in which Congress revised our copyright law in the U.S. have created a ridiculous anomaly — no published works enter the public domain at all here in America until 2019 (assuming the law is not tinkered with again).  That is because under the 1976 Copyright Act, which took effect on January 1, 1978, all works that were already subject to copyright protection at that time, which was any published work that had been published, with copyright notice, after 1922 (1978 minus 56, which was the previous maximum copyright term), were simply given a 95 year term of protection.  Thus, in the U.S., no copyrights will expire for published works before January 1, 2019, when works published in 1923 will become PD.

So while many works of authors who died in 1943 became PD in other countries, in the U.S. only unpublished works by such authors rose into the public domain.  Those unpublished works are subject to the general life plus 70 term of the current U.S. copyright law, even though works published prior to 1978 are not.

That is the situation as it is, and you can read more about it on this page from Duke’s Center for the Study of the Public Domain, as well as this post on the TechDirt site.

To explore even more fully what might have been, the Center for the Study of the Public Domain also provides us with details about what could have been in the U.S. public domain if we had preserved the 56-year maximum term of protection that was the law prior to 1978.  Under that rule, works published in 1956 would be entering the public domain this year, including books by Jack Kerouac, Ayn Rand, Samuel Beckett and, my personal favorite, Margaret and H.A. Rey (if you don’t recognize this pair, think about an inquisitive monkey).

This year, we also received a timely reminder that the public domain is not as automatic as we might think; it requires attention if it is to flourish and be preserved.  On December 23, 2013, a judge in the District Court for the Northern District of Illinois issued a ruling that confirmed the fact that Sherlock Holmes (another favorite literary character of mine) is in the public domain.

Arthur Conan Doyle wrote four Sherlock Holmes novels and fifty-six short stories.  All but ten of the stories were published prior to 1923.  Nevertheless, the Conan Doyle Estate, Ltd. has continued to demand that anyone using the Sherlock Holmes character, as many authors wish to do, pay for a license.  When author Leslie Klinger and his publishers got such a demand, Klinger filed a lawsuit seek a declaratory judgment from the District Court that Sherlock belong to all of us.  The Conan Doyle estate argued that the Holmes character continued to evolve and develop right up through the last story, so that the character itself would not enter the public domain until that final story, published in 1927, does (which would be January 1, 2023).

Judge Ruben Castillo of the District Court in Chicago ruled, following substantial precedents, that the character of Sherlock Holmes, as he has been delineated in the four novels and 46 stories that clearly are PD, is also “free as the air for everyone to use.”  Only elements of the character that were added anew in those last 10 stories, elements such as Dr. Watson’s second marriage and Holmes’ retirement from his practice as a consulting detective, are still subject to protection.  But, according to Judge Castillo, all of the “Pre-1923 Story Elements,” which are more than sufficient for new authors to create stories featuring Holmes, are in the public domain.  He rejected the argument from the Conan Doyle Estate that Holmes was such a complex character that the earlier precedents, involving, they said, “flatter” and less richly delineated  characters, should not apply.  Such a rule, Judge Castillo pointed out, is to nebulous and difficult to apply; he decided to stick with the “increments of expression” rule about which aspects of a character are protected once some stories about that figure rise into the public domain.

So as we reflect on what is the situation regarding the public domain in the U.S., and what might have been, it is also important to recall what needs to be done.  There are lots of interested parties out there, like the Conan Doyle Estate, that will keep trying to sell that which should be free.  Just because someone offers, or even demands, a licensing transaction does not mean that such a transaction is required.  Users, including new creators who are building on work that has gone before (as all do) need to be vigilant and protect their rights, as Mr. Klinger decided to do.  We can easily fall into a false but happy belief that the public domain is automatic, a self-executing realm of free stuff.  But it is not; it requires attention and often direct action to ensure that our shared culture is fairly available to all without the extra-legal rules and fees that many would apply to narrow the scope of the public domain for the purpose of private gain.

For more detail about the public domain, legal regimes that have impoverished it, and pro-active efforts to protect and expand the canon of works freely available to the public, reading this article by Jennifer Jenkins, Director of Duke’s Center for the Study of the Public Domain, is a great way to cap one’s observance of Public Domain Day.

Authors' Rights, Copyright Issues and Legislation, Scholarly Publishing

Copyright roundup

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I had thought that my two most recent posts reflecting on the future of research libraries would end the year for this blog.  But I find two issues have arisen that I want to comment on.  Since they both involve copyright — one is merely my observations and the other involves reporting on a recent court decision — I consider this post a year-end copyright roundup.  Yee Haw!

I have commented before about the campaign that Elsevier has undertaken to send take down notices regarding PDFs of articles they have published that are posted on Academia.edu.  At that time, I expressed the hope that the American Association of University Professors would get involved.  The AAUP has been very diligent in defending the copyright interests of faculty, correctly perceiving that rights ownership can be an issue of academic freedom.  Unfortunately, up till now, at least, this concern of the AAUP has had a huge blind spot — the threat to academic freedom that is posed when copyright is transferred to large commercial interests like Elsevier, usually gratis and on terms dictated by the assignee rather than the author, which do not share the values regarding scholarship that are held by most faculty authors and by the AAUP itself.

Now we have begun to see that this take down campaign from Elsevier has expanded, as we hear that notices to remove posted PDFs are also being sent in large numbers to universities, presumably directed at copies of articles that are posted on the individual profile or research sites of the faculty authors.  These authors clearly believe that they have the right to post these articles — probably because they correctly consider the distinction between their final submitted manuscript and the published PDF to be meaningless — and Elsevier and Elsevier’s insistence that those articles be removed is a direct attack on research sharing, the advance of scholarship and, therefore, academic freedom.  Why does the AAUP remain silent?  In the past they have implied that they did not want to interfere with authors’ decisions about where to publish.  But now we have clear evidence that many authors do not understand the rights situation and their ability to continue their research projects when they assign copyright to Elsevier.  On individual campuses we work to educate them, but we desperately need the voice, and the gravitas, of the AAUP to step in and help faculty authors understand the consequences of these publication decisions.  Thoughtless assignment of copyright is a grave threat to academic freedom, as Elseivier is working hard to demonstrate, and it is an issue that the AAUP cannot ignore without seeming to condone.

As for campus responses to these take down notices, I want to make one point.  These are not ordinary DMCA take down notices; the DMCA, and section 512 of the copyright act that it amended, pretty clearly imagine that take down notices will be sent from the rights holder to remove material posted by some third-party user of an Internet service.  They do not contemplate a situation where the actual ownership of the rights might be disputable.  But that is the case here, where the “user” who posts the PDF is the original rights holder, the author.  Elsevier is sending these notices as a putative assignee.  But we know from long experience that publishers are not good at actually completing copyright transfers, faced with publication deadlines and author disregard of the final paperwork.  So in this unique situation, we cannot be sure that Elsevier actually does hold the rights on the basis of which they are demanding takedown, and that the authors who posted the work are therefore not entitled to do so.  In this situation, simple compliance with the law demands that universities, through their DMCA agents, insist on receiving evidence of a completed copyright assignment — the law requires a written and signed instrument — before they comply with Elsevier’s take down notices.

The case I want to comment on also involves the relationship between universities and authors who hold copyright, in this case the authors of dissertations. In Andrew Diversey v. The University of New Mexico, which was before the Tenth Circuit Court of Appeals and decided on December 23, we had a direct conflict between a dissertation author and his university.  Briefly, Diversey alleged that he had a terrible time with his dissertation committee, finally sent a draft of his thesis to the Dissertation Coordinator for proofreading, and had it “confiscated” by the Graduate Studies Dean.  Subsequently, Diversey discovered that copies of his draft had been sent to ProQuest and to two UNM libraries.  The story strikes me as bizarre, especially since there is no indication that Diversey received a degree or that his dissertation won formal approval.  So it is odd that it was apparently treated as a finished product; there may be more to the story that we do not know.  But ultimately, Diversey sued the University of New Mexico for copyright infringement for copying and distributing his dissertation without authorization.  His claim was dismissed by the trial court because that court said it was filed after the statute of limitations had run out. But the Court of Appeals reinstated part of the claim, for unauthorized distribution, and sent the case back to the District Court.

The crux of the case is whether the University infringed Diversey’s by making copies and putting them in their libraries.  The Court of Appeals finds that it is at least plausible that it did.  The Court recognizes Diversey’s copyright in his dissertation, of course, and suggests that any copying or distribution without his permission, even by the University at which he was a student, is infringing.  Copies were made, according to the Court, but Diversey had notice of those copies far enough in the past that the statute of limitations had run out on his claim for unauthorized reproduction by the time it was filed.  But the Court found that Diversey only became aware of the distribution, by which it means placing copies of the dissertation in the libraries and listing them in a catalog, within the three-year limitations period, so his claim on that alleged infringement should go forward.  The Court also found that a fair use defense would not protect UNM in this set of circumstances.

To me this case is a warning to universities and schools that want to retrospectively digitize Doctoral or Masters’ theses and dissertations, and decide to skip the step of seeking permission from the authors.  It is perfectly true that libraries can distribute “lawfully made” copies under the doctrine of first sale.  But if the copies themselves were unauthorized, so too is the distribution of those copies.  In other words, if the only copy that UNM placed in its library was the one Diversey originally submitted, they could have a first-sale defense. But the University clearly made more copies, since they sent one to ProQuest and had at least two copies in their libraries.  It is the distribution of these unauthorized copies that the Court of Appeals thinks is possibly infringing.  And that situation is very similar, it seems to me, to the making of digital copies of older dissertations and placing them in an institutional repository without permission from the author.  I understand that some institutions decide that it is easier to ask forgiveness in this instance instead of permission.  But to me that attitude is disrespectful of the authors of these works.  And now we have a case that reminds us that that approach can also be expensive.

If an author discovers her dissertation in an institutional repository and is very unhappy about it, she will have three years from the time she either knew or should have known about the unauthorized copy to bring suit.  The fact that the institution might remove the copy from distribution once it learns of the objection will not protect them from such a lawsuit if the author is determined.  The expense of defending that lawsuit would be very high regardless of the outcome, and even higher if the institution loses or has to settle (which is now very likely for UNM in this case).  For these reasons, this case reinforces my long-held belief that systematic digitization of older dissertations or theses is a situation where permission is the better course, since forgiveness might be doubtful and, without it, the cost could be much too high.

Authors' Rights, Copyright Issues and Legislation, Scholarly Publishing

Connecting the Dots

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The American Association of University Professors is an important organization, and its emphasis on protection the intellectual property rights of academics is admirable.  It is precisely because their work is so important, and because they often seem to be right on the verge of connecting all of the dots related to copyright, publishing and academic freedom, that their statements sometimes frustrate me.

In November the AAUP issued a report on “Academic Freedom and Electronic Communications” that has been widely and justly praised for addressing the revolution in scholarly communications in the digital age in a comprehensive way and keeping the issue of academic freedom firmly at the center of the discussion.  As this article in Inside Higher Ed puts it, the AAUP is updating long-standing commitments in light of a “whole new world.”  For example, the AAUP has recently reaffirmed its position that the copyright in online courseware should remain in the hands of the faculty creators of those courses, a position that was also endorsed by the Duke Academic Council last week.

It is because the AAUP sees that copyright ownership is an integral part of academic freedom that I find its new report just one dot short of a complete picture.  The juxtaposition of two quotes in the Inside Higher Ed article underscores just how close the AAUP gets to seeing the core of the problem:

“While the expanding digital world has promised to make information freely accessible to a global community, commercial forces have locked up most research behind paywalls and ever-more-restrictive licensing agreements,” the report reads. “Any consideration of open access” must conform with the organization’s 1999 “Statement on Copyright,” which concluded that “”it has been the prevailing academic practice to treat the faculty member as the copyright owner of works that are created independently and at the faculty member’s own initiative for traditional academic purposes.”

The AAUP wants faculty members to own their own copyrights, with which I agree.  And they recognize that commercial interests are locking up research, which is undeniable.  But two facts go unacknowledged in the report — the fact that commercial interests can lock up research only because faculty do not retain their copyrights but give them up for free to those interests and the fact that this surrender of copyright to commercial publishers is a huge threat to academic freedom.
If we needed additional evidence for this second assertion, we got it last week as the news came out (see stories here and here) that publisher Elsevier was sending “take down notices” to the Academia.edu website demanding the removal of article PDFs that the authors have posted to that site in an effort to share their research and facilitate scholarly conversation.  The move is sure to generate bad publicity for Elsevier; one commentator called it an “unforced error.”  The publishing giant just seems unable to comprehend that they depend on academic authors to give them for free the content that they then sell at a huge profit.  But don’t get me wrong; Elsevier is within its rights to do this; as the copyright owner in these articles it can allow or forbid whatever covered uses it wants, and its general copyright transfer agreement with authors does not allow those authors to post the final PDF of articles they have written.
This is precisely my point, of course — because authors have given their rights away to Elsevier, it is Elsevier and not the faculty authors who can determine the scope and depth of any subsequent scholarly discussion about the article.  Faculty options for pursuing their own work are limited by the ownership of copyright by Elsevier and other publishers.  Academic freedom suffers from this common practice of copyright transfer.
The AAUP focuses, in my opinion, on only a part of the problem, and the lesser part of it at that.  They are concerned to protect authors from claims over their work by the universities that employ them, which is a real but infrequent threat.  In the process, however, they ignore the much greater threat posed to academic freedom by the commercial interests that routinely are the recipients of uncompensated copyright transfers.  If the AAUP is really serious about a discussion of copyright ownership and its relationship to academic freedom, they need to be willing to discuss this “third rail” of that conversation, this practice of giving copyright away.  In short, open access, or, more accurately, leaving the decision about access in the hands of faculty authors, is not an optional part of the discussion.
So let’s have a discussion of open access that conforms to the AAUP’s 1999 Statement on Copyright.  But let’s be honest about “prevailing academic practice,” which has been to treat faculty members as the owners of copyright for only a very short time, after which control of the dissemination and use of scholarship has routinely been surrendered to organizations with little or no accountability to faculty members or their representatives.  Perhaps in the print age that surrender did not matter and did not impede academic freedom.  But in a digital age, when faculty have so many more opportunities to share their work and advance their own scholarship, ceding control over copyright is a big problem, with big implications for academic freedom, as the Elsevier attack on Academia.edu proves.  This is the elephant in the AAUP’s living room, and they need to address it by encouraging faculty members to retain their rights beyond initial publication.
For a moment, let’s try a thought experiment.  Suppose a new university is being founded, Innovative University.  At IU the “start from scratch” copyright policy does exactly what the AAUP fears and asserts that all faculty scholarship is work made for hire.  If, at that point, faculty authors had to go to IU to ask permission for ever use they wanted to make of their own works, that would be essentially the same situation that is in place now, once the authors have transferred copyright to the publishers.  If the university did not want a paper to be posted to Academia.edu, they could demand that the article be removed, exactly as Elsevier has been doing.  Both these scenarios are, it seems to me, equal impositions on academic freedom and both, I believe, should be the focus of attention from the AAUP.
But we can carry our thought experiment a bit further and imagine that IU would not want the burden of granting permission for every publication or re-posting.  To avoid that, they give a license to all faculty authors which allows them to post and publish their works wherever they wish and to retain the profits from those publications, if any.  The only restriction on this license is that no copyright transfer or perpetual exclusive license may be granted by the faculty member to a third party without permission.  In that imaginary situation, it seems to me that faculty authors would actually be better off than there are in the current reality, in which copyright is transferred as a whole to commercial interests.  They would have greater certainty and greater flexibility regarding use their own works than they do under the current system, and a much easier channel through which to seek any permission that would be necessary in extraordinary situations.  The University and the public would certainly be better off.  The copyright would not be held by the author, as it is not currently in nearly all cases, but it would be in the hands of an institution whose goals and values are much more aligned with scholars and scholarship than is currently the case.  In short, one can easily image a situation where the worst fears of the AAUP are realized, yet the threat to academic freedom is still less than it is when, as now, commercial interests hold copyright in academic works.
In spite of my thought experiment, I agree with the AAUP that the best alternative is for faculty to retain their copyrights in most cases, as long as they really retain them, so that they, the authors, maintain control over the future of scholarship.  That, after all, is what we mean by academic freedom, isn’t it? Instead of focusing on only one aspect of the copyright issue, a discussion led by the AAUP about IP rights and academic freedom should focus on the potential to more fully exploit copyright ownership to the benefit of its faculty owners.  That means talking about authors’ rights, publication negotiations, promotion and tenure evaluations, and even open access.
Copyright Issues and Legislation, Fair Use, international IP, Scholarly Publishing

Fair use, Georgia State, and the rest of the world.

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UPDATE —  Since I wrote this post, Professor Niva Elkin-Koren of Haifa University has kindly informed me that an English translation of the settlement agreement discussed below is now available on the Israeli A2K in Higher Education website. The direct link to the translated settlement is here.

Ever since the Georgia State copyright lawsuit over e-reserves began, people have suggested an analogy to the ill-fated and now renounced litigation campaign by the recording industry against customers who downloaded music files.  It took years, but it finally dawned on the recording industry that suing your own customers was a bad strategy, pursued only by a desperate industry that cannot figure out how to retool their businesses to offer services that people really need and want.  But as I tell folks, the publishers suing Georgia State have made an even more foolish decision, since they are suing people who are not just their customers, but also their suppliers.  The very academics that are vilified as thieves in this lawsuit are the ones who produce the content that Oxford, Cambridge and Sage take, usually for free, to resell at a high profit.  This is one reason why the publishers cannot win this case, even if the 11th Circuit follows the ill-logic they displayed at oral arguments and gives the publishers some kind of Phyrrhic victory.  The attention they are bringing to their own greed and mismanagement will drive more of the authors they depend on to stop giving these publishers free content to sell, and the current economics of higher education guarantees that they will not be able to offset their losses through the increased permission fees they dream about.

All of this is old news.  But as these three publishers continue to pursue a suicide mission in the U.S., we can see that other, more sensible segments of the same industry, are taking a more sensible approach.  As this blog post from University of Toronto law professor Ariel Katz describes, publishers and academic groups in Israel have come to an agreement about fair use that shows just how grasping and ill-conceived the GSU case is.

Israel adopted a fair use provision nearly identical in language to the U.S. provision in the 2007 revision of its (Israel’s) copyright law.  And, just as in the U.S., a couple of Israeli publishers brought a lawsuit against Hebrew University alleging copyright infringing, a case clearly designed to test and define the limits of the new fair use provision.  But in Israel the case has settled, with an agreement announced last week that defines fair use in a very sensible way that indicates a real commitment to scholarship and education on the part of these Israeli publishers, something wholly lacking from the U.S. plaintiffs.

According to Katz, the settlement in the Israeli case recognizes that both e-reserves and course packs are fair uses of copyrighted material, with full journal articles and excerpts of up to 20% of books falling within the fair use definition.  Note that this agreement allows unauthorized excerpts that are twice as long as the ones tolerated by Judge Evans in the GSU trial decision, which the U.S. publishers are disputing.  This, like a great deal of other evidence, shows us that the U.S. plaintiffs are not simply trying to protect their businesses, as they claim; they are asking the courts to grant them windfall profits they have not earned and do not deserve.  Apparently these smaller Israeli publishers think they can live with this agreement, while some of the richest academic publishers in the world are crying poverty to the U.S. 11th Circuit.

There are some additional qualifications on this Israeli settlement that are worth noting.  The e-reserve systems must be accessible only to students registered for a specific class in order to be fair use, something that is almost always true in the U.S. as well.  Course packs must be produced only on demand and sold only to students registered in a class and at cost.  These limitations are, I believe, things that U.S. higher education would be happy to abide by as well, but the publishers appear to be unwilling to show the same spirit of compromise that their Israeli colleagues have.  Finally, Hebrew University has agreed to pay legal costs for the publishers– less than $100,000 — without admitting any culpability for copyright infringement.  Overall, this is a sensible compromise between sensible parties, something foreclosed in the U.S. by the irrational greed of the GSU plaintiffs.

As Katz points out, this agreement in Israel is not a license being granted to universities by publishers; it is a definition of fair use within a specified context.  And, interestingly, it includes a mutual recognition of the Code of Best Practices for Use of Works in Research and Teaching that has been developed in Israel to interpret fair use.  This Code of Best Practices is similar in some ways to the Code from the Association of Research Libraries; it is certainly not more conservative than the ARL Code.  The Israeli Code explicitly recognizes that the amount used should be considered in relationship to the purpose, and that a loss of income to the publisher does not automatically foreclose fair use.  In thinking about the nature of the original, a topic that confused the 11th Circuit judges so badly, the Israeli Code does not waste time debating factual versus fictional and instead recognizes the greater accessibility required for works “of an academic character.”  It also adopts the same fourth factor criteria favoring fair use that Judge Evans used in the GSU trial, the unavailability of licenses specifically for electronic use. Finally, the Israeli Code treats transformative fair use properly, recognizing that transformation is an important but not required element of the first factor analysis, and that transformation can occur either through actual alterations to the original or when there is a “use of a work in a different manner or for a different purpose or function than that of the original work.”

The Israeli Code of Best Practices is very much worth reading, and there is an interesting article about the Israeli experience with fair use for higher education by four academics available here.

All of this, as well as discussions about fair use in Canada, Great Britain and Japan, suggest that the rest of the world is getting the hang of fair use.  They are realizing that fair use is absolutely essential for a copyright law in the digital age, lest the exclusive rights become an economic and technological drag on a nation.  What Judge Evans decided in the GSU case was squarely in the mainstream of fair use thinking; it was even rather conservative when viewed through the lens of developing international thinking about fair use in a digital age.  If the silly misunderstandings of the 11th Circuit panel of judges lead them in another direction, it will be one more obstacle that will eventually have to be overcome to prevent cultural and economic stagnation.  But internationally, the trend is to ensure that fair use serves education and eases the transition to digital teaching and learning, a goal that at least some publishers seem to support.

Copyright Issues and Legislation, Fair Use, Scholarly Publishing

A discouraging day in court for GSU

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The best word to describe yesterday’s oral argument at the Eleventh Circuit Court of Appeals in regard to the appeal of the Georgia State University e-reserves decision is probably bizarre.  But that has to be qualified; they were bizarre in a very discouraging direction for GSU and fair use in the academy.

When I read the briefs for this appeal, along with Judge Evan’s massive opinion from the trial in which she developed and applied a careful fair use analysis, it was hard for me to imagine how Georgia State could lose on appeal.  The trial judge was right on both the law and the policy of copyright. But the oral arguments showed me that there was a way that it could happen — if the appellate judges got lost in the weeds and started chasing the argument down rabbit holes.  It is worthwhile, if discouraging, to peek down some of these rabbit holes because they help illuminate some of the errors the appellate panel was laboring under.

Although the tenor of the arguments was mostly hostile to Georgia State, lawyers for both sides seemed bewildered by the direction of the questioning, and neither one was able to lay out a very persuasive argument.  The day started badly for Bruce Rich, the lawyer for the publishers, when he was brusquely told to stop puffing about how important and civic-minded his clients were.  He was immediately asked to defend the injunction his clients have sought from the court, specifically because it would impose a bright-line limit on fair use.  The publishers want a definitive statement that 1000 words is the absolute maximum for fair use of their works, but the court was not buying it.  On this issue they also gave Steve Schaetzel, representing GSU, a hard time about Judge Evans’ 10% or one chapter rule, asking if that “bright line” was a legal error (which would justify reversal or remand) because it removes the flexibility from fair use.

This is a difficult issue.  It is hard to see how some standard for amount, the third fair use factor, cannot be used when examining a large group of excerpts used in the same way.  So we have to ask what kind of order do the judges want; they seem to have painted themselves into a corner on the issue of amount.  It seemed clear that they were not happy with the publishers’ proposed injunction, which was the good new of the day, but also possible that they would issue an injunction of their own, which would not be good at all.  GSU made the plausible argument that the 10% standard was an analytic tool, not a bright line, which is supported by the fact that Judge Evans did not treat it as absolute, but flexed it a bit in light of the other factors.  The judges did not seem to get that point.

Another “rabbit hole” was the issue of market harm.  One of the judges, Judge Marcus, raised the question of whether Judge Evans had impermissibly “shifted the burden” on this factor by asking whether publishers offered digital licenses.  The general rule is that defendants (GSU, in this case) have the burden of proving fair use, and lawyers and judges love to watch out for inappropriate burden shifting.  Mr. Rich was quick to agree that this was an error made by Judge Evans, but of course it is no such thing.  She simply ruled on this factor based on facts that were in the record before her.  Specifically, the publishers argued that they were losing licensing income due to the claim of fair use, so she asked if they were offering licenses.  When told that some of the plaintiffs (i.e. Cambridge University Press) were not, she properly concluded that this factor did not always favor the publishers.  But, again, time was wasted pointlessly on this, and the error that Judge Marcus was making was never cleared up.

Then there was the analogy between course packs, and the so-called course pack cases, and electronic reserves.  The publishers push this analogy very hard, and the judges seemed to mostly accept it.  This may be the worst sign for GSU.  Even when Judge Tjoflat acknowledged that he was using the language of course packs as a mere convenience, he seemed unable to get out of the way of its implications.  Schaetzel did make the point, on behalf of GSU, that e-reserves were a lot more like a traditional reserve room than they are like course packs, but the panel persisted in its error.  One difference between the GSU case and the course pack cases, of course, is the wholly non-commercial nature of e-reserves, whereas the course packs in those cases were made and sold by commercial entities.  Also, a course pack creates a physical artifact that a student can keep forever, while an e-reserve reading is ephemeral, available only during the course and inexorably tied to the specific pedagogy.  When the differences were pointed out to Judge Tjoflat, he merely switched to a hypothetical and plowed ahead, clearly trying to extract some kind of admission from Schaetzel even though that admission would be entirely irrelevant.

Perhaps the most bizarre moment in the arguments came at the very end, when Judge Marcus was pushing Schaetzel about the second fair use factor and Judge Evans’ conclusion that it favored GSU because the works in question were informational.  The Judge seemed to lose track of the fair use analysis entirely when he posed what he clearly believed was a devastating question, asking Schaetzel if The Origin of the Species, one of the most important books in science, should lose copyright protection simply because it was factual.  The confusion here is obvious.  First, The Origin of the Species has already lost copyright protection and is in the public domain, yet science still advances.  Second, all the factual nature of the book would mean, under Judge Evans’ analysis, is that the second factor of the fair use framework would be more likely to favor fair use; there is no question of “losing copyright protection” for Darwin’s book or for any of the works in the GSU e-reserves system.  Finally, the very importance of The Origin of the Species is a reason why it should be subject to fair use; it is too central to modern thought to make access to it entirely dependent on paying some publisher a fee every time even the shortest excerpt of the book is used.  That would be crippling to scientific education.

If Judge Marcus really wanted to use Darwin’s masterpiece to explore the second fair use factor, he should have asked Bruce Rich if he thought copyright protection was a major factor in Darwin’s decision to write the book.  The incentives created by copyright, of course, seldom make any difference to academic or scientific authors, who write because it is part of the advancement of knowledge.  It is comical to imagine Darwin, on board The Beagle, calculating royalties as he decides whether or not to share his insights about natural selection.  It is precisely that disinterest in the economic rewards enabled by copyright that allows academic publishers to free-ride on the system and sell works that they obtain for nothing at great profit.  The case brought against GSU is an extension of that free-riding, and a properly focused examination of the second fair use factor would have exposed it.  Unfortunately, the arguments never went there.

So what can we expect next?  It is always possible that the three judges will go back to their chambers, reread the briefs, and discover how off-the-wall their approach during the oral argument was.  So a good ruling, presumably largely affirming Judge Evans, is not impossible.  But it seems quite unlikely after yesterday.  One alternative would be for the Appeals Court to remand the case, sending it back to Judge Evans for reconsideration in light of instructions they would provide.  They could, for example, remand telling her to not use a bright-line 10% standard and not to “shift the burden” to publishers on the fourth factor.  If they did that, it is perfectly possible that Judge Evans would go back to the record and arrive at the same result; she would just have to alter the language of her analysis a bit.  Certainly if a more flexible standard for the amount used is employed, and pedagogical necessity is made the yardstick, Judge Evans might find even fewer infringements.

The more troubling possibility is that the Court of Appeals panel might reverse the lower court and issue an injunction.  It seems clear that they would not be willing to endorse the sweeping injunction that the publishers have requested. They do not want to provide prospective instructions that would remove the flexibility from fair use.  So the most likely thing, if they take this direction, is an injunction related only to the 48 excerpts analyzed in the original opinion, presumably using a different analysis and coming to different conclusions.  Such an injunction would tell GSU how to deal with those works that were actually contested at trial and then, presumably, expect GSU to “get the message” as regards future assertions of fair use without dictating prospective standards.

Perhaps the most important message to come out of this day came from the panel discussion held at GSU after the arguments.  Lisa Macklin, the Director of the Scholarly Communications Office at Emory University, who has a smart and sensible perspective on most issues, reminded us that the problem being fought over in this lawsuit would go away if the academy would more fully embrace open access.  The core problem here is the donation of copyright in academic works to publishers who then exploit them to earn every possible penny of profit.  Scholarship suffers due to the greed of these publishers (my words, not Lisa’s).  So scholarship would be better served if we stop giving the key resource of the academy away to those who are poor stewards of it.  Instead we need to have authors retain copyright and offer those authors a variety of ways to disseminate their work that better serve their needs and the interests of the scholarly enterprise.

Yesterday was a discouraging day, suggesting that storm clouds might be developing in the area of academic copyright.  But if that storm breaks, the opportunity to renew and strengthen our commitment to open access might be the silver lining we can find in those clouds.

Note — this post was updated to correct the spelling of Judge Gerald Tjoflat’s name.  Thanks to Kenny Crews for pointing the misspelling out.

Copyright Issues and Legislation, Fair Use

A wide-angle lens on fair use

4 Comments

I first saw the news about Thursday’s decision affirming fair use in the Authors Guild v. Google Books case when I turned my phone back on after an eleven hour flight from Istanbul.  The Turkish Air plane was still taxiing at JFK at the time, so when I cheered out loud I got a lot of bewildered looks from my fellow passengers.  I tried to explain to the folks sitting near me what I was so elated about, but I don’t think it translated well.

Fortunately, it is much easier to explain the impact of this ruling here, mostly because so many of our colleagues stepped up to the task quite quickly.  The best thing I can do for my readers is probably simply to direct you to a few of those discussions; I especially recommend those by Kenny Crews, Nancy Sims and Brandon Butler.  There is also this interesting piece by Eric Goldman in Forbes, and this story from the New York Times.

The case, of course, has been going on for over eight years, and got very complicated when a proposed settlement, that would have imposed a sweeping revision to copyright relationships in the U.S., was proposed, revised, and rejected.  A class-action was certified by the judge, but vacated on appeal and the case was sent back to the trial court for a ruling on fair use.  For all that complexity, however, the fair use ruling seems to have been pretty easy.  Certainly Judge Chin handed down a sweeping affirmation of fair use for book scanning when the purposes of that scanning are preservation, indexing and access for persons with disabilities.  Since this parallels the decision made by Judge Chin’s colleague Judge Baer in the HathiTrust case last year, it was perhaps more predictable than many of us thought.  And, of course, there is a growing body of precedent about fair use out of not just the Second Circuit but also the Fourth, Ninth and Eleventh Circuits that all pointed Judge Chin in this direction.

What is most remarkable and valuable about this ruling is not any new ground it breaks in fair use law, but its meticulous placement of that law back where it first arose — in the issue of public benefit and the purpose of copyright.  It looks at fair use with a wide-angle lens, which helps us see more clearly the correct placement of the discussion.  Before he begins his analysis of the question of fair use, Judge Chin catalogs the benefits of the Library Project and Google Books.  That catalog includes a searchable word index of tens of millions of books that benefits libraries and researchers, the facilitation of new types of research through text and data mining, access to books for traditionally underserved populations, especially including the disabled, book preservation, and the generation of new audiences for authors as well as new income for publishers.   After he completes his four factor analysis — finding that three factors strongly favor fair use and only one, the amount used, “weighs slightly against” it — Judge Chin reiterates this list of benefits and concludes that “Google’s actions… advance the arts and sciences [and therefore] constitute fair use.”

Fair use was developed by judges over a century and a half ago to ensure that the exclusive rights in copyright did not choke off the very progress of science and the useful arts they were intended — constitutionally required, in fact — to serve.  By “book-ending” his analysis, as one of my colleagues expressed it, with the public benefits of Google Books and the purpose of copyright, Judge Chin has created a powerful context for his ruling and an important reminder for all of us of what this odd body of law is really for.

In this context, it is very easy to see how selfish and myopic these lawsuits against libraries (in the broadest sense, since the decision in this case focuses a lot on the benefits of GBS to libraries) really are.  The Authors Guild is really asking the courts to forget about students, researchers, blind people, poor people and even the very authors they are supposed to represent in order to preserve some notional expectation of a windfall profit that might be discovered someday when they finally figure out the internet.  As Brandon Butler puts this point, “There is no pot of gold at the end of these lawsuits, and the research tools they are trying to kill are their best hope of finding an audience.”  I am reminded of Aesop’s fable about the dog and his reflection, where the greedy dog with a bone sees his own reflection in a stream and, trying to snatch the bone away from the “other” dog, drops what he already has into the water.  Increasingly the Authors Guild, as well as the publishers in the Georgia State case, look a lot like that greedy and foolish dog.

The Authors Guild has already announced the mind-bogglingly stupid intention to appeal this case.  After eight years of pouring money into it, failing to find the pot of gold they hope to gain from a settlement, and losing on the key legal principle they were fighting for, the AG apparently has learned nothing.  But the chances of a reversal on appeal seem very slim.  Judge Chin’s analysis is tight and firmly grounded in the fundamentals of copyright law.  It is supported by a rapidly growing body of precedent and it parallels another decision made in the same Circuit last year.  Finally, it grows out of a remand, from the same panel that will hear any further appeal, that clearly communicated the belief of those judges who sent the case back that fair use applied to Google Books.  In that remand, the judges who were asked to rule on the issue of class certification sent the case back (without a decision about the class action) with instructions to consider fair use.  Had Judges Laval, Parker and Cabranes not thought that a finding of fair use, which would make the class question irrelevent, was likely, this would have been a futile waste of judicial resources, something overworked federal judges avoid like the plague.  So there is already very strong reason to think that the AG’s appeal will fail.

Finally, in spite of my remark about there being little in this decision that is very new, I think there are two important conclusions that we can take from this ruling.  First, it is a reminder that the commercial nature of a user does not automatically rule out fair use.  In his decision, Judge Chin properly focuses on the use, which has tremendous public benefits and which does not directly generate a profit, rather than the user.  In the context of the educational benefits of the Book Search, the fact that Google is a for-profit company is really trivial to the analysis.  Second, the decision provides an important perspective on mass digitization.  Rights holders often focus on the scale of a project and assume that large-scale reproduction cannot be fair use.  This is the core of the publishers argument in the Georgia State appeal, and it is wrong.  Both Judge Chin and Judge Baer have now concluded (and Judges Laval, Parker and Cabranes have strongly hinted their agreement) that even massive digitization, when it is done for a transformative purpose, can be fair use.

 

Copyright Issues and Legislation, Fair Use, Scholarly Publishing

What’s up?

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Is it just greed?  Is that what is behind the lawsuit over e-reserves and copyright infringement that publishers continue to pursue against Georgia State University?

Yesterday Publishers Weekly published a short item reporting that the Copyright Clearance Center, which is helping to bankroll the GSU lawsuit, paid out a record amount of royalty monies to rights holders in the 2013 fiscal year. Royalties paid by the CCC have increased by more than $35 million in the past three years alone.  So why the lawsuit? This news calls into question the motivations of Oxford University Press, Cambridge University Press and Sage Publishing, who continue to pursue a feckless and wholly unnecessary attack on higher education.

Usually one hears two different explanations for this lawsuit.  One is that publishers just want clarity about fair use.  The other is that permissions income is vital for the survival of academic publishing.

To start with the first claim, it seems to have gone out the window once the plaintiff publishers decided to appeal the decision by Judge Evans in the District Court.  In that decision, Judge Evans laid out very specific rules about fair use as it applies to e-reserves in a non-profit educational institution.  If clarity was what was being sought, the Judge’s 350 page decision provided it.  In fact, my own objection to that ruling is that it went too far in removing the flexibility of fair use, at least for the situation that was before the court.  On the other hand, the publishers did not like it because it was not rigid enough; they did not simply want clarity, they wanted fair use rendered toothless.  And since the Judge did not do that, but merely provided the kind of guidance the publisher claimed to be seeking, they chose to appeal her decision.

The second claim for why this lawsuit was needed does not fare any better.  In her trial court decision, the Judge held that revenue from permissions was not a significant part of the value of most of the academic books at issue, and the publishers complained loudly about that holding, saying that “publishers cannot sustain the creation of works of scholarship” without increasing revenue from licensing.  First of all, academic publishers do not “create” works of scholarship, nor do they pay those who do create them, most of the time.  So it is hard to see why that ever-increasing income stream is really so necessary.  But now we learn that that revenue stream is growing, at a very nice rate, thank you very much.  The picture painted by CCC’s announcement, as reported by Publishers Weekly, is of a system that is working quite well for publishers.  If the revenue from licensing must go up for academic publishing to survive, as publishers claim, well, it is.

So how much is enough?  I have always believed that behind this lawsuit is a belief that copyright exists so that rights holders, who most often are intermediaries and not the original creators, can extract every conceivable penny from every use of every copyrighted work.  From that perspective, fair use is a gigantic mistake and these revenue figures from the CCC are irrelevant.  But that is not the purpose of copyright law.  The copyright monopoly exists to give an incentive to authors and creators to continue writing and creating.  Since very little of the $188.7 million that the CCC distributed to rights holders in FY 13 actually goes to creators, it is deadweight loss, in economic terms, as far as the incentive purpose of copyright is concerned.  And it raises the question of how much income is enough; how much inefficiency in the system is required before these publishers will be satisfied?

I am looking forward to the oral arguments for this appeal on Nov. 19, and I hope the judges on the appellate panel are well-enough informed and savvy enough to ask that question of the lawyers for Oxford, Cambridge and Sage.  The Eleventh Circuit should demand, just as Judge Evans did, to see the books for these companies (including the CCC) and to make an independent and common sense decision, guided by public policy and sound economics, about what a sensible profit really is.  Because it is very clear that the plaintiffs will never admit that they have squeezed enough money out of higher education in the United States.

Copyright Issues and Legislation, international IP, Public Domain

The varieties of the public domain

It is well known that early publishing houses in America built themselves up, in large part, through the publication of unauthorized editions of popular British authors.  This was a time when foreign works, including English-language books published in Britain, did not enjoy copyright protection in the U.S.  Indeed, books published abroad in English did not get copyright in this country until 1891, a full century after the first U.S. copyright law.  And even after that time, the strict formalities imposed on foreign works, including the infamous “manufacturing clause,” kept many works out of copyright.  American publishers used this legal situation to make money off of the popularity of British authors without having to pay any royalties to those authors.  The firm Harper published unauthorized editions of Walter Scott, for instance, while Grossett & Dunlap (now part of Penguin) built its business in part by publishing Rudyard Kipling without his permission.  British authors and British publishers called this activity “piracy,” but in the U.S. there was a different name for it.  It was the public domain.

In his new book Without Copyrights: Piracy, Publishing and the Public Domain (Oxford University Press, 2013), law professor (and one-time professor of English Literature) Robert Spoo details the legal and the literary situation that modernist British authors faced because of the narrowness of American copyright or, alternately, the expansiveness of the American public domain.  Just to take one example, Virginia Woolf’s early novels were published in the U.S with substantial changes from their U.K. editions, because it was believed that revised American editions could get U.S. copyright even if the original edition had failed to meet the manufacturing requirements.  Woolf instructed her friend Lytton Strachey, for example, to make lots of revisions because her American publisher suggested “the more alterations the better — because of copyright” (Spoo, p. 95).  Joyce and Pound were both published in fragmentary format in magazines because of the (unproven) theory that such publication could stake out a copyright claim while avoiding the difficulties and expense of U.S. printing and binding.  It is fascinating, in my opinion, to see how the actual experience of literature was shaped for American readers by the strictures of the copyright law.

Whether because copyright for foreign works was simply unavailable (as it was prior to 1891) or because of the rule that English-language works by foreign nationals had to be typeset, printed and bound in the U.S. in order to enjoy copyright here (not fully repealed until 1986), lots of well-known works were in the American public domain in those days.  And in spite of the frequent resort to the word piracy, this was a perfectly legal situation, created intentionally to protect American publishers and printers.  As nineteenth-century copyright scholar Eaton Drone wrote:

[I]t is not piracy to take without authority either a part or the whole of what another has written, if neither a statute nor the common law is thereby violated… Hence, there may be an unauthorized appropriation of literary property which is neither piracy nor plagiarism, as the republication in the United States of the work of a foreign author.  This is not piracy, because no law is violated; and, without misrepresentation as to authorship, it is not plagiarism. (Quote by Spoo, p. 23)

Then, as now, accusations of piracy were thrown about rather irresponsibly, and Drone sought to clarify the situation.

Over time, publishers developed a system called “courtesy of the trade” which took the place of copyright protection for foreign authors.  That system had two prongs — the offer of some form of payment to the foreign author of a reprinted work and a “gentleman’s agreement” amongst U.S. publishers that others would not “jump the claim” of a publisher who had announced the intention to reprint a specific author. Although this was referred to as courtesy, it was really sharp business tactics, and it was not particularly fair to the authors.  They were not in a strong negotiating position as to the fees they were paid; they pretty much had to “take it or leave it,” especially since the system made it very difficult to shop their work to multiple American publishers.  And, of course, the system was used to create informal monopolies, which excluded competition and drove up prices.  In some ways the system of trade courtesy reminds me of the current situation for academic publishing.  Although lip-service is paid to the rights of scholarly authors by publishers, their work is appropriated without payment through a coercive system in which they had little option, until recently.  Such publication is not piracy, as Drone tells us, but it certainly is a form of free-riding, coupled with an effective monopoly that keeps prices on the sales side artificially high.

The public domain, of course, is no longer the wide open commons described by Spoo, where most works published abroad were free for anyone to reprint or otherwise use within 90 days of publication unless the authors met onerous requirements.  Today our public domain is almost as constrained as it was free-wheeling for much of our history.  Today, virtually no published works are entering the U.S. public domain; our cultural heritage is basically locked up.  And figuring out what is and is not in the American public domain is just as difficult today as it was for Ezra Pound or Charles Dickens.  As Spoo writes about contemporary international copyright law,

Far from unifying the global public domain, however, recent laws enacted in the United States and Europe only guarantee its continuing disharmony and fragmentation.  Worldwide availability of modernist works is threatened by a tragedy of the uncoordinated global commons, a congestion of divergent durational terms and other rules that impede the free use of works created nearly a century ago. (p. 8)

In the context of this confusion, it is all the more laudable that some groups are making continuing contributions to the public domain.  I began reading Spoo’s book shortly after returning from a meeting about the Copyright Research Management System that is an ongoing project of the HathiTrust.  CRMS is methodically researching books that fall into the “doubtful” categories of U.S. copyright — periods of years during which a published work might still be protected or might be in the public domain.  Since the beginning of the U.S. project in 2008, nearly 150,000 titles have been identified as public domain.  These are works that can be made available to the public without any harm to rights holders.

There is nothing underhanded about this project, as there arguably was about unauthorized reprinting by American publishers of unprotected foreign works.  Instead, this research provides a pure benefit.  Most of that benefit is in the ability to open up new works to the public that were previously closed simply due to lack of data.  Another part of the benefit, however, is in the fact that information is being gathered that is beneficial to rights holders and to future users.  As it determines that many books are in the public domain, the CRMS project has also determined that a significant number of the books it has researched are still in copyright, which is important information to know.  Even the fairly large category of “undetermined” is beneficial.  Although these books are not able to be opened to the public domain, there is now better data about these titles and the gaps in our knowledge about them have been identified.  Knowing what we don’t know, to paraphrase Don Rumsfeld, is itself a step forward.  HathiTrust should be proud of the work that it has done and continues to do, opening books to the public domain and gathering data that will clarify the contours of the public domain into the future.

The public domain is a changeable space, as Robert Spoo shows eloquently in Without Copyrights.  Changes in law, changes in the practices of authorship and publishing and even the cost of paper can influence what is, or is not a public domain resource.  As with the weather, many people complain about the vagaries of the public domain, but do nothing about them.  Spoo and the HathiTrust are each, in very different ways, doing something to strengthen our notions about those resources that are the vital common property of us all.

 

 

Authors' Rights, Copyright Issues and Legislation, international IP, Scholarly Publishing

Copyright policy here and abroad

Earlier this month, Jonathon Band, who, among his other accomplishments, is the principle attorney for the U.S. Library Copyright Alliance, posted a report of a talk he gave in Seoul, South Korea at a conference on “The Creative Economy and Intellectual Property.”  In response to an invitation to talk about how U.S. copyright policy helped to foster a creative economy, Band made an interesting distinction, one that caught my attention and made me nod my head in surprised agreement.

Band’s basic distinction is this: U.S. domestic policy does help to foster a creative economy because it seeks to balance copyright protections, which do support creative pursuits, with exceptions that limit the scope of claims to copyright infringement.  These exceptions are every bit as to encourage innovation as the protections themselves are, but U.S. policy about copyright in other countries does not similarly support a creative economy.

We can identify two reasons why the U.S approach to copyright in other countries does not support creativity and innovation, based on a distinction Band makes between process and substance.

In terms of process, the U.S. foreign policy about copyright is entirely in the hands of the Executive branch of government, which is very susceptible to lobbying from the traditional content industries.  The important role that the entertainment industries play in any Presidential election is just one reason for this understandable, if unfortunate, influence on the Executive branch.  And because that branch is solely responsible for our foreign relations, we are often in the position, as Band illustrates nicely, of advocating for much stricter copyright provisions abroad than we have, or are allowed to have, at home.

Part of the reason our domestic law is more balanced is because of the role of the courts, who are much less easily influenced by lobbying and who have a great role in maintaining the copyright balance, as we have seen in the important string of fair use decisions that have been coming out of courts all over the country in recent years. But U.S. courts have no role in shaping the kinds of policies we advocate for in other nations.

On the side of substance, our copyright policy toward other countries is determined and expressed by trade representatives, whose goal, naturally, is to improve the market for U.S. products around the world.  Thus their copyright focus is on (primarily) entertainment products that already exist, and which, they believe, must be strictly protected from all kinds of unauthorized use, even if those uses would be allowed in the U.S.  So at the same time that U.S. courts are developing a broad view of fair use that supports digital innovation and new industries, our trade reps are vigorously campaigning to prevent any other nation from getting the (correct) idea that fair use is a good idea if you want to support a creative economy.

To continue this distinction a little farther, I want to look at two other items that came to my attention this week.

On the domestic front, there is this info-graphic about fair use from the Association of Research Libraries, which is a great resource for starting a conversation with academic librarians and faculty members about the space that our domestic courts are opening for innovation, scholarship and creativity with their expanding approach to fair use.  Conveying to our communities that fair use is good news from the copyright front, and that considered, responsible decisions about how to use materials in teaching and scholarship are also quite likely to be good decisions about fair use, is an important role on campus.

On the international side, consider this press release from the European Commission suggesting that open access has reached a “tipping point” in Europe.  The European Community, of course, has been a leader in promoting open access to research and scholarship.  And it is helpful to see open access as a way to simply move past the pressure that the EC and other nations receive from the U.S. to strengthen copyright protections and weaken user rights.  Open access is a way for copyright holders — remember that in spite of the rhetoric, it is authors on our campuses who are the original copyright holders in virtually all works of scholarship — to exercise their rights in ways that are most beneficial to them and to avoid many of the restrictions imposed by secondary copyright holders on access and reuse.  It allows scholars to simply ignore the attempts by industry and the U.S trade reps to ratchet copyright protections ever higher and to use their own copyrights in a way that is true to copyright’s core purposes of supporting creativity and innovation.  Indeed, by making our works of scholarship openly accessible, we provide much needed access to scholars and others, especially in the developing world, access that will be denied if those users have to rely on national policies that are shaped by pressure from the U.S.

In different ways, both the growing consensus around fair use and the open access movement are responses to the issues that Jon Band raised in his talk.  Both are supports for a creative economy.  But it is open access, where authors hold on to their copyrights in order to use their works for the best interests of themselves, their discipline and scholarship in general, that has the most potential to foster growth and innovation both here and abroad.

Copyright Issues and Legislation, Fair Use, Libraries, Scholarly Publishing

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.