Category Archives: Copyright Issues and Legislation

Why is copyright different?

March 4, 2013 Kevin Smith, J.D. 2 Comments

One of the most basic justifications for all forms of property rights, something every first-year law student is taught, is that these rights encourage the efficient use of property. Because property (usually) is a scarce resource, exclusive ownership rights help encourage people who value and will use the property. For the same reason, restraints on the ability to sell property are generally discouraged — we support the “free alienability” of property so that those who do not wish to fully exploit a piece of property will be able to transfer that land (as it usually is) to someone who will. In short, the rules around real property exist because of the foundational belief that fields should be tilled and planted, and houses should be lived in.

In this context of why we have property rights at all, it is very easy to see and understand that the problem in copyright of so-called orphan works is a fundamental failure of the rights system itself.

In addition to rules that encourage property owners to sell that they do not intend to use, nearly all forms of property rights regimes also have doctrines that will take the property away from an owner who declines to exploit what he or she owns. The classic doctrine that does this is adverse possession, which can actually transfer title to a piece of land from the owner to a person whose only claim is that he is using the property while the owner is not. In North Carolina, for example, a person who openly possesses and uses a piece of land that is not her own for a period of at least fifteen years can ask the courts to transfer title to her. That is, owners of real property can lose their ownership simply because they did not use the property.

Real property is not the only property rights regime that has such a doctrine. Ownership over personal property can also be lost, through the doctrine of abandonment. If I leave my bicycle in a local park for long enough, without any indication of my claim to it or my intention to ever use it again, I may have abandoned the bicycle and it could become the property of another person who finds it, claims it and uses it. Although we do not usually think about it this way, property rights are a “use it or lose it” legal regime.

Perhaps someone will suggest that these use it or lose it rules make sense in the realm of tangible property, where scarcity is really a problem, but would be inappropriate for intangible, intellectual property. But that distinction does not work, because two other intellectual property regimes, trademark and patent, also have “use it or lose it” rules. A trademark owner can lose their rights in a mark through neglect — one must defend the ability of the mark to identify specific goods or services, or else the mark will be lost because it is not serving the purpose for which trademarks are granted. And patent rights can likewise be lost, if the rights holder does not pay the regular maintenance fees that are required.

In fact, as far as I can tell, the only form of property interest that cannot be lost even if it is never used is copyright. Unlike with land, chattels, trademarks, or patents, a copyright holder can hold on to their rights for nearly a century without using them at all, and still without losing them. And it is this bizarre feature of copyright, which distinguishes it from all other forms of property rights, that creates the problem of orphan works.

Of course, our copyright law used to have the same kind of mechanism that exists in other property regimes; renewal of copyright served as a very simple way to indicate a continued intention to use the property right, and without renewal the right was lost. With that renewal requirement, copyright stayed on a par with other forms of property. But we removed that requirement when we joined the Berne Convention, which forbids “formalities.” That probably made very little sense (and we have ignored other requirements of the Berne Convention in spite of our adherence to it in 1988) because it created the orphan works problem and undermined one of the most basic justifications — efficiency through use — for allowing exclusive property rights in the first place.

The best solution to the orphan works problem would simply be to reinstate the renewal requirement. That could probably be done without violating our obligations under Berne, if the requirement was imposed only on rights holders who are U.S. citizens. That would be only a partial solution, of course, but it would be better than the current situation and would address the oddity that copyright is a more ironclad right, at this point, than any other form of property rights.

There are also more “gentle” ways to address this problem. Given the current situation, where we give copyright holders a grip on those rights that is stronger than any other form of property, it would be possible, and eminently fair, to ask them to voluntarily take a simple step to make their intention to continue using their property known to others. A registry, or perhaps different registries for different genres of copyrighted works, would allow rights holders to assert their continued interest in their rights, and make it much easier for potential users of the work to find and contact the appropriate rights holder if they are seeking permission for their use. This would be a very non-intrusive way to address the problem of orphan works, especially in the context where other forms of neglect of property can result in forfeiture.

If a registry regime were voluntary and did not carry the threat of forfeiture that exists in other property regimes, what kind of “teeth” could be built into a registration system? The most sensible approach would be for judges, when considering a fair use claim over a piece of copyrighted work, to take into consideration the “find-ability” of the right holder. If the rights holder has taken any positive steps to be known and locatable, a claim of fair use should have to meet the same threshold that is currently erected for such defenses. But if the rights holder has done nothing, has “sat on their rights,” to use a old-fashioned phrase that is amazingly applicable to the current copyright system, then it should be much easier to establish fair use.

When Congress considered an orphan works solution a few years ago, it wanted to put the onus on users to search for the rights holder. But when we put copyright in the proper context of other property rights regimes, it should be obvious that these obligations should be a two-way street. All other property rights require some kind of indication that the rights holder will use the rights, or else they can lose them. In copyright, it would be fair, and a very small burden, to require a similar gesture — inexpensive and easy — of continued interest on the part of the rights holder. This is especially true if the only consequence of failing to make that gesture would be easier use, rather than a loss of the rights. Copyright would still not be on a par with other property rights in terms of encouraging, indeed demanding, efficient use of the property, but the balance would be redressed a little.

What’s up with Antigua?

March 1, 2013 Kevin Smith, J.D.

I wrote this post several weeks ago, intending to explain the oddities of international copyright treatises that led to Antigua being poised to become a “copyright haven” that does not recognize US copyrights. Many other events intervened, but I think it is still worth posting for the sake of the explanation, which some readers might find informative. As far as I know, nothing further has occurred, and I suspect that the two governments are negotiating, after the threat from Antigua got the attention of the US.

The media and bloggers have feasted on the irony — little Caribbean island nation Antigua is going to become a copyright haven, where works from the US film and music industry can be shared freely and without constraint from copyright laws. The US has warned Antigua not to do this, but the World Trade Organization has ruled that it is an acceptable sanction to impose on the U.S. for, of all things, not allowing Americans to gamble on Antigua’s online casino sites. The whole thing, I think, requires some explanation.

The story really begins when the World Trade Organization (WTO) adopted an agreement, called TRIPs, for “Trade-Related Aspects of Intellectual Property Rights,” that made the Berne Convention binding on all members of the WTO. Prior to TRIPS, the international copyright agreement known as the Berne Convention obligated its signers to do certain things, but it did not really have any “teeth.” If nations ignored the obligations they undertook, there was little that the World Intellectual Property Organization, a U.N. body that administers Berne, could do about it. But when the copyright requirements were made part of the obligations of all members of the World Trade Organization as part of the 1994 General Agreement on Tariffs and Trade (GATT), they suddenly gained an enforcement mechanism. WTO members are allowed to retaliate against other WTO members that implement unfair trade practices, as defined by the GATT.

Trade sanctions usually involve the same goods and the same market — if country X refuses to buy cotton from country Y, country Y is entitled to impose a tariff on cotton from country X. But the WTO also allows so-called cross-retaliation, where a country can redress the wrong done to it in one market by suspending its obligations in another market.

In the Antigua/U.S. dispute, cross-retaliation has been approved by the WTO. The origin of the dispute is in the U.S. Unlawful Internet Gaming Enforcement Act from 2006, which made it illegal for off-shore gaming sites to take wagers from gamblers in the U.S. Antigua complained that this was an unfair trade restraint, and the WTO agreed, saying that Antigua was harmed to the tune of 21 million U.S. dollars. The ruling also affirmed the right of Antigua to take retaliatory steps against the U.S., including in different markets. Since intellectual property is now a market governed by the WTO through the TRIPS agreement, Antigua announced, and the WTO approved, that retaliation would take the form of suspending the recognition of U.S. IP rights in Antigua. This was an astute strategy on the part of Antigua, given how dedicated the U.S. administration is to appeasing the traditional entertainment industries. Thus it has become possible, but not certain by any means, that free Internet movie and music sites would develop on the island, which could not really be called “pirate” sites because the failure to recognize US copyrights would be sanctioned by the WTO.

The irony of the situation is fodder to many commentators. This column from a British paper notes that the idea of allowing cross-retaliation in the first place came from the U.S. And Mike Masnick from TechDirt suggests that the US entertainment industry has been “hoist by its own petard,” since one of the many means by which the so-called “copyright minimalists” have sought to ratchet up IP enforcement seems to be coming back to bite them.

For my part, I think the whole dispute illustrates what a mistake it is to treat intellectual property rules, and especially copyrights, as mere trade regulations. First and foremost, to do so ignores the underlying purpose to serve the public good that animates those rules in the U.S. and in many other nations. When these rights become pawns in the cross-retaliation games of international trade organizations, it becomes clear how complete the divorce is between copyright and its justification, which is to build an incentive for creators to create. And what seemed like a good idea to the major content industries, because treating copyright as a purely trade issue would provide greater enforcement opportunities, has turned out to be a very sharp two-edged sword.

In reality, copyrights very seldom serve their proper function as incentives for creation. Many creators are unaware of the vast period of protection their works will receive automatically and create for entirely other reasons. For the small fraction of copyright holders who do rely on copyrights to produce income, those rights are almost always transferred to intermediaries who exploit them primarily for their own benefit, so that the incentive function is curtailed. Witness how ardently the music and movie industry is fighting the “termination right” that was enacted in our copyright law to ensure that creators would have an ongoing opportunity to gain from their rights. Although support for individual authors has always been the battle cry of the publishing and entertainment industry, its role as an incentive has always been dubious. And when it becomes a chip in this poker game over trade — a bargaining position to defend online gambling, of all things — it is even more clear that concern over creativity has gone out the window. We will hear, of course, that what Antigua has threatened will be bad for artists, musicians and actors, but those folks will likely never feel any effects if Antigua becomes a “copyright haven.” Instead, this is a battle over trade policy that reveals just how cynical we have become over IP rights.

Good government in action, and inaction

February 25, 2013 Kevin Smith, J.D. 5 Comments

Governments are funny things. No matter where we fall on the “more government, less government” political spectrum. it is inevitably the case that sometimes we applauded government actions, and sometime we prefer government inaction. Last week, however, the scholarly communications community got the opportunity to admire BOTH positive action taken by the Administration and a positive decision in favor of inaction.

Let’s start with the inaction. On Friday, attorneys for the Department of Justice sent a letter to the 11th Circuit Court of Appeals, where the Georgia State copyright decision is being appealed, informing the Court that the DoJ would not be filing an amicus brief in that appeal. Recall please that the appeal is brought by the three publishers who lost pretty comprehensively in the trial court, and the DoJ had asked the 11th Circuit for an extension of time to file a “friend of the court” brief that would either support the publishers or support neither party. That generated a lot of consternation in the higher education community, and many calls for the DoJ to rethink its position. Apparently the outcry had an effect, and the Justice Department decided that it should not take sides in this dispute. It is even possible that the plaintiff publishers themselves realized that a brief supporting them from the DoJ would open up cans of worms best left closed and mobilize even greater opposition to their efforts to squeeze more money from college and university budgets. They may have asked the DoJ to stay on the sidelines. But that is pure speculation.

What is clear is that the folks at Justice decided that their original idea to get involved was a bad one. Because of the way a litigation schedule works, however, it is not too late for the DoJ to file a brief on the other side — supporting the careful analysis that the trial court judge did on the issue of fair use. But that is unlikely, I fear. Now, however, is the time for the higher education community to mobilize its own passion for its mission, and its own lawyers, to file on behalf of the defendant/appellee — Georgia State.

Then there is the action that was announced on Friday, and it could hardly have been better. The White House, after a long delay, issued a directive that instructs all federal agencies that have large research and development budgets to develop plans to make the articles that arise from such research funding publicly available within 12 months of publication. In short, the White House has recognized the success of the NIH public access mandate and has committed to providing the same benefit to taxpayers for the other research efforts that they fund. Additionally, the new directive also instructs agencies to examine data access and sharing, so it genuinely is seeking to improve the overall environment for research, and to give taxpayers a greater return on their investments.

Many readers of this blog responded to our appeal for signatures on the We the People petition that was begun last year on the White House web site. Those signers will all have received a letter from the Office of Science and Technology Policy,which explicitly portrays the new directive as a response to the opinions put forward in that petition. So congratulate yourselves, maybe even buy yourselves a drink, in celebration of the good work you did on behalf of making scientific research faster, more nimble and more widely usable.

There is lots of press coverage on this directive from the White House. Check out these stories from Science, the Wall Street Journal, and the Washington Post for more details. But here is a detail that you won’t find in any news coverage, because it is not yet decided. What repositories will be used for public access to non-NIH funded research? Unlike the NIH, most agencies do not already have repositories that can become the mandated site for deposit. And it would be a travesty, as well as a sure way to undermine compliance, if open access were left for authors to arrange with their publishers, who will want to add new fees, which would inevitably be borne, eventually, by those same taxpayers. The sensible alternative is to tell authors that they can use open access repositories at their home institutions or at other educational institutions. Agencies might also specify some standards for reliability and access that could apply to acceptable institutional repositories. This will facilitate access at a lower cost. But it will also increase the urgency for institutions to develop or improve their repositories, since those IRs will very quickly become a vital service to assist faculty authors in complying with the broader mandates that are now so clearly on the way.

The White House directive might lead some people to assume that the FASTR Act, which was introduced in both houses of Congress a couple of weeks ago, is no longer necessary. That would be a mistake. FASTR, which stands for Fair Access to Science and Technology Research and is the latest version of the bill formerly known as FRPAA, will do some things that the directive will not, or, at least, may not. FASTR, for example, directs each agency to investigate issues of reuse; although it does not mandate open licensing, it certainly sets genuine open access — including not just the right to read but also to reuse — as the ideal. Also, an act of Congress is more difficult to reverse, whereas an executive order can be countermanded by a subsequent president. So there is good reason to continue to urge our representatives in Congress to support the FASTR act. We can celebrate a very good week last week while still recognizing that we have more work, both in turning away the attack on fair use in academia and in supporting open access, ahead of us.

GSU and Sony

February 14, 2013 Kevin Smith, J.D. 5 Comments

Another day, another silly brief filed in support of the plaintiff publishers in the Georgia State copyright infringement appeal. This one comes from the American Association of University Presses (AAUP). I wish it were not the case, but I am past being shocked that university presses are so anxious to support a lawsuit against universities, and one that, if successful, would significantly increases costs for students and/or diminish the funds available to buy materials from university presses. The short-sighted thirst for more dollars from university budgets and an overall blindness to the big-picture best interests of higher education has long been the fundamental characteristic of this lawsuit.

Many of the arguments in the AAUP brief are familiar from the other briefs. It should not matter that the copying complained of was non-commercial and for educational purposes. The course pack cases (which all involved commercial intermediaries who made the copies and sold the course packs) are perfect analogies to the present situation in spite of the factual differences. The judge also erred, apparently, by inquiring into the factual character of each challenged use of an excerpt instead of recognizing that the publishers just don’t like fair use, except when they benefit from it, so factual inquiries are irrelevant. All of this we have heard before, and I am tired of writing about it.

But while reading this brief, and the press release the AAUP issued about it, it struck me that there are things we can learn about this case by making comparisons to the famous Supreme Court case of Sony v. Universal Pictures, in which the Court decided that consumers making temporary copies of television broadcasts on the “new” video recording devices then being market was fair use (and therefore did not find Sony guilty of contributory infringement for market the devices). One argument in particular made by the AAUP reminded me of Sony and the lesson we should learn from it.

We have frequently heard the complaint that the judge missed the forest for the trees in the GSU case. That is, she focused too much on the specific excerpts that were being challenged and failed to appreciate the scope of the harm that the overall practice of e-reserves would allegedly do to publishers. In the AAUP brief, this argument appears as an objection to the way Judge Evans analyzed market harm, the fourth fair use factor. The complaint is that she looked at figures for permission income for each book in question, which she found to be “negligible” in most cases, and did not look more broadly at the overall importance of permission income generally to university presses. In their press release the AAUP calls Judge Evans’ analysis “niggling.”

So now let’s consider Sony. In that case, the plaintiffs were faced with a much more massive threat of unauthorized copying. Entire works were being copied, rather than just 10% or a single chapter of each work. And the potential market harm was even greater, since the TV and movie studios were afraid that there advertising revenues would drop sharply if millions of Americans began taping their favorite shows rather than watching them when the executives and their advertisers expected them to. Surely fair use could not sanction such a massive and pervasive threat. And yet it did. The Court did not even do the level of financial analysis that Judge Evans did in the GSU case. Justice Stevens, in Sony, simply considered the overall situation — individual consumers who used the VCR to “time-shift” for more convenient viewing — and, finding it was fair use, dismissed wholesale the concern for the alleged market harm that would occur if each of those individual consumers each exercised this fair use right. If Judge Evans was niggling in her assessment of market harm, the Supreme Court was downright uninterested in Sony.

What we learn from this analysis is that fair use represents a boundary on the rights held by a copyright owner. Market harm is a factor to consider, but when a use is clearly fair use — as these uses of 10% or less of a work were found to be, even in some instances where the Judge felt that market harm factor counted against the fair use argument — the assertion that one could still have squeezed some more money out of those uses will not be heard. After all, I could make some money by charging pedestrians to walk on the sidewalk that crosses my residential property, but society has simply decided that I will not be allowed to do that; the easement for a public right of way that allows sidewalks functions as a boundary, of a sort, on my property right. And in any case, the assertion that a license fee might have been earned, even when the rights holder is not in fact collecting such a fee or depending on it, could always be used to undermine fair use; many courts have recognized this circularity and refused to let it be determinative of fair use questions.

The confusion that reigns when one is swept away in this whirlpool of circularity is nicely illustrated by this howler for the AAUP brief:

Further, one of the key reasons that permissions income is low is that some universities have failed to pay required permissions fees for their electronic coursepacks. Publishers should certainly not be penalized because of the universities’ failure to pay them the permissions to which they are entitled by law.

Neat, isn’t it? The small amount of permission income that we actually get, and its consequent minor impact on our business, should not be considered in the fair use analysis because it would be higher if it weren’t for this pesky fair use thing. We could make more money without fair use, and therefore that money should be taken into account when deciding whether or not something is fair use. A truly bizarre argument that is only possible when one fails to recognize that all property rights, including rights over intellectual property, have to have boundaries.

As these briefs have been filed, and the weakness of the plaintiffs’ arguments on appeal have been revealed, I have gained new respect for the careful and thorough nature of Judge Evans’ original decision. I do not entirely agree with her on every point, but she did her job very well. The appeal, it seems to me, is looking more and more desperate.

That reflection leads me to end this post on a different, but related, topic. In a recent article about a meeting of the the Professional and Scholarly Publishing Division of the Association of American Publishers, Blaise Simqu, who is President and CEO of Sage Publishing, one of the GSU plaintiffs, is quoted as saying this in a speech:

Publishers are, for the first time, having to care about the end user, and that’s a huge cultural shift

Libraries represent and serve a significant portion of Sage’s end users, and the statement that publishers would like to know more about us is good news. It often feels like publishers think of libraries as massive infringement factories, full of irresponsible pirates who are just waiting for a chance to digitize everything and give it away for free on the Internet. In fact, it is usually the library on a college or university campus that is teaching and advocating for responsible copyright practices. And our digitization decisions are made very carefully, partly out of respect for copyright and partly because the process of digitization and online access is costly. I think we would like very much to sit down with Mr. Simqu (I have actually had that pleasure) and his counterparts to talk about how we see our mission and why we take the positions about copyright that we do. But there is a huge obstacle in the way of such frank and open discussions, in the shape of the ongoing lawsuit against Georgia State. If Mr Simqu now realizes that he needs to care about libraries, a great first step would be to drop this appeal.

The view from the other side of the revolving door

February 13, 2013 Kevin Smith, J.D. 3 Comments

PREFACE — On Friday morning I wrote two blog posts. One, about whether libraries should stop buying materials from the publishers that are suing Georgia State, I posted right away. The other, about the amicus brief filed in that case by two former Registrars of Copyright, I saved and intended to post today. But yesterday I discovered that Mike Masnick at TechDirt had posted his own wonderful column on the same subject. I never mind being “scooped” because these are important issues and more discussion is always better than less. But in this case I realized that Mike had said quiet well everything I had planned to say. I decided to post my comments anyway in hopes of reaching an even broader audience, but interested readers should follow the link to Mike’s post first. What follows below is only for comparison or for the entertainment of the truly dedicated.

In an earlier post about the Georgia State University e-reserves case, I mentioned the unfortunate revolving door that seems to exist between the Copyright Office and other executive-branch IP advisers and the entertainment industries. Many officials who advise the government on copyright policy are former executives or lawyers for big media, which results, inevitably, in a very one-sided view of the issues.

A recent “friend of the court” brief filed in the GSU case has provided a very relevant and troubling look at what the world looks like on the other side of that revolving door. It was filed by two former Registrars of Copyright, Mary Beth Peters and Ralph Oman, in support of the publishers who are suing Georgia State, arguing that the judge in the trial court was pretty thoroughly wrong in her analysis, which found that a large majority of the excerpts challenged as potential copyright infringement were, in fact, fair use.

There is really very little in the argument made in the brief that need detain us for long. Its principal contention is that Congress never intended fair use to be used to give broad support to non-commercial educational uses. Basically, they say the court erred by giving too much weight to the non-commercial educational nature of the use that the publishers are challenging. To make this unconvincing argument, they resort to lots of arguments that concede that the law appears to say something, then assert that its apparent meaning is not really what was meant at all. They resort to legislative history to show that Congress rejected the idea of a specific exception for educational use, which is quite true, and try to claim, from that fact, that fair use cannot be seen as a broadly-inclusive exception for education. Of course, the opposite argument is more plausible, that Congress rejected the specific exception precisely because they thought fair use was the better way to accomplish the same purpose. And legislative history, as any law student knows, is only useful in statutory interpretation when the plain language of the law is ambiguous. Since five of the six paradigmatic purposes in section 107 are educational functions, including “multiple copies for classroom use,” and since the section specifically mentions “non-profit educational use” as a key to the first factor analysis, the language seems pretty unambiguous. So the desperate resort to a twisted view of the legislative history would seem to be unavailing. Likewise when they argue the the Supreme Court, in the Campbell case, required that only transformative uses be considered fair; they acknowledge that the Court explicitly said that the most obvious exception to this analysis was those “multiple copies for classroom use,” but try to argue that the Court really did not mean it.

The goal of these contortions is to assert that the only proper analogies for the GSU case are the “course pack” cases that ruled that commercial intermediaries must pay licensing fees when they make course packs at the request of faculty members and sell those course packs to students. The two former registrars want to argue, implausibly, that the distinction between that situation and a wholly non-commercial situation where there is no profit being made, no charge to students, and no commercial intermediary is irrelevant.

What is most interesting about the brief, however, is that the two former registrars, when they make the required “statement of interest” telling the court why they are approaching it to render an opinion on the issue, do not see fit to mention that one of them is a current board member of the Copyright Clearance Center, and the other a former member of that same board. The CCC, of course, is helping to fund the lawsuit and is probably the single entity that has the most to gain, financially, if the Appeals Court reversed the lower court’s decision. Presumably because the CCC is not actually a party to the case, Peters and Oman are not required, I imagine, to disclose their relationship with it. They do reveal, in a section called “Corporate Disclosure Statement,” that the costs of preparing the brief were underwritten by major publishers like Elsevier and John Wiley, but nowhere do they state that they have or have had compensated positions (I presume) on the CCC board.

This is precisely the revolving door that troubles me, and the skewed perspective represented by this brief confirms my worst fears, that the public interest gets lost in the back and forth employment between industry and the Copyright Office.

Authors' Rights, Copyright in the Classroom, Copyright Issues and Legislation

A vexing question

February 8, 2013 Kevin Smith, J.D. 4 Comments

I think it is time we talked about a difficult and sensitive issue. I have been asked the question over and over again during the past few years, and I recently saw it discussed on an electronic list. Should libraries stop buying materials from the publishers who are suing Georgia State University over electronic reserves? Numerous librarians have asked me since the case began if they could protect the environment for research and teaching by refusing to buy materials sold by Oxford University Press, Cambridge University Press and Sage Publishing. Another version of this question that I have also heard is whether or not libraries should try to avoid doing business with the Copyright Clearance Center, which is helping to finance the lawsuit, either by restricting e-reserves to portions within the trial court’s definition of fair use or by insisting on dealing directly with the publisher of the work, not the CCC.

I say this is a difficult and sensitive issue because any attempt to organize a movement along these lines raises worries about violations of anti-trust laws. I have to say immediately that I am NOT an expert on anti-trust, and I frankly do not know where the boundaries lie. I do know that organized boycotts that attempt to force prices down are problematic; anti-trust law is very concerned to protect the role of the competitive market in pricing, so organized movements to reduce prices are quite likely, I believe, to be considered “combinations in restraint of trade.” It is less clear to me what consumers can do when they object to a business practice of a company, rather than price. There have been apparently legal boycotts against retailers based on their labor relations practices; this article, for instance, refers to a call for such a boycott by a former Clinton administration cabinet secretary, who apparently did not get into trouble. Where the line is between price boycotts, which I think are likely to be illegal, and permissible boycotts over business practices, I do not know.

But there is another, more fundamental reason why I do not think libraries can or should organize over this issue. Library buying decisions are mission-driven and must be made locally. For some schools, it may be possible to decide not to buy Oxford, Cambridge and Sage titles because of the lawsuit without compromising their mission to serve teaching and research on their campuses. Other schools would find that to be an intolerable burden on their ability to facilitate education. It depends on the needs of a campus and is probably a conversation that each library should have with its own community.

I want to emphasis this again. The reason we are so disturbed by this unprecedented attack on higher education from academic publishers is precisely because it threatens to undermine our core mission. It would be a mistake to undermine that mission ourselves just because we are so angry at those publishers. So this is what I tell librarians who ask me this question: If you believe you can refuse to buy from these publishers without harming your fundamental mission, or if you have the support of your faculty, then I think you have made a courageous decision that I admire. But if you are considering a unilateral decision without consultation with the teachers, students and researchers in you own community, then I think you have more work to do.

The conversations I am advocating here could have a different effect as well. After all, this deplorable lawsuit is not a “library problem,” it is an academic problem; an issue that needs to be addressed by the higher education community. There were, remember, more faculty members called to testify at the trial in 2011 than there were librarians. And it is our faculty members who supply, for free, the content that these publishers publish and the reviewing work that assures its quality. To my knowledge there is nothing in the law that prevents faculty authors from deciding to publish in and review for different publishers instead of those who are attacking basic scholarly practices. A large group of mathematicians and others made such a pledge some time ago to withhold their scholarship and their labor from publishing giant Elsevier, a move that garnered a great deal of publicity to their complaints and made a real difference on the public policy front. I would be delighted to see librarians and faculty authors on campuses across the US have a similar conversation about how decisions about where to publish or review get made, and whether some decisions are better for the overall scholarly environment than others.

It has started already

January 25, 2013 Kevin Smith, J.D. 1 Comment

By now I hope most readers are familiar with the case of John Wiley v. Supap Kirtsaeng, which was argued before the Supreme Court last October. The case involves the doctrine of First Sale in the United States, which underlies library lending and also allows consumers to buy and sell used books, DVDs, etc. The Supreme Court is being asked to reconcile conflicting opinions from the lower Courts of Appeal about what kinds of copyrighted materials are subject to first sale — that is, can be lent or resold without the permission of the rights holder. Specifically, publisher Wiley has asked to Court to uphold the Second Circuit, which ruled that first sale only applied to copyrighted materials that were manufactured in the United States.

If you need more background on first sale and the Kirtsaeng case, check out this page of fast facts from the Library Copyright Alliance. I have also written about the case before, arguing that in the new environment created when the U.S joined international copyright treaties, interpreting first sale in light of outdated rules about where something is manufactured does not make sense. But right now I want to focus on a specific argument made by the publishers before the Court, in light of two experiences I have had in the past 24 hours.

The Library Copyright Alliance filed an excellent brief with the Supreme Court in this case, arguing that a ruling limiting first sale to works manufactured in the U.S. could have devastating effects on libraries. The Court seems to have spent a lot of time discussing this “parade of horribles,” and I hope that whatever decision is finally made by the Court, allowances are made to protect libraries. But the response from the publishers in regard to these putative threats was to simply assert that they would not happen. The law, they argued, already allows enough room for libraries to go about their business, and we publishers have no interest in disturbing the practices that have been in place for years.

These are comforting reassurances, suggesting that publishers, like most of the rest of the American population, likes libraries and wants to see them flourish. But can we really rest assured?

Yesterday one of our librarians came to me about a film we had bought. In response to a faculty request, we purchased a DVD of this film through an ordinary commercial channel. Going directly to a retail outlet in this case was the fastest way to fulfill the request, as librarians will surely understand. But somehow the film’s producer found out that our library owned a copy of this film, and they have been asserting to us that we need to buy an additional license, at three times the retail price we paid for the DVD, in order to lend the film. The argument is incorrect, of course. The copyright law allows us to lend any lawfully made copy that we acquire, without permission or a lending license. This is not the case in every country; some nations grant to the copyright holder a “public lending right” that forces libraries to pay extra fees. But no such right exists in the U.S., and first sale allows us to lend the DVD we bought. Also, there is no indication that the DVD was manufactured abroad, so even an adverse decision in Kirtsaeng would not change our situation.

Then this morning I had a conversation with a lawyer at another institution about an analogous situation. A donor to their library had given them some books, amongst which was a copy of a specialized textbook that is currently in use at the school. Subsequently, the library has been contacted by the publisher of the textbook who has told them that they are not permitted to place the copy of the book that they were given in their library. The reason given for this prohibition is apparently because they do not want copies of the book lent, and because students might make photocopies rather than each buying their own copy. The publisher further told the school that they would never sell a copy of the textbook to a library.

Publishers are free to discriminate on prices of course, and even to refuse to sell to libraries. But to do so they have to lock down channels of acquisition. We bought our film from a retail website because, as I said, it was the quickest way to fill a faculty request. Obviously the site made no attempt to determine what “kind” of customer we were, and the producer had clearly decided to use this retail outlet. The text book at the school I spoke with was a donation. The answer to the rights holder trying to restrict lending in both cases is the same — tough luck. First sale covers these situations and allows libraries (and everyone else) to lend lawfully made materials without permission.

In light of Kirtsaeng it is important to note that in neither case is there any indication that the works in question were manufactured abroad. But if the Supreme Court does decide that only materials manufactured in the U.S. are “lawfully made” for purposes of first sale, I think two things are obvious, based on these two experiences and many others like them.

First, publishers are anxious for an excuse to charge libraries a differential price to obtain books that will be lent. They already do this with journals, so the claim that they do not want to do it for books is simply incredible. And even before a final decision in Kirtsaeng, some publishers are already trying to bully libraries into paying more. As long as retail channels are available to us and first sale protects lending, those efforts will fail. But if publishers cannot lock down and segregate their distribution channels, they may be able to undermine first sale.

That brings me to the second obvious thing. If the Supreme Court does hold that first sale applies only to copyrighted works made in the U.S., publishers will have a strong incentive to move their manufacturing operations off-shore. In making its ruling in Kirtsaeng the Second Circuit admitted as much. If a publisher has its books printed or its DVDs pressed in the U.S., it will be very difficult for it to implement truly tiered pricing. But if it moves those operations overseas, it might be able to stop libraries from lending materials without a separate, expensive license. It might also be able to forbid libraries from lending certain books entirely, like textbooks. It might even be able to stop students from selling their textbooks second-hand to the next crop of students taking the course. The experiences libraries have had with e-books proves that these goals are important to publishers. So do the two experiences outlined above.

In spite of assurances made to convince the Supreme Court to rule in its favor, this “parade of horribles” is really quite likely if first sale is restricted. Indeed, I am very sure these things will be attempted in that event. Such efforts have started already.

Is the CCC having an “Instagram” moment?

December 20, 2012 Kevin Smith, J.D. 3 Comments

As many readers will know, the past few weeks have seen a couple of controversies over end user license agreements (EULAs) and Internet services. In the library world, Yankee Book Peddler, an order fulfillment service, announced that they would introduce such an end user license whenever someone logged in to their ordering database. The license terms included indemnifications and submission to the law of New Hampshire. Both of these terms are impossible for most public institutions, and there was a lot of outcry. Eventually, YBP withdrew its plan to introduce the EULA. Then, earlier this week, there was a lot of controversy when Instagram announced that its new license would gave it the right to sell photos uploaded by subscribers, even for commercial purposes like advertising. Again there was much consternation and an eventual repudiation of its earlier position from Instagram.

The use of EULAs for academic services instead of negotiating terms with each customer is especially problematic. For one thing, those licenses often contain terms that are unacceptable and, for public institutions, may be invalidated by state laws and regulations over purchasing by state entities. Worse, the EULAs are by definition required as a condition of use, meaning that the staff members who actually accept them are seldom the employees who actually have the authority to bind a university to a contract.

These considerations were in my mind when our e-reserves specialist informed this week about “new” licensing terms he had encountered when placing a request for a permission license with the Copyright Clearance Center. A two and a half page set of terms was suddenly appearing with each order confirmation, and they contained a lot of the same troubling assertions that we saw with the proposed, but never implemented, YBP license. Institutions indemnify CCC and agree to defend them against claims arising from any use outside the scope of the license. Institutions agree to the application of New York law and the jurisdiction of New York courts. Most distressing, each institution that uses the CCC agrees that that organization, which has been active in financing the legal case against Georgia State University, has the right to access and audit university records, which is not only a possible violation of our obligations under FERPA, but also seems like giving a potential adversary free pre-litigation discovery rights.

As with the proposed YBP license, several of the terms in this EULA are impossible for most public institutions, which usually cannot agree to indemnifications — because they could create an uncontrolled drain on taxpayer dollars — or submission to the laws and jurisdiction of another state. Even for private institutions, which are not forbidden by law from agreeing to such terms, the license contains things we would try to negotiate around if the CCC had engaged us at the enterprise level rather than simply imposing these terms for acceptance by employees not actually empowered to do so.

Since I first learned about these terms on Tuesday, it has become less clear to me that they are actually new. It turns out that our e-reserve employees have been clicking through an “accept the terms and conditions” box when they place orders with CCC for some time. It is likely that other campus employees, including administrative assistants for departments, have done the same thing. I simply do not know if these terms that suddenly appeared on the order confirmation are new, or just a more assertive way of making the older terms known. In asking around, I discovered that at least one state university encountered and objected to similar terms several years ago, and negotiated separately with the CCC to arrive at a different agreement that supersedes any terms agreed to at end-user level.

My immediate reaction to these terms is that many of us will want to have similar negotiations to supersede this EULA, and that all of the CCC’s public customers will have to do so. These terms might simply be invalid as a matter of state law for some public institutions, and they could be objected to by many other CCC customers on the basis that the end-users who must click through the license simply lack the authority to commit their employers to those terms.

For the record, I do not yet know what my own institution’s reaction will be; I have scheduled a conversation about the CCC terms with our Office of University Counsel. But it still seems important to share the information about this new manifestation, at least, of terms that may well be unfamiliar to those folks who are actually responsible for contracting and purchasing decisions at their institutions.

I would be interested to hear from institutions that have already attempted to negotiate directly with CCC to supersede these terms. I hope the comments to this post fill up with the news that others are way ahead of me and have acted to prevent the problems this license seems to cause.

Finally, I wonder what impact these licensing terms could have on a fair use argument, especially in light of the ruling by Judge Evans in the Georgia State case. In that ruling, the Judge held that the fourth fair use factor, impact on the market for the original, favored the publisher (and so weighed against fair use) IF a license for the digital excerpt (not simply a license for another format) was “readily available at a reasonable price” (pp. 72 – 81 of the opinion). My question is, could the licensing terms imposed by the CCC have an effect on whether or not the license is “readily available.” If a public institution, including, possibly, Georgia State, is prevented by state law from accepting terms like the ones included in each permission transaction from the CCC, can that permission really be said to be readily available? How can something be readily available if it is conditioned upon acceptance of an agreement that the institution is not allowed to accept? And if such a license cannot really be considered readily available, how dramatically does that impact the fair use analysis, especially in those cases where a publisher will not accept permission requests except through the CCC?

As I say, we are still deciding what these licensing terms, whether they are brand new or of long-standing, mean for our business with the CCC. But it seems likely that for some institutions, at least, these terms make the use of that permission service an impossibility unless they negotiate a superseding agreement. And for many of the rest of us, this added roadblock will cause us to rethink where and when we can purchase licenses, and when we must rely on fair use simply because we have no other feasible alternative.

Authors' Rights, Copyright Issues and Legislation, Scholarly Publishing

Up the revolution?

December 10, 2012 Kevin Smith, J.D. 1 Comment

Since I posted my thought experiment about how to create a revolution in two not-so-easy steps, several colleagues have sent me responses and additional material, and it is clear that further discussion is called for. That is good news, as far as I am concerned. Talking about a revolution, in the scholarly communications space, is a lot more profitable than merely complaining about the status quo.

Several commentators have suggested that the first revolutionary step I proposed, asserting institutional ownership over faculty scholarship under the work for hire doctrine and then granting back to the authors broad reuse rights, would create an outcry and be impossible to implement due to “political” opposition. The latter point may well be true — that is why this is a thought experiment — but I am not sure that in reality the proposal would create a situation that is very different from the current state of affairs for scholarship. Most academic authors actually hold their copyrights for a very short time — they transfer them to publishers nearly as soon as a work is complete and often retain next to nothing in terms of rights to reuse. In practice, the situation I proposed would be more advantageous for authors, not less; authors would hold broader rights than they do now, and the copyright would be in the hands of an entity with a vested interest in seeing the reputation of the author — that specific author rather than merely a journal title — grow.

One colleague sent me a link to an article about academic ownership of copyright that is found on the AAUP website. The article strongly asserts the need for individual ownership of academic work and asserts a “parade of horribles” that would result if institutions asserted ownership over ANY faculty work (the specific work that it mostly focuses on is syllabi). My colleague suggested that it showed how strong opposition to such an assertion of institutional ownership would be. But as I read the article, I found that it made such a strange argument that I doubted its ability to represent mainstream opinion amongst academic authors.

Consider two of the horrible examples offered as to what might result if universities forced faculty members to make just their syllabuses openly accessible (something many institutions already do, with an eye toward assisting students in selecting classes to take). The authors of the AAUP article illustrated the alleged danger of having syllabi available to the public by citing a claim made by right-wing political activist Phyllis Schafly in 2007 that allegedly blamed the mass shootings that took place on the Virginia Tech campus on a “feminist professor” from the killer’s major department whose syllabus, Schafly said, illustrated how the “mixed-up kid” might have become further “confused.” Surely this is poor argumentation — we can hardly allow nutty assertions about what takes place in college classrooms to force us into “bunker” mode, where we hide from publicity lest someone, somewhere, calls us kookie eggheads or worse. In fact, being more public about the scholarship that is pursued on our campuses ought to have the effect of countering the frequent claims made by pundits and the media alleging academic bias, indoctrination or just plain wackiness.

Another attempt to tar open access and institutional ownership with the brush of controversy comes much later in the essay, when the authors express doubts that the University of Colorado would have wanted copyright ownership in Ward Churchill’s controversial “little Eichmanns” essay. The implication is that copyright ownership somehow would make Colorado even more responsible for Churchill’s views than they would already be considered, simply as his employer. But this is not true, of course. Many different industries, employing all kinds of authors, own copyright without being responsible for the content of the writings they own. And a University is always going to be blamed or praised for the work of its faculty members, regardless of where the copyright in that work is held.

The real issue raised by this essay is academic freedom. If the University of Colorado was the copyright owner in Churchill’s essay, could they have declined to allow it to be published, or even forced alterations? Would work for hire mean that universities would have control over the content of faculty scholarship, as well as its distribution?

The first answer to this very legitimate question is that it would depend on how the work for hire assertion was managed. The contractual relationship between a university and its faculty, for example, could not only grant broad reuse rights to the authors, it could also guarantee publication of faculty-authored publications in whatever venue the faculty member stipulated, as long as the venue met tenure or promotion requirements. Articles that were not to be considered in the promotion and tenure process would not qualify as work for hire because they would be outside the scope of the employment. A provision such as this would separate scholarship, in which the institution has a significant interest and for which it provides the principle incentive, from other kinds of writing.

The second answer to the worry over academic freedom is that the current system also poses threats to faculty independence and self-governance. For over a year now, the publication contracts that faculty authors sign with journals owned by Elsevier contain provisions that condition the rights that those authors retain over their work on the nature of the policies that the faculty on a particular campus have adopted. If your faculty policies meet with Elsevier’s approval, you are granted a moderately generous reuse right. But if your campus policies are such that Elsevier disapproves of them, those rights are not granted. This intentional intrusion on the right of faculty to set policies for themselves that they believe are in their own best interest and the best interests of the academy has been met with surprisingly little outcry, perhaps because it is buried in the fine print of contracts most authors never read. But it is stark evidence that commercial interests can also pose a threat to academic freedom, especially in the digital age.

In any case, all of this concern over who owns scholarship may be unnecessary. Another commentator on my original post about two steps to revolution made the excellent point that the first step might not be necessary. If the goal is to cut out the commercial publishing interests that are making a mess of scholarly communications, that can be done simply by deciding that only articles (and books?) that are openly available and subject to article-level assessment techniques will be considered in the promotion and tenure process. No change in ownership is actually needed, and this one-step solution gets us around the (manageable, nevertheless) worry over academic freedom.

Is this one-step revolution possible? As I mentioned in the previous post, at least one university, in Liege, Belgium, has put this policy into practice. As this translation of a memo from Rector Bernard Rentier says, at Liege,

starting October 1st, 2009 only those references introduced in ORBi [the institutional repository at Liege] will be taken into consideration as the official list of publications accompanying any curriculum vitæ in all evaluation procedures ‘in house’ (designations, promotions, grant applications, etc.)

So it seems pretty clear that such a policy is possible and practical. But to be honest, it probably is very difficult to implement in a context where most open access opportunities exist only in the STEM disciplines. Faculty in the humanities, especially, are likely to feel disadvantaged by any such policy. One possible solution, of course, which is what Liege has adopted, is to make the institution’s open access repository the focus of the policy, so that articles published anywhere can be considered for promotion reviews as long as they are also in the repository. But open access, and its role in P&T, will be easier for many to accept when the options available for OA publication in the humanities begin to catch up with those in the STEM fields.

That is why the announcement made by Amherst College earlier this week of a digital, open access press being founded in the College library to focus on peer-reviewed monographs in the humanities is so exciting (there is also a story about the project from Inside Higher Ed here). Experiments that facilitate open access in the humanities are important as much psychologically as they are practically; they will help make more scholars more comfortable as they wean themselves from dependence on commercial publishers and “reader must pay” models. And they will demonstrate, I hope, that open access monographs are as viable as journals.

At the end of all this, I think I want to revise my two-step revolution. While I still think that the issue of copyright ownership deserves in-depth discussion, the two-steps that seem most important to me now are, second, that promotion and tenure processes limit themselves to consideration of openly accessible works, And, first and foremost, that colleges and universities follow the lead Amherst, “giving light to the world,” has provided by supporting new ways in which scholarship can be produced and disseminated.

Two steps to a revolution in scholarly publishing – a thought experiment

November 30, 2012 Kevin Smith, J.D. 5 Comments

During the Berlin 10 conference on Open Access, the first instance of the Berlin Conference held in Africa, some of the most compelling speeches came from those who advocated a much more radical approach to breaking the hold over academic publishing currently exercised by commercial firms. Especially from Dr. Adam Habib, the Deputy Vice-Chancellor for Research from the University of Johannesburg, the delegates heard a call for immediate and direct action, even if it provoked a fight with commercial publishers. In his opinion, at least, that would be a fight worth having, particularly for an African university.

These calls for radical solutions got me thinking about which stakeholders had the power to break open the current structures, which were called feudal and iniquitous by one speaker, and what actions they might take. The result was the following thought experiment.

First, it seems to me that only two stakeholders really have both the will and the power to radically alter the terms and conditions of scholarly publishing. One set of stakeholders are the academic authors themselves, who seem to largely recognize that the current system is grossly unfair to them and does not serve the best interests of scholarship or of scholarly authors. Nevertheless, academic authors are limited in the kinds of action they can take, both because they are not well-organized and because of their dependence on the promotion and tenure system.

That leads to the other set of stakeholders who could shake up the system – the universities themselves. Are there steps they could take that would reset the conditions for scholarly publication? I think there are, and it seems like universities, if they were so minded, could create a revolution in scholarly communications with two simple, but by no means easy, policy changes.

First, universities could alter their intellectual property policies to assert that faculty scholarship is, in fact, work made for hire. The legal argument here is simple and persuasive, that faculty work is created by regular employees within the scope of their employment. Courts have recognized this argument for years, but universities have rightly been unwilling to press the case, for fear of doing harm to relations with their faculty members. But as the scholarly publication system increasingly fails to adapt to the radical new conditions created in the digital environment, it is possible to imagine a policy change like this undertaken with the cooperation of the faculty authors themselves.

To make this work, universities could assert ownership, under work for hire rules, and at the same time grant back to faculty authors a broad license to make customary scholarly uses of their own works. This would actually be a similar situation to the one that now obtains, where authors give copyright away to publishers without compensation and receive back fairly limited licenses to use the works they created. Universities would almost certainly prove better partners in this approach to intellectual property because they could extend much broader licenses to the original authors and because their values are much more congruent with those of academic authors in the first place.

If universities owned scholarly writings as work for hire, however, they would have control over the means of publication. They would have the power, and the incentive, to refuse to have work published in commercial journals. They could give complete preference, if they wished, to open access journals and specifically to those open access journals that are run by scholarly societies and university presses. Almost overnight universities could put an end to the subscription model that worked so well for 300 years and has now become an obstacle to academic research and scholarly communications.

Of course, if universities were to cut out the commercial publishers, the second step in this revolution is obvious – the system of evaluation for academics, the standards for promotion and tenure review, would have to change. And this would also be a very good thing. The system we now have, dependent as it is on the impact factor of the journals in which articles are published and the reputations of the presses who publish books, is inefficient and under-inclusive. It assesses a work of scholarship on only one type of impact, citations in other scholarly journals, and evaluates that very limited metric at the journal level rather than article by article. Once we stop confusing what was the only thing we could measure, in the past, with what is truly important, we will see that in today’s scholarly environment we actually can do much better.

So the second policy change that universities would need to undertake to affect this revolution would be to require that all assessments be based on article-level metrics applied to openly available works. This change sounds very radical, but some institutions are already moving towards it. At the University of Liege, in Belgium, it is already the case that faculty assessment is done only for articles that are in the university’s open access repository; this was the way Liege decided to put teeth into their open access mandate. But universities could require open access and article-level evaluation measures while still supporting a variety of publication models.

And that is the final point to be made about this make-believe revolution. If universities carried it out, it would free up more money than it would cost. Once academic publication in commercial journals was halted, library collection budgets could be redirected. Instead of a long transition period during which costs would be expected to rise because both subscription models and open access based on article processing charges would have to be supported, which is what the Finch Report predicted in the U.K., this suggestion would allow for wholesale cancellation of commercial publications. The money saved would then be available to build up the infrastructure for repositories and to support APCs for gold open access publication. Authors would have a choice – they could publish in an OA journal or they could publish directly to the institution’s repository. Peer review could be preserved in a distributed model; OA journals would continue to support traditional peer review, while some of the money saved from commercial subscriptions could be redirected to a more independent, discipline-specific system of peer-review. This would provide an important role for scholarly societies, and subventions provided to support such society-run peer-review would help protect those organizations from any negative consequences of this radical re-visioning of the publication system. Societies and non-profit presses, of course, could also find support through the publication of gold OA journals and even monographs. University funds from library collection budgets would be more distributed than they are now, able to be used more efficiently to support activities genuinely central to the academic mission, and they would, I believe, be more than adequate to the task.

So that is the thought experiment that began at the University of Stellenbosch while listening to calls for radical action. I don’t know whether I think it would be a good idea to implement or not. But I believe it would be the fastest way to dramatically fix the current, broken, system of scholarly communications. There would be many obstacles to these two policy changes, and the medicine might be worse than the disease. But at the very least, thinking through this experiment in revolution has given me a better perspective on the power dynamics of the current system. In libraries we are accustomed to thinking that the huge commercial publishing firms hold all the power and that there is nothing we can do to break their stranglehold over scholarship. But upon reflection we can see that the real power over the system, which can either perpetuate it or revolutionize it, really does reside on our own campuses.

Discussions about the changing world of scholarly communications and copyright