Debating derivatives

During a recent visit to another university, I got into an interesting discussion with students about the difference, if there is one, between derivative works, the exclusive rights in which are reserved to copyright holders, and transformative fair uses.  The latter, of course, are considered “not infringement.”  The class of graphic arts students that attended my presentation was quite naturally confused about where the line between these two very different adaptations of an original work is.  I really couldn’t help them very much, but more about that in a minute.

When I got back to my office, one of my first tasks was to read the complaint in the lawsuit filed by the e-text platform company Kno against textbook publisher Cengage, alleging breach of contract.  The allegation is that Cengage has breached its contract to allow publication of content that it owns on the Kno platform, allegedly because certain features of the platform infringe Cengage’s copyrights.

Two qualifications are necessary.  First, a complaint is only one side of the story, so conclusions cannot be drawn from it.  Second, this may just be a contract dispute in which the two parties are bargaining for the best terms they can get, and litigation is simply a strategy in the negotiation.  That would be an unfortunate use of judicial resources, but it does happen.  Nevertheless, it is worth looking at the copyright issues that are raised, even if they never reach the stage of a decision on their merits.

According to Kno’s complaint, Cengage alleges that several features of the Kno platform create impermissible derivative works.  Specifically, Cengage allegedly objects to a “smart links” feature that inserts links to external educational resources into the text, to a “quiz me” feature that can create review quizzes from certain diagrams, and a “journal” feature that allows studies to record their own notes and pulls out from the text the excerpt to which the relevant notes refer.  The pedagogical value of each of these features is obvious, I think, but it is interesting to ask if they really do create derivative works.

Traditionally, derivative works are those that adapt the actual expression that is protected in a work, and usually they adapt the entire body of that expression.  Thus, a translation or an adaptation (novel to play, play to movie, etc.) are the paradigmatic examples.  Based on these criteria, it does not seem like inserting “smart links” into a text creates a derivative work, just a more useful one.  On the other hand, the “Quiz Me” feature does adapt some of the original expression in the text, but it adapts only a small portion.  Here, I think Kno could argue that this is a transformative fair use rather than a derivative work (they do raise fair use as one potential response to Cengage’s objections).

It is the “Journal” feature that seems to be most in dispute, based on how much the complaint has to say about it.   Students repeatedly tell us, of course, that one prerequisite to adopting e-texts is the ability to annotate the works, so this seems like a necessary part of any e-text platform.  It also seems like a classic fair use of the excerpts.  Insofar as the journal is just a layer over the top of the text, it hardly seems to implicate copyright at all.  And where excerpts are pulled out for the student to comment upon, that is exactly what fair use permits.  It is hardly different than if the student kept a separate notebook and copied out key phrases and passages, as I did throughout law school.  If that is fair use, and no one really disputes that it is, so, it seems to me, is the journal feature of the Kno platform (as described in the complaint).

My biggest concern about the dispute described in this complaint is the possibility that it shows us another publisher trying to disable they very possibilities that make e-books attractive to consumers because they do not understand how those features work and feel threatened by them.  E-texts specifically offer tremendous new potential for innovative learning, and ways to study a subject that work for a variety of different learning styles.  But these are possibilities only if the publishers get over their intense fear of the digital environment and their express desire to introduce “inconveniences” so that their digital products mirror the limitations of the print world.

After all this, let’s go back to the debate about derivatives versus transformative fair use.  My proposed criteria for what makes a derivative do not entirely solve the question.  Both derivatives and transformative fair uses adapt the original expression of the work in question.  In two examples above I suggest that the amount of the original work that is used may make a difference (it is, after all, one of the fair use factors).  This is helpful, I think, but probably not sufficient.  Perhaps the determinative question will be if there is market harm; courts that find transformative fair use usually remark that there is no direct market competition, and no “customary” licensing market, for the new, transformative use.   These reflections suggest, I think, a broad outline of how to make this slippery distinction, but they do not make it easy.  And they suggest that the dispute between Kno and Cengage really will turn on the terms of the license that is at the heart of the issue.

What were they thinking?

When the Chronicle of Higher Education ran this story about the relatively new intellectual property policy at the University of Louisiana, one of my colleagues reacted with the question in my title.  It is a valid thing to ask — how did the University system think this was going to go when they drafted the new policy?  The same forces that presumably led to revision of the policy in the first place — increasingly various and potentially profitable work created for the online environment — will also lead faculty authors and creators to pay more attention to IP policies.

It seems the university system has been surprised by the opposition the policy has generated, but such surprise speaks poorly of their awareness of the realities on their own campuses.  I am reminded of the surprise that content industries have expressed at the opposition to the Stop Online Piracy Act or the European dissent over ACTA.  What, exactly, did they expect?  The days when no one pays attention to such policies are past, and that is a very good thing.

The works created by faculty raise a complicated situation in a couple of ways, and need to be treated differently than works created by employees in a corporate environment.  For one thing, there is the issue of academic freedom.  Although the copyright law could well support the claim that all faculty works, even traditional scholarship like journal articles and books, are work for hire, the case would be much more complicated than the university system seems to imagine.  As I say, academic freedom would pose a unique obstacle, since courts have recognized a First Amendment interest in academic freedom.  So there is a constitutional argument could be used to counter a work for hire claim at a public university.  Also, there would be an argument over the traditional “teacher exception” that courts recognized for many years.  Although there have been no decisions definitively invoking the teaching exception since the 1976 Copyright Act took effect, it would still provide a line of defense against work for hire claims that the universities would struggle to overcome (this article by one of the scholars quoted in the article explains this ambiguous situation).

Then, of course, there are the practical problems.  Having a policy like this is sure to make it harder for the universities in the Louisiana system to recruit top faculty.  Even if individual campuses modify the policy into something wholly different than the system-wide template, which they would be wise to do, the question will always hang over recruitment, and the balance of decision-making may be tilted in some cases involving highly productive  and savvy professors.  On the university side, the mountain of paperwork they will create for themselves if they really undertake to review every contract for publication seems not to have occurred to the drafters.  But any small additional profit they could hope to make by claiming a portion of royalties is sure to be devoured by increased administrative costs.

As I read the article, I was struck by the sense that the university system was trying to create a single policy that would treated patented works and those subject to copyright in the same way.  Any superficial sense that this might seems to make is easily dispelled, however; there a good reasons to deal differently with these two varieties of intellectual property.  Copyright, for one thing, is easy and cheap to get.  It is, in fact, automatic whenever original expression in fixed in tangible form.  There is no need for the university employer to intervene to help the employee creator protect her rights.  With patents, the situation is wholly different.  Patents are difficult to get and it usually requires an investment of tens of thousands of dollars to successfully “prosecute” a patent.  And patents, when they generate a profit (which few actually do), offer much larger gains.  So creators need more help from the university to get a patent, and universities have a greater incentive to provide that assistance, than is the case with copyright.

Also, the “significant use of university resources” is really quite different with copyrighted materials than it is with patents.  Often the resources employed to create something subject to copyright are resource the university would supply in any case — a library, computers in faculty offices, art supplies for artists who both create and teach, a video camera in a dance studio, etc.  Resources used in equipping labs to pursue patentable inventions, on the other hand, are often extremely specialized and sometimes costs millions of dollars.

This does not mean that the copyrighted productions of a faculty are less important than those subject to patents; their very ubiquity testifies to how vital such works are to the tasks of teaching and research.  But the conditions of creation are so different that policies that conflate the two are seriously misguided.

One point I try to make whenever I discuss copyright ownership policies on university campuses is that such policies should distinguish between ownership of the underlying rights and uses that other parts of a scholarly community can be licensed to make.  For example, a university need not claim ownership over the design of an online course by a faculty member as long as it assures, by policy or by separate agreement, that it has a perpetual license to use that courseware.  Thus the faculty member’s academic freedom and reasonable expectation to own her own work is upheld, but the university does not have to worry about having to redesign the course if the faculty member leaves or to pay her twice for it.  The designer, of course, is also able to reuse her work at a new institution, so everyone’s needs can be met.  A careful policy on copyright ownership should be a kind of matrix that identifies types of works and groups of users who might have an interest in those various kinds of works.  Then the decision about ownership can be made at an appropriately granular level, and the use rights of those with recognized interests in each category can also be assured.

Copyright ownership policies are important, and becoming more so everyday.  Campuses that do not have such policies need to remedy that situation sooner rather than later, and before conflicts develop that will leave the decision to courts applying the default rules of the copyright law.  The policy proposed by the University of Louisiana System is a poor model and an apparently ill-considered stab at such a policy.  But if the controversy it has generated causes faculty in Louisiana and elsewhere to think hard about these issues, perhaps some good will result.

Grasping at straws

Last week, “Inside Higher Ed” ran an article about the release by the White House of all the comments submitted to the Office of Science and Technology Policy in response to their request for information about public access to federally-funded research.  I was gratified to see that they chose to quote from the comments submitted by the Duke University Libraries.  But I was also appalled when I read the quote from comments submitted by the publisher Wiley Blackwell in response to the question about appropriate embargo periods for public access.  The Wiley official wrote that “Any embargo period is a dramatic shortening of the period of copyright protection afforded all publishers.”

This statement strikes me as deliberately misleading.  Publishers are not afforded any period of copyright protection by the copyright law, anymore than plumbers or ophthalmologist are.  This kind of misinformation is intended to create the illusion that publishers’ business models are somehow favored by federal law and thus inviolate, but that is not true.  Only one group is afforded copyright protection and the term for which that protection lasts — authors (under section 201(a) of the copyright law, Title 17 of the U.S. code).  If publishers hold any rights, they hold those rights only because they are transferred to them by the authors whose works they publish.  And if those authors choose, they can transfer less than the full copyright, and for less than the full term of protection.

Increasingly the transfer of copyright to publishers in exchange for using their distribution networks seems like a very bad bargain indeed.  As the ongoing boycott of Elsevier dramatically indicates, scholarly authors are becoming much more vocal and open as they demand a better solution for distributing their works.  It has always been problematic to give away the rights under copyright for free to publishers who then sold the works at a high profit, in which authors did not share.  Now there are many other options available to authors, many of which publishers are anxiously trying to undermine.  It is very important to some publishers that authors do not come to understand the power they have based on the fact that they hold all of the rights under copyright and can leverage those rights to do what is best for them.

Statements like the one from Wiley Blackwell reflect, I think, an increasing sense of panic in the publishing community.  Disinformation is seen as one way to fight the growing realization that they may become as irrelevant in the Internet age as blacksmith and buggy whip makers became in the age of the automobile.

We see this sense of panic manifest in several ways.  When Oxford University Press tries to claim that essays written for edited volumes are “work made for hire,” they are grasping at a legal straw that cannot hold up for them.  Likewise when publishers like Elsevier and the American Chemical Society write publication contracts that try to make authors’ retention of rights, or not, dependent on the kinds of internal policies that exist on the authors’ university campuses.  Such contracts are more cries of anger and fear than legal agreements.  In all of these cases, the publishers are looking for a legal lever they can push that will stave off irrelevance.  But the law does not work that way in general, and copyright is written to benefit authors and give them control over their works, not to prop up a particular business model.

Companies that survive are those that adapt to technological change, not those that desperately try to use legal coercion to prevent the change.  The movie industry learned this when their attempt to prevent home video recording failed; they were forced to adapt, and they found new ways to flourish.

Instead of resisting public access to taxpayer-funded research and writing byzantine contract language intend to punish authors who seek to exploit their legal rights, publishers need to look at how they can provide services to authors that will be necessary and desirable in the digital environment for scholarship.  Last month I had lunch with an official of a major publisher who talked about this approach to his business and was full of creative ideas.  Unfortunately, he is still a minority voice.  But misrepresenting the state of the copyright law is not the future for the publishing industry; services for authors is the future.  It is time for publishers to stop grasping at straws, for authors to stop giving away all of their rights under copyright, and for both groups to work together to figure out what the future of scholarship is going to look like.

Fair Use ferment

There is a lot happening in fair use these days, even as we are still waiting for a decision in the Georgia State copyright infringement v. fair use case.

One of the realities of modern political campaigning is that candidates like to use popular music or other material to increase the energy and appeal of campaign events or advertisements.  And they often do so without authorization, causing some content owners to complain.  The Republican primary this year offers two examples, the comparison of which is instructive.  First, Mitt Romney ran ads using a short clip of Tom Brokow reporting, on NBC News back in 1997, about Newt Gingrich being disciplined by the House of Representatives.  NBC and Brokow complained, and the Romney camp explicitly invoked fair use as their defense.  Then on Tuesday came reports that a lawsuit has been filed against Newt Gingrich for unauthorized performances of the song “Eye of the Tiger” (the theme from Rocky III) at campaign events.  I have not yet seen any response from the Gingrich camp about the lawsuit, but I have to say I think Romney’s use is more defensible as a fair use than is Gingrich’s.

The news clip Romney used is a straightforward, factual report of an action taken by the U.S. Congress.  So the use of the news item does seem like fair use.  And Tom Brokow may be a celebrity, but his publicity right surely cannot extend to suppress news reports if they are repeated in contexts he does not like; the messenger should not be allowed that kind of control over the message, when the message is a matter of public interest.

On the other hand, Gingrich’s use of the Rocky song is just to amp up the energy at rallies and deliver a general “comeback” message.  It is not educational, transformative, or, in itself, a matter of public interest.  It is precisely the kind of use for which a license could have, and probably should have, been sought.

More relevant to fair use in educational contexts is the recent opinion from the General Counsel of the U.S. Patent and Trademark Office addressing the question of whether it is fair use for patent examiners to provide unauthorized copies of research articles to patent applicants during the examination process.  There are a lot of parallels here to the distribution of course readings to students enrolled in a particular course, so I expected an equivocal opinion.  But the USPTO finds that this practice is clearly fair use, and argues that three of the fair use factors favor that finding, while the remaining factor, amount, is neutral,  even though entire works, assuming a journal article is the entire work for fair use purposes, are at least sometimes distributed to applicants.  Even more surprising, the PTO rejects consideration of a licensing market when analyzing the fourth factor, finding that such a market for the PTO’s use is not “cognizable” (even though I am sure the CCC would be willing to sell such licenses).  This ruling could be an interesting precedent for academic cases; I hope it is brought to Judge Evans’ attention in the GSU case.  Can universities likewise argue that they too can ignore the availability of licenses when making a fair use determination about course readings?

It is worth noting that the PTO opinion puts a lot of stress on the “noncommercial, governmental purpose” of the use. I am not disputing the value of that purpose at all, but I would point out that section 107 of the Copyright Act does not mention “governmental” use as one of its exemplars of fair use.  On the other hand, five of the six exemplars — criticism, comment, teaching, research and scholarship — are clearly educational uses.  If the PTO thinks they have a good case for fair use, isn’t ours even stronger?

Last, but very far from least, is the release this past week of the Code of Best Practices in Fair Use for Academic and Research Libraries.  The Code represents a long process of consultation with librarians to determine what they think are best practices around core library functions.  It is a “practice community” document, rather than a set of negotiated guidelines.  One of the best descriptions of the Code is this one from University of Minnesota “Copyright Librarian” Nancy Sims.

I won’t repeat Nancy’s excellent points about the Code here, except to make two small comments.

First, the Code is not legal advice.  Although I was part of a group of lawyers who reviewed the drafts, we never declared that all the practices outlined were absolutely fair use or entirely without risk for the very simple reason that fair use does not work that way.  The Code is designed to facilitate careful thought about specific situations in libraries and consideration of relevant practices.  It should help libraries maintain a balanced view of how fair use works in our profession, but it is not a bright line rule or final arbiter.

Second, the eight principles should always be read with the limitations and enhancements that accompany them in the Code.  This too is a reflection of what the Code is about — deep reflection about how to responsibly provide our core services.  The librarians who participated in the development of the Code (including Nancy) provided a wonderful framework for good decision making, and it would be a disservice to them not to take the whole framework seriously.  There are no shortcuts in fair use, but there are some very helpful sign posts, including this new Code.


Why boycott Elsevier?

The snowballing petition on which scholars pledge to boycott Elsevier is gaining a good deal of attention.  There is an article in today’s Chronicle of Higher Education, and this more general article about the future of Elsevier’s business model from Forbes.  As of today the boycott pledge has over 2100 signatures.

As the Chronicle article points out, the petition lists three “charges” against Elsevier:  their extremely high prices, the practice of “bundling” so that institutions have to buy journals they do not want in order to get the ones they do and hence have less money to buy other things, and corporate support for the Research Works Act and other legislation that would threaten the free flow of information.

While I agree that all of these things are significant problems in the current scholarly communications environment, I have to say that Elsevier is not the only “sinner” guilty of these infractions, or necessarily even the most culpable among commercial publishers.  This does not mean I am particularly sympathetic to Elsevier, and I am glad to see the petition for a couple of reasons.

First, the boycott movement is coming from scholars themselves.  It is not simply a matter of radical militant librarians (some of my favorite people, btw) who are upset about high prices.  This petition represents a growing awareness amongst scholarly authors that traditional publication models not only are no longer the only option, but in fact may be bad choices for those concerned with the overall dissemination of knowledge.  It is simply becoming clearer to many scholars that the values they hold are not the same as the ones that commercial publishers are pursuing.

Second, when framed as a divergence of values it is much easier to see that the core issue in this movement is who will control the the changing course of scholarly communications and the scholarly record.  It seems less and less acceptable to trust commercial publishers with the responsibility for scholarship now that we no longer will be dependent on the printed artifacts they created.  As scholarship becomes digital, we are quite rightly seeking new models of control that serve the needs of scholars first, regardless of the business models that may thereby be left behind.

One of the reasons I do not believe in the “abolish copyright” movement is because I think the control over how a work is disseminated and used by others will continue to remain important to scholarly authors.  Copyright desperately needs reform (or else it needs more scholarly authors who use Creative Commons licenses to leverage their economic rights to protect things like attribution, which actually matter to academics) but it is not likely to become irrelevant in the digital environment.  Instead, scholars will seek new ways to use the rights that vest in them (not their publishers) to control their works in ways that best serve their own needs and the interests of their particular discipline.  Boycotting Elsevier may not bring about that revolution by itself, but it is a step toward demanding that the rights and concerns of scholarly authors themselves actually drive decisions about how scholarship is shared in the digital environment.

Who do you work for, faculty author?

In two recent blog posts, one describing the original dilemma and one his decision about it, Professor Steven Shaviro discusses his experiences trying to publish an essay in a collection that was being prepared by Oxford University Press.  He balked at the contract he was offered, and ultimately decided not to publish in the collection, over the contractual term that would have defined his essay as “a work made for hire.”  This seems like a new development in the ongoing conflict between publishers seeking ever more control over the works they are given by academics and professors who want to get proper respect and impact from their works.

There is something particularly galling for a scholar about having her article described as “work for hire.”  It implies a lack of academic freedom and even a “hired pen” approach to scholarship.  Most universities, which actually might have a strong case if they claimed faculty works as “works made for hire,” long since decided that the obvious ill-will and hassle that would attend such claims made them unpalatable.  OUP, on the other hand, does not seem to have learned the same lesson or, in fact, to even understand the law correctly.

I have to say first that I do not know how widespread this practice is, even within OUP.  This is the first time I have heard of this situation.  It may apply only to essays written for inclusion in collected, thematic volumes.  Or it may just be a test foray into a really bad idea.

By way of introduction, it is important to note that there are two ways for a work to be a work for hire.  First, it can be a work created by a regular employee within the scope of his or her employment.  That definition could likely fit faculty writings, but it has almost never been used to contest faculty ownership.  Alternatively, a work by an independent contractor — someone who is not a regular employee — can be a work for hire if two conditions are met.  First, the work must fall into one of nine categories enumerated in the law.  And second, there must be an express, written and signed agreement between the employer and the contractor “that the work shall be considered a work made for hire.”

OUP obviously hopes to take advantage of the second path to work for hire, since the first one would not apply.  A “contribution to a collective work” is one of the permissible categories for independently contracted  works made for hire.  But I think OUP has a big problem meeting the second requirement.

It is important to note also that the effect of work for hire is the same in either situation —  the employer is designated the “author” from the moment the work is created.  The person who actual puts pen to paper, as it were, has no rights at all in the work.  That fact probably explains some about why OUP would make this foolish move, and it is also part of the reason why their attempt to turn faculty writings into work for hire is likely to fail.

As to why OUP would do this, I think there are a couple of legal benefits for authors that OUP hopes to avoid having their contributors enjoy.  One would be the termination right, which allows an author or other creator to terminate a transfer of copyright after thirty-five years, regardless of the terms of the original contract.  This right, while it may seem obscure, has recently gotten attention as the legal window through which composers and performers of profitable music from the late 1970’s has just opened.  The one way to prevent an author from terminating a transfer of rights is to own the work as a work for hire, so that no transfer was ever required.  I suspect some legal beagle at OUP saw the controversies over music and thought this might be a good idea.  It is not.

The other thing that having these contributions classified as work for hire would prevent would be prior licenses.  As more faculties adopt open access policies, which usually take the form of a prior license to the institution for repository deposit, the possibility arises of an eventual contest between a prior license contained in such a policy and a later transfer of the copyright through a publication contract.  OUP may be test-driving an idea for avoiding that situation — if the faculty author is classified as a non-author by the work for hire doctrine, they would be unable to grant any prior licenses, since they never held any rights.

So why do I think this move is stupid, and doomed to fail?  Three reasons.

First, nothing is more surely designed to make faculty authors angry than to tell them they are not the authors of the scholarship they offer to publishers.  As a group, faculty authors have been pretty docile toward publishers for a long time, but foolish and tone-deaf moves by publishers have begun to stir faculty anger toward presses they once considered friends and colleagues.  If a claim like this, which denies the fundamental dignity of authorship to scholars, becomes widespread, that slow rebellion will speed up very quickly.

Second, in the work for hire battle, presses are likely to lose.  As I said above, universities could, if they choose, assert a convincing case that faculty are regular employees whose writings are created within the scope of their employment.  Were OUP really to assert its WFH claim to defeat a prior license, the institution could claim that, as the regular employer of the scholar, it was the author and so the agreement with OUP would be void as outside the ability of the faculty member to sign.

Finally, and most importantly, there are two cases in the U.S. courts that have held that, in an independent contractor situation, an agreement designating the work as a work made for hire must be signed, or at least formed (meaning that both parties understood), prior to the creation of the work.  There is an excellent discussion of those cases on the website of copyright attorney Ivan Hoffman.  By making the work for hire provision part of a submission agreement, OUP would be unable to show that such an agreement would even have been contemplated by the author, much less agreed to.  So this is a move which can only have negative consequences for OUP.  The cost in bad feeling is very high, and it cannot, I don’t think, succeed as a legal maneuver, even if OUP thinks it is worth that high cost.

Losing our focus

Today the Supreme Court issued a decision in the case of Golan v. Holder which is a significant defeat, I think, for the public domain in the United States.  Reading the opinion has made me wonder if we have really strayed from our fundamental commitments about intellectual property.

The case involved the complex and technical issue of restored copyrights in foreign works – works that were originally created and published abroad.  As part of the U.S.’s decision to join the Berne Convention and other international treaties on intellectual property, Congress enacted an amendment to the Copyright Act, now found in section 104A, that restored copyright in foreign works that had risen into the public domain in the U.S. but were still protected in their countries of origin.  The effect was to remove works from the public domain after they had already lawfully become the property of every U.S. citizen.  Several groups, including musicians, publishers and others who had relied on the ability to freely exploit these public domain works, brought a lawsuit to challenge the constitutionality of this unprecedented alteration in the terms of the copyright bargain.

Those groups lost today.  Six Justice of the Court found that the “Uruguay Round Agreements Act,” which enacted this restoration of copyrights, neither exceeded Congressional authority under the copyright and patent clause of the Constitution nor created a conflict with the guarantee of free expression found in the First Amendment.  The full decision can be found here, and there is a brief report from the Chronicle of Higher Education as well.  For me, several recent readings and discussions provided a context as I read the decision.

Last night my colleague Will Cross and I were teaching a class session on copyright for library students.  Will discussed (among other things) two aspects or principles of copyright decision making that seem relevant to today’s decision.  First was the idea that the federal courts tend to show great deference to Congress in the area of copyright.  That deference is very evident in today’s majority opinion: “This Court has no warrant to reject Congress’ rational judgment that exemplary adherence to Berne would serve the objectives of the Copyright Clause.”

The other principle Will discussed was the incentive purpose that is given as the reason, in the Constitution, for allowing Congress to enact intellectual property laws.  This purpose is pretty clearly rejected by the majority, when Justice Ginsberg writes that “Nothing in the text or history of the Copyright Clause, moreover, confines the ‘Progress of Science’ exclusively to ‘incentives for creation.’”  It is hard to see how else that clause can be read, and Justice Breyer, in his dissent, provides a compelling account of why the U.S. enacted copyright in the first place, and why it is supposed to be limited.  He goes on to note that “The statute before us, however, does not encourage anyone to produce a single new work.”

It seems clear to me, as it does to Justice Breyer, that the wording of the Constitution’s Copyright Clause was to restrain Congress and direct that laws serve a specific purpose.  The majority of the current Court, however, does not see it that way.  We really have opposing visions of copyright law at work here, and the deference to any Congressional enactment, no matter how one-sided and counter-productive to new creativity, has made the Constitutional language increasingly ineffective.  It is one of those situations where we must hope that, over time, the persuasiveness of the dissent will eventually move it to be the majority view.

I recently read an article from 1890 on “The Evolution of Copyright” by Brander Matthews.  It was written just as the Berne Convention was being formed, and its intent was to commend the new international organization to U.S. lawmakers.  Matthews is clear about how much the Berne approach, modeled on the French “natural rights” view of copyright as it is, differs from the approach taken in England and the U.S.  Clearly he hopes the U.S will change course.  For nearly a hundred years that did not happen, but perhaps now we are seeing, unfortunately in my view, the steady erosion of the instrumentalist view of copyright that has prevailed in the U.S. for some time, and is enshrined in our Constitution, in favor of a natural rights approach that favors those who already own rights even when that favoritism disadvantages those who would create new works.

To slightly change focus, however, I want to end with one note of optimism.  The past couple of weeks has seen, in my opinion, a remarkable awakening of public interest in copyright and access issues, sparked by a couple of unfortunate pieces of legislation.  There has been a lead article about open science in the New York Times, and the 24 hour shut down of Wikipedia in protest over one of these bills – the Stop Online Piracy Act — has made digital copyright a topic of national discussion.  The web site PopVox has set up a central site for comments and advocacy against the other bill, called the Research Works Act and designed to undermine efforts toward public access for publicly-funded research.  With all this attention, it is still possible to hope that public pressure, and especially concern over the functioning of the Internet, will begin to turn our national focus back toward that instrumental and incentive-based view of copyright.

An interesting experiment

The announcement from JSTOR of their new “Register & Read” program, reported here in Inside Higher Ed and here in The Chronicle of Higher Education, seems like a promising experiment.  It deserves both praise and a couple of caveats, I think.

The first caveat is that it may be a rather small experiment; only 5 of the 50 University of Chicago Press journals, for example, will be available through Register & Read.  The success of the experiment in teaching JSTOR about its potential readership that does not have subscription access may be limited if the size of the sample available is too small, or if the disciplinary focus of what can be read is not broad.

The second important caveat is that this is not an experiment in open access.  Allowing unsubscribed readers “read only” access to three articles from a limited archive every two weeks is nice, and addresses one aspect of the overall access problem.  But it leaves a great deal of that problem untouched.

For example, the Inside Higher Ed piece mentions Aaaron Swartz and his apparent attempt to hack JSTOR and download millions of articles.  Some have claimed that Swartz was attempting to collect these articles for “non-consumptive” text-mining research.  I have no idea if that is true or not, and I disapprove of his methods even if it is.  But the access JSTOR will permit through Register & Read does not begin to address the opportunity for cross-journal research into the characteristics of scholarly output that text-mining offers.  It does not even meet real research needs for academics at under-resourced institutions, since the scope and number of articles is so limited.  At best, and it is a step in the right direction, this program will support one-off research needs and “curiosity” reading.

Nevertheless, there are several things to like about this program.  Most important from my point of view is the recognition it implies of the unexpected reader.  Too many publishers and database vendors have denied for years that there is an access problem at all; that there are readers out there who would like to read articles in JSTOR and elsewhere but cannot do so because they are not affiliated with a subscribing institution.  One can just read the AAP’s recent statement of support for the Research Works Act to find such a fantastical denial.  JSTOR, however, is implicitly acknowledging those potential readers with this new program.  In fact, the Inside High Ed article actually makes reference to the “droves of unlikely visitors” directed to databases like JSTOR by Web search engines.  They are certainly out there, their presence supports most of the strongest arguments for open access, and it is good to see JSTOR acknowledge them.

More than simply acknowledging these unexpected, unsubscribed readers, JSTOR wants to know who they are.  That is the point of registering before one can read under this new program.  JSTOR will collect data to see if individual subscriptions or, one hopes, reasonably priced purchases of individual articles, are possible.  It seems to me that a key element for the future survival of the traditional publishing industry is finding realistic price points for these services; the $39.95 charge that we often encounter today is simply wishful thinking, perhaps intended by publishers to convince themselves that individual sales are impractical more than to actually open that market.  If JSTOR can gather data that will undercut this willful blindness and really begin a discussion of practical access for individuals or non-subscribing institutions, that would be welcome.

I have to note that a colleague suggested to me last week that registration might be a barrier for many people.  For myself, I hope potential users will not see it that way.  The information JSTOR will apparently seek is relatively modest I think, at least compared to what Apple and Amazon and Netflix already know about me!  And JSTOR has been a rather trustworthy partner over time for academic libraries.  What’s more, helping them learn exactly who the folks are that they are currently not serving can have very beneficial consequences.  So even though this is a very modest experiment in access for the under-resourced, I hope individuals will use it and help JSTOR better understand their future business models.

Tinkering with Article III

Article III of the United States Constitution creates the Supreme Court and provides the skeletal framework for the federal courts system, which Congress is invited to flesh out.  Section 1338 of Title 28 of the United States Code establishes that the federal district courts are to have “original jurisdiction” over all civil actions arising from the copyright law, and in section 301 the Copyright Act explicitly preempts state laws regarding equivalent rights.

At least some of this structure would need to change if the Copyright Office goes forward with a proposal to create a kind of small claims court system to adjudicate copyright infringement cases.  In 2006 the Copyright office first created a report raising this possibility, and it is currently seeking public comments about the feasibility of suggesting such a move to Congress.

The origin of the suggestion is the concern that it has become so expensive to pursue a claim in the federal courts.  Access to the courts for those of limited means (which of us isn’t?) is an ongoing issue, and the Copyright Office is to be commended for taking on this difficult problem.  But the report on which the public is invited to comment is a very strange document; a model of equivocation and “yes, but” statements.

The most striking thing about the report, which seems to have been a sidebar to the 2006 study of Orphan Works, is how completely it represents the point of view of rights holders and gives scant attention to the concerns of potential defendants and to the public interest.  Photographers especially, it seems, complained that the federal courts were too costly, and the report seems to adopt their arguments wholesale, and then pauses occasionally to note qualifications and objections to those arguments.

The most obvious example of this qualified one-sidedness is found in two paragraphs on the second page.  In the first, the Copyright Office says that it “expresses no definitive view on the extent to which the current system hinders the ability of authors and copyright holders to pursue small infringement claims.”  But it immediately goes to assert that it is “clear” that there are “serious questions about the effectiveness of the current system.”  I have no problem with that at all; it is probably correct.  Where I do have a problem is in the next paragraph, about defendants:

Some have also asserted that the existing system for adjudication of copyright infringement claims can in some cases be too burdensome for defendants who are accused of infringement. While it is not difficult to imagine that a wealthy plaintiff in a copyright infringement suit could make the litigation very costly for a defendant of modest means, the Office is not aware whether this has in fact been a significant problem.

Really?  The Office is not aware of a problem for defendants with the high cost of defending an accusation of infringement?  I wonder where they have been.  Surely the RIAA tactic of sending out “settlement letters” asking for a few thousand dollars from accused file-sharers is premised on the idea that many people will be too frightened or too poor to defend themselves in the federal courts.  And the company Righthaven, which seems to be in its death throes, built a business model on suing small bloggers and the like in the obvious expectation that most of them would not have the means to defend themselves.

In fairness, the Copyright Office report does note what seems to me to be an important argument against a small claims system.  The Copyright Act already has built-in the answer for plaintiffs who are intimidated by costs.  The statutory damages, which are excessively high (up to $150,000 per act of infringement), clearly are intended to help plaintiffs overcome the expense of litigation, especially since they obviate the necessity of proving actual damages.  Also, the Copyright Act explicitly allows the prevailing party to ask the court to assess attorney’s fees and costs to the other side.  While the Office notes that these facts might make a new system unnecessary even for plaintiffs with small claims, it again fails to address the question from the other side, that of the defendant.

If there were a small claims court system (state courts, or an entirely new federal tribunal?), would it be empowered to award the same level of statutory damages?  If so, the system would merely provide potential plaintiffs with a cheaper weapon for intimidating defendants into settling early to avoid a grotesquely large potential loss.  Only if statutory damages were reduced or eliminated at the small claims level, and if potential awards of attorney’s fees were capped, could the system be equitable for both potential plaintiffs and defendants.

Perhaps the most troublesome aspect of implementing a small claims system for copyright infringement suits is the issue of how fair use would be handled.  The artists’ blog linked above raises this question, since small artists are often on both sides of copyright complaints.  Fair use, they note, is very fact specific and depends on both a minute analysis of the particular circumstances and a thorough knowledge of judicial precedent, which is where courts learn how to understand a situation through the prism of the fair use factors.  If copyright infringement claims were heard by a small claims system, it is doubtful that the judges would have the needed expertise, or the resources to obtain it.  My biggest fear out of such a system is that it would be even harder than it now is to convince a tribunal that fair use is a central aspect of the copyright scheme that needs serious consideration and not merely a defense to be examined and dismissed in a cursory fashion (as already happens too often).

I am not convinced that a small claims system for copyright is necessary, but I am not firmly against such a system either.  Most important, it seems to me, is being certain that the judicial structures we put in place do not intensify the chilling effects on socially beneficial uses that are already one of copyright’s biggest problems.

Breaking technology

In the past few weeks I have seen several news reports and other actions that seem to form a pattern, where the traditional publishing industry has set out to break digital technologies in order to preserve their traditional business models.

Of course, the most radical effort to break the Internet so that it does not threaten the legacy content industries is the Stop Online Piracy Act, about which much has been written.  I was disheartened by the plausible suggestion that the decision to suspend the House’s hearings on SOPA last year and renew a push for it in 2012 was not due to real objections but was merely a ploy to solicit more donations from the movie and recording industries. Unfortunately, this is often the way the legislative “sausage-making” process works.  But I want to look at some other attempts to hobble digital technologies that strike closer to the publishing that is the most common form of dissemination on our campuses.

On Christmas Day the New York Times ran this story about the “tug of war” between publishers and libraries over e-books.  The writer is very sympathetic to publishers’ efforts to maintain exactly the revenue streams they have been accustomed to in the pre-digital era, but what struck me most is the language used.  Repeatedly the article talks about “inconvenience” and “friction,” stressing that “borrowing an e-book… has been too easy.”  As the author says “to keep their overall revenue from taking a hit… publishers need to reintroduce more inconvenience for the borrower.”  This librarian commentator makes the key point: it isn’t that the technology does not work, but that publishers do not want it to work as well as it does.  They want to break the technology that is available, so that user experiences are less seamless.  They only see a role for themselves if they can offer assistance overcoming inconveniences that they have introduced in the first place!  And perhaps they are right about that.

Another example of this failure to do what digital technologies allows you to do can be found in this article from the Chronicle of Higher Education, which reports on a study about textbook choices that found that e-textbooks offered little savings.  The problem, the authors acknowledge, is not the technology but “publisher pricing decisions.”  It seems we cannot really take advantage of the benefits offered by these new technologies until we free ourselves of ties to publishers who cannot imagine any other way of doing business than the way, and at the price, that it always has been done.

Last week Bloomberg News reported on a lawsuit brought by HarperCollins to prevent the publication of an apparently unauthorized e-version of a popular children’s book.  The suit will turn on the language of the contract between the author and HarperCollins, about which I cannot comment.  But it is striking to me that the publisher is not complaining about competition with their own e-version of the book because they do not offer one.  They simply want to stop anyone else from creating an e-book unless and until they figure it out (presumably when they decide how to introduce sufficient inconvenience).  They may have the legal right to do that, but they are clearly not interested in responding to consumer demand.  Indeed, it seems that the author of the book is interested in providing a digital version, but the publisher has told her that they have that right and she does not.  The lesson is that authors who do not want their readers to be burdened with artificial inconvenience should negotiate more carefully with their publishers.  It may often be in the best interests of authors to withhold the right to offer an electronic version of the work in an initial publication agreement and consider seeking another platform or publisher, one perhaps less wedded to inconvenience, for the e-book version.

This, of course, is a process increasingly familiar to academic authors.  For years scholarly authors of journal articles have engaged in a tug-of-war with publishers over how best to exploit digital technology to serve the best interests of scholars and scholarship, rather than just the profit motives of publishers.  Once again the publishing community has resorted to legislative attempts to try to dictate what scholarly authors can and cannot do with their own copyrights.  Over the holidays the “Copyright in Research Works act,” a re-tread from the last legislative session, was introduced again.  The bill would reverse public access programs like that of the National Institute of Health and make other such programs illegal, essentially telling taxpayers that they have to pay twice to see the research they have funded.  The publishers are clearly asking Congress to break the Internet legislatively so that their toll-access sites are the only source for scholarly information.

What I find most astonishing is the immediate expression of support for the bill that came from the Association of American Publishers, and this sentence in particular:

The Research Works Act will prohibit federal agencies from unauthorized free public dissemination of journal articles that report on research which, to some degree, has been federally-funded but is produced and published by private sector publishers receiving no such funding.

I am stunned by the audacity of the claim that research articles are “produced” by private sector publishers!  I think the producers of these works are sitting at desks and labs scattered around my campus, and thousands of other college and university campuses.  They are not paid by publishers either to do the research or to write their articles.  And I do not believe that the journals that publish those articles actually add any copyrightable expression to what has been written and revised by our faculty members.  If they do, the scholarly authors have a right to complain, since such additions without the author’s cooperation would compromise the integrity of the scholarly record.

We cannot say it often enough.  The intellectual work for scholarly publications is done by academics, not publishers.  They own the copyright in those works up until they are asked to transfer it to the publisher as a condition of publication. And if publishers persist in interfering with that copyright ownership and insisting that scholars cannot take advantage of the tremendous opportunities that digital technologies offer, the solution is to stop giving them those copyrights.

Discussions about the changing world of scholarly communications and copyright