Getting light right

The only thing I know about the speed of light is that it comes too early in the morning (which apparently is a quip from American disc jockey Danny Neaverth).  I used to think that I also knew that nothing could travel faster than the speed of light, but my store of certainties has been reduced by one.  There is now considerable debate about whether or not an experiment performed a CERN has shown that a subatomic particle can travel faster than 186,282 miles per second.  The variation from that speed is quite small, and it is only one experiment, but it is so significant that it has received a lot of press.  There are New York Times stories about the article here and here, for example.

One noteworthy feature about this spate of attention and speculation is that the article itself is available for anyone to read, on the repository for high energy physics called Arxiv.  Having the article available for open access is often important for researchers in this fast-moving field, since advances and discussions now typically move faster than the speed of traditional publications would allow (although not as fast as neutrinos).  But I want to stop a moment and consider what open access means for the rest of us, at least around a high-profile but highly technical article like this one.

One of the things open access advocates hear a lot, both from authors and from publishers, is that many articles are just too technical, and most people cannot understand them.  The handful who can, this argument goes, will see the article published in the expensive flagship journal in the field, and that is all that matters.

Putting aside the questionable assumption about whether everyone capable of understanding a specialized scientific article really does have access to all the journals — my experience as a librarian makes me think this is false — what value is there in making articles available to those who would struggle to understand them?  One set of advantages can be seen clearly when an article suddenly becomes the subject of media reports, as happened here.

First, when an article is available in open access, reporters are more likely to find the research and write about it.  And faculty researchers here at Duke have told me that the reporting about research made available openly tends to be more accurate, since reporters can check what they say against the original.  News like “breaking” the speed of light would be reported no matter what, but other research breakthroughs, often reported on our institutional websites, are more likely to get into the mainstream press, and to be well described, if the articles are freely available.

Second, when reporters are looking for sources to comment on a published experiment or discovery, they often turn to other scientists.  When they do, the ease with which those experts (who really may not be a institutions that subscribe to everything, since no institution does) can see the original work improves the quality of their comments.  In cases like the speeding neutrinos, pretty much everyone agrees that the results will need to be confirmed on refuted by many more experiments.  Replication of the result will be a long and expensive process, limited to a very few, but even those who cannot actually work with a particle accelerator will be in a better position to understand the results, contribute insights and help interpret nuances about what is discovered, especially if the process continues to occur in the open.

Finally, even for laypeople like me there is an advantage to actually seeing the paper.  I admit that I struggled just to comprehend the abstract.  Yet it is salutary, I think for folks like me to see how real science is done and reported.  Looking at the original paper is an antidote to all the “Einstein was wrong” journalism; those who click through to the original see modest claims being made very carefully, and scientists who are open to others proving them wrong.  The calm, methodical and qualified nature of the claims provides an important balance and a healthy glimpse of what science should really look like.

We often hear about “junk science,” and it is not clear how well the news media determines the quality of a scientific claim.  Too often it seems based on who is being the loudest or make the most attention-grabbing claim.  By having their work available in open access venues, scientists can counteract that tendency just a bit.  Besides, if valid science is all behind subscription barriers, we have no cause to complain that the media primarily reports on the junk, or at least fails to make judgments about quality.  Far better for the scientists and for society if the valid work is also out there in the marketplace of ideas, with an equal claim on the attention and critical judgment of the public.


An open letter to J.R. Salamanca

Dear Mr. Salamanca,

Earlier this week, only days after it filed its ill-advised lawsuit against the HathiTrust and five of Hathi’s partner universities, the Authors Guild gleefully announced that they had been able to find, with relative ease, the author of one of the books on Hathi’s initial list of orphan works.  You, of course, were that author, and the work in question was your 1958 novel The Lost Country.

It is not a comfortable position to be a pawn in a game of “gotcha,” especially when it involves litigation.  What I want to say to you is the same thing I say to faculty authors at the institution where I work: “Consider carefully where your own best interests lie, and manage your copyright to serve those interests.”

In one sense, your situation is quite unusual.  Apparently you still hold the rights in The Lost Country, perhaps because you recovered them from your publisher based on a contractual arrangement.  This was unusual in the 1950’s, when federal copyright did not attach to a work until it had been published, and it is, unfortunately, still not the case for many authors, particularly those who write academic books.  For many of them, rights must be surrendered in order to have a work published in the first place.  So you are ahead of the game in that sense; you have a chance to really manage your copyright for your own benefit.  Congratulations.

It seems clear that your book was included on the list of potential orphans in error.  Of course, inclusion on that list was precisely intended to catch such situations, so the system worked as it should.  Your book has not been included in any distribution of orphan works.  Now you have a chance to decide, however, if you would like to allow a more open distribution.

I am sure I do not have to tell you that libraries, including those that intend to participate in the Hathi Orphan Works project, are not your enemies.  We are in the business of helping authors find readers, which hardly seems like it should be an objectionable activity.  So let’s think for a minute about The Lost Country and what might be best for it and for you.

The sad fact is that The Lost Country has become a pretty obscure work. shows only two used copies available for sale.  In the Duke Libraries, the last transaction record we have for your novel is in 2004, when our copy was sent to high-density storage.  It has not left the facility once since then, and our system shows no circulations in the prior decade, either.   One of the famous “laws” of librarianship is that every book should have its readers, and the current system, I am afraid, is failing to connect your book to new readers.

It has to be said that the Authors Guild is not going to help you in this regard.  They are not going to publish a new edition of The Lost Country for you, nor will they pay you any royalties on the out-of-print edition.  The Authors Guild simply does not have the ability to create a new market for your book.  Even if they were to succeed in a grand strategy to impose a licensing scheme for orphan works in general, there is no reason to believe that you would profit from it. With such an obscure work, potential users who had to pay a fee would probably just skip the planned use.

Where you can find help for this problem is with the HathiTrust.  Their goal, and the goal of the libraries that plan to participate in the orphan works project, is to make it easier for readers to find works like your novel, which might otherwise languish on shelves or in large warehouses of books.  Digital access to low-use titles through our catalogs will encourage users to discover resources, for study and for entertainment, that they might not have bothered with before.

In your own case, let’s suppose a Duke student has recently seen the Elvis Presley movie made from The Lost Country.  Intrigued, she “Googles” the book and finds that there is a copy held by our library.  But to get it she has to send a request, wait 24 hours or so, then pick it up at one of the library service desks.  Years of experience with college students suggests to me that most just won’t bother; they will move on to something newer and easier to access.  On the other hand, if  that same record that she found with her Google search also contained a link to the book through Hathi, she might read a chapter or two.  She might get hooked.  You will have found a reader.

This is what libraries do; such serendipitous discovery is what we hope for everyday, and it is why we signed up with the HathiTrust.  What Hathi offers to you is the opportunity to continue to find readers for the book on which you worked so hard.

Your “case,” if I can call it that, illustrates two things.  First, that the process of identifying orphan works in the Hathi corpus needs to be tested and refined, which Hathi is committed to doing.  Second, in the rare instance like yours where the process actually turns up an author who does still own copyright, the rational course for that author is to embrace the mission of Hathi and of libraries everywhere of connecting books with readers, and to exercise their right to make their book(s) fully viewable.  Please believe me, that is a much better option than having a book live out its term of copyright on hard-to-access shelves in high-density storage.

Is it all about the Orphans?

In my post about the Author Guild’s lawsuit against HathiTrust and some of its university partners, I promise to consider further the question of why the complaint was so focused on orphan works.  Why the plaintiffs put so much emphasis there, since presumably they cannot show that they or the members they represent actually hold any copyrights in those specific works?  In a story for Inside Higher ed., a spokesperson for the Authors Guild maintains that the suit really isn’t about orphan works; nevertheless, I continue to think that that is exactly what it is about. Jennifer Howard from the Chronicle of Higher Education gets it right, I think, when she writes that “The plaintiffs seek to take control of those files out of the hands of libraries until Congress establishes guidelines for the use of digital libraries and orphan works.” The lawsuit seems most understandable, I maintain, as part of a strategy to dictate the terms by which the orphan works problem is “solved,” and we need to look closely at what that strategy might involve.

In his excellent post about the lawsuit, Professor James Grimmelmann makes two comments about the Authors Guild’s “grand strategy” with which I respectfully disagree.  He says that the AG has switched positions and now opposes action on orphan works, and he suggests that the effect of the lawsuit will be to discourage Congress from getting into the orphan works arena at all.  On the contrary, I believe that this is part of a campaign to get Congress to address orphan works by setting up a licensing scheme, similar to the one Canada uses, in which each use of an orphan work must be licensed and a royalty paid.  I think the hope is to collect royalties on using orphans that will ultimately be distributed to authors (or publishers?) of similar “categories” of work.  With the failure of the Google Books Settlement, I think this is the next attempt by the content industries to sell what they do not own on behalf of parties they cannot identify, and then keep the money.

One of the first bits of evidence I cite for this opinion is this short report about comments sent to the European Union, as it considers its own orphan works directive, from the International Federation of Reproduction Rights Organizations.  IFFRO is the trade group for collective rights management groups, including US groups like ASCAP and the Copyright Clearance Center.  In their comments, they tell the EU that “Orphan works should be administered through collective management and licensing,” the rules and conditions of which should be left in the hands of those who publish similar “categories” of works.  IFRRO does not address where the money would go, but the Canadian model for orphan works gives us a clue; when royalties are paid to collecting societies in Canada, they are normally held for five years (in case a rights holder surfaces) and then become part of the regular funds of the rights organization, presumably for distribution.

What IFRRO is essentially asking the EU for is the same kind of license to exploit orphan works that Google was hoping to get in its book project settlement.  That settlement seems to be completely dead, but the prospect of monetizing orphan works put dollar signs in the eyes of the Authors Guild.  Now I think the AG is hoping to clear the way for Congress to establish a scheme for collecting money from users of orphan works, probably using the Copyright Clearance Center, and distributing it eventually to their members.  They want to make sure that no plausible mode of using orphan works, especially a non-commercial one, gets any traction, so that their lobbyists can go to Congress and say “only you can address this problem, and we have a plan all ready for you.”

It’s really worth looking at the Canadian model, which is described in this excellent article by De Beers and Bouchard on “Canada’s ‘Orphan Works’ Regime: Unlocatable copyright owners and the Copyright Board,” The Canadian law, we should note, authorizes an administrative board, not a collective rights organization, to grant licenses upon application for particular uses.  But the royalties it orders are often determined by and paid to the collective rights groups, and I strongly suspect that it is a variation on this broad scheme that the Authors Guild would like to push.

In addition to its contextualized discussion of how the Canadian scheme works, the article’s authors raise quite a few really important and challenging considerations about the specifics of any orphan works legislation.  For example, how do orphan works schema address the special problems posed by “moral rights,” which are often held by a party different than the copyright (economic rights) holder?  Also, exactly when can an orphan works license be issued?  For exactly which works is licensing permitted, and what kinds of uses will be licensed?

The Canadian Copyright Board always requires the payment of royalties for orphan works licenses.  As we look at their system, it is important to ask how these payments fit in to the incentive scheme for new creation that copyright is intended to create.  Are these payments, at least quite often, simply a tax on users that do not serve any role in encouraging new works?  If a similar model is proposed in the US by industry groups, especially involving the collective rights groups, we would have an even greater problem of “rent seeking.”

The most significant issue raised by the article is the relationship between licensed uses and those that benefit from a statutory exemption.  In the US, that raises the issue of how a licensing scheme for orphans would fit in with fair use, which is exactly the issue the Authors Guild tries to duck by not addressing fair use in its complaint against Hathi. If we approached orphan works by creating a licensing regime, would a license be available even if a use was arguably fair use?  Who would decide?  And would the license thereby provide a protection against liability for a negative judgment on the fair use case, thus usurping the role of the federal courts?

As I read about the standards by which the Canadian licensing board makes it decisions about which uses to license and how to set royalties, I realized they were using criteria very similar to the fair use analysis.  The good faith of the user, the commercial or non-commercial nature of the use and the character of the original work all come into play.  This suggests to me that fair use — which is found in US law but not in Canada, of course — already accomplishes a lot of the work that a licensing scheme for orphan works might be expected to do, and that fair use is really the best model for dealing with orphans in the U.S.

Really the choice between a license model and fair use is an instance of the proverbial choice between security and liberty.  By suing over a fair use claim about orphan works, the Authors Guild, I think, is hoping to force libraries to opt for security, and therefore pay for licenses.

The details, problems, and dangers of Canada’s solution to orphan works led me to conclude, even before this new lawsuit made me suspect that a similar, but privately administered, system was going to be pushed in the US, that a better solution under US law would lie in the remission of potential damages (which Congress considered several years ago).  In short, we should treat orphan works as simply a species of fair use and define a protection against liability for good faith users of orphan works that is similar to that which we already grant to employees of educational institutions (under 17 U.S. Code section 504(c)(2)) who make good faith determinations about fair use.  That is precisely the solution Hathi makes plausible, and that the Authors Guild wants desperately to suppress  lest Congress figure out that a fair use solution could really works.

Stop the Internet, we want to get off!

It seems I spoke too soon.  Only hours after I posted on this site a comment about why the HathiTrust orphan works project should not be controversial came news that the US Authors Guild, joined by similar associations in two other countries and eight individual authors, has filed suit to enjoin Hathi from proceeding with the project and seeking to impound all seven million digital volumes held by Hathi that may still be protected by copyright.  Professor James Grimmelmann of New York Law School declares that “the Orphan Wars are upon us.”

Let’s start by being very clear about what these plaintiffs are asking.  In their complaint they list 62 works to which named plaintiffs hold copyright and also assert “associational standing” based on their representation of other unnamed copyright holders in unnamed works.  To protect those few works from distribution by Hathi, which as I far as I can tell is not actually imminent, the plaintiffs ask to impound and remove from Hathi 7 million files.  AG President Scott Turow calls Hathi “an intolerable digital risk.”  To me the real risk is that the foolish actions of Turow and his handful of followers (all but one of the plaintiffs are officers of one of the associations) will threaten the tremendous cultural potential of Hathi and similar projects simply because they are frightened of the Internet and have not yet figured out how to make money off of it.

Professor Grimmelmann has an excellent analysis of the complaint at the link above, and Kenny Crews of Columbia offers his comments here.

My own reading of the initial complaint — I doubt it is the final version — suggests a notable absence of logical argument.  The press release the plaintiffs issued yesterday was full of protests and anguish, but did little to state a real case against Hathi.  As it turns out, the complaint itself is not much clearer.

As Grimmelmann points out, one issue for the association will be standing to sue.  Assuming that plaintiffs hold valid copyrights in some works that were digitized by Google and are held in the HathiTrust, they claim to have standing to object to the digitization of their works — but Google is not named as a defendant — and to the distribution of digital files back to the universities and into the HathiTrust.  By itself, this would not, in my opinion, support an injunction; there is no sense of imminent harm.  So then the complaint makes a dramatic turn and addresses the orphan works project, claiming that it is an illegal distribution.  But they provide no evidence that any of the plaintiffs actually hold any rights in those works identified as orphans or that they represent anyone who does.  So if the whole argument is needed to justify the injunction being sought, there may be a question of whether any of these plaintiffs have standing to seek it.  They need to show an immediate prospect of particularized harm, and I don’t think they can do it.

Another place where logic fails in the complaint is when the plaintiffs try to explain why the digitization and preservation is illegal.  Early on in the document they note that “The Universities have publicly defended their unauthorized digitization activities by claiming their conduct benefits society and is permissible under the fair use doctrine set forth in section 107 of the United States Copyright Act.”   They then declare that “[t]his position is without legal support” and immediately turn to a discussion of section 108 of the copyright act.  They never again mention fair use or address it as a potential defense, although they dedicate three pages later on to an elaborate, and irrelevant, discussion of section 108, which is the section that lays out specific exceptions for library preservation and for interlibrary loan.

The argument here seems to be that section 108 fully defines what libraries can do with copyrighted work and, if it is not permitted under 108 or authorized by the rights holder it is therefore infringing.  But this is wrong; the argument is defeated by a single short phrase found in section 108 itself, at subsection (f)(4), where the law states that “Nothing in this section… in any way affects the right of fair use as provided by section 107.”  Libraries still can rely on fair use, and it is interesting that the text of the law itself calls fair use a “right,” not merely a defense.  Like it or not, the plaintiffs’ claim will have to withstand an assertion of fair use, and if they cannot address that fair use claim they are doomed, one hopes, to failure.

The fact is that the Authors Guild has not been doing very well on the litigation front recently.  Their attempt to sue Google and then settle with it in a way that would allow the monetization of orphan works has failed, and the case is currently in limbo.  It is interesting to speculate on whether or not this filing is intended in any way to influence the outcome of that case; perhaps they hope to persuade Judge Chin in that case that Google and its partners are not reliable actors to deal with the orphan works problem.  The Authors Guild was also recently dealt a setback in its long-standing Tasini litigation when another judge refused to certify a class for class action status.  Instead of becoming litigation-shy, it appears that the Authors Guild wants to raise the stakes.  At least they have not tried to bring this case as a class action as well.

The reference to how we might solve the orphan works problem in this country and elsewhere gives us a clue, I think, to what is behind this lawsuit and why it takes such an odd and twisted form.  I think what is really going on here is an attempt to forestall ANY exploitation of orphan works until and unless the industry lobbyists can convince Congress to pass legislation that allows them to make money from those works. The plaintiffs never address the defendants’ claim, to which they refer, that Hathi provides a social benefit, and I think that the point of the lawsuit is to make sure that they get paid before anyone is able to take advantage of that benefit.  I will have more to say about this possibility in my next post.

Why is adopting orphans controversial?

Ever since Duke, along with Cornell, Emory and Johns Hopkins Universities, announced that we would be participants in the Hathi Trust’s Orphan Works project, I have been talking with a number of different reporters, trying to explain what the project is and why we are doing it.  I was rather pleased to see that the best article written by reporters with whom I spoke was in the Duke Chronicle, our student-run newspaper.

One of the most difficult points to explain to reporters with no background in the minutia of copyright law (and why should they have one?)  is exactly what an orphan work is.  Several interviewers have simply seen them as part of the general class of e-books, and I have had to take pains to dissect that broad concept for them.

Basically, “e-book” can refer to commercial products sold or licensed under the authority of the rights holders — this is the largest category of e-books in most library collections — and to digitized public domain works such as those included in Project Gutenberg (whose founder Michael Hart died recently).  In between are orphan works, a third category of works defined, in some sense, by the fact that they do not fit into either of the other two.  Orphan works, whether in print or digitized, are books that are still protected by copyright (not public domain) and yet for which no rights holder can be located or permission for use obtained.  That’s really the key point about orphan works — there is no one to ask for permission, no one who can be found who is commercializing the work or even has the right to do so.  The options for these digital books is either total obscurity, or access under fair use; there is no third alternative.

The rights holders for orphan works probably fall into two categories.  The first is publishing firms that have gone out of business and for which there is no record of a “successor in interest.”  The other are the heirs of individual rights holder who have died without explicitly directing the disposition of their intellectual property.  Identifying a work as an orphan involves a reasonably diligent search to determine if a specific work still has an identifiable rights holder or if, in the absence of other evidence, it falls into these “orphaned” categories.

Making the digital files of orphan works held in Hathi Trust available to restricted scholarly audiences should really be a no-brainer.  The absence of any market that can be harmed, combined with the limited educational and research use, makes the fair use case quite easy.  So I was curious to see that one short article about the project called it “controversial,” while this online forum invited readers to vote on whether or not it is “within copyright law.”  I would very much like to know where the controversy is, and what reasons those who have voted “no” in the poll have for their opinion.  I suspect there are some significant misunderstandings about the project behind those votes.

Whatever controversy there may be apparently exists because of a single quote, printed in the Chronicle of Higher Education when Hathi and the University of Michigan first announced the project, which called the project illegal and the product of “elfin whimsy.” It was the kind of ill-conceived remark that I think anyone who talks to reporters dreads blurting out without proper reflection.  But it is important to understand that there is no whimsy at all behind the project or the decisions made to participate.  All of the participants have discussed the situation with both campus lawyers and academic administrators.  Each, to my certain knowledge, has made a careful and responsible decision.  On each campus, I believe, the same fundamental realization has dawned — this project is not a risk, either to the schools or to the legitimate interests of publishers, nor the product of a radical interpretation of the law.  It is exactly the core of what fair use was developed to accomplish.

Reform is in the air

Suddenly lots of people seem to be talking about copyright reform proposals.  One way to look at this is as an indication that the flaws in our current system are becoming increasingly obvious.  Several commentators have noticed that the passage of patent reform bills in both houses of Congress (whatever you think of the merits of those bills) seems to coincide with a more general public recognition (including in an hour-long episode of This American Life) that our patent system is so broken as to stifle the innovation it is supposed to encourage.

There is a sense of the same phenomenon occurring in Britain as it moves along toward copyright reform legislation.The British government’s response to the Hargreaves Report indicated a desire to get copyright reform moving, and this report from IP Watch suggests that the reform effort is gaining momentum.  Again, not all of the details are clear, and what we do know is mixed.  The addition of a private copying right, which would decriminalize ripping a CD to listen on an iPod or scanning a journal article to read later, is a good start.  If it is combined with a flexible exception similar to fair use in the US, the reform effort might really make an economic difference for Britain.

But most of the time, reform proposals are not as sweeping as what may be taking place in Britain; they tend to be responses to particular problems and are shaped to solve the perceived difficulty.  I want to look at three such proposals in the United States.

First, Rep. John Conyers got some press when he called for reform that would clarify the situation for musicians and other artists who would like to exercise their “termination right”  and recover rights to works they created.  The termination right kicks in after 35 years to allow the artists to void copyright transfers and exclusive licenses, so some big-selling hits from the late 70s, which are still quite profitable, are at issue.  Artists would like to reclaim the rights and get a larger share of the profit, which, after all, is how copyright is supposed to work.  The recording industry has responded by saying that these works are “work made for hire” and not subject to termination.  If one reads the work for hire definition in the copyright law with any awareness of how the music industry works, this claim is ludicrous.  But to prevent endless litigation, Rep. Conyers would like to clarify those provisions so it is clear that artists are able to reclaim their rights.

Another problem in need of a legislative solution is the recent decision about the first sale doctrine that threatens the ability of libraries to lend works manufactured overseas and of students to resell their textbooks if they were printed in foreign lands.  Here again a relatively simple change might be proposed.  Instead of the phrase “lawfully made under this title” in section 109 of the copyright law, the wording should be changed to “lawfully protected under this title.”  That would make it clear that if a copyright holder wants to have the protection of US law in the United States, consumers and users of their works will also have the normal protections of that law — nothing more, but nothing less.

Both of these proposals would require actions by Congress, and many feel that the current political climate makes such actions improbable, to say the least.  A really creative take on reform, directed not at Congress but at state legislatures, comes in this paper on “A State Law Approach to Preserving Fair Use in Academic Libraries” by David Hansen of the Samuelson Law, Technology and Public Policy Clinic at UC Berkeley.  David’s paper, which gets favorable notice from the Law Librarian Blog, does an excellent job of explaining why it is problematic that library licenses so often limit fair use rights and of how federal courts — where copyright claims are heard and licensing matters usually decided based on “supplemental or ancillary jurisdiction” — have no incentive to investigate the propriety of those provisions.  So David proposes state-by-state reform of contract rules to make such restrictions void as a matter of contract law, at least in regard to public colleges and universities.  David correctly points out that state legislatures, concerned as they are about how public education funds are spent, have a real incentive to look at this and to realize that this simple provision would increases the efficiency of money spent on licenses.

Hansen’s proposal is very modest, and one hopes it is possible to get more sweeping reform than he suggests.  He makes a good case for starting with state governments, however, and has a depressing analysis of the likelihood of Congressional action.  In any case, a reform of contract rules that govern state institutions of higher education is a great place to start, and perhaps — just maybe — we are beginning to see a groundswell that can move reform up the ladder.

Getting first sale wrong

Last week the Second Circuit Court of Appeals handed down a decision with potentially disastrous consequences for higher education.  I admit that I have been reluctant to write about it because I cannot think of a good remedy for the situation and I dislike the role of Chicken Little, always crying that the sky is falling.  But with this decision two judges on the 2d Circuit really did open some cracks in the firmament above higher ed., and there is no way to ignore them.

In the case of John Wiley & Sons, Inc. v. Supap Kirtsaeng, the court has held that the “First Sale” doctrine in copyright law – which allows libraries to lend books and consumers to resell the books they buy – applies only to works that were manufactured in the United States.  In an earlier case (Costco v. Omega, which was affirmed by an evenly divided Supreme Court) the Ninth Circuit had ruled that first sale did not apply if a work was manufactured and sold abroad, but the Second Circuit went much further.  In last week’s ruling they decided that first sale did not apply even when the work manufactured abroad was sold in the U.S. with the authorization of the copyright holder.  Thus they have created the anomalous situation where a rights holder enjoys the full protection of U.S. law, but consumers who buy the work do not have the advantage of a basic rule for their protection.

The Second Circuit panel seems to know this is a bad decision, and yet they make it anyway.  In a footnote they acknowledge that they are creating an incentive for content companies to move their operations, and the jobs that go with them, off-shore.  And the very well-reasoned dissent also makes it clear that the state of the law did not require this sweeping limitation on first sale.  After several readings I am still not sure why these two judges felt compelled to so dramatically change first sale after over a century of its successful application.

The irony of this decision is that in creating an incentive for publishers to publish their books overseas, the “manufacturing clause” in the Copyright Act (section 602) was used by the Second Circuit panel to accomplish the exact opposite of what it was originally intended to do, which was to defend U.S. businesses. (Note, as a sidebar, this article from Forbes on the “chain reaction of decline” in U.S. manufacturing and imagine it getting worse as both law and economic conditions create negative incentives for U.S. manufacturing).

One of the problems that the Wiley decision creates is uncertainty about library lending.  Libraries do not even know, I am afraid, how much of their collections are manufactured abroad.  In the Second Circuit, however, lending anything that was manufactured outside the U.S. is now in question, regardless of where it was purchased (even directly from the publisher).  The manufacturing clause that is at the root of this decision does contain an exception for the importation of books “for library lending purposes,” but it does not say is that libraries can actually lend these books.  There was no reason to say that, of course, since Congress clearly assumed that first sale would apply.  But Congress didn’t anticipate the short-sightedness of these two judges.  And the situation is even worse for video, since the exception for audio-visual works in the manufacturing clause only mentions “archival purposes,” not lending.  So potentially very large, and probably indeterminate, portions of a library’s collection in the Second Circuit (NY, VT and CT) may now be in a grey area – they can certainly be used in the library but may not be available for legal lending.

I hate to imagine it, but this decision raises some frightening possibilities and requires greater vigilance on the part of librarians.  At the very least, libraries must demand information from publishers about where every item has been manufactured. Obtaining such information is no longer an option, since our legal uses of the things we buy now depends on knowing this, and the place where the publisher is located or where the sale took place is simply not sufficient.  But what I really fear is that publishers will begin to manufacture more of their works overseas and then try to demand a higher price – one that includes “public lending rights” – from libraries.

If libraries are in a difficult position, students may be even worse off under the Second Circuit’s ruling.  Again, publishers now have an incentive to manufacture their textbooks abroad and sell them to U.S. students.  Such students would no longer have the right to re-sell their textbooks or to purchase used texts.  The defendant in the case, Supap Kirtsaeng, had made a lucrative business out of reselling textbooks purchased in Asia.  He was perhaps an unsympathetic party, but what he was doing was not different in kind from the resale of texts that is common on all college campuses.  This activity makes higher education a little more possible for many.  Now publishers have an easy way for to close down this secondary market for textbooks, about which they have complained for years.  In the process, the cost of education for college students would be pushed up even further.

So what can be done about this appalling decision?  There are very few real options, but here are some suggestions:

  • In the short term, libraries can demand manufacturing information and, for works manufactured outside the U.S., insist on a “right to lend” being including in purchase agreements.  If publishers try to charge extra for this, libraries must walk away from the purchase.
  • The Second Circuit could be petitioned to re-hear the case en banc.  The decision as it came out last Tuesday seems almost careless, and it certainly went beyond what was necessary to uphold the District Court ruling against Kirtsaeng.  The Ninth Circuit rule from Costco would have been sufficient grounds for an affirmation, so there was no cause in either the facts or the law for this strange holding.  Perhaps the whole Second Circuit could reexamine the situation and set it right.  But is the defendant willing to take this path?
  • Congress could amend the law to make clear that first sale applies in the U.S. whenever a work is sold with the authority of the rights holder.  Much in the Copyright Act indicates that this was the intent of the law in the first place, and either section 109 or 602 (or both) could be easily amended to reverse the harmful effects of the Wiley court’s misunderstanding.  But is Congress really interested in technical amendments to the Copyright Act right now, however badly they are needed?  The two Judges in Wiley themselves suggested that Congress could correct them if they were getting it wrong (they were!), but as the ARL Policy blog noted last week, this seems more like a taunt, in the current political climate, than a real option.

When is “exclusive” really not?

In our previous post we talked about the relatively easy fair use call involved in the Brownmark Films case decided by the district court in Wisconsin.  Before the court even got to that issue, however, it had to decide a procedural issue that has potential ramifications for scholarly publishing.  Who can grant an exclusive license?

In the Brownmark case the original video that was allegedly infringed was, as most video and an increasing number of scholarly articles are, a work of joint authorship.  That means that each copyright holder owns an equal and undivided share of the rights, and each can exercise those rights independently and authorize others to do so.  Under long-standing precedents, each joint holder of a copyright can license the rights to third parties without the approval of the other rights holder, subject only to a duty to account to those other rights holders for any profits made.  But in Brownmark the issue arose (as it has before) of whether or not the licenses given by a single co-owner of a copyright can ever be exclusive.

To illustrate the situation we are dealing with, lets assume there are three co-owners of copyright in a particular work, whom we will call A, B, and C.  Let’s further assume that A and B are not involved in the transaction in question, or in the court case (as was the case in Brownmark).  So, acting on his own, C gives a license (which he calls exclusive) to Y, who is now our licensee.  Later on, someone comes along and allegedly infringes on the work and Y wants to sue.  A potential plaintiff only has standing to bring a lawsuit, however, if they hold an exclusive right.  So the accused infringer defends by saying that Y is not allowed to file the suit, since they could not have obtained an exclusive license from C because C did not own the entire right in the first place.  This is the situation we must examine.

In an earlier case (called Sybersound v. UAV), the Ninth Circuit Court of Appeals held that a co-owner of a copyright could never give an exclusive license.  This is the intuitive position, I think, because any license C gives to Y will still be subject to other licenses potentially granted by A and B to other parties.  What sense does it make to call Y’s license exclusive if other people — even a great many other people — may also have the right to do exactly the same thing, simply by licensing that right from a different co-owner?

In spite of this intuitive appeal, the Brownmark court choose not to follow Sybersound.  Their concern was that if there could not be an exclusive license, the licensee was left with no way whatever to enforce his right.  While the judge admitted that it was linguistically odd to call a license “exclusive” even when there could easily be multiple parties licensed to exercise the same right, he felt that the alternative was worse, since it created a situation where no one was able to enforce the particular right (unless, of course, all of the co-owners agreed).

I don’t know if this split within the Federal courts will eventually reach the Supreme Court for resolution or not.  But I do know that whichever way it goes, the situation for scholarly articles written by multiple authors is problematic.  It is often the case that A, B, C and sometimes many others are authors of an article and therefore co-owners (assuming each contributed protected expression).  Usually one author is designated a “corresponding author” and completes all the paperwork with the publisher.  The question is what the corresponding author, as a co-owner of the copyright, is legally able to convey to the publisher.  Whichever court we follow, the question proves difficult.

If  we follow the Ninth Circuit, our corresponding author is not capable of executing an exclusive license; even if her entire interest is transferred to the publisher, the rights obtained thereby are not exclusive and another author could, for example, release the article on the Web under a Creative Commons license.  And in that Circuit, the publisher would lack standing to even bring a lawsuit to defend the rights it thought it had obtained. But if we follow the Wisconsin District Court the situation is only marginally better.  The license is now called “exclusive,” and the publisher could bring a lawsuit against an wholly unauthorized third party to prevent infringement.  Nevertheless, it remains the case that other authors could grant licenses in spite of the linguistically-challenged “exclusive” license given by the corresponding author.  So it is still possible that the publisher obtains an exclusive license and yet the work could be distributed world-wide under a CC license by another of the joint authors.

Publishers usually attempt to avoid this situation by asking the corresponding author to warrant that she has permission to grant the copyright transfer or license on behalf of all co-authors.  This might be an effective technique, but unless the corresponding author actually has written permission from each co-author,  it ultimately depends on the somewhat various state laws regarding “agency.”  In other words, a federal court hearing an infringement case and faced with a challenge to the right of the publisher to bring the suit would need to look at the applicable state law and decide if the publisher was justified in relying on “apparent authority” in accepting the corresponding author as an agent for all the other authors.  In the alternative, a publisher could insist that all joint authors sign the publication agreement, but in an age when scientific articles often have dozens of authors, this seems impractical as well.

The techniques of scholarly publishing have worked well for many years; I know of very few (legal) disputes that have arisen amongst co-authors over publishing an article.  But as articles are credited to longer and longer lists of authors, and the Internet offers an opportunity for each of those authors to decide on a more direct form of distribution, the uncertainty reflected by the Sybersound and Brownmark cases threatens to become increasingly problematic.

An easy fair use ruling, but with a message

The case of Brownmark Films v. Comedy Partners, which was decided last month in the Eastern District of Wisconsin, raises two really interesting issues for this blog.  I plan to address one of them — fair use — now and save the other for a subsequent post.

I do not want to rehearse the facts in detail here.  Suffice it to say that the case involves a claim that an episode of South Park infringed the copyright in plaintiff’s music video, which the judge calls “cryptic” and I call simply crude.  The much more difficult half of the case involves the issue of a transfer of exclusive rights, and I will discuss that later.  But for academics, I think, the most important aspect of the decision is how it deals with fair use.

The fair use call is really pretty easy in this case; inclusion in South Park is virtually prima facie evidence that a work is being parodied.  Indeed, the judge has little difficulty deciding that the use of less than one-third of the original music in a video featuring a different character and intended to mock the viral video phenomenon is fair use.

What is significant here is that the judge made the fair use decision before there had been a trial.  He examined the pleadings and found that everything he needed to make this easy call was already before him.  Then he ruled favorably on a motion to dismiss the case on the basis of those pleadings (technically a “motion to dismiss for failure to state a claim”) and dismissed the case with prejudice (which means plaintiff cannot re-file it).

Librarians and other academics are often afraid to rely on fair use, even when there arguments would be strong, because of the expense of defending a lawsuit even when you win.  Content companies often encourage that fear, reminding academics that fair use is a defense that can only be decided with certainty at a trial.  While this case is a little bit unusual, it invites us, I think, to look at this “chilling effect” and perhaps lend it less credence.

In his ruling to dismiss, Judge Stadtmueller explicitly notes that “evaluating an affirmative defense, and indeed the ‘fair use’ defense, at the pleadings stage is ‘irregular’.”  But he thinks it is justified precisely because when the case for fair use is “obvious,” “the court can conclude that this dispute does not warrant ‘putting the defendant[s] through the expense of discovery’.”  In other words, in straightforward cases, a fair use claim can be evaluated before there is a trial, explicitly to prevent the cost of litigation from itself becoming an obstacle to proper exercise of fair use.

The phrase “affirmative defense” is itself a little bit misleading in this context, I think.  By definition, an affirmative defense is one in which you admit the truth of the facts alleged but then prove new facts that nevertheless defeat the charge of claim.  Self-defense is a classic example of an affirmative defense — the defendant admits the killing but proves facts that justify it.

Fair use is slightly different than the typical affirmative defense.  It has to be raised after a claim has been made, of course, but it does not actually involve admitting the truth of the allegation.  Fair use is not a justification for an infringement; by the language of section 107 fair use is “not an infringement of copyright.”  So rather than showing a reason for infringing on someone else’s right, the fair use defendant is proving a limitation of the plaintiff’s right that means that no infringement took place.

Because it functions as a limitation on the right in question, fair use is actually a perfect example of a place where a copyright infringement claim should be dismissed because of a “failure to state a claim.”  That describes perfectly what is going on — because fair use has been established, the plaintiff did not have a right that was infringed in the first place.  Because fair use is “a mixed question of fact and law,” there will always be specific circumstances that must be adduced, but if those facts are plain on the face of the complaint, as they were in Brownmark Films, a judgement at that stage is entirely appropriate.  And that possibility reduces the sense that even a strong fair use claim is not worth litigating.

I like to think of fair use as a boundary on the rights in copyright, just like physical property has a boundary.  One way I could defend a claim against me for physical trespass would be to prove to the court that I never actually stepped on the plaintiff’s property.  I would raise that evidence in a defense, but what it would show was that no violation of the property right ever took place — that the plaintiff had not stated any claim.  That is exactly how fair use functioned in this case, and that possibility offers an important perspective on fair use.

Next post we will discuss the issue of transferring an exclusive right by a joint copyright holder and what impact that has on publication agreements

What does scholarly communications mean to you?

Recently I had a somewhat unusual question from a library student who is working in a library where part of her assignment is to look for grant funding opportunities related to developing a scholarly communications program.  After telling me that the whole concept of scholarly communications was somewhat bewildering, the student asked me what search terms I thought she should use when looking in databases of grants and funders.

The question was sufficiently off center, I think, that it forced me to reflect on the meaning of this “baggy monster” discipline from a different perspective and to formulate a fairly succinct but comprehensive reply.  Here is my answer:

“Let my answer this by suggesting four words that I would search on and, with a bit of explanation about each word, maybe give you some perspective on what scholarly communications means (in my opinion, anyway).

“Publishing” – the origin of most scholarly communications work is in trying to understand how the publishing process for scholarship is changing in the light of new technologies, and what the library role is in assisting or adapting to those changes.

“Copyright” – when some institutions talk about scholarly communications, their major need is advanced knowledge about copyright law.  This has become a problem on lots of campuses, again because of advances in technology, and it explains why so many people who are hired into scholarly communications positions (including me) are lawyers.

“Open Access” – this is the area where the seems to be the most push for change to traditional publishing models, and the place where libraries are developing lots of programs.  Libraries often administer institutional repositories, for example, which provide open access to faculty and student scholarship.  These efforts co-exist, usually, with traditional publication, and figuring out if and how scholarly publishing will transition to open access is the big issue for scholarly communications right now.  BTW, other open access projects in libraries include hosting open journal publishing platforms, administering funds to pay the article processing charges that some open access journals charge, and advocating for public access programs like the NIH’s PubMed Central requirement.

“Research process” – at its core I believe that libraries’ attention to scholarly communications means a deeper involvement with the whole research process as it occurs on our campuses, where in the past we have focused only on the output and input (published works) stages.  This means that libraries may be more involved in help to curate research data, manage versions of research output, and focus on access to the local resources of a particular campus, rather than on those published resources that are increasingly available to all without the intervention of libraries.

Looking back on what I have written, I guess I would add “technology” and “institutional repository” as search words.”

While I hope this reply was helpful to the student, I realize how incomplete and sketchy it is.  It seems like a perfect opportunity to ask others to comment. So please leave a comment and suggest other words that would be appropriate search terms and other ways to describe and discuss the ones I have mentioned.  Let’s see if this can be a useful thought experiment.

Discussions about the changing world of scholarly communications and copyright