Berkeley Historical Society lawsuit - Can a library, museum or archive charge money for photos that are in the public domain?

Well, I usually answer this question with: "They can try."   And of course many do - probably relying on court decisions that say a valid contract trumps copyright law, as long as there's "an extra element" in the contract.

But hold tight, I just saw in William Patry's blog that the Berkeley Historical Society has been sued by a local author who paid the Society to use photos for his book, Berkeley 1900.   

According to the San Francisco Daily Journal (Aug 2, 2005), the author sued after the President of the Historical Society successfully asked a local hardware store to remove two copied photos that were on display with the book. No fees had been paid for the display photos.

The author claims that federal copyright law preempts (trumps) his signed agreement, which said:

Berkeley Historical Society photo prints or digital copies may not be published in any form without paying a fee and signing a one-time-use agreement.

If the Historical Society loses, would that be a blow to libraries, museums and archives who sell copies of public domain works?  If they hold the only physical copies, an author or other user must get the library's permission, whether or not a fee is charged. 

On the other hand, if someone else downstream makes a copy - someone who didn't sign an agreement, that person isn't liable under contract.

Peter Hirtle's Archives or Assets? sensibly recommends "responsible" revenue when digitizing photos etc by adding value ... metadata etc.

You can find earlier details on the lawsuit at a June 20 posting in Silicon Valley Media Law Blog, who at least at that time, expected a settlement.

Schwartz v. Berkeley Historical Society, (3:05-cv-01551)

Comments

[Stefan]

I was a Berkeley Historical Society board member between 2004 and 2009.
In 2001 when the author was asked to present a lecture at BHS for
their 20th anniversary, I witnessed Tom Edwards, then president of BHS,
ignore a request by the author to not videotape his talk. When Edwards was
forced by numerous people to destroy that video recording, I believe a
vendetta on Edwards' part was set up, leading to the unfortunate incident
involving the author' display at the Berkeley ACE Hardware. The BHS board
meeting official minutes said that Edwards was to investigate a possible
illegal use of BHS photos. Instead of contacting the author directly and
trying to discuss any concern, Edwards took it upon himself to go to the
hardware store, and tell the owner that the display was breaking agreements
made by the author and that it should be removed immediately by the store
owner, who had no agreements with BHS; the owner told him the photos were
supplied by the author. The author only learned of the incident when he went to
the hardware store for hardware and saw the owner, who told him what had
happened. BHS spread the false information that the author had broken a
contract, which he did not. I know this as I have reviewed all the written
and signed documents, and there is no such contract.

Some time after I became a member of the board, I began to examine this
case; I am the only board member, other than Edwards, who read all of the
documents and attempted to understand the series of events. The other
board members simply left everything up to Edwards to resolve the problem
he initiated and perpetuated. I believe the documents show that Edwards was
using BHS to further his vendetta against the author, who had all along been
a friend and member of BHS. There was never an agreement signed for photo
access, as the Burl Willes letter confirms. Burl's letter confirms that one
of the two photos Edwards forced down at the hardware store had no
restrictions whatsoever on this public domain photo. How did BHS and Edwards
think they had a right to force it down? BHS never responded to those
questions from the author to explain their actions.

The one contract the author later signed in 2000 involved the second photo
forced down and this contract was not broken as far as I can see. The photo
had written permission to be used in the book and the photo was in a display for
the book. There was no restriction on advertising for the same use. The book
was for sale not the photo. There was no second use.

Also, even if BHS saw this as some small thing to discuss, one has to
ask why they did not approach the author to speak about it. Why did they avoid
that before and after the incident, and only tell the storeowner the author had
broken agreements?

The board unthinkingly defended Edwards without question as one of their
own, and called the author names and denigrated him for protecting himself
against this attack. (I witnessed this at official board meetings and
informal discussions), even though they refused to read the actual documents.
They assumed that the author was just out to obtain free access to all BHS
photos when the written documents show he initially asked simply for a
written retraction of what Edwards said to the storeowner and an apology.
That would have ended the incident. BHS promised the author in writing they
would continue such policies and called the author names in writing. The author
was not part of the nastiness. BHS’s total refusal to apologize and
retract Edwards' remarks, to examine its own acts and its continued promises
to maintain its "enforcements," forced the suit to stop further attacks on the author.

To further illuminate my point and belief, when I spoke to the board,
armed with the actual written documents in the incident, BHS immediately
passed a motion that barred any further discussion or even bringing up the incident
or subsequent suits. They remained stuck in defending Edwards and not looking at their involvement in this incident. I resigned from the board shortly after that action.

I have no doubts, after reviewing all documents, that there was very
clear evidence, in my opinion, that Edwards went to the hardware store and
said provably false things that would clearly damage the author's reputation,
which, in my perception, is impeccable. Instead of speaking with the author
about any concern, Edwards chose to make public and provably false
statements about the author. This speaks volumes in itself.

I request the blog post this response as otherwise, it misstates that the author broke an access contract he signed that doesn't exist or a use agreement, which he never had. Thank you for the opportunity to correct the record.

Mr. S. STEFEN
Former BHS board member

[Burl Willes]

Dear Ms. Kirkman,

I am writing to correct some important
factual errors in your blog regarding
"Who Owns Pictures of the Past?' as
reported in the San Francisco Daily
Journal in 2006.

Thanks to modern technology, this
article and your blog are the first things that come up on a "Google
search" for Richard Schwartz's name.
In your blog, you repeat that Richard signed
and broke an "access contract" to purchase
and use photographs.

I was the volunteer Director and docent of the
newly-opened Berkeley History Center when
Richard Schwartz asked to use our photographs
for his proposed book BERKELEY 1900.

At that time, there was no contract and no
formal procedure established by the Board
regarding the use of photographs. This original
purchase in 1996 did not prohibit him from
displaying one of them in a store window to
promote the sale of BERKELEY 1900.

My goal was to make the photos widely
accessible. Richard's book accomplished that
with great success.

The National California Conference of
Historical Socities will hold its annual meeting
next year in Berkeley. Richard has been asked
to speak at this event.

Richard Schwartz is an honorable person who
would never break a contract. He has done
more than anyone in Berkeley to popularize
local history.

I would be grateful if you would kindly place
this comment on your blog next to the original
article.

Thank you in advance for your time.

Sincerely,
Burl Willes

(Mr. Willes was a memeber of the Board of the Berkeley
Historical Society from 1980-2000 and Museum Chair
from 1982-1998)

[Tom]

It is my understanding that facts (lists) cannot be copyrighted -- Including yours. It is also my understanding is that if you transcribed a cemetery and changed the work -- added digital you can gain a copyright on your work -- (The Photos), but someone could still get the information and use it. I have some information, including church records that I will not donate to the Historical Society for just this reason. I took photos of each page and sell the chruch record book online for about $3.00 each. Reasonable. If someone were to manually transcribed I believe there is nothing I could do to prevent it.

[Pat]

I have church records which were copied from books at an historical society. Recently I transcribed these records and posted them to my genealogy group files. Now the Historical Society is demanding that I remove these records from my files. There are no copyrights on the records, and the transcriptions I did are not in the same format as the hard copies of the records. I typed mine into EXCEL files.
Do I have to remove the files?

[Jennifer Ruden]

The case of Schwartz v. Berkeley Historical Society was dismissed with prejudice on August 10, 2005*. The defendant, Berkeley Historical Society, filed a motion to dismiss based on two elements: 1) that Schwartz had previously sued BHS for defamation over their accusations of the same issue: that he was using works for which he had signed a license-use agreement yet he claimed were in the public domain. That case was dismissed with prejudice, and the California courts do not allow Schwartz to re-litigate that claim or the issues in that claim. 2) the defense attorney's cited ProCD v. Zeidenberg as precendent, stating that the contract that Schwartz signed agreeing to terms of licensing the photos from BHS were enforcable regardless of copyright law.

I have to say that in this instance, I think the fact that Schwartz signed an agreement on terms of use of the photos has to trump any copyrights. His ignoring the terms of the agreement he signed shows willful infringment in his use of the photos. I think shrink-wrap agreements, such as in the ProCD case, are another matter, but Schwartz should not have signed the license agreement if he intended to violate it.

[Klaus Graf]

Many thanks! I fear Google is not making available scanned original PD books from it's Google Library Program if a Kessinger book is already in it's index.

[Mary]

Sorry - took me a while to sort this out - but YES I think it's copyfraud to stamp "copyrighted material" on material that is in the public domain.

Copyfraud? Here's what we're looking at -

1- go to http://print.google.com/

2- type "inpublisher:kessinger" in the search box

3- pick one that's clearly in the public domain like U.S. Presidential inaugural address

4- Notice the "Copyrighted Material" printed on the side of the page -

5- Copyfraud? I'd have to say yes.

6- Note - it reminds me of the similar stamps we put on library photocopies - but ours say "this MAY be copyrighted material" - a different scenario altogether

[Klaus Graf]

It would be fine if I could read an answer on my question :-)

[Dr. Klaus Graf]

http://archiv.twoday.net/stories/1073534/
How Google Print is Blocking Not-US-Citizens

http://print.google.com/print?as_q=&num=100&btnG=Google+Search&as_epq=&as_oq=&as_eq=&as_vt=&as_auth=&as_pub=kessinger&as_isbn=

My question re Kessinger's simple reprints of PD works is: Is it true that these pages are "copyrighted material" as Google writes an each page. Or is this (as I think) COPYFRAUD?

[Mary]

Dr. Klaus Graf and D. Smitt are really up-to-date - I see that paper was submitted August 25. Here's a hotlink for the paper they reference: Mazzone, Copyfraud

Mazzone, though he eloquently opposes the rampant practice of claiming copyright in public domain works ("COPYFRAUD"), allows for valid contracts licensing the same material: [page 34+]

"The American Antiquarian Society is certainly free to make and sell copies of materials in its collection, and to impose conditions on how those copies are used. It is free to refuse to provide reproductions or even to grant access to its collection to individuals who do not abide by its terms. It can also sue for breach of contract for violations of conditions the licensee agrees upon." FN 100

FN 100 "Courts have held that publishers of public domain works can impose through contacts restrictions on the use of the works. See, e.g., ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) (holding that a click-wrap license agreement prohibiting user of CD-ROM containing public domain business telephone listings from copying the CD was enforceable against the user); Matthew Bender v. Jurisline.com, 91 F. Supp. 2d 677 (S.D.N.Y. 2000) (holding enforceable a licensing agreement in which the defendant agreed not to copy CD-ROMS containing public-domain court decisions). But see Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 270 (5th Cir. 1988) (holding that a licensing provision, pursuant to state law, prohibiting adaptation of a licensed computer program by decompilation or disassembly was preempted by the Copyright Act and was therefore unenforceable). Commentators have expressed a range of views as to whether parties should be permitted to use contracts to impose restrictions unavailable under copyright law. See generally Paul Goldstein, Preempted State Doctrines, Involuntary Transfers and Compulsory Licenses: Testing the Limits of Copyright, 24 UCLA L. REV. 1107 (1977); Mark A. Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. CAL. L. REV. 1239 (1995); Michael J. Madison, Legal-Ware: Contract and Copyright in the Digital Age, FORDHAM L. REV. 1025 (1998); David Nimmer et al., The Metamorphosis of Contract Into Expand, 87 CAL. L. REV. 17 (1999); Maureen A. O'Rourke, Drawing the Boundary Between Copyright and Contract: Copyright Preemption of Software License Terms, 45 DUKE L.J. 479 (1999). Two considerations weigh against the conclusion that copyright law should preempt a licensing restriction. First, a licensing restriction only applies to the individual entering into the agreement—whereas copyright is a right held against everyone. Second, the licensee is presumably (because he or she would otherwise obtain the work for free) receiving something of value: for example, the convenience of having the public domain material readily available or the desirability of having it in a certain form like on a CD-ROM. Refusing to enforce licenses of this nature would deter vendors from packaging and making available public domain works—possibly impeding the availability and circulation of such works. On the other hand, there are things short of a prohibition on copying—the very thing that is the province of copyright law -- that might more properly form the basis of a licensing agreement. For example, the license might specify that if the user makes a copy the licensor will be entitled to some additional fee or some portion of proceeds if the copies are subsequently sold. Licenses of this nature would protect both copyright law and provide an incentive to circulate public domain works."

He goes on to decry contracts of adhesion, and makes it clear that the Society does not have a copyright to works merely because it owns physical copies. Further, "[a]cknowledgment by the licensee that the Society owns a copyright does not make it so."

See more discussion on copyrighting the public domain at LibraryLaw post on July 30, 2004

[D. Smitt]

On these issues, take a look at Mazzone, Copyfraud, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=787244

[Dr. Klaus Graf]

See my comments on German Law (in german) at: http://archiv.twoday.net/stories/929726/

I think the term COPYFRAUD is the only correct description:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=787244

There is an inadequate disadvantage for the user because a third party can use the PD historical photographs - according to Bridgeman v. Corel - freely. The contract cannot bind the third party and this is the punctum saliens.

[akb]

I have some sympathy for the financial need of libraries to raise revenue, however I think the issue of charging for access is more pernicious than you have presented.

Take for example the Smithsonian, who I personally think is the worst offender in this case. They receive an extremely large federal subsidy, next to it their licensing revenue is paltry. They have used this subsidy and their unique place in American culture to amass crucial cultural artifacts, however, they charge rates that are comparable to commercial archives for use. I would hope that others would find it very difficult to defend them for zealously protecting reproductions of say, portraits in the National Gallery made over 100 years ago or early motion picture film of first contact between Europeans and hunter-gather cultures.

In the Internet Age I would hope that libraries and archives would be all for removing barriers to access, rather than being content to let our history rot on dusty shelves unseen.