LibraryLaw Blog

Update on a Legal Action Against a Cultural Institution

Back in July of 2010 I reported on the lawsuits brought by the photographer Anne Pearse-Hocker against the National Museum of the American Indian, for making copies of her copyrighted photographs, and against Firelight Media, which used the photographs in its documentary film about Wounded Knee. I noted that it was one of the rare lawsuits against a cultural heritage institution and ended by noting that “This case should be interesting to follow – if it is not settled out of court.”

Thanks to the wonderful people at Justia, it has been possible to follow the court filings in the case. And as I suspected, both cases settled before proceeding to trial. Still, there is plenty of interesting hints in the documents about how the story played out.

The case of Pearse-Hocker v. Firelight Media, Inc. settled first, on 14 October 2010. The “Stipulation of Dismissal” says nothing about the terms, merely that each side is responsible for its own legal fees. An earlier document, though, suggests that the parties had “reached agreement as to the monetary term of settlement.” One would love to know whether the amount of settlement was symbolic or substantial.

In its initial answer to the complaint, Firelight admitted that

…the photograph numbered N44622 is shown at approximately minute 63 of the film for a duration of approximately seven seconds, that the photograph numbered N44926 is shown at approximately minute 64 of the film for a duration of approximately 16 seconds, and that the photograph numbered N45215 is show at approximately minute 65 of the film for a duration of approximately 7 seconds. 

But it also asserted among its defenses that this use was a fair use.  Whether the “Documentary Filmmaker’s Statement of Best Practices in Fair Use” would agree or not is open to discussion. In any event, Firelight Media now acknowledges on the movie’s web site that three uncredited photos by Anne Pearse-Hocker appear in the film.

The judgment in the other case, Pearse-Hocker v. United States, which was entered in June, 2011, is more informative. The museum (which as part of the Smithsonian is a unit of the US government – hence “United States” as the defendant) agreed to pay Pearse-Hocker $40,000.  In addition, they had to provide her with a digital copy of the 15 photo contact sheets in the collection, from which she could select 100 images to be provided to her at high-resolution.  This would normally cost an additional $7,500. Finally, the director of the museum, Kevin Glover, had to send Pearse-Hocker a letter acknowledging her generosity in donating the photos to the museum. The museum did not have to return the collection of photos to Pearse-Hocker, however, which was one of the demands in her original complaint.

The museum did not admit that it had violated any laws or contracts, but it is hard to determine what defense it might have used if the case had proceeded to trial. Its pro forma response to the initial complaint hinted that it would have argued that Firelight Media’s use was a fair use and that it had a license from Pearse-Hocker to copy the material for Firelight.

What lessons can a cultural heritage repository take away from this case? First and foremost, it emphasizes the need to respect and follow the terms in a deed of gift. Sometimes deeds require practices and procedures that are outside of the ordinary, but that just means that our workflows have to be such that anomalous items are consistently identified.

Second, we should make sure that the terms in the deed are as clear as possible. Pearse-Hocker’s Deed of Gift (Exhibit B of the original complaint) states “I hereby also assign and transfer all copyright that I possess to the National Museum of the American Indian, subject only to the conditions which may be specified below.” What conditions were specified below? “I do not, by this gift, transfer copyright in the photographs to the Smithsonian Institution”! Why have a deed with two conflicting sections in it?

In addition, the deed granted to the museum “an irrevocable, non-exclusive, royalty-free, license to use, reproduce, display, and publish, in all media, including electronic media and on-line, the photographs for all standard, educational, museum, and archival purposes.” Many would argue that providing copies for non-profit documentaries on PBS is part of the standard educational mission of the museum.  Yet this interpretation could be in conflict with the next sentence of the deed, which states that “requests by people or entities outside the Smithsonian to reproduce or publish the photographs shall be directed to the donor.” If the Smithsonian felt that only for-profit uses should be referred to the donor, it should have made this clear in the deed.

Third, this case reminds us that running a repository involves taking risks.  We run the risk that users might steal collection material or that dirty documents caked in lead dust or mold might injure staff or patrons. We particularly run risks when we duplicate materials for patrons. It is an essential part of our service, but one that needs to be managed by knowledgeable practice and procedures. One wonders, for example, if the museum may have weakened its own defenses by charging a permission fee that is separate from the cost of making the reproduction. Such fees are designed to generate money for the museum, pure and simple. They are unconnected to “standard, educational, museum, and archival purposes,” and hence could not be supported by even the most generous reading of the license grant in the contract. Could the desire to secure $150 in permission fees have cost the museum almost $50,000 in damages?

Lastly, I would reiterate the point I made in my original post. Since the case against Firelight Media did not get very far, we do not know what its fair use defense might have looked like. I continue to suspect, however, that Firelight, like most of our users, did not really understand the difference between the permission given by the repository and the permission it needed from the copyright owner.  And it may not have understood that both were needed for its use of the photographs. The museum's invoice stated that “[p]ermission is granted for the use of the following imagery, worldwide, all media rights for the life of the project.” By providing only one of the permissions that users need, we may in the end be misleading them.

As with most lawsuits, I suspect that this was a bad experience for everyone except the lawyers.  Pearse-Hocker will be lucky if her $40,000 cash payment covers her legal fees in the case.  The museum is out that same amount of money, as well as its time and expense in defending itself. Most of all, therefore, this case reminds us about the importance of working with donors so that a disagreement never reaches this stage.

Norway as a Model for a GBS Replacement?

The Director of Kopinor, Yngve Slettholm, and the National Librarian of Norway, Vigdis Moe Skarstein, sign the Bookshelf agreement. Foto: Anne Tove Ørke

Commentary is flowing fast and furious on what the rejection of the Amended Settlement Agreement brokerd by the plaintiffs with Google means.  It is hard to imagine, however, a better analysis than that prepared by Jonathan Band for ARL (though if you want something written with more heat, try "To the whingers go the spoils in the Google book decision").

I've been curious as to what the settlement's critics would like to seen in its place.  Norway is frequently trotted out as an alternative approach.  In his discussion of the decision in the New York Review of Books, for example, Robert Darnton states that:

The most impressive attempts to create national digital libraries are taking shape in Norway and The Netherlands. They have state support, and they involve plans to digitize books covered by copyright, even those that are currently in print, by means of collective agreements—not legalistic devices like the class action suit employed by Google and its partners, but voluntary arrangements, which reconcile the interests of the authors and publishers who own the rights with those of readers who want access to everything in their national languages.

Similarly in his Op-Ed piece in the New York Times on "A Digital Library Better Than Google's," Darnton cites Norway as one of the countries that is "determined to out-Google Google by scanning the entire contents of their national libraries."

I wonder, though, if the people who cite Norway as a possible model have read the agreement between the Norwegian Digital Library and Kopinor, the Norwegian copyright licensing agency that administers extended collective copyright licenses.  If this is the alternative, then I fear that academia will rue the day that the settlement failed.  Both in its costs and functionality, the Norwegian model is far from "out-Googling Google."  Consider:

• The Norwegian agreement requires that the Library pay roughly $0.10 per page per year for every title included in the collection (§ 7).  It estimates that books have on the average 185 pages (§ 1).  That means $18.50 a year per title per year, regardless of whether the books are ever claimed, consulted, or used.  It is difficult to compare this to the Google settlement, which had a much higher initial payment for scanning but then predicated future payments on actual use.  But since we know that it is likely that most of the books that Google scans will never be consulted, the argument can be made that the Norwegian model will prove to be much more expensive.
• There are 50,000 books that are covered by the agreement (§ 1), for what is likely to be an annual payment of just under 1 million dollars.  Michael Cairns, in his study on the number of orphan works, cites Bowker estimates that 2 million books were published in the US between 1920 and 2000.  Does anyone expect the Library of Congress any time soon to start shelling out $37 million a year in license fees for access to mostly out-of-print books?
• What you can do with the books is much more limited than under the Google settlement agreement.  You can only view the books one page at a time, which makes sense, since you can't download or print the contents (§ 4).  How useful is that?  With Google, you would have been able to view 20% of the book for free, and through an institutional subscription, have been able to download or print.
• The Kopinor agreement is only for 3 years (§ 21), and if it is not renewed, the digitized books must go away (§ 13).  The Google agreement contained provisions that would have ensured that the digitized books in the Google product would still be accessible, even if Google decided to leave the book business entirely. 
• The Norwegian agreement was possible because Norway already had a collective rights management organization, Kopinor.  The Google agreement would have created such a group for the US: the Books Rights Registry.  Without the settlement, there is no one left to front the millions it would take to create such a group.

Maybe it would be a better solution to have the Federal government pay whatever fees rights owners demand in order to have their books be included in a national digital library database (though I would hope that range of uses would be greater than Norway allows).  I would think, though, that securing national licenses for current academic and research journal collections would be even a higher national priority.  National access to current research would be an efficient and effective method of maintaing excellence in research and improving national productivity.  There are, however, no U.S. national licenses for journal databases (even though they are common in many European countries).  I don't know why it would be easier to get Federal money to pay the licensing fees for out-of-print and/or mostly outdated books.  In a era of Tea Party politics and concerns of massive annual deficits, it is difficult to imagine the national government stepping in to fund a digital books initiative. 

Schindler's list, Costco, and Common-law Copyrights

The Volokh Conspiracy blog recently highlighted a case of interest to anyone who deals with manuscripts.  Rosenberg v Zimet concerned the ownership of a version of "Schindler's List," the list of essential employees used by Oskar Schindler to protect many of them from transportation to death camps.  One copy of the list is physcially housed in the Holocaust Museum Yad Vashem in Israel, though copyright in the document belongs to Marta Rosenberg, the heir to Schindler's widow.  A second copy ended up in the hands of one of Schindler's employees, who eventually gave it to Thomas Keneally, the author of the book on which the Schindler's List movie is based.  That copy was included in the Keneally papers purchased by the State Library of New South Wales.  (It apparently is not, as the lawsuit suggests, the copy that is "the object of this lawsuit.")  A third copy belonged to Schindler's accountant and is now for sale from M.I.T. Memorablia. The lawsuit was an attempt by the copyright owner, Marta Rosenberg, to prevent the sale of the document.

There are two elements in the case that make this of interest to manuscript curators.  First, the court opens with a discussion of the common law copyrights that might be present in the document.  Eugene Volokh points out - correctly, I believe - that the court got this wrong.  I can't think of any common law copyright in the document that was not pre-empted by bringing unpublished items under Federal protection in the 1976 Copyright Act. 

I was interested to see, however, that the Court did cite Pushman and its progeny as far as copyright transfer is concerned.  I thought I might be the only person who still remembered Pushman and think that it may have some relevance.  The Court seemed to suggest that if there had been a bill of sale from the copyright owner for the material, and if there was no reservation of rights, then copyright in manuscript items can transfer with the physical object.  It is possible that some repositories may have unknowingly acquired copyrights when they acquired physical title to unpublished works.

Second, Volokh concludes that in spite of the Court's misunderstanding regarding common law copyrights, "the transfer of the list is indeed permissible."  This would seem like a no-brainer; thanks to the "first sale" doctrine embodied in Section 109, one does not need the permission of the copyright owner to sell a physical copy of the work.  Or so it seemed until the Supreme Court recently split in Omega Watch v. Costco , about which I wrote earlier.  In that case, the Appeals Court concluded that unless a sale in the U.S. is authorized by the copyright owner, first sale rights do not apply.  ("[Section 109] applies to copies made abroad only if the copies have been sold in the United States by the copyright owner or with its authority.”)  In this case, the copyright owner never apparently authorized the sale of copies of the list in the U.S., and so M.I.T. Memorablia's sale of the copy would seem to be no more legal than Costco's attempt to sell gray-market watches. 

Costco may not be a total disaster for libraries.  Kenny Crews has a useful post on how its implications may not be terrible for libraries.  And even in this case, it might be that a court would conclude that because of Section 104(a), unpublished works created abroad are "lawfully made under this title," as required by Section 109 (even though U.S. copyright law is not to supposed to have extraterritorial application).  Alternatively, the Court could conclude that the compilation of a list of names does not have enough originality to warrant copyright protection, and hence Costco would not apply.  But it just highlights for me the uncertainty we now face when dealing with foreign materials.  Let's hope that Congress fixes this soon.

Who infringed at Georgia State?

We have a ruling from the court over the motions for summary judgement in the lawsuit over Georgia State's ereserve program.  Kevin Smith gives an excellent analysis of the order in Going forward with Georgia State lawsuit.  The bottom line is that the court did not find Georgia State guilty of direct and vicarious copyright infringement, as the plaintiffs requested.  The only issue that will go forward is whether Georgia State contributed to the copyright infringement of others through its implementation of its 2009 policy.  (You can read more about direct  and indirect copyright infringement in Section 4.5 of Copyright and Cultural Institutions.)

As Kevin notes, there are lots of interesting legal issues discussed in the order.  What struck me most of all was the unanswered question of who actually infringed.  In order to have indirect copyright infringement, there must be a direct infringement.  The publishers seem to suggest that it was the "librarians and professors" who scanned, copied, displayed, and distributed the Plaintiffs' copyrighted works "on a widespread and continuing basis."  Under the publishers' theory, they could have sued the faculty members who made or requested the copies (and who also write the books they publish) for direct copyright infringement.

In reality, the most that professors and librarians do is make one copy available on a server.  Any distribution of these works is initiated by the students.  The court seemed to recognize this in a footnote when it observes that the plaintiff's theory of liability would actually have the students who downloaded material be the potential direct infringers.  The case may hinge, therefore, on whether students, and not faculty and librarians, are potential direct infringers.  The question would then be whether a student making a single copy of a brief work for educational purposes is a fair use.  If it is, then there is no direct infringement and there can therefore be no indirect contributory infringement. 

There was one other interesting tidbit in a note.  Apparently the Copyright Clearance Center is paying for 50% of this legal action.  It is disturbing to think that a portion of the administrative fees that libraries are paying to the CCC are being used to bring legal actions against those paying the fees.  While the CCC may claim that it is serving the interests of those who use it, that doesn't seem to be true in this case.

UPDATE:  In addition to Kevin Smith's analysis cited above, see theexcellent discussion on the ARL Policy Notes blog.

How a watch manufacturer could make the use of foreign manuscripts and artwork a copyright violation

(by Peter Hirtle)

One wouldn’t normally expect a lawsuit between a watch manufacturer (Omega) and a big-box retailer (COSTCO) about the scope of “gray-market” sales of manufactured goods to have much of an impact on libraries and archives, but the upcoming Supreme Court case of Costco v. Omega is the exception.  At stake are some of the core activities of libraries and archives. 

The case centers on the “first sale” doctrine in copyright law codified in Section 109: the idea that once a copyright owner has sold a work, its ability to control further distributions and uses of that work end.  In the Appeals Court decision now before the Supreme Court, the court found that works made and sold overseas did not have 109 protections.  As Kevin Smith noted in an earlier posting on the case, if 109 does not apply to books manufactured abroad, it raises the issue of whether libraries can legally lend foreign items.

The threat that the Appeals Court decision poses to traditional library lending, according to Brandon Butler of ARL, led the Library Copyright Alliance to file an amicus brief that argues that right of libraries to lend foreign material should be protected.  For similar reasons, several library associations joined the amicus brief authored by EFF and summarized here. 

Unfortunately, the excellent LCA brief by Jonathan Band doesn’t go far enough.  It is focused on library lending.  And it notes that Section 602(a)(3)(c) of the Copyright Act does allow a library to import up to 5 copies of a foreign work “for its library lending or archival purposes,” activities that would be unaffected by a decision in this case (though Band has identified a neat little technicality of concern). 

Section 109 is about more than just the lending of copyrighted materials, however.  Section 109(c) also authorizes the public display of a copyrighted work, “either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.”  In most archival repositories, foreign manuscripts are not lent to individuals, but rather they are allowed to look at them in a reading room.  Similarly, foreign art works legally acquired from individuals other than the copyright owner are publicly displayed on museum walls.  The decision of the Appeals Court that the phrase “lawfully made under this title” does not apply to foreign goods acquired from someone other than the copyright owner puts both of these practices in jeopardy.

Imagine the situation at a place like the Harry Ransom Center.  Because it acquired the Tom Stoppard Archives from Stoppard, the copyright owner, it would still be able to use Section 109 to display Stoppard’s own material from the collection.  It would not, however, be able to use Section 109 to show to users any 3rd party copyrighted material created abroad and included in the collection.   Nor would it be able to use Section 109 to put non-Stoppard-created material on exhibit.  It might find itself in a similar situation to the Irish National Library, which had to secure a special act of Parliament to exhibit physical copies of some James Joyce manuscripts (as I discuss on p. 72 of Copyright and Cultural Institutions).

The situation for archives isn’t entirely dire if the decision is upheld.  A repository could still develop a fair use rationale for the public use of foreign manuscripts.  Alternatively, if the LCA’s request that library lending be acknowledged in a decision is accepted, an archives could argue that it is “lending” a manuscript to a patron in a reading room, even if the work is not allowed to leave the room.  It would be much harder, however, for a library or museum to argue that public exhibition is a fair use.  We might not be able to display publicly foreign works without the permission of the copyright owner.

Big thanks, therefore, to the library associations for speaking out on the need to have first-sale apply to items purchased abroad as well as in the U.S.  This is a case that we will all follow closely.

(Illustration: “Programme" of Arcadia from the premiere production at the National Theatre, linked from http://www.hrc.utexas.edu/ransomedition/2008/fall/stoppard.html)

C&CI Update: Legal Action Against a Cultural Institution

(by Peter Hirtle)

On p. 195 of Copyright & Cultural Institutions (C&CI), I noted that “Court cases involving copyright infringement by cultural heritage institutions are rare.”  Thanks to a blog posting at Clancco.com, I am sorry to report that another has been added to the list. 

A professional photographer, Anne Pearse-Hocker, is suing a production company, Firelight Media, for copyright infringement for using three of her photographs in its documentary, We Shall Remain: Wounded Knee.  A copy of the complaint is linked from the Clancco.com posting.  She is also suing the Smithsonian Institution for copyright infringement and breach of contract because the National Museum of the American Indian made copies of the photographs for Firelight Media, seemingly in violation of the Deed of Gift that Pearse-Hocker signed when she gave the negatives to the museum.  I have secured a copy of that complaint from PACER and posted it to SCRIBD here (and below). 

It is always dangerous to draw conclusions from just one side of an argument; I am looking forward to reading the Smithsonian’s response.  Nevertheless, the document reveals the kind of misunderstandings that can result when repositories get into the permissions business. 

To me, the most troubling portion of the document is Exhibit D, the museum’s permission form, which states that “Permission is granted for the use of the following imagery, worldwide, all media rights for the life of the project.”  Firelight is then charged $150 in permission fees for the use of the three listed images.

If I was Firelight, I would assume that I was in the clear; I had worldwide rights.  What the form does not make clear is that the permission derives from the Smithsonian’s rights as the owner of the physical negatives.  Only in the small print on the back of the form, in item 7, does one learn that this permission only covers the rights the Smithsonian has (without specifying what those are), and does not encompass other rights.  But I can well imagine that a user would see “worldwide permission” and assume everything is covered.  The case is a strong reminder that when making reproductions for patrons and granting permissions, repositories need to be crystal-clear about what they are doing.  In many ways, I wish we could come up with a word other than “permissions,” which is so closely connected to copyright, when it is physical ownership that is in play.

I also wonder how much the desire to run a photo reproduction permissions business and generate some revenue may have contributed to the museum’s seemingly sloppy practice.  Regardless of how the case turns out, the legal process is going to prove to be expensive, and if the Smithsonian should lose, it could face up to $150,000 in statutory damages per image.  $50 per image in licensing revenue hardly seems worth it if the desire to generate revenue led to the mistakes that appear to have been made. 

This case should be interesting to follow – if it is not settled out of court.  

PearseHocker v US 00269

How much will the Google subscription database cost?

Two efforts to get the following blurb into the latest issue of Current Cites have failed for technical reasons, so I am going to go ahead and post it here:

Cairns, Michael.  A Database of Riches: Measuring the Options for Google’s Book Settlement Roll Out  s.l.:Information Media Partners, 22 April 2010. (http://www.scribd.com/full/30334705?access_key=key-23rh5w2lwcdmcmzph2k4). 

Everyone is eagerly anticipating a decision on whether the court will accept the proposed amended settlement of the suit brought by some authors and publishers against Google’s library program.  The recent confirmation of Judge Chin to the Court of Appeals may indicate that we will have to wait longer (though there is at least some speculation that he might seek permission to address this one last case).

In the absence of a decision, we can only guess what the final GBS database might look like.  In this new report, Michael Cairns, a former president of R.R. Bowker, a publishing consultant, and the author of an earlier study on how many orphan works there might be in the database, has turned his attention to the business models Google might adopt.  It is the first public analysis of which I am aware that attempts to determine how much an institutional subscription might cost.

One can quibble with some of Cairn’s assumptions about the price of an average subscription or whether the level of market penetration he predicts would satisfy the settlement’s requirement of “the realization of broad access to the Books by the public, including institutions of higher education.” 

What surprised me the most was the the substantial amount of money that could be generated for the rights holders from these out-of-print titles.  Even at a relatively low subscription price and with modest market penetration, Cairns estimates that the database could generate $260 million a year, 70% of which, or $182 million, would go to the rights holders.  It is not enough to come close to justifying Google’s investment in the project, but for authors and publishers, it represents an enormous pot of “found money.”  The analysis also demonstrates that low subscription prices and broad market penetration may be more profitable than the normal library model of high subscription price and limited market penetration.

Crews: Important studies on ereserves

(posted by Peter Hirtle)

One of the more interesting recent conflicts in the Georgia ereserves case concerns an expert report on ereserves prepared by Kenneth Crews of Columbia for the defendants.  The plaintiffs tried to stop the report from being entered into the trial, but the judge allowed it.  The plaintiffs then filed their responses to the expert report and Crews has responded to them. 

I had been hoping that the expert report might show up on the Justia web site for the case or in the RECAP files, but it hasn’t.  I therefore got a copy of the report and its appendices from PACER and have posted them at Scribd.  The files consist of the full report and five appendices:

• Crews’s cv
• The 1976 Classroom guidelines
• The repudiated 1982 ALA Model Policy
• The unadopted 1996 CONFU Reserves Guidelines
• Copies of reserve policies from a large number of colleges and universities.

One can see why the plaintiffs wanted to keep the report out of the record.  It is essential reading for anyone interested in ereserves in libraries, and makes a very strong case that “the Georgia University Policy, as examined in this report, is consistent with the copyright law of the United States, and when followed by instructors, librarians, and others at the university, the policy will provide an effective means for promoting compliance with the law at the university” (p.68).

The most important part of the report are found in Part IV, where Crews describes the evolution and importance of reserves in libraries, and Part V, where he discusses the legal basis for ereserves.  In the latter section, he highlights the judiciary’s evolving understanding of fair use.  The courts, he suggests, have abandoned an earlier formulaic approach to fair use and have moved to a more flexible interpretation of the law.  Along the way, he demolishes certain assumptions that have been too-easily accepted by some librarians, such as the necessity of getting permission for subsequent use and the need to follow strict percentage guidelines when copying for reserves.  He also conducted a review of the reserve policies in use at schools around the nation (and in the process compiled a handy implicit checklist of issues for anyone developing a reserves policy to consider).

Crews’s response to the critics of the report discusses in detail the insufficiency of licensing as an alternative to an ereserves system based on fair use.  He also discusses why ereserves do not threaten the future of scholarly publishing.

There are of course areas that I wished he had emphasized more.  I think more attention could have been paid, for example, to the role of the library in supporting copying by students that, if done by the student, is likely legal.  If we focus on library reproduction, we make the library appear to be the publisher of anthologies and not the agent of students.  In addition, I don’t know enough about the law to know whether the inefficiency and unfairness of some licensing is a justification for limiting the scope of licensing.

Nevertheless, this documentation is an important contribution to the ereserve discussion and should be required reading even for those librarians not interested in the case but only in the topic.

UPDATE: Dan Lee pointed out to me that the PDF files downloaded from PACER do not seem to open in Acrobat Reader.  I use the free Foxit Reader, and it opens the downloaded files just fine.  So do two other free PDF readers I use, PDF-Xchange Viewer and GSview.  If anyone knows how to fix the PDFs so that they appear in Acrobat, I would love to hear about it.

GBS: A Legislative Solution?

(posted by Peter Hirtle)

Many of the critics of the proposed Google Book Settlement (GBS) have pointed out that it attempts to use the class action mechanism to effect what should be a legislative prerogative. James Grimmelmann’s amicus brief on behalf of the Institute for Information Law and Policy, for example, argues that the settlement “inappropriately attempts to solve a legislative problem through a class action settlement.”  Most recently, Pamela Samuelson has recently written that “The GBS settlement contravenes core rule of law principles of our society. To accomplish such an extraordinarily comprehensive restructuring of the future market for digitized books requires legislative action.”

I can’t speak to the issue of the harm that GBS may do to our legal system; I am an archivist, and my primary interest is in making sure that as much information is possible is publicly available.  If a legislative solution could do this, so much the better.  So the question is what would a legislative solution look like?  When one examines the alternatives, however, I don’t see much hope of agreement on an efficient solution.

Before we look at solutions, it is important to define the source of the problem.  GBS is a product of four fundamental flaws with our current copyright system: automatic copyright protection for every fixed creative work; the presumption that the grant monopoly rights to the copyright owner is total; the provision of unconscionably long copyright terms that have no empirical relationship with the incentive to create (as mandated by the Constitution); and draconian penalties if one should infringe. 

These four components of current copyright law – automatic protection, presumption of monopoly rights, long copyright terms, and draconian penalties – are deadly to any mass digitization project.  Because of them, most published items are still protected by copyright.  Furthermore, books cannot be digitized and made available without permission.  The transaction costs of identifying, locating, and securing permission to digitize works is incredibly high, and for a large percentage, no rights holder will ever be found.  Money spent on searching for these authors is just an additional tax on potential users of these works.  Yet if one risks making those works available without permission, one runs the risk of incurring ruinous damages.

A desirable legislative solution would both respect the interests of rights holders while at the same time limiting the transaction costs incurred by mass digitizers.  Those who have argued for a legislative alternative to GBS have not put forward draft legislation, but there are hints on what they would prefer in their writings.  The proposed solutions cover a wide spectrum of approaches.

At one extreme are the ideas put forward by Marybeth Peters in her testimony before Congress.  Peters notes that “the settlement proposed by the parties would encroach on responsibility for copyright policy that traditionally has been the domain of Congress.”  Specifically, she notes that the settlement in effect creates a compulsory license for Google, and that “compulsory licenses in the context of copyright law have traditionally been the domain of Congress.”  (Whether a license that has an opt-out provision is truly “compulsory” is an issue for a later day…)

Critics have long noted that the Copyright Office traditionally has protected the interests of copyright owners over the public.  Perhaps as a consequence, it has traditionally opposed compulsory licenses that diminish an author’s ability to control his or her work.  Peters did not assert that a legislated (as opposed to judicial) compulsory license would be appropriate to address the GBS problem.  At most, it is “an interesting proposition that might merit Congressional consideration” (emphasis added).  Instead, she seems to think that Google should be following the procedures recommended in the proposed legislation on orphan works.  Yet the orphan works solution, which requires a diligent search for a copyright owner, just exacerbates the high transaction costs associated with a mass digitization project.  As Georgia Harper has noted, the proposed bills on orphan works “conceive of orphans as adoptable on a case-by-case basis only, not at scale, with all the in-depth investigation that the analogy to adoption suggests. Such an approach seems to me to be unworkable even case-by-case, and … no legislative proposal will accommodate the scale of operation Google has undertaken.” 

Peters also goes out of her way “to underscore for the Committee that out-of-print works and orphan works are not coextensive.”  That means that if orphan works legislation were to pass, Google could make available the full text of those books whose rights holders cannot be found after a diligent search, but most out-of-print books would still be off-limits until permission had been secured.

In summary, if we can read between the lines of her testimony, Peters’s preferred legislative solution, would bend over backwards to protect the interest of rights holders.  It would do nothing to lower the transaction costs.  Google could, if it wanted, try to convince Congress (and the Copyright Office) that “a solution that is more like a compulsory license may make sense for those engaged in mass scanning,” but the Office’s traditional opposition to compulsory licenses stands.  I don’t see anything in Peters’s testimony that suggests a likely legislative solution that would solve the four problems facing mass digitization.

At the other end of possible legislative solutions is an idea argued by Larry Lessig and Chris Sprigman: adding formalities back into the copyright system.  Technology makes the idea of an affordable international copyright registry conceivable.  It would make it possible to identify, locate, and negotiate with those who are concerned about the rights in their work, and make accessible all the works of those who do not care (and hence don’t register) or who don’t know that they own rights.  This approach would seem to be the ideal method of both protecting the interests of rights holders and the general public, but the legislation introduced in 2004 to enact this idea went nowhere. 

Perhaps even more radical is the approach of Brewster Kahle.  There is, Kahle argues, an alternative to GBS: orphan works legislation.  But Kahle’s vision of orphan works is different than everyone else’s.  For Kahle, all out-of-print books are orphans.  “Remember,” he writes, “this is all about controlling the Orphans, or out-of-print works” (emphasis added).  Later in the same post he speaks of “out-of-print/Orphan works.”  In this regard, Kahle flies counter to the Orphan Works report and the legislation that he extols, both of which make it clear that an out-of-print work is not necessarily an orphan work.

If not existing orphan works legislation, what is Kahle’s vision of a legislative solution?  We have some hints:

Only if an owner comes forward and prove they own a work (with penalties for overreaching, and not just weak anyone-can-claim-anything-with-no-negative-consequences as it is proposed now)  then they can  negotiate for money.  Otherwise Orphan/Out-of-Print works can be used by anyone, say, for non-commercial use.   This is roughly how the Orphan Works legislation works…

Kahle’s vision is one where “out-of-print” equals “orphan,” and anyone is able to make non-commercial use of the work unless an owner comes forward.  It is an inspiring vision, but to suggest that this is “roughly how Orphan Works legislation” works is disingenuousness worthy of Sergey Brin himself.  Under the proposed legislation, orphan and out-of-print books could be used by anyone for any purpose – but only after a reasonable search for a copyright owner had been conducted.  Out-of-print but non-orphan books could not be used, even if the purpose was non-commercial.  No one other than Kahle has dreamed of a system where failure to maintain a work in print would limit one’s copyright monopoly.

Other legislative solutions are possible, though none seem likely. Sally McCausland, for example, in an absolutely top-notch paper entitled “Googling the Archives: Ideas from the Google Books Settlement on Solving Orphan Works Issues in Digital Access Projects,” suggests that extended collective licensing as practiced in some Nordic countries might be a legislative alternative to GBS.  Given the Copyright Office’s antipathy to compulsory licensing, however, and the absence of other legislatively-enacted collective licenses, this suggestion would take years to develop.

So right into the middle of the legislative spectrum between those who worry about the rights of rights holders and those who worry about users appears Google’s judicial settlement.  It gives rights owners the ability to opt-out, compensates those rights owners who want to stay in, and minimizes the cost of locating copyright owners.  It is not perfect, and Samuelson in particular has articulated a slew of ways to improve it.  But as far as a legislative solution goes, David Sohn at the Center for Democracy & Technology has still said it best:

In short, yes, Congress should have the last word. But in the meantime, the Google Books settlement offers the chance to expand public access and increase exposure for many millions of out-of-print works in ways that generally should benefit readers and authors alike.

Mostly bad news for educational fair use

(posted by Peter Hirtle)

Earlier this fall I wrote about what I called "the other coursepack case" (in Michigan, as opposed to the Georgia State case).  Partial summary judgment has been granted, and it is a mixed bag for educational fair use.

In the decision, the judge rejected all of the defenses that the defendant, Excel Copying, put forward.  First, the court rejected, as I suspected it would, the argument that the licenses secured by the University of Michigan library authorized the copying. 

It also rejected the stronger argument that Excel engaged in no direct infringing activity itself, since it was the students, and not Excel, that made the copies.  The court found that because Excel "is the source of the reproduction," it had the same liability as if it had made the reproductions.  Excel gathered the material, collated and numbered the copies, assisted students who were having trouble copying, and did everything except actually push the "start" button on the photocopy machine.  The court therefore concluded that Excel, and not the students, made the copies.  Furthermore, it found that lending the master copy of the course pack to the students violated the publishers' distribution right - even though there is no discussion in the opinion as to whether the master is itself a legal copy, and hence could be loaned under the first sale doctrine.

Lastly, the court completely rejected a fair use argument.  It accepted the reasoning of the majority in the Michigan Document Services (MDS) case that fair use was not applicable.  Because Excel is a commercial operation, the purpose of the copying was not educational.  As to the second factor, the court ignored the informational character of the readings, but said that since they were creative, it ruled against fair use.  ("The nature of the material is certainly creative, which militates against a finding of fair use.")  Of course, to be protected by copyright, a work must be creative.  If the court's reasoning were followed, the second factor must always weigh against fair use.  The court found that the third factor, the amount of the use, also weighed against the defendant, since the professors had selected the excerpts, which means that they must have substance.  Again, if one accepted this reasoning, it would be hard to know when an excerpt selected for a class could ever be a fair use.  Finally, on the fourth factor, the court found that because Excel does not pay licensing fees when its competitors do, the market for the copyrighted works is harmed.

I suppose that it should come as no surprise that in its fair use analysis, the court clung closely to the decision in MDS.  (It is also telling that the one commentator on MDS that it cited was Doug Lichtman of UCLA.  While I greatly enjoy his podcasts, he does seem to believe that if a use can be licensed, there should be no fair use.  Fair use should only apply in those situations, such as criticism or parody, when it is unlikely a license could be secured.) 

I was more surprised by the conclusion that because Excel enabled students to make copies, it was directly responsible for that copying.  To the eyes of this non-lawyer, this would seem to be a classic case of contributory, not direct, infringement. 

It makes me wonder as well about the potential liability of libraries.  It is common for libraries to receive from a faculty member a copy of a course pack and place it on reserve (much as faculty members provided copies of their course packs to Excel).  If a student then borrowed that course pack and copied it on a library photocopy machine, would the library be liable?  Section 108(f) of the Copyright Act protects libraries from charges of contributory infringement for copying done by patrons on library equipment, but could this decision be extended to suggest that libraries, just like Excel, have direct, not contributory, liability  for infringing copies made by students?  If so, the "safe harbor" of 108(f) would evaporate.  The court did concede that if a student secured a copy of a course pack from a friend "or other third party," brought it to a commercial copy shop, and made the copy, the copy shop may not be liable for copyright infringement.  Perhaps a library could be "a third party."

The potential good news for fair use in the decision rests more in what the court did not decide.  First, as with the MDS decision, by focusing on the commercial nature of Excel's copying, the court left open the question of the legality of similar copying conducted by a not-for-profit educational institution.  We will have to wait for a decision in the Georgia State case to see how that plays out.  Second, the court acknowledged MDS's contention that copying by students is problematic and may not be a fair use, but it chose not to address that issue as well.

All in all, this case seems to be one more rejection of the plain language of the fair use statute, which indicates that multiple copies for classroom use are not infringements of copyright.