[T]he price of textbooks has risen more than 800% over the past 30 years, a rate faster than medical services (575%), new home prices (325%), and the consumer price index (250%).
Sometimes litigation creates strange bedfellows. We have watched with great interest the case of White v. West, a lawsuit challenging legal research databases Lexis and Westlaw for their practice of ingesting legal briefs and motions filed in federal court cases, indexing them for search, and reselling access to the briefs in their own databases. An abbreviated order entered in February says the databases have won the case, most likely based on a fair use rationale, but a full opinion explaining the reasoning of the court is still forthcoming.
This situation is deeply ironic. Reed Elsevier and West Publishing, the parent companies of Lexis and West, are historically aligned with the rest of the content industry in opposition to any legal theory that loosens the grip of copyright holder control. Reed Elsevier in particular is quite aggressive. They funded an anti-fair use amicus brief in the Georgia State case, are a member of the AAP, which funded another anti-fair use amicus brief in the HathiTrust case, pushed hard for database legislation, and were behind the awful “Research Works Act” which would have outlawed federal public access policies.
But now these ardent maximalists find themselves in substantially the same position as the libraries they have lately antagonized, and they must rely on the strongest possible fair use arguments to get themselves out of copyright trouble. Remarkably, the briefs make an eloquent case for fair use, and libraries can learn a lot from them.
Reed Elsevier and West filed six briefs in the case that are chockfull of fair use arguments. Here are a few of the high points, taken from Document #69, Reed Elsevier Memorandum of Law in Opposition to Plaintiff’s Motion for Summary Judgment. The full brief is embedded at the bottom of this post:
First Factor: Purpose and Character of the Use
“After selecting the Briefs for inclusion in the BPM database, Lexis enhanced them by making them text and topic searchable, adding links to and from related opinions, expert testimony, and other related materials, and adding hyperlinks to cited cases and statutes.”
So, careful processing and contextualizing helps strengthen a transformativeness argument. Libraries who add helpful metadata, link documents with one another and with larger collections, and so on, are engaged in transformative activity that creates a new, improved research object, different from the raw item that was initially acquired.
“Following selection and enhancement, the Briefs were added to a sophisticated research tool consisting of interconnected legal documents for students and professionals to research legal arguments, case law, statutes, pleading formats and so on.”
Once individual works are tagged and so on, they can be further transformed by placing them into a larger tool that enables search and analysis across a large corpus.
“Plaintiff’s use of the Briefs was entirely different. They were created to advocate a client’s position in a court.”
While in the broadest sense, legal briefs are written (like every written work) to be read, the Elsevier legal team realizes that you need to look at a more specific purpose to determine whether a new use is transformative. Namely, you need to look at the main purpose that motivated the author to write and publish the work. Similar arguments could be made about many items in library archives and special collections, and even in general research collections. These works were created as business records, or personal documents, or to communicate privately, or to advocate a scholarly position to one’s peers, etc. Making them the object of research or teaching may well be transformative.
“The stark contrast in the purposes of these two uses alone confirms that Lexis’s use is transformative.”
Indeed, the case law is quite clear: a use is transformative (and thus favored under the first fair use factor) if it is made for a new purpose distinct from the purpose of the original work. Reed Elsevier should have put its attorneys in this case in touch with the ones representing the AAP in its anti-fair use amicus brief in the HathiTrust case, as the latter team sternly dismissed the idea that a new purpose is sufficient to render a use transformative. Indeed, the Reed Elsevier team cites with approval exactly the same language from Judge Baer’s decision in HathiTrust that the AAP team is trying to discredit.
Digital access provided to students for free is not the same as printed course packs sold for profit
Reed Elsevier argues persuasively that the Basic Books v. Kinko’s case, which found copy shops liable for providing students with course packs for profit, does not apply when the use is transformative and access is provided free of charge:
That case involved a private copy center charging college students for copies of course packets. Lexis, however, does not charge law students for access, and its use, unlike the defendant in Basic Books, did not have “the intended purpose of supplanting the copyright holder’s commercially valuable right.”
Second Factor: Nature of the work used
“Lexis therefore did not usurp any right of first “publication” because Plaintiff never had any intention to publish the Briefs beyond filing them in court.”
Libraries sometimes worry that for unpublished works they may face the claim that their use cannot be fair because it violates the old common law “right of first publication.” Reed Elsevier argues that for works that obviously were never destined for publication, there is no such right. Music to any archivist’s ears, I’m sure!
“[L]egal professionals who review already filed legal documents are not searching for clever turns of phrase—they are looking to see what arguments have been made, what authorities have been cited, and what facts have been relied upon by lawyers in cases similar to their own.”
Kinda sounds like what scholars are interested in when they look at articles and books, right? Just as Judge Evans did with the scholarly monographs in the Georgia State case, Reed Elsevier argues here that the briefs are not primarily about expression; they are about facts and analysis. This turns the second factor in favor of fair use.
Third Factor: Amount Used
“It is indisputable that it was necessary for Lexis to copy the entirety of the Briefs to create a fully searchable database and provide the user access to complete and accurate legal formats and arguments as part of its transformative use.”
Indeed, you can use the whole thing if that’s the right amount for your transformative purpose. If your purpose is to make a fully searchable database (ahem, HathiTrust), then, by golly, the whole thing is what you need! Reed Elsevier said so. (And so did the US Supreme Court, of course, in the landmark case Campbell v. Acuff Rose.)
Fourth Factor: Market Harm
“Plaintiff makes the circular argument that, because Lexis uses the Briefs for its sophisticated legal research database, ipso facto, Lexis has harmed Plaintiff’s ability to license its Briefs for that use.”
That’s right: just because, say, the AAP or the Copyright Clearance Center or the Authors Guild comes knocking with its hand out doesn’t automatically mean there is a genuine “market” that has been harmed by the use. That would be circular!
“To avoid this ‘danger of circularity,’ courts have held that market harm for purposes of a fair use analysis does not take into account any market created by the transformative use.”
So when someone like, say, the CCC or Reed Elsevier, does have their hand out, you can tell them they don’t get your money if what you’re doing is transformative.
“Plaintiff acknowledges that the Briefs were not created with the intention of selling or licensing them, and it has never attempted to sell or license the Briefs.”
Yep: there can’t be market harm if you’ve never intended to exploit a market. Again, good news for archives and special collections; all those business records and family photos and constituent letters are subject to a very friendly analysis under the fourth factor.
“First Amendment considerations are also part of the fair use doctrine.”
Fair use is not the last refuge of a scoundrel; it is a “built-in First Amendment accommodation” recognized by the Supreme Court. Where First Amendment interests are at stake (academic freedom, perhaps), the scale should tip further in favor of fair use.
It is really quite refreshing to read all the arguments that we in the library community have been making for years in the pages of a brief filed by the loyal opposition. I would like to hope that the publishers learned something from spending a little time on the Defendant’s side of the “v.,” but since their terrible GSU and Hathi briefs were filed after these wonderful briefs (and by different attorneys), I’m not optimistic.
In some cases, the target takes some rash, bold, bizarre initiative to regain a positive identity and recover personal legitimacy, even though an outside observer can see that the initiative will not only fail but exacerbate the target’s disrepute.
The Board believes that the licensing terms in the Taylor & Francis author agreement are too restrictive and out-of-step with the expectations of authors in the LIS community.
I think that the open access activists will win out.
At last year’s Fall Membership Meeting of the Association of Research Libraries here in Washington, D.C., the refrain was, “libraries are under siege.” Copyright litigation against libraries was proceeding on several fronts, and the rejection of the Google Books settlement had library directors worrying about the next shoe to drop.
What a difference a year makes. In May the federal district court in Atlanta gave a decisive victory to Georgia State University (GSU) in the lawsuit over its electronic course reserves. (Read my summary of the holdings in the case here (PDF).) On October 3, a court in California dismissed for the second time a complaint against UCLA over streaming video. Then, on the opening night of this year’s ARL Fall Meeting, came the coup de grace: Judge Harold Baer of the Southern District of New York handed down a sweeping victory for the HathiTrust and its partner libraries, which had been sued for their mass digitization of library books. (ARL is hosting a free webcast about the case tomorrow, featuring four attorneys directly involved in the case.)
It seems that, in literally every corner of the US, courts are siding with libraries as they work in good faith to bring their collections and services into the 21st century. The siege appears to be lifting, or at least on hold pending any (misguided) appeals. This is a good time to pause with the advantage of hindsight and ask what was really going on in these cases, and what lessons we can learn from the trials.
The most important lesson for the antagonists in these cases is that it’s time to stop looking to libraries for a copyright windfall. In every one of these cases the plaintiffs were looking to profit on content that libraries had already purchased, and from library programs that did not require a license. It’s time to give up on what seems to be an obstructionist, backward-looking strategy and focus instead on adding value for libraries and their users.
These lawsuits were wasteful because the plaintiffs generally had little or nothing to offer to libraries as an acceptable substitute for the supposedly infringing uses they sued over. Every time the trial courts looked at the market realities in these cases, they found that libraries were using technology along with lawfully purchased collections in order to fill a need that markets could not, would not, or should not meet. The plaintiffs expected libraries to do all the work of making valuable new uses of collections materials, and then pay for the privilege. As Duke University Scholarly Communications Officer Kevin Smith has explained persuasively, these plaintiffs have fundamentally misunderstood the Copyright Act as a blanket entitlement to profit from any activity that involves books or videos, without regard to the consequences for society at large.
For example, information disclosed at trial in the GSU case shows that publishers often withhold licenses to use digital excerpts, partly in hopes that students might have no choice but to purchase an entire book in order to read a few relevant pages. One of the reasons many of the GSU uses were found to be fair was that the excerpts assigned were often not available for licensed use in the appropriate format. Even where licenses are available, Judge Evans observed in her decision that licensing agents like the Copyright Clearance Center (CCC) don’t sell actual content or technological services; they only sell permissions. Libraries who pay CCC’s fees still have to find and digitize material from their own collections, and mount the digital excerpts on their own platforms. The ultimate irony is that it was made clear at the GSU trial that if course reserves were to require a fee, faculty would simply stop using them. But Oxford University Press, Cambridge University Press, and SAGE (with funding from CCC and the Association of American Publishers) were still willing to sue.
Similarly, the court in the HathiTrust case found that there simply was no workable market for the mass digitization uses that the libraries had made, and that, in any event, fair use would not allow the formation of a market to extract payment for such socially valuable, transformative uses. And, again, the Authors Guild and the other plaintiffs had made no effort to enable libraries to embark on mass digitization projects. It is unlikely the plaintiffs have the ability to authorize such a project, as they represent a tiny minority of authors of library collections materials, and they may not even possess the necessary rights. (Once they get past these lawsuits over digitization, there will surely be more litigation over whether authors or publishers are the owners of the right to authorize ebook publication.) These plaintiffs don’t seem interested in providing libraries with any kind of service or solution to make books searchable or accessible to the print-disabled, so why should they profit when libraries take on these transformative tasks?
The UCLA case is a bit of an outlier, here, in that one of the plaintiffs, Ambrose, claimed to offer a streaming video product that would be cheaper and more useful than UCLA’s homegrown solution. However, it turned out that Ambrose had already sold UCLA the right to stream the films when it sold UCLA the DVDs long before it began to offer its own streaming service. That fact makes this an especially vivid case of double dipping. In any case, the market is a better judge of value than the courts; if Ambrose has a fantastic and affordable streaming service, libraries who need it are sure to sign up. If the product has disappointing sales, they should invest in improving it, rather than investing in legal fees to sue libraries.
In general, rather than sue to shut down or monetize library services they cannot or will not provide, the plaintiffs should refocus their energy on publishing and selling useful new content and services that libraries will want to buy. Libraries spend many millions of dollars every year acquiring content and services for their users. Collectively, ARL libraries spent over $1.4 billion on library materials in 2010-2011, about $12 million per library on average. That money is significant, but as Penn State Associate Dean for Research and Scholarly Communications Mike Furlough pointed out at a recent meeting of the AAUP, it is not infinite: every dollar libraries are forced to spend defending frivolous lawsuits and paying for fair uses of works they already own is a dollar they cannot spend on new books, serials, videos, and services. The courts in these cases recognized that imposing such a needless tax on educational use is contrary to the purpose of copyright. Everyone would be much better off if those suing libraries would return to copyright’s constitutional design: profiting by promoting, rather than halting, progress in science and the useful arts.
The lesson for libraries is equally important: there is a critical need to stand up, and be united, in defense of your rights. For years rightsholders relied on the uncertainty around copyright to force individual libraries into settlement agreements without having to actually win a court case. Libraries were worried that even if their work is fair and socially beneficial, the Copyright Act might not give them the tools they need to defend themselves. Multiply that uncertainty by the potentially dramatic statutory damages in the law and the cost of defending a lawsuit, and you can see why even a library that believed its activities were perfectly reasonable might nevertheless agree to curb them in deference to an assertive plaintiff. Many libraries were effectively intimidated before GSU, UCLA, and HathiTrust (together with several HathiTrust members) tested their claims in court.
In addition to those three brave stands, the community collectively stood up for its rights with the publication earlier this year of the ARL Code of Best Practices in Fair Use for Academic and Research Libraries. That document has since been endorsed by a wide variety of library and academic groups, including the American Library Association, the Association of College and Research Libraries, the Music Library Association, the Visual Resources Association, the Art Libraries Society of North America, and the College Art Association. As I’ve noted on this blog, the GSU and HathiTrust cases both offer further confirmation of the consensus in that document. Academic and research libraries around the country have already taken the Code as a new standard for their practices. I believe libraries have happily learned the lessons of this exciting year. It remains to be seen whether the plaintiffs will get the message.
What has developed in the content industries is a sense that copyright exists to support their businesses, so any new way they find to extract a little extra money from the rights they hold should be endorsed and protected by the courts. If you start from that premise, it makes sense to sue libraries for providing digital copies to blind people and professors for giving students access to short excerpts from a scholarly book because you believe you are acting from within the core purpose of copyright. But the premise is wrong.
Nearly all the spokespeople and committee members I’ve seen in the press (the library trade press aside) about e-textbook pilot projects come from academic-affairs offices or campus IT, and that worries me.
The same is true of the MOOC phenomenon. We need to get librarians in these conversations, and open access in these conversations, before it’s too late.
If you want to be in the business of printing truth, the best license to choose for your business is the Creative Commons Attribution License (CC BY). For now. And if you’re printing science, medicine, technology or even philosophy, I really hope you want to print truth.
There’s a view that would say, ‘We can’t imagine a world without the Journal of the American Chemical Society. Well, there was a time when we couldn’t imagine a world without Kodak cameras either.