ARL Policy Notes
Orphan Works/Mass Digitization Roundtables: Copyright and Fair Use Myths and Realities

During the orphan works roundtables, several participants attacked fair use and libraries, misstated the purpose of the copyright system in the United States, or inaccurately portrayed the activities of HathiTrust. Here are just some of the misconceptions or myths cited at the roundtable and responses to these inaccuracies:

Myth 1: Fair use is too uncertain

Some advocates of a legislative orphan works solution argued that legislation is necessary because fair use is too uncertain or unpredictable.

Reality: Fair use is a fairly predictable doctrine

Fair use is actually fairly predictable. Professor Pamela Samuelson wrote an article in 2009 entitled, Unbundling Fair Uses which concluded that “Fair use is both more coherent and more predictable than many commentators have perceived once one recognizes that fair use cases fall into common patterns.” In fact, the Australian Law Reform Commission (ALRC) pointed to this very article when proposing that Australia adopt a fair use provision. The ALRC went on to note that fair use factors can represent “a clear principled standard [that] is more certain than an unclear complex rule.” In recent testimony before the House Judiciary Committee Subcommittee on Courts, Intellectual Property and the Internet, Professor Peter Jaszi (American University) similarly stated that fair use jurisprudence is predictable and coherent.

Myth 2: Recent fair use jurisprudence consumes Section 108 and renders the provision meaningless

Some have argued that applying fair use to activities not explicitly permitted under Section 108 makes this specific limitation, as well as others that libraries rely on, meaningless. They also suggest that fair use goes too far when applied where Section 108 does not apply.

Reality: Section 108(f)(4) includes an explicit savings clause that fair use still applies

Section 108(f)(4) provides that “Nothing in this section—in any way affects the rights of fair use as provided by section 107…” The plain language of the statute could not be any more clear: “Nothing … in any way affects the rights of fair use.” It is obvious that fair use applies even where a specific limitation or exception codified under Section 108 does not, subject of course to evaluation of the four fair use factors. Some argue against the plain language by asking what the purpose of Section 108 is if libraries can simply rely on the fair use provision of Section 107. Explicit limitations and exceptions can be beneficial in providing certainty for certain activities, particularly for those that are risk adverse, or apply where fair use might not. Libraries rely on a mix of purpose specific limitations and exceptions as well as fair use in order to achieve their public service mission and respond to evolving technology.

Myth 3: Fair use being used as an excuse by the library community to perform activities not covered by specific limitations or exceptions

Several participants claimed that fair use was just an excuse being used by the library community where specific limitations do not exist. Others argued that fair use has gone too far and has made copyright the exception to fair use.

Reality: Libraries are a conscientious and risk adverse community. Fair use is being used after careful thought and based on solid legal footing

Although there are numerous purpose specific limitations and exceptions that libraries rely upon, they do not cover every situation and fair use has long been relied upon where specific exceptions do not exist. Libraries are not pirates, but rather, are trusted institutions serving a public mission to provide access to knowledge and culture within the boundaries of the law.

The Code of Best Practices in Fair Use for Academic and Research Libraries notes that “how judges have interpreted fair use affects the community’s ability to employ fair use.” The practices of libraries are grounded in court decisions and judicial interpretations of the fair use doctrine.

Myth 4: Fair use clearly prohibits any uses that have an effect on the market

One commentator at the orphan works roundtable repeatedly argued that relying on fair use for any uses that have an affect on the market violates copyright law and is an infringement of a creator’s rights.

Reality: Fair use is a flexible standard and all four factors are considered together

Fair use is not designed to require satisfaction of all four statutory factors, but instead are considered together. The four factors include: 1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value for the copyrighted work.

The Supreme Court has explicitly stated that the factors are not to “be treated in isolation from one another. All are to be explored and weighed together, in light of copyright’s purpose” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). Following this line of reasoning, circuit courts have confirmed that a defendant does not need to prevail on each of the four factors in order to successfully rely on fair use.

Myth 5: Copyright’s primary purpose is free expression and not to promote the public benefit

A disagreement broke out during one of the panels, with one person arguing that there is no legal basis for the argument that copyright’s primary purpose is to promote the public benefit.

Reality: The Constitution clearly states that the purpose of the intellectual property system is to “promote the progress of science of the useful arts” and the Supreme Court has repeatedly pointed to the importance of the public interest

Article 1, Section 8, Clause 8 of the U.S. Constitution sets forth the constitutional rationale for the intellectual property system: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The Supreme Court has repeatedly noted that this clause is both a grant of power and a limitation for Congress.

In Sony Corp. of America v. Universal City Studios, the Court cited past precedent dating back to 1932 that “The copyright law, like the patent statutes makes reward to the owner a secondary consideration” and that “The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors” (emphasis added). Additionally, the Supreme Court noted that “The immediate effect of our copyright law is to secure a fair return for an ‘author’s creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good” (emphasis added).

Additionally, fair use is an important limitation to copyright and has been upheld by the Supreme Court as a “First Amendment safeguard.”

Myth 6: Best practices in fair use are a contemporary/recent standard and not known by creators

One participant discounted the value of best practices because they have only been developed recently and have not withstood the test of time. Another suggested that the communities themselves did not create these best practices.

Reality: While many codes of best practices are recent, these practices contained within the codes have been used prior to being collected in a code

Codes of best practices do not appear out of thin air. The Code of Best Practices in Fair Use for Academic and Research Libraries, for example, was created in consultation with 150 research and academic librarians across the country. The Code of Best Practices draws upon the experiences of academic and research librarians and is a compilation of their best practices. Although not every librarian might agree with every principle, limitation or enhancement, as pointed out during the roundtable by one of the principal authors of this Code, Brandon Butler, such librarians are in the minority. While the aggregation of these best practices into a single document may have occurred recently, the practices themselves are not new to many libraries.

Myth 7: Digitization without authorization is not fair use. Other than the district courts in HathiTrust and Georgia State, courts have not approved of these types of activities.

Some participants discounted the district court decisions in HathiTrust and Georgia State University, noting that these cases were still in their first round and that circuit courts had yet to decide the case. Others stated that other than these two district courts, no courts have approved of these activities as fair use

Reality: Numerous circuits have upheld mirror image copies as transformative and applied fair use

Although HathiTrust and Georgia State University do involve new issues of mass digitization, several circuit courts have addressed whether mirror image or exact copying is fair use, finding that transformative copies are protected by fair use. The Fourth Circuit in A.V. v. iParadigms, for example found that using student papers to create a plagiarism database was protected under fair use. Similarly, in Perfect 10, Inc. v. Amazon as well as Kelly v. Arriba Soft Corp., the Ninth Circuit found that using website images to create a search index constituted fair use. Likewise, the Second Circuit upheld fair use in Bill Graham Archives v. Dorling Kindersley for the use of concert posters in a book. These cases provided a solid basis for the HathiTrust _and _Georgia State University decisions and suggestions that the district courts went rogue and circuits have not approved of these types of activities are incorrect; circuit after circuit has upheld mirror image copying as fair use. While it is true that both HathiTrust and Georgia State University are on appeal, there are strong legal arguments supporting the application of fair use to mass digitization in these cases.

Recap of the Copyright Office’s Roundtables on Orphan Works and Mass Digitization

On March 10-11, 2014 the Copyright Office held roundtables on orphan works and mass digitization. These roundtables included nine sessions, most of which included sixteen panelists representing different organizations and perspectives.

There appeared to be little agreement on the vast majority of issues and opinions diverged widely. The greatest consensus seemed to be opposition to, or at least caution with, extended collective licensing; the Copyright Office noted, however, that some prior comments supported extended collective licensing solutions.

During the sessions, best practices, fair use, the issue of whether orphan works and mass digitization need to be treated separately, and licensing solutions were heavily referenced and discussed. Some individuals attacked recent fair use jurisprudence or claimed that their human rights were threatened by use of orphan works or mass digitization projects. Photographers in particular raised concerns that photographs are turned into orphans too quickly, particularly when images are put on the Internet. The library community seemed to agree on the vast majority of issues, with the exception of one representative from Rutgers University Libraries, and members of the Library Copyright Alliance (LCA) spoke with one voice. Below are summaries from each session.

1) The need for legislation in light of recent legal and technological developments

The first point of disagreement centered around the issue of whether there is even a need for orphan works legislation. Most members of the library community, including the Library Copyright Alliance and a representative of Harvard University, noted that they were satisfied with recent fair use jurisprudence which diminished the need for orphan works legislation. This sentiment was echoed on the next panel by several other representatives of the library community. The Association of American Law Libraries stated their support for legislation in theory, but noted that there is a risk that legislation may not ultimately be a positive. CCIA noted that the complexity and regulatory nature of past orphan works proposals have made some stakeholders oppose a legislative solution.

Others, including Association of American Publishers, Wikimedia, Authors Guild, National Music Publishers’ Association and the representative of Rutgers University Libraries argued that orphan works legislation is needed. Some of those supporting orphan works legislation pointed out that their members or stakeholders value certainty.

In addition to the need for legislation, there were many references to fair use and best practices. Some representatives of rightsholder groups voiced their concern that their stakeholders were not consulted in development of best practices. Some participants noted their approval of recent fair use jurisprudence, while conceding that fair use does not address every issue. The Digital Library Copyright Project noted its project on best practices for use of orphan works for libraries and universities. Representatives of the library community continued to look favorably both on recent fair use jurisprudence and best practices, with the exception of the representative of Rutgers University Libraries who aligned with representatives of some rightsholder groups, including the National Music Publishers Association, American Society of Illustrators Partnership and the American Society of Journalists & Authors and argued that recent court cases on fair use have gone too far.

Although the Copyright Office did not want to engage in a debate over the copyright term, several participants pointed out that the lengthy copyright term in the United States of life plus seventy years has exacerbated the orphan works problem.

2) Defining a good faith “reasonably diligent search standard”

With respect to defining a reasonably diligent search standard, there was again no agreement or consensus view as to how it should be defined and whether a flexible or rigid approach would better solve the orphan works issue. Representatives of the library community encouraged flexible standards due to the differences in users, uses and circumstances that could influence the reasonableness of a search. Additionally, a rigidly defined standard would result in the law being unable to evolve and adapt to new technologies. The American Library Association noted that the searches conducted by librarians reveal sincere efforts to find the rightsholder. A representative of International Documentary Association and Film Independent, pointed out that overly rigid guidelines could result in failure because the legislation would not be used. The Society of American Archivists noted that a high standard for reasonably diligent search could prove too costly and make digitization efforts unsustainable.

Others suggested that a reasonably diligent search standard must have minimum standards and encouraged a more rigid approach in order to provide more certainty. The Motion Picture Association of America and the National Portrait Gallery representatives pointed out that minimum standards could still be flexible.

Some participants offered the following considerations in defining a reasonably diligent search: cost, commercial versus noncommercial intent, free market solutions, type of the work, age of the work and the use of the Copyright Office records. Another issue was whether a reasonably diligent search was possible for mass uses. There was no consensus on any of these issues.

Best practices were again referenced during this session, with many pointing out that they draw on the expertise of the community. Additionally, as noted by the International Documentary Association and Film Independent, best practices can evolve and there have been no specific allegations of misuse in these best practices. Responding to suggestions that the Copyright Office should facilitate drafting of best practices created by rightsholders and the user community, the Library Copyright Alliance pointed out that such negotiations would be long, delay the process at the outset, and could be fruitless, as evidenced by the widely diverging opinions expressed throughout the round table.

3) Role of private and public registries

The Society of American Archivists noted that registries cannot solve all issues and that the majority of orphan works are personal documents. SAA also cautioned that any solution must take into account the cost in searching for an orphan work.

Some of the panelists argued for global registries, while others advocated for voluntary opt-in registries or private registries. Some suggested that there is a need for multiple registries and that users of orphan works must find a way to search all the existing registries.

4) Types of works subject to any orphan works legislation, including issues related specifically to photographs

Much of the discussion centered on whether photographs should be included in an orphan works solution. The Association of American Publishers supported the idea that all works should be subjected to orphan works legislation. Other rightsholder groups specifically suggested a carveout for the interests they represented, such as for illustrators or musicians; others did not specifically advocate for a carveout but said that different works should be treated in a different manner. The Library of Congress pointed to the danger of excluding works such as photographs, because the same photographs are being used over and over again because of the fear in using orphaned works, skewing historical and cultural records.

The American Society of Media Photographers called artists “disenfranchised” and argued that creators would not be able to profit in an ongoing manner. The National Press Photographers Association said that there is a legitimate concern regarding finding the authors of older photographs, but noted that current photographs are instantly made orphans when they are uploaded to the Internet and stripped of their metadata.

The Digital Public Library of America advocated for “democratic access” to works, but the National Press Photographers Association opposed this idea.

During this panel, there was disagreement as to whether the Constitutional rationale of the copyright system is to promote the public benefit. Again, some panelists stated that fair use does enough to address orphan works concerns and already addresses some of the concerns discussed during the panel.

5) Types of users and uses subject to any orphan works legislation

While most panelists during this session seemed to suggest that legislation should cover both commercial and non-commercial users and uses, there was disagreement as to whether they should be treated equally. Additionally, some panelists during earlier sessions voiced disapproval for an orphan works solution that applied to commercial uses.

Several, including the Association of American Publishers, Association of Research Libraries, College Art Association, Writers Guild of America West, and the representative of Harvard University noted that the line between commercial and non-commercial can be difficult to define. Some noted that some non-profit institutions have gift shops or can engage in for-profit activities in order to sustain their non-profit work. Additionally, some commercial entities can provide genuine not-for-profit uses. The Association of American Publishers suggested that commercial entities are necessary because a legislative solution would likely be too complicated for individuals to take advantage of the legislation on their own, but who would be willing to pay for the value provided for by commercial interests.

Some panelists felt the distinction should not be whether a user is commercial or non-commercial, but that consideration should be given to whether a use is commercial or non-commercial. A representative from the Graphic Artists Guild argued that illustrators can clearly explain what are commercial uses and what are non-commercial uses, asserting that their industry would be destroyed if it were possible to use orphaned works for free in the commercial market. The Graphic Artists Guild also noted that non-commercial uses, such as for education and preservation, are already permitted under fair use.

Some arguments were made against making the law overly complicated because doing so could create confusion for individuals or, depending on the complexity, even for lawyers.

6) Remedies and procedures regarding orphan works

This session discussed limitations on monetary damages and injunctions. Most, but not all, participants supported limitations on injunctions because without such limits, no one would take advantage of a solution in which they must invest large amounts of money.

With respect to monetary damages, participants suggested the following: reducing or remitting statutory damages, remitting attorneys fees, and increasing damages for bad actors. Some felt that different standards for different works are appropriate and looking at the circumstances, such as the time or age of commercialization could be taken into account. A representative of the Digital Media Association opposed words like “reduce,” “remit,” or “increase,” arguing that the focus should be on reasonable compensation instead.

The National Press Photographers Association advocated heavily for a small claims court and stated that any orphan works solution should be tied to a willingness to participate in a small claims court.

The National Writers Union argued that the solutions being discussed resulted in blaming the victim and suggested that it is the users of orphan works that should be required to register and notify the public of the intent to use such works.

7) Mass digitization, generally

Throughout the roundtables, many participants argued that orphan works and mass digitization are different issues and must be separated. The panel on mass digitization was the most contentious of the all the panels spanning both days, with attacks on libraries and the Authors Guild making several explicit threats to sue libraries that digitize under a claim of fair use. The contentiousness of this panel highlighted the likely impossibility in coming together to find any solution.

Participants discussed whether fair use applied to mass digitization or whether its use goes too far. The Library Copyright Alliance pointed to several cases supporting the argument that digitization is considered fair use. Although some participants throughout the roundtables dismissed HathiTrust and Georgia State University because both case are on appeal the Library Copyright Alliance noted that the fair use argument is supported by a number of cases that have been decided by several circuits. Again, the library community largely supported the reliance on fair use for digitization projects, with the exception of the representative of Rutgers Universities Libraries. The representative of the University of Michigan, after several attacks on libraries and reliance on fair use, stated that the attacks were unfounded and that libraries are conscientious actors, not pirates. A representative from American University/Creative Commons USA stated that format shifting was clearly fair use, though questions may arise as to the uses after format shifting has taken place.

The Authors Guild disagreed and argued that digitization violates fair use and Section 108. The representative of the Authors Guild issued a “warning” that if libraries continue to digitize and argue fair use, then the Authors Guild would bring lawsuits for this type of behavior. The MPAA stated that it was comfortable with the case-by-case basis approach of fair use, but argued that it is impossible to consider application of fair use in a mass digitization case where you might have 20 million books. The National Press Photographers Association noted that one of the particular problems for photographers is the public perception that everything on the Internet is in the public domain.

As expected, some of the discussion covered the HathiTrust case. The representative of the National Press Photographers Association likened the case to Plessy v. Ferguson, a Supreme Court case from 1892 that upheld the “separate but equal” doctrine until being overturned by Brown v. Board of Education. The National Press Photographers Association argued that HathiTrust had been decided incorrectly and that just because Plessy v. Ferguson was the law for decades, it did not make the law right.

The representative from the Library of Congress pointed to the high costs of mass digitization, stating that it is not as simple as throwing a document into a scanner. He pointed out that there is a value add in what they do by making scans ADA compliant and that there is proper quality control, all of which results in costs to the institution. The Museum of Fine Arts, Boston added that digitization offers new benefits and value, such as providing 360 degree rotation of sculptures or vases, which would not otherwise be available.

8) Extended collective licensing and mass digitization and 9) Structure and mechanics of a possible extended collective licensing system in the United States

Sessions eight and nine overlapped, not only with respect to content but also with some of the same panelists. The participants at the sessions seemed to oppose or were at least wary of extended collective licensing.

Some pointed to the problems of collecting societies including that little money is actually distributed to the creators, there can be a lack of accountability, and they do not take into account the different interests of different authors. A couple of panelists also pointed out that extended collective licensing could come into tension with antitrust laws and that ultimately the states will end up with most fees due to unclaimed property laws.

Most panelists agreed that an individually negotiated license should be the first preference. Many panelists from rightsholder communities stated that voluntary licensing has worked in their communities. Many also pointed out that the United States does not have much history, tradition or experience with extended collective licensing regimes.

One participant noted that extended collective licensing creates an unnecessary tax and can damage fair use; only where fair use does not apply should one seek a license. This participant also pointed to the great value-add that has resulted from mass digitization projects undertaken by libraries.

The National Federation of the Blind cautioned against extended collective licensing because of the huge benefits that mass digitization has provided for persons who are blind or print disabled. He noted that anything that had a chilling effect on mass digitization would likely limit access for persons who are visually impaired and noted concerns with economic disincentives to digitize works.

Conclusion

Written comments are due to the Copyright Office by April 14, 2014. Judging from the discussions at the orphan works roundtable, however, it appears unlikely that the Copyright Office will be able to find a consensus view to please all stakeholders. The views expressed at the roundtable were widely divergent and it seems highly unlikely—given various threats and attacks on libraries as well as the extreme rhetoric regarding fair use—that all stakeholders could come together to find a solution. Even where it seemed like many participants agreed, such as opposing extended collective licensing regimes, the Copyright Office pointed out that some comments submitted in previous requests for comments supported such collective licensing.

The best word to describe yesterday’s oral argument at the Eleventh Circuit Court of Appeals in regard to the appeal of the Georgia State University e-reserves decision is probably bizarre. But that has to be qualified; they were bizarre in a very discouraging direction for GSU and fair use in the academy.
TOMORROW!! Georgia State University Copyright Case: Post-Argument Panel

November 19, 2:00 pm, Rialto Center for the Arts

In 2012, the North Georgia District Court ruled largely in favor of Georgia State University in the ongoing copyright lawsuit initiated by Cambridge University Press, Oxford University Press, and Sage Publishers. The decision was the first federal court decision specifically addressing fair use and electronic reserves. Plaintiff publishers appealed on many points of the ruling.

Oral arguments in the Cambridge v. Becker (GSU Copyright) lawsuit are scheduled for the morning of November 19th at the 11th Circuit Court of Appeals, room 339. Following the arguments, Georgia State University Library and American University Washington College of Law Program on Information Justice and Intellectual Property will host a post-argument panel at 2:00 p.m. in the Rialto Center for the Arts lobby.

Panelists:

  • Brandon Butler, Moderator, Practitioner-in-Residence, Glushko Samuelson IP Clinic, American University, Washington College of Law

  • Tony Askew, Principal, Meunier Carlin & Curfman LLC

  • Jonathan Band, Owner, Jonathan Band PLLC

  • Michael Landau, Professor, Georgia State University College of Law

  • Lisa Macklin, Director, Scholarly Communications Office, Robert W. Woodruff Library, Emory University

  • Steve Schaetzel, Principal, Meunier Carlin & Curfman LLC

  • Bruce Joseph, Partner, Wiley Rein LLP

The panel is free of charge, but registration is required to attend.

There will be a free live webcast of the event at http://www.livestream.com/georgiastate

If the Eleventh Circuit Court of Appeals applies this type of reasoning in the GSU appeal, we could see an even broader fair use ruling in Georgia State’s favor than we got from the District Court.
Kevin Smith, writing about the recent string of losses that publishing giant Wiley has suffered in recent months. From his lips to the 11th Circuit’s ears!
We may discover that buying something no longer means owning it in any meaningful sense—and our stuff isn’t really ours anymore.
Historian (and #GSU prof!) Alex Cummings on "The end of ownership." If only Oxford U Press would listen to its authors when they talk about wise copyright policy.
Great Fair Use Advice from Reed Elsevier (Seriously!)

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 GSU Amicus, LCA Invokes Best Practices, Dispels Market Myths

The Library Copyright Alliance (LCA) filed a friend of the court brief today in support of Georgia State University in the appeal of Cambridge U. Press et al. v. Mark P. Becker et al. In its brief, LCA argues that GSU’s e-reserves policy is consistent with widespread and well-established best practices for fair use at academic and research libraries, and that these uses have no negative effects on scholarship. LCA is represented by Jonathan Band and attorneys from the Electronic Frontier Foundation. The case is on appeal with the U.S. Court of Appeals for the 11th Circuit.

The case began in 2008 when Cambridge University Press, Oxford University Press, and SAGE Publishers sued GSU for alleged copyright infringement. The publishers argued that GSU’s use of excerpts from copyright-protected materials in password-protected course e-reserves and class sites was a violation of the copyright law. Notably, the Association of American Publishers and the Copyright Clearance Center, the licensing arm for much of the academic publishing industry, organized and funded the lawsuit.

In May 2012, Judge Orinda Evans of the U.S. District Court in Atlanta ruled in favor of the university in a lengthy decision that reviewed each of 75 alleged infringements, finding only 5 infringing uses. In her ruling, the Judge saw little evidence of market harm to the publishers, and clearly understood that current teaching practices were beneficial to teachers and students, as well as being reasonable and fair. Because of GSU’s overwhelming victory, and the publishers’ aggressive litigation strategy, Judge Evans ordered the publishers to pay GSU’s attorneys’ fees and costs (nearly $3 million), an important ruling that could help discourage future aggressive lawsuits against good faith fair users.

Now that the issues are narrowed and clarified on appeal, LCA is one of several groups filing on the side of GSU in a striking show of solidarity across the academic community. The American Council on Education, the Association of American Universities, the Association of Southeastern Research Libraries, and the American Association of University Professors, among others, are all represented in briefs defending the fair use rights of faculty, students, and librarians.

A 10% taking has been held to be lawful even in a developed country such as the US. It is now very clear that publishers are seeking an outright ban on course packs, even those that use a fraction of copyrighted works.
India gets its GSU. The academic protection racket is spreading. Copyright organisation asks colleges to buy licence to photocopy book portions - The Economic Times
Who Owns the Copyright Industries, and Why It Matters

The US Department of Justice might have seen the light and decided not to side with foreign publishers against a US public university, but it appears that the US copyright system in general takes the side of foreign companies against the US public.

That’s the inference I draw from an important new report, Foreign Ownership of Firms in IP-Intensive Industries and handy infographic by Jonathan Band and Jonathan Gerafi, which shows that the US’s rightsholder-friendly copyright laws amount to a kind of reverse protectionism: we punish US taxpayers, domestic industries, and the public interest in order to protect foreign corporations.

The numbers are striking, especially in the publishing industry. Simply put, the vast majority of the publishing industry is foreign-owned - over 80% of the revenue flowing to the “big 6” publishers is flowing overseas. When you focus on STM publishers, the numbers get even worse - around 90% of the STM publishing industry is foreign owned by revenue.

The recording industry is nearly as bad, with around 75% of the revenue of the “big three” labels flowing overseas. Gaming console makers are similarly dominated 3-to-1 by foreign companies.

The motion picture industry looks like a star-spangled standout, with most of the industry owned by US companies, but Band and Gerafi dig deeper to show that there is still a good chunk of work and revenue flowing overseas for shooting locations, production work, foreign talent, and the like.

In short, the tangible benefits of the US copyright system with its extravagant term of protection, its punitive statutory damages, and all the other well-known and documented dysfunctions, seem to flow mostly to huge foreign corporations.

It wasn’t always thus. It’s a truism among copyright wonks that the US used to be a “pirate nation” - US law for many many years did not award copyright to foreign works. Indeed, Benjamin Franklin, who was one of the country’s first librarians, was also arguably one of our first pirates - he ran a press in Philadelphia that profited from the unlicensed printing and sale of the works of European authors.

What a difference a couple of centuries makes. In addition to the overwhelming foreign domination of the copyright industries, American copyright law on its face is definitively tilted in favor of foreign authors and foreign rightsholders. Their works were airlifted out of the public domain by the Uruguay Round Agreements Act, which was challenged and vindicated in the Supreme Court in the Golan case. Foreign rightsholders are not subject to the requirement of registration prior to bringing lawsuits. And the list goes on.

Together with the growing consensus that some of the worst problems in our copyright system owe to our accession to an international copyright treaty called the Berne Convention, this report should give momentum to the movement to recalibrate copyright so that it returns to its Constitutional purpose of “promoting Progress” for the benefit of the US public at large.