Tag Archives: Orphan Works

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.


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.

Notes from Register Pallante’s “The Next Great Copyright Act”

By Greg Cram, Rights Clearance Analyst, The New York Public Library

On March 4, 2013, Maria Pallante, the 12th United States Register of Copyrights, delivered “The Next Great Copyright Act” at Columbia Law School. In the lecture, Register Pallante reflected on the history of other major comprehensive revisions to United States copyright law. She argued that the time has come for the next general revision to begin by noting the complexity of current copyright law and its failure, in some areas, to stay current. She highlighted the work the Copyright Office has already undertaken in preparation for the next act, including reports on Digital First Sale, Orphan Works, Pre-1972 Sound Recordings, Mass Digitization, and others. Finally, she laid out a number of issues that are on the table for consideration in the next round of comprehensive revision.

The content of the next comprehensive copyright act is important to libraries and library patrons. Copyright law impacts library services at all levels, from the basics of making unsupervised copiers available to patrons to the complicated digitization of works in library collections. In the lecture, Register Pallante highlighted a few issues important to libraries, including the first sale doctrine, the libraries and archives exception, the blind and print disabled exception, and the length of copyright protection. The next copyright act is certain to implicate many library services, not to mention the general flow of content in modern society.

Because of the importance of this lecture, I am sharing my notes below. The lecture was recorded, but is not yet available on the Kernochan Center’s website. I strongly recommend watching the recording when it is available. I labored to take accurate notes and do not intend to misrepresent the content of the lecture. Even with my diligence, these notes should not be understood to be an official record or transcript of the lecture.

My notes on “The Next Great Copyright Act”

The next comprehensive review should begin soon. A comprehensive review is needed for two main reasons. First, courts are asking Congress to fix copyright law (see, e.g., Golan, Google Books, Tenenbaum). Second, more people need help navigating a complex law and shouldn’t and army of lawyers to understand copyright law.

There should be two main themes for the next great copyright act. First, it should be forward thinking, but flexible. Second, authors’ rights to enjoy control and exploit works needs to be meaningful. Authors are not the counterweight to the public interest because protecting authors is in the public interest. A copyright act that did not protect authors would be illogical. But, the law needs to recognize that some authors are different by giving weight to Creative Commons licenses and public domain declarations.

The issues on the table for the next comprehensive review include:

  1. Incidental Copies

    —Not all copies are the same

    —Perhaps there could be discrete exceptions for certain incidental copies

    —For more information on this issue, see the Copyright Offices 2001 study on the Digital Millennium Copyright Act

  2. Public Performance Right for Sound Recordings

    —Copyright Office is a “strong supporter” of a public performance right for sound recordings

    —Disparities between terrestrial radio and internet radio royalty rates are hampering new business models

  3. Stronger Enforcement

    —The new law must respect the integrity of the internet, including free speech

    —There needs to be, however, a mix of legislative and voluntary efforts to combat infringement online

    —On solution may be to increase criminal penalties for streaming, or at least bring them in line with the penalties for distribution through downloads

  4. Small Claims

    —The Copyright Office is studying this issue

    —Small claims may be a way for rights holders to enforce rights when federal litigation may be too expensive

    —The Copyright Office could, potentially, take a lead role in administering small claims

  5. Statutory Damages

    —Review registration requirements

    —Look at statutory damages from all angles

    —Statutory damages are important part of copyright act and should be retained

    —Need to provide guidance to courts about how statutory damages should be applied

  6. The Digital Millennium Copyright Act

    —The Internet has evolved since DMCA passage in 1998

    —Congress should review the § 512 safe harbors

    —Congress also needs to review § 1201 rulemaking, especially in light of the White House response to a petition on unlocking mobile phones

  7. Registration and Deposit of Published Works

    —The deposit requirements for registration should remain in next copyright act

    —Congress should review the legal incentives for registration

    —How can the Library of Congress add born digital works to its collection through this process?

    —The policies surrounding mandatory deposit should not be driven by the collection building activities of the Library of Congress (see the ACCORD Report for more information)

  8. First Sale

    —Digital first sale will be an issue on the table

    —Physical first sale may also need to be reviewed, depending on the outcome of the Kirtsaeng v. John Wiley & Sons case currently before the Supreme Court

  9. Other Exceptions/Limitations

    —The libraries and archives exception in § 108 should be updated

    —Update exceptions for the blind and print disabled in § 121 for the digital world

    —Explore new exception for higher education institutions

    —Personal space-shifting

  10. Licensing

    —Need to review growth of licensing schemes

    —Review mechanical licenses

Now the “bold” issues:

  1. Term of 50 years, renewable for an additional 20

    —The Supreme Court decision in Golan v. Holder is last word on whether life plus 70 years is constitutional

    —However, the term of copyright protection could be modified to 50 years after the death of the author, renewable for another 20 years

    —This would put the burden on the copyright owner to renew copyright term at the end of 50 years after death

    —Modeled after § 108(h), something the Copyright Office is very fond of

    —This proposal would be acceptable under various international treaties, including the Berne Convention

  2. Opt-Out v. Opt-In

    —Extended collective licensing could potentially solve many problems

Finally, Congress should expand the role of the Copyright Office. The Office could help to resolve questions of law or fact through advisory opinions. The Office could also help to establish best practices on a number of topics, including searching for copyright owners. If an extended collective licensing scheme is devised by Congress, then the Office could provide transparency to that system.

Library Copyright Alliance Comments on Orphan Works and Mass Digitization

On Monday, January 14, 2013, the Library Copyright Alliance (LCA) (whose members are the American Library Association, Association of Research Libraries and Association of College and Research Libraries) filed comments (PDF) with the U.S. Copyright Office in response to their October 22, 2012, Notice of Inquiry about the current state of play with orphan works and mass digitization.

If only it were this easy…

The Office is seeking comments regarding “what has changed in the legal and business environments during the past few years that might be relevant to a resolution of the problem and what additional legislative, regulatory, or voluntary solutions deserve deliberation.”

In its comments, LCA explains that “significant changes in the copyright landscape over the past seven years convince us that libraries no longer need legislative reform in order to make appropriate uses of orphan works.” Specifically, two key developments make it possible for libraries to engage in mass digitization and other projects that involve orphan works:

  • Court decisions (and the #librarianscode!) have further solidified libraries’ rights under fair use; and

  • Libraries have successfully engaged in a range of projects involving orphan works and mass digitization.

While other communities may prefer greater certainty concerning what steps they would need to take to fall within a safe harbor, libraries can rely on their existing rights, including fair use. If Congress does consider legislation, LCA suggests that Congress abandon the overly complex arrangement it arrived at in 2008 and instead make a simple one sentence amendment to the Copyright Act giving courts the discretion to reduce or remit statutory damages in appropriate circumstances.

LCA also submitted to the Copyright Office a stand-alone policy statement on the kind of copyright reform that could benefit libraries. Originally published by LCA in May 2011, the statement emphasizes the same fundamental principles as the LCA comments: confident reliance on fair use and related rights together with the suggestion of simple reform focused on limiting remedies against libraries acting in good faith.

LCA encourages librarians and libraries to submit comments, which are due February 4, 2013, and can be submitted online here.

Library Associations File Brief in Defense of Fair Use

Last Friday, the Association of Research Libraries, the American Library Association, and the Association of College and Research Libraries filed a friend of the court brief to defend the fair use rights of libraries. The brief responds to the Authors Guild’s extraordinary arguments in a lawsuit against the Hathi Trust and several member libraries. The brief demonstrates that if the Authors Guild were to win the day, libraries would be severely curtailed in their ordinary activities, including lending books and providing Internet access to the public.

The Authors Guild has brought a suit against the Hathi Trust and several of its member institutions claiming that these groups violate copyright by accepting, archiving, and making accessible thousands of digitized volumes created by Google in connection with the Google Books project. The libraries have responded that the project is protected by both the fair use doctrine and parts of the specific exception for libraries in Section 108 of the Copyright Act.

The Librarians’ Code, Orphan Works, and Mass Digitization

In preparation for the Berkeley symposium on orphan works and mass digitization, I thought it might be helpful to sketch some of the ways that the Code of Best Practices in Fair Use for Academic and Research Libraries might assist libraries in devising strategies for addressing these related questions. While neither issue is treated explicitly or comprehensively in the Code, there are several principles that should come in handy.

Principle Three: Digitizing to Preserve At-Risk Items

Principle Three addresses a family of situations that is likely to include many orphan works, and where projects may be done at a scale that could be called “mass digitization.” As we explain in the Code,

Preservation is a core function of academic and research libraries. It involves not only rescuing items from physical decay, but also coping with the rapid pace of change in media formats and reading technologies. Even when libraries retain the originals of preserved items, digital surrogates can spare the original items the wear and tear that access necessarily inflicts.

It is quite likely that when works in library collections qualify for digitization as a preservation strategy, they will do so in large groups. That is, all works fixed in certain formats, or published in certain date ranges, may be known to be susceptible to a common frailty or flaw that makes circulation in digital surrogates a reasonable preservation strategy. Or they may be stored on formats sufficiently outdated or inaccessible that mass migration is a reasonable way of ensuring a reasonable level of access for library patrons. In such circumstances, mass digitization may be a reasonable preservation strategy.

It is also highly likely, given the relative obscurity of rightsholders for older materials (especially archival materials and special collections) that a library could not identify rightsholders for these materials, even with a diligent search. 

The academic and research library community has declared in Principle Three, that “It is fair use to make digital copies of collection items that are likely to deteriorate, or that exist only in difficult-to-access formats, for purposes of preservation, and to make those copies available as surrogates for fragile or otherwise inaccessible materials.” This includes mass digitization. And because the essence of fair use is use without authorization, libraries engaged in fair uses need not worry about the location or identity of rightsholders, thereby obviating the need to fret over a work’s orphan status.

Like every principle in the Code, Principle Three is subject to a series of Limitations and Enhancements. The first Limitation is directly relevant to orphaned materials, as it bars digitization of works where a “fully equivalent digital copy is commercially available at a reasonable cost.” Thus, works whose rightsholders are active in the market for new digital versions will not be susceptible to this principle. Additional Limitations dealing with circulation and off-premises access will help preserve the market for new copies in case a rightsholder should decide to resume exploitation of a preserved work. The requirement of full attribution will also help to facilitate the reunion of older works with long lost authors and publishers. Librarians also suggested, by way of “Enhancements” to the principle, that libraries consider using technological measures to further limit redistribution of digital surrogates, and that they make themselves readily available to putative rightsholders who would like to challenge their use. 

Taken together, Principle Three along with its Limitations and Enhancements describes a policy for mass digitization, including digitizing orphaned works, for purposes of preservation that should be very helpful to academic and research libraries.

Principle Four: Creating Digital Collections of Archival and Special Collections Materials

Principle Four addresses another situation where digitization at the level of entire collections may make sense (though, depending on the size of the collection, such digitization may not always be at a scale that qualifies as “mass”) and the likelihood of absent rightsholders will be quite high. The Code describes the core family of situations as follows:

Many libraries hold special collections and archives of rare or unusual text and nontext materials (published and unpublished) that do not circulate on the same terms as the general collection. The copyright status of materials in these collections is often unclear. Despite the investments that have been made in acquiring and preserving such collections, they frequently are of limited general utility because they typically can be consulted only on-site, and in some cases using only limited analog research aids. The research value of these collections typically resides not only in the individual items they contain (although such items are often unique in themselves), but also in the unique assemblage or aggregation they represent. Special collections can have a shared provenance or be organized around a key topic, era, or theme. Libraries and their patrons would benefit significantly from digitization and off-site availability of these valuable collections. 

Here the core concern is not fragility or obsolescence, per se, but the story is closely related to the preservation rationale in Principle Three in that the defining characteristics of qualifying collections include rarity and inaccessibility. Academic and research librarians expressed a consensus that fostering increased access to carefully curated collections of rare and unique items was a legitimate fair use. The likely prevalence of letters, personal photographs, and other primary materials and ephemera in these collections is specifically invoked as a fact favoring a finding of fair use; such works are likely to be orphans due to uncertain provenance and the like, but more importantly, they were typically created with no intention of market exploitation. Thus the fourth fair use factor, which weighs the effect of a proposed use on a likely or tradtitional market for the used work, should strongly favor libraries. The aggregation of such works into a digitial research corpus also presents a powerful argument for transformativeness, which can be strongly persuasive for courts as they consider the first fair use factor, and colors the rest of the fair use determination. Accordingly, Principle Four declares that “It is fair use to create digital versions of a library’s special collections and archives and to make these versions electronically accessible in appropriate contexts.”

Here, again, the Limitations and Enhancements to the principle provide a helpful roadmap for designing a policy that will carefully balance the interests of the public (especially the scholarly community) with the interests of rightsholders. The first Limitation cautions strongly against applying Principle Four to works that are commercially available, showing deference again to rightsholders who are actively exploiting their copyrights. The remaining limitations protect absent authors (and the subjects of their writings) against invasions of privacy and ensure proper attribution, which, again, can help reunite works with lost rightsholders. The first Enhancement reflects the reasoning just described, providing that a collection made up of likely orphans presents an especially strong case for fair use. Further enhancements suggest the use of technological measures to prevent unreasonable redistribution of digitized works, provision of an easy way for putative rightsholders to make their concerns known, and the utility of additional measures to add value, context, and coherence to collections. 

So, for libraries considering (mass) digitization of archives and special collections, and who may be daunted by the very likely presence of orphaned works in those collections, Principle Four together with its Enhancements and Limitations, shows a way forward.

Principle Seven: Creating Databases to Facilitate Nonconsumptive Uses, Including Search

Finally,Principle Seven may provide the most powerful justification for mass digitization of library collections, as it applies regardless of the nature of the ingested works, and it relies on settled legal principals declaring copying for purposes of the creation of search and data mining tools to be fair use. The Code describes the core covered uses in this way:

In addition to making specific collection items available to users for intensive study, librarians have always played an important role in conducting and supporting scholarship in disciplines which examine trends and changes across broad swaths of information, e.g., information science, linguistics, bibliography, and history of science. Developing indexing systems and finding aids is also a core part of the library mission. Digital technology offers new possibilities where both of these traditional functions are concerned. Libraries can offer scholars digital databases of collection items on which to perform computerized analyses, and they themselves can employ such databases to develop new and powerful reference tools. Because they do not involve ordinary reading or viewing of the processed works, these uses are often referred to as non-consumptive.

It should be obvious that such projects necessarily involve mass digitization, and that the presence of orphan works is likely when digitization is conducted at such a scale.

The fair use pedigree of such non-consumptive uses is very strong. Federal appellate courts in several circuits have found copying for non-consumptive purposes (such as helping Internet users find relevant websites and images, and helping teachers determine whether a student’s paper has plagiarized an earlier document) to be transformative fair uses. The real subjects and outputs of nonconsumptive uses are not the copyright-protected expressions in individual works, but rather the unprotected facts (the frequency with which authors of US fiction named protagonists “Adolf” before and after 1939, the species of mouse favored by cancer researchers between 1980 and 2005) that can be discovered by crawling across a massive corpus. 

Perhaps more indicative of the strength of the fair use case in this context is the fact that Google, Yahoo, and a host of other household name companies have based their billion dollar business models on the belief that fair use covers their massive-scale copying of copyrighted material on the Internet to create databases of this kind without express permission from any rightsholders. Principle Seven reflects the strong consensus in the academic and research library community that libraries, who would create such tools in the context of an explicitly non-profit, public service mission of facilitating research and increasing the general store of knowledge, would have at least as strong a claim to fair use as these private businesses. 

Accordingly, Principle Seven states that, “It is fair use for libraries to develop and to facilitate the development of digital databases of collection items to enable non-consumptive analysis across the collection for both scholarly and reference purposes.” 

Limitations and Enhancements provide essential guidance for designing such a project within the bounds of library consensus. Because the fair use argument relies very strongly on the transformative nature of nonconsumptive use, any consumptive exploitation of digitized works (i.e., uses that involve full text access to ingested works for individual study) will need a separate justification. So, the only Limitation is a strong one: it requires that access to works in a non-consumptive database be limited to what is appropriate to the non-consumptive purpose (e.g., display of “snippets” to verify validity or utility of a search result). Enhancements to the principle are designed to maximize the “value added” in the creation of a database by favoring databases that include additional data added by curators, and further favoring efforts to create collective databases that leverage even further the power of “big data” across multiple collections.

As you can see, while the Code of Best Practices in Fair Use for Academic and Research Libraries may not treat the subjects of mass digitization and orphan works explicitly, or in a single principle, the library community has articulated in the Code a series of Principles that can guide efforts to accommodate both of these phenomena within the bounds of fair use. 

Fair Use on the Orphan Map

I was excited to see Berkeley Digital Library Fellow David Hansen’s latest white paper, Orphan Works: Mapping the Possible Solution Spaces hit the Internets recently. It’s not a coincidence that Hansen’s paper comes to us just in time to help frame the discussion at Berkeley’s upcoming symposium on orphan works and mass digitization, and attendees and wannabe attendees alike will be well served by the concise overview that David provides. I want to call particular attention to his analysis of fair use, which I believe presents a very strong case for fair use as the best legal justification for library mass digitization projects involving orphan works. 

Fair Strollers

Wrong kind of fair…

Hansen walks carefully through four basic solutions: 

  • limiting liability for users who conduct a “diligent search” for rights holders (the approach taken by the US Copyright Office and by Congress in bills introduced in the mid-2000s).

  • empowering an administrative body to grant petitions for specific uses of orphans.

  • empowering private collective licensing groups (like the Copyright Clearance Center or ASCAP) who collect licensing revenue on behalf of known members to collect payment for use of orphan works, as well.

  • fair use, the flexible, open-ended doctrine codified at Section 107 of the Copyright Act, which allows unauthorized use of copyright protected works if the use is “fair,” a determination made by judges balancing four statutory factors and the overall purposes of copyright.

While each of these solutions has its attractions for different users contemplating different projects (and for rightsholders looking to maintain control of their work), Hansen’s exposition suggests to me that fair use presents the strongest strategy for libraries considering mass digitization. 

Fair use has some significant advantages over the alternative solutions:

  • Unlike diligent search requirements (and, presumably, administrative solutions that require petitions to specify individual works to be used), fair use can operate at scale. No mass digitization project can afford to spend the time and resources required to do an individualized search to determine the identity of a rightsholder for each ingested work. The Copyright Office has acknowledged that its proposed solution would not be feasible for large scale digitization projects, issuing a report in late 2011 describing possible alternatives. By contrast, Hansen points out that a library engaged in mass digitization can do a significant portion of its fair use analysis in a single argument across broad swaths of works because the first statutory factor (the purpose of the use) will be the same in every case. And courts have placed great emphasis on the first factor, often letting it drive the examination of the rest of the factors and ultimately the conclusion that a use is fair. If a library can make a strong claim that it’s purpose is “transformative,” a court could apply this analysis to the entire project without delving deeply into the characteristics of individual works. Also, as Hansen rightly points out, a library designing its own regime under the flexible standards of fair use could take a more reasonable approach to determining how much investigation is really needed to determine that a work is not on the market, which could be relevant under the fourth fair use factor. 

  • Unlike extended collective licensing, fair use doesn’t require users to pay collecting societies a wasteful fee for permission to use works that none of their members actually own. Such collecting societies have been known to engage in sketchy and even criminal behavior in some cases, pursuing licensing revenue extremely aggressively (sometimes at the expense of fair use, such as in the CCC-funded lawsuit against Georgia State University). They can rack up high administrative costs, and yet make relatively modest payouts (if any) to non-superstar artists. Of course, in the case of orphan works, the creator will almost by definition not see a penny of whatever royalty is collected. There is little to gain from placing orphan works in the custody of these groups, other than a windfall for their administrators. 

  • Unlike any option that will require legislative action, fair use is already the law. This is important because Hansen’s brief history of the orphan works bills in the US Congress shows that certain rightsholder groups are sufficiently fearful about misuse of their abandoned property that seemingly no search will be sufficiently diligent for them. The situation has hardly improved in intervening years, with more lawsuits injecting more tension into the relationship between libraries and rightsholders. If a solution must be reasonably likely to come into being before it merits serious consideration, any solution that requires a change in the law will fall short.

Now, it is certainly true that for some users and some uses – folks who want to commercialize out-of-print works, for example – other models will make much more sense, as fair use will not be available. If and when Congress considers whether and how to address the orphan works questions raised by other parts of the cultural ecosystem, they will surely need to look beyond fair use. But for libraries, the best answer for orphan works and mass digitization may be a doctrine we’ve already relied on for over a century: fair use.

Thoughts on the Copyright Office’s Priorities for 2011-2013

The Copyright Office (CO) announced its priorities for the next two years yesterday, including several items of interest to research libraries. This blog post will walk through some of the highlights; the full document is here.

Report on Mass Digitization Coming (Very) Soon

Of all the goals outlined in the CO’s report, the one with the shortest time horizon is a preliminary analysis of the issues surrounding large-scale book digitization. The CO indicates that its analysis will be posted sometime in October 2011 (i.e., in the next few days).

As the CO’s mass digitization site‘s current contents show, this work is an outgrowth of the Google Books litigation, in which the CO was a highly visible participant. Then-Register Marybeth Peters may have coined the most oft-repeated phrase in the oral arguments when she described the proposed “opt-out” settlement as “turning copyright on its head.” Peters has continued her work in support of “opt-in” solutions in her retirement, taking a position on the Board of Directors of the Copyright Clearance Center.

Mass digitization presents a host of unique problems that have not been addressed in previous efforts to sort out smaller-scale uses of library materials, especially orphan works. The one-at-a-time diligence that past orphan proposals have envisioned simply do not scale to the thousand- or million-volume level.

The CO says its analysis will include an evaluation of various solutions based in collective licensing (voluntary, collective, extended, and statutory). Recent conflicts in Canada, a close look at Norway’s regime, proposals in Europe, and a look at our own statutory licensing regimes for satellite TV all suggest that these types of solution can have significant disadvantages for libraries. It will be interesting to see what the CO makes of these issues.

Section 108, again.

In 2008, a study group comprised of representatives from the rights holder communities as well as libraries, archives, museums and other user groups issued a Report on the many shortcomings of the current specific exception for libraries and archives. While the Report expressed a consensus that Section 108 had not kept pace with the changing needs of beneficiary institutions (e.g., it does not deal adequately with needs associated with ‘born-digital’ works), the consensus did not reach many specific recommendations for changing the statute. Parties simply could not agree. The CO suggests that the Google Books litigation was also a factor.

The CO says it will “formulate a discussion document and preliminary recommendations” on the issues raised by the 108 Report. Given the failure of the stakeholders to come to consensus, we should watch closely to see how the CO resolves the tensions surrounding this important issue.

Orphans, still.

Another issue raised by the Google litigation, and by the new lawsuit against HathiTrust and its library partners, is the fate of ‘orphan works.’ ARL has worked with other stakeholders, including the CO, to find an acceptable legislative solution to this issue, but those negotiations left off in Congress at the very limit of what would be feasible for libraries. It is not clear that revisiting this issue in the legislative arena will give libraries a solution that is preferable to the strong fair use arguments already available to support library projects. Indeed, members of the Legal Issues workstream of the Digital Public Library of America reported at last week’s plenary that even its ambitious plans don’t include pushing for legislative change, as it makes more sense to work with what we have than to gamble that Congress will improve things.

The CO has already issued a comprehensive report on this issue, and legislative language already exists, so the CO is wise to refrain from announcing any specific work product on this question. Instead, they will “continue to provide analysis and support to Congress.”

Other issues

  • The CO is in the midst of its triennial DMCA rulemaking, in which it considers classes of works that should be exempt from the digital locks provisions of the Digital Millennium Copyright Act. In the past, these exceptions have focused on uses in academic settings, and ARL will continue to work to support useful rules in this area.
  • The CO will be issuing its report on Pre-1972 Sound Recordings in December. In our comments on this issue, ARL has asked the CO to highlight fair use.
  • The CO mentions that it has weighed in on the issue of “Rogue Websites,” without specifically endorsing the approaches that have been taken by the bills introduced on the issue. There are significant free speech concerns associated with those bills.
  • The CO highlights its work to digitize and make accessible its records of copyright registrations. This is an important corollary to the orphan works and mass digitization problems, as it would make it much easier for libraries to determine whether and when copyright terms might have expired.

What Libraries Need In Copyright Reform

Today the Library Copyright Alliance released a statement describing the key features copyright reform proposals should include in order to constitute significant improvement over current law for libraries and their users. In the wake of the recent rejection of the Google Books settlement, interested parties are discussing with renewed vigor the issues of orphan works, mass digitization, and even modernization of Section 108 of the Copyright Act. The LCA statement, which represents the needs of major library stakeholders in these debates, should provide helpful guideposts for these discussions.

Libraries have always advocated for reasonable copyright policy, in courts as well as in Congress, and the LCA welcomes renewed interest in these issues in response to Judge Chin’s decision. At the same time, library activities already benefit from broad, flexible protection under the fair use doctrine and related provisions in current law. Therefore, only a clear improvement over the status quo is worth the substantial investment and risk associated with legislative change. The LCA statement describes the status quo for libraries as well as the policies that would constitute substantial improvement.

The proposal focuses on exempting libraries from the draconian statutory damages currently available under copyright law. Together with a notice-and-takedown mechanism, this reduction in damages would free libraries to make policy decisions based on the true balance of equities between library use and rightsholder harm, rather than acting under the threat of damages awards out of all proportion to the typically negligible harm associated with library uses. While the future of copyright reform efforts is foggy at best, the LCA statement represents a clear articulation of what libraries need for reform to be worthwhile.