Advanced topics in copyright law

The library, the university press and the college of fine arts
are here to see you, Counselor

Scenarios and suggested analyses prepared by Peggy Hoon, Evan Kaplan and
Georgia Harper for NACUA, Summer 2002, Boston, Massachusettes

Questions from the library

1. Professor Goodfellow has used "traditional" print reserves in the library for supplemental class materials for many years. Typical items placed on print reserves have included:

• class notes and syllabi
• various photocopied journal articles
• an out of print book (various chapters assigned throughout the semester totaling over half of the book)
• old student papers

Professor Goodfellow's library has initiated an electronic reserves service and the professor would now like all print reserve materials made available electronically. Additionally, the professor would like to link directly to articles and materials available through the library's licensed electronic databases and e-journals (either from the electronic reserves site or from the professor's class web site).

Analysis:

• Recognize some fundamental differences between print reserves and electronic reserves for copyright purposes: That is, the library that places a journal, a book, an old test, or a student paper on print reserves has exercised none of the rights of the copyright holder. It has not reproduced, displayed, distributed copies, transmitted, or modified the work. [17 U.S.C. § 106] However, scanning text material and posting it on a website arguably implicates the reproduction, transmission, and/or distribution rights.
  
  
• Assess your library's past reserve policies, practices, and understanding of copyright law. Libraries vary significantly in their past institutional experience and familiarity with copyright law.
  
  
• All of the works mentioned, whether accessed from the library's electronic reserves page or a professor's own class page, are protected by copyright (unless a work's term of copyright has expired). [See, When Works Pass Into the Public Domain] There is likely an implied license to use works created by the faculty member who is requesting that they be placed on reserve such as course notes and syllabi and for which the faculty member retains the copyright. Copyright is held by the student for works created by previous or current students. This situation is typically addressed in university policies that make such use of student works a condition of enrollment. For journal articles and small portions of copyrighted works, the options include either obtaining permission or using the work under the fair use provision of the copyright act, 17 U.S.C. 107. The fair use analysis required by §107 will vary for each particular work to be used. The four fair use factors include:
  
  
  1. The purpose and character of the use: Electronic reserves would be fairly characterized as a nonprofit educational use. Limiting access only to authorized campus users as well as limiting the amount and time the works are available will enhance the fair use argument.
     
     
  2. The nature of the copyrighted work: The more factual in nature the work is, the greater the likelihood of fair use. Many of our scientific journal articles will satisfy this condition.
     
     
  3. The amount a substantiality of the portion used in relation to the copyrighted work as a whole: The statute does not specify numbers or percentages and the case law varies considerably. With the caveat that each situation depends upon its own facts, probably individual journal articles (although a journal articles has been held to constitute an entire work, see American Geophysical Union v. Texaco, Inc., 37 F.2d 881 (2nd Cir. 1994), modified, 660 F.3d 913 (1995), several book chapters, and other small portions of copyrighted materials would be reasonable amounts. But see, also, Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985). Also, the library must now be more aware of how many total chapters a faculty member is assigning out of a single book, i.e., some faculty will assign a few chapters the first several weeks, take those down, and then put up a few more, and so forth. At any one time, there may be only a reasonable amount of the book up but over the course of the semester, the total may exceed fair use.
     
     
  4. The effect of the use on the market or potential market for the work Again, there is some controversy over the appropriate market to consider in the fair use analysis: the market for the work or the license market? The former is unlikely to be affected in most cases, the latter will always be affected. Not paying licensing fees will always result in less licensing fees being collected. Keep in mind, you cannot be deprived of something if you were not entitled to it, under the fair use analysis, in the first place.

2. Professor Goodfellow teaches this same class at another local university and would like those students to be able to access these same materials through your library's electronic reserves site. The universities have extended library borrowing privileges to each other's faculty, staff, and students.

Analysis

• Most, if not all electronic reserve systems, are accessible only to "authorized users." How those are defined may well determine whether or not it is even technically feasible to allow non-university users to access your electronic reserves systems. Even if it is possible, it may not be something to embark upon from a policy standpoint. It may involve issuing non-university people a campus id which may then allow them to access other campus resources well beyond the electronic reserves original goal. Furthermore, if your e-reserves utilizes any of the library's licensed resources, access to those resources by non-authorized users, within the definition of the license, would almost certainly be prohibited.

3. Furthermore, Professor Goodfellow has numerous distance ed students who either do not have reliable internet access or do not have a sufficiently powerful enough computer to bring up the huge pdf e-reserves files in a timely fashion. The professor would like the e-reserves materials copied to a cd-rom for mailing to the individual distance education students.

Analysis

• Again, the only possible justification for this practice would have to lie in a fair use analysis. [Section 108, the library copying provisions, would not allow such a systematic reproduction]. In this scenario, the library is more obviously making multiple copies analogous to a printed coursepack situation and may have a more difficult time with a fair use rationale. See Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (9S.D.N.Y. 1991); Princeton University Press v. Michigan Document Services Inc., 99 F.3d 1381 (66th Cir. 1996).

4. Finally, several students in the professor's class are visually impaired and are requesting that the electronic reserves materials be converted into a format that can be read by a text reader. This would entail significant time and expense for the library.

Analysis

• Section 121 of the copyright act allows an "authorized entity" to reproduce or distribute copies of previously published, nondramatic literary works in specialized formats exclusively for the use by blind or other persons with disabilities. An "authorized entity" within the meaning of this section, is a nonprofit organization or government agency that has a primary mission to provide specialized services relating to training, education, or adaptive reading or information access needs of blind or other persons with disabilities. This amendment to the copyright act was for the benefit of such entities as National Library for the Blind and Physically Handicapped, the National Federation for the Blind, Recordings for the Blind, etc.
  
  
• On the other hand, such accommodations may fall within fair use and, if reasonable, may be required by the ADA. Many times converting the scanned or pdf file to a format that can support the specialized browser capabilities that serve the visually impaired is quite costly and beyond the library's capabilities.
  

With respect to electronic reserves overall (scenarios 1-4), it is important to remember that perhaps the most expedient course from the viewpoint of counsel (always get permission), may not necessarily be the only lawful route and may be a difficult obstacle to achieving a reasonable and legitimate educational use.

5. Interlibrary Loan (ILL)

For years, your university library has filled interlibrary loan requests for journal articles through photocopying and use of "snail mail." In an effort to improve service and efficiency, your library would like to fill these requests by:

a. photocopying the article and faxing it
b. scanning the print article and sending it to the requesting library electronically
c. scanning the print article, posting it to a secure website, and emailing the url to the requestor
d. retrieving the article from one of the library's licensed electronic resources and sending as in b or c above

Can they?

• The library's *authority* for making reproductions of materials or portions of materials from its collection in response to a request from another library can be found primarily in Section 108 of the copyright act. (note, however, that Section 108 rights are in addition to Section 107 fair use rights). The general intent of the sections of 108 that authorize interlibrary loan is that obtaining materials via interlibrary loan should not substitute for the purchase of the work or a subscription to the work.
  
  
• In this spirit, interlibrary loan copyright guidelines were developed by the National Commission on New Technological Uses of Copyright Works purportedly "to assist librarians and copyright proprietors in understanding the amount of photocopying for use in interlibrary loan arrangements permitted under the copyright law." (see CONTU guidelines) Under the CONTU guidelines, if a library makes more than five requests for articles published within the past five years from a journal, it should either subscribe to the journal or start paying copyright permission fees. Most, if not all, university libraries participating in interlibrary loan services follow "the rule of five."
  
  
• Therefore, under Section 108 and CONTU guidelines: Requesting a copy of an article from a journal issue or a small part of another work - As requesting party, the library must comply with Sections 108(d) & (g) and the CONTU Guidelines:
  
  
  • The copy must become the property of the patron;
  • The library should have no notice that the copy will be used for a purpose other than private study, scholarship or research;
  • The library should have both a display and order form "Warning of Copyright."
  • The library must not be aware or have substantial reason to believe it is engaging in related or concerted reproduction or distribution of multiple copies of the same material;
  • Since the CONTU Guidelines apply to periodicals and small parts of other works, the library must make its request with a representation that it has complied with copyright law and the Guidelines;
  • The library will pay royalties on any copy of a periodical article that exceeds the "suggestion of five;"
  • The library will maintain its records of the request for three years.
    
    
• Specifically with reference to the requested modes of distribution:

  a. Photocopying the article and faxing it
  
  An effort was made in many parts of the copyright act to make it medium-neutral. Sending the article by fax rather than by *regular* mail should make no difference to the traditional copyright analysis as long as the only copy remaining at the end is the one for the patron.

  b. Scanning the print article and sending it to the requesting library electronically; and
  
  c. Scanning the print article, posting it to a secure website, and emailing the url to the requestor

  Many university libraries, particularly those at research institutions, use Ariel software to fulfill interlibrary loan requests. With commercially available hardware and Ariel software, they scan articles, photos, and other documents directly; transmit the electronic images to other Ariel workstations anywhere in the world, using either FTP or e-mail; and convert them to PDF for easy patron delivery. The article is either delivered to the patron by email or, very commonly, posted to a secure website for a limited period of time. Again, this is viewed, by libraries, as simply the electronic version of traditional print interlibrary loan. For an excellent and thorough discussion of how these activities intersect with document delivery notions, see Copyright in the Library: Interlibrary Loan, http://www.utsystem.edu/OGC/IntellectualProperty/l-108g.htm

  d. Retrieving the article from one of the library's licensed electronic resources and sending as in b or c above.

  Before retrieving an article from a licensed electronic resource, the library filling the interlibrary loan request must review the license for the resource. Many licenses specifically address interlibrary loan, either prohibiting it entirely or severely circumscribing the method by which an interlibrary loan request may be filled. Several years ago, ILL was frequently excluded from the permitted uses in the license but as libraries persisted in requesting the ability to perform this most basic and critical library function, electronic resource vendors have gradually begun to permit some types of interlibrary loan. Frequently, ILL will be permitted as long as the article is not sent in electronic form. Other licenses are silent on the issue.

Resources:

1. Copyright Use Primer
2. Fair Use Considerations Worksheet
3. Using the four factor fair use test
4. Copyright and Fair Use: Stanford University Library
5. Copyright in the library
6. CONTU Guidelines
7. Interlibrary Loan Code of the United States
8. Copyright in the library: Interlibrary loan
9. NCSU Libraries E-Reserves
10. E-Reserves Clearinghouse
    
11. Related cases dealing with commercial document delivery services and free-lance authors:
    New York Times v. Tasini, 121 S. Ct. 2381 (2001)
    Ryan v. Carl Corp., 23 F. Supp. 2d 1146 (N.D. Cal. 1998)

 

Questions from the University Press

The director of the University Press asks you for help in planning an electronic publishing project of frightening proportions affectionately titled "Project Redlight."

1. Stage One of the project consists of digitizing all existing backlist books and journals published by the University Press, and archiving the electronic versions in encrypted form, for storage and also for production of future print versions only. Any issues?

• Legal rights to publish University Press works in electronic form will depend on language of publishing agreements with authors, contributors, journal editors plus other agreements with content providers.
  
  
• In general U.S. copyright law extends ownership to creator of work, and only by virtue of an assignment of rights (the publishing contract) are these rights conveyed to the University Press (17 U.S.C. 201).
  
  
• In considering grant language of publishing contract note relevant case law where there is no explicit grant of electronic rights (See e.g. Disney v. Philadelphia Orchestra).
  
  
• In the current scenario, there is a strong argument that mere storage and archiving in encrypted, digital form solely for production of print versions doesn’t require grant of electronic rights.
  
  
• But with any publishing activity consider out of print clause or other clauses which might revert rights to authors/contributors/editors.
  
  
• Clear permissions agreements with third party providers of content (cover art, graphics, images).
  
  
• Consider whether some part of work is in the public domain (See e.g. 17 U.S.C. 105 concerning U.S Government works).
  
  
• Are there territorial, language or other field of use restrictions?
  
  
• Encryption requires digging to determine whether there is a proprietary technology involved and if so what are the terms of the relevant encryption license (see discussion below considering infringement risks).
  

2. Stage Two of Project Redlight consists of disseminating many of these backlist works online on a new website to be operated by the University Press. The website will include a "menu driven" search capability that will allow the user to download and mix and match parts of the works for "academic, non-commercial purposes" (but there are no other terms and conditions governing the use of the website). While the digitized backlist works will be encrypted to prevent unauthorized copying and distribution, there is no charge to users, and authentication procedures are weak. Any issues?

• Dissemination of backlist works in electronic form on the University Press website definitely constitutes an exercise of electronic rights (implicating the rights of reproduction, transmission and creation of a derivative work).
  
  
• Do relevant content agreements permit derivative works? (See 17 U.S.C. 101 for statutory definition of derivative works.) If so, what compensation if any is owed? (Existing compensation provisions may be silent or confusing as to exploitation in electronic form.)
  
  
• Scenario states that there is no charge to users for access to the digitized backlist works, but third party permission agreements may still require payment.
  
  
• And failure to charge for website downloads of backlist works may not be permitted by publishing agreements with authors and other content providers (consider “free use” limitations).
  
  
• Mixing content and downloading menu based selections in the absence of author review and approval may raise author “moral rights”and attribution issues (See Lanham Act cases such as Follett v. New American Library, Inc., 497 F.Supp. 304 (1980)).
  
  
• Conclusion: University Press may need to enter into new agreement or amendments with content providers, even if the University Press has the legal right to disseminate the backlist works on its website.
  
  
• Absence of terms and conditions/license agreement on University Press website is not recommended (End User License Agreement may be required by relevant agreement(s)- see clickwrap item below).
  
  
• If authentication procedures are weak, and arguably some or all of the content could easily be pirated and released on the Internet without restriction or encryption, is there liability for failure to adhere to minimum standards?
  

3. Stage Three of Project Redlight entails licensing the electronic rights to all past, present and future works published by the University Press on a non-exclusive basis to others, including web site "aggregators" of content, academic consortia and websites operated by professional organizations. The licensees demand that the works be disseminated without encryption or other copy protection measures, and they also balk at the idea of including an end user license "clickwrap" sequence on their websites and tangible digital media. The licensees are prepared to pay the University Press on the basis of royalties in return for which they demand the use of the University Press name, even though there is no guarantee of any return or advance against royalties. Any issues?"

• Does the University Press have the right to sub-license? Cannot imply such a right without an explicit grant.
  
  
• Compensation provisions may characterize this as the exercise of a subsidiary right, which in turn could implicate large royalty share to authors.
  
  
• Importance of clickwrap procedure for enforceability of license terms (See ProCD Inc. v. Zeidenberg, 89 USPQ2d 1161 (CA7 1996)).
  
  
• Failure to demand encryption or other copy protection measures could rise to the level of breach of contract or other legal wrong.
  
  
• Consider author relations issues and loss of control over content when sub-licensing to other website owners.
  
  
• Obvious trademark issues associated with use of University Press name.
  

 

Questions from the College of Fine Arts

1. Your College of Fine Arts, Art History Slide Library Curator has received numerous requests from Art History faculty members to digitize hundreds of slides so that they can be displayed in class using computer projectors instead of slide projectors, and accessed remotely by the students for study and review. The slides include faculty donations from their own trips abroad, copystand photography, where slides are made from photographs in books, journals, brochures, etc., commercially purchased slides from museums and commercial slide sets associated with textbooks. The provenance of some slides is unknown.

Are there any problems with this?

• First, divide the slides into those that are protected and those not protected: ref: Bridgeman Art Library, Ltd. v. Corel Corp., 36 F. Supp. 2d 191 (S.D.N.Y. 1999): exact duplication of public domain two-dimensional artwork is not protected by copyright because it lacks the requisite originality. Any claim of copyright in such a photograph cannot be enforced.
  
  
• Among the works that are protected, basic rule is that author/photographer is owner of copyright in the photograph; may have assigned it to publisher (in case of textbook images, journal images, etc.). Underlying work (ie, the painting itself) also enjoys a separate copyright. University authorization to use a slide of a photograph of a painting is either in the statute, for example fair use, or by permission of the copyright owner. The complexity of the ownership, the impossibility of ever getting permission in many cases and the nature of university nonprofit educational uses strongly support a claim to fair use as evidenced by the Confu Image archive guidelines.
  
  
• Slides created by faculty and donated to the library come with an implied license to use them for university nonprofit educational uses and the issue is whether the implied license would cover digitizing. In my opinion, it would.
  
  
• Copystand photography is certainly fair use within certain limits, however it is probably impossible to say that any particular slide created in this way was within or outside the bounds of fair use at the time it was created. Nonetheless, as evidenced by the CONFU Image Archive Guidelines, there is considerable consensus that digitizing these slides is fair use, so long as the university is making an effort to permission its archive over time, that is, either acquire permission to use slides where there is a functional permission market, or acquire digital access to slides where such access is available at a reasonable price. The Guidelines suggested that 7 years would be long enough to see the establishment of a functional permission market for such slides, but this has not turned out to be the case. Nevertheless, the concept that there should be a transition to market supply of digital slides/permission to digitize slides is valid. It is just taking a lot longer than the copyright owners thought it would. See implementation of this concept in Rules of thumb for image archives.
  
  
• Commercially produced slides may also be digitized under the same circumstances: if there is an ongoing effort to either permission the archive over time, or acquire digital versions of the old analog slides as they become available at a reasonable price. Commercial sources are more likely to either have digital alternatives available or provide permission to digitize in a timely manner and at a reasonable price; however, refusal to permit digitizing does not necessarily negate a claim of fair use; in fact, it helps the fair use argument by demonstrating a failure of the market (fourth factor). Refusal to permit a use is often a factor in determining whether it is fair use (parody; commentary; criticism) and one of the ways that fair use balances first amendment concerns with the interests of the copyright owner. For example, if the owner refuses to give permission because he plans to create a digital product in the future, but hasn't done it yet, the fact that you want to use the slide for your own internal nonprofit educational purposes, not to commercialize, distinguishes this case from those where courts have concerns about a derivative market. Here, the fact that there is no current alternative for you is the critical factor. He might create a functional market for permission some day, but right now, you have no way to use his slides for nonprofit educational uses except as fair use. If he just doesn't want digital copies of his work "out there," the fair use argument is also strengthened. This is analogous to the right to quote in order to criticize or parody. The owner may not wish to be criticized, but fair use supports such limited use of another's work when it furthers the goals of copyright.

2. The library has also been approached by other Art History Librarians in the state about creating a shared resource so that everyone doesn't end up having to digitize all their hundreds of thousands of slides. The library is eager to participate.

What's your response?

• Conceptually, it is not unreasonable. Analysis is the same as above, but this scenario would result in fewer digitized slides overall. Problems will be in limiting access and assuring that there is still an underlying movement to acquire digital access as it becomes available at reasonable prices.

3. Your College's music department has come up with a proposal to digitize all the old vinyl recordings used to teach popular courses like The History of Rock and Roll, and make the songs covered in the curriculum available online, password protected, using streaming technology, which means that no copy of any particular song would be created on the student's computer. Many of these records are available on CDs, but some are not. Even if the department bought CDs, however, it would need to rip the files from the CD, in other words, make copies of the individual songs and store them on a central file server, so that the instructor could assemble the songs into appropriate collections for the curriculum.

Any problems?

• No CONFU Guidelines on music, but the underlying principles are similar to Guidelines for Image Archives above. There are multiple copyright owners (composition and recording) and there is no ready market for permission to do this kind of thing with music. These both support a fair use argument, especially if the university is transitioning to permissioned/licensed access. For example, if the university acquires cds when available, rather than digitizing vinyl, this evidences the proper approach. Still, it may be that in the near future, music cds will be protected by technologies that prevent copying the files to a computer hard drive for use in the ways described above. (See movie scenario below). Until that time, the question is, are we undermining incentives to copyright owners with our actions. Where no license is available, our fair use argument is stronger than where one is available and we choose not to take it.
  
  
• With respect to the old vinyl recordings, there is, additionally, authority in Section 108 for libraries to make copies in order to migrate to new media when old media become obsolete. The use of the resultant archival copies is limited to the premises, but an argument can be made that fair uses of such archival copies are possible (Section 108 does not limit Section 107), thus you can sort of combine 108 and 107. The streaming technology is especially helpful in this regard.

4. And, by the way, the radio, television and film department wants to do something similar with old films (digitize them) so that faculty can select clips for use in film criticism classes (stream clips to students on password protected websites).

This is ok, isn't it?

• Same analysis: to the extent that there is no functional market for permission to do what we want to do, we have a stronger fair use argument. When it becomes possible to get permission to do this, or to license the right to do it when we license a digital version of a film, we should acquire such access. Unfortunately, the film industry is moving in exactly the opposite direction, making films available digitally, but with technological protections that make it impossible to use them in the way described above (impossible to make them amenable to clipping parts for study, etc.); further, disabling the protections is itself a separate offense and fair use is not a defense to an act that disables technological protections. So, digitizing old videos may be the only option educators will have.

Resources:

1. Confu Information from the Copyright Crash Course
2. Bridgeman Art Library, Ltd. v. Corel Corp., 36 F. Supp. 2d 191 (S.D.N.Y. 1999)
3. Fair Use of Copyrighted Materials including UT System Rules of Thumb for Image Archives
4. Visual Resources Association Image Collection Guidelines
5. Copyright and Art Issues, a resource for image archivists by Christine Sundt, University of Oregon
6. Variations, a project of the Indiana University Purdue University Indiana libraries to digitize music resources, including research into copyright issues associated with the music archive.