Copyright issues for libraries and librarians

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  • Copyright issues for libraries and librariansRobert S. Ogden

    Of Counsel, Gursky & Partners LLP, 1350 Broadway, New York, NY 10018,USA

    1. Background

    The evolution of U.S. copyright law over the years has involved continuing attempts tobalance the conflicting interests of authors, publishers and the public. The Copyright Act isthus basically a compromise, spread over hundreds of pages and worded in sometimesexcruciating detail. As technology advances, new copyright issues arise to be contested andlegislated, so the Copyright Act keeps getting amended, extended and ever more complex.

    2. Copyright infringement remedies

    There have been relatively few lawsuits against libraries involving alleged copyrightinfringement. This attests both to the fact that libraries have been very careful not to infringecopyrights and the fact that libraries, particularly public libraries, are not attractive targets forcopyright infringement suits. Most normal activities of a public library, even if the librarywere to stray across the line of propriety under copyright law, are unlikely to result insubstantial provable damages to a copyright owner. Moreover, copyright owners are wellaware that courts and juries are likely to be sympathetic to libraries.

    Nevertheless, even though a public library is unlikely to be the target of an infringementsuit, it needs to be aware of the remedies available to a copyright owner for infringement.These include injunctions to prohibit an infringing activity from continuing, recovery ofdamages for loss of any profits which the copyright owner is able to prove was caused by theinfringement, recovery of profits made by the infringer from the infringing activity andstatutory damages of up to $30,000 for each work infringed or $150,000, if the infringementis willful.

    In practice, it is often difficult to establish that the infringing activity actually caused a lossof sales or other revenue sources, which reduces the risk that a library might be liable fordamages in a particular situation. Most of a public librarys activities are nonprofit, so theprovision authorizing a copyright owner to recover profits made by an infringer is unlikely

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    & Technical Services 27 (2003) 473481

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  • to be a significant concern. Finally, if a library can establish that it was acting under areasonable belief that its conduct was Fair Use, it will not be liable for statutory damages.

    3. Analyzing copyright problems

    I think it helpful to approach copyright problem-solving with a standard analysis process.The establishment of a standard process may help to avoid wasting time and help to focuson the issues which do need to be addressed.

    A. Steps of Analysis1. Is the work protected by copyright?2. Is the proposed use intended to utilize an exclusive right of the copyright owner?3. Is the proposed use exempt, or can it be tailored to be exempt, from liability for

    infringement by reason of some statutory provision related to libraries, educationalusages or Fair Use?

    4. If not, who is the copyright owner, and can written permission be obtained?

    B. Is the Work Protected by Copyright?1. Materials Which Are and Those Which Are Not Protected by Copyright Law

    a. Copyright applies to any original work of authorship fixed in a tangible medium ofexpression (on paper or tape, for example). Very little originality is needed. Theprotected work can be simple, like a stick figure or writing at a first grade level.

    Under Section 101 of the Copyright Act, however, although copyright can existwith regard to the form of an article or the manner in which it is decorated,copyright does not protect its mechanical or utilitarian aspects. These are thesubject matter of patents.

    b. There is no copyright in titles or facts (though a particular organization of facts maybe protected). The language used to describe particular facts may be eligible forprotection, if original enough, but not the facts themselves. So if a biographer wroteGeorge Washington cut down a cherry tree, these words would not be protected,but if the biographer had written George Washington, in a frenzy of destructivefervor, hued at a cherry tree until it was no more, such a flowery and subjectivedescription of the incident would be deemed original and not merely a recitation ofa fact and thus would be protected by copyright.

    Although works created by the U.S. Government are not protected by copyright,state, foreign government and local government works are not exempt from copy-right protection.

    c. To be eligible for protection, the work must be original, not a repeat of whatsomebody else said or a copy of what someone else wrote. Thus, words quoted byan author from other sources are not covered by the authors copyright.

    d. Ideas are not eligible for protection, but to the extent that a subsequent author isshown to have developed and carried forward an idea in reliance on the originalauthors work, the subsequent author may have infringed.

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  • e. Prior to the 1976 Copyright Act, copyright law made the presence of a copyrightnotice essential to the protection of a work, but this is no longer required. Promptregistration of a work when it is published is also not necessary, though verydesirable, because it establishes prima facie proof of copyright ownership andpermits a court to award attorneys fees and statutory damages to the copyrightowner for infringements occurring after registration. A work must be registeredprior to bringing an infringement suit, however.

    2. How Long Does Copyright Endure?a. Copyright on works first published after 1978 lasts for the life of the author plus 70

    years. Works made for hire and published after 1978 are protected for the lesser of95 years from first publication or 120 years from creation.

    b. As a rule of thumb, it may be said that works first published before 1923 are nowin the public domain. For works published between 1923 and 1978, copyrightprotection was divided into two terms. Protection for the second term required acopyright owner to renew the copyright. Works first published between 1923 and1963 are in the public domain, unless the author renewed the initial 28 year termof copyright for an additional term.

    c. Works published between 1923 and 1978 are protected for 95 years from firstpublication, if their copyright was renewed; so such works may not begin to go intothe public domain until the year 2018 (for something published in 1923).

    d. Section 108(h) of the Copyright Act states that libraries and nonprofit educationalinstitutions can treat literary works (including illustrations contained in them)which are in their last 20 years of protection as being in the public domain forpurposes of preservation, scholarship or research usage, if such work is not subjectto normal commercial exploitation and not available to purchase at a reasonableprice. So this means that any literary work first published before 1943 may beavailable for non-commercial use by a library or educational institution. Howeverthis section does not apply to musical, pictorial, graphic, motion picture or otheraudio visual works, except news programs.

    3. Investigating the Copyright Status of WorksThe investigator needs to discover who owns the copyright to a work, and this may

    not be easy. The creator of the work usually owns the copyright. A transfer ofcopyright ownership or exclusive license must be in writing to be effective and isnormally recorded in the Copyright Office.

    However, a work created by an employee in the course of his/her employment isdeemed a work for hire, and the copyright belongs to the employer. Questions andproblems frequently arise as to whether a work was actually created in the course ofthe employees regular employment. If a library, or anyone else, asks an employee tocreate something which would be protected by copyright, such as a painting, sculpture,photograph, video, or a computer program, it may be prudent to spell out the librarysrights in a writing signed by the employee.

    If a librarian, or anyone else, commissions someone other than an employee tocreate a copyrightable work of any kind, the rights to the uses which the libraryexpects to make of the work must be explicitly spelled out in writing, or the writing

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  • must specify that the entire copyright to the work is assigned to the library. Otherwise,the copyright to the commissioned work belongs to the author/creator of the work, andthe library may have no right to reproduce it or use it in the ways that it would liketo.

    Identifying who owns the copyright to a work will be important to a libraryintending to seek permission for a particular use or, indeed, when a library is acquiringa copyrighted work. The party from whom the work is acquired may or may not ownthe copyright. And the library may want to seek a written assignment of copyrightfrom the copyright owner so that it will be wholly free to use or reproduce the acquiredwork as it wishes.

    General questions about how to determine whether a work is in the public domainmay be addressed to the Copyright Office at (202) 207-3000. The Copyright Office hasalso published a circular dealing with how to investigate the copyright status of awork, and copies are available on request. However, such a search may prove to bevery difficult, and a library may want to ask the Copyright Office to conduct thesearch.

    For searches, the Copyright Office can be reached at (202) 707-6850 or by sendinga fax to (202) 707-6859. The library will need to give the Copyright Office allavailable information (title, author name, publisher/producer, approximate year ofpublication, type of work, title of the periodical containing the work, if applicable, dateand issue number of the periodical and any other relevant registration data). TheCopyright Office will then send a cost estimate and requires payment in advance.

    Registration data after 1978 is available on the Internet from the Copyright Officeweb site ( Registration data before 1978 has beenpublished in a separate catalog going back to 1891.

    C. What Are the Exclusive Rights of Copyright Owners?Having considered factors relevant to whether a work is protected by copyright, the

    next step is to determine whether a proposed use of a work involves rights which areexclusive to the copyright owner. These rights are set out in Section 106 of the CopyrightAct and include:1. The Right to Reproduce the Work

    This right encompasses reproduction of a work by any means, including scanningthe work into a digital format.

    2. The Right to Distribute the WorkThe distribution right encompasses both the right to publish a work to the public, and,

    pursuant to section 602(a) of the Copyright Act, the right to import a work from abroad.An example of infringement of the distribution right is illustrated in New York Times v.Tasini, 121 S.Ct. 290 (2001) where the Supreme Court held that for Lexis Nexis to putarticles in its database, which was available to subscribers, infringed the authors right ofdistribution. Another example is illustrated in Hotaling v. Church of Jesus Christ of theLatter Day Saints, 118 F. 3 d 199 (4th Cir. 1997). In that case a library made copies of awork which it owned and put them into its branches. This was held to be a distributioninfringement. While the library apparently had infringed by making copies, it had done so

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  • 3 years before the filing of the suit, and an infringement claim on this ground was barredby the Copyright Acts three year statute of limitations. Distribution to the branches, on theother hand, took place later, at a time within the statute of limitations, and a claim basedon the distribution right was not time barred.

    Nonprofit institutions may import one copy of audiovisual works, and five copies ofother works, without infringing the distribution right, however. Copies acquired byanyone legitimately can be sold or loaned without violating this right. It is clear thatlibraries may lend copies of a work legitimately acquired or reproduced to the publicwithout infringing the distribution right.

    3. The Adaptation RightThe inclusion of this right as a separate right is superfluous, because infringement

    of the adaptation right necessarily involves infringement of other protected rights.4. The Public Performance Right

    This covers musical works, plays, literary works, motion pictures and other audio-visual works. To infringe this right the performance has to be in public, that is, in frontof other than family and social friends. It includes transmissions and broadcasts.

    5. The Public Display RightThe most important application of this right is to electronic transmission. Owners

    of originals and copies of a work can display the work publicly, even by projecting it,without infringing the public display right, provided that the viewer is in the area ofthe displayed work. The owner of a statue, for example, can display it at a museum oranywhere else without infringing the display right of the copyright owner.

    6. A New Right of Copyright Owners Created by the Digital Millennium Copyright Actof 1998 (DMCA)

    Section 1201(a) of the Copyright Act (Chapter 12 of the DMCA) permits the useof passwords and other technological measures, such as encryption, to control accessto copyrighted works. It prohibits reverse engineering of software to circumvent suchmeasures and prohibits anyone from importing or trafficking in any device producedfor the purpose of circumventing such measures.

    The manner in which the right to manage access to digitized material is utilized isimportant now and will very probably be even more important in the future. More andmore copyright owners utilize encryption and watermarks to manage access to theirdigitized works. There are serious concerns that such management techniques will inter-fere with Fair Use and other non-infringing uses of copyrighted works. It will be importantto follow and support the development of standardized, user-friendly and appropriatesystems to assist in the controlled dissemination of digitized material to the public.

    4. exceptions and limitations to the exclusive rights of copyright owners

    The Copyright Act contains many lengthy and detailed exceptions and limitations to therights accorded to copyright owners. Among the more important ones for libraries are:

    1. Section 108, which deals specifically with libraries;

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  • 2. Section 110 (1), which permits the performance or display of works in face-to- faceteaching activities by nonprofit educational institutions;

    3. Section 110 (2), which deals with exemptions for certain long distance educationaltransmissions;

    4. Section 512, which limits the liability of online service providers; and5. Section 107, which deals with Fair Use.

    A. Section 108 as Amended by the DCMA. (Library Special Rights)Section 108 was amended in 1998 to increase the special rights of libraries. Under

    section 108, a public library is permitted to make one copy for a member of the public,or another library requesting it for private study or research, provided that the copybecomes the property of the user. However, the special rights for libraries provided inSection 108 do not authorize libraries to make copies of musical works, pictorial, graphicor sculptural works, or audiovisual works, other than those dealing with news, where thepurpose of making the copy is to give it to a member of the public.

    If the work to be copied is an entire work, the library must first have determined thata copy is not available to buy at a fair price. If only one article out of a periodical ora small part of a work is to be copied, there is no requirement that the library look intowhether the work is available for purchase.

    Notice of copyright or a notice that the work may be copyright protected must appearon the copy, and the library must display a copyright warning sign.

    The number of copies which can be made by libraries for preservation purposes isincreased from one to three for both published and unpublished works. Also, three copiescan be made for other libraries. Prior to the amendment to section 108 resulting from theDCMA, a library could make only one preservation copy and probably had no right todigitize. However, revised section 108 specifically permits the use of digital and otherfuture technologies, although copies made in digital format may not be made available tothe public in that format, except within the library premises.

    Libraries can only make copies which are to be retained by the library when the solepurpose of doing so is preservation or when the existing format is obsolete and only whena new replacement cannot be obtained at a fair price.

    Section 108(f) excuses a library from liability for unsupervised copying on librarypremises, provided that the copying equipment has a notice that making copies may besubject to copyright law.

    B. Section 110, as Amended in 2002 (Teaching Special Rights)Section 110 permits certain uses of copyrighted works by a nonprofit educational

    institution as part of systematic instructional activity in class sessions. These include:1. The display of any work in a class session; and2. Digital or other transmissions of performances of non-dramatic literary or musical

    works or of a reasonable part of any work, provided that the transmission is an integralpart of a class session and limited as much as possible to students enrolled in a courseand that available technology is used to prevent retention or retransmission of materialby students after the class.

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  • Section 118(d) (3) permits a nonprofit institution to make reproductions of certaintransmissions by public broadcasting entities of non-dramatic musical, pictorial, graphicand sculptural works for use in instructional activity authorized in section 110, but suchactivity must take place within 7 days and the recordings must be destroyed thereafter.

    C. Limitation of Risks to Online Service ProvidersSection 512 of Copyright Act (Title II of the DCMA) limits risks that online service

    providers will be held liable for copyright infringement by reason of having providedtransmittal or routing services for infringing materials. To qualify for relief under thissection the online service provider must designate to the Copyright Office the name of anagent for receiving complaints and must remove material from the site if there isknowledge that it infringes. The section specifies a number of other conditions for reliefof liability. It is worded to give relief only to service providers who do not select thematerial which is put on the service, and the relief does not apply to any material whichhas been modified by the service provider.

    There are special provisions in Section 512(e) addressing the conditions for relief ofthe liability of nonprofit educational institutions acting as online service providers whenthe online content is supplied by faculty, when it relates to the courses being taught andwhen the material was not itself published for instructional purposes.

    Section 512 provides relief from liability for copyright infringement only, not fordefamation, invasion of privacy, trademark infringement or other unfair competitionclaims relating to online material.

    D. Fair UseSection 107 of the Copyright Act provides that the Fair Use of a work for purposes

    such as criticism, comment, news reporting, teaching, (including multiple copies forclassroom use) scholarship or research is not an infringement. It identifies factors to beconsidered in determining whether a use is Fair as including:1. The purpose of the use. (Nonprofit and educational uses are favorable factors, as are

    transformative uses such as use in a research paper or for the purpose of parody.Commercial use is an unfavorable factor, as are uses which merely repeat thecopyrighted material for entertainment or other non-transformative purposes.)

    2. The nature of the copyrighted work. (Use of nonfiction and published works arefavorable factors. Use of fiction or unpublished material are unfavorable factors, as areextended or repeated use or use on the Internet.)

    3. The amount which is copied. (Use of only a small part of a work, and no more thanneeded for the purpose for which it is used, is a favorable factor.)

    4. The effect of the copying on the value of the original work. (Favorable factors includelack of significant harm to the value of the work, because, for example, few copieswere made or because the original was OP or unavailable. Depriving the copyrightowner of the original work of sales or other revenue, for example, by placing a workon the Internet, or using a work repeatedly, is an important negative factor.)The Fair Use exception to a copyright owners exclusive rights is intentionally flexible

    and depends on the particular circumstances of the use. This undeniably makes for

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  • uncertainty in many situations. Indeed, judges frequently disagree on whether a particularuse is or is not fair, and many of the important Fair Use legal decisions are split decisions.

    A good way to establish Fair Use or at least establish that there was a reasonable beliefthat the use was fair (so as to avoid the risk of statutory damages) is to follow guidelinespublished by other reputable libraries and educational institutions. Even if a library failsto comply with existing guidelines fully, substantial compliance may be very helpful inestablishing Fair Use.

    For example, there are guidelines agreed to between the Association of AmericanPublishers and the Authors League for classroom copying of books and periodicals.These permit a faculty member to make a single copy of a chapter from a book, an articlefrom a periodical, a short story, essay or poem, or a chart, diagram or picture from a book,periodical or newspaper. The guidelines also permit the making of multiple copies, butnot more than one per student, for classroom discussion, provided that what is copiedmeets specified standards of brevity (for example, 2500 words maximum for a completearticle, story or essay), and that the copying is at the request of the teacher and issufficiently spontaneous to make the requesting of permission impractical. The guiderequires that not more than one article from the same author or than three from the samecollective work be used in the class term and contains a number of other limitations.However, if the guidelines are followed, the teacher, or a library acting at the request ofa teacher, should be within the Fair Use exception.

    Guides have also been established and agreed at the CONFU Conference (ConferenceOn Fair Use) convened by the Clinton Administration. These cover the amount ofcopyrighted material which can be incorporated by educators into multimedia materialswhich they are creating for educational use. The limits placed on usage in the guidelinesare spelled out in precise detail. For example, for text usage, the guidelines permit the useof up to ten percent of the work or 1,000 words, whichever is less.

    The CONFU Conference could not reach agreement on rules for putting copyrightedmaterials on electronic reserve, but the University of Texas has created rules of thumbcovering the important subject of the use of copyrighted works in online course materialswhich are reasonable and which at least provide a starting point for broader consensus.They require initial possession of a legal copy of the work, inclusion of copyright noticeand appropriate source citation, limitation of access to students, termination of access atthe end of the class term, and limitation of reserved materials to individual articles andchapters, not total works. They require that permission be obtained if the materials are tobe used repeatedly for the same class.

    Indiana University has also instituted Fair Use guidelines for electronic use. TheIndiana University guidelines require limitation of access to students in a course, that thematerials be placed on reserve at the request of the instructor, that access be free, and thatonly parts of a work directly related to the educational aspects of the course can bereserved. They provide that substantial portions of creative works such as novels, art andpoetry will not be reserved; only a chapter or a small entire work will be reserved.Repeated use of the same materials without permission is not sanctioned, and the use ofmaterial readily available for the student to purchase is not permitted.

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  • Notwithstanding careful analysis of factors suggesting whether a use is Fair, certaintywill often be elusive. Judges have often disagreed on whether a particular use was Fairuse. For example, in Sony Corporation of America et al. v. Universal Studios, Inc., 464U.S. 417 (1984), the Supreme Court declined to prohibit the sale of Betamex video taperecorders because they could be used for time shifting, which the majority thought wasfair use. That case was a 5-4 opinion. In Williams and Wilkens Co. v. United States, 487F.R.D. 1345 (Ct. Claims 1975, affd. 420 U.S. 376 (1975)), the Supreme Court affirmeda decision by the Court of Claims holding that the copying of thousands of articles frommedical journals and delivering them to anyone who wanted them was fair use, becauseaccess to the articles was important to medical science. This decision was by an evenlydivided Court. The Supreme Courts opinion in Harper and Rowe v. Nations Enterprises,471 U.S. 579 (1985), holding that publication by a magazine of an article containingnumerous excerpts from unpublished letters of President Ford, was by a Court divided6-3. There are many other examples.

    I believe that as Fair Use issues are tested in the future and cogent arguments are madethat future uses, relating both to existing and to new technologies do not cause unrea-sonable harm to copyright holders and provide desirable access to the public for usefulpurposes, the courts will continue to expand the boundaries of Fair Use. I am sure thatlibraries will continue to be in the forefront of efforts to bring important Fair Use issuesto their attention.

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    Copyright issues for libraries and librariansBackgroundCopyright infringement remediesAnalyzing copyright problemsexceptions and limitations to the exclusive rights of copyright owners