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

    1464-9055/03/$ see front matter 2003 Elsevier Science Inc. All rights reserved.doi:10.1016/j.lcats.2003.09.016

  • 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. Sect...