Abstract
In this session of the NASIG and Society of Scholarly Publishing joint program, a panel of lawyers conversed on topics related to the creation of copyright policy that impact both librarians and publishers. The topics chosen were selected to highlight areas of possible controversy between librarians and publishers. Dialogue centered on the concepts of international first sale, fair use, licensing and mass digitization, library exceptions, possible revisions to sections of the U.S. Copyright Act, and the relationships between accessibility issues and copyright. Through conversational style discussions the panelists conveyed to the audience that achieving balance in copyright law is challenging and the process often creates constructive tension among the rights of stakeholders.
INTRODUCTION
The theme of this intellectual property and copyright panel was the importance of constructive cooperation in the copyright policy process. The moderator of this meeting was October Ivins, Principal and Consultant for Ivins eContent Solutions. The panel consisted of two intellectual property experts: Peter Jaszi, Professor of Law and Faculty Director of the Glushko-Samuelson Intellectual Property Clinic, Washington College of Law, American University and Michael J. Remington, Of Counsel, Drinker Biddle and Reath LLP (Washington, DC). Ivins introduced the panelists who had jointly selected a list of topics for discussion in conversational style. Issues were chosen to demonstrate useful points of potential agreement or disagreement between publishers and librarians. After introductory statements by both of the panelists the following topics were discussed:
International first sale
Fair use, licensing, and mass digitization
Library exceptions and possible revisions of Section 108
Accessibility and copyright
For each issue Jaszi introduced and framed the topic, Remington responded and then Jaszi followed up with any final remarks he wanted to make on the subject. Ivins was the timekeeper and permitted approximately ten minutes per theme.
INTRODUCTORY STATEMENTS
Jaszi expressed his appreciation at being asked to speak at such an unusual and important gathering and to be on a panel with his friend and colleague. He suggested that it is somewhat unusual these days to discuss copyright policy topics with what might be characterized as a mixed audience. He pointed out that for about the past fifteen years the copyright policy stakes have become somewhat balkanized and highly polarized. The discourse has been characterized by less civilized behavior than in the past when decisions were made in a more productive and cooperative way; there was previously more desire to form a consensus than there is today.
Jaszi suggested that it may not be possible to return to the ways of the past but it is possible that a conversation-based policy making process might still make sense for some topics. He suggested that were we to recover the old way of making policy in conversation, it would also be true that the conversation would be expanding beyond publishers and librarians to include more stakeholders such as consumers and innovators. It would include people that have realized, since the copyright wars of the 1990s, that they have an interest in the outcome of copyright policy-making. Jaszi stated that it would be good to have a discussion about copyright policy around a table where both the repeat players and the relative newcomers were represented. He indicated that during the session he and Remington were going to discuss a list of topics that in the recent past have usually been points of controversy, and occasionally cooperation, between library and publishing communities.
Remington stated that in his view, for several reasons, the NASIG and Society for Scholarly Publishing (SSP) joint program is attractive. First, the NASIG and SSP joint program flyer focuses on “evolving” information policies. To his mind, “evolving” connotes changes before the law has caught up. Second, the reference to “a conversation between libraries and publishers” is a very civil way to approach the ever-whirling cycle of change that is accelerating. Third, Remington was happy to have an opportunity to appear with his long-time friend and colleague, and to jointly participate in a “conversation.” He indicated that his vision is consistent with that of NASIG and SSP and he indicated that he thought it was a brilliant idea to hold a joint program that brings together librarians and publishers. NASIG’s vision (to promote the development and implementation of best practices and standards) and SSP’s (to advance scholarly publication and communication and the professional development of its members through education, collaboration, and networking) are consistent with his. Change is a salient factor in our lives, especially at the vortex of information, electronic resources and scholarly communications.
Remington indicated that he does significant work in the areas of music publishing (copyright) and university technology transfer (patent) and every day brings surprises and new issues. He served as counsel to the House Judiciary Committee Intellectual Property Subcommittee and in 2001, at a National Conference on Intellectual Property in the Digital Environment he presented keynote remarks on changes (fourteen in number) to copyright law since 1978.Footnote1 He later came up with the following general theories about copyright:
Authorship is worth incentivizing.
Change increases creativity, and the marketability of human expression.
The concentration of corporate interests is increasing at the expense of individual creative interests.
The costs of copying are decreasing and the costs of enforcement are increasing.
Educational institutions push the knowledge economy’s oil; libraries hold the reserves.
The more extensive the societal changes, the more ill-fitted is the mantle of elected officials and the greater the need for understanding complex issues.
Remington suggested that he now realizes he missed a big point: the positive role played by best practices. He stated that he had forgotten the negotiations that led to an agreement between the motion picture industry and the playing of videocassettes in nursing homes, the agreement between performing rights organizations and jukebox operators, and best practices developed by photofinishers and professional photographers. All of these agreements promoted communications between adversary groups, and reduced the vagaries of litigation. Changes wrought by the digital revolution have been a wild ride not only for libraries and publishers but for society as well. Remington suggested that the future promises the same. The role of law is to re-channel change outside of the law into a justice system that is accepted by citizenry as legitimate. Lawmakers cannot do it all; we collectively have a role to play. NASIG and SSP are equipped to be constructive players.
INTERNATIONAL FIRST SALE
Jaszi began the discussion of international first sale by indicating that the issue is an interesting one because it is one in which the publishing community and the librarian community were at loggerheads in the years leading up to March 2013, when the U.S. Supreme Court issued a landmark decision in Kirtsaeng v. John Wiley & Sons, Inc. (Kirtsaeng).Footnote2 In question were the geographic scope of copyright law’s first-sale doctrine and the scope of international exhaustion. Libraries took the position that the first-sale doctrine should be fully international in scope and publishers said that the United States should not recognize international rights of first-sale but rather the doctrine should be recognized as domestic in scope. The Supreme Court came out on the side of library views of international exhaustion and ruled that distribution rights allow a copyright owner to just say “no” to the distribution of lawfully created goods unless there is a sale. Significantly, the Court ruled that the first-sale doctrine allows importing physical books, lawfully made and acquired abroad, into the United States for resale without violating a copyright owner’s distribution right. Put simply, the doctrine includes no geographic limitations so long as the copyrighted work was lawfully made. This was important because librarians cared about circulating materials no matter where they were published. Jaszi stated that there was significant grumbling on the part of publishers who had hoped for the opposite result and he wondered if publishers have accepted the decision or if there will be activity around this issue again at some point.
Remington pointed out that the Court’s decision has been characterized as a pro-consumer decision and it was easy to predict that the Kirksaeng decision would increase the “licensing model” at the expense of the “sale model.” User interests now need to focus on whether an agreement is a license or sale, whether there are significant restrictions on a purchaser’s ability to transfer a copyrighted work, and other use restrictions. Trademark law and consumer protection issues also come into play. Remington added that after all, more and more copyrighted works have moved into digital format, and the pace of digitization is only accelerating. In that context, copyright holders can more easily argue that first-sale rights do not apply because the recipient of the copyrighted work is merely a “licensee” of the work, not an “owner.”
Remington indicated that the Kirtsaeng decision helped enshrine the first-sale doctrine as an important limitation on the rights of copyright holders, Copyright law is adaptable. As the digitization of copyrighted works increases, copyright owners may exploit rights in different ways. Through click-through agreements, users may waive first-sale rights. Some courts have recently developed an approach that renders first-sale rights inapplicable to digital transfers. The U.S. Congress may even get into the discussions. Remington pointed out that the John Deere Company has recently argued that people do not own the machines, but have an implied license for the life of the vehicle. He stated that when John Deere (and General Motors) redefine what ownership of a product really means, farmers may start to wonder whether they own their John Deere tractor.
Remington suggested that sometimes when we think we will get simplicity in law we get complexity and that may be one of the results of the Kirtsaeng decision. Overall however, he indicated that he did not have a problem with the decision because it would not be desirable for United States laws to be extra-territorial to the extent that they attempt to control activities in other countries.
Jaszi suggested that there will be ongoing discussions as to how far licenses can override copyright law. There are numerous bills currently in Congress that are designed to push back and limit how much licensing terms can override what can be defined as the default settings of copyright law. He predicts this will be a growth area in the copyright policy-making process over the next couple of years.
FAIR USE, LICENSING, AND MASS DIGITIZATION
Jaszi began the discussion of fair use, licensing, and mass digitization by stating that we know these days that the courts are taking an expansive view of Section 107 of the U.S. Copyright Act related to fair use.Footnote3 Fair use gives users the opportunity to use copyrighted materials and to engage in certain activities with those materials without securing permission from the copyright owner. In his view, cases that have been going on in the courts have not necessarily been embraced by stakeholders and there are many critics among the publishing community. Critics suggest that the courts have perhaps gone too far with their recent re-emphasis in judicial decision making on the transformative factor and they argue that court decisions are taking the fair use doctrine someplace where Congress never intended. Jaszi counsels libraries and other stakeholders on fair use and the threats that licensing terms can impose on their fair use rights. He reminded the audience that some license terms are very restrictive and suggested that the discussion as to whether licensed materials are subject to fair use is going to be a big topic in years to come.
Jaszi suggested that there will also be discussions of statutory reform. He indicated that no one at the moment is challenging Section 107 but there are proposals in different forms. For example, the U.S. Copyright Office has suggested that certain areas like mass digitization should be excluded from the application of Section 107. There are also suggestions that the scope and application of Section 107 should be reduced or changed in the area of library exemptions.
Jaszi commented on a 2012 case in which Georgia State University was sued for copyright infringement as a result of activities around their e-reserves service. Jaszi stated that in the Georgia State case both sides claimed victory and in his opinion neither should have. The decision was too provisional and limited in scope to have long term staying power. According to Jaszi, unless some kind of understanding can be reached outside of the courtroom, fair use will probably persist as an issue in court rooms for at least the next decade.
Remington began his remarks by asking the audience if they had ever experienced a copyright infringement lawsuit and raised a fair use defense. Remington stated that the fair use defense is an extremely important part of the U.S. Copyright Act. One of the problems on the publisher’s side is that one has to sue someone to prove infringement and then present a fair use proposition that entails evaluating four factors in order for a court to weigh in on deciding whether a use that falls within the general scope of fair use is, in fact, “fair.” The four factors for evaluation are:
The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
The effect of the use on the potential market for or value of the copyrighted work.Footnote4
The fair use clause calls for evaluation on a case-by-case basis and with libraries and universities under increasing economic stress he does not know how things will evolve. Remington indicated that fair use is an important concept, but one has to examine how laws actually function in society. He thinks the concept is not functioning badly, but thinks all libraries, universities, and publishers need to understand the four factor test and then there needs to be a discussion of how things will actually work.
Remington agrees with Jaszi that there have not been many ramifications yet regarding the Georgia State case. He stated that even though he is a big fan of Judge Gerald Tjoflat who wrote the 11th Circuit’s majority opinion, he personally feels that the dissenting opinion by Judge Vinson could ultimately prevail if an en banc review is ordered. Remington also reminded the audience, that in any event, fair use is determined on a case-by-case basis and the 11th Circuit’s decision, if it stands, will not have precedential effect on the other circuits.
With regards to mass digitization, it is difficult for Remington to understand how a company like Google could have a system to digitize books from library shelves and write to authors at a last known address and say if you do not respond you have opted in. However, he did point out that some mass digitization does provide copyright owners with an inexpensive way to bring out-of-print works back into print as an alternative commercialization scheme. He suggested that there are therefore some good things happening outside of the law.
Jaszi responded that it would be interesting to see to what extent Google’s activities are viewed as significant by the court. Decisions will need to address questions regarding the extent to which the commercial nature of Google’s operation is viewed as significant by the court. HathiTrust mass digitization activities were considered fair use because they were within the education sphere so the Google decision will have interesting ramifications on the interpretation of fair use. Jaszi stated that we should pay attention to what people actually do in civil society and less attention to what courts say practices should be. One could look at best practices, especially related to course reserves, which was at the heart of Georgia State case, in order to provide experientially based prescription.
LIBRARY EXCEPTION AND POSSIBLE REVISIONS OF SECTION 108
Section 108 is a provision of the U.S. Copyright Act that provides specific exceptions for libraries and archives. but not museums.Footnote5 Through enacting Section 108 in 1976, the U.S. Congress provided libraries and archives with special exceptions to the exclusive rights of copyright owners. Congress also took care to qualify the exception with conditions designed to prevent libraries and archives from becoming direct competitors with publishers or other interests. Section 108 was created in a pre-digital era and was drafted without digitization in mind. In the digital era, it is viewed as becoming less and less applicable and heading toward irrelevance. In response to this concern, library and archival interests asked for amendments to be made to Section 108. Publishers pushed back and a Section 108 Study Group was created in 2005.
Jaszi pointed out that five years ago revision of Section108 seemed to be a really important issue and everyone worked hard on revising it, and then the revision was unsuccessful. Jaszi stated that through structural issues like a lack of a sense of strong leadership and through the study group’s composition, which was created to achieve mathematical fairness, the conveners of the group built in failure. There was very little common ground. The report from the group basically said that there are things that need to be done but the authors did not appear to know what to do. At one point, it looked like the U.S. Copyright Office might look at the issues, but that is no longer the case. What was a high library priority at one point is now virtually invisible. Libraries think that they can rely on Section 107 on fair use to meet their needs and with this decision reform of Section 108 has become less urgent. It is a live issue but not necessarily viewed as an area for urgent future cooperative policy-making.
Remington suggested that some, but not much, meaningful progress has been made and suggested that Congress sometimes makes its best decisions when it does nothing and lets things simmer. Section 108 is on simmer according to Remington although it may come back as an issue at some point. If and when Congress turns its attention to enacting a twenty-first-century copyright act for the twenty-first century, Section 108 reform will return to the legislative platter. Remington also wondered however if Congress is the best decision maker on library or archives issues.
Both Jaszi and Remington emphasized and agreed that a major reason for the downfall of reform of Section 108 was the lack of strong third party leadership, which would have been needed to create consensus. Remington also suggested that the community should watch for attempts to revise Section 108.4 of the U.S. Copyright Act. In his opinion, even small suggested revisions to this clause, which is intended to connect Sections 107 and 108, could make a big difference in shifting the balance of power between librarians and publishers.
ACCESSIBILITY AND COPYRIGHT
Jaszi stated that accessibility is an important topic for him. He has worked on several issues related to accessibility. Jaszi presented background to the audience on an issue, which in his view, is mostly about the creation of copies of published works that can be read by people with print disabilities. Between 1976 and the HathiTrust copyright decision of 2012, Congress became involved in the accessibility issue and implemented the Chafee amendment, which created Safe Harbor provisions in the 1990s.Footnote6 The amendment was a result of conversations between publishers and others. However, there has been disagreement domestically on the interpretation of the amendment. According to Jaszi, there was an unrelated movement around the same time to create a treaty governing the relationship of copyright on the one hand and the provision of accessible copies for people with disabilities on the other hand. On June 28, 2013 the Marrakesh Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities (Marrakesh Treaty) was signed by fifty-one countries.Footnote7 The treaty focuses on copyright exceptions to facilitate the creation of accessible versions of books and other copyrighted works. The ratification of twenty states is needed for the treaty to go into effect.
Jaszi indicated if the Marrakesh Treaty were adopted by the United States, it would help settle many issues surrounding Section 121 of the U.S. Copyright Act and make it clear that libraries are entitled to export copies of works for people with print disabilities in other countries.Footnote8 In many other countries, according to Jaszi, the Marrakesh Treaty would have a different significance because there is no current system for the production, distribution, and export of accessible copies. In the time in which the Marrakesh Treaty has been discussed there have been a lot of clashes between publishers, librarians, and representatives of people with print disabilities. In his view, everyone got something from the Marrakesh Treaty but no one got everything. The publishers, very significantly, got the incorporation of the three step test that is included in international copyright law. Currently, the Obama administration is preparing a proposal to ratify the Marrakesh Treaty in the United States and has held discussions behind closed doors. The package is likely to emerge soon. According to Jaszi, it will be interesting to see how the different stakeholders respond. He would like to imagine that the discussion would happen with some civility on such an important issue. Remington indicated that the Marrakesh Treaty is important and the first intellectual multilateral property treaty to focus on user interests. He indicated that it is often scary for copyright holders to deal with user based treaties, but he does not think one can justly protest accessibility to the blind or people with other disabilities. Remington also thinks that it sets a huge precedent and this is an area where the digital era can probably do some good in terms of technologies and value. He cannot say he is ecstatic about the Marrakesh Treaty or that it is on a top ten list for him, but it will probably be a top ten development and we will just have to wait and see. Remington pointed out that so far the treaty has only been ratified by eight countries and none of those countries are in the developed world. He hopes that the United States does not create treaties and then not ratify them however because that would be hypocritical and give false hope to people with disabilities.
Remington indicated that it struck him that the community of nations is moving towards consensus regarding accessibility (not only for the blind but for others with disabilities). It will take time, but we will likely see more work by international and national organizations on accessibility issues. Remington suggested that the audience should monitor developments because the results of discussions will be important and probably administered by many people in the room. Jaszi wholeheartedly agreed.
CONCLUSIONS
Through this session the panel conveyed to the audience that balance in copyright law creates a constructive tension between the rights of copyright owners (and authors), distribution entities, and the public interest, but achieving balance is not an easy undertaking. The panel had planned to discuss Orphan Works but ran out of time. It was decided that the conversation would be held over for the next session where there would also be a few minutes allocated for questions. The moderator thanked the speakers and the audience and invited everyone to the final gathering of the afternoon.
Additional information
Notes on contributors
Peter Jaszi
Peter Jaszi is Professor of Law and Faculty Director of the Glushko-Samuelson Intellectual Property Clinic, Washington College of Law, American University, Washington, DC.
Michael Remington
Michael Remington is Of Counsel, Drinker Biddle and Reath LLP, Washington, DC.
October Ivins
October Ivins is Principal and Consultant for Ivins eContent Solutions, Sharon, Massachusetts.
Sharon Dyas-Correia
Sharon Dyas-Correia is Senior Serials Strategist and Collections Librarian for Open Access Initiatives, University of Toronto Libraries, Toronto, Ontario, Canada.
Notes
1. “Copyright Law of the United States of America and Related Laws Contained in Title 17 of the United States Code,” Circular 92, Chapter 1, http://www.copyright.gov/title17/92chap1.html (accessed September 10, 2015).
2. John Wiley & Sons, Inc. v. Kirtsaeng, http://www.supremecourt.gov/opinions/12pdf/11-697_4g15.pdf (accessed September 10, 2015).
3. “Copyright Law of the United States of America and Related Laws Contained in Title 17 of the United States Code,” Circular 92, Chapter 1, Section 107, http://www.copyright.gov/title17/92chap1.html#107 (accessed September 10, 2015).
4. “Copyright Law of the United States of America and Related Laws Contained in Title 17 of the United States Code,” Circular 92, Chapter 1, Section 107, http://www.copyright.gov/title17/92chap1.html#107 (accessed September 10, 2015).
5. “Copyright Law of the United States of America and Related Laws Contained in Title 17 of the United States Code,” Circular 92, Chapter 1, Section 108, http://www.copyright.gov/title17/92chap1.html#108 (accessed September 10, 2015).
6. The Authors Guild, Inc., et al v. Hathitrust et al, “Opinion & Order, United States District Court Southern District of New York, 11 CV 6351 (HB),” https://cases.justia.com/federal/district-courts/new-york/nysdce/1:2011cv06351/384619/156/0.pdf (accessed September 10, 2015).
7. “Marrakesh Treaty to Facilitate Access to Published Work to Visually Impaired Persons and Persons with Print Disabilities” (adopted by the Diplomatic Conference, World Intellectual Property Organization, June 27, 2013), http://www.wipo.int/edocs/mdocs/diplconf/en/vip_dc/vip_dc_8.pdf (accessed on September 10, 2015).
8. “Copyright Law of the United States of America and Related Laws Contained in Title 17 of the United States Code,” Circular 92, Chapter 1, Section 121, http://www.copyright.gov/title17/92chap1.html#121 (accessed September 10, 2015).