Evolving Collective Rights Management for Author, Publisher and User Needs

I’ve updated my somewhat nerdy “history of collective licensing” essay that was published by CCC with contributions from fellow essayist Bruce Rich and Lois Wasoff (see “Creating Solutions Together” ), and was happy to see the update published by Law.com on June 3 in its Legaltechnews newsletter.

The update addressed technological change and adaptation by copyright law and collective management organizations, and discussed new specific user needs such as in creating data sets for artificial intelligence and text-data mining exercises. Collective blanket licenses are particularly appropriate for such high-volume automated requirements. CCC in particular has worked to make TDM licensing efficient and effective.

To paraphrase the English copyright advocate Charles Clark, ‘the answer to technological challenge is technological adaptation’.

The Future of Collective Licensing – Copyright in the Digital Marketplace

By permitting researchers, academics, publishers and others to make use of copyrighted materials and enabling rightsholders to receive royalties for those uses, collective licensing creates efficient markets that make copyright work.

A Panoply of Views on Copyright in the Age of AI

A Panoply of Views on Copyright in the Age of AI

Francis Gurry
Director General
World Intellectual Property Organization

A Panoply of Views on Copyright in the Age of AI

Early in February, several CCC executives, staff and “friends of the firm,” (as well as a roomful of other fans of copyright) participated in a one-day conference on “Copyright in the Age of Artificial Intelligence,” (AI) which was co-hosted by the US Copyright Office and the World Intellectual Property Organization. Mark Seeley, a CCC Board Member, wrote the following observations on this timely event for CCC:

This one-day conference held in the Washington offices of the Copyright Office was the second in a series of conferences under the aegis of WIPO and the USCO to help establish an appropriate legal framework to consider the implications of AI (in its various applications and forms). Both Francis Gurry (WIPO Director General) and Maria Strong (acting Register of Copyrights) indicated in their introductory remarks that the focus of these discussions would be around identifying whether the appropriate questions are being asked concerning the intersection of intellectual property (IP) and AI.

Gurry noted that IP has been built around the notion of “property” and that AI raises the question of how AI interacts with copyright-protected content used for data ingestion. He identified the two key issues as (1) the interaction of AI and the current copyright system and (2) the new concept of machine-created content. In recent court decisions in China, the courts struggled to identify the “dominant” human being or proximate inventor in AI projects. Gurry spoke of the concern about deep fakes (while noting that there are other potential legal remedies, such as defamation claims or claims of infringement of rights of publicity), and he also pointed out questions about the use of medical information for health AI applications. Concerns about deep fakes, including voice fakes, were also expressed in one of the afternoon panels by Sarah Howes (SAG-AFTRA).

Gurry and Strong both noted that human creativity is fundamental to the current structure of IP laws. Andrei Iancu (Director of the U.S. Patent and Trademark Office) noted that the PTO is currently reviewing submissions made in connection with a series of questions on AI and IP it posed in the fall of 2019 and indicated a report will issue by the spring of 2020.

The panels of experts that followed spoke to specific AI applications in various fields, primarily in artistic fields, and nearly all of the applications fell into the category that CCC described in its PTO submission as “Machine Learning” (ML) techniques. These techniques start with a proposition or goal, develop a ML algorithm that is applied to sets of data (which can be unstructured content), and then refine the techniques through feedback. The relevance and quality of data is often a critical factor in successful AI projects.

Professor Ahmed Elgammal (Rutgers) gave a history of the utilization of photographs and other images, but uniquely described a computer system that would itself generate images based on its increasing understanding of what certain objects might look like – this did not involve merely “mining” and extracting data from data sets but creating a new work entirely. This was described by Elgammal as involving a generator (using no data) working in conjunction with a discriminator (a “critic” using data access). The generator creates an image with feedback from the critic. Other examples provided included creating false face images. Importantly the creative aspect (a “Creative Adversarial Network” or CAN) can be used to “break out of a style”.

This made a nice contrast with the “Next Rembrandt” project (through TU Delft and the Mauritshaus Museum) which involved scanning the oeuvre of Rembrandt paintings and reproducing techniques (including the dimensionality of the application layers of paint) to create a “new” painting in the style of Rembrandt, as discussed by Andres Guadamuz (senior lecturer at the University of Sussex). Sandra Aistars, of the Antonin Scalia law school  at GMU, read from a critical review by Jonathan Jones in The Guardian about the project. Jones described The Next Rembrandt project as foolish and empty – focused more on style and not on the heart or substance of the artist’s world view. Astairs went on to question whether the project had more to inform us about forgery than about new creativity.

The panel on the administration of international copyright systems included Ros Lynch (UK IP Office), Ulrike Till (recently appointed head of WIPO’s new AI directorate) and Michele Woods , also of WIPO. Lynch noted that protection in the UK for “computer-generated works” has been in existence since the late 1980’s, with the author identified as the human who made the “necessary arrangements” for the creation of the work. The UK provisions have a 50-year duration (shorter than the more traditional “life of the author plus 70 years”), but Lynch noted duration could be something reviewed in the future. The question of originality is an important factor concerning possible protection, and Lynch noted that the legal analysis would concern the choices made or the degree of “personal touch” reflected. Secondary infringement analysis of such works is still probably an open question. UK law on computer-generated works most likely reflects the more “utilitarian” view that UK copyright law has often adopted, for example with compilations of factual information.

The formation of a new AI division within WIPO reflects the importance with which WIPO views the matter, as noted by Ulrike Till. Michele Woods of WIPO also discussed the various AI tools used by WIPO for IP prosecution and policy development (such as translation engines and prior art data); Woods noted that the tools are under considerable revision now  so that we can expect to see new versions of some of these tools, or new web site platforms, rolled out over the course of 2020.

The discussion of collective licensing as a possible solution to the problem of the need for lawful large-scale ingestion of copyrighted content came up in several presentations, including that by Mary Rasenberger , Executive Director of the Authors Guild), Professor Astairs. A little later in the afternoon came the music AI panel, comprised of Joel Douek (EccoVR), Michael Harrington (Berklee Online), David Hughes (RIIA) and Alex Mitchell (Boomy). That last one, Boomy, is a fascinating new technology play for producing AI-generated music, whose tag line says it all in a nutshell: “Make Instant Music with Artificial Intelligence.”

Suggestions made for an expansion of fair use, or an interpretation of fair use to permit AI exceptions, were advocated by panelists such as Meredith Rose (Public Knowledge), Julie Babayan (Adobe), and Amanda Levendowski (Georgetown).

Technical developments that affect the potential copyright protection for works created by AI were very well explored in the all-day session, with examples from across the spectrum, and the framing questions on authorship (must a human be involved?) and ingestion seem like the appropriate questions. One gets the sense that examples from collective works such as films might be helpful in discussing questions about authorship and contribution, and that collective licensing (such as that offered through CCC and other organizations)  for text and data mining can be helpful in addressing  some of these problems, may be followed up in later conferences. It certainly sounds like there will be plenty to talk about.

Copyright and Contract Law in International Publishing

Copyright and Contract Law in International Publishing

Copyright and Contract Law in International Publishing

An abridged version of this post was published on December 9, 2019 at Copyright.com 

It is a truism that publishing is an international business, and the Frankfurt Buchmesse itself, held this past October, is a strong indication of this global dimension, with separate halls for different countries and international stands, presentations going on simultaneously in German and English (and no doubt several other languages) throughout the conference areas. One book and one author can have enormous influence and engender demand in many countries—and the chance to bring out an important book for a local domestic market that was originally written in a different language and published in another country can be an important market opportunity, one which publishers and translators will be working hard at during this bookfair.

In my prior career at a major science publisher the market was truly the entire world of scientific researchers and academics, most of whom are able to navigate in English (naturally there are also important scholarly materials published in German, French, Spanish and Mandarin, but English does have broad currency in science). On the legal side, we know that the laws of copyright and contracts are ultimately local and national, notwithstanding the intended normative effect of international intellectual property treaties. If we are dealing with authors, publishers and distributors in different countries, there are important legal questions about which law governs these relationships—and copyright enforcement brings even different questions (is an infringement in one country necessarily an infringement in another?). Collective licensing through the collecting or rights societies such as VG Wort in Germany, the CLA in the UK, and the CCC in the US, can also operate quite differently and with differing sets of rights and markets.

How can publishers navigate the differences in national laws while trying to manage an international business? What rights and permissions are they actually acquiring through contract and their negotiations, or through collective licensing arrangements, and what rights can they use or enforce in local markets, particularly where author and publisher reside and rely on different countries and legal traditions? This article suggests some general approaches and considerations, but does not and cannot substitute for specialized legal advice for either authors or publishers in particular markets.

Copyright laws governing the scope of protection for authors such as the minimum duration of rights are largely normalized in the international treaties, including the Berne Treaty, the WIPO Copyright Treaty of 1996, and the TRIPS standards. However these treaties are silent about the nature of the contractual rights that can be negotiated between authors and publishers, and ultimately with distributors and other agents—and there are no international contract treaties (although some treaties touch on contractual issues in passing and the EU does have some EU-wide contract regulations). Authors of literary works are clearly protected under copyright and authors’ rights regimes, whereas there are significant national variations concerning protections for performers and film creators (neighboring rights principles are sometimes used instead of copyright).

Authors in certain countries such as Germany and France often cannot fully transfer copyright interests to publishers, although they often can provide exclusive commercial licenses. Some author’s rights countries even require certain contractual provisions or elements be included in publishing contracts. As Lindner and Nordemann note in “Cross-Border Copyright Licensing” (published by Elgar in 2018 and edited by Scollo Lavizzari and Viljoen), some of these copyright contract rules “have … been adopted with a view to protecting the author as a party with a weaker bargaining position…”(Section 2.17). Such laws also often require significant detail and specification of rights granted, and do not permit sweeping statements that we may be more used to in the US/UK copyright tradition such as “all rights in all languages and media throughout the world”. It might be difficult, for example, for a German author to transfer a new and unknown usage right. The ability to bring a copyright infringement case may in some countries require some degree of approval or participation by authors even if enforcement rights have been assigned to publishers (see the discussion in footnote 104 in the Lindner/Nordemann chapter).

The recent 2019 European copyright directive, the Digital Single Market, is meant (in part) to reinforce the importance and centrality of the author, journalist and artist when dealing with technology platforms, and some may view this as widening the gap between Europe and more market-oriented IP regimes such as the US, where the technology-focused industries are more influential in business media coverage and the stock markets, and thus often have an outsized impact in government interactions and advocacy. The DSM also places EU-wide requirements for greater transparency in author-publisher contracts, particularly around issues such as royalty statements and remuneration from collective license arrangements. These very specific requirements may not represent a significant departure for German publishers, as to some extent these obligations are based on previous German copyright-contract laws, but will require review and possible contract adjustments by other publishers.

Freedom of contract principles, which predominate in market-oriented countries, suggest that authors and publishers are generally free to negotiate and to waive terms and conditions, limited only by the limits of imagination. The laws of certain author’s rights countries however do require certain provisions and note that some rights cannot be waived. Contract parties are also generally free to agree to adopt the laws of a particular country to govern the interpretation of their contract (“governing law” clauses), and there are often provisions utilized by courts in determining governing law when this is not explicitly chosen in a particular contract. Such “default” governing law provisions often look to the location of the parties, the country in which the transfer or contract is negotiated or effective, or the country in which the underlying “performance” of the contract. In an author-publisher contract, however, regardless of where the publisher is located, a significant amount of performance on the part of the author will be conducted in the country where the author is located. This is made more complicated of course when a work has multiple authors in multiple countries.

Given this legal diversity, how can publishers organize their contract negotiations and considerations of local legal variations?  Certainly one approach can be to simply insist that the law of the country where the publisher is located must govern the publishing contract, in part on the theory that the author (if that author is located in a different country) is knowingly reaching out to a publisher in a different legal environment, and in part on the theory that, characteristically, the publisher is engaging in almost all of the “post-creation” activities particularly around distribution, and therefore understandably relies on their own local laws concerning these core commercial issues. If challenged in a court case, however, a court in a country with strong protective traditions around author’s right issues may not agree that local laws may be discounted completely. Another approach might be to accept that governing law will always reside with the author, which will require some significant business flexibility if for example further distribution rights or royalty provisions are inconsistent.

In my view, distinguishing between the differing stages of the work on a book could be helpful in looking at the applicable law issue. Putting aside the work-for-hire contractor scenario where a writer has been hired to create a specific section of an overall book, the creative aspects for most fiction and many non-fiction works in trade publishing are initiated by an author who is resident in a particular country, and often well before that author has considered whether they might negotiate a contract with a publisher in another country with a very different legal tradition. The author will be relying on their local tradition in thinking about the rights they have in their work and how those rights can be negotiated, often bolstered by advice and guidance from local authors groups and organizations, including collective organizations. It seems reasonable to me that in such circumstances, local copyright laws regarding core authorship questions (what qualifies as authorship, the inherent rights and duration of those rights) are or should be recognized as broadly applicable.

It seems to me, however, that when that author (or perhaps an agent on their behalf) has decided to negotiate with a publisher in a different country with a different legal tradition, they can be viewed as entering into a transaction that likely will be viewed under the relevant legal conditions of the publisher, including such matters as distribution, sub-licensing and enforcement. Therefore I’d suggest we look at applicable law issues in a “bifurcated” fashion, and consider that any adjustments required for full distribution or enforcement in a given country be understood as enabling an adjustment in the consideration of applicable laws.

This is a simplistic approach, and there are difficult nuances with respect to the rights being transferred or licensed to a publisher—after all an author may say that the author cannot transfer rights that they do not have or that cannot be transferred by contract.  Nonetheless I think it would be fair to assume that in an international negotiation the parties would want to give each other the benefit of the bargain, and that an author would want the publisher to have a strong position in the distribution and marketing of the work. This would suggest that the law of the country in which the publisher resides should broadly govern questions about distribution. Perhaps this could be understood as a transfer of rights or an exclusive license to the maximum extent permissible under any contrary governing law, with the burden of interpretation and default principles switching to the publisher’s venue after the execution of the underlying author-publisher contract.

This approach is not as radical as it might appear at first glance—in the absence of explicit governing law provisions, a court would have to provide a substitute legal framework, and would likely look to those questions noted above regarding performance of the contract—in which event the question about whether the dispute is around authorship or around distribution might rightfully be regarded as “performance”.

Whether this bifurcated approach is used or not by publishers, it is critical for publishers to review and consider which venues and laws would be relevant for their publishing contracts, which would be relevant for their authors, what would make sense for their down-stream licensees, and what possible conflicts or paths of divergence might exist—ultimately an assessment of the uncertainty and risk. It might very well be that there could be substantive differences which have only a modest business impact—so if a royalty statement has to be re-designed to reflect clearer accounting of collective licensing revenue, for example, perhaps that could be done in the context of a refresh of the entire royalty system, and done in a way that would not require costly changes. There are other possibilities as well, for example greater harmonization through treaties or treaty amendments, where a broad spectrum of stakeholder views could be adequately taken into consideration.

OA and Transformative Agreements at the Frankfurt Book Fair

OA and Transformative Agreements at the Frankfurt Book Fair

October 2019

Science Europe’s cOAlition S has over the past year made significant strides in its “Plan S” project, which is about accelerating the move from subscription-based science publishing towards Open Access publishing, including the Gold OA business model (where authors, their institutions or their funding agencies pay for article publishing charges or APCs so that the public can read the articles without a charge). Plan S has an ambitious goal of realizing a fully open publication process for public or private funded research papers by 2021, and includes an impressive number of funding agencies, including Science Europe itself (representing EU agencies), a number of national funders from the UK, the Netherlands, Sweden and the like, and private funders such as the Gates Foundation and Wellcome Trust.

There are a number of ways that authors and publishers can meet Plan S targets, including by deposit in certain repositories (with no embargo periods), or publication in a “fully OA” journal (excluding “hybrid” journals). These approaches are clear cut and will no doubt work for many authors and journals.

Plan S also supports institutions and publishers entering into “Transformative Agreements” which involve a transition from a mostly subscription-based model to a full OA model (by 2024), and it has been the work and negotiations around such agreements that have captured the attention of university libraries and scholarly journal publishers. This began with the January 2019 announcement by Wiley and Projekt Deal (led by Max Planck) for the German Projekt Deal consortium arrangement, although it is true that there have been national consortium arrangements dealing with transitions to OA before Plan S such as the VSNU for the Netherlands and Bibsam for Sweden. The Wiley-Deal negotiation was featured in a CCC-sponsored panel at the Book Fair this year with Wiley senior counsel Deirdre Silver and Max Planck negotiator Dr. Ralf Schimmer (see https://twitter.com/wileyinresearch/status/1184334432557326337?s=20 and https://twitter.com/copyrightclear/status/1184471735946612737?s=20), where both speakers emphasized the need for thoughtful negotiation and understanding of the key drivers and concerns of both parties.

That afternoon discussion followed a Society for Scholarly Publishing (SSP) morning breakfast panel discussion (with the Scholarly Kitchen chefs) on “hot topics” which devoted probably 80% of its time on Transformative Agreements and the question of flexibility—given the huge variations among scholarly societies in terms of discipline and funding. https://www.sspnet.org/community/news/frankfurt-micro-conference-preview-ssp-and-tsk-return-to-frankfurt/

I was delighted to participate in a later CCC panel that also included  Susie Winter (Springer Nature), Jim Milne (American Chemical Society) and Sybille Geisenheyner (Royal Society of Chemistry), which gave us a half-hour to talk about specific negotiations and for me to speak for a few minutes about the overall legal landscape (transcript and tape of the panel can be found at the CCC BeyondTheBook site https://beyondthebookcast.com/the-future-of-transformative-agreements/). In the picture below I can be found on the right thumbing through my one page of notes.

What I tried to focus on in my part of the panel was the fundamental elements that make up a Plan S-style Transformative Agreement (which now includes the University of California- Cambridge University Press deal), and to note some difficulties on the legal side. As I see it the key elements for Transformative Agreements include:

  • A clear commitment to transition
  • A phased approach in value assignment from mostly subscription-based to OA and generally a reduction in costs
  • In OA publishing, the retention of copyright by the authors and a requirement to use a CC license (preference for CC BY, the most flexible license from a usage perspective)
  • Transparency & reporting on costs, pricing models & progress towards goals
  • Emphasis on standards such as ORCID, text standards & protocols
  • Workflow requirements (re APC processing).

A great deal of work has been done by Science Europe to identify these elements and to support negotiation in Transformative Agreements, and a registry has been set up to index such agreements (see https://esac-initiative.org/about/transformative-agreements/). However it must be said that there are many variations even among those agreements listed, and much of the detail around transparency, costs and workflows are not yet readily evident. It is perhaps for that reason that ALPSP and Wellcome Trust recently announced their collaboration on model agreements, which is very welcome (see https://www.alpsp.org/News/20190912-spa-ops-report-and-toolkit).

There are sizeable problems remaining concerning Transformative Agreements, including the extent to which publishers wish to be transparent towards their competitors about pricing issues (or even the extent to which they are permitted to be, from an antitrust and competition law perspective), the degree of funding across disciplines, the variability of research outputs and research intensiveness across institutions (which suggests that some institutions will bear a larger share of publishing costs than they do now, as noted in the August 2019 Inside Higher Education article about the Wiley-DEAL contract  https://www.insidehighered.com/news/2019/08/29/germany-strikes-deal-springer-nature). Another fundamental problem, noted in the SSP breakfast discussion, is the simple fact that negotiations take time and that institutions may well need to prioritize their negotiation resources, leaving smaller publishers in a bottleneck scenario.

Even with these complexities and concerns, however, there is no question that the transition in business models for scholarly publishing towards OA has been accelerating faster over this past year than in the prior five years, and if stakeholders such as cOAlition S remain engaged on implementation this will have considerably more impact on the scholarly communication infrastructure than debates on policies and principles.

Mark Seeley
October 2019

Legal issues in “Controlled Digital Lending”

Legal issues in “Controlled Digital Lending”

Presentation – Legal issues in “Controlled Digital Lending”

The copying and distribution of copyrighted content by libraries present complex legal issues, and although there are existing copyright law exceptions for such library activities (primarily in Section 108 of the US Copyright Law), those exceptions have not formally been amended for digital and online uses. The position statement and white paper on controlled digital lending (CDL) published in September 2018 by Kyle Courtney (Harvard) and David Hansen (Duke) is endorsed by a number of libraries, copyright academics, and other organizations such as the Internet Archive, but should be understood to be primarily an advocacy position, relying principally on a “fair use” argument and some risk assessment. While in the past publishers and libraries have worked together on legislative solutions including a working group on Section 108 in the mid-2000’s, and on a number of pilot e-book lending projects in 2013 and 2014, there was no such “bipartisan” engagement in developing the CDL proposal, and publishers (the AAP) and authors (the Authors Guild) have noted their opposition and disagreement with the CDL position.

VIEW Presentation

Legal issues in “controlled digital lending” | NISO MAY 2019

Legal issues in “controlled digital lending”/ NISO/ May 2019

Section 108 and 107d (most relevant sections for library copying in US copyright law)

17 USC 107 and 108 have a curious relationship—107 is the general fair use exception and is meant to be a flexible instrument which notes that certain uses of a copyrighted work might not be an infringement for a variety of purposes including scholarship and research, and then sets out the famous four factors (purpose of use; nature of work; amount used; effect on market); but 108 contains specific provisions about library reproductions including those for preservation and archiving, but also permits copying for users at another library (interlibrary loan), which provisions have not been updated significantly since 1976 (minor update 1998).  These provisions were amplified by the CONTU Report of that same year that were supported by library, publisher and author organizations, and which sets out the famous “rule of 5” for relatively recent periodical publications (past 5 years, no more than 5 article from single journal).  Section 108(f)(4) notes however that nothing in Section 108 limits the “right of fair use” under Section 107.

Why do we have two sections that are possibly relevant to CDL?  Simplistically it can be said that 108 is more specific and provides more guidance for library copying, particularly when amplified by CONTU. Section 108 states the overriding principle that the copying should not amount to “concerted reproduction or distribution of multiple copies… [so] as to substitute for a subscription to or purchase of such work”.  Section 108 helpfully provides protection against legal liability for libraries and their staff in conducting ILL and in providing in-house copying services.  Interestingly in the statutory damages provision in Section 504, a nonprofit educational institution or library also receives protection from statutory damages if they had “reasonable grounds” for believing that the requested use was a fair use under Section 107.  The drafters of the 1976 Act no doubt understood that the more general flexible approach of fair use might be needed to supplement the more specific provisions of Section 108, given the length of time between copyright law amendments (Section 108 saw relatively minor modifications in the 1998 DMCA but otherwise is much the same as it was after the 1976 Act).

Analogy re a firm bridge over a river (108) as opposed to looking to find shallows to ford (107)?

The drafters of the CDL position and white paper (see https://controlleddigitallending.org/whitepaper)  discuss 107 and fair use, along with the question of “first sale” (codified in Section 109), understood generally to refer to physical goods like a used print book, but do not address Section 108.  I don’t believe this is because of a fear of complexity, because fair use itself is quite complex, as is made clear in the white paper discussion– which in the end amounts to a risk assessment for librarians—I believe instead it is because some advocates at the moment believe that the courts will advance fair use positions more quickly and more readily than a negotiated “new deal” or a new Section 108. 

Prior review efforts & recommendations

Publishers have participated over the past 15 years in several working groups and pilot projects, working directly with libraries and library organizations, carrying the “bipartisan” work through.  In addition, many publishers have developed “interlibrary loan” provisions in licensing arrangements. Several of those working group studies and pilot projects in fact recommended changes in law and licensing practices to permit many of the functions described in the CDL position and paper.  Indeed the core recommendation of the Section 108 study group is largely reflected in the CDL position, in linking digital reproduction & delivery to greater technical protection measures to reduce possible unplanned re-distribtuion. The 108 study group would have also added museums and online libraries if they met certain criteria (Section 108 talks about libraries being open to the public or available to affiliated and unaffiliated researchers).

Why hasn’t revision of Section 108 occurred?  Publishers and author organizations were generally supportive of the changes mentioned (with concerns over effectiveness of TPMs) in the study group recommendations and in the Copyright Office proposals (last noted in 2016). Support from the key US library organizations ARL and the ALA, however, was lukewarm (see https://www.arl.org/storage/documents/publications/section108study-libresponse9nov06.pdf) — the official view at that time appeared to be that the application of technical protection measures to scanned content or born digital content would not be consistent with library principles of “minimal restrictions consonant with access allowed for the original versions.” Of course it is true that any piece of legislation faces many challenges, and copyright law proposals in particular often suffer from the perception that they are perhaps not as urgent as other matters—so there is considerable inertia when it comes to complex intellectual property laws such as our Copyright Act.  However inertia can be overcome—we saw this last year with the Music Modernization Act which in the end received considerable support across ideological divides—and legislative proposals would stand a much better chance of passage if there was a strong consensus view that could be expressed to Congress.


The CDL position & white paper

As noted, the September 2018 position statement co-authored by a number of copyright and policy advisers to organizations such as the Internet Archive and the Harvard and Duke university libraries, and the more detailed white paper co-authored by David Hansen (Duke) and Kyle Courtney (Harvard), relies on fair use, first sale and in the end risk assessment.  The documents do not discuss Section 108, or the Section 108 Study Group—no mention at all of this section of the Copyright Law.  The authors are probably correct that as currently drafted, 108 does not support digital ILL (neither the scanning nor the delivery), yet it seems odd to make no mention of it at all (even by analogy?).

The CDL documents also make a number of factual assumptions or assertions—described as the “20th century book problem”—asserting that many books published that are still in copyright (extending back into the early 20th century) are unavailable, or unavailable in digital form.  This question of availability is important in Section 108 analysis, and may be relevant to the fair use Section 107 analysis. The authors cite a number of recent papers about alleged difficulties in clearing rights or identifying copyright owners, particularly for specialized works. On the other hand, the authors do admit in a footnote that at least “some of the most popular, commercially-viable books remain in print and are available in a variety of formats.”  This is a more important point that needs to be made more forthrightly—in fact the US book publishing industry has been making available book content in electronic format for more than 20 years, and has been engaged in creating a backfile of available e-book content, particularly in the fields of science and medicine.  In addition, there are readily available sources of information about rights clearances, including through the Copyright Clearance Center (CCC) (on which I sit as a Board member).  Of course it will always be true that more esoteric and more specialized books may be viewed as having a limited market, and may not be kept up to date with respect to rights management and ownership—but the question for the library community will be the extent to which most interlibrary loan requests are actually for materials that are readily available or for which rights can be readily cleared.  Very simplistically, if consumers can find information about most books through retail outlet sources such as Amazon, then due diligence (often required in proposed “out of commerce” proposals) for the vast majority of works shouldn’t be seen as that difficult.

Book publishers initiated a series of pilot projects 5 to 6 years ago to test the viability of e-book loans under licensing provisions that would have permitted a certain number of “loans” or accesses for a particular work in e-book format, and then calibrated different licensing fees based on the use and popularity of certain works.  Publishers have options and alternatives available, including for e-book formats.  Science and medical publishers often include digital ILL activities in their institutional licenses.  The availability of these resources will have some relevance to the fair use analysis that the authors next engage in.  In the interest of time, I won’t examine the “first sale” analysis, which in my view clearly does not apply to digital works or scanning, although there is an open case on appeal that the authors noted which might be relevant.  The authors imply that first sale is somehow relevant to fair use analysis, which I think is a novel suggestion.

Fair use (107)

The authors are right, as noted above, to assert that a particular CDL delivery could be viewed by a court as a fair use under Section 107, and they do list the four factors correctly.  The fact that CDL might be for the purposes of scholarship or research is certainly an important factor that might weigh in favor of a fair use finding in a particular case.  The authors note that the factors need to be weighed together (purpose of use; nature of work copied; amount used; market effect), but do not discuss the fact that, as many courts have found, the market effect is often given greater weight than the others.  There is quite a bit of discussion here about the Authors Guild v HathiTrust case, although importantly that case involved the question of accessibility for print-disabled users.

The authors acknowledge that there re no cases directly on point, and that there is some contrary authority regarding commercial activities, and that it is important for libraries to act “within certain limits” to improve its fair use argument.  Let’s examine each of the four factors in turn, as the authors do.

Purpose and character of use—the assumption here is that CDL will be non-commercial and for educational and research purposes.  If the librarians involve have a good faith belief that the purpose of a particular CDL delivery falls into these categories, then the authors are likely right that this will weigh in favor of a finding of fair use.  The authors engage in some analysis of “transformativeness”, a concept developed by Judge Pierre Leval and which concerns, properly construed, the purpose factor.  The authors note that CDL is not “clearly transformative”, which in my view is correct (this has been stated also with respect to the Georgia State e-coursepack case), but I do agree with the authors that this may be irrelevant in this first use factor if the other elements are there.


On the nature of the work—the traditional understanding is that more copying of more factual works is likely fairer than copying of more creative works.  However I agree with the authors that this factor is not much discussed in fair use cases.  Nonetheless the authors suggest that librarians might want to concentrate on more factual or scientific works as a risk mitigation factor.

On the amount used, the authors assert that “on many occasions [the] use of an entire work, when necessary to fulfill a valid purpose, does not weigh against a [fair use finding]”—that may be true, but should be viewed as part of the overall weighing of factors that courts are supposed to do.  The fact is that the use of the entirety of a work, as contemplated in CDL, will be a factor weighing against a finding of fair use.  It may be of course that the other factors weigh in favor of a fair use finding, but clearly this factor does not lend itself to that finding.

The market harm argument depends very much on the “20th century book problem” that the authors postulate at the beginning of the paper.  The authors correctly say that courts have looked not only at market effects for the particular work in the particular format used, but have also looked at much broader potential markets, at least such markets that are “likely to be developed”.  One argument advanced by the authors is that the “owned to loaned” restriction (the “original” of the book is unavailable while the “copy” is being accessed, under DRM restrictions) preserves the market factors.  I do agree that this is helpful, but this does ignore the more fundamental point that particularly for recently published and certainly for trade market materials, publishers are making content available digitally and likely have provisions when licensing such content that address (either positively or negatively) whether the content can be used for ILL purposes, and may provide alternative market fees for such uses. 

Risk analysis (and the “control” in CDL)

The proponents of CDL suggest that incorporating the “owned to loaned” measure and DRM protection generally, along with the suggested time-limits on accessibility for the “loaned” copy, will help in risk mitigation.  I think this is true and that these are factors that would be considered by a court if particular CDL instances were challenged.  There may be questions about how secure and effective such measures are (not to mention the availability of commercial alternatives), but certainly such measures would be part of the legal assessment.  The authors are also right to point out the sovereign immunity defense for public institutions, where monetary damages might not be available (although injunctive relief might still be available). Finally, the authors are right to point out the general hazards of litigation—in cost and time and reputation.  Publishers do not generally like to engage in litigation with university libraries, and it seems to be a difficult way of obtaining greater legal certainty about certain kinds of university or library conduct.

Ultimately the authors warn that universities and libraries will need to obtain their own legal advice on these matters, and be prepared for possible litigation.  However they suggest that CDL with the limits envisaged and if confined to works that might be more specialized and possibly less available through normal market means may help support fair use arguments.


To improve legal certainty, there is really no alternative but “bipartisan” negotiation around Section 108 and legislative amendment.  This may take time, but as the authors have rightly pointed out about the Georgia State case, litigation (and appeals) also takes time.  If the goal is certainty, legislation is the solution. The Section 108 Study Group recommendations shows that compromises can be found.  Such a bipartisan approach would help ensure that Congress takes the proposal more seriously.  The stakeholders of course need to decide whether compromise is acceptable!