WNYLRC has allocated funds to retain an attorney to offer members, free of charge, advice on copyright concerns, digital rights, contracts, and more. In addition, a WNYLRC Legal FAQ section will be developed over time to provide information on issues pertinent to the entire membership.
To request the service, members must complete the Ask the WNYLRC Lawyer! Request Form. Members should provide as much information as possible on the issue to ensure the attorney has the information needed to fully answer the member library’s inquiry. Member libraries also have the ability to upload documents that might be helpful in assisting the attorney who is reviewing the issue.We ask members to check the RAQ section first before completing the form. Another member may have already asked the same question!
Questions sent to WNYLRC's "Ask the Lawyer" service will be reviewed by a WNYLRC staff member who is the service liaison, and sent to our counsel for answers. Responses and answers may be provided in several formats:
Please keep in mind: the "Ask the Lawyer" service is not legal advice to your organization. Always alert officers at your institution if a lawsuit is threatened, or if a matter is so specific or critical that your own institution's attorney should be involved. And yes--you can always "Ask the Lawyer," if you don't know if a particular issue hits that threshold!
The service is staffed by Buffalo attorney Stephanie ("Cole") Adams, who first developed a deep connection to libraries working as a page, then clerk, at her hometown library in New Hartford, NY. Ms. Adams went on to work at the libraries of her Alma Maters, Hampshire College, and SUNY Buffalo School of Law. She served for over 10 years as the in-house counsel at Niagara University, in Niagara Falls, NY. An attorney admitted to practice in both the state and federal courts of New York, Ms. Adams has extensive experience with the issues confronting information professionals. Ms. Adams works closely with WNYLRC and other library Councils to craft useful replies to member library questions.
At a recent WNYLRC webinar, we discussed the ownership of materials generated by library st...
At a recent WNYLRC webinar, we discussed the ownership of materials generated by library staff. Who owns the massive amount of original work generated by an active, engaged library staff?
The answer is: it depends.
Let’s start with the fundamentals:
FIRST: Copyright vests the moment an original work is fixed in a “tangible medium of expression.” Trademark is established through either registration or use on the marketplace. Patent can protect useful articles and unique business operations. Trade secret law can protect confidential information that gives your institution a unique edge. What does this mean? It means that the e-mails, presentations, displays, unique business solutions, archive collections and other valuable work-product generated by library staff are all assets that can be owned.
SECOND: Unless there is a contract, policy, or other express documentation to the contrary, an employer owns the copyright to any work produced by an employee as part of the scope of their employment (this is one of the reasons why it is always important to ensure staff have updated job descriptions). For trademark, patent, and trade secret, similar rules may apply. Be warned…if not set out clearly, this “express documentation” can take many forms: it can be buried in a union contract, can be inferred from a hire letter, or might even be derived from a habitual business practice. For both the library and its employees, there should be a clear policy.
THIRD: Not only copyright, trademark, patent, and trade secret law governs the control of employee work-product. The ethics of the profession may influence ownership. If your library serves a particular industry, like education or healthcare, the work-product is controlled by privacy regulations. It is important that the initial ownership arrangement between the library and its employees consider the other terms that may govern the work product, and it is critical that any policy reinforce the obligation to safeguard certain information.
So how does a library set up to ensure it owns the valuable work product it pays its staff to produce, but doesn’t encroach on the employees’ right to generate their own intellectual property when not at work? As more and more people “work from home,” use their own laptops, and may even compose work product on their cell phones, it couldn’t be more important to observe the following:
A carefully considered policy on employee work product. This policy should be harmonized with the ethics and mission of the institution, its policy on employee use of technology, and its regulatory compliance obligations. This does not have to be extensive; just a few clear, concise paragraphs in the Employee Handbook.
Clear hire letters and routinely updated job descriptions. Remember, in order to determine if something was created as part of an employee’s “scope of employment,” both parties need a clear notion of what that employment is!
Routine copyright, trademark, and patent registration of critical employee-generated IP. If your archives are known for a particularly good compilation of old photographs, for example, consider registration of the compilation with the Library of Congress (even if the images already have their own unique registration). If you gave the compilation a unique name, consider trademarking it. If your library developed a unique way to search the archive, explore a patent (before disclosing it to any other party!).
And if the asset is not only employer-owned, but critical, make the necessary archive and recovery copies, and make sure that back-up is controlled by the employer (locked cabinet, separate hard drive, employer-licensed cloud service).
What can an employee or institution do if there is confusion regarding an employee-generated asset? The best option is to promptly consult a lawyer. Remember…what people do and say during the initial phase of a dispute can later become evidence, while timely input can hopefully avoid unnecessary debate, and find a “win-win.” That said, there is no replacement for clear hire terms, current policies, and routine IP asset management. Staff and the great work they generate are critical assets of libraries and archives, so clarity is definitely worth the effort!
Our question concerns the copying of college textbook chapters for students where the requi...
Our question concerns the copying of college textbook chapters for students where the required textbook is either backordered by the bookstore day one of semester or where a late enrollees’ textbook is out of stock.
One current solution involves a limited checkout of a text for the first four weeks of a semester, and only for library use for reading or photocopying. We keep a printout of the standard Copyright notice on the copier to warn against excessive copying. After four weeks, students must have access to the book on their own and textbook copies remain solely as desk copies for faculty.
However, what is advised when multiple classes do not have textbooks in stock and late enrollees are more prevalent? What does copyright permit in terms of copying textbook chapters or providing e-links to textbook chapters on LMS (Blackboard, etc.) in such cases?
It’s 2017. Digital access to academic resources having been a factor in academic life for over 20 years, it would be reasonable to think I would have clear, well-established guidance to give you.
However, as of 2016, the United States was still struggling with Fair Use, and the law doesn’t give us the bright-line rules we are hoping for. Rather, particularly with regard to textbooks and digital access, recent case law has diminished them.
Very comparable to the circumstances you described is the case Cambridge University Press v. Mark P. Becker No. 1:08-cv-01425-ODE (N.D. Ga. Mar. 31, 2016). In Cambridge, a court in Georgia, after trying to use a simpler, equally weighted Fair Use analysis, and relying on the ill-fated “10% standard” of duplication, ruled that when creating digital copies/excerpts of textbooks:
(1) the first factor, purpose and character of the use, weighs in favor of fair use because [a university] is a nonprofit educational institution;
(2) the second factor, the nature of the work, is “of comparatively little weight…particularly because the works at issue are neither fictional nor unpublished;”
(3) the third factor, the amount of work used, must be viewed through the lens of “the impact of market substitution as recognized under factor four, in determining whether the quantity and substantiality . . .of [d]efendants’ unlicensed copying was excessive;” and
(4) the fourth factor, the effect of the use on the potential market for the work, “concern[ed] not the market for Plaintiffs’ original works . . . but rather a market for licenses.”
This case shows that a when it comes to textbooks, while courts will give strong deference to educational institutions, there is no “magic formula” (like 10% of the content) they will apply to ensure Fair Use. Rather, courts will apply a nuanced analysis that changes from work to work, and from use to use—making general guidance a challenge.
With all that in mind, my answer to the inquiry is:
First, the ability of the student/patron to physically access or check out the book is a great service by your library; with the required copyright notices posted, and no attempt by the library to collude with students in making prohibited copies, you are taking good advantage of section 108’s exemptions of libraries from liability for infringement. In addition, providing access to textbooks within the structure outlined above is a great incentive for students to visit the library.
Second, your actual question—can my library use digital access to help students who were late registrants or otherwise unable to secure a physical or full digital copy?—requires application of the Fair Use factors on a work-by-work basis, which as we can see, is an increasingly intricate and fact-specific exercise. You must apply the four factors not just on a work-by-work basis, but while considering the specific purpose of a particular use.
There are also some practical tips that can help you avoid being sued for infringement.
Tip #1: To answer questions like this, I always put myself in the shoes of the potential plaintiff.
· If I were the publisher, would I view the digitized access as cutting into my potential revenues?
· Is there an easily obtainable license for the excerpt, that the library is just choosing to ignore?
· Can I, as the publisher, easily put a price on the damages?
All these factors, if the answer is “yes,” can lead to the publisher instructing their lawyer to file suit.
However, even if all of these are true, I, the publisher, would also ask…did every person who accessed the digital copy already have a copy on back-order (and not return it)? If they bought my book, and were only using the digitization as a place-holder, I, the publisher, would tell my lawyer to look elsewhere for damages…especially since when I, the publisher lose, I am responsible for the legal fees of the other party (in the Cambridge case, the publisher was told to pay the fees of the university).
Tip #2: It is unfortunate that, like the courts, I can’t give a simple formula for Fair Use. However, one way you can sometimes get a bit of “free” advice on this is to consult with your institution’s insurance carrier. It is very likely your institution is insured for copyright infringement, and that they have a list of best practices they would like to ensure you, the insured, are following. As a professional within the library, it is good to also confirm that this coverage will cover not only the institution, but you as an employee. That can help you sleep at night.
Tip #3: And finally, if ever an entity notifies you that they are suing you for infringement, notify your insurance carrier right away. Often times, they can provide counsel, and help you reach a quick, low-stress resolution.
I encountered a situation in which a patron wanted to share an article that I sent to [a no...
I encountered a situation in which a patron wanted to share an article that I sent to [a not-for-profit organization’s] educational portal. As it happened, she had a very specific intended audience…which I thought fell within the "Fair Use" doctrine as, in addition to the information being educational, it was to be shared with [only] a small group.
However, it made me wonder how to approach a situation in which intellectual property was to be shared on such an electronic educational forum for the entire [not-for-profit] staff to sign off on having read. Would sharing with all [not-for-profit] staff for educational purposes be acceptable?
This is a great question, as it occupies the crossroads of the specific exceptions for libraries and archives in the copyright code, the elements of fair use, and an essential aspect of a library’s mission: dissemination of information. So, I am a bit sorry to say the answer is most likely: NO.
That said, there is a “YES” along the way, and with careful analysis, the two answers can be kept separate.
How is that? First, you have to see the query as not one question, but two.
LIBRARY COPIES V. FAIR USE
Part of this analysis depends on appreciating the subtle differences between Section 108 (exceptions for libraries and archives), and Section 107 (fair use).
Here is the formula for a library to provide an authorized copy of an article under Section 108:
Here are the factors used to analyze fair use under Section 107:
Note the difference between Section 108’s simpler, formulaic elements (providing a bright-line rule for providing an authorized library copy), versus the complex, inter-connected fair use factors (which most will agree provide anything but a bright line). Commentary on the Copyright Code shows this is a deliberate difference, and the effect is a positive one for libraries: whether or not subsequent patron duplication of a “Section 108 copy” meets the elements of fair use, a section 108 copy is authorized so long as Section 108’s much simpler elements are met.
A library’s provision of an authorized copy does NOT depend on the patron’s subsequent fair use. Section 108’s provisions stand alone, and on much easier-to-analyze ground. However, absolutely key to Section 108 is the library’s lack of notice regarding a patron’s intent to use the copy for anything more than private study/scholarship.
If, during the consultation, the patron discloses intent to use the copy to create their own mass distribution, the use will not qualify under Section 108, and infringement could be found. Just as critically, providing a copy once the library was aware of a further intent to copy could also run afoul of the fourth commitment in the Code of Ethics of the American Library Association: “We respect intellectual property rights and advocate balance between the interests of information users and rights holders.”
Because of this “notice factor,” Section 108 might be easier in theory than it is in practice. Patrons seeking information often use librarians as co-strategists in whatever project they are working on.** During such quests, a librarian’s awareness of the full extent of patron needs can be helpful, so there is often a discussion of not only what is sought, but why. This type of discussion may lead to better service, but if it leads to notice of a patron’s intent to put an article on an intranet or portal, the librarian can be put in a legally and ethically awkward position.
So…you are right to be cautious! Thank you for a great question.
*If the article isn’t commercially available, or the article is being parodied or provided as an example of “what not to do”--basically anything other than its simple face value as an educational tool--the fair use analysis would be different. But we’d need the precise factors from the patron.
**There is one other complication worth mentioning on this FAQ forum. For academic or other libraries operating within a larger institution, if the requesting party is simply another part of your organization, Section 108 is more difficult to credibly apply, so caution is needed.
Our local newspaper of record used to microfilm itself (using a third party vendor) for their o...
Our local newspaper of record used to microfilm itself (using a third party vendor) for their own use in their private archives. I’m not sure what terms they had with the microfilm vendor, but it was relatively inexpensive for the public library to purchase a copy from the microfilming company for daily use. The newspaper has come under new ownership and longer microfilms itself. My first question is whether I understand 17 U.S.C. §108 correctly. Does paragraph A give libraries the right to make 1 analog copy of pretty much anything they own? Or, in this case, to microfilm the newspapers we have on hand? And does paragraph C give us the right to make up to 3 more microfilm copies, for preservation purposes? It would be our position that newsprint is always deteriorating (we have no climate control storage space to preserve a long run; people steal issues and cut out articles) and after “a reasonable effort” there will be nowhere else from where we can buy a pristine back run “at a fair price”…. Must we enter negotiations with the publisher to secure the right?
The question relates to showing a performance video to a sanctioned college club. I understand ...
The question relates to showing a performance video to a sanctioned college club. I understand that as long as the college's library owns the DVD or streaming rights, the movie can be shown in its entirety for educational purposes in a classroom to registered members of the institution. Does the same hold true for showing the same movie to clubs on campus as long as the event is restricted to college members? This second question is related to the movie presentation but is concerned with publicity. Can the cover image be copied and inserted into the event posters and on the college's website? The web announcement would be removed immediately after the event.
As you say, a college can show a movie they own, without further licensing, so long as:
This is a broad exemption, but it absolutely does not apply to non-instructional, non-classroom showing of movies by student clubs. Such a showing would require express permission via license.
Of course, if a student club has an academic focus (for instance, Spanish Club) and the film is to be part of an academic experience (for instance, watching the movie in Spanish, to enhance learning), in an academic setting (class room, with a qualified academic instructor) one could argue that the required elements are still met. But the educational purpose must be bona fide…no watching “Deadpool” for entertainment and then having a half-hearted, academically disconnected discussion on modern comic book tropes. And of course under no circumstances should money be charged.
The second question is very simple: the cover images of most commercial films are subject to copyright. Because of that, and because there is no exemption allowing them to be duplicated, unless permission is obtained, the college is well-advised not to allow copies to be displayed to promote the event, and especially should not allow that image to be published on the college website.
Keeping it off the website is critical. Even smaller rights holders police the internet for images they own, and insurance companies, facing mandatory statutory damages and attorneys’ fees, will quickly settle claims…something that will eventually lead to higher insurance premiums for your institution.
The best way to promote the licensed showing is to either use the approved promotional material that comes with the license, or generate a version that does not infringe on the content of the original (or the film).
We have a request from a patron from another state for scans or photocopies of music scores tha...
We have a request from a patron from another state for scans or photocopies of music scores that we own and that are still under copyright. They are rare and only a few libraries have them across the country. The patron does not intend to perform the music, only to study the scores. Is it fair use to copy or scan them for the patron who is writing a doctoral thesis?
Short answer: The proposed copying would not be a permitted, duplication or Fair Use without some additional steps consistent with the four Fair Use factors.
Long answer: This is a great question, as it marries the practical consideration of access with the scary question of a liability for infringement. To answer it, there are a few initial points of priority….
First, it is critical to note that Section 108 (a) of the Copyright Act, which would normally allow for one copy of a work to be provided to fulfill this request, expressly excludes musical works (see Section 108 (i)).
Second: Because of the Section 108 (a) exclusion, it is important to distinguish: while the patron may have a Fair Use defense if they duplicate the work for the purposes of scholarship, the library, in simply making the copy to provide easier access to a remote patron, might not.
Third, as plaintiffs can sue “innocent infringers,” careful steps should be taken to ensure the library could not be viewed as a part of the chain of infringement, if the patron ends up not having a valid Fair Use defense for any copy or derivative work they generate.
Fourth, while this scenario does not state the original copy requires archiving, it sounds as if you have a rare and precious copy, so we’ll draw a bit from the law, case law and guidance covering the protection of deteriorating/rare documents.
And now…how do you enable the proposed access, but keep the library safe? By ensuring 108(c) and the “Fair Use” factors are on your side, whether you send them a scanned copy, or loan a physical copy.
Informed by the latest case law and guidance, the following steps could help claim Fair Use for providing the proposed copy digitally:
Step 1: As the Code of Best Practices for Fair Use in Academic and Research Libraries (www.arl.org/focus-areas/copyright-ip/fair-use/code-of-best-practices) puts it: “Providing [digital] access to published works that are available in unused copies on the commercial market at reasonable prices should be undertaken only with careful consideration, if at all.” It is essential to verify that the works, or a licensed copy, are not commercially available. This is essential for 108(c), too.
Step 2: It is best if the transformation of format is not an ad hoc effort, but rather is part of an effort to promote a special resource of your library. Making the digital copy a part of “special collection”—for instance, of rare music scores—will give you a stronger Fair Use defense.
Step 3: Again from the Code: “The Fair Use case will be stronger when the availability of the material is appropriately publicized to scholars in the field and other persons likely to be especially interested.” In other words, once you have the collection digitized, don’t let it be just that ad hoc project—promote it.
Step 4: Use appropriate technological controls (digital watermarks, etc.) to restrict the access, limit duplication, and ensure proper attribution of materials in the collection. That way, any eventual copying or derivative work generated by the patron is separate and distinct from the access provided by the library.
Step 5: As with any digital collection, make sure the library has an easily found way for people to register privacy or intellectual property concerns related to digital collections.
What if you just want to provide them with a physical copy? Following Section 108(c)’s rules for duplicating deteriorating copies, you can generate a copy for preservation purposes, loaning it to them with the expectation that it will be returned. Just take care that the work is not commercially available, and that the original copy is not available while the preservation copy is out on loan.
[NOTE: 108(c) bars a digital copy made on this basis from leaving your institution.]
The bar on Section 108 (a) applying to musical works makes this a bit more challenging than the usual duplication request, but with some care, access can be provided.
Further, if the patron wants to make a copy of what your library loans them (either digitally, or in hard copy), if their use is as you describe, they may have their own Fair Use defense. This will mean both the library and the patron can stand on separate, but solid, copyright ground.
We are shifting away from VHS here on this campus (along with everywhere else), and have a ques...
We are shifting away from VHS here on this campus (along with everywhere else), and have a question from an instructor about transferring a VHS tape to DVD. She's not able to get the tape on DVD or streaming, but knows that it's under copyright. Are there any loopholes to allow for making a digital backup of a VHS tape because VHS is an obsolete medium? Does going through a good-faith effort to find a digital version give some protection or leniency? Should we encourage the instructor to contact PBS or the show's producers to obtain copyright clearance for making a digital copy?
We’ll start out with the best advice: unless you stand on the legal high ground of a disability accommodation or a crumbling single copy unavailable in the original medium, when it comes to creating a new format of a work, written permission from the copyright owner is always best. That is the gold standard. If you have permission, the blood, sweat, and tears (or stress, more likely) of a Fair Use analysis are not needed.
This scenario does not occupy any legal high ground. For a library in this position—dealing with the increasing rarity of VHS players—there is great guidance out there from the Association of Research Libraries’ “Code of Best Practices in Fair Use” (http://www.arl.org/storage/documents/publications/code-of-best-practices-fair-use.pdf): Here is what the code has to say on this issue…
Even when libraries retain the originals of preserved items, digital surrogates can spare the original items the wear and tear that access necessarily inflicts. Section 108 of the Copyright Act authorizes some preservation activities, but does not address some of today’s most pressing needs…[including] the transfer to new formats of materials whose original formats (such as VHS magnetic tape) are not yet obsolete (as the term is narrowly defined in section 108(c)) but have become increasingly difficult for contemporary users to consult.
Case law also acknowledges this VHS problem, but gives no relief: “Fair use has never been held to be a guarantee of access to copyrighted material in order to copy it by the fair user's preferred technique or in the format of the original.” (University Studios et al v. Corley, U.S. Court of Appeal 2nd Circuit, 2001). This case is 15 years old, which means a lot has happened in the world of technology, but is still good law.
So the answer is, for now, unless you are making a disability accommodation, or faced with a crumbling copy, there is no iron-clad loophole or clear precedent to allow the proposed conversion to be a “fair use.”
That said, if you have a deteriorating copy, a good-faith effort to re-purchase it in the original medium will certainly contribute to a fair use defense if you duplicate it to preserve this resource.
To help both you and your institution show that you have gone through this exercise, when you address such questions, I advise that you compose short emails to yourself, documenting the question, process, and conclusion. A simple:
“Instructor stopped by today and asked if we could convert VHS in the collection to DVD for ease of access. I let her know we’ll try to purchase a copy on DVD or seek permission of the copyright holder to make a copy on DVD.”
“Instructor stopped by today and asked if we could convert VHS to a format that would allow Deaf student to view closed-captioned version; we are arranging conversion solely to allow reasonable accommodation under the ADA.”
“Instructor pointed out that VHS tape in collection was not working right. [Co-worker] and I verified the condition. As best practices state it is fair use to make digital copies of collection items that are likely to deteriorate, or that exist only in difficult-to-access formats, for purposes of preservation, and to make those copies available as surrogates for fragile or otherwise inaccessible materials, the library will create a back-up copy, UNLESS a fully equivalent digital copy is commercially available at a reasonable cost. We will of course not provide access to or circulate original and preservation copies simultaneously.”
This July, various news outlets reported that the world’s last manufacturer of VCR’s has cease production. Please check back on this issue; we’ll update this entry in the FAQ when we have better guidance, which should be coming soon. Congress is working on new guidelines, and was recently told by the Register of Copyrights, Susan Pallante: “In its current state, Section 108 is replete with references to analog works and fails to address the ways in which libraries really function in the digital era, including the copies they must make to properly preserve a work and the manner in which they share or seek to share works with other libraries.”
We would like to digitize newspapers that were published prior to 1923. Since the paper is stil...
We would like to digitize newspapers that were published prior to 1923. Since the paper is still in business, does public domain apply in this case? They are very difficult to deal with. We do have a contact there. However, if there is nothing stopping us from digitizing the older issues, we prefer not to deal with them. Would this also apply to other newspapers who are still publishing today but whose content does exist prior to 1923.
You have confirmed that the “Buffalo Evening News” (and other iterations) content originates BEFORE the strategic “1923” date confirmed by the Copyright Office (Circular 15a) as in the public domain. This is true whether the original article or image was owned by the paper, or licensed by the paper and owned by another person or entity.
Once an item is in the public domain, there are numerous ways for either the original owner, or another, to create a copyright in a new medium re-presenting the content (this is a motivating factor in many “special editions”), but the original is no longer protected, and may be digitized as you describe, without concern about an successful infringement claim.
One caveat on the “Buffalo News” content: there could be a concern as you promote the newly created resource. “The Buffalo News” is a trademark owned by (interestingly) The Columbia Insurance Co. (registration # 75834888). So while you can list the resource, I advise against using the name “The Buffalo News” in any promotion of the collection. That is for optimal safety and so you don’t get a cease-and-desist.
The good news is that the “Buffalo Evening News” trademark is officially “dead” (see attached screenshot). This may be used to promote the service, should you wish to do so.
This analysis and a similar caveat would apply to any other newspaper.