Ask the Lawyer Request Form

Recent Questions

 

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: 

  •         a memo shared with all members if the issue is pertinent to more than one member library,
  •         a training session if the issue is pertinent to a group of member libraries or type of library members,
  •         an addition to the "WNYLRC Legal FAQ" on the WNYLRC web site, or
  •         a memo shared only with the member library requesting the information and the WNYLRC service liaison who manages the service.


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!

 

About Our Attorney

 

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.

 

RAQ: Recently Asked Questions

  

Topic: Sharing Articles

I encountered a situation in which a patron wanted to share an article that I sent to [a no...

Posted: Wednesday, March 29, 2017

MEMBER QUESTION

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? 

WNYLRC ATTORNEY’S RESPONSE

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.
 

  •  FIRST QUESTION:  Is a library allowed to provide a copy of an article to a patron? 
     
     ANSWER:  YES. With careful attention to the factors that apply only to libraries and archives (Section 108 of the  Copyright Code), a copy of the article can be provided.
     
  •  SECOND QUESTION: Is it a fair use for the patron to then distribute a digital copy via an access-restricted portal?

    ANSWER:  NO.  Even when the user is a not-for-profit trying to stretch budget dollars and educate its workforce, when a patron is essentially trying to provide broad access but circumvent a licensing fee,* the elements of fair use are not met.

 

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:

  • The copy must become the property of the user;
  • The library or archives has had no notice that the copy would be used for any purpose other than private study, scholarship, or research; and
  •  The library or archives displays a warning of copyright as required by law.

Here are the factors used to analyze fair use under Section 107:

  • 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 upon the potential market for or value of the copyrighted work.

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. 

Topic: Microfilming current newspaper

Our local newspaper of record used to microfilm itself (using a third party vendor) for their o...

Posted: Monday, February 6, 2017

MEMBER QUESTION

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?

WNYLRC ATTORNEY’S RESPONSE

A community library’s role in archiving and creating access to local news is critical, but changing technology, uncertainly of ownership, and costs can make the legal aspects of the process uncertain.  The member’s questions, set out below, are on the forefront of this issue: how do libraries position themselves to preserve and provide access to published local news?  
 
Section 108 of the Copyright Code was created to balance the rights of copyright owners with the access and preservation of their works, including newspapers.  It allows for the copying of sections, whole works—and in some cases, the creation of multiple copies of whole works—by libraries and archives.  The first question from our member sets the stage for this issue:  
 
Does Section 108, sub-section (a) give libraries the right to make 1 analog copy of pretty much anything they own?
 
The answer is to this opening question is: No…Section 108’s application is broad, but it might not apply to your whole collection.  The final paragraph (sub-section “i”) of the law contains some big exceptions: musical works, pictorial, graphic, or sculptural works, or films/AV works (excluding news).   So, while there are certainly limitations to these limitations (mostly for ADA access, as provided for in other parts fo the law), sub-section (i) means that not “all” parts of a collection may be fully copied.  
 
That being said, exclusive of the exceptions in sub-section (i), under Section 108 (a), ONE copy can be made, so long as the library is open to the public, the copy is not made for commercial gain, and the copyright to the work is attributed—along with a notice that the copy was made per section 108.  This is a critical protection for libraries, library staff, and patrons.  However, the duplication it allows is balanced with the rights of copyright holders…and a careful read shows it was also drafted by congress to support certain actions in the “market place” (i.e. commercial archiving).  This takes us to the next 2 questions.
 
 
[Can we] microfilm the newspapers we have on hand?
 
Answer: Yes.  The creation of one copy of a published newspaper falls squarely under sub-section (a).  
 
And does sub-section (c) give us the right to make up to 3 more (microfilm) copies, for preservation purposes?
 
Sub-section (c) is the section that allows for multiple copies to be made under certain circumstances.  Applying the criteria of the sub-section,  I regret to say the answer to this is “no.”  
 
Rights under sub-section (c) only apply if the original (or copy of the original) is “damaged, deteriorating, lost, or stolen…”—or if they are embodied on an obsolete format, and that after a reasonable effort, an unused replacement can’t be purchased [a format is “obsolete” “if the machine or device necessary to render perceptible a work stored in that format is no longer manufactured or is no longer reasonably available in the commercial marketplace.”].  This formula is not a good fit with a recently published work.
 
However, in raising the question, the member raised an interesting and practical argument:  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, etc.) and "after a reasonable effort" there will be nowhere else from where we can buy a pristine back run "at a fair price" (ie. for less than the price of striking another microfilm).
 
For a question like this, it is best to go straight to the source: the Library of Congress circulars.  The Circular on section 108 can be found here:  https://www.copyright.gov/circs/circ21.pdf
 
In relevant part, it states:
 
Subsection (c) authorizes the reproduction of a published work duplicated in facsimile form solely for the purpose of replacement of a copy or phonorecord that is damaged, deteriorating, lost or stolen, if the library or archives has, after a reasonable effort, determined that an unused replacement cannot be obtained at a fair price. The scope and nature of a reasonable investigation to determine that an unused replacement cannot be obtained will vary according to the circumstances of a particular situation. It will always require recourse to commonly-known trade sources in the United States, and in the normal situation also to the publisher or other copyright owner (if such owner can be located at the address listed in the copyright registration), or an authorized reproducing service.

[Emphasis added.] 
 
As can be seen, the delicate nature of newspapers and library capacity issues non-withstanding, proceeding under sub-section (c) without certainly that there is no commercial alternative does not meet the sub-sections’ requirements.  The law is clear: the copies can be made only after the good-faith determination that no commercial alternative exists.  
 
It is cumbersome, but saving a copy of the paper, and then establishing, on a routine basis, that back copies, digital archives, and third-party microfilm versions of the newspaper are not commercially available, meet sub-section (c)’s commercial determination requirements. This is an essential element of the law and cannot be left out, or there will be no infringement defense under sub-section (c).  
 
The final question brings this all home: We really just want to start microfilming 2 copies of the paper…. Can we? Or must we enter negotiations with the publisher to secure the right?
 
Neither sub-section (a) nor (c) require permission from the copyright holder, so libraries do not need to ask the new owner before using the 108 exceptions as set forth above.   However, as the question implies, a library seeking to go beyond what is authorized by the law would need to work with the rights holder.  Hopefully, the publisher can see the value in allowing the two copies to be created, and will agree to an irrevocable license to the library, for the benefit of its patrons.
 
Topic: Showing Performance Video to a Sanctioned College Club

The question relates to showing a performance video to a sanctioned college club. I understand ...

Posted: Tuesday, November 8, 2016

MEMBER QUESTION

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.

WNYLRC ATTORNEY’S RESPONSE

First question
As you say, a college can show a movie they own, without further licensing, so long as: 

  • The institution is a not-for-profit
  • The performance of the film is in connection with face-to-face teaching activities, in a classroom or similar place of instruction.
  • The copy was legitimately acquired

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.

Second question
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).

Topic: Photocopying Music Scores

We have a request from a patron from another state for scans or photocopies of music scores tha...

Posted: Tuesday, November 8, 2016

MEMBER QUESTION

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?

WNYLRC ATTORNEY’S RESPONSE

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.   

Digital 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.

Physical copy
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.]  

Overall 
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. 

Topic: Reformatting VHS

We are shifting away from VHS here on this campus (along with everywhere else), and have a ques...

Posted: Monday, October 17, 2016

MEMBER QUESTION

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?

WNYLRC ATTORNEY’S RESPONSE

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.” 

 OR

 “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.”

 OR

“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.”

 http://www.copyright.gov/laws/testimonies/042915-testimony-pallante.pdf

 

Topic: Digitization of Newspapers Prior to 1923

We would like to digitize newspapers that were published prior to 1923. Since the paper is stil...

Posted: Monday, October 17, 2016

MEMBER QUESTION

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.

WNYLRC ATTORNEY’S RESPONSE

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.

  buffalonews_2

This message is a service to the Western New York Library Resources Council. It is not legal advice to any organization other than WNYLRC, which utilizes the service to provide general guidance, updates, forms and training events in aid of its members.