Ask the Lawyer Request Form

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About Ask The Lawyer

WNYLRC offers a free Ask The Lawyer service to member libraries and library systems. 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 attorney 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 RAQ" 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: Email Retention 7/11/2017
We are looking to determine if there is a specific time frame for which email must be held....
Posted: Tuesday, July 11, 2017

MEMBER QUESTION

We are looking to determine if there is a specific time frame for which email must be held. Can we designate in a policy that email will not be considered original documents - that all original documents must be in print format?  AND if this is possible, how long then are we required to hold onto archived e-mail? 

Please also comment on how, for state institutions, this issue is impacted by the NYS Archives Schedule MI-1 Schedule, which states:

Generally, records transmitted through e-mail systems have the same retention periods as records in other formats that are related to the same program function or activity. E-mail records should be scheduled for disposition in conjunction with any other records related to the program function. Local governments may delete, purge, or destroy e-mail records provided that the records have been retained for the minimum retention established in this Schedule and are not being used for a legal action or audit.”

 

WNYLRC ATTORNEY’S RESPONSE

WNYLRC ATTORNEY’S RESPONSE

This has been a tough question to mull over!  That is because the answer is superficially “yes,” but in reality: “no.”

How do we get to this disjointed conclusion?  Schedule MI-1, as the member did, is a great place to start.

From there, although it is a bit older (in Internet years), the 2010 guidance from the New York State Archives, “Developing a Policy for Managing E-mail” (to which the Schedule MI-1 refers), speaks to this issue.  On page 7, it states:

“Another management strategy has been to rely on the “low­tech” method of printing out important emails to integrate them into a paper recordkeeping system. Printing emails is still a viable option for a small organization with limited technology support and finances, provided that individuals across the organization consistently apply records retention requirements to the printed emails, capture all essential metadata, and file the emails with their respective attachments.” [emphasis added]

This would suggest that, for certain institutions, under certain circumstances, e-mail does not need to be retained in its original form to be an “original document.”

However, while it would be elegant, I cannot endorse this approach.  As the guidance further states on page 13:

“The concept of “official copy” is problematic when dealing with email because of the volume of emails, the difficulty of controlling all copies, and the occasional need to prove an email was received as well as sent.” [emphasis added]

Since 2010, even more concerns make this a dubious solution. For a private institution, the requirements of accreditors, insurance carriers, and other stakeholders must be considered…while for libraries and archives that are part of local governments, per NYS regulation, the conversion of archival electronic records must be conducted in consultation with the State Archives, who may or may not endorse such a policy, based on the categories of documentation it would impact.

That said, for certain categories of documentation transmitted or received as e-mail (as defined by MI-1 or private policy), the “print approach” may work.  As a wholesale solution, however, it is not legally viable.

Topic: Copying VHS/Changing format/due diligence 6/29/2017
We have several VHS tapes that our anthropology professors use in the classroom. Our campus...
Posted: Thursday, June 29, 2017

MEMBER QUESTION

We have several VHS tapes that our anthropology professors use in the classroom. Our campus will be phasing out VHS as the players break down. We would like to send these to a vendor to create DVDs or digital files. We feel we have done the due diligence searching for a replacement. In most academic libraries media materials are purchased for distribution to the classroom for educational use. Making a copy would be of little benefit if use is not allowed in classroom, face to face instruction.

WNYLRC ATTORNEY’S RESPONSE

WNYLRC ATTORNEY’S RESPONSE

From: Stephan C. Adams

Date: June 27, 2017

This question starts with 17 USC 108(c), which allows for duplication of “obsolete,” formats, but limits the accessibility of digitized copies “to the premises” of the library. 

The inquiring library set out the other 108(c) factors: the obsolescence of VHS (manufacture stopped in 2016), the lack of commercially available copies, and the published nature of the work.  So as you say, what’s left to determine is:  Does the “premises” of a library in an educational institution include the whole campus?

“Premises” is not defined in the Copyright Code, nor is it commented on in the lawmaking notes (vis-à-vis this question).  I found no case law directly on point.  So we’ll go to the lawyer’s last resort: common sense.

Section 108’s bar on digitized preservation copies leaving the premises of the library is very rigid, and it is likely the boundaries of your library are, too.  If the library has a finite space that is reported in things like strategic plans, accreditation reports, and campus maps, then the “premises” would most likely be deemed to end at the door, not flow throughout the campus.  A quick search on this issue show this is the emerging consensus.  So yes, the DVD’s you make as a result of this format shift are, at first, trapped in your library[1].

This creates a ridiculous conundrum: you need to shift the format so the educational material may be accessed, now that the format is no longer supported.  But in transferring the information to a digital format, you are shackling it to the premises.  How can you provide access?


[1] The Section 110 exemption for “classroom use,” requires that the viewed copy be “lawfully made,” and your digital copy, to be “lawfully made,” must stay on site.  So I do not feel safe advising you to use that route…although it is uncharted territory.

 

You have two options:

First, it is important to remember that the shift of format does not necessarily change the license your institution purchased when it first acquired the VHS tapes.  This is a point strongly emphasized in both 108, and the lawmaker notes accompanying it.  If your institution had a license to use the copies for classroom room, directly from the owner/publisher, that license might survive the shift.  That could be determined from the purchase records or license text on the video itself.

Second, the Association of Research Libraries’ “Code of Best Practices in Fair Use for Academic and Research Libraries” was drafted, in part, to address this situation (see page 18).  In the Code, the ARL posits that when a preservation copy is made, further access can be granted under Fair Use.  This does come with limits however: “off-premises access to preservation copies circulated as substitutes for original copies should be limited to authenticated members of a library’s patron community, e.g., students, faculty, staff, affiliated scholars, and other accredited users.”  Further, the Code states that preservation and Fair Use copies should not be accessed simultaneously, and technology controls should be used both label the copy as required by 108, and to restrict further duplication.

This Fair Use solution to your problem has been adopted into the published policies of many institutions (here are a few examples[1]).   As there is no case law on point, I cannot say it is a slam-dunk defense, but I can say that if you adopt your own policy for carefully following this emerging standard practice, and then document that you follow it as you embark on this journey to ensure continued access to educational material you rightfully purchased, you will be in good company if content owners decide to sue for infringement, and recent case law about fair use will likely weigh in your favor.

There is a good deal of writing and advocacy on this issue, and hopefully in another few years, I will have a more definitive answer to give you!

 

Topic: Legal Request - 6/14/2017
A law practice in is litigating a case.  They have contacted us asking for al...
Posted: Wednesday, June 14, 2017

MEMBER QUESTION

A law practice in is litigating a case.  They have contacted us asking for all relevant materials.

We have provided considerable materials from our records and archives, however, we have stopped short of providing a full digital copy of a book that might still be under copyright (based on publication date).

If they sent a representative to our archives, we would allow them access to the book.  They would be able to read it and even make their own copies of relevant sections.  I believe this is covered under the "fair use" provisions of the copyright law(?).

However, this is not the case, they want us to send them a full digital copy version of the book and I don't believe this is permissible under "fair use" or any other clause.  What is your understanding?

WNYLRC ATTORNEY’S RESPONSE

Aside from my general admiration of libraries, one of reasons I relish “Ask the Lawyer” is the chance to answer questions that might never otherwise come my way.  This question is one of those!

Could duplication of an entire copy of a work for use in a court case meet the requirements of Fair Use?

Case law says… yes, it could. In a 2003 case[1], a court found that duplicating an entire copy of a plaintiff’s autobiography, so it could be submitted as evidence of his bad character (he admitted to intentional homicide), was a Fair Use.   In 2014, it was found that duplication of extensive content from a blog, introduced as evidence of an alleged ethics violation, was Fair Use[2].  And back in 1982, bootleg copies of erotic films, created to bolster a nuisance claim, were also found to be “fair.”[3]

These cases, and others like them, draw from legislative history and precedent stating that the reproduction of copyright-protected works for litigation or other judicial proceedings


[1] Bond v. Blum, 317 F.3d 385 (4th Cir. 2003), cert. denied 540 U.S. 820

[2] Denison v. Larkin, 64 F. Supp. 3d (N.D. Ill. 2014)

[3] Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982)

often meets the “Fair Use” criteria.  So…the lawyers who have made this request of your archives, if they make this copy, should be able to defend their actions.

That said, Fair Use depends on the complex interaction of four separate “factors” which in this case will largely out of the library’s control.  What if the firm posts the content online?  What if it is used in PR material related to the case?  As a part of the chain of duplication, the library could then be implicated in an action based on a use not previously disclosed to them.

The right of libraries and archives to make whole copies, without worrying if the Fair Use criteria are met, is governed by Section 108 of the Copyright Code.  Section 108 provides a precise formula for making—and providing—one hard copy of a published work:

[T]hat the reproduction or distribution is made without any purpose of direct or indirect commercial advantage;

AND

[That] the library or archives has first determined, on the basis of a reasonable investigation, that a copy or phonorecord of the copyrighted work cannot be obtained at a fair price;

AND

[That] the copy or phonorecord becomes the property of the user, and the library or archives has had no notice that the copy or phonorecord would be used for any purpose other than private study, scholarship, or research.*

Applying these criteria is tough.  While the advantage to be gained from the duplication is unlikely to be a direct “commercial advantage” (although perhaps there will be a commercial benefit to the court case), is the proposed use for litigation “private?”  Can it be determined if another, commercial copy is available? Further, the request that it be in digital format speaks to ease of further duplication, and this part of 108 is not about format-shifting.

The bottom line: unless you are satisfied that this “108 criteria” are met, since the Fair Use factors will be out of your archive’s control, the best bet is just what you suggest: let the attorneys make the copy themselves! 

*NOTE:  Different criteria would apply if this work was unpublished, or if the duplication was for preservation or ADA access purposes.

 

Topic: Dissertations - 6/13/2017
We’ve recently had some questions regarding the ability to provide access to disserta...
Posted: Tuesday, June 13, 2017

MEMBER QUESTION

We’ve recently had some questions regarding the ability to provide access to dissertations, theses, and other cataloged graduate work.  How does the law govern these questions?

WNYLRC ATTORNEY’S RESPONSE

Many college and university libraries make it a practice to bind and inventory the academic work of their graduates—a tradition that showcases the achievements of the institution, maintains an important bond between the library and the faculty (who often sign the final copy, to signify approval), and allows graduates to cite and showcase their work.  These collections are often honored institutional assets: a neatly reproduced, annually increased, and routinely cataloged series of books occupying a special space in the library.

(When a graduate later becomes famous, they can also pose a persistent and annoying theft risk…but that is not the topic at hand!)

With the dawn of the digital age now at high noon, some college and university libraries are also including these home-grown works in home-grown databases.  This requires a digital infrastructure that not all academic libraries can afford or support, though, so for many, the old-school binding and shelving of graduate work is still the default practice.  Many institutions are now also considering whether or not to digitize their back catalog, and of course are also seeking ways to promote, provide and oversee appropriate patron access to what they have.  

Overall, these “old school” copies can pose an interesting access challenge.  They are generally listed in the library’s catalog, and considered a part of the active collection.  But what rights does the institution have to them?  How is access to them governed by copyright law, which often depends on the distinction between “published” and “unpublished?”  Can they circulate, be accessed via inter-library loan, be reproduced for archival purposes, or be digitized?  How much can the original author—now an alum—control them?

To answer this, I must use the phrase that is the lawyer’s most trusted companion: it depends.

We’ll take the relevant factors in order of appearance:

First, it is important to confirm: the work of a student, even if directed and overseen by a faculty member or faculty committee, is owned by that student.  Student-generated work*, even if the topic was suggested by someone else, and even if the content is vigorously critiqued by someone else (and then presumably re-written), is an “original work of authorship,” and the moment it is “fixed in a tangible medium of expression,” it is owned by the author (the author).   Of course, the student can sell the ownership, or donate it—but unless that transfer has been recorded in writing, it remains theirs…and then their heir’s…for the life of the author, plus 70 years.**

Second, generally, the permission to reproduce the academic work is a creature of a contract between the author (the student) and the institution (the college or university).  This permission can run the range from a completely unlimited license of all the rights of copyright (to reproduce, distribute, perform, display, create derivative works), to a very limited license (to make one hard copy and add it to the catalog).  This permission might be revocable, or irrevocable.  It might be exclusive, or non-exclusive.  It could even make use of Creative Commons licenses to create a very liberal mode of access.  Critically, though…these terms can vary from institution to institution, from year to year, from student to student.  There is no bright line rule.

Third, depending on the extent of the license, and other factors, the thesis or dissertation may, or may not, be “published,” as that term is defined under the Copyright Code. The ability to replicate, digitize, and create archive copies under Section 108 will be governed, in part, by publication status.  Section 108 is a great asset for libraries and archives, often allowing duplication of entire articles and works…but it requires the well-documented alignment of precise factors.  [NOTE: A copyright registration that included the date of publication would take care of this factor.  Some institutions and authors do register these works…and if they are put in the catalog for lending, registration should be effected before circulation begins, since to do otherwise could compromise the author’s rights]. 

Fourth, and finally, the policies of the college or university will govern access, too.  There could even be a day when an aged alum, having lost their treasured copy, may show up demand access to the library’s…only to be told that although they are without a doubt the copyright owner, they have to fill out a form, or renew their card, or wait until the Reference Librarian is back from break, so they can access their work. 

That said, they are the only one who might not have to do a 108 analysis before making a copy!

*Work that is actually co-authored by a faculty member and a student is subject to the rules of co-ownership.

**As you know, copyright duration varies.  A great breakdown of how to calculate duration is here: https://www.copyright.gov/circs/circ15a.pdf

Topic: Ownership of Employee Created Materials - 5/25/2017
At a recent WNYLRC webinar, we discussed the ownership of materials generated by library st...
Posted: Thursday, May 25, 2017

MEMBER QUESTION

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?

WNYLRC ATTORNEY’S RESPONSE

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!

Topic: Copying of College Textbook Chapters - 5/1/2017
Our question concerns the copying of college textbook chapters for students where the requi...
Posted: Monday, May 1, 2017

MEMBER QUESTION

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?

WNYLRC ATTORNEY’S RESPONSE

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.

Topic: Sharing Articles - 3/29/2017
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 - 2/6/2017
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 - 11/8/2016
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 - 11/08/2016
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 - 10/17/2016
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 - 10/17/2016
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.