The following legal cases are of importance to ARL because of their relevance to the research library community. ARL has submitted amicus briefs in many of these cases to help the courts understand the perspective of the research library community.
On July 3, 2012, ARL joined the American Library Association (ALA) and the Association of College and Research Libraries (ACRL), who all work collectively as the Library Copyright Alliance (LCA), to file an amicus curiae brief (PDF) with the Supreme Court of the United States in support of petitioner Supap Kirtsaeng in the case Kirtsaeng v. Wiley & Sons. On the eve of Independence Day, the LCA asks the Court to be true to the values of our country’s founders—people like Thomas Jefferson and Benjamin Franklin, who were both founders of libraries and great champions of library lending.
Wiley, a publisher of textbooks and other materials, claims Kirtsaeng infringed its copyrights by re-selling in the US cheaper foreign editions of Wiley textbooks that his family lawfully purchased abroad. The LCA believes an adverse decision in this case could affect libraries’ right to lend books and other materials manufactured abroad.
The “first-sale doctrine” is the provision in the Copyright Act that allows any purchaser of a legal copy of a book or other copyrighted work to sell or lend that copy. However, the US Court of Appeals for the Second Circuit ruled that the first-sale doctrine applied only to copies manufactured in the United States. This odd interpretation of the law effectively strips libraries of their first-sale right to lend their own copies of works made abroad.
In its friend-of-the-court brief, the LCA asks the Supreme Court to reverse the Second Circuit and apply the first-sale doctrine to all copies manufactured with the lawful authorization of the holder of a work’s US copyright.
This is the second case the Supreme Court has heard on this issue in the last two years. In Costco v. Omega, a case involving the importation of luxury watches with copyrighted logos on them, the Court was deadlocked 4-4, leaving the issue unresolved. Justice Kagan recused herself from the case due to her participation in the litigation when she was Solicitor General, but Justice Kagan will participate in Kirtsaeng.
The Association of Research Libraries (ARL), the American Library Association (ALA), the Association of College and Research Libraries (ACRL), joined the International Documentary Association (IDA) and the WGBH Educational Foundation in an amicus brief (PDF) prepared by Anthony Falzone at the Stanford Fair Use Project, asking for the full Fourth Circuit to rehear the case of Bouchat v. Ravens and reconsider the panel’s flawed fair use reasoning.
The case centers around a logo used from 1996 to 1998 by the Baltimore Ravens, which was later determined to infringe Frederick E. Bouchat’s copyrights. Bouchat sued and won, and the team has used a new logo since 1999. Bouchat also sued the Ravens and the NFL and asked the court for nothing less than the right to suppress every depiction of his logo, including every depiction of the Baltimore Ravens in uniforms bearing the logo from 1996 to 1998. The district court denied his request, saying these historical depictions were fair use. On appeal, however, a panel of the Fourth Circuit reversed the district court.
Falzone’s excellent amicus brief reminds the court that there is overwhelming precedent to support the Ravens’ claim of fair use. The brief makes several important points, but perhaps the most important point is that for-profit use is not fatal to a fair use claim.
The importance of this decision could be quite significant. The Supreme Court has said that fair use is an essential First Amendment protection because it ensures that the copyright monopoly is not allowed to become a limitation on vital freedoms of expression. If courts decline to apply fair use to protect something as fundamental as the right to document historical facts, they upset the constitutional balance in copyright law. The “exclusive rights” of authors and inventors were never meant to give them a license to censor history.
The Library Copyright Alliance (LCA)—comprised of the American Library Association (ALA), the Association of College & Research Libraries (ACRL), and the Association of Research Libraries (ARL)—filed an amicus curiae brief (PDF) with the Supreme Court of the United States on July 8, 2010, in support of petitioner Costco Wholesale Corporation in Costco v. Omega.
Omega, a luxury watch manufacturer, claims Costco infringed its copyrights by importing authentic Omega watches from abroad rather than buying them from the US distributor at a higher price. LCA believes this case could diminish the legal provision that allows libraries to lend books.
The “first-sale doctrine” is the exception to the Copyright Act that allows any purchaser of a legal copy of a book or other copyrighted work to sell or lend that copy. However, the US Court of Appeals for the Ninth Circuit ruled that the first-sale doctrine applied only to copies manufactured in the United States.
In its friend of the court brief, LCA asks the Supreme Court to reverse the Ninth Circuit Court’s decision and apply the first-sale doctrine to all copies manufactured with the lawful authorization of the holder of a work’s US copyright.
On November 16, 2010, the Association of Research Libraries joined CREW and other public interest and nonprofit groups in filing an amicus brief (PDF) arguing that the express language of Exemption 7(C) of the FOIA, 5 U.S.C. § 552(b)(7)(C), and the legislative intent behind the exemption point unmistakably to an interpretation that excludes any protection for so-called “privacy” interests of corporate entities. The term “personal privacy” used by the exemption to describe its reach applies exclusively to individuals, not abstract and artificial constructs like corporations.
On July 28, 2010, SkyRiver Technology Solutions joined with Innovative Interfaces to file suit in San Francisco federal court against OCLC Online Computer Library Center (OCLC) alleging numerous anticompetitive business practices and antitrust violations. SkyRiver, a bibliographic services company, and Innovative Interfaces, a library automation company, claim that OCLC is “unlawfully monopolizing the bibliographic data, cataloguing service and interlibrary lending markets and is attempting to monopolize the market for integrated library systems by anticompetitive and exclusionary agreements, policies and practices.” (p. 1) The outcome of the lawsuit could have significant impact on the library software and technology services industry by opening up OCLC’s services, such as WorldCat, to use by commercial competitors.
At this time, it cannot be emphasized strongly enough that it is still too early to predict any resolution of the case, as OCLC has not yet had an opportunity to respond to the plaintiffs’ complaint. Unless the parties come to a settlement, the litigation of a complex antitrust suit could take years.
This summary of the lawsuit (PDF) is solely descriptive, attempting only to provide a synopsis of the legal positions taken thus far. It may be some time before OCLC’s response provides an alternative legal perspective concerning the allegations presented in this lawsuit. This summary is not an analysis of the legal merits of the suit, nor has ARL taken a position on this lawsuit.
The Library Copyright Alliance (LCA) joined a coalition of public interest and technology groups in an amicus brief (PDF) written by the Electronic Frontier Foundation (EFF) asking the Ninth Circuit to reject the arguments made by Universal Music Group (UMG) and affirm the lower court's decision in UMG v. Veoh. The case involves the legal “safe harbor” for online service providers hosting content on the web. The safe harbor protects online service providers from damages liability if a third party using the online service infringes copyright.
In its original decision, the district court found that the Digital Millennium Copyright Act (DMCA) protected Veoh, a web-hosting service, against infringement claims brought by UMG. Though Veoh took down allegedly infringing material whenever it received a DMCA-compliant notice, UMG appealed the decision to the Ninth Circuit. UMG advanced the same narrow interpretation of the DMCA argued by Viacom (and rejected by the court) in its litigation against YouTube. In particular, UMG argued that once a web host has general awareness that there might be infringing material on the website, the host loses its DMCA safe harbor. The DMCA established a vital safe harbor for online service providers such as YouTube, Amazon, e-Bay, and other services, as well as non-commercial entities such as universities who provide Internet services to the university community.
On October 12, 2010, the Association of Research Libraries (ARL), the American Library Association (ALA), and the Association of College and Research Libraries (ACRL) joined the Electronic Frontier Foundation and Public Knowledge in amicus brief (PDF) requesting an “en banc” review of the recent court decision concerning software licensing and the first sale doctrine.
On February 11, 2010, the Library Copyright Alliance members joined the Consumer Federation of America (CFA), the Electronic Frontier Foundation (EFF), Public Knowledge (PK), and US Public Interest Research Group (US PIRG) in filing an amici curiae brief (PDF) asking the Court to affirm the lower court ruling, recognizing that a proper application of the first sale doctrine here requires a ruling in favor of Vernor’s right to resell the four AutoCAD CD-ROMs at issue.
On April 12, 2010, ARL joined with other nonprofits and the Electronic Frontier Foundation (EFF) in an amicus brief (PDF) in the case Viacom v. YouTube. In 1998, the Digital Millennium Copyright Act (DMCA) established a vital safe harbor for online service providers such as YouTube, Craigslist, and other services that allow individuals to publish and transmit content on the Internet. The DMCA states that service providers are not responsible for their users’ online actions in most ordinary circumstances. This safe harbor has allowed for the creation of sites such as Facebook, YouTube, Flickr, and Twitter. Viacom has now sued YouTube over user-posted content on its site, claiming that YouTube cannot seek shelter under the DMCA unless YouTube implements filtering technology to police its networks on behalf of content owners. The amicus brief argues that the positions taken by Viacom would largely eliminate the utility of the DMCA’s safe harbors.
On August 3, 2009, ARL, ALA, and ACRL joined the Organization for Transformative Works and the Right To Write Fund in filing an amici curiae brief (PDF) asking the US Court of Appeals for the Second Circuit to reverse the Federal District Court judge’s ruling in Salinger v. Colting.
In July, the District Court ruled in favor of author J.D. Salinger, who claimed that Fredrik Colting, the author of “60 Years Later: Coming Through the Rye,” infringed his copyright on “Catcher in the Rye.” The District Court’s preliminary injunction prohibits the publication and distribution of the book in the US, which the groups believe implicates free speech rights of authors, publishers, and the public protected by the First Amendment. In their “friend of the court” filing, the groups also assert that the judge applied too narrow an interpretation of the “fair use” doctrine, which permits new, transformative works into the marketplace. The brief was written by Anthony Falzone, Executive Director, Fair Use Project, Stanford Law School.
On June 13, 2007, the US Court of Appeals for the Eleventh Circuit reversed an earlier ruling (PDF) in the case Greenberg v. National Geographic Society. This is a very important ruling for publishers who want to digitize their works. This ruling permits digital versions of the works (e.g., print or microfilm) if no changes are made to them. Greenberg, a photographer sued National Geographic for including his works in a CD-ROM compilation of all of the issues of the National Geographic magazine. An earlier ruling by the US Court of Appeals for the Eleventh Circuit ruled against the National Geographic Society. An appeal to the Supreme Court was rejected and the case was again before the Eleventh Circuit.
On August 30, 2001, ARL, the American Library Association (ALA), the American Association of Law Libraries (AALL), and the Medical Library Association (MLA) jointly filed an amicus brief (PDF) in support of the National Geographic Society's appeal to the US Supreme Court. The brief was filed due to concerns that the Eleventh Circuit decision could hinder the use of digital technologies. The Copyright Act is "media-neutral," and libraries believe that it should allow publishers to take advantage of new technologies to preserve and distribute creative works to the public.
ALA, ARL, AALL, and MLA view the CD-ROM of the National Geographic magazine as no different than if a microfilm version of the magazine had been made. Copyright protection extends to works in any tangible medium of expression. The original collective works that are reproduced in digital facsimiles constitute a permissible revision and are not themselves changed by the transformation from paper to the CD-ROM version. In this case, the photographs at issue appear in the CD-ROM version in the exact positions (along with text and advertising) in which they appeared in the original print version of the magazine.
Libraries also support the right of scholars and researchers to combine pre-existing works with the necessary software to provide a searching capability. Under the Eleventh Circuit’s decision, no CD-ROM or digital technology that requires the addition of such software could arguably ever qualify as a permissible revision. On June 6, 2006, AALL, ALA, ARL, MLA, the Society of American Archivists (SAA), and the Special Libraries Association (SLA) jointly filed an amicus brief (PDF) in support of the National Geographic Society, urging the Eleventh Circuit to reverse its judgement. On October 18, 2007, AALL, ALA, ARL, MLA, the National Association of State Universities and Land-Grant Colleges, SAA, and SLA filed an amicus brief (PDF) urging the Eleventh Circuit to grant an appeal re Greenberg v. National Geographic. Legal intern for ARL, Ben Grillot, has also written a report summarizing the case, "A Victory For Media Neutrality: The Eleventh Circuit’s En Banc Decision in Greenberg v. National Geographic Society" (PDF) (July 9, 2008).
On September 20, 2005, the Authors Guild, together with Herbert Mitgang, Betty Miles and Daniel Hoffman, filed a class action lawsuit against Google for its Book Search project. According to the Authors Guild, Google was committing copyright infringement by scanning books that were still in copyright. (Google countered that their use was fair according to US copyright law.)
On October 28, 2008, Google, the Association of American Publishers (AAP), and the Authors Guild reached a settlement agreement concerning Google’s scanning of copyrighted works. In September 2009, the US Department of Justice announced that it was pursuing an antitrust investigation into this settlement and on September 20, 2009, recommended to a New York court that they reject the Google book deal.
For more detailed information regarding the Google Books Settlement, see http://www.arl.org/pp/ppcopyright/google/index.shtml
On March 4, 2005, in the case of Faulkner v. National Geographic Society (PDF), the US Court of Appeals for the Second Circuit ruled that NGS did not infringe on the copyrights of freelance photographers and authors when it digitized their works to create a CD-ROM collection from the entire print version of the NGS magazine (from 1888 to 1996) in a searchable format.
Judge Ralph K. Winter wrote the opinion for the New York Court claiming the plaintiffs' arguments were unconvincing because the "transfer of work from one media to another generally does not alter its character for copyright purposes." The decision upholds the ruling made in 2004 by the US District Court for the Southern District of New York.
ARL, and other library associations, submitted an amici curiae brief (PDF) in support of National Geographic, as a ruling in favor of the freelancers would have required publishers of collective works, and others who legitimately digitize them, to obtain additional copyright permission. Seeking additional authorization from the freelancers would hamper the efforts of libraries and others to digitize scholarly collections.
It is likely the Supreme Court will agree to hear this case because this ruling conflicts with a ruling by the Eleventh Circuit Court of Appeals, Greenberg v. National Geographic.
On March 29, 2005, the US Supreme Court heard arguments in the case Metro-Goldwyn-Mayer Studios v. Grokster (PDF). This is an important case to the library, education, technology, and consumer electronics communities as there are significant implications for future technological development and innovation.
In this case, 28 entertainment companies sued the makers of file-sharing services, Grokster, Kazaa, and Morpheus. The 9th US Circuit Court of Appeals in San Francisco ruled that file-sharing services were not liable for their users' illegal activity. The ruling cited the precedent set in the US Supreme Court decision, Sony Corp. v. Universal City Studios (known as the Sony Betamax decision, 1984), and noted that file sharing systems have significant non-infringing uses not unlike videocassette recorders that allow consumers to make copies of copyrighted works for the purposes of time-shifting.
ARL, with four other library associations, the Internet Archive, the ACLU, and Project Gutenberg filed an amicus brief (PDF) before the US Supreme Court. The brief presented includes examples of peer-to-peer applications in the education and library arenas as well as a focus on free speech issues.
These organizations also filed an amicus brief (PDF) when the case was before the Court of Appeals.
In a 9-0 decision on June 30, 2004, the Supreme Court of Canada ruled that Internet Service Providers (ISPs) are "intermediaries" thus not responsible for paying royalties to performers and composers of music downloaded by the ISPs' customers. The court noted that although ISPs provide hardware and the technology required for access to the Internet and the World Wide Web, ISPs are not responsible for content, thus what their customers download.
In a vastly different approach than in the US, where the recording industry has sued individual users and P2P file sharing services, the Society of Composers, Authors, and Music Publishers of Canada (SOCAN) sought to make the ISPs liable for music downloaded by their customers. The Canadian Association of Internet Providers representing the ISPs argued that SOCAN should seek royalties for downloaded music from the websites that provide access to those works.
In the October 2004 case of Lexmark v. Static Control Component, the 6th US Circuit Court of Appeals in Cincinnati overturned a lower court ruling that prohibited Static Control Component Inc. from manufacturing microchips for Lexmark ink cartridge replacements. Static Control reserve engineered one of Lexmark's toner cartridges in order to compete and create a cheaper product. The three-judge panel noted, "Lexmark failed to establish likelihood of success under the general copyright statues or under the DMCA." According to Judge Gilbert Merritt, "Congress did not intend to allow the DMCA to be used offensively in this manner, but rather only sought to reach those who circumvented protective measures 'for the purpose' of pirating works protected by the copyright statute."
In a similar case from August 2004, Chamberlain Group Inc. v. Skylink Technologies Inc., a Northern District of Illinois US District Court ruled that Chamberlain Group, a garage door manufacturer, could not prohibit Skylink Technologies from manufacturing a universal garage door opener. Chamberlain Group filed the suit on the claim that Skylink Technologies violated the DMCA by selling a device that circumvented their access controls. For more info, see the Electronic Frontier Foundation website.
Also see this article by Jonathan Band (PDF), Partner, Morrison and Foerster, LLP, on the decisions of these two DMCA–related cases.
On June 16, 2003, the US Supreme Court denied a writ of certiorari without opinion in the case of Baystate Technologies Inc. v. Bowers. The decision, a disappointment to the library community, will let stand the January 29, 2003, US Court of Appeals decision that "the Copyright Act does not preempt state contract law that allows parties to impose a ban on reverse engineering."
In a brief submitted to the Federal Circuit Court of Appeals (PDF) after the January decision, Robert Kann, attorney for the petitioner, Baystate, claimed that the federal circuit court's decision upsets the delicate balance between creators and users of copyrighted material "by allowing the author to nullify through contract, the right to reverse engineer and, accordingly, take back the material dedicated to the public domain." He explained that, "in exchange for a copyright monopoly over certain protectable expression, the author yields to the public the unprotectable material in the work, along with the associated right to reverse engineer that work to discover and use its unprotectable material." ARL joined others in the library and public interest communities in an amicus brief in June.
On June 2, 2003, the US Supreme Court issued its opinion (PDF) in the case, Dastar Corp. v. Twentieth Century Fox Film Corp. The court ruled unanimously (8-0) in favor of Dastar Corp.
Dastar used Twentieth Century Fox film footage from the 1950s that has entered the public domain to create a documentary on World War II without citing the source of all the footage. Twentieth Century Fox sued Dastar and won. The US Supreme Court has overturned that decision, ruling that Dastar did not break the law when it repackaged the public domain footage.
On February 13, ARL joined other library associations; representatives of the public interest community; computer, and communications associations; and financial services interests in an amicus brief (PDF) to the US Supreme Court on the case. Amici were concerned that a decision in favor of Twentieth Century Fox might undermine the 1991 US Supreme Court decision, Feist Publications Inc. v. Rural Telephone Service, in which the court rejected the sweat-of-the-brow doctrine that could provide copyright protection to the facts contained in databases by virtue of the effort the publisher expended in collecting the facts. Rather, the Supreme Court held that the Constitution's Intellectual Property Clause protects only "the original expression reflected by the selection, coordination, and arrangement of the facts. The facts themselves remained in the public domain."
According to Jonathan Band, ARL's attorney, the decision did not specifically refer to the issue of facts. However, "the reasoning of the court is extremely helpful to supporters of balanced intellectual property laws." The court focused on the definition of the word "origin" in Section 43(a) of the copyright law. Band explained that "the court said that to treat the origin of communication products as the entity that created the underlying intellectual property 'would create a species of mutant copyright law that limits the public's federal right to copy and use expired copyrights.'"
On January 15, 2003, the US Supreme Court upheld the Sonny Bono Copyright Term Extension Act (CTEA) in a landmark 7-2 ruling (PDF) that came as a disappointment to the library community and other advocates of a vibrant public domain. Justice Ruth Bader Ginsburg delivered the majority opinion; Justice John Paul Stevens and Justice Stephen Breyer each wrote dissenting opinions.
Enacted in October 1998, the CTEA extended copyright protection of existing works by 20 years, from the life of the author plus 50 years (as mandated in the 1976 Copyright Act) to life of the author plus 70 years. The Act prospectively added 20 years of copyright protection to future works. For works made for hire, the term of protection was extended from 75 to 95 years, thus allowing major corporations such as Disney an additional 20 years of control over their works. In May 2002, ARL joined others in the library, archival, historical, and musical communities in an amici curiae, or friends of the court, brief. The brief argued that, by passing the CTEA, Congress exceeded the limits on copyright protection authorized by the US Constitution's Copyright Clause. According to amici, the CTEA upset the delicate balance between limited copyright protection for creators and the promotion of "progress [in] science and useful arts" through the growth of a vibrant public domain.
Writing for the majority, Justice Ginsburg said that Congress had not exceeded its authority in extending the terms of protection for copyrights because the US Constitution allows Congress to grant protection to creators for "limited times" and, in fact, the CTEA is "limited" to a twenty-year extension. She wrote: "we are not at liberty to second-guess congressional determinations and policy judgments of this order, however debatable or arguably unwise they may be."
In his dissent, Justice Breyer wrote:
This statute will cause serious expression-related harm. It will likely restrict traditional dissemination of copyrighted works. It will likely inhibit new forms of dissemination through the use of new technology. It threatens to interfere with efforts to preserve our Nation's historical and cultural heritage and efforts to use that heritage, say, to educate our Nation's children. It is easy to understand how the statute might benefit the private financial interests of corporations or heirs who won existing copyrights. But I cannot find any constitutionally legitimate, copyright-related way in which the statute will benefit the public. Indeed, in respect to existing works, the serious public harm and the virtually nonexistent public benefit could not be more clear.
For Justice Ginsburg's majority opinion, see Eldred v Ashcroft: Opinion of the Court (PDF). For the two dissenting opinions, see Eldred v Ashcroft: Stevens, J. dissenting (PDF) and Eldred v Ashcroft: Breyer, J. dissenting (PDF).
On November 17, 2003, ARL joined 17 library, public interest, and consumer advocacy organizations in filing an amicus brief (PDF) in the case of Pacific Bell Internet Services (PBIS) v. the Recording Industry Association of America (RIAA). The RIAA has issued several subpoenas to the Internet service provider under section 512(h) of the DMCA seeking to identify the names, addresses, and phone numbers of PBIS subscribers. Pacific Bell filed suit against the RIAA in July 2003, arguing that the subpoena provision in the DMCA is unconstitutional. According to the brief, section 512(h) "is so devoid of procedural protections that it is an invitation to mistake and misuse." Amici argue that section 512(h) violates the Due Process Clause of the Fifth Amendment "because it does not contain adequate procedural protections against the curtailment of constitutionally protected expression."
On December 19, 2003, reversing the rulings of the lower court, the US Court of Appeals for the District of Columbia Circuit ruled in favor of Verizon (Recording Industry Association of America (RIAA) v. Verizon (PDF)). In a case with significant implications for users of file sharing systems, the decision stopped the RIAA from gaining access to names of individuals that the RIAA suspected of illegally downloading music from the Internet. The suits filed by the RIAA have focused on section 512(h), the subpoena provision of the DMCA, that allows any copyright owner or representative to "request the clerk of any US district court to issue a subpoena" to force an Internet service provider (ISP) to identify "an alleged infringer."
In July 2002, the RIAA filed a lawsuit against Verizon Internet Services Inc., after Verizon refused to comply with a subpoena issued at the request of the RIAA. Verizon argued that "the RIAA subpoena relates to conduct outside the limited scope of the extraordinary subpoena authority created by the DMCA, [and] is invalid." In December, the US Court of Appeals for the District of Columbia Circuit agreed with Verizon that the special subpoenas could be used only when material is stored on an Internet service provider’s system or network, not when the service provider is merely acting as a conduit for the communications of others. The court ruled that subpoenas issued by copyright owners under the DMCA seeking the identity of individuals engaging in peer-to-peer file sharing of copyrighted sound recordings and other works were invalid.
The ruling applies to all Internet service providers, including universities and colleges. While it is strictly applicable only to subpoenas issued from the district court in Washington, DC, the strongly worded decision likely will be treated as important precedent in other jurisdictions.
ARL, with others in the library community and public sector, participated in an amicus brief (PDF) in this case siding with Verizon.
The Verizon victory has resulted in a new legal tactic by the RIAA to identify individuals they believe are engaging in illegal file sharing of copyrighted music. The trade association filed more than 500 "John Doe" suits that are more labor intensive and expensive to file. Additional challenges in this arena are underway including a recent case, RIAA v. Charter Communications Inc. ARL, along with 21 other consumer, privacy, and library groups sided with Charter Communications Inc. In a case similar to that of Verizon, the RIAA is seeking the identity of Charter Communications subscribers who they believe are engaging in P2P activity with copyrighted music.
For more information, please see the press release.
On June 25, 2001, the US Supreme Court issued its decision in the case of New York Times v. Tasini. In a decisive 7-2 ruling, the justices upheld an appeals court ruling that the reuse of a freelance author's work on CD-ROMs and in commercial electronic databases without the author's permission constituted copyright infringement. In February 2001, ARL and ALA filed a "friend of the Court" brief (PDF) to present the library perspective to the US Supreme Court concerning the practical effects of the issues at stake in the case. The brief refuted a number of inaccurate claims and offered constructive ways to balance the rights of freelance authors, commercial electronic database producers, publishers, and the public.
In its ruling, the Supreme Court rejected the publishers' argument that a ruling for the authors would have "devastating" consequences. In arguing the case, the publishers claimed that they would be forced to delete articles by freelance writers in their databases, and that it would not be feasible to remunerate the authors due to the large number of works involved as well as the expense of locating these contributors. Unfortunately, some of the publishers are continuing to take this position in the wake of the court's decision. It should be noted, however, that there are financial implications for the publishers regardless of whether they choose to track and delete articles by freelancers or if they decide to locate and reimburse these authors.
The Supreme Court explicitly noted in its opinion that deletion of the freelance writers' articles was not necessarily the only outcome and that publishers could explore other alternatives. The Justices pointed out that there are "numerous models for distributing copyrighted works and remunerating authors for their distribution" such as the system of blanket performance licenses for musical compositions.
The impact of the court's ruling will be primarily on older works that currently reside in commercial electronic databases such as Lexis-Nexis. Publications such as the New York Times now require permission for electronic republication of works by freelance authors, but this was not standard industry practice until fairly recently.
Equally important, implicit in the Supreme Court's decision was the recognition that the nation's libraries and archives continue to provide access to the historical record of periodicals and newspapers. In addition, the court's ruling recognized that certain archival media, such as microfilm and microfiche, do not infringe freelance authors' copyrights. Thus the historical record will continue to be available to researchers and the public.
ARL continues to monitor the effects of the Supreme Court's ruling in the Tasini case and its impact on libraries. For further information please see: Libaries and the Tasini Case, ALA: Copyright Issues, National Writers Union website, and the New York Times Company: Journalism Ethics Policy.
Faulkner v. National Geographic Society differs considerably from New York Times v. Tasini, in which the Supreme Court affirmed the copyright privileges of freelance writers whose works were originally published in newspapers and periodicals and then licensed by the publishers to commercial electronic databases. The associations believe the Copyright Act permits publishers, libraries, archives, and the public to take advantage of new technologies to preserve and distribute creative works to the public if no changes are made to the original work once republished in a different format.
At base, its decision in Tasini was about fair compensation to individual authors when commercial electronic database publishers reused articles without additional permission to create new collective works and sell articles on an individual basis. Thus, it protected the author's private reward pursuant to the balance that Congress struck in enacting Section 201(c) of the Copyright Act.
In 2001, ARL, together with many others, including the American Library Association, the Digital Future Coalition, the Computer and Communications Industry Association, and the National Writers Union, filed an amici curiae brief in the case Register.com v. Verio. Verio extracted information from the publicly available Register.com WHOIS database for use in telemarketing. In response to this extraction, Register.com sued Verio and was successful in district court. The amici curiae brief (PDF) argues that these claims are preempted by the federal intellectual property system; the district court ruling is at odds with the Feist decision regarding facts being in the public domain; and it also raises First Amendment concerns.
The brief notes: "Technological innovation has forever changed the way people access information. Increasingly, the information available in the digital age involves computer databases. In the future, more facts will be available to the public only via the Internet. The District Court's decision in this case would allow database publishers unilaterally to restrict what others can do with these facts. This contravenes the nation's fundamental information policy: "All facts scientific, historical, biographical, and news of the day... are part of the public domain available to every person." (Feist, 499 US at 348.) "There should be no misunderstanding what is at stake in this case. Even in the digital environment, copyright law permits users of publicly accessible, online databases to utilize freely the raw factual data gleaned from the databases. Because the district court's decision undermines this fundamental guarantee, it must be reversed."
In July 1999, the US Supreme Court denied certiorari, or refused to hear, two cases under appeal by West Publishing Company. By rejecting the request, the Supreme Court let stand two decisions by the US Court of Appeals for the Second Circuit in favor of Matthew Bender & Co. and Hyperlaw Inc.
The US Court of Appeals for the Second Circuit limited the ability of West Publishing Co. and West Publishing Corporation to copyright legal decisions. In two rulings, Matthew Bender v. West Publishing Co. and Matthew Bender Co. and Hyperlaw Inc. v. West Publishing Co. and West Publishing Corporation, the court determined that the changes that West Publishing makes to judicial opinions are not sufficient to warrant additional legal protection of the decisions. The court noted that, "All of West's alterations to judicial opinions involve the addition and arrangement of facts, or the rearrangement of data already included in the opinions, and therefore any creativity in these elements of West's case reports lies in West's selection and arrangement of this information. In light of accepted legal conventions and other external constraining factors, West's choices on selection and arrangement can reasonably be viewed as obvious, typical, and lacking even minimal creativity. Therefore, we cannot conclude that the district court clearly erred in finding that those elements that Hyperlaw seeks to copy from West's case reports are not copyrightable, and affirm."
Members of the Shared Legal Capability and the Society of American Archivists filed an amicus brief noting that "this case raises many important issues concerning public access to public domain works of the United States Government. Although the case specifically deals with access to federal court case law that is binding on United States citizens, the lower court's ruling also provides important precedent for no fee public access to other information published by the United States Government. This case typifies a growing trend of publishers laying claim to government information by making trivial alterations, which do not create copyrightable matter and which are neither annotated nor highlighted, and using those minuscule changes to assert statutory copyright protection."
The denial of certiorari by the Supreme Court rulings will likely result in further effort by West Publishing, Reed Elsevier, and other proponents of the database legislation to press for additional protections of databases outside the scope of copyright.
American Geophysical Union v. Texaco results from a class action suit brought by six scientific publishers on behalf of other publishers registered with the Copyright Clearance Center (CCC). In July 1992, a US District judge ruled in the seven-year old copyright case that a Texaco scientist violated the US Copyright Law (Section 107) when he copied articles without providing the appropriate fee to the publishers. Texaco argued that the copying fell within fair use. The court ruled that the profit motive of the company was a relevant consideration in the analysis of the purpose of the use. They also found against Texaco in considering the amount of the work used focusing on the article as the "whole work" rather than the journal it came from. They also found that the market was affected because Texaco could have paid royalties through the CCC.
In 1994, the US Court of Appeals for the Second Circuit upheld the lower court decision. In April 1995, Texaco petitioned the US Supreme Court to review the case. On May 15, 1995, Texaco and a steering committee representing the publishers announced that they have agreed upon terms to settle the case.
The Association of Research Libraries and 14 other academic and library organizations joined together to submit amicus, or friend of the court, briefs in this case to elucidate and reaffirm the fair use rights that the Copyright law prescribes for scholars and researchers in the pursuit of research and education. ARL's interest in this case reflects the Association's long-standing position as an advocate of the public interest in copyright, and in maintaining a balance between the rights of the copyright owner and the rights of the user.
Texaco, which conceded no wrongdoing in the proposed settlement, will pay a seven figure settlement and retroactive licensing fee to the CCC. In addition, Texaco will enter into standard annual license agreements with the CCC during the next five years.
Amicus curiae brief filed by the American Library Association, March 4, 1993
Majority opinion: 2nd Circuit Court of Appeals, October 1994
Dissenting opinion: 2nd Circuit Court of Appeals, October 1994
Statement of support for petition for rehearing, October 1994
"Library & Academic Communities Support Rehearing" (ARL 178)
"Texaco, Publishers Agree to Settle Copyright Case" (ARL 180)