Copyright and Digitization

Kate Dickson

5 Copyright and Digitization

Kate Dickson

Case Law

The AUTHORS GUILD, et al. v. GOOGLE, INC.

United States Court of Appeals, Second Circuit.

804 F.3d 202 (2015)

LEVAL, Circuit Judge:

This copyright dispute tests the boundaries of fair use. Plaintiffs, who are authors of published books under copyright, sued Google, Inc. (“Google”) for copyright infringement… . Through its Library Project and its Google Books project, acting without permission of rights holders, Google has made digital copies of tens of millions of books, including Plaintiffs’, that were submitted to it for that purpose by major libraries. Google has scanned the digital copies and established a publicly available search function. An Internet user can use this function to search without charge to determine whether the book contains a specified word or term and also see “snippets” of text containing the searched-for terms. In addition, Google has allowed the participating libraries to download and retain digital copies of the books they submit, under agreements which commit the libraries not to use their digital copies in violation of the copyright laws. These activities of Google are alleged to constitute infringement of Plaintiffs’ copyrights. … Google defended on the ground that its actions constitute “fair use,” which, under 17 U.S.C. § 107, is “not an infringement.”

…

The Law of Fair Use

The ultimate goal of copyright is to expand public knowledge and understanding, which copyright seeks to achieve by giving potential creators exclusive control over copying of their works, thus giving them a financial incentive to create informative, intellectually enriching works for public consumption. This objective is clearly reflected in the Constitution’s empowerment of Congress “To promote the Progress of Science … by securing for limited Times to Authors … the exclusive Right to their respective Writings.” U.S. Const., Art. I, § 8, cl. 8 (emphasis added). Thus, while authors are undoubtedly important intended beneficiaries of copyright, the ultimate, primary intended beneficiary is the public, whose access to knowledge copyright seeks to advance by providing rewards for authorship.

For nearly three hundred years, since shortly after the birth of copyright in England in 1710, courts have recognized that, in certain circumstances, giving authors absolute control over all copying from their works would tend in some circumstances to limit, rather than expand, public knowledge. In the words of Lord Ellenborough, “[W]hile I shall think myself bound to secure every man in the enjoyment of his copy-right, one must not put manacles upon science.” Cary v. Kearsley, 170 Eng. Rep. 679, 681, 4 Esp. 168, 170 (1802). Courts thus developed the doctrine, eventually named fair use, which permits unauthorized copying in some circumstances, so as to further “copyright’s very purpose, `[t]o promote the Progress of Science and useful Arts.'” Campbell v. -Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const., Art. I, § 8, cl. 8). Although well established in the common law development of copyright, fair use was not recognized in the terms of our statute until the adoption of § 107 in the Copyright Act of 1976. 17 U.S.C. §§ 101 et seq.

Section 107, in its present form, provides:

[T]he fair use of a copyrighted work … for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

17 U.S.C. § 107. As the Supreme Court has designated fair use an affirmative defense, see Campbell, 510 U.S. at 590, 114 S.Ct. 1164, the party asserting fair use bears the burden of proof, Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d Cir.1994).

The statute’s wording, derived from a brief observation of Justice Joseph Story in Folsom v. Marsh, does not furnish standards for recognition of fair use. Its instruction to consider the “purpose and character” of the secondary use and the “nature” of the copyrighted work does not explain what types of “purpose and character” or “nature” favor a finding of fair use and which do not. In fact, as the Supreme Court observed in Campbell, the House Report makes clear that, in passing the statute, Congress had no intention of normatively dictating fair use policy. The purpose of the enactment was to give recognition in the statute itself to such an important part of copyright law developed by the courts through the common law process.

…The Campbell Court undertook a comprehensive analysis of fair use’s requirements, discussing every segment of § 107. Beginning with the examples of purposes set forth in the statute’s preamble, the Court made clear that they are “illustrative and not limitative” and “provide only general guidance about the sorts of copying that courts and Congress most commonly ha[ve] found to be fair uses.” 510 U.S. at 577-578, 114 S.Ct. 1164 (internal quotations and citations omitted). The statute “calls for case-by-case analysis” and “is not to be simplified with bright-line rules.” Id. at 577, 114 S.Ct. 1164. Section 107’s four factors are not to “be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright.” Id. at 578, 114 S.Ct. 1164. Each factor thus stands as part of a multifaceted assessment of the crucial question: how to define the boundary limit of the original author’s exclusive rights in order to best serve the overall objectives of the copyright law to expand public learning while protecting the incentives of authors to create for the public good.

…With this background, we proceed to discuss each of the statutory factors, as illuminated by Campbell and subsequent case law, in relation to the issues here in dispute.

The Search and Snippet View Functions
Factor One

(1) Transformative purpose. Campbell‘s explanation of the first factor’s inquiry into the “purpose and character” of the secondary use focuses on whether the new work, “in Justice Story’s words, … merely `supersede[s] the objects’ of the original creation, … or instead adds something new, with a further purpose…. [I]t asks, in other words, whether and to what extent the new work is `transformative.'” 510 U.S. at 578-579, 114 S.Ct. 1164 (citations omitted). While recognizing that a transformative use is “not absolutely necessary for a finding of fair use,” the opinion further explains that the “goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works” and that “[s]uch works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.” Id. at 579, 114 S.Ct. 1164. In other words, transformative uses tend to favor a fair use finding because a transformative use is one that communicates something new and different from the original or expands its utility, thus serving copyright’s overall objective of contributing to public knowledge.

…(2) Search Function. We have no difficulty concluding that Google’s making of a digital copy of Plaintiffs’ books for the purpose of enabling a search for identification of books containing a term of interest to the searcher involves a highly transformative purpose, in the sense intended by Campbell. Our court’s exemplary discussion in HathiTrust informs our ruling. That case involved a dispute that is closely related, although not identical, to this one. Authors brought claims of copyright infringement against HathiTrust, an entity formed by libraries participating in the Google Library Project to pool the digital copies of their books created for them by Google. The suit challenged various usages HathiTrust made of the digital copies. Among the challenged uses was HathiTrust’s offer to its patrons of “full-text searches,” which, very much like the search offered by Google Books to Internet users, permitted patrons of the libraries to locate in which of the digitized books specific words or phrases appeared. 755 F.3d at 98. (HathiTrust’s search facility did not include the snippet view function, or any other display of text.) We concluded that both the making of the digital copies and the use of those copies to offer the search tool were fair uses. Id. at 105.

Notwithstanding that the libraries had downloaded and stored complete digital copies of entire books, we noted that such copying was essential to permit searchers to identify and locate the books in which words or phrases of interest to them appeared. Id. at 97. We concluded “that the creation of a full-text searchable database is a quintessentially transformative use … [as] the result of a word search is different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn.” Id. We cited A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 639-40 (4th Cir.2009), Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.2007), and Kelly v. Arriba Soft Corp., 336 F.3d 811, 819 (9th Cir.2003) as examples of cases in which courts had similarly found the creation of complete digital copies of copyrighted works to be transformative fair uses when the copies “served a different function from the original.” HathiTrust, 755 F.3d at 97.

As with HathiTrust (and iParadigms), the purpose of Google’s copying of the original copyrighted books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it. In addition, through the ngrams tool, Google allows readers to learn the frequency of usage of selected words in the aggregate corpus of published books in different historical periods. We have no doubt that the purpose of this copying is the sort of transformative purpose described in Campbell as strongly favoring satisfaction of the first factor.

We recognize that our case differs from HathiTrust in two potentially significant respects. First, HathiTrust did not “display to the user any text from the underlying copyrighted work,” 755 F.3d at 91, whereas Google Books provides the searcher with snippets containing the word that is the subject of the search. Second, HathiTrust was a nonprofit educational entity, while Google is a profit-motivated commercial corporation. We discuss those differences below.

(3) Snippet View. Plaintiffs correctly point out that this case is significantly different from HathiTrust in that the Google Books search function allows searchers to read snippets from the book searched, whereas HathiTrust did not allow searchers to view any part of the book. Snippet view adds important value to the basic transformative search function, which tells only whether and how often the searched term appears in the book. Merely knowing that a term of interest appears in a book does not necessarily tell the searcher whether she needs to obtain the book, because it does not reveal whether the term is discussed in a manner or context falling within the scope of the searcher’s interest. For example, a searcher seeking books that explore Einstein’s theories, who finds that a particular book includes 39 usages of “Einstein,” will nonetheless conclude she can skip that book if the snippets reveal that the book speaks of “Einstein” because that is the name of the author’s cat. In contrast, the snippet will tell the searcher that this is a book she needs to obtain if the snippet shows that the author is engaging with Einstein’s theories.

Google’s division of the page into tiny snippets is designed to show the searcher just enough context surrounding the searched term to help her evaluate whether the book falls within the scope of her interest (without revealing so much as to threaten the author’s copyright interests). Snippet view thus adds importantly to the highly transformative purpose of identifying books of interest to the searcher. With respect to the first factor test, it favors a finding of fair use (unless the value of its transformative purpose is overcome by its providing text in a manner that offers a competing substitute for Plaintiffs’ books, which we discuss under factors three and four below).

(4) Google’s Commercial Motivation. Plaintiffs also contend that Google’s commercial motivation weighs in their favor under the first factor. Google’s commercial motivation distinguishes this case from HathiTrust, as the defendant in that case was a non-profit entity founded by, and acting as the representative of, libraries. Although Google has no revenues flowing directly from its operation of the Google Books functions, Plaintiffs stress that Google is profit-motivated and seeks to use its dominance of book search to fortify its overall dominance of the Internet search market, and that thereby Google indirectly reaps profits from the Google Books functions.

…While we recognize that in some circumstances, a commercial motivation on the part of the secondary user will weigh against her, especially, as the Supreme Court suggested, when a persuasive transformative purpose is lacking, Campbell, 510 U.S. at 579, 114 S.Ct. 1164, we see no reason in this case why Google’s overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition, as reasons for granting fair use. Many of the most universally accepted forms of fair use, such as news reporting and commentary, quotation in historical or analytic books, reviews of books, and performances, as well as parody, are all normally done commercially for profit.

Factor Two

The second fair use factor directs consideration of the “nature of the copyrighted work.” While the “transformative purpose” inquiry discussed above is conventionally treated as a part of first factor analysis, it inevitably involves the second factor as well. One cannot assess whether the copying work has an objective that differs from the original without considering both works, and their respective objectives.

The second factor has rarely played a significant role in the determination of a fair use dispute. See WILLIAM F. PATRY, PATRY ON FAIR USE § 4.1 (2015). The Supreme Court in Harper & Row made a passing observation in dictum that, “[t]he law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.” 471 U.S. 539, 563, 105 S.Ct. 2218 (1985). Courts have sometimes speculated that this might mean that a finding of fair use is more favored when the copying is of factual works than when copying is from works of fiction. However, while the copyright does not protect facts or ideas set forth in a work, it does protect that author’s manner of expressing those facts and ideas. At least unless a persuasive fair use justification is involved, authors of factual works, like authors of fiction, should be entitled to copyright protection of their protected expression. The mere fact that the original is a factual work therefore should not imply that others may freely copy it. Those who report the news undoubtedly create factual works. It cannot seriously be argued that, for that reason, others may freely copy and re-disseminate news reports.

In considering the second factor in HathiTrust, we concluded that it was “not dispositive,” 755 F.3d at 98, commenting that courts have hardly ever found that the second factor in isolation played a large role in explaining a fair use decision. The same is true here. While each of the three Plaintiffs’ books in this case is factual, we do not consider that as a boost to Google’s claim of fair use. If one (or all) of the plaintiff works were fiction, we do not think that would change in any way our appraisal. Nothing in this case influences us one way or the other with respect to the second factor considered in isolation. To the extent that the “nature” of the original copyrighted work necessarily combines with the “purpose and character” of the secondary work to permit assessment of whether the secondary work uses the original in a “transformative” manner, as the term is used in Campbell, the second factor favors fair use not because Plaintiffs’ works are factual, but because the secondary use transformatively provides valuable information about the original, rather than replicating protected expression in a manner that provides a meaningful substitute for the original.

Factor Three

The third statutory factor instructs us to consider “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” The clear implication of the third factor is that a finding of fair use is more likely when small amounts, or less important passages, are copied than when the copying is extensive, or encompasses the most important parts of the original. The obvious reason for this lies in the relationship between the third and the fourth factors. The larger the amount, or the more important the part, of the original that is copied, the greater the likelihood that the secondary work might serve as an effectively competing substitute for the original, and might therefore diminish the original rights holder’s sales and profits.

(1) Search Function. The Google Books program has made a digital copy of the entirety of each of Plaintiffs’ books. Notwithstanding the reasonable implication of Factor Three that fair use is more likely to be favored by the copying of smaller, rather than larger, portions of the original, courts have rejected any categorical rule that a copying of the entirety cannot be a fair use. Complete unchanged copying has repeatedly been found justified as fair use when the copying was reasonably appropriate to achieve the copier’s transformative purpose and was done in such a manner that it did not offer a competing substitute for the original. …

While Google makes an unauthorized digital copy of the entire book, it does not reveal that digital copy to the public. The copy is made to enable the search functions to reveal limited, important information about the books. With respect to the search function, Google satisfies the third factor test, as illuminated by the Supreme Court in Campbell.

(2) Snippet View. …What matters in such cases is not so much “the amount and substantiality of the portion used” in making a copy, but rather the amount and substantiality of what is thereby made accessible to a public for which it may serve as a competing substitute. …

Google has constructed the snippet feature in a manner that substantially protects against its serving as an effectively competing substitute for Plaintiffs’ books. In the Background section of this opinion, we describe a variety of limitations Google imposes on the snippet function. These include the small size of the snippets (normally one eighth of a page), the blacklisting of one snippet per page and of one page in every ten, the fact that no more than three snippets are shown — and no more than one per page — for each term searched, and the fact that the same snippets are shown for a searched term no matter how many times, or from how many different computers, the term is searched. In addition, Google does not provide snippet view for types of books, such as dictionaries and cookbooks, for which viewing a small segment is likely to satisfy the searcher’s need. The result of these restrictions is, so far as the record demonstrates, that a searcher cannot succeed, even after long extended effort to multiply what can be revealed, in revealing through a snippet search what could usefully serve as a competing substitute for the original. …

Factor Four

The fourth fair use factor, “the effect of the [copying] use upon the potential market for or value of the copyrighted work,” focuses on whether the copy brings to the marketplace a competing substitute for the original, or its derivative, so as to deprive the rights holder of significant revenues because of the likelihood that potential purchasers may opt to acquire the copy in preference to the original. Because copyright is a commercial doctrine whose objective is to stimulate creativity among potential authors by enabling them to earn money from their creations, the fourth factor is of great importance in making a fair use assessment. See Harper & Row, 471 U.S. at 566, 105 S.Ct. 2218 (describing the fourth factor as “undoubtedly the single most important element of fair use”).

Campbell stressed the close linkage between the first and fourth factors, in that the more the copying is done to achieve a purpose that differs from the purpose of the original, the less likely it is that the copy will serve as a satisfactory substitute for the original. 510 U.S. at 591, 114 S.Ct. 1164. Consistent with that observation, the HathiTrust court found that the fourth factor favored the defendant and supported a finding of fair use because the ability to search the text of the book to determine whether it includes selected words “does not serve as a substitute for the books that are being searched.” 755 F.3d at 100.

However, Campbell‘s observation as to the likelihood of a secondary use serving as an effective substitute goes only so far. Even if the purpose of the copying is for a valuably transformative purpose, such copying might nonetheless harm the value of the copyrighted original if done in a manner that results in widespread revelation of sufficiently significant portions of the original as to make available a significantly competing substitute. The question for us is whether snippet view, notwithstanding its transformative purpose, does that. We conclude that, at least as snippet view is presently constructed, it does not.

Especially in view of the fact that the normal purchase price of a book is relatively low in relation to the cost of manpower needed to secure an arbitrary assortment of randomly scattered snippets, we conclude that the snippet function does not give searchers access to effectively competing substitutes. Snippet view, at best and after a large commitment of manpower, produces discontinuous, tiny fragments, amounting in the aggregate to no more than 16% of a book. This does not threaten the rights holders with any significant harm to the value of their copyrights or diminish their harvest of copyright revenue.

We recognize that the snippet function can cause some loss of sales. There are surely instances in which a searcher’s need for access to a text will be satisfied by the snippet view, resulting in either the loss of a sale to that searcher, or reduction of demand on libraries for that title, which might have resulted in libraries purchasing additional copies. But the possibility, or even the probability or certainty, of some loss of sales does not suffice to make the copy an effectively competing substitute that would tilt the weighty fourth factor in favor of the rights holder in the original. There must be a meaningful or significant effect “upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4).

Accordingly, considering the four fair use factors in light of the goals of copyright, we conclude that Google’s making of a complete digital copy of Plaintiffs’ works for the purpose of providing the public with its search and snippet view functions (at least as snippet view is presently designed) is a fair use and does not infringe Plaintiffs’ copyrights in their books.

…V. Google’s Distribution of Digital Copies to Participant Libraries

Finally, Plaintiffs contend that Google’s distribution to a participating library of a digital copy of Plaintiffs’ books is not a fair use and exposes the Plaintiffs to risks of loss if the library uses its digital copy in an infringing manner, or if the library fails to maintain security over its digital copy with the consequence that the book may become freely available as a result of the incursions of hackers. The claim fails.

Although Plaintiffs describe the arrangement between Google and the libraries in more nefarious terms, those arrangements are essentially that each participant library has contracted with Google that Google will create for it a digital copy of each book the library submits to Google, so as to permit the library to use its digital copy in a non-infringing fair use manner. The libraries propose to use their digital copies to enable the very kinds of searches that we here hold to be fair uses in connection with Google’s offer of such searches to the Internet public, and which we held in HathiTrust to be fair uses when offered by HathiTrust to its users. The contract between Google and each of the participating libraries commits the library to use its digital copy only in a manner consistent with the copyright law, and to take precautions to prevent dissemination of their digital copies to the public at large.

In these circumstances, Google’s creation for each library of a digital copy of that library’s already owned book in order to permit that library to make fair use through provision of digital searches is not an infringement. If the library had created its own digital copy to enable its provision of fair use digital searches, the making of the digital copy would not have been infringement. Nor does it become an infringement because, instead of making its own digital copy, the library contracted with Google that Google would use its expertise and resources to make the digital conversion for the library’s benefit.

…In sum, we conclude that: (1) Google’s unauthorized digitizing of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses. The purpose of the copying is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals. Google’s commercial nature and profit motivation do not justify denial of fair use. (2) Google’s provision of digitized copies to the libraries that supplied the books, on the understanding that the libraries will use the copies in a manner consistent with the copyright law, also does not constitute infringement. Nor, on this record, is Google a contributory infringer.

Commentary

When a library or archives undertakes a digitization project, copyright considerations can present themselves at many different stages–from planning, to execution, to ongoing maintenance of a digitized collection. Chapter 1 covered copyright basics, and offered an overview of many of the copyright issues that digitization raises. Chapter 2 dealt with fair use, an important exception to the exclusive rights of copyright holders and one that can be tremendously useful in planning a digitization project. This chapter will offer guidance on evaluating the copyright issues that present themselves in the context of digitization specifically.

Background

As discussed in earlier chapters, copyright law in the United States has its roots in Article I § 8 of the Constitution, and the Copyright Act of 1976 provides the legal framework for current copyright law (17 U.S. Code §§ 101−1332). The Copyright Act gives copyright protection to “original works of authorship” that are “fixed in any tangible medium of expression” (17 U.S.C. § 102(a)). The duration of copyright protection depends on when and how the work was created; for current works by individual authors, the term of copyright protection is the life of the author plus 70 years, but for other types of works, as well as works created in previous decades and centuries, determining the duration of copyright protection can take a bit of research (17 U.S.C. § 302). Copyright holders have a number of exclusive rights, including among others the rights to make, display, and distribute copies of their works (17 U.S.C. § 106). In addition to these general provisions of the Copyright Act, several other sections have particular importance for library digitization, including the provisions on fair use (17 U.S.C. § 107) and the Act’s library-specific copyright exceptions (17 U.S.C. § 108).

This very brief summary of copyright law basics helps to explain why it is that libraries and archives — which often house collections of materials by a wide variety of authors, in all sorts of media, and from a range of different eras and locations — tend to encounter copyright issues on a near-daily basis. One of the activities of libraries and archives that can seem especially challenging from a copyright perspective is digitization. A librarian or archivist evaluating an individual item or an entire collection for possible digitization may wonder where to begin when assessing the copyright status of the material to be digitized, as well as the possible legal risks associated with making a decision to move forward with digitization.

A good place to start when first evaluating an item or collection for possible digitization is with the risk-management approach laid out in Kevin Smith’s Copyright Risk Management: Principles and Strategies for Large-Scale Digitization Projects in Special Collections (Smith 2012), and A Framework for Analyzing Any U.S. Copyright Problem (Smith 2014). Together, these papers lay out several strategies for mitigating risk when engaging in a digitization project, including acknowledging the possible presence of public domain items in a collection, asking permission of copyright holders who would be most likely to object to digitization, instituting a take-down policy, and recognizing fair use as supporting digitization in many instances. Each of these tactics will be explored in more detail below.

In addition, when making copyright determinations for digitization purposes, it is helpful to keep in mind the overarching principles articulated in the American Library Association’s Copyright: An Interpretation of the Code of Ethics, which states that “copyright law should balance the public’s need to access and use informative and creative works with the economic interests of rights holders,” and that “[l]ibraries have both the opportunity and the obligation to work toward that balance when they engage in activities such as acquiring information resources for their communities, curating and preserving cultural heritage, establishing services and programs to enhance access to information, and lending books or other resources” (ALA 2017, 1). Working with copyright in a digitization project is all about finding balance–between the rights of copyright holders and those of users of copyrighted materials, and between the risks and rewards of engaging in digitization. The approach below draws on the guidance provided by these principles and strategies.

Overall Approach

A useful first step when evaluating the copyright status of an item or collection to be digitized is to consult any documentation accompanying the collection, including deeds of gift or gift agreements. These documents often contain language about how the donor wished to handle the copyright in the collection. To the extent the donor was the copyright holder in the materials, and transferred the copyright or a license to digitize and share the materials when the gift was made, the library will have a great deal of latitude to digitize and share items from the collection. Even if copyright was not transferred, these documents often contain contact information for the copyright holder, which can be useful in seeking permission to digitize if it is determined that such permission is needed. [Note: When you’re negotiating a deed of gift for a particular collection, it is helpful to think ahead and proactively obtain permission to digitize and share materials at the time of the donation.]

If copyright was not addressed in the deed of gift, the next step is to determine whether the materials are in copyright in the first place. The Copyright Office’s publication How to Investigate the Copyright Status of a Work provides a helpful step-by-step guide to researching copyright. Some materials will be easy to place in the public domain — for example, original works published more than 95 years ago (as of this writing, before 1926), and unpublished original works whose authors died more than 70 years ago (as of this writing, before 1951). Many other works, however, will also reveal themselves as being in the public domain after a bit more research. For example, many works were published during the middle part of the 20th century, when notice, registration, and renewal were at various points required; if these “formalities” were not properly observed for a given work, it may have fallen into the public domain. Peter Hirtle’s Copyright Term and the Public Domain in the United States chart is an invaluable resource for determining whether a work is still in copyright, based on the date of publication, the author’s date of death, and the formalities that were required when the work was created. If a work is in the public domain, it can be digitized and shared without permission from the author or rights holder, though appropriate attribution should always be provided.

If your investigation finds that a work is not in the public domain, the next step is to determine who is the copyright holder and whether that person is alive and contactable — or if they have an heir or estate that might be approached to ask for permission to digitize. A number of different sources can be consulted in conducting research on copyright holders, their heirs and literary estates. These include:

U.S. Copyright Office records (http://www.copyright.gov/records/).
The Catalog of Copyright Entries (https://onlinebooks.library.upenn.edu/cce/ and elsewhere) can be used to check for copyright registrations and renewals.
Writers Artists and Their Copyright Holders (WATCH) Database, Harry Ransom Center, University of Texas at Austin (http://norman.hrc.utexas.edu/watch).
Genealogy websites (www.ancestry.com, www.geni.com, www.myheritage.com).
Google, Google Books, Google Scholar, and Wikipedia searches.
Local organizations such as professional societies in areas where an author or creator lived and worked.
Libraries and archives where other major collections of related materials are housed, including their online finding aids.
Biographies and histories of the major movements and figures represented in a given collection. Pay particular attention to the copyright acknowledgements.
White pages and other local directories.
Conversations with attorneys, solicitors, and literary agents knowledgeable about the estates of various correspondents and their descendants.

In some cases, the deed of gift and an investigation of the above resources will uncover a clear copyright holder, along with either existing permission to digitize or usable contact information for the rights holder. If the latter is the case, then writing to the copyright holder to request permission is always a possibility. Sometimes, however, even the most diligent search can fail to reveal a clear copyright holder, and a work to be digitized can properly be classified as an “orphan work.” [Note: According to the U.S. Copyright Office’s 2006 Report on Orphan Works: A Report to the Register of Copyrights, users of potentially copyrighted materials should conduct a “diligent search” to identify which of the works they plan to use are orphans.] The likelihood of a work’s being consigned to orphan status tends to increase with the age of the work. As Jennifer Urban states, “[a]s time passes, information about the ownership of some works fades, and the task of connecting a work to its owner becomes more difficult, more costly, and in some cases impossible.” (1388). Over the years, copyright terms have increased, registration requirements have changed, and knowledge about the identity and contact information of rights holders has often disappeared, making the task of researching and locating individuals who may have an interest in a work more difficult.

It is also quite often the case that requests for permission — even after more than one attempt to contact a known rights holder — fail to produce a response either granting or denying permission. In still other cases, a collection might be large enough, and potential rights holders so numerous and obscure, that an individual evaluation of every item for copyright status and potential rights holders is simply impracticable (M. Dickson). If you find yourself in any of these situations, the next question to ask is whether an exception applies that would allow the work or collection to be digitized anyway, without permission or possibly even a definitive determination of the true rights holder. The following discussion will cover two such exceptions: fair use (17 U.S.C. § 107) and the Copyright Act’s library-specific exceptions (17 U.S.C. § 108).

Section 107 – Fair Use

Section 107 of the Copyright Act deals with fair use. [See the Fair Use chapter in this textbook at: mlpp.pressbooks.pub/librarylaw/chapter/copyright-fair-use/#commentary ] The Google Books case, which you read at the beginning of this chapter, dealt with fair use in the context of digitization. In that case, the court found that Google had not infringed copyright by creating a searchable database of in-copyright books that provided a user with short “snippets” of the text surrounding a searched-for word. Much of the case turned on the court’s determination that the database was “transformative,” and therefore a fair use, because its purpose — providing information about books — was new and different from the expressive purposes behind the books themselves. The Google Books decision provides useful background for a librarian making an assessment of an original work or collection of works to be digitized.

Principle Four of the Association of Research Libraries’ Code of Best Practices in Fair Use for Academic and Research Libraries states that “[i]t is fair use to create digital versions of a library’s special collections and archives and to make these versions electronically accessible in appropriate contexts” (20). For the works in a given collection that are determined after a diligent search to be orphans, as well as for any works in a larger collection that may not be selected for detailed permissions research because of the relative obscurity of their authors, a fair use analysis can be applied to determine whether to digitize and share the material online.

Section 107 lays out the four factors to be taken into consideration in the fair use analysis:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Each of these four factors should be considered as it applies to the particular in-copyright work that a library wishes to digitize and share. Keep in mind that not all factors must favor fair use in order for the use to be fair — the factors work together to create a risk analysis that will help determine whether digitization and sharing is appropriate in a given context.

Factor One: Purpose and Character of the Use

Factor one directs users to consider “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes” (17 U.S.C. § 107(1)). As you read above, the court in the Google Books case found that “copying from an original for the purpose of criticism or commentary on the original or provision of information about it” was clearly a transformative use, which favors fair use under the first factor (215-16). Google’s copying of entire copyrighted books, as well as their provision online of “snippets” from those books in response to users’ queries, satisfied the first fair use factor: “We have no doubt that the purpose of this copying is the sort of transformative purpose described in Campbell as strongly favoring satisfaction of the first factor” (217). The earlier case mentioned in the Google Books decision, Campbell, said that this first factor analysis should ask “whether the new work merely ‘supersede[s] the objects’ of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative’” (579). [Note: In Authors Guild, Inc. v. HathiTrust, the creation of the full-text searchable HathiTrust Digital Library was found by the same court as the Google Books court to be a “quintessentially transformative use.” The purpose of the database, which users could employ to locate search terms in scanned works, was different from the authors’ purpose when they wrote their books, and the database “add[ed] to the original something new with a different purpose and a different character.” The court treated the HathiTrust database as a new work, distinct from the books it contained, and therefore the full-text search function employed by users of the database as transformative.]

Other court cases have provided guidance on thinking about this first factor that can be useful in thinking about a digitization project. For example, one court considered a search engine’s use of thumbnails of copyrighted images in search results and found the use to be transformative because the thumbnails “serve[d] a different function than [the original] use–improving access to information on the internet versus artistic expression.” (Kelly v. Arriba Soft Corp 819). The same court in a different case found that “Google’s use of thumbnails [was] highly transformative,” and that “a search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool” (Perfect 10 v. Amazon 1165). Another court found that it was a transformative use to employ works for a purpose that was “plainly different from the original purpose for which they were created” — in that case, by presenting posters from Grateful Dead concerts in thumbnail format along a timeline in an illustrated history of the band, because the purpose of the posters was to promote concerts, while the purpose of the book was to explore the history of the band (Bill Graham Archives v. Dorling Kindersley Ltd 609). The court in that case also found that the public interest was an important consideration, and looked favorably on the fact that the book’s “image display enhances the reader’s understanding of the biographical text” (609-10).

The digitization and online display of materials from a library or archive’s collection will often meet the first factor’s requirements. Libraries and archives tend to have a nonprofit, educational mission, and they engage in digitizing and sharing materials online without a profit motive. To enhance the rationale for fair use, it is useful to accompany any digitized materials shared online under fair use with a notice limiting the types of uses patrons can make of them to noncommercial educational and research purposes, and instructing users to seek permission for any other uses. To facilitate such permission requests, if it is available it is often helpful to include the rights holder’s contact information in the metadata provided to users online.

The uses libraries and archives make of digitized materials online also tend to be highly transformative. The purpose of the original copyright holders might have varied a great deal — whether communicating with family, friends, and professional colleagues in the case of a collection of letters, or conveying political sentiments in a collection of protest posters, or creative expression in the case of works of fiction. The purpose of a library or archives, by contrast, is to facilitate scholarly research and access to information, making a collection more available to discovery by individuals who will put its contents to new uses. Librarians organize, curate, and tag digitized items with descriptive metadata, presenting each item in its appropriate context within a larger collection. To researchers using a digitized online collection, this transformed whole will likely be much more valuable than the sum of its parts. (ARL 19).

Another final piece of the first factor analysis to note is the importance of demonstrating good faith and fair dealing in addressing copyright issues associated with a given collection. As the Supreme Court noted in its Harper & Row decision, “[f]air use presupposes ‘good faith’ and ‘fair dealing.’” (Harper & Row 562). Identifying potential copyright holders and conducting a diligent, well-documented search for their possible heirs, descendants, and other rights holders will go a long way in establishing good faith. The same is true of maintaining a generous takedown policy — if a rights holder does come forward with a legitimate objection to the inclusion of an original work in a digitized online collection, the relevant material can be taken down, demonstrating good faith and limiting harm to the owner.

Factor Two: Nature of the Copyrighted Work

Under the second fair use factor, courts must consider “the nature of the copyrighted work” (17 U.S.C. § 107(2)). While the Google Books decision that you read above pointed out that “[t]he second factor has rarely played a significant role in the determination of a fair use dispute” (220), it also cited the Supreme Court’s statement in Harper & Row that “[t]he law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy” (563). Judge Pierre Leval explains some of the reasoning behind this distinction:

[T]here is a meaningful difference between writings conceived as artistic or instructive creation, made in contemplation of publication, and documents written for a private purpose, as a message or memo, never intended for publication. One is at the heart of the purpose of copyright – the stimulation of creative endeavor for the public edification. The others are, at best, incidental beneficiaries. Thus, the second factor should favor the original creator more heavily in the case of a work…created for publication, than in the case of a document written for reasons having nothing to do with the objectives of copyright law (Leval 1117).

The second factor analysis, according to Leval, should “determine whether the work is the type of material that copyright was designed to stimulate, and whether the secondary use…would interfere significantly with the original author’s entitlements” (1119). The second fair use factor often applies favorably to digitization and online display of materials from the collections of a library or archives. A good example is collections of correspondence between family members, friends, and colleagues — these types of materials tend more toward the factual than the creative, as they relay the details of daily life rather than products of the imagination. These types of materials were often created without the intention of publication or commercial exploitation. Allowing the online presentation of this type of correspondence as a fair use tends not to discourage the creation of similar works in the future, since people will continue to correspond with family, friends, and colleagues for reasons that are unrelated to the objectives of copyright law, and without the encouragement of copyright incentives. Even with creative originals, however, fair use is still possible.

Factor Three: Amount and Substantiality of the Portion Used in Relation to the Whole

The third fair use factor asks how much of a copyrighted work is being used in relation to the whole. (17 U.S.C. § 107(3)) In its Campbell decision, the Supreme Court stated that “the extent of the permissible copying varies with the purpose and character of the use,” and that the amount used should be “reasonable in relation to the purpose” for which the work is being used (586). The Google Books decision that you read above says that the third factor does not necessarily weigh against fair use even where an entire work is copied, so long as the amount copied was reasonable to achieve the transformative purpose.

In the case of library collections, digitizing and making available entire works is often both reasonable and necessary to accomplish the socially beneficial purposes of education, scholarship, and access to knowledge that these types of collections are designed to achieve. Displaying only segments or excerpts from a collection can often render it significantly less useful to a library’s online patrons (ARL 21). Nevertheless, the amount copied should be reasonable and necessary to achieve the favored uses of the first factor.

Factor Four: Effect on the Market

Finally, factor four considers the effect of the use on the market for or value of the original (17 U.S.C. § 107(4)). In its Sony v. Universal decision, the Supreme Court explained that “a use that has no demonstrable effect upon the potential market for, or the value of, the copyrighted work need not be prohibited in order to protect the author’s incentive to create” such a prohibition “would merely inhibit access to ideas without any countervailing benefit” (450-51).

The court in Google Books, which you read above, found that the effect on the market must be “meaningful or significant,” and that “the possibility, or even the probability or certainty, of some loss of sales does not suffice” (224). The proper question to ask under this factor, rather, is “whether the copy brings to the marketplace a competing substitute for the original, or its derivative, so as to deprive the rights holder of significant revenues” (223).

As part of the overall fair use risk analysis, it is useful to identify any copyright holders whose work could have the potential for independent market value, and if possible approach them, their heirs, or their literary estates to ask for permission to digitize — for example, if an archives wants to digitize a letter by a prominent author whose estate may plan to publish a collection of the author’s correspondence. It is often the case, however, that individual items in a collection have little market value on their own, and actually derive a great deal of their value from their inclusion in an online collection that can provide them with context, curation, description, and findability. As Principle Four of the Association of Research Libraries’ Code of Best Practices in Fair Use for Academic and Research Libraries states, “[t]he research value of these collections typically resides not only in the individual items they contain…, but also in the unique assemblage or aggregation they represent” (19).

In the case of the orphan works in a given collection, the possibility of market harm to owners who cannot be located and may not even exist is likely relatively small. If a work cannot be traced back to its proper owner even after a diligent search, it arguably has little economic value to its owner. True orphan works represent a complete failure of the market, and where there is no market there is a relatively small chance of market harm. There is even an argument that if these orphan works are not digitized and made widely available to the public, they could be lost forever. As Jennifer Urban has pointed out, “[i]f these works cannot be digitized for preservation and for access by the public, then their ‘orphaning’ creates a large social cost and a significant drag on the copyright system’s purpose to encourage the spread of knowledge. Many could disappear before they can enter the public domain and freely be repurposed. Liberating these works from copyright limbo, on the other hand, would have great social benefit, both for today’s public and for tomorrow’s generations of scholars, students, and citizens” (Urban 1388).

Additional Factors to Consider in the Fair Use Analysis

The four fair use factors described above should be considered together in the context of the particular digitization project being carried out, and in light of an individual library or archive’s own risk tolerance. An additional, unofficial factor to consider in the overall risk analysis is the prominence and likely litigiousness of any potential rights holder. By reviewing a collection for prominent individuals with potential heirs or literary estates, and seeking permission from those entities first, it is possible to minimize the risk of relying on fair use for the rest of the collection.

Another important factor to consider is the fact that fair use is meant to be a flexible doctrine, responsive to new situations and conditions. A good example of the potential flexibility of fair use occurred in early 2020, when the COVID-19 pandemic forced many institutions of higher education to move their courses online quickly. Libraries at these institutions were often asked to digitize and share materials from their collections on an emergency basis, in order to provide support to the students and instructors who were suddenly delivering and receiving all of their instruction online. At that time, a group of library copyright specialists made a public statement advocating fair use in support of digitization in this context, arguing that helping to respond to the public health crisis was just the sort of public purpose fair use was designed to address (Public Statement of Library Copyright Specialists). While individual libraries and librarians will need to consult with their general counsel’s office if these sorts of situations arise in the future, it is important to remember that fair use’s flexibility can often make itself useful in unexpected digitization-related situations.

Section 108 – Library Exceptions

Fair use is a flexible doctrine that can support digitization in a variety of contexts and circumstances. By contrast, Section 108 of the Copyright Act permits digitization by libraries in very specific contexts, when certain requirements are met. Section 108 lays out the conditions under which libraries and archives may make copies of copyrighted works for certain listed purposes, including preservation and sharing.

In order to avail itself of the exceptions provided by Section 108, a library or archive must comply with certain specific requirements. Subsection (a) states that “it is not an infringement of copyright” for a library or archives to make and distribute one copy of a copyrighted work, so long as (1) the copying and distribution “is made without any purpose of direct or indirect commercial advantage,” (2) its collections are either “open to the public” or open to researchers outside the institution “doing research in a specialized field,” and (3) the copy includes an appropriate copyright notice (17 U.S.C. § 108(a)).

After enumerating these initial requirements in subsection (a), subsection (b) goes on to lay out more specific provisions that are applicable to unpublished works in particular. In the case of unpublished works, a library or archives may make up to three copies of the work “solely for purposes of preservation and security or for deposit for research use in another library or archives” if (1) the work is currently in its collections and (2) the digital copy is not otherwise “made available to the public in that format outside the premises of the library or archives” (17 U.S.C. § 108(b)).

Subsection (c) of Section 108 deals with making copies of published works. In the case of a published work, a library or archives may make up to three copies of the work “solely for the purpose of replacement of a copy…that is damaged, deteriorating, lost, or stolen,” or if it is in a format that “has become obsolete,” if (1) the library or archives has made a “reasonable effort” to find an “unused replacement” at a “fair price,” and (2) the digital copy is not “made available to the public in that format outside the premises of the library or archives” (17 U.S.C. § 108(c)). The section goes on to explain that “obsolete” in this context means that “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.”

It is an unsettled question of statutory interpretation whether “premises” in the 108 context refers to the physical premises of the library or archives making the copy, or, more broadly, to the secure network of the institution — or, broader still, to the online collections of the institution. It is important to consult with legal counsel when determining which interpretation of “premises” represents a comfortable level of risk within your institution’s overall copyright strategy (Myers 328).

A final noteworthy subsection of Section 108 is subsection (h), which allows a library or archives to “reproduce, distribute, display, or perform” a copy of a published work during the last 20 years of its copyright term, so long as none of the following conditions apply: (A) the work is subject to normal commercial exploitation; (B) a copy or phonorecord of the work can be obtained at a reasonable price; or (C) the copyright owner or its agent provides notice pursuant to regulations promulgated by the Register of Copyrights that either of the conditions set forth in subparagraphs (A) and (B) applies” (17 U.S.C. § 108(h)). While Section 108(h) is infrequently used by libraries and archives at this time, in part because of confusion over the exact meanings of its terms and its “ambiguous implementation requirements” (Gard 1), it is nevertheless an important part of the statute to keep in mind when thinking through a 108 analysis.

In making your determinations under Section 108, it is helpful to consult secondary sources that can guide your analysis. The U.S. Copyright Office’s Discussion Document on Section 108 offers a thorough overview of many of the specific issues you may encounter as you decide whether 108 will allow digitization in a given context. The American Library Association also offers a number of helpful 108-related resources, including its “spinner” tool.

Digital Millennium Copyright Act

When relying on one of the above copyright exceptions (107 or 108) to support certain types of digitization projects, it is important to keep the Digital Millennium Copyright Act (DMCA) in mind. The DMCA is a federal law passed in 1998 that states, among other things, that “[n]o person shall circumvent a technological measure that effectively controls access to a work protected under this title” (17 U.S.C. § 1201(a)(1)(A)). The statute goes on to define “circumvent a technological measure” as to “descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner” (17 U.S.C. § 1201(a)(3)(A)), and also defines a protective measure that “effectively controls access to a work” as one that “in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work” (17 U.S.C. 1201 § (a)(3)(B)).

The DMCA is seen by many as forbidding library copying where such copying would require circumvention of technological measures protecting the original copyrighted item — including software and audiovisual materials. There has been debate in the courts and amongst copyright librarians about whether this prohibition in fact applies in situations where the copying is supported by fair use, or by Section 108. It is important to consult with your institution’s counsel to determine their preferred interpretation of the DMCA as it applies to these sorts of library digitization projects (Myers 321).

Permissions

In many situations, a review of the documentation accompanying a collection, along with research into the copyright status of the materials, a fair use analysis, and consideration of the Section 108 exceptions, will lead you to conclude that you can digitize and share materials without permission from the copyright holder. In others, however, you will ultimately conclude that permission would be advisable and sometimes even easier than in-depth copyright research — perhaps you’ve conducted a fair use analysis and determined that your use is probably not fair, or the copyright holder in the materials was prominent enough that their literary estate might object to digitization without permission. In these situations, you will want to consider requesting permission. A permission request does not have to take any particular form, but the following are useful pieces of information to include in your letter or email to the copyright holder:

Identify yourself and your institution, focusing (if applicable) on its nonprofit, educational mission.
Identify the specific original work (or portions thereof) that you wish to digitize and share.
Describe your proposed use, including any changes you plan to make.
Describe any restrictions you’ll place on the audience — will the digitized original be shared only with specific individuals, only on campus, or only for specific purposes?
Offer to provide attribution, and ask for the rights holder’s preferred format.
Request contact information for other rights holders — this can be helpful if you’re not entirely sure that you are contacting the correct (or only) rights holder.

The more information you can provide about your proposed use, the easier it will be for the copyright holder to consider your request — and the simpler it will be for future stewards of the digitized materials to determine how they can use them.

As you work to incorporate copyright permissions into your library’s digitization workflow, it is important to remember that requesting permission to digitize and share a collection is most easily done, if possible, when the materials are first being donated to the library. At that point in time, rights holders and other interested parties are more likely to be alive and contactable, and a discussion of the benefits of digitizing and sharing the materials online can be incorporated into the overall conversation about logistics and planning for the donation. Even if the donor turns out not to be the (or the only) copyright holder, they are still more likely than the average person to be in possession of details and contact information for the actual rights holder(s), making the permissions inquiry a useful starting point for further research. In addition, being able to add a section on copyright to a gift agreement while it is being negotiated saves the work of drafting a separate agreement on copyright down the road. This approach also gives donors who are rights holders the opportunity to make their own choices about exactly how the materials will be shared — for example, they may wish to choose a Creative Commons license or specific rights language to include in the metadata accompanying the materials online. Requesting permission at the time of donation saves future generations of librarians and archivists from having to track down rights holders, or guess at a donor’s likely intent with regard to copyright, thus saving resources for the actual work of digitizing and sharing the materials. [See also the Contract Law Basics chapter, Gift Agreements section, in this textbook at: mlpp.pressbooks.pub/librarylaw/chapter/contract-law-basics/ ]

Sharing a Digitized Collection

Copyright considerations continue to come into play even after an item or collection has been digitized. One important way in which they do is when a librarian or archivist is deciding whether, and under what conditions, to share the collection online. In some circumstances, a copyright risk analysis might have determined that both digitization and online display of an item or collection are fair use. In others, a donor has transferred the right to digitize and share the item or collection, whether with the deed of gift or later by granting permission. In still others, the relevant items will be in the public domain and thus freely shareable.

In any of these situations, the library or archive may wish to attach a rights statement and/or a license to the item or collection. Creative Commons licenses are standardized licenses that can be included in the metadata accompanying an item — there are six different Creative Commons licenses of varying degrees of permissiveness, and they offer users an easy way to understand the particular ways in which they can use and reuse each digitized item (About CC Licenses). Rightsstatements.org also provides standardized statements meant to convey to users whatever is known about the copyright status of a digitized item (Rights Statements). In addition to these standardized statements, in negotiating permission from a copyright holder to share in-copyright material in an online digitized collection it can be useful to offer to attach a more tailored usage statement to the material — for example a statement that the item is being shared for educational purposes only, and that commercial or for-profit users should contact the rights holder.

Another important copyright management strategy when sharing a digitized collection is to post a takedown policy along with the digitized item or collection. This approach can be helpful in anticipating cases where, for example, an item was determined to be an orphan work but a legitimate rights holder later comes forward to claim copyright. Providing a potential rights holder with an easy way to contact the library or archives to provide further information or request a takedown can be reassuring and avert potential disagreements.

Controlled Digital Lending

Another noteworthy topic related to library digitization is known as “controlled digital lending,” or CDL. The rationale behind CDL is laid out by a group of library copyright specialists in their Position Paper on Controlled Digital Lending, which “offers a good faith interpretation of U.S. copyright law for American libraries considering how to perform traditional lending functions using digital technology while preserving an appropriate balance between the public benefit of such lending and the protected interests of private rights holders.” CDL relies on an interpretation of fair use to support scanning of entire books by libraries and archives, followed by digital lending of those copies at a one-to-one ratio with the number of physical copies of the book that the library or archives possesses. So if a library possesses one physical copy of a certain book, CDL would allow them to lend one digital copy of that book at a time, while keeping the physical copy off-limits to patrons. The idea is to replicate the physical lending experience as closely as possible. The fair use analysis offered in support of CDL is as follows:

Factor 1: Libraries and archives make “socially beneficial” uses that include “providing access to information in order to encourage literacy, education, criticism, comment, news reporting, teaching, scholarship, and research, creating the informed citizenry essential to a functioning democracy.”

Factor 2: CDL will generally be used for books that have been published, which favors fair use. Libraries can also strengthen their case for fair use in CDL “when the underlying work is academic, informational, or nonfiction,” or where it is “commercially inactive, out-of-print, or a so-called ‘orphan work’ whose owner cannot be identified or located.”

Factor 3: Users are granted temporary access to entire copies of a work. “If the library only owns one physical copy of the work, then additional users must wait in line.”

Factor 4: “properly implemented CDL programs maintain an ‘owned to loaned’ ratio that is comparable to physical lending. Because libraries are entitled to distribute copies they own, any market effect from such activities is unlikely to impact the fair use analysis.”

(Position Paper on CDL). Libraries considering CDL can strengthen their fair use argument by employing digital rights management to limit simultaneous users of a digitized copy to the number of physical copies the library possesses, prevent downloads, and restrict sharing of the digital files. Programs such as Google Drive, Box, Occam’s Reader, Digify, Equella, and others can be explored to find the functionality that best matches the library’s needs.

At the time of writing, the Internet Archive is in the early stages of litigation with publishers around their use of CDL in their Open Library and National Emergency Library. Because CDL is a relatively new application of fair use, and the courts have yet to rule on the particular interpretation of fair use that supports it, librarians and archivists considering CDL should consult with legal counsel for input before implementing a CDL program.

Other Non-Copyright Considerations

While the bulk of this chapter has dealt with copyright issues presented by digitization, it is worth mentioning two related legal issues to keep in mind when approaching a digitization project — these relate to privacy (including HIPAA and FERPA) and indigenous rights.

Privacy

When considering a digitization project, in addition to copyright considerations it is important to remember that privacy issues can also be implicated. Particularly at institutions of higher education, the Family Educational Rights and Privacy Act (FERPA) and the Health Insurance Portability and Accountability Act (HIPAA) can come into play.

FERPA is a federal law that governs students’ education records; generally speaking, it requires written permission from a student before his or her education records can be released. If a collection to be digitized contains student records (for example, student class projects or oral histories), it is important to investigate the items carefully to be sure that proper permission was given, if necessary, before any digitized items are shared online. Similarly, if a collection to be digitized includes any individual health information, it is possible that HIPAA will come into play. HIPAA is a federal law governing how individuals’ health information can be used and shared. It will not always be applicable, but if a collection does include patient records, be on the lookout for HIPAA.

Even in situations where FERPA and HIPAA do not directly apply, privacy issues can still come to light as a collection is being digitized, or after it is shared. For example, personal information, including information about minors, could be included in records to be digitized. Discuss any potential privacy issues, including FERPA and HIPAA, with your institution’s legal counsel.

Indigenous Rights

Another copyright-adjacent legal issue that sometimes accompanies digitization projects relates to the knowledge and rights of indigenous peoples. A 2002 ALA lecture on the subject recognized a “growing awareness of the importance of indigenous knowledge,” as well as “growing support from national and international organizations in recognition of rights of indigenous people to control their own intellectual property” (Patterson). Laws on the subject vary by country, and it is beyond the scope of this chapter to delve too deeply into them, but if you encounter a collection that includes artifacts or knowledge of indigenous peoples, it is important to note that additional ethical and legal rules may apply. [See also the Native American Graves Protection and Repatriation Act chapter in this textbook at: https://mlpp.pressbooks.pub/librarylaw/chapter/nagpra/ ]

Scenarios

Scenario 1:

You are an archivist at a library that holds an extensive collection of papers related to the life of a prominent American scientist who died in 1950. The collection includes correspondence to and from the scientist and other prominent thinkers of her time, notes to and from her family and friends, as well as manuscript drafts, notes from talks she gave at conferences, photographs, and a variety of clippings from newspapers and magazines. The collection comprises donations from several different donors over time. The library would like to digitize the collection as part of an online exhibit on the history of women in science. What copyright issues present themselves? What steps would you take to evaluate copyright in the collection and decide whether and how much of the collection to digitize? What can you do to mitigate risk once the collection is placed online?

Scenario 2:

You are a librarian at a public university. A faculty member in the history department wants to assign his students a series of chapters from an out-of-print book that was originally published in the United States in 1968. His only copy is a photocopy that was given to him by his own professor in graduate school. What steps would you take to evaluate the copyright status of the work? What advice would you offer him regarding fair use if he wants to place some or all of the book on his course management site? Is this book a good candidate for Controlled Digital Lending?

Scenario 3:

You are an archivist at a state university that houses a unique collection of American documentary films. The collection contains films in many media, from older reels to VHS to digital files in various formats. You have been asked to evaluate the collection for digitization and possible sharing online. What steps would you take to decide which types of films might be suitable for preservation and/or sharing? Which sections of the Copyright Act are most relevant to you in making your decision? Which entities at your institution should have input as you’re making these determinations?

Scenario 4:

You are a librarian at a university medical library. You are considering digitizing the university’s nursing school’s records, which have been deposited in the archives. The records go back to the early part of the 20th century, and include a range of items including nursing students’ class assignments and their reflections on treatment of patients. What copyright and adjacent legal issues will you need to consider as you decide whether to digitize and share the collection online?

Works Consulted and Recommended Reading

American Library Association. Copyright: An Interpretation of the Code of Ethics. May 19, 2017, www.ala.org/tools/ethics/copyright. Document ID: 1b790c28-361d-4d94-a52d-d8f775739483.

American Library Association. Section 108 Spinner tool, librarycopyright.net/resources/spinner/pdf.php?id=1.

Association of Research Libraries. Code of Best Practices in Fair Use. Jan. 2012, www.arl.org/wp-content/uploads/2014/01/code-of-best-practices-fair-use.pdf.

Bailey, Lila et al. Position Statement on Controlled Digital Lending. Sept. 2018, controlleddigitallending.org/statement.

Benson, Sara R. “Copyright Conundrums: Rights Issues in the Digitization of Library Collections.” Digital Preservation in Libraries: Preparing for a Sustainable Future, edited by Jeremy Myntti and Jessalyn Zoom, American Library Association, 2019, pp. 305-318, hdl.handle.net/2142/102161.

Berkeley Library, University of California. Responsible Access Workflows, docs.google.com/presentation/d/1V66PGpIq9xqXxdvngpD3rkAMoIw2hIyVVDS4Iv4VFOM/edit#slide=id.g5741794e64_0_8.

Bill Graham Archives v. Dorling Kindersley Ltd, 448 F. 2d 605 (2d. Cir. 2006).

Buttler, Dwayne K. “Intimacy Gone Awry: Copyright and Special Collections.” Journal of Library Administration, vol. 52, no. 3-4, Jul. 2 2012, pp. 279-293.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

Centers for Disease Control and Prevention. Health Insurance Portability and Accountability Act of 1996 (HIPAA), www.cdc.gov/phlp/publications/topic/hipaa.html.

Creative Commons. About CC Licenses. 2019, creativecommons.org/about/cclicenses/.

Crews, Kenneth D. Copyright Law for Librarians and Educators, 4th ed. ALA Editions, 2020.

Dickson, Maggie. “Due Diligence, Futile Effort: Copyright and the Digitization of the Thomas E. Watson Papers.” The American Archivist, vol. 73, no. 2, 2010, pp. 626-636.

Dryden, Jean. “The Role of Copyright in Selection for Digitization.” The American Archivist, Vol. 77, No. 1, Spring/Summer 2014, pp. 64-95.

Gard, Elizabeth Townsend. “Last Twenty (L20) Collections: Applying Copyright’s Section 108(h) in Libraries, Archives and Museums.” UCLA Journal of Law & Technology, Vol. 22, no. 3, Fall 2018, uclajolt.com/articles/940/.

Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985).

Heller, Margaret. “Taking a Practical Look at the Google Books Case.” ACRL Tech Connect, Dec. 9, 2013, acrl.ala.org/techconnect/post/category/digitization/.

Hirtle, Peter B. et al. Copyright & Cultural Institutions: Guidelines for Digitization. Cornell University Library, 2009, ecommons.cornell.edu/bitstream/handle/1813/14142/Hirtle-Copyright_final_RGB_lowres-cover1.pdf?sequence=2.

Hirtle. Peter B. Copyright Term and the Public Domain in the United States. Jan. 24, 2020. copyright.cornell.edu/publicdomain.

Kelly v. Arriba Soft Corp, 336 F.3d 811, 819 (9th Cir. 2003).

Leval, Pierre N. “Toward a Fair Use Standard.” Harvard Law Review, vol. 103, 1990, p. 1105.

Light, Michele. “Managing Risk with a Virtual Reading Room: Two Born Digital Projects.” Reference and Access Innovative Practices for Archives and Special Collections, edited by Kate Theimer, Rowman & Littlefield Publishers, 2014, pp. 17-35. digitalscholarship.unlv.edu/lib_articles/463/.

Myers, Carla S. “Copyright and Digital Preservation: Legal and Administrative Issues.” Digital Preservation in Libraries: Preparing for a Sustainable Future, edited by Jeremy Myntti and Jessalyn Zoom, American Library Association, 2019, pp. 321-341, hdl.handle.net/2374.MIA/6639.

Patterson, Lotsee, “Indigenous Librarianship: A Global Perspective, 2002 Jean E. Coleman Library Outreach Lecture.” American Library Association, 2002, www.ala.org/aboutala/offices/olos/olosprograms/jeanecoleman/02patterson.

Perfect 10 v. Amazon, 508 F. 3d 1146, 1165 (9th Cir. 2007).

Public Statement of Library Copyright Specialists: Fair Use & Emergency Remote Teaching & Research. Mar. 13, 2020, tinyurl.com/tvnty3a.

RightsStatements.org. Rights Statements, rightsstatements.org/page/1.0/?language=en.

Sims, Nancy. University of Minnesota Rights Statements Quick Reference Chart, mndigital.org/sites/default/files/rights/quick-ref.pdf.

Smith, Kevin L. A Framework for Analyzing any U.S. Copyright Problem. 2014, kuscholarworks.ku.edu/bitstream/handle/1808/22723/Smith_Copyright_Analysis_Framework.pdf?sequence=1&isAllowed=y.

—. “Copyright Risk Management: Principles and Strategies for Large-Scale Digitization Projects in Special Collections.” Research Library Issues, no. 279, June 2012, p. 17, publications.arl.org/rli279/17.

Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984).

Suber, Peter. “Open Access for Digitization Projects.” Going Digital: Evolutionary and Revolutionary Aspects of Digitization, edited by Karl Grandin, Nobel Foundation, 2011, pp. 70–93, knowledgeunbound.mitpress.mit.edu/pub/nfmjjez2/release/1?readingCollection=53e63375.

UCLA Library Special Collections. Digital Project Toolkit, www.library.ucla.edu/special-collections/programs-projects/digital-projects-special-collections.

U. S. Copyright Office. How to Investigate the Copyright Status of a Work, www.copyright.gov/circs/circ22.pdf.

—. Section 108 of Title 17: A Discussion Document of the Register of Copyrights. Sept. 2017, www.copyright.gov/policy/section108/discussion-document.pdf.

—. Report on Orphan Works: A Report to the Register of Copyrights. 2006, www.copyright.gov/orphan/orphan-report-full.pdf.

U. S. Department of Education. Family Educational Rights and Privacy Act (FERPA). Dec. 15, 2020, www2.ed.gov/policy/gen/guid/fpco/ferpa.

Urban, Jennifer. “How Fair Use Can Help Solve the Orphan Works Problem.” Berkeley Technology Law Journal, vol. 27, 2012, pp. 1379-1388.

Author

Kate Dickson (she/her/hers) is the Copyright & Licensing Librarian at the University of North Carolina at Charlotte, where she works with faculty, students, and library staff on copyright issues in their teaching and research, and helps negotiate library licenses with vendors. Prior to attending library school at UNC Chapel Hill, she practiced law for seven years at law firms in Washington, D.C. and Chapel Hill, NC. She holds a J.D. and an M.A. in American Legal History from the University of Virginia.

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Case Law

Commentary

Background

Overall Approach

Section 107 – Fair Use

Factor One: Purpose and Character of the Use

Factor Two: Nature of the Copyrighted Work

Factor Three: Amount and Substantiality of the Portion Used in Relation to the Whole

Factor Four: Effect on the Market

Additional Factors to Consider in the Fair Use Analysis

Section 108 – Library Exceptions

Digital Millennium Copyright Act

Permissions

Sharing a Digitized Collection

Controlled Digital Lending

Other Non-Copyright Considerations

Privacy

Indigenous Rights

Scenarios

Scenario 1:

Scenario 2:

Scenario 3:

Scenario 4:

Works Consulted and Recommended Reading

Author

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