The Librarian's Copyright Companion/Chapter 9

by James S. Heller, Paul Hellyer, and Benjamin J. Keele

Chapter Nine

The Library as Publisher

So far this book has looked at copyright from the perspective of the consumer of copyrighted works. Most of the time, patrons want to use resources in some way—read a book, copy an article, listen to music, or watch a movie. Libraries also need to reproduce resources to preserve them or to fulfill interlibrary loan requests. But what if a library wants to publish original works or republish existing works in new formats?

Digital technologies have increased libraries’ publishing capabilities. Many academic libraries have established digital collections of faculty research called institutional repositories.^[1] Some academic libraries have gone further and published original scholarly books. For example, the University of Nebraska-Lincoln’s repository has published a major reference work, along with undergraduate projects and doctoral dissertations.^[2] The University of Michigan Press and Utah State University Press are actually divisions of their library systems. Online publishing systems, such as Open Journal Systems and Digital Commons, enable libraries to publish digital journals and post copies of faculty scholarship. HathiTrust Digital Library, a collaboration of academic libraries, produces collections of digitized books from library collections and is working to establish a division for publishing original works.^[3]

In discussing the library as publisher, we need to distinguish between the phenomena of “publishing” and “republishing.” “Publishing” means making a work available for the first time, while “republishing” is making available a work that had already been published before. When a library posts an article for first time in a digital journal, it is publishing. When a library posts online a scanned book article, or image, it is republishing.

When acting as a publisher, a library is often both a user and a creator of copyrightable works. One the one hand, you must find out if anyone has copyright interests in works you want to publish. On the other hand, you must determine how you will manage any copyright interests the library will have.

Permissions

Before you publish something, make sure you are not infringing a copyright owner’s rights. For works that are being published for the first time, this is relatively easy. If your library publishes a journal and an author submits an article, she wants you to publish it. Just ask her to sign a copyright permission form authorizing you to reproduce and distribute her work in any possible formats, including new formats that arise as technology advances. Many libraries that publish journals have author agreements on their sites you can look to for examples.^[4] Columbia University also has a web site that gives examples of good and bad language for publication agreements.^[5]

Aside from just knowing that you need explicit permission from an author to publish his or her work, you must get that permission in writing. The Copyright Act requires exclusive licenses be in writing, but non-exclusive licenses can be granted verbally or even implied.^[6] However, relying on verbal or implied permission increases the risk of misunderstanding or misremembering the scope of the permission. It is worth the small investment of time and paper to make a thorough but concise copyright permission form that any authors you publish will sign. A sample publication agreement can be found in Appendix N.

Assuming you aren’t in the publishing business to make money, then a non-exclusive license should suffice. This means that the author gives you permission to publish her work, but she keeps the copyright and can exercise all her copyright privileges in the future. If you sell copies, then you might want an exclusive license so you will be the only one selling copies or subscriptions. Even here you may let the exclusive license become non-exclusive after a set period of time or when the work goes out of print. For example, your publication agreement could provide that the license will be exclusive for one or two years and non-exclusive thereafter.

While transferring copyright in the article from the author to the library publisher gives the publisher all rights in the article, it’s probably unnecessary, and may be undesirable. Taking a long-term exclusive license or copyright transfer means the library is committing itself to handling any permission requests and making sure the work does not become an orphan. The library shouldn’t hoard copyrights, so only take the rights you need and let the author keep the rest.

Republishing works can be a bit more difficult. If you know who owns copyright in the work, then you may need to get their permission (again, getting permissions in writing is wise). But sometimes copyright owners are not easy to track down.

Imagine you have a book on local history you want to republish on your Web site so genealogists anywhere can look at it without wearing out the book. Ideally, you can track down the author and get permission. But suppose the author moved out of town or died and no one knows how to find him. Or perhaps the author transferred copyright to a publisher, but that publisher has gone out of business or been acquired by a larger company that tossed all their old records. You now have an “orphan work”—a work that may still be protected by copyright but whose owner cannot be located. At this point, you need to find out if the book is still under copyright and, if it is, identify your library’s statutory rights under the fair use doctrine (discussed in Chapter Four) or the Section 108 exemption (discussed in Chapter Five).

Here are questions and answers that cover some of the common issues libraries encounter when publishing or republishing works.

Question: My library has a photograph of a local building we want to digitize and put online. No one knows who the photographer is. Can I just go ahead and put it online?

Answer: Maybe. The fact that the photographer cannot be located does not affect his or her rights. Do a bit of research about the work and photographer. Any bibliographic information might be helpful. If the photo is old enough, or was not registered or marked with a copyright notice during certain years, it might now be in the public domain (see the copyright duration chart in Appendix P to help determine if the work is still copyrighted). Check the Copyright Office’s database of copyright registrations to see if copyright over the photo was registered.^[7] Ideally, you want to either find a copyright holder to ask for permission or determine that the work is no longer protected by copyright.

Question: OK, I’ve done all that, and I still cannot tell if the picture is copyrighted or who would hold the copyright. Now what?

Answer: At this point, you need to make a judgment call. Could your republication be fair use? Go to the four factors. (1) Character and purpose of use—is the use non-commercial, and is the use transformative, using the work in a new context or for a different purpose for which it was created? (2) Nature of the work—is the photo factual and just documenting the building, or is creative, like a piece of art photography? (3) Amount and substantiality of use—are you using the entire photo or just a part of it? (4) Effect on the potential market—does your use diminish the photographer’s ability to make money from the photograph? Given that the photo is not being exploited commercially and no copyright owner can be found, this factor would favor fair use in this case.

Dealing with orphan works always involves some risk. Could someone claiming to be the copyright holder come out of the woodwork and sue the library for copyright infringement? Sure. Is it likely? Not at all. We have yet to hear of such a case. How much are you on the hook for? Hard to say, but if the work had not been registered (you did check on that first, right?), then statutory damages are not available. Since orphan works are, by definition, not being commercially exploited, compensatory damages would be insignificant. Also, if a non-profit, educational library acts on the good faith belief that a use of copyrighted material is covered under fair use, there may be no statutory damages at all.^[8] Filing a lawsuit is expensive for the copyright owner, too, so if an owner thinks your library is infringing her copyright, you will probably get a letter about it and have a chance to reach an agreement. She will probably just you to remove the work from your web site, which you will do!

The Copyright Office produced a report on orphan works calling for legislation that would add some certainty to the orphan works mess.^[9] but agreement has not yet been reached on what steps libraries would have to take for an adequate search and what kind of liability protections should be given. Until Congress passes a law, libraries are going to have to make risk calculations when deciding what to do with orphan works. Our take is that if you do due diligence in trying to see if the work is copyrighted, tried to locate the copyright owner, and reasonably concluded that your use is a fair use, you should be fine.

Question: I found the copyright owner and asked them for permission, and they said no! Can I put the photo online anyway?

Answer: Again, maybe. Copyright gives authors some control over their works, but hardly complete control. Being denied permission doesn’t affect the fair use analysis, so if you think fair use covers your use, it doesn’t matter if the owner said no.^[10] Of course. the owner now knows what you want to do and might complain, but again, filing a lawsuit is an expensive proposition. Question: A donor gave us her unpublished papers and correspondence. We want to digitize and make it available online. Does copyright let us do this if we own the papers?

Answer: Simply owning a physical copy of a work does not mean you also own the copyright. Most archives ask donors to sign a contract transferring ownership of the papers. Check to see if the donor transfers copyright over the papers to you. If the library or archives owns the copyright, you can do anything you like (assuming the contract does not have any restrictions). Depending on how old or thorough your donor contract is, it may not mention digitization. If this is the case, then you can make three copies for preservation purposes under section 108(b). Those copies cannot be accessible outside the library building. If you want to make the papers publicly available online, you will need to get permission from the donor or her heirs.

Question: A faculty member wants me to post her journal article in our digital repository, but the copyright notice on the article says the publisher is the copyright owner. Can I post the article?

Answer: Sometimes publishers ask authors to assign the copyright in the article to the publisher through a copyright transfer agreement. So the first thing you need to find out is if the author signed one of those forms. If she didn’t, or the form she signed didn’t transfer her copyright and doesn’t otherwise prohibit republication, then you are in the clear.

Even if she did sign a copyright transfer agreement, posting the article may be possible. Many publishers permit online posting by the author’s institution as long as proper attribution (e.g., author, journal title, and page number) is given or after an embargo (usually six months to three years). These policies can be found on the copyright form, in the publisher’s copyright policy (sometimes called an author rights policy), or by asking the publisher. A very useful resource is SHERPA/RoMEO, a database of publisher copyright policies.^[11]

Doing this kind of investigation for each article can get time-consuming, so educating authors about copyright and encouraging them to save their copyright forms can be very helpful. Some institutions also encourage authors to attach an author rights addendum to any copyright forms they sign.^[12] These addenda explicitly state that the author’s institution can post the article online. When all is said and done, unless the journal issue or publisher website prohibits posting your faculty’s articles, go ahead and do so. If the publisher objects they will just ask you to remove it.

Question: We posted a professor’s article online, and now we are getting requests for permission to reprint it. Can we give permission?

Answer: Probably not. Recall that copyright privileges are like a bundle of sticks. Having one stick doesn’t mean you have the others. You can have permission to post a work online, but not be able to grant further permissions to others. Check your documentation to see if the copyright owner authorized you to sub-license or give further permissions. If he didn’t, then the best you can do is refer the requestor to the copyright owner. If you posted a work on the basis of fair use, then you can’t give permission, either. The requestor will have to get permission from the copyright owner or decide to use fair use based on the facts of their situation. Your work is done; it’s in her hands now.

Question: We want to include some images of art we found on a museum’s Web site for an exhibit on artists from our region. Do we need permission, even if we aren’t putting the exhibit online? What if we just want to promote the exhibit online using thumbnail images?

Answer: The first question is whether the artwork is still protected by copyright. If copyright has expired, then exact reproductions also have no copyright protection.^[13] If the images have some creative elements or the artwork is still copyrighted, then you will need permission unless your use falls under the fair use doctrine. Many museums require you to sign a license agreement to get permission. Read the agreement carefully; it may limit further uses, even those that would be fair use.^[14]

The thumbnails (small, low-resolution images) are probably a fair use; using them to promote an exhibit is transformative—the art was not originally made or imaged to promote an exhibit. They were originally made to be appreciated and viewed as artwork. Thumbnails, or even larger images that are still small, are not high-quality enough to be used as artwork, but they can serve as basic illustrations to promote an exhibit that includes high-quality images. Since thumbnails cannot substitute for original artwork or high-quality images, they are unlikely to harm the copyright owner's ability to make money. Two appellate cases have held that search engines that use thumbnails to illustrate search results were fair use.^[15] Your use of thumbnails in this case is similar to these cases.

The ARL takes an aggressive position on a library's right to digitize its special collections and archives in its Code of Best Practices, which is included in Appendix M.

Handling Your Copyrights

We've covered what a library needs to do when reproducing and distributing others' copyrighted works, but what should a library do with copyrights that it owns? Almost all libraries (or their parent institutions) own copyrights. When library employees create works as part of their duties, the work-for-hire doctrine says that the employer owns the copyright. Employee-created works, such as guides, bibliographies, and the like are owned by the employer absent a policy to the contrary. Although it is not necessary, authors publishing with the library can assign their copyrights to the library. When people donate their personal papers to archives, they can also sign a contract to donate the copyrights over the papers so the archives handle any permissions requests. One way or another, your library will own copyrights.

Permissions and Open Licenses

As a copyright owner, keep in mind the purpose of copyright that we have emphasized throughout this book: the dissemination and promotion of knowledge. Be generous with copyright permissions. Letting others use the works your library publishes will increase the social benefits of your publishing efforts. A good way to grant copyright permissions is through open licenses. Think of these like copyright notices, but for granting permission rather than reserving rights. By using an open license, you grant blanket permission to anyone who wishes to use your works, subject to conditions prescribed by you.

There are number of open licenses, but by far the most well-known are those made by Creative Commons.^[16] By attaching a Creative Commons license, you give permission to anyone to reproduce, distribute, perform, display, and make derivative works from your works as long as the conditions in the license are followed. The most common conditions are attribution (giving proper credit to the original author and publisher), non-commercial (not selling or using the work directly for profit), share-alike (licensing any derivative works under the same open license), and noderivatives (no making derivative works). Some copyright owners grant blanket permission only for educational use, such as course packs or copies for classroom distribution.

For example, a book with a Creative Commons Attribution-NonCommercial-NoDerivatives license permits reproducing and distributing the book as long as proper attribution is given, the use is non-commercial, and a derivative work is not made. This is the most restrictive of the Creative Commons licenses; other varieties permit derivative works or commercial use.

All Creative Commons licenses require attribution, but if an owner wants to waive all copyrights, then she can use Creative Commons' CC0 (as in Creative Commons Zero) Public Domain Dedication. The most common use of CC0 is for data sets that can be aggregated and mixed with other data for scientific analysis.

If you don't mind people copying your work as long as it is noncommercial, then you can use a Creative Commons Attribution-NonCommercial license. Here, only people who want to use the work commercially need permission. This benefits both you and the users by reducing the number of people who have to ask for permission, and to whom you have to reply.

Library Publishing May Require Several Layers of Agreements

Suppose your library wants to publish a journal or other compilation of works. What sorts of license agreements do you need? This might seem like a simple question, but it can actually be rather complex. The most important thing is to have everything in writing. A simple verbal agreement and handshake isn't good enough here. You will also need a couple layers of agreement. What the agreements contain should be negotiated to best meet the library's and authors' long-term needs; remember that these copyrights will outlive you, and maybe even your children!

As an example, imagine a group of editors has approached you about publishing a journal through the library. First, the journal needs a license agreement with each author (recall that copyright automatically vests with the author). Some journals require authors to transfer their entire copyrights to the journals, but most authors should have some flexibility to use their articles for personal and professional purposes. The goodwill of the authors is probably worth whatever control over the articles you have to give up.

The agreement between the author and journal should give the journal the rights it needs to publish and archive the article. Beyond that, the rights should stay with the author. Unless you plan on trying to charge money for individual articles, a non-exclusive or temporary exclusive license (that then becomes non-exclusive one or two years after publication) is probably fine.

Then your library needs an agreement with the editors of the journal. The creative selection and arrangement of collective works—such as articles in a journal issue or chapters in an edited book—can also be copyrighted. In addition to having permission to publish each individual article, you also need permission to publish each journal issue. This agreement should also discuss organizational issues like the level of support the library will supply, and what happens if the editors change or want to move the journal to another publisher.

Finally, you may need to deal with agreements with database aggregators. The agreements with authors and editors should cover any formats you may want to publish in. If your license just gives you permission for print hardcopy issues, and if you later want to republish in a new digital format or add the issues to a database, you would need to go back to the copyright holder for permission, which you do not want to do.^[17]

If you want to publish a journal article outside of the journal issue, as a separate reprint or in a database like JSTOR, you need your license to authorize that. It will probably be very difficult to change the agreement between the author and journal once it is signed, so think long-term to provide flexibility for future developments. Make sure there is language authorizing you to publish (and authorize other vendors to distribute) the article in print, digital, and other formats. The sample agreement in Appendix N is a good starting point.

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1. The vast literature on institutional repositories is organized in Charles W. Bailey, Jr., Institutional Repository and ETD Bibliography 2011, available at http://www.digital-scholarship.org/iretd/iretd.pdf.
2. Paul Royster, Publishing Original Content in an Institutional Repository, 34 Serials Review 27 (2008).
3. http://www.hathitrust.org.
4. E.g., http://scholarworks.iu.edu/journals/index.php/ndif/about/submissions#copyrightNotice.
5. http://www.keepyourcopyrights.org/.
6. 17 U.S.C. § 204 (2006).
7. Copyright registrations filed after January 1, 1978 are searchable online at http://cocatalog.loc.gov. Pre-1978 registrations have not yet been digitized, though the Copyright Office plans to digitize them in the future. See http://www.copyright.gov/digitization/goals.html.
8. 17 U.S.C. § 504 (C) (2) (i) (2006).
9. Register of Copyrights, Report on Orphan Works (2006), available at http://www.copyright.gov/orphan/orphan-report-full.pdf.
10. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 585 1.18 (1994) (“we reject Acuff-Rose’s argument that 2 Live Crew’s request for permission to use the original should be weighed against a finding of fair use. Even if good faith were central to fair use, 2 Live Crew’s actions do not necessarily suggest that they believed their version was not fair use; the offer may simply have been made in a good-faith effort to avoid this litigation. If the use is otherwise fair, then no permission need be sought or granted. Thus, being denied permission to use a work does not weigh against a finding of fair use.)
11. http://www.sherpa.ac.uk/romeo.php.
12. An example is at http://www.arl.org/sparc/author/addendum.shtml.
13. See Bridgeman Art Library, Ltd. v. Corel Corp., 36 F.Supp.2d 191 (S.D.N.Y. 1999), which is discussed in Chapter One.
14. See Kenneth D. Crews & Melissa A. Brown, Control of Museum Art Images: The Reach and Limits of Copyright and Licensing, available at http://ssrn.com/abstract=1542070.
15. Perfect 10, Inc., v. Amazon.com, Inc., 508 F.3d 1146, 1168 (9th Cir. 2007); Kelly v. Arriba Soft Corp., 336 F.3d 811, 822 (9th Cir. 2003).
16. http://www.creativecommons.org.
17. Digital rights without express permission can be complicated, especially for collective works, like newspapers and journals that, while copyrighted as compilations, also contain individual copyrighted works. The copyright owner of a collective work, like an issue of a magazine, can digitize the entire issue and distribute the digitized issue as a whole. This is what happened in Faulkner v. National Geographic Enterprises, 409 F.3d 26 (2005). National Geographic sold a CD with digital images of past issues. The court held that the magazine had the right to do this because it was reproducing the entire magazine. On the other hand, in New York Times v. Tasini, 533 U.S. 483 (2001), the Court held that the Times had infringed freelance writers' copyrights by digitizing their articles and compiling them in a database that was organized very differently from the original newspaper. If the Times had just scanned the pages, they would have had a better case.