We thank Jill Cirasella and Polly Thistlethwaite of the Graduate Center of the City University of New York for contributing the following guest post, which provides some background on their recent book chapter “Open Access and the Graduate Author: A Dissertation Anxiety Manual.”
Jill Cirasella
For years, we have encouraged researchers at our institution, the Graduate Center of the City University of New York, to consider the benefits—for others, themselves, and their fields of study—of making their scholarship available open access. In doing so, we have found allies, some already committed to open access and some newly swayed by our arguments.
But, like many librarians advocating openness, we have also met resistance—disinclination to make time to upload works to repositories, confusion about variations among publishers’ policies regarding authors’ rights, certainty that niche work has no broader audience, concern about the viability of scholarly societies in an open-access world, etc.
Polly Thistlethwaite
Most of all, we have heard apprehensions about open access dissertations. Specifically, we have heard students and advisors express fear that making a dissertation open access would sink the author’s chances of publishing a book based on the dissertation.
We could have responded to these worries with our usual refrains about the many benefits and moral necessity of open scholarship, but we felt the weight of our responsibility to our students. We wanted to be able to provide them with confident, informed answers about open access dissertations, especially their effect on the publishing prospects (and, in turn, job and tenure prospects) of their authors. We quickly learned that there were very few research studies on this topic. Rather, blog posts and non-research articles predominated, giving anecdotes and rumors outsized influence. We decided to embark on some research ourselves, to review what was being said and examine, to the extent possible, whether it held up to scrutiny.
In our research, we found a wide array of misgivings about open access dissertations, but we were able to sort them into six categories:
anxieties about finding a publisher for a book based on an open access dissertation
anxieties among publishers about sales of dissertation-based books
anxieties about misdeeds, such as plagiarism and idea theft
anxieties about dissertations not being “ready” for wider audiences
anxieties about having work “online,” whether or not open access
anxieties about corporate monetization of student work
More research on all these matters is necessary, but we were pleased to be able to pull together some (reassuring!) statements by publishers and provide some (reassuring!) data about sales of dissertation-based books. We hope we dispelled some myths, clarified some ambiguities and misunderstandings, and inspired some more formal studies. Our research is available as “Open Access and the Graduate Author: A Dissertation Anxiety Manual,” a chapter in the book Open Access and the Future of Scholarly Communication: Implementation, edited by Kevin L. Smith and Katherine A. Dickson. (Needless to say, we also made it openly available.) We also recommend another chapter in the book that covers similar ground, “From Apprehension to Comprehension: Addressing Anxieties about Open Access to ETDs” by Kyle K. Courtney and Emily Kilcer (also openly available).
Jill Cirasella is Associate Librarian for Scholarly Communication & Digital Scholarship at the Graduate Center of the City University of New York. Her research focus is scholarly communication, broadly construed: recent projects examine anxieties surrounding open access dissertations, benefits of transforming dissertation deposit into a scholarly communication consultation, attitudes about practice-based library literature, and the professional experiences of hard-of-hearing librarians. She serves on the boards of three open access journals, including the Journal of Librarianship and Scholarly Communication, and is driven by a commitment to open scholarship.
Polly Thistlethwaite is Professor and Chief Librarian at the Graduate Center of the City University of New York. She is co-author (with Jessie Daniels) of Being a Scholar in the Digital Era, a work that urges scholars to publish their work openly and to engage in the debates of the day. In the late 1980s and early 1990s, while working in NYC academic libraries, Polly also worked with the Lesbian Herstory Archives and the AIDS activist group ACT UP. She became a conduit for non-academics seeking access to medical and scholarly work sequestered behind library doors and paywalls. Polly is an advocate for free, publicly available scholarship.
We’d like to thank co-authors Kyle K. Courtney and David R. Hansen for permission to re-post the following article, which originally appeared on the Copyright at Harvard Library blog on March 1, 2019.
One of the beautiful things about fair
use is how it can soften the copyright act, which is in many ways
highly structured and rigid, to provide flexibility for new, innovative
technology.
To understand how, it’s worth appreciating the structure of the Copyright Act. If you look at the table of contents of Chapter 1 of the Act (“Subject Matter and Scope of Copyright”), you see the first several sections define basic terms such as copyrightable subject matter. Included in that first half of the chapter is Section 106, which defines the exclusive rights held by rights holders: the right to control copying, the creation of derivative works, public distribution, public performance, and display. In the bottom half of the Act, Sections 108 to 122 provide for a wide variety of limitations and exceptions to those owners’ exclusive rights. These exceptions are largely for the benefit of users and the public, including specific exceptions to help libraries, teachers, blind and print-disabled users, non-commercial broadcast TV stations, and so on.
One particularly innovative system developed to enhance access to works is “controlled digital lending” (“CDL”):
CDL enables a library
to circulate a digitized title in place of a physical one in a
controlled manner. Under this approach, a library may only loan
simultaneously the number of copies that it has legitimately acquired,
usually through purchase or donation….[I]t could only circulate the same
number of copies that it owned before digitization. Essentially, CDL
must maintain an “owned to loaned” ratio. Circulation in any format is
controlled so that only one user can use any given copy at a time, for a
limited time. Further, CDL systems generally employ appropriate
technical measures to prevent users from retaining a permanent copy or
distributing additional copies.
While the courts have yet to weigh in
directly on the CDL concept, we now have some guidance from a case in
the Second Circuit Court of Appeals, Capitol Records, LLC v. ReDigi Inc. This case is about the development of an online
marketplace created by ReDigi, which facilitated the sale of “used” mp3
music files. Capitol Records sued ReDigi, alleging that ReDigi
infringed its exclusive rights to reproduction and distribution when it
attempted to use a particular transfer method to sell the used mp3s.
The Court of Appeals upheld a lower
court ruling that the doctrine of first sale is only an exception to the
public distribution right and, therefore, does not protect digital
lending because, in that process, new copies of a work are always made.
The court also rejected ReDigi’s fair use assertion. It found that the
use was commercial in nature, was considered non-transformative, and
replicated works exactly and precisely; simply put, they created mirror
image copies of existing digital files. Further, though the libraries
associations in their briefs
had raised the issue of a nexus of connection between fair use and
specific copyright exceptions, such as Section 109 and 108, as an
extension of Congressional policy that should influence the fair use
analysis, the court did not discuss that argument.
That the court ruled ReDigi, a
commercial enterprise, had interfered with the market for
iTunes-licensed mp3s and their effort was not a transformative fair use,
comes as no surprise to most lawyers and copyright scholars.
However, the decision, written by the
creator of the modern transformative fair use doctrine, Judge Pierre
Laval, contains several important lessons for CDL.
Transformative Use
First, the case raises a significant
question as to whether CDL of digitized books may be “transformative” in
nature. In the decision, examining the first factor, Judge Leval
explains that a use can be transformative when it “utilizes technology
to achieve the transformative purpose of improving delivery of content
without unreasonably encroaching on the commercial entitlements of the
rights holder.” For physical books, especially those that are difficult
to obtain, this application of “transformative use” has a direct
correlation to the core application of CDL.
Further, this quote interprets another critical technology and fair use case from the U.S. Supreme Court, Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), famously called the “Betamax case.” Since its decision in 1984, the Sony ruling helped establish and foster the creation of new and vital technology, from personal computers and iPods to sampling machines and TiVo. This Sony quote was most recently used in another Second Circuit case, Fox News Network, LLC v. TVEyes, where the same court laid out this particular reading of Sony. So, ReDigi here is drawing upon the precedent of two important transformative fair use cases to make its point. Under this transformative use definition, CDL should be determined to be transformative by the courts, especially if the commercial rights of the rights holder are not unreasonably encroached.
Therefore, while the court found
ReDigi’s use to not be transformative, the Second Circuit opened the
door for continued technological development, especially for
non-commercial transformative uses under the first factor, like CDL. In
fact, according to several scholars (Michelle Wu, Kevin Smith, Aaron Perzanowski), this creates a much stronger argument that CDL would be ruled a transformative fair use by a court.
Market Harm
The Second Circuit held that the
ReDigi system caused market harm under the fourth factor of the fair use
statute. Again, this is not a surprise to the copyright world. The
court found that the service provider had no actual control of the
objects being sold and that it “made reproductions of Plaintiffs’ works
for the purpose of resale in competition with the Plaintiffs’ market for
the sale of their sound recordings.”
What does this mean for CDL’s analysis
under the fourth factor? Here, again, based on the language of the
ReDigi decision, CDL looks pretty different. The ReDigi resales were
exact, bit-for-bit replicas of the original sold in direct competition
with “new” mp3s online through other marketplaces, such as iTunes. The
substitutionary effect was clear, especially since the mp3 format is the
operative market experiencing harm. For digitized copies of print books
used for CDL, the substitutionary effect is far less clear. With most
20th-century books—the books that we feel are the best candidates for
CDL—the market to date has been exclusively print. For those books, some
new evidence from the Google Books digitization project suggests
that digitization may in fact act as a complementary good, allowing
digital discovery to encourage new interest in long-neglected works.
CDL doesn’t compete with a recognized
market. When a library legally acquires an item, it has the right, under
the first sale doctrine, to continue to use that work unimpeded by any
further permission or fees of the copyright holder. CDL’s digitized copy
replaces the legitimately acquired copy, not an unpurchased copy in the
marketplace. To the extent there is a “market harm,” it’s one that is
already built into the transaction and built into copyright law: libraries are already legally permitted to circulate and loan their materials. The CDL “own-to-loan ratio” ensures that the market harm for the digital is the exact same as circulating the original item.
Again, the language of the ReDigi
court should be examined closely. The court distinguishes
substitutionary markets from those that are complementary and natural
extensions of the use inherent with purchasing the original: “to the
extent a reproduction was made solely for cloud storage of the user’s
music on ReDigi’s server, and not to facilitate resale, the reproduction
would likely be fair use just as the copying at issue in Sony was fair
use.” Reading this language through the lens of CDL, a modern
reproduction service, such as CDL, that further enhances the owner’s use
of materials that were purchased under first sale or owned under other
authorized means would also qualify as a fair use.
All in all, the ReDigi case most certainly does not settle the CDL issue; if anything, the specific language of the court emphasizes the potential for more non-commercial transformative uses like CDL.
David Hansen is the Associate University
Librarian for Research, Collections & Scholarly Communications at
Duke University Libraries. Before coming to Duke he was a Clinical
Assistant Professor and Faculty Research Librarian at UNC School of Law.
And before that, he was a fellow at UC Berkeley Law in its Digital
Library Copyright Project.
Kyle K. Courtney is Copyright Advisor and Program Manager at
Harvard Library’s Office for Scholarly Communication (OSC). Before
joining the OSC, Kyle managed the Faculty Research And Scholarly Support
Services department at Harvard Law School Library.
Today, the U.S. Supreme Court resolved the question of what the Copyright Act means when it says that a work must be registered prior to filing an infringement lawsuit, holding that the Register of Copyrights must act on the application for registration before a copyright owner can file an infringement action.
Under the Copyright Act, an infringement action cannot be brought until “registration of the copyright claim has been made” (or, alternatively, registration of the claim has been refused by the Copyright Office). As we wrote in an earlier post on this case, the essential question presented in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC was whether a copyright owner may commence an infringement suit after delivering the proper deposit, application, and fee to the Copyright Office, but before the Register of Copyrights has acted on the application for registration.
In the Fourth Estate case, the Eleventh Circuit explained that in its view “[t]he Copyright Act defines registration as a process that requires action by both the copyright owner and the Copyright Office.” The Supreme Court affirmed this approach, concluding that “registration… has been made” not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.
Open access is a key issue at Authors Alliance. Our OA resource page features information and tools about OA publishing, including our Guide to Understanding Open Access. We are featuring this article to provide context on the end of journal licensing negotiations between the University of California system and Elsevier and what this could mean for professors, researchers, and the public. Jeffrey MacKie-Mason is a member of the Authors Alliance Board of Directors.
The following post is reprinted with the permission of author Gretchen Kell, and originally appeared on the UC Berkeley Media Relations website on February 28, 2019.
University Librarian Jeffrey MacKie-Mason, co-chair of the UC team that negotiated with scholarly journal publisher Elsevier. (Photo by J. Pierre Carrillo for the UC Berkeley Library)
Earlier today, the University of California ended negotiations
with Elsevier, one of the world’s largest scholarly journal publishers.
UC’s main goal since negotiations began in July had been to secure
universal open access publishing of UC research, so that anyone in the
world could view it, free of charge — as well as to curb the rising
costs associated with for-profit journals. Talks heated up after Dec.
31, when UC’s multimillion-dollar subscription expired.
Berkeley News asked University Librarian Jeffrey MacKie-Mason,
co-chair of UC’s negotiation team, more about what’s happened and what
it means for UC scholars and the public.
Why did UC decide to end negotiations today?
Elsevier made a new, quite complex, but novel proposal to us at the
end of January. On Monday, our negotiating team gave them a written
response outlining our appreciation for Elsevier’s effort, but saying
that conditions had to be met for us to sign a contract, and that we
thought we were pretty far apart. We knew if they couldn’t accommodate
us, there was not much point in continuing to negotiate at this time.
Elsevier wanted to keep meeting with us, and we have a meeting
scheduled for tomorrow (Friday), but yesterday they approached our
faculty directly — faculty who are editors of Elsevier journals, who
they have working relationships with — and also the media, and presented
a rosy view of the offer they’d made to us. Their characterization of
the offer left things out, and they didn’t mention what we’d proposed as
conditions. They went public with it. So, we announced the end.
We knew all along it was going to be difficult for Elsevier to change
its ways to our satisfaction. We had hoped they’d see the light, that
the publishing industry is changing, and that they could help lead the
way.
What did each side want the most, and why?
From the very beginning, we had two goals: a reduction in costs — we
pay about $11 million a year to Elsevier in subscription fees, which is
25 percent of UC system-wide journal costs — and default open access
publication for UC authors: that is, that Elsevier would publish an
author’s work open access unless the author didn’t want to. This is
consistent with the UC faculty senate’s goal of all work being published
open access.
We also wanted a contract that integrated a paid subscription with
open access publishing fees. It would have been a transformative
agreement, one that would shift payments for reading journal articles
into payments for publishing them, and publishing them open access.
Elsevier eventually offered to do something like what we wanted, for
open access, but they wanted to charge us a lot more. Our current
calculations are that they would have increased the amount of our
payments by 80 percent — an additional $30 million over a three-year
contract.
Open access would eventually mean fewer subscriptions for Elsevier.
But we don’t think they would lose, in the long run, by charging for
publishing rather than by charging for reading. The transition the
industry is making to open access is a feasible path forward, so that
more universities don’t cancel their licenses for the same reasons we
did.
If the whole world switches to open access, which we think it will at some point since the scholarly community wants this, it would be a world without subscriptions. But it would be a world where people would still want and need to publish their work in peer-reviewed journals, and there’s always a cost for that.
Berkeley’s University Library was a key player in negotiations with Elsevier. (Photo by J. Pierre Carrillo for the University Library)
Have other universities made the same decision?
In the U.S., we’re the first university system to do this with open access as the main issue.
But all of the universities in Germany canceled two years ago for the
same reason. The Max Planck Society (the leading research organization
in Germany) also did. The university alliance in Sweden canceled last
spring, and the university alliance in Hungary canceled in December.
Several other national alliances in Europe are trying to negotiate a
similar contract with Elsevier.
Is this a goal of UC, to be a model institution for open access?
It’s always been one of our goals to help lead the U.S. from paywall
publishing to open access publishing. We’re trying to transform the
entire industry. We’re trying to design a contract that works under a
U.S. funding model that can be replicated by other universities. We’ve
been communicating actively with other U.S. universities and are being
very closely followed by our peer institutions. The Association of
Research Libraries, the largest group of research and university
libraries in the U.S. and Canada, just scheduled a video conference with
us for next week, and I’ll be sharing our goals and experiences with
leaders of other university libraries.
What does the outcome of today’s decision mean for professors and researchers?
If Elsevier proceeds to cut UC’s access to articles, which we fully
expect any moment now, they will eliminate immediate access directly
from Elsevier’s server to articles published since Jan. 1, 2019, and to a
small fraction of historical publications for which we don’t have
perpetual access rights. We have perpetual rights for about 95 percent
of the material our scholars use.
If people want to read journal articles but can’t access them through
Elsevier, we can help here at the library to gain access in other legal
ways. It may take a few minutes to a few days longer to get the
articles. In extreme cases, for a small fraction of the articles in
demand, it might be necessary to purchase an article at a very high
price from Elsevier.
The decision today does not affect publishing. This is all about
reading. Authors can still submit their work to Elsevier; Elsevier isn’t
going to deny a submission, because it wants our articles. But despite
the good journals it publishes, Elsevier is not a good actor in the
scholarly communications field.
What about for the public?
We are a public library and, under our license, the public can come
to us and access Elsevier articles on-site. A number of people in public
health in the Bay Area come here to read journal articles, for example.
They will also lose direct access to a 2019 publication.
The main thing for the public to know is that we’re taking a major
stand with the power of UC to transform the scholarly journal publishing
industry for the benefit of our scholars and the public. We remain in
negotiations with other publishers of UC research articles. The industry
is not going to change overnight, but we want the public and the world
to have access to research — to our UC research — that is funded by the
public in the first place. That is core to our mission at the University
Library.
Fair use can be a tricky concept to pin down. What exactly does fair use mean? What makes it such an important part of U.S. copyright law? What are the “four factors” that courts consider when evaluating claims of fair use? And, perhaps most importantly of all, how does fair use support authors’ research, writing, and publishing goals? Authors who want to incorporate source materials with confidence, while also respecting copyright and the integrity of their fellow creators, may find themselves faced with more questions than answers. Fortunately, help is at hand!
Just in time for Fair Use/Fair Dealing Week, we’re featuring this selection of resources to help understand and apply fair use.
Can I still claim fair use if I am using copyrighted material that is highly creative?
What if I want to use copyrighted material for commercial purposes?
Does fair use apply to copyrighted material that is unpublished?
While you’re there, you can also download a PDF or purchase a copy of our guidebook, Fair Use for Nonfiction Authors.
Codes of Best Practices in Fair Use
The Center for Media and Social Impact at American University has compiled this collection of Codes of Best Practices in Fair Use for various creative communities, from journalists to librarians to filmmakers.
The USCO maintains this searchable database of legal opinions and fair use test cases.
Do you have suggestions for other sites you depend on for quality content in your writing, teaching, or creative pursuits? Let us know, and we’ll feature them in a future Roundup!
In our Spotlight on Book Publication
Contracts series, we are shining the light on the ways that authors can
negotiate for publication contract terms that help them make and keep their
books available in the ways they want. This series is based on the information,
strategies, and success stories in our guide to Understanding and Negotiating Publication Contracts. Be
sure to check out the online or print version of our guide for more details on these and
other strategies to help you meet your creative and pragmatic goals.
In this week’s installment of our Spotlight
on Publication Contracts, we’re celebrating Fair Use Week by highlighting an important
aspect of your publication contract that defines whether your publisher expects
you to obtain permissions for any third-party content you use in your book, or
whether your contract explicitly allows you to rely on fair use.
It is common for book contracts to
include terms requiring authors to deliver documents to their publishers
showing that they have obtained all necessary third-party permissions: i.e.,
that the author is legally authorized to use any materials incorporated into
the book where the copyright is owned by third parties. Permissions may be
required to use someone else’s copyrighted work—such as artwork, illustrations,
or photographs. However, under certain circumstances, an author’s use of a
reasonable amount of another’s work to, for example, prove or illustrate the
author’s point may be fair use, which does not require third-party permission or
payment.
Often, permissions clauses do not
acknowledge the right of an author to rely on exceptions and limitations to copyright
like fair use. Instead, they may stipulate that an author “shall be responsible
for obtaining written permissions from the respective copyright owners to reproduce
materials from third-party copyrighted works.” Clauses like this do not explicitly
allow you to rely on fair use. If you plan to rely on fair use to use
third-party material in your book, you may want to ask for a clause like this:
If the Author uses any copyrighted text, tables, illustrations, or other materials in the Author’s Work, whether these are the Author’s own or those of another, and if this use does not meet the criteria specified in the fair use section of U.S. copyright law, the Author agrees to obtain and deliver to the Publisher proper and complete permissions to reprint such materials from the owners of the copyrights….
In our Spotlight on Book Publication Contracts series, we are shining the light on the ways that authors can negotiate for publication contract terms that help them make and keep their books available in the ways they want. This series is based on the information, strategies, and success stories in our guide to Understanding and Negotiating Book Publication Contracts. Be sure to check out the online or print version of our guide for more details on these and other strategies to help you meet your creative and pragmatic goals.
Contracts typically include clauses that allocate the decision-making authority for important parts of the publishing process—from the timing of publication to the title of the work. Your publisher will likely approach these decisions with an eye towards maximizing profit, which may well align with your interests. But you may also have a stake in these decisions because they can influence how you and your work are perceived by potential readers. In this post, we cover ways you can have a say in your book’s cover design and the price of your book.
Cover Design
While a publisher’s choices about the cover design for your book will likely reflect its best judgment on what will help the book sell. But sometimes, you may have strong preferences and want to include in your contract a right of approval over any cover design decisions.
Success Story: When Authors Alliance member Janice Rhoshalle Littlejohn negotiated the contract for her book Swirling: How to Date, Mate, and Relate; Mixing Race, Culture, and Creed, she encountered a provision that would allow her to pick a book cover out of three options. Because she knew that her book’s theme would be challenging to portray artistically, she crossed out this provision and added in language giving her final say over the book’s cover. Her publisher accepted this change. Later, when her publisher sent Janice three unappealing book covers to choose from, Janice proposed that a graphic designer she knew should design the cover instead. Her publisher initially balked, but when she pointed out that she had final approval rights her publisher relented and gave Janice the cover she wanted.
As an alternative, you could consider including a contract term giving you the right to be consulted as the cover design is contemplated. The publisher will still have the final say, but it will at least be obligated to consider your ideas in the process.
Pricing
Pricing is usually central to your publisher’s marketing strategy. Your publisher will likely select a price for your book based on historical sales figures, prices of comparable books, cost of production, and other factors. But pricing is an important consideration for some authors. For example, some authors of academic books want to make their works available at a price that is affordable to students.
If it is important to you that your book is sold at a specific price, you can ask your publisher to share its anticipated production expenses and sales projections for your book so you can better understand its pricing strategy. If you understand what factors are driving your publisher’s pricing decision, you could negotiate for specific changes—such as agreeing to a lesser page count or using fewer illustrations—that will help keep the price low.
Success Story: When Pamela Samuelson negotiated the contract for her forthcoming book, making it available at an affordable price in both hardcover and paperback editions was one of her key concerns. Therefore, before negotiating she looked at the price of other books on similar subject matter issued by the publisher. Professor Samuelson singled out those books that had a price within her acceptable range and whose page count and format were comparable to hers, and then told her publisher she wanted her work to be priced like those books. To sweeten the deal, she offered to forgo an advance on royalties, which would reduce her publisher’s upfront costs. As a result, Samuelson was successful in getting her publisher to agree to price the book in the range that she wanted.
Even if you can’t get your publisher to agree to sell your book at a specific price, there are still some indirect strategies you could pursue to make your book more affordable. For example, you can ask your publisher to release your book only in paperback, make it available as an e-book, or simultaneously release your book in hardcover and paperback.
For more on how to ensure you can provide input on the finishing touches of your book, including the timing for publication, the formats which it will be made available, its title, and design and production decisions, see pages 144-158 of Understanding and Negotiating Book Publication Contracts.
We’re grateful to David Hansen, Director of Copyright & Scholarly Communications at Duke, for granting permission for us to repost the following update on the ACS v. ResearchGate lawsuit. This article originally appeared on the Scholarly Communications @ Duke blog.
Nothing had happened in the U.S. case for months, but yesterday ResearchGate made several filings. ResearchGate has apparently retained Durie Tangri (the same law firm that represented Google in the Google Books lawsuit) and has invested in making some opening arguments that I think are pretty smart.
Authors’ rights: the argument I’ve been waiting for
The most interesting ResearchGate filing isn’t its factual answer to the complaint, but rather the motion that ResearchGate made accompanying its answer. That motion, with the inconspicuous title of “Motion for Notice Under 17 U.S.C. § 501(b)” asks the court to open the door for something big: communicating about the litigation with the actual authors of the articles posted to ResearchGate. Imagine that!
ResearchGate begins its argument by pointing out the unusual nature of the case, and why it is so important to clearly sort out who owns rights (authors versus publishers) in the articles underlying the lawsuit:
A typical copyright infringement lawsuit about copyrighted material appearing online involves a content creator suing a website owner when an unauthorized third party has posted the creator’s work to the website without the creator’s permission. But here, [the publishers] are suing . . . ResearchGate for allowing scientists to share their own work. . . . Under Plaintiffs’ infringement theories, if ResearchGate is infringing Plaintiffs’ copyrights in the articles at issue here, so are those articles’ authors. Accordingly, a finding that the appearance of those articles on the ResearchGate site was infringing would necessarily mean that the people who conducted the research and wrote the articles did not have the right to share them.
The motion goes on to argue that many authors of these articles (almost all of which were co-authored) still hold a valid copyright interest in them that would allow those authors to legally post the articles to ResearchGate. Even assuming that the publishers obtained valid transfers of exclusive rights from the corresponding authors, ResearchGate argues that there is no evidence that the publishers also obtained a valid transfer of exclusive rights from co-authors of the papers. Thus, those co-authors are free to make what uses they want with their papers, including posting to ResearchGate.
Given that these authors may hold rights, ResearchGate argues that § 501(b) of the Copyright Act allows (and may even require) the court to order notification of those authors as third parties who have a “claim or interest” in the copyrighted works at issue. Section 501(b) provides that the court:
may require written notice of the action with a copy of the complaint provided to “any person shown . . . to have or claim an interest in the copyright,” and
shall require that such notice be served upon any person whose “interest is likely to be affected by a decision in the case,”
In addition to notification, the statute also provides for a way to actually bring third-parties into the lawsuit. It says that the court “may require the joinder, andshall permit the intervention of any person having or claiming an interest in the copyright” (emphasis mine).
ResearchGate is, for now, just asking the court to order the plaintiffs to notify other potential copyright owners about the lawsuit. Specifically, ResearchGate is asking the court to “order Plaintiff’s “to serve ‘written notice of the action with a copy of the complaint upon’ each co-author of each journal article at issue in the lawsuit who is not a corresponding author. . . .” I don’t know exactly how many authors that is (as I’ve said previously, there are over 3,000 articles), but it’s probably a lot.
Procedure, procedure, procedure
You may think I’m getting all worked up over a little bit of civil procedure. Maybe. But I think it is important because over and over again we’ve seen large-scale copyright infringement suits fought between the large organizations (e.g., Authors Guild v. Google, Authors Guild v. HathiTrust, Elsevier v. SciHub, Cambridge University Press v. Becker (Ga. State)) without much input at all from the actual authors of the works that form the basis of those lawsuits. When those authors have been allowed to have a say, such as in the Google Books class action certification process, their input has meaningfully altered the outcome.
For the ResearchGate litigation, it seems like a good start to at least require the Plaintiffs to notify authors that their work is being used as the basis for a copyright infringement lawsuit. I would hope, once authors are notified, that the court would also allow those same authors to intervene, as the statute allows, to have their own say in how their works are shared with the world.
James J. O’Donnell is the University Librarian at Arizona State University Libraries and has published widely on the history and culture of the late antique Mediterranean world. He successfully reverted rights to his 1992 edition of Augustine’s Confessions and made the book available in an open access digital version. Continued interest in the online book led to a subsequent reprint and later an additional paperback print run. Professor O’Donnell shared his rights reversion experience with us in the following Q&A.
Authors Alliance: How did you first learn of rights reversion?
James O’Donnell: In the course of becoming involved in digital publishing in 1990 and after (and founding the oldest open access online journal in the humanities, Bryn Mawr Classical Review), I had been around conversations about rights and about signing away as little as you need to [in a contract]. The book in question, Augustine: Confessions (Oxford University Press 1992, 3 volumes) was in my mind at the time, so I familiarized myself [with rights reversion].
My book was expensive and specialized, with a first print run of 1,000 copies and a provision that I would get royalties if it sold more than 600 copies. The book sold for $300, or about $550 in 2018 dollars. I figured this meant that OUP expected to sell 600 copies, or a few more. In fact it had a reprinting of 250 copies and sold out all of those. In 1995, my editor at Oxford told me with regret that she had been unsuccessful in getting a paperback edition, so the book was going out of print. I was remarkably cheerful about this prospect [because it made the book eligible for reversion].
AuAll: What motivated you to request your rights back?
JJO: I had been speaking of digital “postprints” for some time and had in fact posted an earlier book of mine from 1979 (long out of print) in that way. The Oxford volumes of Augustine’s Confessions were meant to be of high value for scholarly users, from student to researcher, and I was well aware that use was naturally limited to library copies, often non-circulating. I wanted better.
AuAll: Were you eligible to exercise a clause in your contract granting reversion rights?
JJO: Yes, I wrote a simple letter to Oxford University Press. There was a clear clause in the contract.
AuAll: How has the reversion helped you? What have you been able to do with your book since reversion?
JJO: First, I worked with a consortium of scholars doing Internet publishing in classics to create a digital online version of my edition of Augustine’s Confessions, now hosted at the Stoa Consortium and at Georgetown University (my former institution) on mirror sites. This resource has been available for about twenty years and is regularly praised as a teaching and research tool of considerable value.
Then, in about 2000, OUP decided to have another publisher, Sandpiper Books, do limited run reprints (not yet print-on-demand) of some of their “greatest hits” of scholarly publishing in classics, and chose to include Confessions in the series. When they told me they intended to do this, I reminded them that the rights were now mine, and we proceeded to agree on terms for licensing this specific use for a modest stipend.
Around 2012, OUP decided that the book indeed had legs and made it available in paperback. It has been in print in that format since 2013 for $179, or about one-third the original hardcover price. It was surely the case that the digital presence with open access on the web kept my book in mind and created the market for those who decided they needed a print copy. It is highly unlikely that the book would have had better sales without the e-version (and quite likely that it would not have done as well).
AuAll: What advice do you have for other authors who might want to pursue a reversion of rights?
JJO: Authors should know what they want out of their books, other than the traditional thin stream of royalties that academic books receive. They should inform themselves about their rights, sign rights away carefully at the outset, and then keep an eye on just what outcome they are looking for. My sense is that with the ease of print-on-demand technology, many books may effectively never go “out of print,” requiring a different kind of strategy and vigilance for authors.
We couldn’t agree more! Authors should be informed about their rights, and have strategies in mind for using them wisely—not only at the time a book deal is signed, but in future years, as well. To that end, we recommend two of our educational resources to help authors understand what exactly rights reversion is, how reversion fits into a book publication contract, and how to successfully secure a reversion of rights.
If, like Professor O’Donnell, you have previously published books and wish to learn more about regaining your rights, visit our Rights Reversion resource page, where you’ll find our complete guide to Understanding Rights Reversion, letter templates for use in contacting your publisher, and a collection of reversion success stories from other authors who successfully regained their rights and made their works more widely available.
If you currently have a book in progress and have not yet placed it with a publisher, we also recommend visiting our Publication Contracts resource page, which features our new guide to Understanding and Negotiating Book Publication Contracts. Knowing about rights reversion and reversion clauses before you sign your publication contract can help to clarify the conditions for reversion and pave the way for a successful reversion of rights in the future.
In September 2018, Authors Alliance joined with other organizations including the Digital Public Library of America, Internet Archive, and UC Berkeley Library to sign on to a statement in support of Controlled Digital Lending (CDL). CDL offers a good-faith interpretation of copyright law for libraries considering digitizing works in their collections and circulating the digitized title in place of a physical one. The statement is accompanied by an in-depth white paper by David Hansen and Kyle K. Courtney analyzing the legal arguments for CDL.
Under the CDL’s digitize-and-lend model, libraries make digital copies of scanned books from their collections available to patrons (the hard copy is not available for lending while the digital copy is checked out, and vice versa). A library can only circulate the same number of copies that it owned before digitization. Like physical books, the scanned copies are loaned to one person at a time and are subject to limited check-out periods.
System design choices and collection decisions, like selecting books that are orphaned (works for which the copyright owner cannot be identified or located), books that are out of print, or books that are non-fiction or primarily factual enhance the fair use arguments that underpin CDL. As Hansen and Courtney explain, CDL is “not meant to be a competitor to Overdrive, nor a replacement for licensing e-books of best-sellers or other currently licensable e-book content,” but CDL is particularly helpful to “address access to the large number of books published in the ’20th Century black hole’ that have little hope of otherwise bring made available to readers online.”
Libraries are now using CDL to lend books, so we asked our members to share their views on their books being made available through CDL. Here’s what they had to say:
CDL benefits authors, readers, and researchers
I was thrilled to see one of my books available through Controlled Digital Lending at the Internet Archive. It’s an older book that’s relatively hard to find, and I’m so pleased that people can get access to it today. CDL is an excellent way for authors like me to reach readers. But it’s also a way for authors to do research without having to visit remote archives or libraries. I’ve done a great deal of historical research on out-of-print books and periodicals through CDL programs, and I’m incredibly grateful for it.
– Annalee Newitz Author and Journalist
CDL helps to increase access to out-of-print and otherwise unavailable works
Controlled Digital Lending provides authors with an opportunity to reach a broad public, especially if their books have gone out of print. It does not cut down on their royalties any more than sales to libraries do, and by making works widely available, it can give them new life. Several of my books are accessible through CDL, and I am delighted with the result.
– Robert Darnton Professor of History and University Librarian Emeritus, Harvard University
CDL is a reasonable interpretation of fair use
CDL is beneficial for all authors whose readerships are not served by the narrow interpretation of the fair use doctrine that is the foundation of various objections to CDL. Library lending must move forward into the digital future, and part of that future is getting more authors’ works into the hands of more readers, which CDL helps to make possible. Only a few authors’ needs are served by restrictive models of access: most of us need all the help we can get connecting readers to our works! In addition, libraries are among the most important institutions in contemporary society, representing freedom of access to information. How many other ideals-driven public institutions are as alive as the library world? The CDL is an important 21st century expansion of that mandate. Let objecting authors remove their works, and let the rest of us share our books with the reading public through library systems.
– Megan Prelinger Author Inside the Machine: Art and Invention in the Electronic Age (W.W. Norton, 2015) Another Science Fiction Advertising the Space Race (Blast Books, 2010)
CDL can alleviate the gaps in availability brought about by overly long copyright terms
In the treacherous, fearful underworld of Rights and Permissions I am often confused: I know that the Evil Mouse, manipulating the late Rep. Sonny Bono and others, extended copyright beyond reason. My feeling is that if my books bring royalty money to my children after I am gone, that is good. But as to my grandchildren—I love them beyond measure, but let them write their own books.
I don’t want to deprive any fellow-writers of income from their creations. Those property rights sometimes conflict with the author’s desire—strong in us poets—to be read. Those conflicting values: to be valued, and to be read—are part of what makes the terrain so scary.
May Controlled Digital Lending, as a protective guide there, be wisely Controlled.
– Robert Pinsky former U.S. Poet Laureate
CDL helps authors reach audiences
I write so that people will read my books. That’s reason enough for me to support CDL.
– Paul Brest Former Dean and Professor Emeritus (active) at Stanford Law School
