Pushing Libraries and Archives to the Edge of the Law

Electronic copy available at: http://ssrn.com/abstract=1659853

Pushing Libraries and Archives to the Edge of the LawBobby Glushko

I. Intro

The ability to digitize hard copies, the proliferation of born digital content, and access to online

distribution holds the promise of improved access to archival materials. Despite these advances,

libraries and archives are increasingly hindered in providing this access by the legal issues surrounding

their collections. However, this unfortunate problem can be resolved with a mixture of good policy,

careful action, clarification of uncertain legal implications, and a reliance on the protections afforded to

libraries and archives by the law.

This paper explores the legal issues faced by archivists and librarians in digitizing and distributing their

materials. Through a discussion of current archiving practices, this paper walks readers though the

relevant sections of the copyright act, as well as other implicated areas of the law. By showing

potential sites of legal conflict, engaging difficulties with seeking permission to use library and archival

content, and suggesting areas where archivists can push the boundaries of their rights more

aggressively, this paper provides a glimpse of the legal landscape surrounding digital archiving, and

offers suggestions on how to successfully navigate it. It is my sincere hope that this effort can

empower librarians and archivists to make full use of their collections, to assert the full scope of their

rights under the law, and to become advocates helping to shape the national discussion over the future

of digital collections.

This paper does not seek to engage the intricacies of fair use, engage in a normative debate on the

morality of copyright law as it is currently constructed, or provide suggestions or recommendations for

legislative or judicial action. There are many excellent pieces of scholarship which accomplish the

above tasks exceedingly well, and it is my belief that I can better serve archives, libraries, and the law

in general by providing a clear look at the state of the law in regards to archiving unpublished and

digital content.

The Problem Facing Libraries and Archives in the Digital Age

Technology has vastly outpaced theoretical and legal understanding in terms of making archival

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Electronic copy available at: http://ssrn.com/abstract=1659853


materials publicly available online, with the physical ability to make collections available being

continually frustrated by a series of confusing and contradictory legal and policy principles. As such, it

is best to separate the issue into a few discrete areas. First, the law itself is not terribly clear; there are

many overlapping and potentially conflicting sections of the copyright act, which has been described as

a "swollen, barnacle-encrusted collection of incomprehensible prose."1 This lack of clarity in the law

itself is not helped by the massive availability of misinformation; with many stakeholders, opposing

intellectuals, unskilled commentators, and general uncertainty, it is extremely hard for a layperson to

get their hands on reliable information. When misinformation about confusing subjects abounds, and

the penalties for missteps are so extreme, it is no wonder that actors are hesitant to move forward with

their projects.

A Simple Plan to Advance Libraries, Archives, and Copyright

In order to help rectify this situation, the goal of this paper is to lay out a simple plan to help archivists

and librarians make aggressive, full, uses of their collections, and to advance the law in the process. In

order to do this, I advise any interested actor to take four basic steps, which I will detail in greater depth

below. The steps are as follows.

1. Arm yourself with an understanding of the basic law. Yes, the law is confusing, but there are

some basic principles of which you should be aware. Many highly intelligent scholars and

professionals have done some impressive work to make this information available, and I will do

my best to make this scholarship available to you. At the very least, you should be familiar with

the rights and responsibilities laid out in the copyright act, with particular emphasis on sections

106, 107, and 108. Understanding the law will help you plan your project, create good facts,

and effectively make use of the protections provided to you under the US code.

2. Carefully plan your project. Understand what it is you want to accomplish, understand where

your strengths as an organization lie, and work to make full use of them. Furthermore, certain

protections or defenses provided by the copyright act and other sections of the US code require

a certain conceptual grounding to be applicable and effective. And finally, having a good plan

1 Nate Anderson, Cleaning the Barnacles from the SS Copyright, Ars Technica, available at http://arstechnica.com/tech-policy/news/2010/03/cleaning-the-barnacles-from-the-ss-copyright.ars

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http://arstechnica.com/tech-policy/news/2010/03/cleaning-the-barnacles-from-the-ss-copyright.ars

http://arstechnica.com/tech-policy/news/2010/03/cleaning-the-barnacles-from-the-ss-copyright.ars


at the outset will make it far easier for you to create good facts to use to your advantage, and

will help you immeasurably as you try to push the boundaries of the law.

3. Surround yourself with an aura of “good facts.” Good facts are at the heart of successful

aggressive legal endeavors, they arise from and reflect a mindset that is responsible and clearly

ordered, and they are the best defense in the unfortunate event of a lawsuit. You can create

good facts by demonstrating good faith compliance with the law, by undertaking projects that

advance the Constitutional rationale for providing copyright and the fair use limitations thereto.

Remember good facts, work them into your plans, your actions, and your attitudes, and they

will repay you a thousandfold.

4. Finally, you should remember that there are elements of copyright law that are very much your

friends, and you can feel free to rely on the protections provided to you by them. Much of the

“progressive” non-legal literature presents copyright law as an obstacle that must be overcome,

and while there is a kernel of truth in that complaint, it misses and minimizes the real

protections that copyright law provides. Additionally, this attitude will be helpful if and when

you interact with legal professionals; your general counsel is your friend, and respect for the

law is a vital component of a successful project.

II. The Legal Section, aka “Arm Yourself with a Basic Understanding of the Law.”

Understanding the protections and limitations provided by the law is vital to making full, legal, uses of

the materials in an organization's collection. The following sections discuss various aspects of

applicable laws, focusing on the sections of the Copyright Act which are particularly pertinent to

libraries and archives. It then examines other areas of law that impact archives, and concludes with a

short section on the benefits and difficulties of securing permission and licenses.

Section 102: What does Copyright Protect?

The essence of copyright is contained in section 102, which reads as follows:

“copyright protection subsists, in accordance with this title, in original works of

authorship fixed in any tangible medium of expression, now known or later developed,

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from which they can be perceived, reproduced, or otherwise communicated, either

directly or with the aid of a machine or device. Works of authorship include the

following categories: (1) literary works, (2) musical works, including any

accompanying words, (3) dramatic works, including any accompanying music, (4)

pantomimes and choreographic works, (5) pictorial, graphic, and sculptural works, (6)

motion pictures and other audiovisual works, (7) sound recordings; and (8) architectural

works.”2

There is a lot going on in this paragraph, and many of the terms have highly specific meanings, which

are defined in section 101.3 For the purposes of a library or archive project, the main takeaways are

that copyright protection is given to works of authorship, which are fixed in a tangible medium.4

Works of authorship are fairly simple to understand, basically, any type of creative expression that fits

even generally into the above eight categories is a work of authorship.5 This limitation may be

important to some libraries and archives, as work without any spark of creativity, such as a phonebook

or a database, is not copyrightable subject matter under section 102.6 Fixation is a little more difficult,

but for our purposes, a work can be understood to be fixed when it “is sufficiently permanent or stable

to permit it to be perceived, reproduced, or otherwise communicated for a period of more than

transitory duration.”7 While there have been some interesting cases and writings about where the

threshold of fixation lies, for most library and archival purposes, all works in the collection can be

considered to be fixed.

Sections 106, 107, and 108, the Exclusive Rights and the Limitations Thereto

Now that we have engaged the basic definition of what kinds of works receive copyright protection,

there are many other sections of the Act are particularly relevant to our inquiry, including 106, which

lists the specific rights that copyright law grants authors, section 107 which explains the limitations

2 17 U.S.C. § 102.3 Section 101 of the Copyright Act provides definitions for most of the commonly used terms. 17 U.S.C. § 101.4 17 U.S.C. § 102.5 In a unanimous ruling, the Supreme Court concluded in Feist Publications., Inc. v. Rural Telephone Service Co., that in

order to merit copyright protection, a work had to be possessed of at least a minimal quantum of creativity. Feist Publications., Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) at 358.

6 Id. 7 17 U.S.C. § 101.

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provided by fair use to those rights,8 and section 108, which provides qualifying libraries and archives

with a further set of limitations to the rights laid out in 106.9 These sections are important reading to an

archive or library professional, and anyone attempting a project should be sure to at familiarize

themselves with them. Let's briefly discuss the relevant aspects of section 106, 107, 108.

Section106

Section 106 lists the exclusive rights that the copyright act reserves to authors.10 Basically, this is a list

of things that you cannot do unless you are the copyright holder. The list contains the following rights:

1) reproduction2) preparing derivative works3) distribution4) performance5) music performance6) digital audio transmission

These rights are also fairly easy to understand. The first right, the right to control reproduction of a

work, grants the copyright holder the ability to prevent unauthorized parties from making copies of

their work. For example, as an archivist or a librarian, you cannot make a hundred copies of the new

Twilight novel for your collection, to do so would infringe on the right to control reproductions. The

second right is the right to control the preparation of derivative works, which works “based upon one or

more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization,

motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form

in which a work may be recast, transformed, or adapted.”11 Continuing with the above example, the

right to control the preparation of derivative works prevents someone from making a short animated

film using the characters and scenes from Twilight. The third right is the right to control distribution.

While distribution is not defined in section 101, it can be understood in by its common definition.

Again, an example of this would be lending out the hundred copies you made.12 The final three rights

8 17 U.S.C. § 107. There is a nearly sectarian conflict among some copyright scholars as to whether fair use is a “right” or a defense to infringement. This paper will avoid the issue entirely bu referring to fair use as a limitation.

9 17 U.S.C. § 108.10 17 U.S.C. § 106.11 Id. 12 There is a special exemption to the right to control distribution that is particularly pertinent to libraries and archives: the

first sale doctrine. Located in section 109 of the Copyright Act, the first sale doctrine provides that some of the exclusive rights provided in section 106 expire when the rights holder sells a work. That is, at the time of the first sale,

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are very similar in nature; they grant the copyright holder the right to prevent their musical, theatrical,

or other types of performed works from being performed live or via transmission.13 Examples of this

would be reading and acting out the script to Twilight, or by streaming the Twilight soundtrack from

your computer to another.

It is entirely possible that your archive or library will want to do something that touches upon any one

of these exclusive rights, and under the language of section 106, you will be unable to do so.

Fortunately, there are many sections of the copyright act that carve spaces out of the rights provided in

106, and many of the limitations provided therein work to allow the activities that a library or archive

may wish to undertake. The following two parts of this paper engage two of these limiting sections.14

Section 107

The second section that an archivist or librarian should possess at least a basic understanding of is

section 107, which details the limitations to the exclusive rights laid out in section 106. Section 107

states that:

“(n)otwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”15

Section 107 also lists a four factor test to determine whether a given use is a fair one, the factors

being:

(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

the rights holder no longer has the right to prevent the distribution of the purchased copy or to prevent its display. 17 U.S.C. § 109.

13 17 U.S.C. § 106.14 There are, in fact, fifteen main sections of limitations, found between sections 107 and 122 of the copyright act.

However, 107 and 108 are most relevant for archives and libraries. 15 17 U.S.C. § 107.

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http://www.copyright.gov/title17/92chap1.html#106a

http://www.copyright.gov/title17/92chap1.html#106


(4) the effect of the use upon the potential market for or value of the copyrighted work.16

The four factors are relatively straightforward: the first factor deals with the nature of the use, with non

profit and educational uses being more likely to be a fair use, the second factor is focused upon how

creative the underlying work is, under this factor, the use of a novel is less likely to be fair than the use

of a phonebook, the third factor asks how much of the work was used, and the fourth focuses on how

the use will impact the market for the underlying work. There has been extensive scholarship

analyzing the relationship between fair use and libraries and archives.17 This is important, because

determining whether a particular use is fair is extremely difficult and hard to rely upon, although there

have been some interesting attempts by academics and librarians to create tools that assist in making

bright line decisions.18 Notwithstanding those tools, understanding and relying upon fair use is not

easy, although often necessary for a library or archive to function. Fortunately for libraries and

archives however, they have another section which works alongside section 107, namely, section 108.

Section 108

No section is more important to librarians and archivists than section 108, which explains the

limitations to the exclusive rights of rights holders when their works are being used by a library or an

archive. Section 108 is substantial. The following section of the paper engages the elements of section

108 that are most relevant to archivists and librarians. Becoming familiar with these aspects of the law

will enable you to most effectively make use of your collections and push the boundaries of the law.

First of all, it is important to consider what a library or archive is under the Act. Generally, an archive

or library under section 108 should be thought of as a physical location. The Act occasionally refers to

the “premises” of the library, which is fairly strong evidence that the intention of the drafters was to

limit the section to locations and physical buildings as opposed to digital libraries, and this is not

surprising, given that the Copyright Act was drafted before digital libraries were a reality.19 That said,

16 Id. 17 See, e.g., Hirtle, Peter B. Copyright and Cultural Instititions, Guidelines for Digitization for U.S. Libraries, Archives,

and Museums, Cornell University Library, 2009. See also, Jensen, Mary B., Does Your Project Have a Copyright Problem? A Decision Making Guide for Libraries, Mc Farland, 1996

18 While these tools can in no way substitute for a reasoned legal analysis, one of the best examples is the Fair Use Evaluator at http://www.librarycopyright.net/fairuse/.

19 Passed into law in 1976, the Copyright Act predated nearly all aspects of computing as we see them today. It has not

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http://www.librarycopyright.net/fairuse/


the section 108 study group has considered the definitional question and decided to add that “Libraries

and archives should be required to meet additional eligibility criteria. These new eligibility criteria

include possessing a public service mission, employing a trained library or archives staff, providing

professional services normally associated with libraries and archives, and possessing a collection

comprising lawfully acquired and/or licensed materials”20 It's unclear what affect this language would

have on the law if implemented; it does not change the premises language of the original act but it does lay

out additional criteria that a library like the internet public library would meet. Assuming you've crossed

the definitional hurdle, what then does section 108 allow you to do? The following section discusses

six main ways that section 108 affects libraries and archives.

First things first. A library or archive must be open to the public or to non affiliated researchers in the

case of a private archive to be eligible for the protections provided by section 108.21 Furthermore, a

library or archive must always make sure they are not copying indiscriminately22 or for commercial

purposes23 and must always ensure that they place a copyright notice on each work.24 These threshold

requirements are non-negotiable, and apply to all the different protections provided by Section 108.

That is, even if an archive is making a copy of a published work for preservation or replacement, an

activity that is permitted under section 108(c), the archive must still affix a copyright notice and

comply with the other requirements of 108.

Second, as we see in sections 108(b), 108(d) &(e), and 108(g), the protections provided by section 108

only apply when the library or archive is making a copy for preservation,25 for a patron's personal

proven immensely capable of adaptation to a more digitized world either, and attempts to modernize it have arguable done more harm than good. For example, the Digital Millennium Copyright Act, the most modern substantive revision to the Copyright Act, has met with vast amounts of criticism and derision. For more on the issues with the DMCA, see Unintended Consequences: Twelve Years Under the DMCA, Electronic Frontier Foundation, available at http://www.eff.org/wp/unintended-consequences-under-dmca.

20 Section 108 Study Group Report, Executive Summary, available at http://www.section108.gov/docs/Sec108ExecSum.pdf. Emphasis in original.

21 17 U.S.C. § 108(a)(2).22 17 U.S.C. §108(g), §108(g)(2)23 17 U.S.C. §108(a)(1) 24 17 U.S.C. §108(a)(3) 25 17 U.S.C. §108(c)

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http://www.section108.gov/docs/Sec108ExecSum.pdf

http://www.eff.org/wp/unintended-consequences-under-dmca


research,26 or for participating in the inter-library loan system.27 Copies made for other purposes are

not permitted under section 108, although it is very important to note that the protections provided in

section 107 may apply.28

Third, the object to be copied must be one of a limited class of works, in addition to falling into the

above allowed copying rationales. The type of work permitted to be copied depends on the reasons for

copying it. For example, if an unpublished work is being copied for preservation, then the archive or

library can copy any type of materials in their collections, including but not limited to recordings,

pictorial works, graphic works, written materials, computer programs, and multimedia objects.29 When

there are multiple elements to a work, such as a scholarly article with embedded images, the images

may be copied as part of the larger whole; this can be confusing, as objects that cannot be copied

individually can be copied if they are piece dependent of another work.30

Fourth, the archive or library must only copy as much of the work as is necessary for a reasonable use.31 The reasonableness of a use is dependent on the rationale for the copy. Obviously, it would be

reasonable and necessary to copy the entirety of a work in order to preserve it.32 Similarly, a

replacement copy of a work not available unused at a fair market price could also be reasonably

reproduced in its entirety.33 However, copies for the purpose of promoting and assisting with

scholarship may have to be more limited. While it may be reasonable to copy an article out of a book

or journal, it may, for example, be significantly less reasonable to copy the entirety of a generally

available multi-volume set of books.34

Fifth, the archive or library must make sure that the request for the copy itself is legitimate. Again,

26 17 U.S.C. §108(d)(1-2), 17 U.S.C. §108(e)(1-2) 27 17 U.S.C. §108(g)28 This is a very important issue, and will be addressed below. Suffice it to say at this point, that the limitations in 107 and

108 can be though of as functioning concurrently as opposed to in seriatum. 29 17 U.S.C. §108(c)30 17 U.S.C. §108(i) 31 17 U.S.C. §108(d)32 17 U.S.C. §108(c)33 Id. 34 The act refers to a “small part” of a larger copyrighted work. This is obviously relative, but it seems likely that the

above example would qualify as more than a small part. 17 U.S.C. §108(d)

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copies for preservation or replacement are the most likely to be legitimate; if a librarian or archivist

feels that the material is damaged or in danger of being damaged or destroyed, then a copy can be

made.35 Patron initiated copies are a bit more tricky. In order to make a copy of a work for a patron, a

library or archive must not possess knowledge that the work is to be used for any purpose besides

scholarship.36 While this is a different, and lesser, threshold that knowing that the work *is* going to

be used for scholarship, it does place a limit on the situations where a library or archive can make a

copy. Inter-library loan requests also have some minor restrictions; the institution has to place

reasonable limits on how many copies they can make from a single publication.37

Sixth, and finally, a library or archive cannot always copy and distribute a work in a digital format if

that work was not originally digital. A non digital work can only be digitized under the following

circumstances: if it is unpublished and the copy is being made for preservation, if it is a replacement

copy of a published work and is unavailable unused at a fair price, or if the work is in the last twenty

years of its term of protection, is not available at a fair price, and is not subject to normal commericial

exploitation.

Section 107 and 108 combined

As the above section illustrates, relying on section 108 is not always easy, and understandably so.

Kenneth Crews, Director of the Copyright Advisory Office at the University of Columbia states, that

Section 108 is a “compromise among competing interests, typically permitting libraries to make certain

uses of copyrighted works, while setting limits and conditions to protect the interests of copyright

owners, publishers, and other rights holders,”38 and as such compromises often are, it is a confusing

mash of competing interests with no clear path for making use of its protections. However, when taken

together with section 107, the protections provided by section 108 seem markedly more robust.

It is important to note that sections 107 and 108 operate alongside each other, and provide

35 17 U.S.C. §108(c)36 See Hirtle at 119 for a good discussion of what constitutes “notice” that a work is intended for use in some other manner

than for scholarship.37 17 U.S.C. §108(g)(2)38 Study on Copyright Limitations and Exceptions for Libraries and Archives prepared by Kenneth Crews, Director,

Copyright Advisory Office, Columbia University

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complimentary protections. For example, if a library is undertaking a digitization project, they will

likely be able to rely part on section 107 and part on section 108. Imagine, if you will, sections 106,

107, and 108 as three partially overlapping circles, and a desired action as a box laying on top of them.

If the box lies entirely within the 107 and 108 circles, then the use is permitted. If any part of the box

lies exclusively within the 106 circle, then the use is infringing. In this way, 107 and 108 work

together, buttressing each other and functioning in harmony.

The Digital Millennium Copyright Act

Signed into law by then President William Jefferson Clinton in October 1998, the Digital Millennium

Copyright Act ( DMCA) makes several important amendments to of the Copyright Act.39 While many

of these changes have little to do with libraries and archives, such as the Computer Maintenance

Competition Assurance Act40 and the Vessel Hull Design Protection Act,41 one element of the DMCA is

particularly relevant: Section 103 of the WIPO Copyright and Performances and Phonograms Treaties

Implementation Act42

Commonly know as the anti-circumvention provisions of the DMCA, section 103 restricts the use,

creation, and distribution of anti-circumvention technologies and techniques.43 Of particular

importance is subsection 1201, which makes it a criminal act to circumvent or to provide the means to

circumvent access and copy prevention controls.44 This is a particularly important element of the law,

because it can potentially limit the scope of actions a library or archive can undertake with an object

they possess. For example, a video game archive would likely be in violation of section 1201 if they

were to bypass the copy protection on a game they owned.45 Furthermore, while there is a provision in

39 There are many elements to the Digital Millennium Copyright Act. The changes to ISP Liability can be found at 17 U.S.C. § 512, and the anti-circumvention provisions at 17 U.S.C. § 1201-1205. Other elements, such as the protection for boat hulls, are outside the scope of this effort.

40 The Computer Maintenance Competition Assurance Act modified sections of 17 U.S.C. § 117, largely to overturn elements of the 9th Circuit's decision in MAI Systems Corp., v. Peak Computer Inc., 991 F.2d 511 (9th Cir. 1993

41 Vessel Hull Design Protection Act added sections 1301-1332 to 17 U.S.C. Both this section and the section mentioned in the above footnote are industry specific carve outs, and have no real applicability outside their pet industries.

42 Section 103 adds sections 1201-1205 to the Copyright Act. 17 U.S.C. § 1201-1205.43 Id.44 Id.45 That is, using a crack or a hack to remove the digital rights management software from an owned copy of a videogame

would be a violation of section 1201. Arguably, even copying a sheet of passwords or a specialized pass key generating

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section 1201 by which parties, such as archives or libraries can seek an exemption to the circumvention

restrictions, these exemptions must be renewed every three years.46 Archives and libraries currently

enjoy an exemption to this section, but since it has a three year renewal cycle, care should be made to

keep abreast of the state of the law.47 In the absence of a clear exemption, librarians and archivists

should take care to follow the letter of the DMCA, notwithstanding any seemingly applicable

limitations found in sections 107 or 108.

The Likelihood of Catastrophic Damages

There have been some incredible numbers in the headlines regarding damages for copyright

infringement. For a few years, it was almost impossible to avoid hearing about 5, 6, or even 7 figure

damage awards being handed down by the courts for copyright infringement.48 While these suits have

mostly stopped, and they were targeted at music downloaders as opposed to libraries and archives, it's

still something that raises concerns in many people's minds. And rightfully so; the prospect of a multi

million dollar judgment for copyright infringement would not surprisingly reduce the willingness of a

library or archive to undertake an aggressive and potentially risky project. This comes as no surprise,

seeing as how chilling copying was the very intent of the suits in the first place. Given these terrifying

numbers, what is an institution to do?

The first action a concerned library or archive should do in regards to catastrophic damages is relax.

While the statutory damages provisions in the copyright act are real and enforceable, rights holders will

likely be loath to seek a multimillion dollar settlement against an archive that mistakenly infringed on

their copyright rights. Lawsuits can be crushingly expensive to bring, even for actors with deep

pockets, and your average library is not likely to have assets sufficient to recover the cost of bringing

suit.49 Even if your institution is part of a large corporation or is state funded, it still may be difficult or

device would be a violation as well.46 17 U.S.C. § 1201(c)47 Details of proposed and granted exemptions can be found at the Copyright Office's rulemaking site, available at

http://www.copyright.gov/1201/ 48 For a good overview of these lawsuits, see Grant Robertson, The RIAA v. John Doe, a laypersons guide to filesharing

lawsuits, The Digital Music Weblog, available at http://digitalmusic.weblogsinc.com/2006/08/07/the-riaa-vs-john-doe-a-laypersons-guide-to-filesharing-lawsui/.

49 See Hirtle at 198 for a rundown of the costs of some recent copyright litigation.

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http://digitalmusic.weblogsinc.com/2006/08/07/the-riaa-vs-john-doe-a-laypersons-guide-to-filesharing-lawsui/

http://digitalmusic.weblogsinc.com/2006/08/07/the-riaa-vs-john-doe-a-laypersons-guide-to-filesharing-lawsui/

http://www.copyright.gov/1201/


impossible for a plaintiff to recover significant resources from you. There are two provisions of the

copyright act that limit the remedies available for infringement, and one Constitutional argument that

limits the remedies available against state institutions.

First, section 504(c)(2) of the copyright act states that:

“the court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was: (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work...”

Basically, this section of the copyright act prevents librarians or archivists, or their institutions, from

having to pay catastrophic damages if they had a reasonable belief that their action was a fair use.50

This is a massive piece of protection from the hammer of financial ruin, and should be cause for well

meaning libraries and archives to relax.

The second limitation to damages under the copyright act is found in section 412, which prevents the

awarding of statutory damages and attorney's fees when the “infringement of copyright in an

unpublished work commenced before the effective date of its registration.”51 While this provision

applies only to unpublished works, it does prevent the award of damages for the infringement of

unpublished, unregistered works, such as many types of ephemera found in personal archives or

historical libraries. This may prove to be a useful limitation for archives and libraries that deal in such

matters, as it may be impossible to find the owners of such works to secure permission.52

Finally, state actors have an important limitation to damages for infringement, the doctrine of sovereign

immunity. Arising out of the 11th Amendment, the doctrine of sovereign immunity has been interpreted

by the courts as to give state governments and their institutions complete immunity from suits for

50 It is important to note that this section does not provide a defense when the reasonable belief that their action was permitted arose from an understanding of section 108. We will discuss this point and points like it in the creating good facts section below.

51 17 U.S.C. §41252 This problem, the so called “Orphan Works” issue, has been written upon extensively. Public Knowledge has a

substantial and well linked primer on orphan works, available at http://www.publicknowledge.org/issues/ow.

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http://www.publicknowledge.org/issues/ow

http://www.copyright.gov/title17/92chap1.html#107


intellectual property infringement.53 While this by no means whatsoever should be used as a blanket

license to infringe for both moral and practical grounds, (some courts have ruled that employees, the

agents of the states, who actually perform the infringement, are not immune from suit, and besides,

wanton stealing of intellectual property is just wrong),54 it does provide state archives and libraries with

another layer of insulation against catastrophic financial harm.

Overall, while seemingly terrifying, statutory damages are something of a paper tiger for well meaning

libraries and archives who act in a good faith belief that their actions are permitted by law. Even

beyond the above limitations, the vast majority of the time a copyright owner thinks that their

copyright has been infringed, they will let you know and ask you to stop. A reasonable response at this

stage of the process, perhaps an apology accompanied by a request for permission, can leave everyone

unharmed, with no need to take further, far more dramatic steps.

Other Legal issues?

While most certainly the primary legal issue that a library or archive will face in making aggressive use

of their materials, copyright is not the only one. Depending on the nature of the project, you may have

do deal with other legal issues, such as privacy or trademarks. While these issues will not assert

themselves, it is important to be aware of them, and to take them into account.

Librarians and archivists face a balancing act between privacy and access. For example, in the Society

of American Archivists “Code of Ethics for Archivists” this tension is highlighted in the interactions

between sections six and seven of the code, which state “Archivists strive to promote open and

equitable access to their services and the records in their care without discrimination or preferential

treatment...Archivists recognize their responsibility to promote the use of records as a fundamental

purpose of the keeping of archives,”55 and “Archivists protect the privacy rights of donors and

53 The most recent example of a state institution succeeding with this argument is Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. (06cv 1682 JAH, SDCA February 5, 2008), wherein the plaintiff's claims for damages were ruled unconstitutional and which was ultimately settled for a trivial fee.

54 While states themselves are immune from suit, many states allow suits to proceed against their employees if they engage in copyright infringement. Hirtle at 106.

55 The Society of American Archivists, Code of Ethics for Archivists, available at http://www.archivists.org/governance/handbook/app_ethics.asp.

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individuals or groups who are the subject of records. They respect all users’ right to privacy by

maintaining the confidentiality of their research and protecting any personal information collected

about them in accordance with the institution’s security procedures.”56

Clearly, if an archive or library is to be of any use, it must be accessible. But accessibility raises issues,

and the above tension between sections of the archivists' code of ethics illustrates those issues.

Fundamentally, all archivists must balance the right to privacy with the right to access, and this is made

more complicated by the fact that the right to privacy is more than just a moral issue: there is a legal

right to privacy under US law as well. Archivists should use their best judgment when confronted with

issues or requests that may implicate privacy rights, and should make sure to understand and follow the

applicable law.

It is also possible, although unlikely, that an archive project could run into issues with trademark law.

Trademark law protects “words, names, symbols, sounds, or colors that distinguish goods and services

from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike

patents, can be renewed forever as long as they are being used in commerce.”57

Any library or archive that deals with commercial goods will run into trademarks in the normal course

of its operation. This is only likely to be a problem if the archive engages in commercial uses of the

marks, outside of traditional uses. While Google and the Internet Archive have run into some issues

regarding trademarks, most academic, private, and commercial archives are unlikely to do so.

A Note on Permission

Permission is, obviously, an an institution's best friend. If you can easily acquire a broad license to

make use of a copyrighted work, then by all means, do so. Situations where permission may be easy to

acquire are when the author of the work is a close partner with the archive, when the author has made a

habit of releasing works under licenses such as BSD or CC. Furthermore, when your institution is

beginning to build a collection, it is an excellent idea to plan ahead and think of what types of

56 Id. 57 U.S. Patent and Trademark Office Glossary, available at http://www.uspto.gov/main/glossary/index.html#trademark.

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permissions you would like to and have a reasonable ability to, acquire. For example, contracts with

publishers or booksellers can often be negotiated; even large publishers like Scholastic are willing to

grant licenses to translate their works into endangered languages, something that would be

infringement under the copyright act.58 Similarly, if you are collecting materials from individuals with

whom you are in contact, taking a second to ask them to grant you a broad license to use those

materials will pay you back handsomely if you ultimately decide to make new uses of them.

However good the above advice may be, permission is not always very easy to acquire. Authors may

not be easily located, they may be diffuse, there may be a multitude of authors to ask, or they may

simply be unwilling to provide permission for a variety of reasons. In her paper, Only With Your

Permission: How Rights Holders Do (or Don’t) Respond to Requests to Display Archival Materials

Online, Dharma Akmon undertook a study of response rates to a large archive of unpublished materials

at the “Jon Cohen AIDS Research Collection digitization project at the University of Michigan Library

and the School of Information, which took place from 2007-2009.59 The Cohen collection contains

13,381 items, 5,463 (approximately 11 linear feet) of which are protected by copyright held by 1,377

unique copyright holders.”60 The results were, at least in terms of how easy it is to acquire permission,

disappointing. Even though the archive had preliminary contact information for the rights holders of

the vast majority of the materials, Akmon found “it took staff 70.3 minutes (on average) per rights

holder to gather contact information and contact and negotiate with rights holders,”61 the archive was

only able to secure permission for approximately sixty percent of their materials.62 It is important to

note, however, as further evidence to get permission at the outset of a project, Akmon also found that

most of the “no permission” instances were where the rights holder made no response. When non

responders were taken out of the calculation, the permission rate jumped to over ninety percent.63

58 Howard Kimewon and Margaret Noori, Professors of Ojibwe language and studies at the University of Michigan have had great success in their efforts to request permission to make translations of popular children stories into Ojibwe. Interview with Howard Kimewon and Margaret Noori, conducted 3/2/10, on file with author.

59 Akmon, Dharma, Only With Your Permission: How Rights Holders Do (or Don’t) Respond to Requests to Display Archival Materials Online, publication forthcoming.

60 Akmon at 1.61 Akmon, at 16.62 Akmon at 19.63 Akmon at 21.

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III. Getting the Basics Right: Carefully Planning your ProjectPlanning your project well from the outset will pay massive dividends as you proceed. A carefully

planned project will have a clear delivery goal, a clear scope, a legal strategy, and a good understanding

of risk tolerance. Working to understand your materials and the state of your organization will enable

you to more likely have a successful project.

Goals of the project

The goals of an archive or library project can be broadly defined into three main categories:

preservation, scholarship, or access. Each category has a different set of risks, requirements, and legal

justifications. Clearly understanding the type of project you wish to undertake will help you craft a

legal and practical strategy that will enable you to accomplish your goals, build good facts, and push

the reach of your collections to the full extent of the law.

Preservation

Preservation is the easiest, in terms of legal issues, of the goals to accomplish. While there are special

issues with preservation projects, such as the difficulty of locating copyright holders, there are also

special protections under sections 107 and 108 of the copyright act. An institution undertaking a

preservation project must really only make certain that they cannot obtain an unused replacement copy

of the work for a fair price; obviously, with unpublished works, this is never the case.64 Furthermore,

for purposes of preservation, works can even be digitized to a limited degree, provided that there are

some reasonable restrictions to what is done with the digitized works.65

Scholarship

Making works available for specific scholarly projects is also an achievable goal. The promotion of

scholarship is at the heart of a library or archive's mission, as well as one of the main justifications for

the limitations provided in sections 107 and 108 of the copyright act.66 As stated above, the fair use

64 17 U.S.C. §108(b)-(c). 65 Id.66 It's arguably the rationale under which we grant a limited monopoly for copyright at all; the Constitution provides that

limited terms of exclusive rights are to be granted “To promote the Progress of Science and useful Arts...” U.S. Const. art. I, § 8.

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limitation expressly provides that the “purpose and character of the use” is to be taken into

consideration when the analysis of whether a given use is “fair” is made.67 Similarly, in section 108,

there are sections which expressly permit libraries and archives to make copies of works in their

collections if they have no reason to believe that the works are not going to be used for scholarship.68

General Access

The hardest type of project goal is to make objects in a collection available for general access. This is

not so much of an issue with analog materials; if a library owns a work, they can make it available

through lending, on premises viewing, and through making copies of the work under the limitations to

section 106 found in sections 107 and 108. However, with technology allowing for so much more

potential access, there is a great desire for librarians and archivists to be able to make their collections

available online. This is not always easy, and sometimes it may in fact be impossible.

One of the problems with general online access is that since sections 107 and 108 predate the internet,

the limitations written in them do not translate well to a digital environment, and they have not been

updated to reflect today's technological environment. Furthermore, there are explicit limitations to

digitizing materials in section 108,69 and the anti-circumvention aspects of the DMCA also raise

barriers towards making digital copies of objects available.70

This is not to say that providing general access is hopeless. A library or an archive can make a limited

number of digital copies of their works in certain circumstances. These works could be made available

on a first come first serve basis, with a registered user allowed to access a copy-protected digital

version of a work. Furthermore, with particularly popular works, an organization could purchase

several copies to make available digitally, or they could purchase a license to do so as well. While it

may be difficult or expensive to grant open access to a material, it is possible to do so with sufficient

resources and planning.

67 17 U.S.C. §10768 17 U.S.C. §108(d)-(e)69 17 U.S.C. §10870 17 U.S.C. § 1201

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Nature of the Materials

In addition to having an good understanding of the way they want to make their materials available, a

library or archive should have a good understanding of their materials themselves. Different types of

collections will lend themselves to different uses. Thinking about the issues from the outset will save a

library or archive a good deal of difficulty.

Born Digital Materials

Born digital materials, that is, objects that have been created in digital form and which do not and

cannot have a physical analog are of increasing importance to librarians and archivists. They also raise

a host of special issues that should be considered before a project focused on born digital materials

should be undertaken.

Most of the discussion in the legal section of this paper had to do with what uses a library or archive

could make of works in their collections, and while digitization was discussed in the section, it was

discussed in a framework of making digital copies of analog materials.71 However, an archive or

library will possibly be called upon to make preservation or scholarly copies of born digital materials.

One example of this is the preservation of Salmon Rushdie's digital letters, notes, and materials, a

project that has recently been undertaken by Emory University.72 In this project, the archivists were

faced with some interesting legal issues. For example, Rushdie wrote many of his books using a

proprietary piece of Macintosh software known as Mac Stickies.73 Without this software, which is no

longer available unused at a reasonable price, the works of Rushdie cannot be faithfully preserved and

viewed; while the legal basis for this decision was uncertain, Emory University decided to make the

software available because the rest of the works were piece dependent to it, that it, they could not be

represented without the underlying software architecture.74 Born digital objects raise questions like

these, and librarians and archivists will have to wrestle with them in the years to come, hopefully

coming to solutions that help create good law and practices.

71 See supra pp. 6-10.72 Patricia Cohen, Emory University Saves Rushdie's Digital Data, The New York Times, 3/15/2010, available at

http://www.nytimes.com/2010/03/16/books/16archive.html?pagewanted=all. 73 Id. 74 Id.

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One particularly interesting example of born digital content are video games. More attention has been

paid to video games as cultural objects and several archives and libraries have been established to

preserve video games and game culture.75 Video games are challenging to preserve and make

available. First, they are highly piece dependent. Secondly, video games are often subject to the terms

of a software license, which may prevent institutions from making uses that would otherwise be

permitted under copyright law.76 Third, many video games have digital rights management or other

access controls. As we discussed above, bypassing such protection measures is a potential violation of

the anti-circumvention provisions of the DMCA.77

Published vs. Unpublished Works

In the legal section, we discussed how published and unpublished works have different status under

different areas of the law. Understanding these differences will help an institution make good, legal,

uses of their works. For example, an archive that deals primarily with unpublished materials will have

very little problem making sure their collection is secure and preserved,78 given the liberal protections

for making preservation and deposit copies of unpublished works. However, unpublished works are

treated differently under section 107 than published works, as there is a presumption that uses of an

unpublished work are less likely to be fair than uses of an unpublished work.79 On the flip side of the

argument, a work that has not been published is unlikely to be registered, and therefore statutory

damages are not an available remedy for infringement.80 Additionally, if a work is orphaned or

75 Some examples are the University of Texas at Austin Video Game Archive, at the Dolph Brisco Center for American History, whose website is available at http://www.cah.utexas.edu/projects/videogamearchive/index.html, the National Video Game Archive the British National Videogame Archive, a joint project between the National Media Museum and Nottingham Trent University, whose website is available at http://www.nationalvideogamearchive.org/, and the University of Michigan Hatcher Graduate Library Video Game Archive, whose website is available at http://www.lib.umich.edu/computer-video-game-archive.

76 Licenses function over, above, and around other aspects of the law. Engaging the issue, however, is beyond the scope of this effort.

77 17 U.S.C. § 120178 17 U.S.C. §108(b)79 Prior to 1991, courts had fairly consistently ruled that uses of unpublished works infringed on the author's right to decide

the time and manner of publication and were not fair uses. In 1991 Congress amended section 107 to include the following passage, which reduces, but does not eliminate, the presumption that unpublished works cannot be used: “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

80 17 U.S.C. §412

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unpublished, the fact that the rights holder cannot be found may work both ways; if it is impossible to

find the author, it may be impossible for the author to find you.81

Risk Tolerance

The final question an organization should ask itself before it plans a project, it, “how much risk are we

willing to take?” Understanding the level of risk your institution is prepared to take will help you

decide what types of uses you can make with the various elements of you collection, and will help you

develop a legal rationale under which to make those uses. The first element of understanding risk

tolerance is your organization's willingness to fight. There are many tiers of escalation in the case of a

suspected infringement: the conflict may begin with a phone call, or perhaps a letter asking that your

organization cease and desist from undertaking an activity. If your organization has little or no

tolerance for risk, then you can comply with the letter and this can essentially be the end of the story.

Furthermore, it is highly unlikely that you will not receive some sort of notice or request to remove

materials before you are sued, if you are willing to comply with such a request, then you are unlikely to

incur much risk from a project to make or preserve materials that is undertaken in good faith.

IV. Create an Aura of Good FactsMuch of the advice in the above sections has been in the service of creating good facts. The following

section will define what good and bad facts are, and will show through case study how the contribute to

the success or failure of a project. Then, we will briefly discuss the need for respect for lawyers, rights

holders, and the law, arguing that proceeding from an attitude of respect as opposed to hostility to the

law can be a powerful tool in the hands of a librarian or archivist.

Good Fact and Bad Facts

You already have a general understanding what good facts and bad facts are, and while the place that

any one person draws the line as to what is good of bad varies, activities at one or another end of the

81 This is not always the case however. Sometimes in the absence of clear copyright ownership, “enterprising” actors may declare themselves the owners, and with no clear challenge to their claim, extract revenue from the work. For an interesting and enlightening study of one such interest, see Brauneis, Robert, “Copyright and the World's Most Popular Song”, George Washington University Law School, Legal Studies Research Paper Series, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1111624##.

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spectrum are pretty clearly recognizable for what they are. For example, it doesn't take a lawyer to

realize that trying to fight an elderly woman over a twenty thousand dollar medical settlement after you

burned her with scalding hot coffee is a poor idea, and a battle in which you are unlikely to prevail. 82

Similarly, no plaintiff wants to haul a kind looking old librarian onto the witness stand and grill him

over whether his making copies of their scientific journal was a fair use or not. Harnessing the

instinctive “goodness” of your library or archive can be a powerful tool both to defend against and

prevent lawsuits and other forms of legal harassment.

One of the best ways to develop good facts is to understand the law and the nature of your project and

your collections, and to design a clear strategy and message that indicates a respect for the law and for

the rights of copyright holders. For example, when the University of Michigan entered into a

partnership with Google to digitize their library collection, they inserted a clause into the contract that

read “(b)oth Google and U of M agree and intend to perform this Agreement pursuant to copyright

law. If at any time, either party becomes aware of copyright infringement under this agreement, that

party shall inform the other as quickly as reasonably possible.”83 This attitude, coupled with the

argument that much of the digitization project would be to protect damaged and out of print books, and

the, likely failed, attempt at reaching a settlement, has created an aura of good facts around the project.84 The settlement has, of this writing, not yet been approved or overturned, and the University and

Google have not been sued, whether this has anything to do with the good facts surrounding the project

is not clear. However, those good facts that may be currently deterring suit will most assuredly assist

the defendants if a suit is ever brought.

V. ConclusionAs we have seen in the above sections, making good uses of library and archive collections is a

82 This is a true case. A seventy-nine year old woman was hospitalized for over a week and disabled for two years because of a burn caused by scalding coffee. When she offered to settle for twenty thousand dollars, he offer was rejected. When all of the lawsuits were concluded, McDonalds had to pay her two hundred thousand dollars in compensation and nearly five hundred thousand dollars in punitive damages, to say nothing of their legal expenses. For a detailed writeup of the case, see “The Facts About the McDonalds Coffee Lawsuit,” available at http://www.scjusticereport.com/tp-100106115708.shtml.

83 Michigan Digitization Project - UM/Google Cooperative Agreement, Section 4.1, available at http://www.lib.umich.edu/node/19846.

84 I want to make a clear distinction between perceptions about the digitization project in general and the settlement, which is VASTLY less popular.

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http://www.scjusticereport.com/tp-100106115708.shtml


complex proposition, with many legal, practical, and theoretical considerations. Since there are so

many things to consider, and so much cross and misinformation available, it is frequently easier to do

nothing than to take calculated risks and undertake ambitious projects. But this state of affairs does

archives, libraries, and the public they serve no benefit; information is needlessly locked up behind

walls and is kept out of the hands of people who could benefit from it.

This paper has tried to begin to remedy that situation. It is my belief that archivists and librarians

easily have the capacity to navigate the tricky waters of the law, and that with careful planning and

respect, they can continue to forward the public's interest. Understanding the law, respecting the law,

and relying on the substantial protections of the law is the first step of this journey. Once that has been

achieved, then institutions can engage in self assessment, deciding what they can best do with the

resources they have, and creating projects that evidence a sincere respect for the law, and a sincere

commitment to promoting the public interest in all of their activities.

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Documents

Pushing Libraries and Archives to the Edge of the Law