Linda K. Enghagen, J.D., ProfessorIsenberg School of Management

University of Massachusetts at Amherst

The information contained herein along with the question and answer session

are for educational purposes only. Neither is a substitute for legal advice and neither is to be construed as the

rendering of a legal opinion.

Copyright © 2009 Linda K. Enghagen

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Pre-Kinko’s Era

Kinko’s Era

Post-Kinko’s Electronic

EraToner •University •Copy Shop •StudentPaper •University •Copy Shop •StudentTime •University

•Faculty •Copy Shop•Faculty •Student

•Faculty •Library•IT•Student

Dime •University •Student •StudentReproduction System

•Copy machine

•Copy machine

•Computers + software

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Congress shall have [the] power… To promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and

discoveries…

Article I, Section 8, Clause 8

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Plaintiffs Cambridge University

Press Oxford University

Press, Inc. Sage Publications

Defendants Carl V. Patton, in his

official capacity as GSU President

Ron Henry, in his official capacity as GSU Provost

Charlene Hurt, in her official capacity as GSU Dean of Libraries

J.L. Albert, in his official capacity as GSU Provost for Information Systems and Technology

Members of the Board of Regents, in their official capacities

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Sovereign immunity General Rule = can’t sue a state institution in

federal court Exception = when you are suing a state official in

his or her “official capacity” and only asking for an injunction—not $

Individual faculty members identified in the suit not named personally Marketing Information Masters, Inc. v. The Board of

Trustees of the California State University System, a public entity; and Robert A Rauch, an individual

Board of Trustees = case dismissed! Robert A Rauch, an individual = allowed to proceed

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According to the plaintiffs “…systematic, widespread, and unauthorized

copying and distribution of a vast amount of copyrighted works…through a variety of online systems and outlets utilized…for the digital distribution of course reading material…without the requisite authorization and appropriate compensation to the copyright owners of such materials.” ~600 courses as of 02/29/08 >6,700 works posted to electronic course reserves

most requiring permission that was not obtained e-reserves system not password protected

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Direct copyright infringementWillful, intentional and purposeful scanning,

copying, displaying and distributing in violation of plaintiffs’ rights

Contributory copyright infringementFacilitating, encouraging and inducing

librarians and professors to scan, copy, display and distribute in violation of plaintiffs’ rights

Vicarious copyright infringementAllowing professors and other employees to

scan, copy, display and distribute in violation of plaintiffs’ rights, e.g., failing to supervise

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1. Posting to unsecure sites2. Posting without permission & payment3. Posting semester-to-semester4. Relying on overly generous

institutional policy guidelines5. Failure to enforce those same overly

generous guidelines6. Creating free electronic course packs

as a substitute for purchasing collections & anthologies

7. Encouraging and facilitating infringements

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Judgment declaring “actions as complained of…constitute copyright infringement…”

Permanent injunction “enjoining Defendants… now or in the future, without seeking appropriate authorization…from copying, displaying or distributing electronic copies of any of Plaintiffs’ copyrighted works to…anyone…or from facilitating or encouraging others to do so…via the collection and assembly of course reading materials…through an e-reserves system, a course management system, a course web page, or any similar electronic distribution.”

Costs and reasonable attorneys fees Average cost to defend copyright infringement case = ~$1 mil

Source: Fisher & McGeveran, “The Digital Learning Challenge: Obstacles to Educational Uses of Copyright Material in the Digital Age,” Research Pub. No. 2006-09, August 10, 2006, The Berkman Center for Internet & Society, Harvard Law School.

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GSU admitted course reserves were unsecure Software mistake discovered May/June 2007 Mistake corrected by software vendor Thereafter password protected and available

only to enrolled students Unsecured site = big mistake

Reason: all posted materials freely available to anyone who stumbles across them which weighs heavily against fair use Likely violates licensing agreements as well.

Mitigated by correction If really result of innocent error, not likely to be

significant in lawsuit.11

GSU: works continue to be posted w/o permission & payment Asserts: allowed under fair use

Publishers: “market failure theory” Market failure theory = using works under the fair

use doctrine is allowed only when the market fails to provide a “readily accessible, efficient, and economical licensing mechanism”

Assert: market exists, so it must be utilized Existence of market = relevant not controlling

Perfect 10 Case: Google search results generated thumbnail images of nude photos Perfect 10 sells Qualifies as a fair use

Campbell v. Acuff-Rose Music, Inc.: parody of “Oh, Pretty Woman” Transformative use that resulted in harm to market, but

copyright owners don’t control all markets.12

GSU: admits this continuesAsserts: allowed under fair use

Publishers: violates fair use Closer to reality

One time “rule” is found in fair use guidelines Guidelines ≠ Law Preambles to guidelines characterize standards

as minimums, i.e., you can do at least this much Ignores that semester-to-semester use benefits

different students each time (with the exception of students who are repeating a course)

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GSU: denies allegation but changed things after getting sued Now: focus on linking, fair use analysis with

check list, access to training and legal advice, librarians can and sometimes do deny requests for copying deemed excessive

Publishers: exceeds legal boundaries “…endorses the unlicensed copying of up to

twenty percent of a work – a benchmark that would countenance unlicensed excerpts of dozens or even hundreds of pages from a given work”

Changes may make GSU look better, but it doesn’t alter liability for past practice if that practice exceeded fair use.

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GSU: denies allegation Publishers: “electronic course reserves

system contains numerous examples of works that violate even the University’s own lax policies”

If true—and GSU knew or should have known—and did nothing—thenGSU has a problem

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GSU: admits this continues Asserts: allowed under fair use

Publishers: prohibited per Kinko’s and Michigan Documents Services cases

Cases aren’t on point Both involved commercial enterprises Court could have barred all anthologies—but

didn’t Footnote 13 in Kinko’s

“Expressly, the decision of this court does not consider copying performed by students, libraries, nor on-campus copyshops, whether for-profit or not.”

Michigan Documents revisited Blackwell Pub. Inc. et al v. Excel Test Preparation,

Coursepacks & Copies, Oct. 14, 2009. “…copyright law should not turn on who presses the

start button on the copier”16

GSU: admits this continuesAsserts: allowed under fair use

Publishers: by facilitating and allowing faculty staff and students to scan, copy, display and distribute works, GSU violates copyright law

Bottom line: encouraging and facilitating are problems only if the publishers are right that fair use doesn’t apply

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We must be flexible in applying a fair use analysis; it ‘is not to be simplified with

bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-

case analysis…Nor may the four statutory factors be treated in isolation,

one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright law.”…The

purpose of copyright law is ‘[t]o promote the Progress of Science and useful Arts,’ and to serve ‘the welfare of the public.’

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