From: "Hamaker, Charles" <[log in to unmask]>
Date: Thu, 29 May 2014 00:48:16 +0000

Yes, of course, publishers have the right to "defend" their legal
rights [Keep in mind, however, that “their legal rights” are the
copyrights given to them gratis by the same author(s) they are now
attacking.]. Authors who post publisher PDF's of their own articles
without the publisher's permission, receive no protection from a DMCA
(Digital Millennium Copyright Act) take down notice.

The DMCA protects only the Online Service Provider against being sued
for infringing content if the provider acts appropriately once the
notice has been served. And of course this is true only if the OSP is
not responsible in any other way for the content being exposed. The
faculty member/original author is certainly on the infringement hook
for posting the publisher version of their work, particularly when
they have transferred the copyright and agreed to the publisher¹s
terms.

The institution is vulnerable to claims of infringement. Many if not
most library licenses for publisher content we have negotiated (and
successfully negotiated out) over the last several years have sections
that make the institution responsible for the actions of what
authorized users (usually faculty , staff, students, and walk-ins) do
with the publisher's licensed materials. These licenses often require
the institution to warrant or guarantee that their users will not
violate any of the terms and conditions of the license, including
infringing the copyright of the licensed content.  Additionally,
institutions often agree to actually affirmatively monitor user
behavior as well as promise to protect the intellectual property of
the licensor. If the library or university has signed and thus agreed
to such provisions, which I suspect many have, then the institution
has as much if not more exposure than the individual faculty member.
The institution has, after all, deeper pockets than individual authors
and is, therefore, the irresistible defendant.

Licenses have consequences.

Most likely faculty are retrieving the final version of their article
from licensed resources provided to them by their university library.
If so the institution will then be legally responsible for authorized
user acts – lawful or not particularly if they have accepted that in
the license with the publisher.

For example: A faculty member transfers copyright to the publisher and
fails to retain the rights to  post the publisher's pdf publicly.
Faculty member then submits the publisher's version of his/her article
to the university's IR, signs the ingest form warranting that it is OK
to put the article in the IR. (And the form also contains an
indemnification clause): the publisher (or in this case publisher's
agent) finds the version in the IR and sues both the faculty member
and the university.

Remember many libraries have already acknowledged publisher
"ownership" of all copyrights in the publisher's website content
through an acknowledgement clause in the library e-resource license.

In that case, the publisher need not even provide proof that they own
copyright of the offending item.

The university, once it puts the work up in its IR, is now a direct
infringer. (copyright is a strict liability offense).  Additionally,
the University likely supplied the publisher's version through its
library licensed content and solicited the faculty member to provide a
copy of their article for the IR. Although the University can require
the faculty member to indemnify it for having (mis)led it into the
infringement, the University remains culpable as a direct infringer.
Even were the University to virtually bankrupt the faculty member, it
may not satisfy the enormous amount of statutory damages allowed by
the copyright act for infringement. As the deep pocket, the University
will still face the potential infringement damages.

And is this the optimal scenario we want at our educational institutions?

There are probably tens of thousands of publisher pdf's posted without
publisher permission on university websites (in addition to IR
postings) under the auspices of departments of various colleges
throughout academia showcasing  faculty publications in specific
disciplines. Is the University not jointly culpable in those instances
as well?

What will stop this practice?

We suspect it will take publisher industry lawsuits targeting both
individual faculty and their institutions y to prompt the nationwide
discussion and examination and change needed to curtail such
practices.

With thanks to Sandy Thatcher for the subject line


Chuck Hamaker and Peggy Hoon J.D.
UNC Charlotte
Atkins Library