From: David Hansen <[log in to unmask]>
Date: Fri, 30 May 2014 09:20:25 -0400

I don't disagree with Chuck/Peggy's analysis below. But on this
statement "The university, once it puts the work up in its IR, is now
a direct infringer" I think we should be clear that that 17 USC 512(e)
(DMCA takedown provision) does provide some protection for
universities that host content that was posted on the IR at the
direction of the user. It lets the university treat faculty and grad
students as third parties--just like a user posting a video on
youtube--for purposes of the DMCA safe harbor.

On the question of "how many have been sued for damages?" -- I don't
know. There are no reported court opinions that I know of, but that
may just mean that cases settle or otherwise go away before they get
to that point. On $$ damages specifically, public, state institutions
are immune from prospective monetary relief because they are protected
by sovereign immunity. Employees of those institutions who are acting
within the scope of their employment may also benefit from qualified
immunity. And all good faith fair use asserters at universities
(public or private) are insulated from statutory damages--the most
pernicious kind, up to $150,000 per work infringed--by 17 USC
504(c)(2).

So, I think the specter of a large monetary damage awards may be
overstated. And granted, even defending a lawsuit that doesn't ask for
monetary damages is an expensive proposition (just ask the HathiTrust
libraries who were sued by the Authors Guild), but the payoff for
potential plaintiffs is so low in most cases that such suits are
unlikely to materialize.

To help us all get an answer the question about "how many law suits?"
you may want to answer this confidential survey about library
experiences with the copyright notice and takedown system:

https://columbiataa.co1.qualtrics.com/SE/?SID=SV_3W1Ix7sS68CtqV7

The survey is being conducted by researchers at Columbia Univ. and UC
Berkeley. More info about its background if you click the link above.

----------
David R. Hansen
Reference Librarian & Clinical Assistant Professor, UNC School of Law
Digital Library Fellow, UC Berkeley School of Law
[log in to unmask]
919.962.1605 (o)


-----Original Message-----
From: LibLicense-L Discussion Forum
[mailto:[log in to unmask]] On Behalf Of LIBLICENSE
Sent: Thursday, May 29, 2014 1:44 PM
To: [log in to unmask]
Subject: Re: Are publishers not supposed to defend their legal rights?

From: Ian Russell <[log in to unmask]>
Date: Thu, 29 May 2014 08:37:02 +0100

Maybe someone on the list could answer this question for me:

How many US libraries or faculty members have been sued for damages by
publishers for posting a publisher PDF in an institutional or subject
repository?

Ian Russell

-----Original Message-----
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