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