1. E-book Licensing and Interlibrary Loan Janice T. Pilch Copyright and Licensing Librarian, Rutgers University Libraries VALE/NJ ACRL/NJLA CUS Thirteenth Annual Users’ Conference January 5, 2012

2. Legal landscape for e-book lending Section 109 (first sale doctrine) permits lending in the physical world Section 108 permits limited reproduction and distribution of copies by libraries; does not apply to realities of e-books Licensing terms may be unclear

3. Recent flashpoints Amazon remotely erases works of George Orwell from Kindle (July 2009) Harper Collins adopts new policy setting limit of 26 loans on licensed e-books (February 2011) Penguin suspends library lending of new e-book titles (November 2011)

4. U.S. copyright law Distribution right in Section 106: Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: … 3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;…

5. U.S. copyright law Exception to the distribution right in Section 109 (first sale doctrine): (a) Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. … (d) The privileges prescribed by subsections (a) and (c) do not, unless authorized by the copyright owner, extend to any person who has acquired possession of the copy or phonorecord from the copyright owner, by rental, lease, loan, or otherwise, without acquiring ownership of it.

6. International context for U.S. law WIPO Copyright Treaty (1996), Article 6: Right of Distribution (1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing the making available to the public of the original and copies of their works through sale or other transfer of ownership. (2) Nothing in this Treaty shall affect the freedom of Contracting Parties to determine the conditions, if any, under which the exhaustion of the right in paragraph (1) applies after the first sale or other transfer of ownership of the original or a copy of the work with the authorization of the author. 6 paragraph (1) 6

7. International context for U.S. law Footnote to Article 6 of WIPO Copyright Treaty: Agreed statements concerning Articles 6 and 7: As used in these Articles, the expressions “copies” and “original and copies,” being subject to the right of distribution and the right of rental under the said Articles, refer exclusively to fixed copies that can be put into circulation as tangible objects.

8. International context for U.S. law European Union Directive 2001/29/EC (22 May 2001), Recital 29: The question of exhaustion does not arise in the case of services and on-line services in particular. … Unlike CD-ROM or CD-I, where the intellectual property is incorporated in a material medium, namely an item of goods, every on-line service is in fact an act which should be subject to authorisation where the copyright or related right so provides.

9. Section 109 for library lending Condition of ownership of a particular copy E-lending implicates both reproduction and distribution rights Section 109 is an exception to distribution right only DMCA Section 104 Report: A Report of the Register of Copyrights Pursuant to §104 of the Digital Millennium Copyright Act (August 2001) identified these issues Case law: Vernor v. AutoDesk, Inc. established that first sale doctrine does not apply to licensed works  Section 109 does not provide for e-book lending

10. Section 108 Reproduction by libraries and archives Reproduction and distribution of one copy allowed if: There is no direct or indirect commercial advantage Collections of library or archive open to public or to researchers in specialized field Reproduction/distribution must include copyright notice [Section 108(a)]

11. Section 108 Reproduction by libraries and archives One copy of no more than one article or other contribution to a collection or periodical issue, or of a small part of any other work If copy becomes property of user For private study, scholarship, or research Copyright warning must be displayed at order location and on order form Does not apply to musical, pictorial, graphic, sculptural works; or motion picture or audiovisual works other than audiovisual works dealing with news [Section 108(d)]

12. Section 108 Reproduction by libraries and archives One copy of entire work or a substantial part of it If on basis of reasonable investigation a copy cannot be obtained a fair price If copy becomes property of user For private study, scholarship, or research Copyright warning must be displayed at order location and on order form Does not apply to musical, pictorial, graphic, sculptural works; or motion picture or audiovisual works other than audiovisual works dealing with news [Section 108(e)]

13. Section 108 Other provisions “Isolated and unrelated” reproduction only Related or concerted reproduction or distribution of multiple copies of same material not allowed Systematic reproduction or distribution of a single or multiples copies described in 108(d) not allowed Interlibrary activities not to substitute for subscription or purchase of work [Section 108(g)]  Section 108 does not apply to e-book lending

14. Section 107 Fair use for e-lending? Exceptions not intended to be so broad as to eliminate the rule  Possible application of fair use for certain types of “e-lending” (temporary access) but not for licensed e-books  Internet Archive Open Library Project, http://openlibrary.org/

15. Possible options Change copyright exceptions Adopt e-book lending in copyright law, as a digital first sale provision in Section 109 Amend Section 108? Broadly interpret Section 107(fair use) for digital lending of unlicensed works? Amend copyright law to allow for e-lending with no contractual override (as in IFLA Treaty Proposal) -or-  Obtain permission/license to lend e-books  Focus on authorization from the rights holder in the license

16. IFLA Treaty Proposal on Copyright Limitations and Exceptions for Libraries and Archives IFLA Treaty Proposal on Copyright Limitations and Exceptions for Libraries and Archives (November 2011), http://www.ifla.org/en/node/5856http://www.ifla.org/en/node/5856 Long-range effort within WIPO Standing Committee on Copyright and Related Rights Would require Member States to allow for e- lending with no contractual override

17. IFLA Treaty Proposal on Copyright Limitations and Exceptions for Libraries and Archives Article 6: It shall be permitted for a library to lend copyright works, or materials protected by related rights, to a user, or to another library. Article 13: Any contractual provisions that prohibit or restrict the exercise or enjoyment of the limitations and exceptions in copyright adopted by Contracting Parties according to the provisions of this Treaty, shall be null and void.

18. Recent challenges to international interlibrary loan and document delivery Challenges to current international interlibrary loan practices of U.S. research libraries Concerns of publisher groups that international, non-U.S. libraries do not have to adhere to U.S. copyright law International Association of Scientific, Technical and Medical Publishers Statement on Document Delivery, June 8, 2011, http://www.stm-assoc.org/industry-news/stm-statement- on-document-delivery/ http://www.stm-assoc.org/industry-news/stm-statement- on-document-delivery/ ARL Task Force Report on International Interlibrary Loan and Document Delivery Practices (May 2011), in June issue of Research Library Issues, http://www.arl.org/news/pr/ill- 27may2011.shtml http://www.arl.org/news/pr/ill- 27may2011.shtml

19. International interlibrary loan National copyright laws based on principle of territoriality No law governs cross-border transfer of copies No exception exists in copyright law for international ILL International ILL based on best practices with trusted partners and compliance with national laws

20. Model license language Possible models for adaptation: Standard License Agreement [CLIR/DLF], http://www.library.yale.edu/~llicense/standlicagree.html, Section IV. Authorized Use of Licensed Materialswww.library.yale.edu/~llicense/standlicagree.html California Digital Library Standard License Agreement http://www.cdlib.org/gateways/vendors/guidelines_licensin g.html)www.cdlib.org/gateways/vendors/guidelines_licensin g.html ARL Task Force to Develop an International ILL License Clause

21. Thank you! Janice T. Pilch Copyright and Licensing Librarian Rutgers University Libraries E-mail: janice.pilch@rutgers.edu