| WILLIAMS & WILKINS COMPANY v. THE UNITED STATES
UNITED STATES COURT OF CLAIMS
487 F.2d 1345
1973
SUBSEQUENT HISTORY: Plaintiff Filed a Petition for Certiorari
on February 20, 1974.
SYLLABUS: ON THE PROOFS
Copyrights; infringement; photocopying; "fair use"; scientific
and medical needs. -- This is an action brought under the
provisions of 28 U.S.C. @ 1498(b) by a major publisher of
medical journals which charges that the Department of Health,
Education and Welfare, through the National Institutes of
Health and the National Library of Medicine (both non-profit
agencies), has infringed its copyrights in certain journals
by making unauthorized photocopies of articles therein. The
practice of NIH is to furnish a single photocopy of an article
or portions thereof to its own researchers. As part of its
interlibrary loan program involving libraries and public and
private
research-and-education-oriented institutions, NLM furnishes,
within prescribed limits, a single photocopy of a journal
article free of charge and on a no-return basis to participating
libraries who forward the copies to its requesting patrons.
At the outset the court holds, based on the assumption that
plaintiff is the proper copyright owner, that it can sue for
infringement of the separate articles in issue. After discussing
the actual practices of the two agencies in furnishing photocopies,
the history of the Copyright Act of 1909 which governs this
case, the various terminology used in the Act such as "copying,"
"printing," "reprinting," "publication," the doctrine of "fair
use," the needs of researchers in the scientific and medical
fields, the court holds, based on the type and context of
use by NIH and NLM as shown by the record, that there has
been no infringement, that the challenged use is "fair" in
view of the combination of all of the factors involved in
consideration of "fair" or "unfair" use enumerated in the
opinion, that the record fails to show a significant detriment
to plaintiff but demonstrates injury to medical and scientific
research if photocopying of this kind is held unlawful, and
that there is a need for congressional treatment of the problems
of photocopying. Plaintiff is not entitled to recover and
the petition is dismissed.
Copyrights; infringement; parties to suit; standing to sue
in Court of Claims; copyright owner of composite work.
Assuming that a publisher who obtained copyright registration
of a journal containing articles by individual authors is
the proprietor and proper copyright owner, he can sue in the
Court of Claims under the provisions of 28 U.S.C. @ 1498(b)
for infringement of the separate articles.
Copyrights; protection, extent of; composite works.
Under 17 U.S.C. @ 3, each article in a copyrighted journal
is protected from infringement to the same extent as the entire
journal.
Copyrights; exclusive rights as to copyrighted works; "copying".
In view of the legislative history and background of the Copyright
Act of 1909 and of the subsequent practice thereunder, Section
1 of the Act, as applied to books and journals, does not cover
all copying in the literal or dictionary sense.
Copyrights; exclusive rights as to copyrighted works; "printing"
or "reprinting".
The furnishing by the National Institutes of Health of a single
photocopy of an article or portions thereof appearing in a
copyrighted journal for the benefit of its research staff,
and the practice of the National Library of Medicine as part
of its interlibrary loan program in furnishing, within prescribed
limits, a single photocopy of journal articles free of charge
and on a non-return basis to participating libraries or Government
research institutions, as shown by the present record, do
not amount to printing or reprinting in the strict dictionary
sense; if these words be used more broadly to include all
mechanical reproduction of a number of copies, they do not
cover the making of a single copy for an individual requester.
Copyrights; exclusive rights as to copyrighted works; "publication".
The photocopying practices of the National Institutes of Health
and the National Library of Medicine as shown by the record
before the court do not constitute "publication" within the
meaning of 17 U.S.C. @ 1.
Copyrights; infringement; "fair use".
The principal factors considered by the courts in deciding
whether a particular use of a copyrighted work is "fair use"
are: (a) the purpose and character of the use, (b) the nature
of the copyrighted work, (c) the amount and substantiality
of the material used in relation to the copyrighted work as
a whole, and (d) the effect of the use on a copyright owner's
potential market for and value of his work. The development
of "fair use" has been influenced by some tension between
the direct aim of the copyright privilege to grant the owner
a right from which he can reap financial benefit and the more
fundamental purpose of the protection "To promote the Progress
of Science and the Useful Arts."
Copyrights; copyright privilege; generally.
Copyright is not primarily for the benefit of the author,
but is primarily for the benefit of the public. The copyright
law makes reward to the copyright owner a secondary consideration,
and the courts in passing upon particular claims of infringement
must occasionally subordinate the copyright holder's interest
in a maximum financial return to the greater public interest
in the development of art, science and industry.
Copyrights; infringement; "fair use".
There is no inflexible rule excluding an entire copyrighted
work from the area of "fair use." The extent of the copying
is one important factor, but only one, to be taken into account,
along with several others.
Copyrights; infringement; "fair use".
The specific photocopying practices of the involved agencies
is not an "unfair use" of the copyrighted materials in issue
where plaintiff has not shown, and there is inadequate reason
to believe, that it is being or will be harmed substantially
by such practices, taking into consideration that medicine
and medical research will be injured by holding the particular
practices to be an infringement, and that, since the problem
of accommodating the interests of science with those of the
publishers (and authors) calls fundamentally for legislative
solution or guidance, not yet given, the court should not,
during the period before congressional action is forthcoming,
place such a risk of harm upon science and medicine.
Copyrights; infringement; copying; scientific purposes.
It is settled that, in general, the law gives copying for
scientific purposes a wider scope.
Copyrights; infringement; copying.
In determining whether copying of copyrighted material exceeds
"fair use," the important factor is not the absolute amount
of copies made each year by the non-profit Government agencies
in controversy, but consideration should be given to the existence
and purpose of the system of limitations imposed and reasonably
policed and enforced and the effectiveness of that system
to confine the duplication for the personal use of scientific
personnel who need the material for their work, with the minimum
of potential abuse or harm to the copyright owner.
Copyrights; infringement; royalty income, loss of.
It is wrong to measure the detriment to plaintiff by loss
of presumed royalty income -- a standard which necessarily
assumes that plaintiff had a right to issue licenses. Such
a conclusion results only if it is first determined that the
photocopying is "unfair."
Copyrights; photocopying by libraries; scientific purposes;
economic detriment.
In determining whether the copyright owner has been financially
hurt by the photocopying practices of the involved Government
agencies, the assumption of economic detriment cannot be based
on general business commonsense or on argument that if there
were no photocopying the public would necessarily buy the
work; financial or economic detriment is a matter of proof.
Copyrights; photocopying by libraries; scientific purposes;
congressional relief.
Since Congress has, up to now, left the problem of photocopying
untouched by express provisions and only doubtfully covered
to any extent by the generalizations of Section 1 of the Copyright
Act, in evaluating "fair use" the court gives the benefit
of the doubt -- until the Congress acts more specifically
-- to science and the libraries, rather than to the publisher
and the copyright owner, since the record here shows that
medical science will be seriously hurt if the photocopying
practiced by the involved agencies is stopped and, conversely,
the record fails to show that plaintiff or other such publishers
will be substantially injured.
Copyrights; Court of Claims jurisdiction; infringement.
Under 28 U.S.C. @ 1498(b), the United States is liable in
money for copyright infringement, but it cannot be enjoined.
Beyond the judicial power, under the 1909 Copyright Act, are
intermediate or compromise solutions, such as to order a copyright
owner to institute a system of licensing or to hold that photocopying
(without royalty payments) is not "fair use" if the owner
is willing to license at reasonable rates but becomes a "fair
use" if the owner refuses all permission or seeks to charge
excessive fees.
COUNSEL: Alan Latman, attorney of record, for plaintiff. Arthur
J. Greenbaum and Cowan, Liebowitz & Latman, of counsel.
Thomas J. Byrnes, with whom was Assistant Attorney General
Harlington Wood, Jr., for defendant.
Irwin Karp, for The Authors League of America, Inc., amicus
curiae.
Philip B. Brown, for the Association of Research Libraries,
Medical Library Association, American Association of Law Libraries,
American Medical Association, American Dental Association,
Mayo Foundation, Robert H. Ebert, M.D. (in his capacity as
Dean of the Faculty of Medicine, Harvard University), The
University of Michigan Medical School, The University of Rochester,
School of Medicine and Dentistry, American Sociological Association,
Modern Language Association of America, and History of Science
Society, amici curiae. Cox, Langford & Brown and John P. Furman,
of counsel.
Harry N. Rosenfield, for The National Education Association
of the United States, amicus curiae.
William D. North, for the American Library Association, amicus
curiae. Perry S. Patterson, Ronald L. Engel, James M. Amend,
John A. Waters, Thomas B. Carr, and Kirkland & Ellis, of counsel.
Charles H. Lieb, for the Association of American Publishers,
Inc. and The Association of American University Presses, Incorporated,
amici curiae. Paskus, Gordon & Hyman, and Elizabeth Barad,
of counsel.
Arthur B. Hanson, for The American Chemical Society, amicus
curiae. Hanson, O'Brien, Birney, Stickle & Butler, of counsel.
Davies, Hardy, Ives & Lawther, for The American Instititute
of Physics Incorporated, amicus curiae. Robert E. Lawther,
of counsel.
Robert B. Washburn, Virgil E. Woodcock, and Woodcock, Washburn,
Kurtz & Mackiewicz, for American Society for Testing and Materials
and National Council of Teachers of Mathematics, amici curiae.
JUDGES: Chief Judge, Davis, Skelton, Nichols, Kashiwa, Kunzig
and Bennett, Judges. Davis, Judge, delivered the opinion of
the court. Cowen, Chief Judge, dissenting. Kunzig, Judge,
join in the dissenting. Nichols, Judge, dissenting.
OPINIONBY: DAVIS
OPINION: We confront a ground-breaking copyright infringement
action under 28 U.S.C. @ 1498(b), the statute consenting to
infringement suits against the United States. n1 Plaintiff
Williams & Wilkins Company, a medical publisher, charges that
the Department of Health, Education, and Welfare, through
the National Institutes of Health (NIH) and the National Library
of Medicine (NLM), has infringed plaintiff's copyrights in
certain of its medical journals by making unauthorized photocopies
of articles from those periodicals. Modern photocopying in
its relation to copyright spins off troublesome problems,
which have been much discussed. n2 Those issues have never
before been mooted or determined by a court. In this case,
an extensive trial was held before former Trial Judge James
F. Davis who decided that the Government was liable for infringement.
On review, helped by the briefs and agreements of the parties
and the amici curiae, we take the other position and hold
the United States free of liability in the particular situation
presented by this record.
I n3
Plaintiff, though a relatively small company, is a major publisher
of medical journals and books. It publishes 37 journals, dealing
with various medical specialties. The four journals in suit
are Medicine, Journal of Immunology, Gastroenterology, and
Pharmacological Reviews. Medicine is published by plaintiff
for profit and for its own benefit. The other three journals
are published in conjunction with specialty medical societies
which, by contract, share the journals' profits with plaintiff.
The articles published in the journals stem from manuscripts
submitted to plaintiff (or one of the medical societies) by
physicians or other scientists engaged in medical research.
The journals are widely disseminated throughout the United
States (and the world) in libraries, schools, physicians'
offices, and the like. Annual subscription prices range from
about $ 12 to $ 44; and, due to the esoteric nature of the
journals' subject matter, the number of annual subscriptions
is relatively small, ranging from about 3,100 (Pharmacological
Reviews) to about 7,000 (Gastroenterology). Most of the revenue
derived from the journals comes from subscription sales, though
a small part comes from advertising. n4 The journals are published
with notice of copyright in plaintiff's name. The notice appears
at the front of the journal and sometimes at the beginning
of each article. After publication of each journal issue (usually
monthly or bimonthly) and after compliance with the requisite
statutory requirements, the Register of Copyrights issues
to plaintiff certificates of copyright registration.
NIH, the Government's principal medical research organization,
is a conglomerate of institutes located on a multi-acre campus
at Bethesda, Maryland. Each institute is concerned with a
particular medical specialty, and the institutes conduct their
activities by way of both intramural research and grants-in-aid
to private individuals and organizations. NIH employs over
12,000 persons -- 4,000 are science professionals and 2,000
have doctoral degrees. To assist its intramural programs,
NIH maintains a technical library. The library houses about
150,000 volumes, of which about 30,000 are books and the balance
scientific (principally medical) journals. The library is
open to the public, but is used mostly by NIH in-house research
personnel. The library's budget for 1970 was $ 1.1 million;
of this about $ 85,000 was for the purchase of journal materials.
The NIH library subscribes to about 3,000 different journal
titles, four of which are the journals in suit. The library
subscribes to two copies of each of the journals involved.
As a general rule, one copy stays in the library reading room
and the other copy circulates among interested NIH personnel.
Demand by NIH research workers for access to plaintiff's journals
(as well as other journals to which the library subscribes)
is usually not met by in-house subscription copies. Consequently,
as an integral part of its operation, the library runs a photocopy
service for the benefit of its research staff. On request,
a researcher can obtain a photocopy of an article from any
of the journals in the library's collection. Usually, researchers
request photocopies of articles to assist them in their on-going
projects; sometimes photocopies are requested simply for background
reading. The library does not monitor the reason for requests
or the use to which the photocopies are put. The photocopies
are not returned to the library; and the record shows that,
in most instances, researchers keep them in their private
files for future reference.
The library's policy is that, as a rule, only a single copy
of a journal article will be made per request and each request
is limited to about 40 to 50 pages, though exceptions may
be, and have been, made in the case of long articles, upon
approval of the Assistant Chief of the library branch. Also,
as a general rule, requests for photocopying are limited to
only a single article from a journal issue. Exceptions to
this rule are routinely made, so long as substantially less
than an entire journal is photocopied, i.e., less than about
half of the journal. Coworkers can, and frequently do, request
single copies of the same article and such requests are honored.
Four regularly assigned employees operate the NIH photocopy
equipment. The equipment consists of microfilm cameras and
Xerox copying machines. In 1970, the library photocopy budget
was $ 86,000 and the library filled 85,744 requests for photocopies
of journal articles (including plaintiff's journals), constituting
about 930,000 pages. On the average, a journal article is
10 pages long, so that, in 1970, the library made about 93,000
photocopies of articles.
NLM, located on the Bethesda campus of NIH, was formerly the
Armed Forces Medical Library. In 1956, Congress transferred
the library from the Department of Defense to the Public Health
Service (renaming it the National Library of Medicine), and
declared its purpose to be "* * * to aid the dissemination
and exchange of scientific and other information important
to the progress of medicine and to the public health * * *."
42 U.S.C. @ 275 (1970). NLM is a repository of much of the
world's medical literature, in essence a "librarians' library."
As part of its operation, NLM cooperates with other libraries
and like research-and-education-oriented institutions (both
public and private) in a so-called "interlibrary loan" program.
Upon request, NLM will loan to such institutions, for a limited
time, books and other materials in its collection. In the
case of journals, the "loans" usually take the form of photocopies
of journal articles which are supplied by NLM free of charge
and on a no-return basis. NLM's "loan" policies are fashioned
after the General Interlibrary Loan Code, which is a statement
of self-imposed regulations to be followed by all libraries
which cooperate in interlibrary loaning. The Code provides
that each library, upon request for a loan of materials, shall
decide whether to loan the original or provide a photoduplicate.
The Code notes that photoduplication of copyrighted materials
may raise copyright infringement problems, particularly with
regard to "photographing whole issues of periodicals or books
with current copyrights, or in making multiple copies of a
publication." [Emphasis in original text.] NLM, therefore,
will provide only one photocopy of a particular article, per
request, and will not photocopy on any given request an entire
journal issue. Each photocopy reproduced by NLM contains a
statement in the margin, "This is a single photostatic copy
made by the National Library of Medicine for purposes of study
or research in lieu of lending the original."
In recent years NLM's stated policy has been not to fill requests
for copies of articles from any of 104 journals which are
included in a so-called "widely-available list." Rather, the
requester is furnished a copy of the "widely-available list"
and the names of the regional medical libraries which are
presumed to have the journals listed. Exceptions are sometimes
made to the policy, particularly if the requester has been
unsuccessful in obtaining the journal elsewhere. The four
journals involved in this suit are listed on the "widely-available
list." A rejection on the basis of the "widely-available list"
is made only if the article requested was published during
the preceding 5 years, but requests from Government libraries
are not refused on the basis of the "widely-available list."
Also, NLM's policy is not to honor a excessive number of
requests from an individual or an institution. As a general
rule, not more than 20 requests from an individual, or not
more than 30 requests from an institution, within a month,
will be honored. In 1968, NLM adopted the policy that no more
than one article from a single journal issue, or three from
a journal volume, would be copied. Prior to 1968, NLM had
no express policy on copying limitations, but endeavored to
prevent "excessive copying." Generally, requests for more
than 50 pages of material will not be honored, though exceptions
are sometimes made, particularly for Government institutions.
Requests for more than one copy of a journal article are rejected,
without exception. If NLM receives a request for more than
one copy, a single copy will be furnished and the requester
advised that it is NLM's policy to furnish only one copy.
In 1968, a representative year, NLM received about 127,000
requests for interlibrary loans. Requests were received, for
the most part, from other libraries or Government agencies.
However, about 12 percent of the requests came from private
or commercial organizations, particularly drug companies.
Some requests were for books, in which event the book itself
was loaned. Most requests were for journals or journal articles;
and about 120,000 of the requests were filled by photocopying
single articles from journals, including plaintiff's journals.
Usually, the library seeking an interlibrary loan from NLM
did so at the request of one of its patrons. If the "loan"
was made by photocopy, the photocopy was given to the patron
who was free to dispose of it as he wished. NLM made no effort
to find out the ultimate use to which the photocopies were
put; and there is no evidence that borrowing libraries kept
the "loan" photocopies in their permanent collections for
use by other patrons.
Defendant concedes that, within the pertinent accounting period,
NLM and the NIH library made at least one photocopy of each
of eight articles (designated by plaintiff as the Count I-to-Count
VIII articles) from one or more of the four journals in suit.
These requests, as shown at the trial, were made by NIH researchers
and an Army medical officer (stationed in Japan) in connection
with their professional work and were used solely for those
purposes. In seven of the eight counts in the petition, the
article requested was more than two years old; in the eighth
instance it was 21 or 22 months old.
II
We assume, for the purposes of the case, but without deciding,
that plaintiff is the proper copyright owner and entitled
to sue here, n5 and we agree with plaintiff that, on that
assumption, it can sue for infringement of the eight separate
articles. n6 This faces us squarely with the issue of infringement.
Perhaps the main reason why determination of the question
is so difficult is that the text of the Copyright Act of 1909,
which governs the case, does not supply, by itself, a clear
or satisfactory answer. Section 1 of the Act, 17 U.S.C. @
1, declares that the copyright owner "shall have the exclusive
right: (a) To print, reprint, publish, copy, and vend the
copyrighted work; * * *." Read with blinders, this language
might seem on its surface to be all-comprehensive -- especially
the term "copy" -- but we are convinced, for several reasons,
that "copy" is not to be taken in its full literal sweep.
In this instance, as in so many others in copyright, "[T]he
statute is hardly unambiguous * * * and presents problems
of interpretation not solved by literal application of words
as they are 'normally' used * * *." DeSylva v. Ballentine,
351 U.S. 570, 573 (1956). See, also, Fortnightly Corp. v.
United Artists Television, Inc., 392 U.S. 390, 395-96 (1968).
The court-created doctrine of "fair use" (discussed in Part
III, infra) is alone enough to demonstrate that Section 1
does not cover all copying (in the literal sense). Some forms
of copying, at the very least of portions of a work, are universally
deemed immune from liability, although the very words are
reproduced in more than de minimis quantity. Furthermore,
it is almost unanimously accepted that a scholar can make
a handwritten copy of an entire copyrighted article for his
own use, and in the era before photoduplication it was not
uncommon (and not seriously questioned) that he could have
his secretary make a typed copy for his personal use and files.
These customary facts of copyright-life are among our givens.
The issue we now have is the complex one of whether photocopying,
in the form done by NIH and NLM, should be accorded the same
treatment -- not the ministerial lexicographic task of deciding
that photoduplication necessarily involves "copying" (as of
course it does in dictionary terms).
One aspect of the history and structure of the 1909 Act offers
another reason for refusing to give "copying" in Section 1,
as applied to these articles, its simplest "ordinary" reach.
It is pointed out to us, on the basis of analysis of the copyright
laws from 1790 to 1909, n7 that the early statutes distinguished
"copying" from "printing," "reprinting," and "publishing,"
and provided that the copyright in books is infringed by "printing,"
"reprinting" and "publishing," while the copyright in other
works (e.g., photographs, paintings, engraving, drawings,
etc.) is infringed by "copying." Cf. Harper v. Shoppell, 26
F. 519, 520 (C.C.S.D.N.Y. 1886). The 1909 Act obliterated
any such distinction in its text. It provides in @ 5 a list
of all classes of copyrightable subject matter (including
books and periodicals), and says in @ 1 that the owner of
copyright shall have the exclusive right "to print, reprint,
publish, copy and vend the copyrighted work." Thus, the 1909
Act, unlike the earlier statutes, does not expressly say which
of the proscribed acts of @ 1 apply to which classes of copyrightable
subject matter of @ 5. Defendant and some of the amici say
that, to be consistent with the intent and purpose of earlier
statutes, the "copying" proscription of @ 1 should not apply
to books or periodicals; rather, only the proscribed acts
of "printing," "reprinting" and "publishing" control books
and periodicals. The proponents of this view stress that the
legislative history of the 1909 legislation does not suggest
any purpose to alter the previous coverage. n8
This is quite a serious argument. However, in view of Congress's
general inclusion of the word "copy" in Section 1 and of the
practice under the Act since 1909, we are not ready to accept
fully this claim that infringement of periodical articles
can come only through "printing," "reprinting" or "publishing."
But we do believe this point -- that there is a solid doubt
whether and how far "copy" applies to books and journals --
must be taken into account in measuring the outlines of "copying"
as it involves books and articles.
Adding to this doubt that "copy" blankets such printed matter
is the significant implication of a special segment of the
background of the 1909 statute, a sector of history which
is peripheral but revealing. The then Librarian of Congress.
Herbert Putnam, was the leading public sponsor of that Act
(outside of Congress itself), and was intimately involved
in its preparation from at least 1906 on. While the bill was
being considered in Congress, the Library's 1908 "Rules and
Practice Governing the Use and Issue of Books," p. 6, specifically
provided:
"Photographing. Photographing is freely permitted. The permission
extends to the building itself and any of its parts, including
the mural decorations. It extends to articles bearing claim
of copyright, but the Library gives no assurance that the
photograph may be reproduced or republished or placed on sale.
These are matters to be settled with the owner of the copyright"
(emphasis added).
After the 1909 Act became law, the Library continued the same
provision. The 1913 version of the "Rules and Practice" n9
added the following on "Photostat," after the above paragraph
on "Photographing":
Photo-duplicates of books, newspapers, maps, etc. can be furnished
at a reasonable rate by means of the photostat, installed
in the Chief Clerk's Office. Apply to the Chief Clerk for
a schedule of charges.
Later editions, throughout Dr. Putnam's tenure (which ended
in 1939), contained the same or comparable provisions. n10
Indeed, when he left his post in 1939, he was honored by the
American Council of Learned Societies because (among other
things) "You have led in adapting the most modern photographic
processes to the needs of the scholar, and have * * * made
widely available for purposes of research copies of your collections
* * *." This illuminating slice of history, covering the time
of enactment and the first three decades of the 1909 Act,
should not be ignored.
These are the leading reasons why we cannot stop with the
dictionary or "normal" definition of "copy" -- nor can we
extract much affirmative help from the surfacial legislative
text. As for the other rights given in Section 1, "vend" is
clearly irrelevant (since NIH and NLM do not sell), and the
applicability to this case of "print," "reprint" and "publish"
is more dubious than of "copy." The photocopy process of NIH
and NLM, described in Part I, supra, does not even amount
to printing or reprinting in the strict dictionary sense;
and if the words be used more broadly to include all mechanical
reproduction of a number of copies, they would still not cover
the making of a single copy for an individual requester. If
the requester himself made a photocopy of the article for
his own use on a machine made available by the library, he
might conceivably be "copying" but he would not be "printing"
or "reprinting." The library is in the same position when
responding to the demands of individual researchers acting
separately.
For similar reasons there is no "publication" by the library,
a concept which invokes general distribution, or at least
a supplying of the material to a fairly large group. n11 The
author of an uncopyrighted manuscript does not lose his common
law rights, via publication, by giving photocopies to his
friends for comment or their personal use -- and publication
for Section 1 purposes would seem to have about the same coverage.
In any event, the hitherto uncodified principles of "fair
use" apply to printing, reprinting, and publishing, as well
as to copying, and therefore the collocation of general words
Congress chose for Section 1 is necessarily inadequate, by
itself, to decide this case.
III
In the fifty-odd years since the 1909 Act, the major tool
for probing what physical copying amounts to unlawful "copying"
(as well as what is unlawful "printing," "reprinting" and
"publishing") has been the gloss of "fair use" which the courts
have put upon the words of the statute. Precisely because
a determination that a use is "fair," or "unfair," depends
on an evaluation of the complex of individual and varying
factors bearing upon the particular use (see H.R. Rep. No.
83, 90th Cong., 1st Sess., p. 29), there has been no exact
or detailed definition of the doctrine. The courts, congressional
committees, and scholars have had to be content with a general
listing of the main considerations -- together with the example
of specific instances ruled "fair" or "unfair." These overall
factors are now said to be: (a) the purpose and character
of the use, (b) the nature of the copyrighted work, (c) the
amount and substantiality of the material used in relation
to the copyrighted work as a whole, and (d) the effect of
the use on a copyright owner's potential market for and value
of his work.
In addition, the development of "fair use" has been influenced
by some tension between the direct aim of the copyright privilege
to grant the owner a right from which he can reap financial
benefit and the more fundamental purpose of the protection
"To promote the Progress of Science and the useful Arts."
U.S. Const., art. 1, @ 8. The House committee which recommended
the 1909 Act said that copyright was "[n]ot primarily for
the benefit of the author, but primarily for the benefit of
the public." H.R. Rep. No. 2222, 60th Cong., 2d Sess., p.
7. The Supreme Court has stated that "The copyright law, like
the patent statutes, makes reward to the owner a secondary
consideration." Mazer v. Stein, 347 U.S. 201, 219 (1954);
United States v. Paramount Pictures, 334 U.S. 131, 158 (1948).
See Breyer, The Uneasy Case for Copyright: A study of Copyright
in Books, Photocopies, and Computer Programs, 84 Harv. L.
Rev. 281 (1970). To serve the constitutional purpose, "'courts
in passing upon particular claims of infringement must occasionally
subordinate the copyright holder's interest in a maximum financial
return to the greater public interest in the development of
art, science and industry.' Berlin v. E.C. Publications, Inc.,
329 F. 2d 541, 544 (2d Cir. 1964). Whether the privilege may
justifiably be applied to particular materials turns initially
on the nature of the materials, e.g., whether their distribution
would serve the public interest in the free dissemination
of information and whether their preparation requires some
use of prior materials dealing with the same subject matter.
Consequently, the privilege has been applied to works in the
fields of science, law, medicine, history and biography."
Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d
303, 307 (C.A. 2, 1966).
It has sometimes been suggested that the copying of an entire
copyrighted work, any such work, cannot ever be "fair use,"
but this is an overbroad generalization, unsupported by the
decisions n12 and rejected by years of accepted practice.
The handwritten or typed copy of an article, for personal
use, is one illustration, let alone the thousands of copies
of poems, songs, or such items which have long been made by
individuals, and sometimes given to lovers and others. Trial
Judge James F. Davis, who considered the use now in dispute
not to be "fair," nevertheless agreed that a library could
supply single photocopies of entire copyrighted works to attorneys
or courts for use in litigation. It is, of course, common
for courts to be given photocopies of recent decisions, with
the publishing company's headnotes and arrangement, and sometimes
its annotations. There are other examples from everyday legal
and personal life. We cannot believe, for instance, that a
judge who makes and gives to a colleague a photocopy of a
law review article, in one of the smaller or less available
journals, which bears directly on a problem both judges are
then considering in a case before them is infringing the copyright,
rather than making "fair use" of his issue of that journal.
Similarly with the photocopies of particular newspaper items
and articles which are frequently given or sent by one friend
to another. n13 There is, in short, no inflexible rule excluding
an entire copyrighted work from the area of "fair use." Instead,
the extent of the copying is one important factor, but only
one, to be taken into account, along with several others.
Under these over-all standards, we have weighed the multiplicity
of factors converging on the particular use of plaintiff's
material made by NIH and NLM, as shown by this record. There
is no prior decision which is dispositive and hardly any that
can be called even close; we have had to make our own appraisal.
The majority of the court has concluded that, on this record,
the challenged use should be designated "fair," not "unfair."
In the rest of this part of our opinion, we discuss seriatim
the various considerations which merge to that conclusion.
But we can help focus on what is probably the core of our
evaluation by stating summarily, in advance, three propositions
we shall consider at greater length: First, plaintiff has
not in our view shown, and there is inadequate reason to believe,
that it is being or will be harmed substantially by these
specific practices of NIH and NLM; second, we are convinced
that medicine and medical research will be injured by holding
these particular practices to be an infringement; and, third,
since the problem of accommodating the interests of science
with those of the publishers (and authors) calls fundamentally
for legislative solution or guidance, which has not yet been
given, we should not, during the period before congressional
action is forthcoming, place such a risk of harm upon science
and medicine.
1. We start by emphasizing that (a) NIH and NLM are non-profit
institutions, devoted solely to the advancement and dissemination
of medical knowledge which they seek to further by the challenged
practices, and are not attempting to profit or gain financially
by the photocopying; (b) the medical researchers who have
asked these libraries for the photocopies are in this particular
case (and ordinarily) scientific researchers and practitioners
who need the articles for personal use in their scientific
work and have no purpose to reduplicate them for sale or other
general distribution; and (c) the copied articles are scientific
studies useful to the requesters in their work. On both sides
-- library and requester -- scientific progress, untainted
by any commercial gain from the reproduction, is the hallmark
of the whole enterprise of duplication. There has been no
attempt to misappropriate the work of earlier scientific writers
for forbidden ends, but rather an effort to gain easier access
to the material for study and research. This is important
because it is settled that, in general, the law gives copying
for scientific purposes a wide scope. See, e.g., Rosemont
Enterprises, Inc. v. Random House, Inc., supra, 366 F. 2d
at 306-07; Loew's, Inc. v. Columbia Broadcasting System, Inc.,
131 F. Supp. 165, 175 (S.D. Cal. 1955), aff'd, 239 F. 2d 532
(C.A. 9, 1956), aff'd by an equally divided Court, 356 U.S.
43 (1958); Greenbie v. Noble, 151 F. Supp. 45, 67-68 (S.D.N.Y.
1957); Thompson v. Gernsback, 94 F. Supp. 453, 454 (S.D.N.Y.
1950); Henry Holt & Co. v. Liggett & Myers Tobacco Co., 23
F. Supp. 302, 304 (E.D. Pa. 1938).
2. Both libraries have declared and enforced reasonably strict
limitations which, to our mind, keep the duplication within
appropriate confines. The details are set forth in Part I
supra, and in our findings. Both institutions normally restrict
copying on an individual request to a single copy of a single
article of a journal issue, and to articles of less than 50
pages. Though exceptions are made, they do not appear to be
excessive, unwarranted, or irrational. For instance, though
on occasion one person was shown to have ordered or received
more than one photocopy of the same article, the second copy
was for a colleague's use or to replace an illegible or undelivered
copy. Some care is also taken not to have excessive copying
from one issue or one volume of the periodical. While a certain
amount of duplication of articles does, of course, occur,
it does not appear to be at all heavy. n14 There is no showing
whatever that the recipients use the libraries' photocopying
process to sell the copies or distribute them broadly.
NIH responds only to requests from its own personnel, so that
its entire photoduplication system is strictly "inhouse" --
in the same way that a court's library may supply a judge
of that court with a copy of a law journal article or a reported
decision. NLM fulfills requests more generally but it has
adopted the practice of not responding (outside of the Government)
where the article appears in a recent (preceding 5 years)
issue of a periodical on its "widely-available list". The
result is that the duplication of recent issues of generally
available journals is kept within the Government, and distribution
to the larger medical public is limited to older, less available
issues and to journals which are harder to obtain from medical
libraries. It is a fair inference, supported by this record,
that at the very least in the latter classes the demand has
been inadequately filled by reprints and the publisher's sale
of back issues. See, also, Part III, 4, infra. In those instances
not covered by "five year" policy, the impression left by
the record is that, on the whole, older rather than current
articles were usually requested.
Brushing aside all such breakdowns, plaintiff points to the
very large number, in absolute terms, of the copies made each
year by the two libraries. We do not think this decisive.
n15 In view of the large numbers of scientific personnel served
and the great size of the libraries -- NIH has over 100,000
volumes of journal materials alone, and NLM is currently binding
over 18,000 journals each year -- the amount of copying does
not seem to us to have been excessive or disproportionate.
The important factor is not the absolute amount, but the twin
elements of (i) the existence and purpose of the system of
limitations imposed and enforced, and (ii) the effectiveness
of that system to confine the duplication for the personal
use of scientific personnel who need the material for their
work, with the minimum of potential abuse or harm to the copyright
owner. The practices of NIH and NLM, as shown by the record,
pass both of these tests, despite the large number of copies
annually sent out.
Without necessarily accepting the full sweep of the concept
that the library is nothing more than the individual requester's
ministerial agent, we do agree that the NIH and NLM systems,
as described in the evidence, are close kin to the current
Library of Congress policy, see note 16, infra, of maintaining
machines in the library buildings so that readers can do their
own copying. The principal extension by NLM and NIH is to
service requesters who cannot conveniently come to the building,
as well as out-of-town libraries. But the personal, individual
focus is still present. The reader who himself makes a copy
does so for his own personal work needs, and individual work
needs are likewise dominant in the reproduction programs of
the two medical libraries -- programs which are reasonably
policed and enforced.
3. We also think it significant, in assessing the recent and
current practices of the two libraries, that library photocopying,
though not of course to the extent of the modern development,
has been going on ever since the 1909 Act was adopted. In
Part II,supra, we have set forth the practice of the Library
of Congress at that time and for many years thereafter. n16
In fact, photocopying seems to have been done in the Library
at least from the beginning of this century. Can Copyright
Law Respond to the New Technology? 61 Law. Lib. J. 387, 400
(1968) (comments of V. Clapp). In 1935 there was a so-called
"gentlemen's agreement" between the National Association of
Book Publishers (since defunct) and the Joint Committee on
Materials for Research (representing the libraries), stating
in part: "A library * * * owning books or periodical volumes
in which copyright still subsists may make and deliver a single
photographic reproduction * * * of a part thereof to a scholar
representing in writing that he desires such reproduction
in lieu of loan of such publication or in place of manual
transcription and solely for the purposes of research * *
*." Though this understanding discountenanced photoduplication
of an entire book it was regularly construed as allowing copying
of articles. There have been criticisms of this pact, and
we cite it, not as binding in any way on plaintiff or any
other publisher, or as showing universal recognition of "single"
photocopying, but as representing a very widely held view,
almost 40 years ago, of what was permissible under the 1909
statute.
There is other evidence that, until quite recently, library
photocopying was carried on with apparent general acceptance.
Witnesses in this case testified that such photocopying has
been done for at least fifty years and is well-established.
The National Library of Medicine Act, in 1956, by which NLM
was created (42 U.S.C. @ 275, et seq.), provided at @ 276(a)
(4) that the Secretary of Health, Education, and Welfare,
through NLM, should "make available, through loans, photographic
or other copying procedures or otherwise, such materials in
the Library as he deems appropriate * * *"; and the Medical
Library Assistance Act of 1965 (42 U.S.C. @ 280b-1, et seq.)
provided that grants be made to medical libraries for, among
other things, "acquisition of duplicating devices, facsimile
equipment * * * and other equipment to facilitate the use
of the resources of the library." 42 U.S.C. @ 280b-7. These
two pieces of legislation indicate to us that Congress knew
in 1956 and 1965 of the practice of library photocopying,
and assumed that it was not beyond the pale. The General Interlibrary
Loan Code (revised in 1956), see Part I, supra, is a similar
indication of the extent of the practice, and of the general
position of the libraries (at the least) that such copying
is permissible.
The fact that photocopying by libraries of entire articles
was done with hardly any (and at most very minor) complaint,
until about 10 or 15 years ago, goes a long way to show both
that photoduplication cannot be designated as infringement
per se, and that there was at least a time when photocopying,
as then carried on, was "fair use." There have been, of course,
considerable changes in the ease and extent of such reproduction,
and these developments bear on "fair use" as of today, but
the libraries can properly stand on the proposition that they
photocopied articles for many years, without significant protest,
and that such copying was generally accepted until the proliferation
of inexpensive and improved copying machines, less than two
decades ago, led to the surge in such duplication. The question
then becomes whether this marked increase in volume changes
a use which was generally accepted as "fair" into one which
has now become "unfair."
4. There is no doubt in our minds that medical science would
be seriously hurt if such library photocopying were stopped.
We do not spend time and space demonstrating this proposition.
It is admitted by plaintiff and conceded on all sides. See,
e.g. Varmer, Photoduplication of Copyrighted Material by Libraries,
Study No. 15, "Copyright Law Revision," Studies Prepared for
the Subcommittee on Patents, Trademarks and Copyrights, Senate
Judiciary Committee (1959), p. 49; Memorandum of General Counsel
Willcox, Department of Health, Education and Welfare, June
7, 1965, Hearings before Subcommittee No. 3, Committee on
the Judiciary, H. of Reps., 89th Cong., 1st Sess., on H.R.
4347, H.R. 5680, etc., "Copyright Law Revision," Part 2, 1132,
1133. The trial testimony of a number of the requesters and
authors documents the point. The supply of reprints and back
numbers is wholly inadequate; the evidence shows the unlikelihood
of obtaining such substitutes for photocopies from publishers
of medical journals or authors of journal articles, especially
for articles over three years old. n17 It is, moreover, wholly
unrealistic to expect scientific personnel to subscribe regularly
to large numbers of journals which would only occasionally
contain articles of interest to them. Nor will libraries purchase
extensive numbers of whole subscriptions to all medical journals
on the chance that an indeterminate number of articles in
an indeterminate number of issues will be requested at indeterminate
times. The result of a flat proscription on library photocopying
would be, we feel sure, that medical and scientific personnel
would simply do without, and have to do without, many of the
articles they now desire, need, and use in their work. n18
5. Plaintiff insists that it has been financially hurt by
the photocopying practices of NLM and NIH, and of other libraries.
The trial judge thought that it was reasonable to infer that
the extensive photocopying has resulted in some loss of revenue
to plaintiff and that plaintiff has lost, or failed to get,
"some undetermined and indeterminable number of journal subscriptions
(perhaps small)" by virtue of the photocopying. He thought
that the persons requesting photocopies constituted plaintiff's
market and that each photocopy user is a potential subscriber
"or at least a potential source of royalty income for licensed
copying." n19 Studies rejecting as "fair use" the kind of
photocopying involved here have also assumed, without real
proof, that the journal publishers have been and will be injured.
See, e.g., Project -- New Technology and the Law of Copyright:
Reprography and Computers, 15 U.C.L.A. L. Rev. 931 (1968);
Sophor & Heilprin, "The Determination of Legal Facts and Economic
Guideposts with Respect to the Dissemination of Scientific
and Educational Information as It Is Affected by Copyright
-- A Status Report" (1967).
The record made in this case does not sustain that assumption.
Defendant made a thorough effort to try to ascertain, so far
as possible, the effect of photoduplication on plaintiff's
business, including the presentation of an expert witness.
The unrefuted evidence shows that (a) between 1958 and 1969
annual subscriptions to the four medical journals involved
increased substantially (for three of them, very much so),
annual subscription sales likewise increased substantially,
and total annual income also grew; (b) between 1959 and 1966,
plaintiff's annual taxable income increased from $ 272,000
to $ 726,000, fell to $ 589,000 in 1967, and in 1968 to $
451,000; (c) but the four journals in suit account for a relatively
small percentage of plaintiff's total business and over the
years each has been profitable (though 3 of them show losses
in particular years and in all years the profits have not
been large, varying from less than $ 1,000 to about $ 15,000,
some of which has been shared with the sponsoring medical
societies); n20 and (d) plaintiff's business appears to have
been growing faster than the gross national product or of
the rate of growth of manpower working in the field of science.
Defendant's expert concluded that the photocopying shown here
had not damaged plaintiff, and may actually have helped it.
n21 The record is also barren of solid evidence that photocopying
has caused economic harm to any other publisher of medical
journals.
Plaintiff has never made a detailed study of the actual effect
of photocopying on its business, nor has it refuted defendant's
figures. It has relied for its assumption (in the words of
the chairman of its board) on "general business common sense
and things that you hear from subscribers, librarians and
so forth." Its argument -- and that of the other supporters
of its position n22 -- is that there "must" be an effect because
photocopies supplant the original articles, and if there were
no photocopying those who now get the copies would necessarily
buy the journals or issues. But this untested hypothesis,
reminiscent of the abstract theorems beloved of the "pure"
classical economics of 70 or 80 years ago, is neither obvious
nor self-proving. One need not enter the semantic debate over
whether the photocopy supplants the original article itself
or is merely in substitution for the library's loan of the
original issue to recognize, as we have already pointed out,
that there are other possibilities. If photocopying were forbidden,
the researchers, instead of subscribing to more journals or
trying to obtain or buy back-issues or reprints (usually unavailable),
might expend extra time in note-taking or waiting their turn
for the library's copies of the original issues -- or they
might very well cut down their reading and do without much
of the information they now get through NLM's and NIH's copying
system. The record shows that each of the individual requesters
in this case already subscribed, personally, to a number of
medical journals, and it is very questionable how many more,
if any, they would add. The great problems with reprints and
back-issues have already been noted. In the absence of photocopying,
the financial, timewasting, and other difficulties of obtaining
the material could well lead, if human experience is a guide,
to a simple but drastic reduction in the use of the many articles
(now sought and read) which are not absolutely crucial to
the individual's work but are merely stimulating or helpful.
The probable effect on scientific progress goes without saying,
but for this part of our discussion the significant element
is that plaintiff, as publisher and copyright owner, would
not be better off. Plaintiff would merely be the dog in the
manger.
Since plaintiff and those who take the same view have not
attempted any hard factual study of the actual effect of photocopying,
it is not surprising that others have concluded against an
adverse impact. The 1962 Fry Report (George Fry & Associates,
"Survey of Copyrighted Material Reproduction Practices in
Scientific and Technical Fields," March 1962) states that
the "basic conclusion of this report is that at the present
time, no significant damage occurs to the copyright holders
in the scientific and technical fields although duplication
of this material is widespread and is growing rapidly." In
March 1965, Dan Lacy, Managing Director, American Book Publishers
Council, told a House of Representatives committee: "It has
been pointed out that recent technological developments have
enormously increased the amount of photocopying in libraries
and technology is continuing to change rapidly. Most of this
photocopying, at least at present, probably consists of excerpts
and probably mostly of journal articles. Most of it at present
is probably undertaken in lieu of manual note taking, typing,
or handwriting a copy, and in lieu of library loan rather
than in lieu of buying a copy" (emphasis added). Hearings
before Subcommittee No. 3, Committee on the Judiciary, H.
of Reps., 89th Cong., 1st Sess., on H.R. 4347, H.R. 5680,
etc., "Copyright Law Revision," Part 1, p. 120. The record
in this case does not prove that the situation was any different
at the time of the trial.
To us it is very important that plaintiff has failed to prove
its assumption of economic detriment, in the past or potentially
for the future. One of the factors always considered with
respect to "fair use," see supra, is the effect of the use
on the owner's potential market for the work. This record
simply does not show a serious adverse impact, either on plaintiff
or on medical publishers generally, from the photocopying
practices of the type of NIH and NLM. In the face of this
record, we cannot mechanically assume such an effect, or hold
that the amount of photoduplication proved here "must" lead
to financial or economic harm. This is a matter of proof and
plaintiff has not transformed its hypothetical assumption,
by evidence, into a proven fact.
In this connection it is worth noting that plaintiff does
not have to concern itself, with respect to these journals,
with authors or medical societies who are interested in a
financial return. The authors, with rare exceptions, are not
paid for their contributions, and those societies which share
profits do not press for greater financial benefits. Indeed,
some of the authors of the copied articles involved in this
case testified at the trial that they favored photocopying
as an aid to the advancement of science and knowledge.
6. Added to the powerful factors we have been considering
is another (already suggested by the discussion in Part II,
supra) -- the grave uncertainty of the coverage of "copy"
in Section 1 of the 1909 Act and the doubt whether it relates
at all to periodicals. n23 The latitude for "fair use" is
of course lessened to the extent Congress has been explicit
in spelling out protection to the copyright owner. But Congress
has, up to now, left the problem of photocopying untouched
by express provision and only doubtfully covered to any extent
by the generalizations of Section 1. The statute must, of
course, "be applied to new situations not anticipated by Congress,
if, fairly construed, such situations come within its intent
and meaning" (Jerome H. Remick & Co. v. American Automobile
Accessories Co., 5 F. 2d 411 (C.A. 6, 1925), cert. denied,
269 U.S. 556), but our problem is with the latter part of
this quotation. That being so, we think that, in evaluating
"fair use," we should give the benefit of the doubt -- until
Congress acts more specifically -- to science and the libraries,
rather than to the publisher and the owner.
While, as we have said, this record fails to show that plaintiff
(or any other medical publisher) has been substantially harmed
by the photocopying practices of NIH and NLM, it does show
affirmatively that medical science will be hurt if such photocopying
is stopped. Thus, the balance of risks is definitely on defendant's
side -- until Congress acts more specifically, the burden
on medical science of a holding that the photocopying is an
infringement would appear to be much greater than the present
or foreseeable burden on plaintiff and other medical publishers
of a ruling that these practices fall within "fair use."
Plaintiff's answer is that it is willing to license the libraries,
on payment of a reasonable royalty, to continue photocopying
as they have. Our difficulty with that response -- in addition
to the absence of proof that plaintiff has yet been hurt,
and the twin doubts whether plaintiff has a viable license
system and whether any satisfactory program can be created
without legislation n24 -- is that the 1909 Act does not provide
for compulsory licensing in this field. All that a court can
do is to determine the photocopying an infringement, leaving
it to the owner to decide whether to license or to prohibit
the practice. Plaintiff and other publishers cannot enjoin
governmental libraries (because 28 U.S.C. @ 1498, supra note
1, is the sole remedy), but if photocopying of this type is
an infringement the owners are free under the law to seek
to enjoin any and all nongovernmental libraries. A licensing
system would be purely voluntary with the copyright proprietor.
We consider it entirely beyond judicial power, under the 1909
Act, n25 to order an owner to institute such a system if he
does not wish to. We think it equally outside a court's present
competence to turn the determination of "fair use" on the
owner's willingness to license -- to hold that photocopying
(without royalty payments) is not "fair use" if the owner
is willing to license at reasonable rates but becomes a "fair
use" if the owner is adamant and refuses all permission (or
seeks to charge excessive fees).
The truth is that this is now preeminently a problem for Congress:
to decide the extent photocopying should be allowed, the questions
of a compulsory license and the payments (if any) to the copyright
owners, the system for collecting those payments (lump-sum,
clearinghouse, etc.), the special status (if any) of scientific
and educational needs. Obviously there is much to be said
on all sides. The choices involve economic, social, and policy
factors which are far better sifted by a legislature. The
possible intermediate solutions are also of the pragmatic
kind legislatures, not courts, can and should fashion. But
Congress does not appear to have put its mind directly to
this problem in 1909, undoubtedly because the issue was not
considered pressing at that time. That statute is, unfortunately,
the one we must apply, and under it we have the choice only
of thumb's up or thumb's down, for the photocopying practice
involved in this litigation, without any real Congressional
guidance. Intermediate or compromise solutions are not within
our authority. n26 The theme of this subpart 6 of Part III
of the opinion is that, on balance and on this record, thumb's
up seems to us less dangerous to the varying interests at
stake during the period which remains before Congress definitively
takes hold of the subject.
7. The revision of the 1909 Act is now under consideration
and has been for several years. The House of Representatives
passed a bill in the 90th Congress (in April 1967), but the
Senate has not acted. n27 In its report on the bill which
the House adopted (H.R. Rep. No. 83, 90th Cong., 1st Sess.),
the House Committee on the Judiciary discussed the existing
doctrine of "fair use" at some length (pp. 29-37). We cite
these comments, not as binding on us, but as the official
views on the extent of "fair use" of the committee of the
House of Representatives with cognizance over copyright; as
such, they are and should be influential.
The report makes it very clear that photocopying can be a
"fair use", in proper circumstances; it negatives the notion
that copying of a complete work can never be a "fair use";
and it obviously believes that the doctrine is flexible, depending
upon the particular situation. n28 The report does not, however,
express a categorical or clear view whether photocopying of
the sort we have in this case is or is not a "fair use" under
the doctrine as it has been developing. Rather, the committee's
observations are delphic, with each side being able to quote
to us one or another passage, or to argue by analogy from
the specific situation (classroom teaching) considered in
greatest detail in the report.
Specifically on library photocopying the committee says (p.
36) that it does not favor a specific provision dealing with
that subject, and it adds: "Unauthorized library copying,
like everything else, must be judged a fair use or an infringement
on the basis of all of the applicable criteria and the facts
of the particular case. Despite past efforts, reasonable arrangements
involving a mutual understanding of what generally constitutes
acceptable library practices, and providing workable clearance
and licensing conditions, have not been achieved and are overdue.
The committee urges all concerned to resume their efforts
to reach an accommodation under which the needs of scholarship
and the rights of authors would both be respected."
We read this report, as a whole, as recognizing affirmatively
that, under the existing law, library photocopying can be
"fair use" in proper circumstances, and as leaving the determination
of whether the particular circumstances are proper ones to
an evaluation "of all the applicable criteria and the facts
of the particular case." That is, of course, the overall standard
we are using, and therefore we consider our approach to be
consistent with that of the Committee. Although one cannot
say that the report places its sanction directly on the photocopying
practices now before us, neither does it suggest or intimate
that they are "unfair." That question is left open. The report
is nevertheless helpful because it indicates the correctness
of our general approach, and also because it contradicts the
concept, urged by plaintiff, that photocopying of an entire
article is necessarily an infringement.
8. The last component we mention, as bearing on "fair use",
is the practice in foreign countries. The copyright legislation
of the United Kingdom, New Zealand, Denmark, Finland, Italy,
Norway, Sweden, France, the German Federal Republic, Lichtenstein,
Mexico, the Netherlands, and the U.S.S.R. have specific provisions
which we think would cover the photocopying activities of
NLM and NIH. Canada, India, Ireland and South Africa, while
having no specific provisions permitting copying of copyrighted
works for the purposes of private research and study, do provide
more generally, that fair dealing for purposes of private
study or research shall not be an infringement. n29 These
provisions in foreign countries with problems and backgrounds
comparable to our own are highly persuasive that the copying
done here should be considered a "fair use," not an infringement.
n30 Where Congress has left such a large void to be filled
entirely by the courts, it is appropriate for us to consider
what other jurisdictions have done either by way of legislation
or judicial decision.
IV
Fusing these elements together, we conclude that plaintiff
has failed to show that the defendant's use of the copyrighted
material has been "unfair," and conversely we find that these
practices have up to now been "fair." There has been no infringement.
As Professor (now Mr. Justice) Kaplan observed, it is "fundamental
that 'use' is not the same as 'infringement' [and] that use
short of infringement is to be encouraged * * *." Kaplan,
An Unhurried View of Copyright 57 (1967); see Fortnightly
Corp. v. United Artists Television, Inc., 392 U.S. 390, 393-95
(1968).
So as not to be misunderstood, we reemphasize four interrelated
aspects of our holding. The first is that the conclusion that
defendant's particular use of plaintiff's copyrighted material
has been "fair" rests upon all of the elements discussed in
Part III, supra, and not upon any one, or any combination
less than all. We do not have to, and do not, say that any
particular component would be enough, either by itself or
together with some of the others. Conversely, we do not have
to, and do not, say that all the elements we mention are essential
to a finding of "fair use." They all happen to be present
here, and it is enough for this case to rule, as we do, that
at least when all co-exist in combination a "fair use" is
made out.
Connected with this point is the second one that our holding
is restricted to the type and context of use by NIH and NLM,
as shown by this record. That is all we have before us, and
we do not pass on dissimilar systems or uses of copyrighted
materials by other institutions or enterprises, or in other
fields, or as applied to items other than journal articles,
or with other significant variables. We have nothing to say,
in particular, about the possibilities of computer print-outs
or other such products of the newer technology now being born.
Especially since we believe, as stressed infra, that the problem
of photo and mechanical reproduction calls for legislative
guidance and legislative treatment, we feel a strong need
to obey the canon of judicial parsimony, being stingy rather
than expansive in the reach of our holding.
The third facet articulates the same general premise -- our
holding rests upon this record which fails to show a significant
detriment to plaintiff but does demonstrate injury to medical
and scientific research if photocopying of this kind is held
unlawful. We leave untouched, because we do not have to reach
them, the situations where the copyright owner is shown to
be hurt or the recipients (or their interests) would not be
significantly injured if the reproductions were ruled to infringe.
Finally, but not at all least, we underline again the need
for Congressional treatment of the problems of photocopying.
The 1909 Act gives almost nothing by way of directives, the
judicial doctrine of "fair use" is amorphous and open-ended,
and the courts are now precluded, both by the Act and by the
nature of the judicial process, from contriving pragmatic
or compromise solutions which would reflect the legislature's
choices of policy and its mediation among the competing interests.
The Supreme Court has pointed out that such a "job is for
Congress" (Fortnightly Corp. v. United Artists Television,
Inc., 392 U.S. 390, 401 (1968)), and in an earlier copyright
case in which it was recognized that the owner might be morally
or economically entitled to protection the Court applied "the
act of Congress [as it] now stands," saying that the other
"considerations properly address themselves to the legislative
and not to the judicial branch of the Government." White-Smith
Music Co. v. Apollo Co., 209 U.S. 1, 18 (1908). Hopefully,
the result in the present case will be but a "holding operation"
in the interim period before Congress enacts its preferred
solution.
On this record and for these reasons, we hold the plaintiff
not entitled to recover and dismiss the petition.
Footnotes
n1 Prior to 1960, @ 1498 provided only for patent infringement
suits against the Federal Government. In that year, Congress
amended the section to make the United States liable in money
for copyright infringement, pursuant to Title 17 of the United
States Code, the general copyright statute. This is the first
copyright case to reach trial in this court.
n2 We list in the Appendix, infra, several considerations
to these problems.
n3 We borrow, with some modifications, the statement of facts
from the opinion of Trial Judge James F. Davis.
n4 E.g., the November 1956 issue of Medicine has 86 pages,
four of which carry commercial product advertising. The August
1965 issue of Journal of Immunology has 206 pages, nine of
which carry commercial product advertising.
n5 Defendant vigorously contests the publisher's claim to
be the copyright "proprietor" and its right to sue in this
court. The argument is that the individual authors of the
articles are the owners and they have not assigned their rights
to plaintiff.
n6 Section 3 of the copyright statute, 17 U.S.C. @ 3, says
that, "* * * [t]he copyright upon composite works or periodicals
shall give to the proprietor thereof all the rights in respect
thereto which he would have if each part were individually
copyrighted under this title." This means, and was intended
to provide, that each article in the journals is protected
from infringement to the same extent as the entire issue.
Advertisers Exch., Inc. v. Laufe, 29 F. Supp. 1 (W.D. Pa.
1939); King Features Syndicate v. Fleischer, 299 F. 533 (C.A.
2, 1924).
n7 Congress enacted the first copyright statute in 1790 (Act
of May 31, 1790, ch. 15, 1 Stat. 124). Thereafter, the statute
was revised from time to time, notably in 1802, 1831, 1870,
and 1891. In 1909, the present statute was passed (Act of
March 4, 1909, ch. 320, 35 Stat. 1075) and later was codified
as 17 U.S.C. (Act of July 30, 1947, 61 Stat. 652).
n8 For instance, H.R. Rep. No. 2222, 60th Cong., 2d Sess.
4 (1909) states: "Subsection (a) of section 1 adopts without
change the phraseology of section 4952 of the Revised Statutes,
and this, with the insertion of the word 'copy,' practically
adopts the phraseology of the first copyright act Congress
ever passed -- that of 1790. Many amendments of this were
suggested, but the committee felt that it was safer to retain
without change the old phraseology which has been so often
construed by the courts."
n9 There was an 1911 edition, but no copy has been located.
n10 The Library's current practice is described in Part III,
3, note 16, infra.
n11 To the extent that Macmillan Co. v. King, 223 F. 862 (D.
Mass. 1914), may possibly suggest that "publication" can occur
through simple distribution to a very small restricted group,
for a special purpose, we think the opinion goes too far.
n12 Leon v. Pacific Tel. & Tel. Co., 91 F. 2d 484, 486 (C.A.
9, 1937) and Public Affairs Associates, Inc. v. Rickover,
284 F. 2d 262, 272 (C.A.D.C. 1960), vacated and remanded,
369 U.S. 111 (1962), which are often cited in this connection,
both involved actual publication and distribution of many
copies, not the simple making of a copy for individual personal
or restricted use. In Wihtol v. Crow, 309 F. 2d 777 (C.A.
8, 1962), 48 copies of the copyrighted song were made and
distributed, and there were a number of public performances
using these copies. It was as if the defendant had purchased
one copy of sheet music and then duplicated it for an entire
chorus.
On the other hand, New York Tribune, Inc. v. Otis & Co., 39
F. Supp. 67 (S.D.N.Y. 1941), shows that copying of an entire
copyrighted item is not enough, in itself, to preclude application
of "fair use." Although it was already plain that an entire
copyrighted item (a newspaper editorial) had been reproduced,
the court ordered further proceedings to take account of other
factors.
n13 Verner Clapp, former Acting Librarian of Congress, has
pointed out some of the uses of a photocopy for which the
library copy original is unsuited (Can Copyright Law Respond
to the New Technology?, 61 Law Lib. J. 387, 407 (1968):
"I cannot submit the original conveniently in a court, in
a suit of law. I cannot put the original into my filing cabinet.
I can't shuffle it with notes in preparation for an address.
I can't make notes on it. I can't conveniently give it to
a typist. I can't use it as printer's copy. I can't send it
through the mail without serious risk of loss of an original.
With a photocopy I can do all these things and more, and this
is the reason I want a copy."
n14 One survey of NIH operations shows only 4 instances of
duplication in over 200 requests; at NLM, as of 1964, duplication
occured at a 10% rate in the 102 most heavily used journals
(constituting one-third of total requests); if all requests
were considered, the rate would be less. The Sophar & Heilprin
report (see Appendix), which is not friendly to library photocopying,
estimates that for libraries generally the duplication rate
was about 3% (p. iii).
n15 In 1970, NIH copied 85,744 and NLM 93,746 articles.
n16 Currently, and for some time, the Library of Congress
has said that copyright material will "ordinarily" not be
photocopied by the Library "without the signed authorization
of the copyright owner," but "[e]xceptions to this rule may
be made in particular cases." The Library does, however, maintain
machines which readers may themselves use for photocopying;
these machines contain notices saying that "a single photocopy
of copyrighted material may be made only for the purpose of
study, scholarship, or research, and for no other purpose"
and "the sale and/or further reproduction of any photocopied
copyrighted materials is illegal."
n17 Plaintiff itself publishes a notice to the effect that
it does not attempt to keep a stock of back issues, and it
refers requests for reprints to the author.
n18 We think the alternative of compulsory licensing is not
open to us under the present copyright statute. See, infra,
Parts III, 6, and IV.
n19 It is wrong to measure the detriment to plaintiff by loss
of presumed royalty income -- a standard which necessarily
assumes that plaintiff had a right to issue licenses. That
would be true, of course, only if it were first decided that
the defendant's practices did not constitute "fair use." In
determining whether the company has been sufficiently hurt
to cause these practices to become "unfair," one cannot assume
at the start the merit of the plaintiff's position, i.e.,
that plaintiff had the right to license. That conclusion results
only if it is first determined that the photocopying is "unfair."
n20 Defendant explains the loss years and the fall-off in
some subscriptions in some years as due to particular circumstances
(which are spelled out) other than photocopying.
n21 The trial judge referred to two instances in which subscribers
cancelled subscriptions because of the availability of photocopying.
Defendant is correct that both instances rest on hearsay,
and in any event this small number of purported cancellations
is de minimis in view of the more solid and detailed proof
as to the health of plaintiff's journals and the increase
in their subscription lists.
n22 The published literature does not reveal any careful,
thorough, impartial study of this question. Often there is
no attempt to ascertain the actual economic impact on the
publishers and authors; when inquiry has been made of the
latter, their conclusory generalizations of injury have been
accepted uncritically.
n23 The same is true of "print," "reprint," and "publish,"
as applied to the challenged practices of NLM and NIH.
n24 Defendant and its amici strongly attack plaintiff's so-called
licensing plan as nothing more than a shell. The American
Library Association points out, for instance, that the Williams
& Wilkins license would apparently not apply to inter-library
loans or to requests from persons not physically present in
the library building.
There is also debate over whether a feasible ASCAP-type or
clearinghouse system can be developed without legislation,
and if so whether it would be desirable. See, e.g., Note,
Education and Copyright Law: An Analysis of the Amended Copyright
Revision Bill and Proposals for Statutory Licensing and a
Clearinghouse System, 56 Va. L. Rev. 664 (1970); also published
as MacLean, Education and Copyright Law: An Analysis of the
Amended Copyright Revision Bill and Proposals for Statutory
Licensing and a Clearinghouse System, in ASCAP, "Copyright
Law Symposium, Number Twenty," 1 (1972); Breyer, The Uneasy
Case for Copyright: A Study of Copyright in Books, Photocopies
and Computer Programs, 84 Harv. L. Rev. 281, 330 ff. (1970);
Note: New Technology and the Law of Copyright: Reprography
and Computers, 15 UCLA L. Rev. 939, 961 ff. (1968).
n25 A court's powers under the anti-trust legislation is another
matter.
n26 It has been suggested, however, that publishers now have
the power to adopt the intermediate solution of charging more
for subscriptions sold to libraries or other entities which
engage regularly in photocopying.
n27 A synopsis of the revision effort (up to 1968) is set
forth in Fortnightly Corp. v. United Artists Television, Inc.,
392 U.S. 390, 396 n. 17 (1968).
n28 The report says (p. 29) that "* * * since the doctrine
is an equitable rule of reason, no generally applicable definition
is possible, and each case raising the question must be decided
on its own facts"; that (p. 32) the committee endorses "the
purpose and general scope of the judicial doctrine of fair
use, as outlined earlier in this report, but there is no disposition
to freeze the doctrine in the statute, especially during a
period of technological change. Beyond a very broad statutory
explanation of what fair use is and some of the criteria applicable
to it, the courts must be free to adapt the doctrine to particular
situations on a case-by-case basis"; and that (p. 32) "Section
107, as revised by the committee, is intended to restate the
present judicial doctrine of fair use, not to change, narrow,
or enlarge it in any way."
n29 The foreign laws are compiled in Copyright Laws and Treaties
of the World, published by UNESCO.
n30 The general report of the Committee of Experts on the
Photographic Reproduction of Protected Works [a joint committee
of UNESCO and the United International Bureau for the Protection
of Intellectual Property (BIRPI)] recommended that libraries
should have the right to provide one copy free of copyright
for each user provided that such copy, in the case of a periodical,
shall not be more than a single article. 4 Copyright 195,
197 (1968).
Appendix
SOME DISCUSSIONS OF LIBRARY PHOTOCOPYING
B. Varmer, Photoduplication of Copyrighted Material by Libraries,
Study No. 15, Copyright Law Revision, Studies Prepared for
Senate Comm. on the Judiciary, 86th Cong., 2d Sess. (1960);
G. Sophar and L. Heilprin, The Determination of Legal Facts
and Economic Guideposts with Respect to the Dissemination
of Scientific and Educational Information as it is Affected
by Copyright -- A Status Report, Final Report, Prepared by
The Committee to Investigate Copyright Problems Affecting
Communication in Science and Education, Inc., for the U.S.
Department of Health, Education, and Welfare, Project No.
70793 (1967); Report of the Register of Copyrights on the
General Revision of the U.S. Copyright Law to the House Comm.
on the Judiciary, 87th Cong., 2d Sess. at 25-26 (1961); Project
-- New Technology and the Law of Copyright: Reprography and
Computers, 15 U.C.L.A. L. Rev. 931 (1968); V. Clapp, Copyright
-- A Librarian's View, Prepared for the National Advisory
Commission on Libraries, Association of American Libraries
(1968); Schuster and Bloch, Mechanical Copyright, Copyright
Law, and the Teacher, 17 Clev.-Mar. L. Rev. 299 (1968); "Report
on Single Copies" -- Joint Libraries Committee on Fair Use
in Photocopying, 9 Copyright Soc'y Bull. 79 (1961-62); Breyer,
"The Uneasy Case for Copyright: A Study of Copyright in Books
Photocopies, and Computer Programs," 84 Harv. L. Rev. 281
(1970); Note, "Statutory Copyright Protection for Books and
Magazines Against Machine Copying," 39 Notre Dame Lawyer 161
(1964); Note, Education and Copyright Law: An Analysis of
the Amended Copyright Revision Bill and Proposals for Statutory
Licensing and a Clearinghouse System," 56 Va. L. Rev. 664
(1970); Hattery and Bush (ed.), Reprography and Copyright
Law (1964).
[**149contd]
[EDITOR'S NOTE: The page numbers of this document may appear
to be out of sequence; however, this pagination accurately
reflects the pagination of the original published documents.]
FINDINGS OF FACT
The court, having considered the evidence, the decision and
findings of former Trial Judge James F. Davis, and the briefs
and arguments of counsel, makes findings of fact as follows:
1. This is a copyright suit under 28 U.S.C. @ 1498(b). Plaintiff
seeks reasonable and entire compensation for alleged infringement
by the United States of certain copyrights in medical journals.
2. Plaintiff, The Williams & Wilkins Company, is a publisher
located in Baltimore, Maryland. Though a relatively small
company, plaintiff is one of the major publishers of medical
journals in the United States. Plaintiff also publishes medical
books. Plaintiff is a family-owned corporation, and its principal
officers are William M. Passano and Charles O. Reville.
3. The Government agency accused of infringement is the Department
of Health, Education, and Welfare, in particular the National
Institutes of Health (NIH) and the National Library of Medicine
(NLM). NIH and NLM are located in Bethesda, Maryland.
4. The petition was filed in this court on February 27, 1968,
and was amended on July 23, 1970. The petition alleged infringement
by reason of the Government's unauthorized photocopying of
seven journal articles, identified below as Counts I to VII.
The amended petition alleged infringement by reason of the
Government's unauthorized photocopying of one journal article,
identified below as Count VIII. The articles, and the journals
in which they were published, are as follows:
Count Article
I. The Genetic Mucopolysaccharidoses
II. Supersensitivity and Subsensitivity to Sympatho-
mimetic Amines.
III. Detection of Two Antibodies in Single Plasma
Cells by the Paired Fluorescence Technique.
IV. Fluorescent Antibody Staining
V. Chromatographic Purification of Tetramethyl-
rhodamine-Immune Globulin Conjugates and
Their Use in the Cellular Localization of
Rabbit
Gamma-Globulin Polypeptide Chains.
VI. The Stability of Messenger Ribonucleic Acid in
Antibody Synthesis.
VII. The Course of Non Specific Ulcerative Colitis:
Review of Twenty Years Experience and Late
Results.
VIII. Occlusion of the Hepatic Veins in Man
Count Authors Journal
I. Victor A. McKusick, David Medicine
Kaplan, David Wise, W. Brian
Hanley, S. B. Suddarth, M. E.
Sevick, A. Edward Maumanee.
II. Ullrich Trendelenburg Pharmacological
Reviews
III. R. N. Hiramoto, M. Hamlin Journal of
Immunology
IV. B. T. Wood, S. H. Thompson, Journal of
G. Goldstein. Immunology
V. John J. Cebra, Gerald Goldstein Journal of
Immunology
VI. Velta Lazda, Jason L. Starr Journal of
Immunology
VII. Benjamin M. Banks, Burton I. Gastroenterology
Korelitz, Louis Zetzel.
VIII. R. G. F. Parker Medicine
Count Vol. Issue Pages Month Year
I. 44 6 445-483 Nov 1965
II. 15 2 225-276 June 1963
III. 95 2 214-224 Aug 1965
IV. 95 2 225-229 Aug 1965
V. 95 2 230-245 Aug 1965
VI. 95 2 254-261 Aug 1965
VII. 32 6 983-1012 June 1957
VIII. 38 4 369-402 Dec 1959
5. (a) Plaintiff publishes 37 medical journals, all of which
are copyrighted. Of these, 26 are published in conjunction
with professional societies, with the copyright being owned
by plaintiff in 13 of such journals and the societies owning
the copyright in the remaining 13. The journal Medicine is
published by plaintiff for its own benefit, i.e., not in conjunction
with a professional society. The journal Pharmacological Reviews
is and has been published by plaintiff since 1909 in conjunction
with the American Society for Pharmacology and Experimental
Therapeutics. The Journal of Immunology is and has been published
by plaintiff for about 50 years in conjunction with the American
Association of Immunologists. The journal Gastroenterology
is and has been published by plaintiff since 1946 in conjunction
with the American Gastroenterological Association. The four
journals above named are published with notice of copyright
in plaintiff's name. Plaintiff has contracts with the above-noted
professional societies, which contracts deal in part with
copyright. Although there are differences in phraseology among
the contracts, such differences have led to no problems in
dealings between plaintiff and the societies with respect
to copyright matters. So far as the record shows, the parties
to the contracts consider it the responsibility of plaintiff
to enforce the copyright by granting licenses or instituting
appropriate lawsuits.
(b) The agreement relating to copyright between plaintiff
and the American Society for Pharmacology and Experimental
Therapeutics (ASPET), under which agreement Pharmacological
Reviews is published, provides as follows: * * *
5. COPYRIGHT. The Society is sole owner of the periodical
but for the sake of convenience, copyright shall be taken
out in the name of the Publisher. Procurement of copyright
of each issue is the duty of the Publisher and the costs incident
thereto shall be charged to the profit-and-loss account of
the periodical. The Publisher may publish or permit others
to publish excerpts from the periodical after publication
but such excerpting shall not be so substantial as to interfere
with the sale of the periodical.
* * *
10. REVERSION OF RIGHTS. In case of bankruptcy, assignment
for benefit of creditors, or liquidation for any cause of
the Publisher, or upon termination of this Agreement for any
cause stipulated herein, all rights conveyed under this Agreement
by the Society to the Publisher shall revert to the Society
forthwith.
* * *
The agreement was in effect at all times here material. There
is no evidence that ASPET objected to, acquiesced in, or was
any way involved with, the bringing of this suit by plaintiff.
(c) The agreement relating to copyright between the American
Association of Immunologists (AAI) and plaintiff, under which
agreement the Journal of Immunology is published, provides
as follows:
* * *
5. PROCUREMENT OF COPYRIGHT. The Association is the owner
of the periodical but for the convenience of both parties
copyright shall be procured by and in the name of the Publisher,
and the costs incident thereto shall be charged to the profit-and-loss
account of the periodical. The Association reserves the right
to have the copyright assigned to the Association if at any
time in the future this seems desirable. [Emphasis supplied.]
* * *
The agreement was in effect at all times here material. There
is no evidence that AAI ever exercised its right to have assigned
to it by plaintiff the ownership of any copyright registration
in the Journal of Immunology. Nor is there evidence to show
that AAI objected to, acquiesced in, or was any way involved
with, the bringing of this suit by plaintiff.
(d) The agreement relating to copyright between the American
Gastroenterological Association (AGA) and plaintiff, under
which agreement Gastroenterology is published, provides as
follows:
* * *
(2) COPYRIGHT. The Association grants to the Publisher the
exclusive right to copyright, in the name of the Publisher,
and to renew such copyrights, all material published in the
said Journal, and to publish the said work in all languages
during the term of the copyright.
* * *
The agreement has been in effect since 1942. There is no evidence
that AGA objected to, acquiesced in, or was in any way involved
with, the bringing of this suit by plaintiff.
6. (a) The Count I-to-Count VIII articles were published in
their respective journals on or about the dates indicated
in finding 4. The journals were published with a notice of
copyright consisting of the word "Copyright," the symbol "Copyright",
the name "The Williams & Wilkins Company," and the year of
publication affixed to the title page of, and elsewhere on,
each journal. In due course, the Register of Copyrights issued
to plaintiff, with respect to each of the journals, the following
certificates of registration:
Certificate of
Journal Registration
Number
Medicine, Vol. 44, No. 6 B 231973
Pharmacological Reviews, Vol. 15, No. 2 B 49574
The Journal of Immunology, Vol. 95, No. 2 B 216408
Gastroenterology, Vol. 32, No. 6 B 663158
Medicine, Vol. 38, No. 4 B 809926
(b) Only the issue of liability is now before the court; accounting,
if any, is reserved for later proceedings. Defendant admits
that at least one photocopy of each of the Count I-to-Count
VIII articles was made by defendant's NIH or NLM without authorization
of plaintiff within the pertinent accounting period, as follows:
Article Date Name of
Photocopied Requester
Count I 9/29/67 Backman
" " 10/5/67 Gabor
" " 10/19/67 Backman
Count II 9/29/67 McCallum
Count III 9/27/67 McEnany
Count IV 9/27/67 McEnany
" " 11/13/67 Reynolds
Count V 9/27/67 McEnany
" " 11/13/67 Reynolds
Count VI 9/27/67 McEnany
Count VII 10/12/67 Bird
Count VIII 1/11/68 Pitcher
" " 12/68 Young
The persons named above as "Requester" are all physicians
or other professional medical personnel who requested from
NIH or NLM copies of the articles in connection with medical
research work or patient care at NIH or elsewhere. The copies
were retained by the requesters who, for the most part, kept
them in personal files as permanent documents for later reference
and use, or put them in files available for use by coworkers
or colleagues. The requesters needed the articles in connection
with their professional work, and the copies were used solely
for those purposes. The request by Dr. Pitcher of the Count
VIII article was to NLM through an Army hospital library in
Japan. All other requests listed above were to the NIH library
and were made directly by the requester.
7. The number of subscriptions in the year 1969 and the annual
subscription prices for the journals involved in this suit
are as follows:
Approximate
Journal Number of Price
Subscriptions
Medicine 5,400 $ 12.00
Pharmacological Reviews 3,100 15.00
Journal of Immunology 4,700 n1 22.00
n2 44.00
Gastrcenterology 7,000 n1 12.50
n2 25.00
8. Plaintiff's journals, noted in finding 7, are widely distributed
in medical libraries throughout the country, are in the collection
at the NIH library and are included on a list of journals
of widespread availability compiled by NLM.
9. (a) Plaintiff's function, as a publisher of medical and
scientific journals and books, is to determine what is needed
to advance knowledge in the field of medicine; determine who
is qualified to write on that subject; and edit, produce and
market their manuscripts. Plaintiff accepts manuscripts from
physicians and related medical professionals for publication
in an appropriate journal. The considerations which influence
a contributor of a manuscript as to the journal to which to
submit the manuscript include (i) the subject matter and length
of the manuscript, (ii) the quality of articles published
in the journal, (iii) the standing of the journal's editorial
board, (iv) the nature of the journal's readership, and (v)
the circulation of the journal. Contributors rarely publish
their own articles because of the high cost involved and because
acceptance by a leading journal marks the article as one of
high quality. E.g., Gastroenterology is considered the outstanding
journal in its speciality field in the United States and probably
in the world. Contributors submit manuscripts to Medicine
because that journal publishes lengthy, definitive articles
and is well-disseminated.
(b) A board of editors of each of plaintiff's journals screens
the submitted manuscripts, and manuscripts suitable for publication
are edited and revised, as necessary and within the discretion
of the editors. Often, substantial editing is done by the
editorial board; sometimes contributors are required to revise
manuscripts prior to acceptance. If a journal is the official
organ of a professional society, the society appoints the
board of editors. The editors are responsible to the society
and are compensated by the society which, in turn, shares
with plaintiff the profits from journal sales, in accordance
with the particular contractual relationship between plaintiff
and the society.
Revenues from plaintiff's journals are derived largely through
subscription sales and also through advertising. The American
Gastroenterological Association and the American Association
of Immunologists get 50 percent of the profits from Gastroenterology
and the Journal of Immunology, respectively. The American
Society for Pharmacology and Experimental Therapeutics gets
90 percent of the profits from Pharmacological Reviews. Printing
preparation costs are about 50-65 percent of the total cost
of publication of plaintiff's journals.
10. Authors whose manuscripts are accepted and published by
plaintiff, including the authors of the articles here in suit,
are not paid monetary compensation by plaintiff; moreover,
some journals require that authors pay a fee for published
pages in excess of a preselected number of pages. Authors
are, however, gratified when plaintiff publishes their works
because of enhancement of their professional status, in that
their works are screened by highly critical editors and are
published in journals having wide dissemination and high reputation.
Authors, therefore, submit manuscripts to plaintiff for dual
purposes: to disseminate medical information for the public
welfare; and to seek recognition from the scientific community
from which flows increased professional and economic opportunity.
Most articles published in plaintiff's journals, and like
journals, are the result of research work done under private
or public grant; and sometimes a requirement of the grant
is that the research worker will seek to have the results
of the work published. Sometimes, the grants include funds
to pay for excess-page charges to a journal publisher.
11. Authors whose articles are published by plaintiff usually
purchase from plaintiff reprints of their articles (on the
average, about 300) for distribution to interested colleagues.
In general, the number of reprints purchased by authors, per
article, has not changed over the past 10 years. Most authors
distribute reprints free of charge to those requesting them.
Depending upon the importance of, and professional interest
in, a particular article, all reprints are distributed by
authors within several months up to several years after publication.
If someone requests directly from plaintiff a copy of an article
appearing in one of plaintiff's journals, plaintiff first
refers the requester to the author for a reprint; then offers
to sell (either directly or through a licensed reprint house)
a back copy of the issue in which the article appeared; and,
finally, refers the requester to the Institute of Scientific
Information, plaintiff's licensee for making photocopies.
(Finding 36.) Authors who want to reprint one of their articles
from one of plaintiff's journals request plaintiff's permission
to do so. Others wanting to reprint articles from one of plaintiff's
journals usually ask permission of the author and also ask
permission of plaintiff.
12. (a) NIH constitutes 10 institutes, each of which is concerned
with a specialty of health and medical care. The mission of
NIH is to advance health and well-being through the support
of research in diseases, the support of educational and medical
institutions, and improved biomedical communications. Generally,
three types of activities are carried on by NIH: education
and manpower training; communication of medical information;
and research conducted by the various institutes. Research,
as well as education and manpower training, is performed by
Government employees of the institutes and also by private
persons and organizations supported by NIH grants. Biomedical
communication is the function of NLM. (Finding 20.) NIH employs
over 12,000 persons, 4,000 of whom are professionals and 2,000
of whom have doctoral degrees. In fiscal 1970, NIH spent over
$ 1.5 billion for medical research, about $ 100 million of
which was for intramural medical research. The balance was
spent either for other intramural programs or for grants to
outside organizations.
(b) Total national support of medical research, both Federal
and non-Federal, has increased enormously in the period 1950-1970.
In 1950, only about $ 160 million were spent. By 1970, the
total spent was $ 2.7 billion. In 1950, the Federal Government
contributed less than half the funds available for medical
research. In 1970, the Federal Government contributed nearly
two-thirds.
13. A library is essential to the conduct of medical research.
A principal product of research scientists is their publications
and publication of results is a vital part of research. NIH
maintains and operates a technical library which is open to
the public. The library houses about 125,000 to 150,000 volumes,
of which 30,000 are books. The balance is periodicals or journals.
The NIH library subscribes to over 3,000 different journal
titles, of which 600 are purchased in multiple copies. The
functions of the NIH library include acquisition, selection
and cataloging of journal and book materials, preparation
of reference services, response to queries for specific information,
bibliographic services, formulation of computerized searches,
a translation unit, housekeeping service, and a library copy
service. The library's budget for 1970 was about $ 1.1 million,
of which about $ 85,000 was for purchase of journal materials.
14. The NIH library subscribes to all 37 journals which plaintiff
publishes. For about one-third of such journals, the library
gets more than one copy. The library gets two copies of each
of the four journals involved in this suit.
15. As an integral part of its operation, the NIH library
operates a comprehensive system of providing photocopies of
articles in scientific journals. Photocopying at the NIH library
(as well as at NLM) includes making a photographic copy of
an article on microfilm, and then using the microfilm for
further photocopying. The NIH photocopying service uses two
Xerox copying machines and two Recordac microfilm cameras.
The microfilm cameras are used in conjunction with a Xerox
Copy-Flo printer to provide NIH personnel with permanent copies
of journal articles. The microfilm is destroyed after a hard
Xerox copy is made. NIH leases its Xerox machines from Xerox
Corporation which it pays according to the number of pages
photocopied. Microfilm used to photocopy articles at the NIH
library is sent to NLM for processing. Such processing could
be done by any commercial developer having the necessary equipment.
Four regularly assigned employees operate the NIH photocopy
equipment. In fiscal 1970, the library's photocopying budget
was $ 86,000 and the library filled 85,744 requests for photocopies
of journal articles, constituting about 930,000 pages. The
average request was about 10-12 pages and the average cost
per request was about $ 1.
16. Photocopying services of the NIH library are available
only to NIH personnel. Members of the general public, whie
they may use the library, are not permitted to have materials
photocopied. Two kinds of service are provided: over-the-counter
and by mail. To get a photocopy, the requester must submit
a request slip and an authorization slip. Authorization slips
permit copying of either 20 pages or less, or 6 pages or less.
The requirement for authorization slips is a budgetary limitation
to hold down photocopying costs. Costs of library operation,
including photocopying, are shared by the various institutes
of NIH on a pro-rata basis.
17. (a) The photocopying policies of the NIH library have
been essentially the same from 1965 to the present. If the
library subscribes to but one copy of a journal, that copy
is maintained in the library for the use of readers. If the
library subscribes to a second copy of a journal, such copy
will circulate among interested persons at NIH. Upon the request
of interested personnel, articles in journals are photocopied
at no charge to the requester. The library's policy on photocopying
is that, as a general rule, only a single copy of a journal
article will be made per request and each request is limited
to about 40 to 50 pages though exceptions may be, and in fact
have been, made in the case of long articles, upon approval
of the Assistant Chief of the library branch. Also, as a general
rule, requests for photocopying are limited to only a single
article from a journal issue. However, exceptions to this
general rule are routinely made, so long as substantially
less than an entire journal is photocopied, i.e., less than
about half of the journal. Coworkers can, and frequently do,
request single copies of the same article and such requests
are honored. Also, there is nothing in the library's photocopying
policy to prevent a user from returning month after month
to get photocopies of one or more articles from one issue
of a journal.
(b) NIH library personnel will not knowingly photocopy an
entire issue of a journal. However, it is possible for a single
user to make a series of separate requests which will result
in the photocopying of an entire issue. The photocopy equipment
operators are instructed to bring to the attention of their
supervisor what they believe to be attempts to copy a substantial
part, or all, of a journal issue. Nevertheless, because of
the large volume of photocopying done by the library, it is
difficult and impractical to police and curb such attempts.
Substantially more people receive photocopies of journal articles
from the NIH library than would copy by hand substantial portions
of articles. Photocopies made by the library are not returned
by the users. Sometimes the users make further photocopies
from photocopies obtained from the NIH library to distribute
to colleagues or otherwise. However, there is no showing that
the library's policies have been abused or circumvented. Where
the same person orders more than one copy the second has been
for a colleague or to replace an illegible or undelivered
copy. Nor is there a showing that the amount of the duplication
of the same article has been excessive or unwarranted.
18. As a general rule, books (or monographs) which carry a
copyright notice are not photocopied by the NIH library, even
to the extent of a short chapter, without permission of the
copyright owner. However, under special circumstances (the
details of which are not clear from the record) and upon authorization
of library supervisory personnel, exceptions are sometimes
made to this rule to the extent of copying small portions,
e.g., charts or graphs, from books (or monographs).
19. Materials (i.e., books and journals) not owned by the
NIH library, and which are requested by users, are obtained
by means of interlibrary loan. When an interlibrary loan is
requested, the standard interlibrary loan form is used. Basically,
the NIH library applies to interlibrary loan requests the
same restrictions on photocopying as are applied to requests
filled internally.
20. (a) The mission of NLM is the exchange and dissemination
of medical information. NLM began as the library of the Surgeon
General of the Army, which was founded in 1836. Later such
library became the Armed Forces Medical Library; and in 1956,
the library was transferred from the Department of Defense
to the Public Health Service and renamed the National Library
of Medicine. The statute creating NLM is codified as 42 U.S.C.
@@ 275-280a (1970 ed.) which, in relevant part, reads as follows:
@ 275. Congressional declaration of purpose; establishment.
In order to assist the advancement of medical and related
sciences, and to aid the dissemination and exchange of scientific
and other information important to the progress of medicine
and to the public health, there is established in the Public
Health Service a National Library of Medicine (hereinafter
referred to in this part as the "Library").
@ 276. Functions.
(a) The Secretary, through the Library and subject to the
provisions of subsection (c) of this section, shall --
(1) acquire and preserve books, periodicals, prints, films,
recordings, and other library materials pertinent to medicine;
(2) organize the materials specified in clause (1) of this
subsection by appropriate cataloging, indexing, and bibliographical
listing;
(3) publish and make available the catalogs, indexes, and
bibliographies referred to in clause (2) of this subsection;
(4) make available, through loans, photographic or other copying
procedures or otherwise, such materials in the Library as
he deems appropriate;
(5) provide reference and research assistance; and
(6) engage in such other activities in furtherance of the
purposes of this part as he deems appropriate and the Library's
resources permit.
* * *
(c) The Secretary is authorized, after obtaining the advice
and recommendations of the Board (established under section
277 of this title), to prescribe rules under which the Library
will provide copies of its publications or materials, or will
make available its facilities for research or its bibliographic,
reference or other services, to public and private agencies
and organizations, institutions, and individuals. Such rules
may provide for making available such publications, materials,
facilities, or services (1) without charge as a public service,
or (2) upon a loan, exchange, or charge basis, or (3) in appropriate
circumstances, under contract arrangements made with a public
or other nonprofit agency, organization, or institution.
@ 277. Board of Regents.
(a) Establishment; composition; * * *
There is established in the Public Health Service a Board
of Regents of the National Library of Medicine * * *.
(b) Duties of Board; * * *
It shall be the duty of the Board to advise, consult with,
and make recommendations to the Secretary on important matters
of policy in regard to the Library, including such matters
as the acquisition of materials for the Library, the scope,
content and organization of the Library's services, and the
rules under which its materials, publications, facilities,
and services shall be made available to various kinds of users,
* * *
* * *
(b) There is no evidence that the Surgeon General or any other
agent of defendant has issued regulations implementing 42
U.S.C. @ 276(c).
(c) The basic function of NLM is to acquire books, journals
and the like relating to health and medicine to assure that
all medical literature is available at one place. In addition
to acquisition, NLM indexes and catalogs medical literature
by means of Index Medicus, which is a compilation of citations
to about 2,400 leading biomedical journals. Index Medicus
is sold to the medical profession and enables medical practitioners
to keep abreast of the current medical literature. NLM's catalog
announces new publications and acquisitions by the library,
thus providing a ready reference for other libraries.
21. (a) NLM has five operating components, one of which is
called Library Operations. The Reference Services Division
of Library Operations is responsible for administering the
interlibrary loan system, which is a system whereby one library
may request materials from other libraries. NLM also receives
requests for loans of materials from Government institutions,
medical schools, hospitals, research foundations, private
physicians, and private companies including drug companies.
NLM provides the same service to commercial companies as it
does to governmental and academic libraries. Requests by commercial
companies, particularly drug companies, account for about
12 percent of NLM's service. Upon a request for materials,
NLM determines whether to loan out the original material or
to make photocopies of the material. As a general rule, articles
from journals, when requested, are photocopied and the photocopies
given free of charge to the requester, so that, in the case
of journals, the term "loan" is a euphemism. If NLM receives
a request for a paid photographic service which otherwise
meets the conditions of an interlibrary loan, payment is rejected
and a loan or photocopy is furnished free of charge.
(b) To make photocopies, NLM uses mobile 35-mm. microfilm
cameras which have an electrical power line overhead and can
move up and down an aisle of the library. Full-size photocopies
are then made from the microfilm. Most photocopies are made
by such microfilm technique. In fiscal 1968, NLM received
about 127,000 requests for interlibrary loans, of which about
120,000 were filled by photocopying. Applying the average
of 10 pages per request, about 1.2 million pages were thus
photocopied.
22. (a) Interlibrary loan requests must be accompanied by
a proper form, the format of which is standardized and used
by libraries and other institutions throughout the United
States. The loan form, as a general rule, must be signed by
a librarian. However, NLM will at times honor requests from
individuals (e.g., physicians) or nonlibrary institutions.
Upon receipt of requests for interlibrary loans, NLM stamps
the requests by date and time, counts them for statistical
purposes, and begins the sorting procedure. Generally, NLM
does not know, nor does it make any attempt to find out, the
purpose of the requests. NLM will supply copies of the same
journal article to an unlimited number of libraries requesting
copies of an article, one after the other, on consecutive
days, even with knowledge of such facts.
(b) NLM is a regional medical library and serves the mid-Atlantic
region. Requests for materials coming from regions other than
the mid-Atlantic region are generally referred to the appropriate
regional library, and the requester is advised to submit future
requests to the appropriate regional library. NLM's stated
policy in recent years is not to fill requests for copies
of articles from any of 104 journals which are included on
a so-called "widely-available list." Rather, the requester
is furnished a copy of the "widely-available list" and the
names of the regional libraries which are presumed to have
the journals listed. Exceptions are sometimes made to the
policy, particularly if the requester has been unsuccessful
in obtaining the journal elsewhere. The four journals involved
in this suit are listed on the "widely-available list." A
rejection on the basis of the "widely-available list" is made
only if the article requested was published during the preceding
5 years. Requests from Government libraries are not rejected
on the basis of the "widely-available list."
(c) NLM's policy is not to honor an excessive number of requests
from an individual or an institution. As a general rule, not
more than 20 requests from an individual, or not more than
30 requests from an institution, within a month, will be honored.
In 1968, NLM adopted the policy that no more than one article
from a single journal issue, or three from a journal volume,
would be copied. Prior to 1968, NLM had no express policy
on copying limitations, but endeavored to prevent "excessive
copying." As a general rule, requests for more than 50 pages
of material will not be honored, though exceptions are sometimes
made, particularly for Government institutions. Requests for
more than one copy of a journal article are rejected, without
exception. If NLM receives a request for more than one copy,
a single copy will be furnished and the requester advised
that it is NLM's policy to furnish only one copy. There is
no showing that the amount of duplication of copies of the
same article is excessive or unwarranted. Generally, requests
for photocopies from books (or monographs) are rejected. NLM
lends books (or monographs) for limited periods of time. In
special cases (the details of which are not clear in the record),
small portions of a book (or monograph), e.g., charts or tables,
will be photocopied.
23. (a) NLM, from time to time, issues statements to other
libraries of its interlibrary loan policy. Its policy has
remained essentially unchanged over the years. The statement
of policy, as of January 1968, reads in pertinent part as
follows:
* * *
Readers who cannot obtain medical literature in their regions
and who cannot come to the National Library of Medicine in
person may use the interlibrary loan service of the Library
by applying through a local library subject to compliance
with the following regulations and instructions and the provisions
of the General Interlibrary Loan Code. A large number of titles
should not be requested at one time for one applicant or one
institution.
FORMS OF LOANS
1. The National Library of Medicine reserves the right to
determine whether material will be lent in the original form
or as a photoduplicate.
2. Photoduplicates sent instead of original material will
be supplied without charge to requesting libraries. Photoduplicates
may be retained permanently by the borrowing library, unless
return is specifically requested by NLM.
3. Since this is an interlibrary loan service, multiple copies
will not be furnished.
4. With sufficient justification NLM may lend complete issues
or volumes of serials when such loan does not impair other
service, but in no case will complete issues or volumes or
substantial portions of issues or volumes be copied as a loan.
Copying of complete issues or volumes may be considered under
special photographic services.
5. Original material will not be lent outside the United States.
METHOD OF BORROWING
1. Borrowing libraries will submit typed requests on the Interlibrary
Loan Request form approved by the American Library Association.
Requests made by letter or on other types of forms cannot
be processed and will be returned to sender. Each item or
item segment must be requested on a separate form.
2. Order of citation must follow directions on the Interlibrary
Loan Request form.
3. Each request must be authenticated, in handwriting, by
authorized personnel in the borrowing library. Unsigned requests
will be returned.
4. It is expected that under all but the most unusual circumstances
librarians will avail themselves of the resources of their
region before directing requests to NLM.
* * *
SPECIAL PHOTOGRAPHIC SERVICES
1. Special photographic procedures are required to reproduce
some items in the collection, and a charge will be made for
this service. Cost estimates are available on request. NLM
will consider requests for copying items such as: portraits,
photographs, etchings, and other pictorial work; text and
line drawings; facsimile reproductions; long runs of periodicals
to complete holdings.
2. Advance payment is required for all such photocopying when
the requests emanate from outside the Federal Government.
Orders for materials in which there is a question of copyright
restriction will not be accepted for special photographic
service without an accompanying permission statement from
the copyright owner.
(b) NLM operates its interlibrary loan system in accordance
with the General Interlibrary Loan Code, as revised in 1956.
The Code states in pertinent part:
IX. Photographic Substitution
1. Time may be saved in filling the reader's request if, in
the application for a loan, willingness is indicated to purchase
a photographic reproduction as a satisfactory substitute should
the original material be unavailable for interlibrary loan.
This is especially applicable to periodical and newspaper
articles and to typescript theses.
2. The type of photographic duplication (as a substitute)
that is acceptable (e.g., photostat; microfilm -- negative
or positive; record print; etc.) and the maximum price the
borrowing library is willing to pay can appropriately be indicated
on the original request. If preferred, the lending library
may be asked to quote the estimated cost of such a substitution
before filling the order.
3. Photographic duplication in lieu of interlibrary loan may
be complicated by interpretations of copyright restrictions,
particularly in regard to photographing whole issues of periodicals
or books with current copyrights, or in making multiple copies
of a publication. *
4. Any request, therefore, that indicates acceptability of
a photographic substitution, under the conditions described
above, should be accompanied by a statement with the signature
of the applicant attesting to his responsibility for observing
copyright provisions in his use of the photographic copy.
*
5. Requests indicating acceptability of photographic substitute
in lieu of interlibrary loan that comply with the above provisions
are to be considered bona fide orders for copying services.
The lending library, if equipped to do so, may fill such orders
with no further correspondence or delay.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - -
- - - - - - - - - - -
* These statements on photographic substitutions are based
on the "Gentlemen's Agreement" written in 1935 by the National
Association of Book Publishers (reaffirmed in 1938 by its
successor the Book Publishers Bureau) and the Joint Committee
on Materials for Research (representing the libraries). For
the text of this agreement see the Journal of Documentary
Reproduction, 2:29-30, March 1939. [Finding 41.]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - -
- - - - - - - - - - -
24. Photocopies at NLM, for interlibrary loan purposes, are
prepared using a microfilm camera and a Xerox Copy-Flomachine.
Copying for in-house administrative purposes, oversized material,
and material in oriental languages is done on Direct Copy
Xerox 720 machines. Microfilm is destroyed after use. Each
photocopy produced by the microfilm camera includes a statement
as follows:
This is a single photostatic copy made by the National Library
of Medicine for purposes of study or research in lieu of lending
the original.
25. Since 1966 through 1970, there has been a steady decline
in the amount of material or number of requests filled for
photocopies through the interlibrary loan program of NLM.
In 1969, the number of interlibrary loan requests filled was
110,573 and in 1970, 93,746. A principal reason for the decline
is that regional libraries have taken on much of the burden
of the program. The regional libraries operate in essentially
the same manner as NLM except that some, if not all of them,
charge a fee for photocopies furnished to requesters. The
budget for the interlibrary loan operation at NLM in fiscal
1969 was $ 166,152.
26. The Count I, IV, V, and VI articles acknowledge on their
faces that the research work reported therein was supported
in part by grants awarded to the authors by the Public Health
Service of NIH.
27. The Division of Research Grants of the Public Health Service
is a service organization to NIH. Applications for grant support
from NIH come to the Division of Research Grants, which determines
the institute of NIH to which they shall be referred and the
review group to which the application shall be assigned. Such
group then reviews the application and determines its scientific
merit, and also reviews the application's proposed budget
with respect to, e.g., salaries for personnel, equipment,
supplies and services, travel funds, funds for the purchase
of publications or journals, and funds for the payment of
page charges and other costs of publications. The group's
recommendation is transmitted to the appropriate institute.
If a grant is subsequently awarded, the appropriate institute
provides the funds and monitors the performance of the work
under the grant. Grants are awarded on an annual basis and
are characterized by the Public Health Service as "conditional
gifts." NIH sometimes indicates at the beginning that it will
support renewal applications. Renewal applications are administered
by the Division of Research Grants. The scientific investigator
under a grant award can pursue his research in any manner
he feels appropriate, subject to limited budgetary control.
Such investigators are not Government employees nor are they
in the service of the United States; and the Public Health
Service does not exercise supervision over the scientific
techniques used in the research.
28. The Division of Research Grants, from time to time, issues
policy statements with respect to copyright which set out
guidelines delimiting the rights and responsibilities of grantees
under NIH grants. The policy statements in effect for the
years 1956 to the present are set out below in subparagraphs
(a) to (d).
(a) With respect to grants awarded from November 1956 to 1959,
the Public Health Service policy governing copyright was as
follows:
When a grant or award is made without condition and a book
or related material is privately published, the author is
free to copyright the work and to make arrangements with his
publisher as if the Government had not contributed support.
(b) With respect to grants awarded from 1959 to January 1,
1963, the Public Health Service policy governing copyright
was as follows:
Copyright. -- The author is free to arrange for copyright
without reference to the Public Health Service.
(c) With respect to grants awarded from January 1, 1963 to
July 1, 1965, the Public Health Service policy governing copyright
was as follows:
COPYRIGHT The author is free to arrange for copyright without
approval by the Public Health Service.
(d) With respect to grants awarded on or after July 1, 1965,
the Public Health Service policy governing copyright was as
follows:
Copyright Except as otherwise provided in the conditions of
the award, when publications result from work supported by
the Public Health Service, the author is free to arrange for
copyright without approval. Any such copyrighted publications
shall be subject to a royalty-free, non-exclusive, and irrevocable
license to the Government to reproduce them, translate them,
publish them, use and dispose of them, and to authorize others
to do so.
29. None of the Count I-to-Count VIII articles resulted from
a Public Health Service grant which imposed conditions expressly
modifying the copyright policies noted in finding 28, subparagraphs
(a) to (c).
30. The policy statement dated July 1, 1965 (finding 28(d)),
was the first public statement by the Public Health Service
that it reserved the right to duplicate copyrighted works
which resulted from Public Health Service grants. Prior to
1965, the Public Health Service had not addressed itself to
the question of whether the Government should have a nonexclusive
license in works resulting from grant funds, though it had
for some years been the policy that such works could be photocopied
(up to 15 copies) for in-house administrative purposes.
31. The copyright policy of the Public Health Service, noted
in finding 28(d), which by its terms was to become effective
in connection with work supported by grants awarded on or
after July 1, 1965, appeared in the Federal Register, in modified
form, for the first time on April 2, 1970, at 35 Fed. Reg.
5470 (42 C.F.R. @ 52.23 (revised as of Jan. 1, 1971)).
32. Dr. Victor A. McKusick, a coauthor of the Count I article,
started research, along with several coworkers, in 1954 on
the subject matter of the article. Work has continued up to
the date of trial. The research was supported in part by funds
from a Public Health Service grant; in part by funds from
grants from the Health Research Council, a private trust;
and in part by other funds which cannot be traced to any specific
grant or agency. The manuscript for the Count I article was
submitted to the editor of Medicine on August 19, 1964, and
the article was published on December 9, 1965. Changes to
reflect ongoing research were made in the manuscript by the
authors from time to time, up to about 6 months before publication
(i.e., about mid-1965). After about mid-1965, any changes
in the manuscript were editorial in nature, e.g., citations
to new articles added as footnotes, stylistic changes, and
the like. There is no evidence that the article reports any
substantive research work done under funds from a Public Health
Service grant awarded on or after July 1, 1965.
33. Dr. Gerald Goldstein, a coauthor of the Count IV article,
conducted research leading to its publication, which research
was funded in part by Public Health Service grants. Such grants
covered the years 1958 to 1966. The Count IV article was published
in the Journal of Immunology in August 1965. There is no evidence
to show when the manuscript for such article was completed,
though the article states on its face that it was "received
for publication" on December 18, 1964. There is no evidence
to show that the article reported any substantive research
work done under funds from a Public Health Service grant awarded
on or after July 1, 1965.
34. Dr. John J. Cebra, a coauthor of the Count V article,
conducted research leading to its publication, which research
was funded in part by Public Health Service grants. The Count
V article was published in the Journal of Immunology in August
1965. There is no evidence to show when the manuscript for
such article was completed, though the article states on its
face that it was "received for publication" on December 17,
1964. There is no evidence to show that the article reported
any substantive research work done under funds from a Public
Health Service grant awarded on or after July 1, 1965.
35. Dr. Jason L. Starr, a coauthor of the Count VI article,
conducted research leading to its publication, which research
was funded in part by Public Health Service grants. The Count
VI article was published in the Journal of Immunology in August
1965. There is no evidence to show when the manuscript for
such article was completed, though the article on its face
states that it was "received for publication" on December
21, 1964. There is no evidence to show that the article reported
any substantive research work done under funds from a Public
Health Service grant awarded on or after July 1, 1965.
36. (a) Plaintiff has established a licensing program to cover
various forms of exploitation of its medical journals. The
program includes the following:
(i) Upon request, plaintiff grants permission, in the form
of licenses, for reproducing a journal article as part of
a newly published book or for reproducing articles in other
forms, particularly for use by educational institutions.
(ii) Plaintiff has received requests from Government agencies
and others for licenses to make multiple copies of journal
articles, and plaintiff has granted such requests and has
been paid therefor.
(iii) laintiff has granted licenses for the distribution
and sale of microfilm editions of its journals, including
the four journals in suit, to University Microfilm Company,
Ann Arbor, Michigan, and Arcadia Microfilms, Spring Valley,
New York, in consideration for a royalty paid to plaintiff.
(iv) Plaintiff has granted licenses, for a consideration,
to two reprint houses in New York to furnish a requester with
a reprint of a journal article or an entire journal.
(v) Plaintiff has granted a royalty-bearing license to the
Institute for Scientific Information, Philadelphia, Pennsylvania,
to provide requesters with copies of articles from plaintiff's
journals.
(vi) Plaintiff has granted to several libraries (Veterans
Administration Hospital Library in San Francisco, California,
the Dugway Technical Library and the Wilkin Research Foundation
of New York) a license to make, on a continuing basis, single
copies of articles from journals in return for the payment
of royalties. Such licenses, however, have not produced royalties
to date and two of the licenses are no longer in effect. The
license to Wilkin Research Foundation was entered into in
February 1970 and provides for a royalty of 5 cents per copied
page, with accumulated royalties payable yearly.
(b) It is not clear whether plaintiff's licensing program
for libraries extends to the making of copies for persons
not applying at the library building.
37. Plaintiff receives about 45 to 60 requests per week to
make copies from its various publications, about five of such
requests being for copies of single articles from plaintiff's
journals. Requests for copies of journal articles are handled
by plaintiff as set out in finding 11.
38. Plaintiff receives about $ 6,000 to $ 7,000 per year for
permissions granted to individuals to copy journal articles
(single copies and otherwise). Such receipts are in addition
to royalties received from the Institute for Scientific Information,
reprint houses and microfilm licensing.
39. (a) Between 1959 and 1969, annual subscriptions to Medicine
increased from about 2,800 to about 5,400, though subscriptions
decreased slightly from 1968 to 1969. Annual subscription
sales increased from about $ 20,000 to about $ 60,000; and
total annual income increased from about $ 23,000 to about
$ 65,000. Between 1964 and 1969, annual subscriptions to Pharmacological
Reviews increased from about 2,600 to about 3,100, though
subscriptions decreased slightly from 1968 to 1969. Annual
subscription sales increased from about $ 19,000 to about
$ 21,000; and total annual income increased from about $ 22,000
to about $ 25,000. Between 1959 and 1969, annual subscriptions
to the Journal of Immunology increased from about 2,600 to
about 4,700. Annual subscription sales increased from about
$ 36,000 to about $ 131,000; and total annual income increased
from about $ 38,000 to about $ 185,000. Between 1959 and 1969,
annual subscriptions to Gastroenterology increased from about
4,100 to about 7,000. Annual subscription sales increased
from about $ 49,000 to about $ 155,000; and total annual income
increased from about $ 108,000 to about $ 244,000.
(b) Between 1959 and 1966, plaintiff's annual taxable income
increased from $ 272,000 to $ 726,000. In 1967, it fell to
$ 589,000; and in 1968, to $ 451,000. Plaintiff's four journals
in suit account for a relatively small percentage of plaintiff's
total business; and over the years, such journals have been
profitable, except that the Journal of Immunology showed losses
in the period prior to 1961; Gastroenterology showed losses
in 1967-68; and Pharmacological Reviews showed a loss in 1969.
Profits from the journals have varied from less than $ 1,000
to about $ 15,000 annually. Plaintiff's share of the profits
from the journals published under contract with medical societies
has ranged from less than $ 1,000 to about $ 7,000. E.g.,
in 1968, profit from Pharmacological Reviews was $ 1,154.44
(on sales of about $ 40,000). The profit was divided, $ 1,039
to ASPET and $ 115.44 to plaintiff. In 1969, net income from
Gastroenterology was $ 21,312.08 (on sales of about $ 245,000)
and $ 11,532.35 of that amount was offset by losses the previous
year, leaving a balance of $ 9,779.73. The balance was split
between plaintiff and AGA, plaintiff getting $ 4,889.86.
(c) Plaintiff's business appears to have been growing faster
than the gross national product or of the rate of growth of
manpower working in the field of science.
(d) There is no evidence to show whether any particular instance
or instances of unauthorized photocopying of plaintiff's journals
resulted in the loss of a particular form of revenue to plaintiff.
It is also concluded that plaintiff has failed to show that
it has been hurt, in any substantial degree, by the photocopying
practices of NLM and NIH.
40. (a) NIH (and so far as the record shows, NLM) has made
no studies to determine the estimated costs over and above
royalties which would be involved in paying publishers for
photocopying part or all of their copyrighted journals. The
costs involved in such an estimate would be essentially the
salaries of the people who would make the necessary determinations.
The Librarian of NIH testified that he is unable to make any
estimate of such costs.
(b) In 1967, NLM temporarily ceased photocopying articles
from plaintiff's journals. NLM was able, as a practical matter,
to flag plaintiff's journals from April 27, 1967 to May 29,
1967, in order to refrain temporarily from copying from them.
The flagging of plaintiff's journals was an administrative
statistical operation performed by a library technician in
the loan and stack section of NLM. On about May 29, 1967,
NLM resumed photocopying articles from plaintiff's journals,
and for about 90 days thereafter, NLM monitored such photocopying.
Satisfied that such 90-day period was a representative sample,
NLM found that it would have paid plaintiff about $ 250 to
$ 300 if it had acceded to plaintiff's request for 2 cents
royalty per page. The Director of NLM testified that, in his
opinion, this was "a very small sum -- surprisingly small
sum." However, administrative costs involved in the payment
of a royalty might be substantially greater than the royalty
itself.
41. (a) In 1935, there was issued a joint statement by the
National Association of Book Publishers and the Joint Committee
on Materials for Research regarding the photocopying by libraries
and like institutions of copyrighted materials. The statement,
later to become known as the "gentlemen's agreement," was
the product of meetings and discussions between representatives
of the book publishing industry and research-and-education-oriented
organizations, such as libraries. The representatives were
interested in working out a practical accommodation of the
conflict between (i) the legitimate interest of copyright
owners not to have their works copied without compensation
and (ii) the needs of scholars and research workers for copies
of parts of copyrighted works to use in pursuit of scientific
or literary investigation. The "gentlemen's agreement," along
with the introductory statement accompanying it, reads as
follows:
The Joint Committee on Materials for Research and the Board
of Directors of the National Association of Book Publishers,
after conferring on the problem of conscientious observance
of copyright that faces research libraries in connection with
the growing use of photographic methods of reproduction, have
agreed upon the following statement:
A library, archives office, museum, or similar institution
owning books or periodical volumes in which copyright still
subsists may make and deliver a single photographic reproduction
or reduction of a part thereof to a scholar representing in
writing that he desires such reproduction in lieu of loan
of such publication or in place of manual transcription and
solely for the purposes of research; provided
(1) That the person receiving it is given due notice in writing
that he is not exempt from liability to the copyright proprietor
for any infringement of copyright by misuse of the reproduction
constituting an infringement under the copyright law;
(2) That such reproduction is made and furnished without profit
to itself by the institution making it.
The exemption from liability of the library, archives office
or museum herein provided for shall extend to every officer,
agent or employee of such institution in the making and delivery
of such reproduction when acting within the scope of his authority
of employment. This exemption for the institution itself carries
with it a responsibility to see that library employees caution
patrons against the misuse of copyright material reproduced
photographically.
Under the law of copyright, authors or their agents are assured
of "the exclusive right to print, reprint, publish, copy and
vend the copyrighted work," all or any part. This means that
legally no individual or institution can reproduce by photography
or photo-mechanical means, mimeograph or other methods of
reproduction a page or any part of a book without the written
permission of the owner of the copyright. Society, by law,
grants this exclusive right for a term of years in the belief
that such exclusive control of creative work is necessary
to encourage authorship and scholarship.
While the right of quotation without permission is not provided
in law, the courts have recognized the right to a "fair use"
of book quotations, the length of a "fair" quotation being
dependent upon the type of work quoted from and the "fairness"
to the author's interest. Extensive quotation is obviously
inimical to the author's interest.
The statutes make no specific provision for a right of a research
worker to make copies by hand or by typescript for his research
notes, but a student has always been free to "copy" by hand;
and mechanical reproductions from copyright material are presumably
intended to take the place of hand transcriptions, and to
be governed by the same principles governing hand transcription.
In order to guard against any possible infringement of copyright,
however, libraries, archives offices and museums should require
each applicant for photo-mechanical reproductions of material
to assume full responsibility for such copying, and by his
signature to a form printed for the purpose assure the institution
that the duplicate being made for him is for his personal
use only and is to relieve him of the task of transcription.
The form should clearly indicate to the applicant that he
is obligated under the law not to use the material thus copied
from books for any further reproduction without the express
permission of the copyright owner.
It would not be fair to the author or publisher to make possible
the substitution of the photostats for the purchase of a copy
of the book itself either for an individual library or for
any permanent collection in a public or research library.
Orders for photo-copying which, by reason of their extensiveness
or for any other reasons, violate this principle should not
be accepted. In case of doubt as to whether the excerpt requested
complies with this condition, the safe thing to do is to defer
action until the owner of the copyright has approved the reproduction.
Out-of-print books should likewise be reproduced only with
permission, even if this reproduction is solely for the use
of the institution making it and not for sale. (signed) ROBERT
C. BINKLEY, Chairman
Joint Committee on Materials for Research
W. W. NORTON, President
National Association of Book Publishers
(b) The practice by libraries of making photocopies has existed
for at least 50 years. In the 1930's -- and prior thereto
-- photocopying of books and like materials was done principally
by conventional photographic techniques. Starting about 1960,
the new technology of electrostatic copying and other rapid,
inexpensive copying techniques resulted in a dramatic increase
in the instances and amounts of photocopying. During the past
10 years, the propriety of library photocopying has been the
subject of many discussions at meetings and conferences of
library and information groups. In 1957, the Director of NLM
noted that "it is possible, if not indeed probable, that the
years would bring, sooner or later, a test of the issue in
the courts" posed by NLM's photocopying activities and the
copyright law.
(c) Plaintiff's principal officers became aware of largescale
library photocopying in about 1962. Immediately thereafter,
plaintiff's president made his views on the subject known
to various library groups. In the course of exchanges with
librarians, plaintiff's president learned of the statement
called the "gentlemen's agreement" and expressed his views
thereon essentially as follows: The statement is inconsequential
to the issues of present-day photocopying because (i) it was
written in the 1930's when copying processes consisted of
blueprints, Photostats or microfilm, processes significantly
different from those principally used today, (ii) one party
to the statement (National Association of Book Publishers)
is a long-defunct organization to which plaintiff never belonged,
and (iii) the National Association of Book Publishers apparently
consisted not of periodical publishers, like plaintiff, but
book publishers who were concerned with the publication (and
unauthorized photocopying) of books (or monographs).
42. (a) In October 1966, defendant's General Services Administration
issued a handbook, COPYING EQUIPMENT, identified by code number
FPMR 101-6. The purpose of the handbook was to acquaint Government
supervisory personnel with the various photocopying machines
available on the market and to encourage Government agencies
to make use of such machines in an economic and efficient
manner. The introduction to the handbook notes as follows:
With the dispersal of office copiers throughout Government
agencies, the need for a good hard look at the economy and
effectiveness of office copying services has become increasingly
apparent. The uncontrolled acquisition and use of office copying
equipment has often resulted in uneconomical mismatches of
user requirements with machine capabilities and wasteful practices
in operating copying facilities.
The introduction goes on to say that large organizational
units should make studies of needs for equipment before making
substantial investments. It is further noted:
Where such studies have not been made, an inquiry into the
existing copying facilities will offer a high potential for
savings. As a minimum, a goal of 10% reduction in overall
copying and related paperwork costs would be feasible. This
handbook has been prepared to guide managers and others responsible
for office copying in providing economical and effective copying
service which meets user requirements.
(b) The "Foreword" to the handbook notes in part:
The impact of document copiers on Federal operations has been
substantial just as it has been in commerce and industry.
At this writing there are at least 202 models of copiers available
from some 37 different manufacturers or distributors. The
United States Government alone has installed approximately
55 thousand machines and the yearly cost of office copying
is estimated at 80 million dollars. An increasing number of
cost-conscious executives are concerned about the predictions
that this cost could double within the next 5 years.
(c) Chapter III of the handbook is entitled "Legal Aspects"
and reads as follows:
Copying Laws
Copying laws are almost in the same category as speed limit
laws -- people forget they are there. Although the former
involves much less risk than the latter, the penalty can be
much greater. Most documents which are prohibited by law from
being copied have their source in State or Federal Government.
A partial listing is shown in figure 1. In case of doubt,
legal advice should be obtained.
Copyright Laws
The most frequently violated law is the Copyright Law: namely,
that law which prohibits the copying of copyrighted material
without permission.
The Copyright Law is intended to protect the publisher or
author from plagiarism. It gives him the right to say who
may reproduce his written or published work, and to demand
payment for it. However, the current widespread use of copying
machines in reproducing literary works goes beyond the question
of plagiarism. It is beginning seriously to affect the sale
of published works, such as magazines, textbooks, and technical
papers. Prior to this time, a user of such works desiring
to have possession of a copy was obliged to purchase the publication
if he could not borrow it for an indefinite period. Today,
it is relatively simple to make copies of almost any printed
matter by means of the office copier.
Because the copier has made it easy to reproduce published
works, extra precaution is necessary. Where a notice of copyright
is shown, either on the work itself, or by a general statement
in the publication, the law is clear: it may not be copied
unless permission of the publisher or author is obtained.
Where doubt exists as to whether or not an item is copyrighted,
the legal officer should be consulted.
Figure 1, accompanying Chapter III, is entitled "Material
That May Not Be Copied" and notes in part:
1. Congress, by statute, has forbidden the copying of the
following subjects under certain circumstances. There are
penalties of fine or imprisonment imposed on those guilty
of making such copies.
* * *
d. Copyrighted material of any manner or kind without permission
of the copyright owner.
* * *
43. (a) The Board of Regents of NLM (finding 20(a)), at several
meetings in 1957, considered the problems of copyright with
respect to the operations of NLM. The minutes of those meetings
are not in evidence. However, such minutes are discussed in
a letter dated December 29, 1965, from Abraham L. Kaminstein,
Register of Copyrights, to The Honorable John L. McClellan,
United States Senate, as follows:
* * *
The new law amended a 1944 Public Health Service Act, which
in 1956 was further amended by the transfer of the Armed Forces
Medical Library to the newly established National Library
of Medicine. The Act provides, inter alia, (42 U.S.C. 276)
that the Surgeon General shall "make available, through loans,
photographic or other copying procedures or otherwise, such
materials as he deems appropriate . . ." [Italics supplied]
The 1956 amendment to the Public Health Service Act also provides
for the establishment by the Surgeon General of a Board of
Regents, which as a part of its duties is the [to?] prescribe
"rules under which the Library will provide copies of its
publications or materials." Since the provisions of section
398 are basically no different from the provisions of the
1956 amendment, it may be of interest to ascertain the administrative
interpretation of that earlier copying provision.
A study of the minutes of the Board of Regents discloses that
the agenda for the very first meeting of the Board, on March
20, 1957, included the distribution of a paper entitled Considerations
for the Formulation of Loan Policy (of the National Library
of Medicine). That paper contains a clear recognition of the
copyright problem:
"To start with, it must be pointed out that there are legal
restrictions to the unlimited copying of published works;
restrictions which are vague in some respects but which have
been interpreted fairly definitely in most. The two most important
interpretations for this problem are that whole works may
not be copied and that multiple copies may not be made."
This policy paper was the subject of discussion at the meeting
of the Board on April 29, 1957, at which the recommendations
were approved. It is significant that the minutes of that
meeting disclose the following:
"Dr. Mumford [the Librarian of Congress] raised the question
of copyright restrictions. It was stated that while the recommended
new policy would not obviate the copyright problems, it would
not raise more, and probably raise fewer difficulties in this
area than does the current policy."
Further evidence that the Board was aware that copyright problems
existed appeared in the minutes of the Board meeting for September
23, 1957, in the following notation:
"The Director [of the National Library of Medicine] expressed
his concern 'with the continuing vexing problem of copyright
restrictions.' He indicated that the Library is proceeding
as circumspectly as possible, but that it is possible, if
not indeed probable, that the years would bring, sooner or
later, a test of the issue in the courts . . . The Director
took pains to indicate that despite the difficulties of the
situation it seemed clear to him that the Library could do
no other than pursue its present course, since a very large
part, if not the major part, of the Library's services is
dependent upon it."
The foregoing would appear to indicate that, from the outset
of the establishment of the National Library of Medicine,
there has been an awareness of the existence of copyright
restrictions with respect to the use of the copyrighted works
in its collections. Nowhere does it appear that the policy-making
body, the Board of Regents, considered that the above-quoted
provision authorizing the Surgeon General to make the material
in the Library available by "photographic or other copying
procedures" was in any way in derogation of the rights granted
under the copyright law to the proprietor of the copyright.
On the contrary, the evidence indicates that the Library attempted
to formulate a policy that would take due regard of the provisions
of the copyright law.
* * *
(b) In 1957, the then-Director of NLM, in discussing the problems
created by NLM's policy of providing free photocopying services,
stated as follows:
Let us now take a critical look at what has happened under
these policies. Free photocopying has developed beyond reasonable
bounds. For example, in a recent study conducted over a two
month period, it was found that over 50% of all requests received
could be filled by photocopying journal articles from 125
common journal titles of the last five years.
On the face of it, this is a need which the printing press,
not the camera, is designed to fill. When a request from New
York City is received for a photocopy of an article which
appeared in last month's JAMA, it is apparent that the library
is being treated as a cheap and convenient reprint service,
and not as a library. It is felt NLM should not run a copying
service per se; NLM must operate as a library, and all photocopying
done should be an extension of normal library operations.
This statement was made in 1957 with reference to policies
then in effect, before adoption of NLM's present policies.
44. The Library of Congress operates a photoduplication service
by which it provides photocopies of documents for a per-page
fee. In 1965, electrostatic positive prints (Xerox) were provided
at from 16 cents to 85 cents per sheet, depending on the quantity
ordered and other factors. A brochure issued by the Library
of Congress, effective October 1, 1965, stated in part:
Photocopying is done by the Library under the following conditions:
1. The Library will generally make photoduplicates of materials
in its collections available for research use. It performs
such service for research, in lieu of loan of the material,
or in place of manual transcription. Certain restricted material
cannot be copied. The Library reserves the right to decline
to make photoduplicates requested, to limit the number of
copies made, or to furnish positive prints in lieu of negatives.
2. Copyright material will ordinarily not be copied without
the signed authorization of the copyright owner. Exceptions
to this rule may be made in particular cases. All responsibility
for the use made of the photoduplicates is assumed by applicant.
There is no evidence to show the circumstances under which
the Library of Congress makes "exceptions" to its rule against
photocopying copyright materials.
45. The Printing Management Manual of defendant's Department
of Health, Education, and Welfare (in effect in 1962 and 1967)
stated as follows with respect to copyright:
* * *
A. General
Material protected by copyright generally may not be reproduced
in any fashion, including photocopying or similar techniques,
without the express permission of the copyright proprietor.
However, it has been the widespread practice of libraries
to have single copies made of copyrighted articles to further
scholarly research, without consent of the copyright proprietor.
Therefore, Department libraries may make such single copies,
but every precaution should be taken to assure that such single
copying is done only at the written request of an employee
to further scholarly research.
B. Infringement
1. Since the Government may be subject to claim or suit for
damages, every precaution must be taken to avoid infringement
of a copyright by an employee of the Department.
2. Employees should be advised that infringement of a copyright
by an employee of the Department, not in the performance of
his official duties may subject the employee to a suit for
damages.
* * *
46. The current and recent practices of NIH and NLM as described
in the foregoing findings constitute a fair use.
CONCLUSION OF LAW
Upon the foregoing findings of fact, which are made a part
of the judgment herein, the court concludes as a matter of
law that plaintiff is not entitled to recover and its petition
is dismissed.
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n1 Members.
n2 Nonmembers.
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DISSENTBY: COWEN; NICHDLS
DISSENT: [**107contd]
[EDITOR'S NOTE: The page numbers of this document may appear
to be out of sequence; however, this pagination accurately
reflects the pagination of the original published documents.]
Cowen, Chief Judge, dissenting:
It is my opinion that our former Trial Judge James F. Davis
fully and correctly resolved the difficult and perplexing
issues presented by this case in his scholarly and well-reasoned
opinion. I would therefore adopt his opinion, findings of
fact, and recommended conclusions of law as a basis for a
judgment by the court in favor of the plaintiff.
In its discussion of the grounds for the decision which rejected
the trial judge's conclusions, the court has, in my opinion,
unduly emphasized the facts that are favorable to the defendant
and has given inadequate consideration to other facts which
led the trial judge to reach a contrary result. For these
reasons, I am incorporating in this dissent those portions
of the trial judge's opinion which I think are particularly
pertinent to the grounds upon which the case has been decided.
In view of the court's extensive discussion of the issues
and its consideration of some matters not argued to the trial
judge, I am supplementing his opinion with the material that
follows.
As a preface to my disagreement with the court, I think it
would be helpful to point out that this is not a case involving
copying of copyrighted material by a scholar or his secretary
in aid of his research, nor is it a case where a teacher has
reproduced such material for distribution to his class. Also,
it is not a case where doctors or scientists have quoted portions
of plaintiff's copyrighted articles in the course of writing
other articles in the same field. We are not concerned here
with a situation in which a library makes copies of ancient
manuscripts or worn-out magazines in order to preserve informtion.
What we have before us is a case of wholesale, machine copying,
and distribution of copyrighted material by defendant's libraries
on a scale so vast that it dwarfs the output of many small
publishing companies. In order to fill requests for copies
of articles in medical and scientific journals, the NIH made
86,000 Xerox copies in 1970, constituting 930,000 pages. In
1968, the NLM distributed 120,000 copies of such journal articles,
totalling about 1.2 million pages. As the trial judge correctly
observed, this extensive operation is not only a copying of
the copyrighted articles, it is also a reprinting by modern
methods and publication by a very wide distribution to requesters
and users.
I
Photographic Reproduction of Plaintiff's Journal Articles
Is An Abridgement of the Copyright Owner's Exclusive Right
To Copy
The majority maintains there is a "solid doubt" whether and
how far the word "copy" in Section 1(a) of the 1909 Copyright
Act applies to books and journals. The argument continues
that the infringement of periodical articles can come only
through "printing," "reprinting," or "publishing." Certainly
few things in the law are beyond all doubt or qualification.
I think it is apparent, however, from the wording of the 1909
Act, and from the cases interpreting that Act, that Congress
intended the word "copy" to apply to books and journals as
well as other copyrightable materials. Section 1(a) of the
1909 Act gives the copyright proprietor the exclusive right
to "print, reprint, publish, copy, and vend the copyrighted
work." 17 U.S.C. @ 1 (1970). It follows that copying of a
substantial portion of the copyrighted work by someone other
than the copyright owner would be an infringement.
I think the trial judge correctly concluded that there is
nothing in the legislative history of the 1909 Act which indicates
that a restrictive definition of the word "copy" was intended.
A significant change in the 1909 Act was the elimination of
sections 4964 and 4965 of the prior copyright statute, which
it is claimed, are the source of the distinction between the
copying of books and the copying of other copyrighted material.
n1 By removing those two sections and by adopting the general
classification of "copyrighted works" in Section 1(a) and
a general listing of all copyrightable works in Section 5
of the 1909 Act, Congress obliterated the distinction, if
there ever had been one, between the copying of books and
the copying of other materials. n2
As a result of the simple clarity in the phrasing of the copyright
owner's exclusive rights in the 1909 Act, it is not surprising
that numerous court decisions interpreting that Act have focused
on the copying of copyrighted material (including books and
other items of this type) as the infringing act. See, e.g.,
Harold Lloyd Corp. v. Witwer, 65 F. 2d 1, 16-19 (9th Cir.
1933); King Features Syndicate v. Fleischer, 299 F. 533, 535
(2d Cir. 1924).
I have not been able to find one decision since the 1909 Act
which has held that the word "copy" in section 1(a) would
not apply to the making of one or a number of copies of a
book or other material of this type. The cases have simply
not recognized the claimed distinction between copying and
printing or publishing. For example, in New York Tribune,
Inc. v. Otis & Co., 39 F. Supp. 67 (S.D.N.Y. 1941), the court
found the making of Photostatic copies of plaintiff's newspaper
editorial and masthead to be a "good cause of action on its
face," and denied defendant's motion for summary judgment.
Id. at 68. The defendant in that case had distributed the
photocopies to a selected list of public officials, bankers,
educators, economists and other persons. The court drew no
distinction between printing, publishing, or copying. By comparison,
the copying and distributing of the newspaper editorial and
masthead in that case is very similar to the copying and distributing
of the journal articles in the present action. n3
Therefore, I do not think there is substantial doubt that
the photocopying by defendant's libraries is a copy of the
plaintiff's journal articles in violation of the copyright
owner's exclusive right to copy or to multiply copies of his
work under section 1(a). I can see no reason to draw a distinction
between copying of "books" and copying of other materials
when the distinction is expressly rejected on the face of
the copyright statute, has not been observed in numerous cases
applying the 1909 Act, and has no reasonable basis in light
of the purposes of copyright protection. n4
II
The Photocopying of Plaintiff's Copyrighted Articles Was Not
Fair Use
1. Realizing the necessity for showing that the defendant's
unauthorized copying of plaintiff's articles was both reasonable
and insubstantial, the court relies heavily on policies which
were adopted by the libraries in 1965. Although these policies
were designed to limit the extent of copying that had been
done in prior years, the trial judge's opinion and the findings
of fact show the exceptions are routinely granted by the defendant's
libraries, that there is no way to enforce most of the limitations,
and that defendant is operating a reprint service which supplants
the need for journal subscriptions.
In particular, the trial judge has, I think, clearly demonstrated
that the claimed "single-copy-per-request" limitation is both
illusory and unrealistic. He has found, and it is not disputed,
that the libraries will duplicate the same article over and
over again, even for the same user, within a short space of
time. NLM will supply requesters photocopies of the same article,
one after another, on consecutive days, even with knowledge
of such facts. I find great difficulty in detecting any difference
between the furnishing by defendant's libraries of ten copies
of one article to one patron, which he then distributes, and
giving each of ten patrons one copy of the same article. The
damage to the copyright proprietor is the same in either case.
2. The law is well settled, and I believe not questioned by
the court in this case, that under Section 3 of the Copyright
Act, plaintiff's copyrights of the journals cover each article
contained therein as fully as if each were individually copyrighted.
Section 3 expressly mentions periodicals, and for the purpose
of determining whether there has been infringement, each copyrightable
component is to be treated as a complete work. Markham v.
A. E. Borden Co., 206 F. 2d 199, 201 (1st Cir. 1953).
It is undisputed that the photocopies in issue here were exact
duplicates of the original articles; they were intended to
be substitutes for and they served the same purpose as the
original articles. They were copies of complete copyrighted
works within the meaning of Sections 3 and 5 of the Copyright
Act. This is the very essence of wholesale copying and, without
more, defeats the defense of fair use. The rule to be applied
in such a situation was stated in Leon v. Pacific Telephone
& Telegraph Co., 91 F. 2d 484, 486 (9th Cir. 1937) as follows:
Counsel have not disclosed a single authority, nor have we
been able to find one, which lends any support to the proposition
that wholesale copying and publication of copyrighted material
can ever be fair use.
For other cases to the same effect, see Public Affairs Associates,
Inc. v. Rickover, 284 F. 2d 262, 272 (D.C. Cir. 1960), judgment
vacated for insufficient record, 369 U.S. 111 (1962); Benny
v. Loew's Inc., 239 F. 2d 532, 536 (9th Cir. 1956), aff'd
by an equally divided court sub nom., Columbia Broadcasting
System, Inc. v. Loew's Inc., 356 U.S. 43 (1958); Holdredge
v. Knight Publishing Corp., 214 F. Supp. 921, 924 (S.D. Cal.
1963). See also M. Nimmer, Nimmer on Copyright @ 145 at 650-51
(1973 ed.).
Although the majority states that the rule announced in the
cases cited above is an "overbroad generalization, unsupported
by the decisions and rejected by years of accepted practice,"
the court cites no decisions in support of its position.
3. I recognize that the doctrine of fair use permits writers
of scholarly works to make reasonable use of previously copyrighted
material by quotation or paraphrase, at least where the amount
of copying is small and reliance on other sources is demonstrated.
See, e.g., Rosemont Enterprises, Inc. v. Random House, Inc.,
366 F. 2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009
(1967); Simms v. Stanton, 75 F. 6, 13-14 (C.C.N.D. Cal. 1896).
However, I think the basic error in the court's decision is
its holding that the fair use privilege usually granted to
such writers should be extended to cover the massive copying
and distribution operation conducted by defendant's libraries.
The articles are not reproduced by the libraries to enable
them to write other articles in the same field. In fact, booksellers
and licensed copiers of plaintiff's journals sell copies of
journal articles to the same class of users and for the same
purposes as the copies reproduced by defendant's libraries.
I do not believe that anyone would contend that the ultimate
use of the purchased articles by scientists, doctors, or drug
companies would permit the commercial concerns mentioned to
reproduce copies without plaintiff's permission. In an effort
to overcome this obstacle, the majority relies in part on
the nature and function of the NIH and the NLM and the fact
that the articles are reproduced and distributed free of charge.
I do not know of any case which holds that an unauthorized
reproduction which is made without profit amounts to fair
use by the infringer, and there are decisions to the contrary.
n5
Moreover, as plaintiff has pointed out, almost every service
provided by Government agencies is financed by appropriated
funds and furnished without charge to the recipient. If Congress
had intended to relieve Government agencies from liability
for copyright infringement whenever the material is copied
or otherwise reproduced without charge to the recipient, there
would have been no need for the enactment of the 1960 Amendment,
now 28 U.S.C. @ 1498(b), which gives us jurisdiction of this
action.
Defendant also argues that its libraries are entitled to the
fair use privilege of scientists, researchers, or scholars,
because the libraries act as their agent in making the photocopies
at their request. This argument is so far-fetched that the
majority balks at embracing it completely. It collides with
reality. The libraries installed and operate the reproduction
and distribution operation on their own initiative and without
any kind of an agreement with the ultimate users of the copies.
There is no showing that these alleged -- and in the case
of NLM generally unknown -- principals have any say in the
formulation of the policies and practices of the photocopying
operation. The libraries decide, without consulting or obtaining
the consent of the alleged principals, whether to loan the
original of the journals or to provide photocopies. The libraries
are no more the agent of the users of the material than are
the venders of plaintiff's magazines and the commercial concerns
which are licensed by plaintiff to make and sell copies to
doctors and scientists. The essential elements of agency are
wholly lacking.
4. The trial judge found that it is reasonable to infer from
the evidence that the extensive unauthorized copying of plaintiff's
journal has resulted in some loss of revenue and serves to
diminish plaintiff's potential market for the original articles.
Since the inferences made by the trial judge may reasonably
be drawn from the facts and circumstances in evidence, they
are presumptively as correct as his findings of fact. Bonnar
v. United States, 194 Ct. Cl. 103, 109, 438 F. 2d 540, 542
(1971). See also Baumgartner v. United States, 322 U.S. 665,
670 (1944); Penn-Texas Corp. v. Morse, 242 F. 2d 243, 247
(7th Cir. 1957). Accordingly, under the standards which we
employ for reviewing the findings of our trial judges, I would
adopt these findings. Davis v. United States, 164 Ct. Cl.
612, 616-17 (1964); Wilson v. United States, 151 Ct. Cl. 271,
273 (1960).
Although the court states that it rejects the trial determinations
as to both actual and potential damage to plaintiff, I think
the opinion shows that the court's conclusion is based primarily
on its finding that plaintiff failed to prove actual damages.
In so doing, the majority relies heavily on evidence that
the plaintiff's profits have grown faster than the gross national
product and that plaintiff's annual taxable income has increased.
This evidence is irrelevant to the economic effects of photocopying
the journals in this case, because these periodicals account
for a relatively small percent of plaintiff's total business.
Moreover, the extent of plaintiff's taxable income for the
years mentioned does not reflect the effect of defendant's
photocopying of plaintiff's journals, and particularly the
effect it will have on the prospects for continued publication
in the future.
By the very nature of an action for infringement, the copyright
proprietor often has a difficult burden of proving the degree
of injury. It is well established, however, that proof of
actual damages is not required, and the defense of fair use
may be overcome where potential injury is shown. See, e.g.,
Henry Holt & Co., Inc. v. Liggett & Myers Tobacco Co., 23
F. Supp. 302, 304 (E.D. Pa. 1938). As Professor Nimmer has
stated, the courts look to see whether defendant's work "tends
to diminish or prejudice the potential sale of the plaintiff's
work." M. Nimmer, Nimmer on Copyright @ 145 at 646 (1973 ed.).
The problem posed by library photocopying of copyrighted material
has long been a subject of controversy. Several studies of
this problem have pointed out that extensive photocopying
by libraries is unfair because of its potential damage to
the copyright owner. The trial judge has quoted from the reports
of several of these studies. n6
In a thorough and thoughtful discussion of the effects of
reprography, prepared at the University of California, Los
Angeles, and funded by the National Endowment for the Arts,
it is stated:
It has long been argued that copying by hand "for the purpose
of private study and review" would be a fair use. Users are
now asserting that machine copying is merely a substitute
for hand copying and is, therefore, a fair use. But this argument
ignores the economic differences between the two types of
copying. Copying by hand is extremely time consuming and costly,
and is not an economic threat to authors. Viewing reprography
as though it were hand copying, however, overlooks the effect
of the total number of machine copies made. Few people hand
copy, but millions find machine copying economical and convenient.
Allowing individual users to decide that their machine copying
will not injure the author and will thus be a fair use fails
to take into account the true economic effect when thousands
of such individual decisions are aggregated.
The problem is vividly presented by the practice of the National
Library of Medicine. The Library justifies its distribution
of reprographic copies of journal articles to biomedical libraries
(without permission of the copyright owner) on the basis of
a 1939 understanding between publishers and libraries called
the "Gentlemen's Agreement." Under this agreement photocopies
are permitted whenever the user would have made a hand copy
himself, the rationale being that no purchases of the author's
work are displaced under these circumstances. When an individual
would actually copy by hand, the theory is valid; there is
no sound reason to force him to do the work. But many people
obtain copies from the library who would not copy by hand,
and who might in fact buy a copy of the work if they were
unable to receive an inexpensive machine reproduction of it.
Thus, the library interprets the Gentlemen's Agreement in
its favor and thereby "justifies" a substantial amount of
copying. (Emphasis supplied.) Project, New Technology and
the Law of Copyright: Reprography and Computers, 15 U.C.L.A.
L. Rev. 931, 951 (1968).
As the majority points out, one study, made in 1962, concluded
that photocopying did not result in economic damage to publishers
at that time: Fry & Associates, Survey of Copyrighted Material
Reproduction Practices in Scientific and Technical Fields,
11 Bull. Cr. Soc. 69, 71 (1963). This study also stated:
One situation was reported during the survey in which economic
damage may occur. A prominent university library in a small
town with several corporate research and development centers
gives excellent service on its collection. This library felt
that these corporate libraries are subscribing to only the
minimum number of journals. They rely on the university to
supply photocopies of other material.
* * *
This is the one clear-cut example disclosed during the survey
of dilution of the publishers' circulation market. Id. at
119.
Indeed, this example is very nearly the situation presented
by this case. Government institutions, medical schools, hospitals,
research foundations, drug companies, and individual physicians
are supplementing their collections, if they subscribe to
any journals, by acquiring free photocopies of articles from
the NLM. n7
In addition to the conclusions of those who have studied the
problem extensively, there are other facts and circumstances
in this record which I think amply support the views of the
trial judge that the system used by defendant's libraries
for distributing free copies of plaintiff's journal articles
attracts some potential purchasers of plaintiff's journals.
Subscription sales provide most of the revenue derived from
the marketing of plaintiff's journals. It is important to
remember that each of plaintiff's journals caters to and serves
a limited market. Plaintiff's share of the profits from these
journals has varied from less than $ 1,000 to about $ 7,000
annually. n8 In the context of rising costs of publication,
an inability to attract new customers, and the loss of even
a small number of old subscribers may have a large detrimental
effect on the journals. A representative of Williams & Wilkins
Company testified that in recent years there have been journals
that have failed, and in the opinion of those at Williams
& Wilkins, photocopying has played a role in these failures.
n9 The majority relies on the fact that subscriptions for
the four journals in this case have shown a general increase
over the last five years, but two of the journals, Medicine
and Pharmacological Reviews, have shown a slight decrease
in subscriptions from 1968 to 1969. In addition, the Journal
of Immunology showed losses in the period prior to 1961; Gastroenterology
showed losses in 1967 and 1968; Pharmacological Reviews showed
a loss in 1969. There is no evidence to show specifically
whether any particular instance or instances of unauthorized
photocopying of plaintiff's journals has or has not resulted
in the loss of revenue to plaintiff. However, I think the
record, as a whole, supports the determination of the trial
judge that the photocopying in this case has had a tendency
to diminish plaintiff's markets in the past.
The NLM publishes a monthly indexed catalog of journal articles
in medicine and related sciences entitled "Index Medicus."
The index is widely distributed to medical libraries, research
centers, schools, hospitals, and physicians. The catalog announces
its new publications and acquisitions and thus advertises
to the medical and scientific community, which constitutes
plaintiff's market, that certain articles are available free
of charge in the form of a photocopy.
At the present time, the NIH purchases only two subscriptions
to plaintiff's journals. If nothing else, it would certainly
need more than the two copies to meet the requests of the
large in-house staff. Although it has been argued that the
photocopies are merely a substitute for the loan of an original
and does no more harm than the loan of the original material,
I think this argument is fallacious. One copy of the original
material could not possibly be loaned to as many requesters
as the numerous photocopies, the competitive effect of which
is much greater. Also, the photocopies are not required to
be returned and become the property of the possessor. They
can be marked, cut into segments, placed in the files, and
otherwise put to uses that would be impossible with a loan
of the original. While the library may look at the giving
of a photocopy as a substitute for a loan, the user and would-be
purchaser gets an exact copy of the original article which
is a substitute for a purchased copy.
One of the new sources of income to publishers is the supplying
of back issues or providing copies of such issues. When plaintiff
receives a request for an out-of-print article, the customer
is generally referred to the Institute of Scientific Information,
which is licensed by plaintiff to make the photocopies. If
the same articles can be obtained from the NLM without charge,
it seems obvious that the supplying of free copies. If the
same articles can be obtained from the NLM plaintiff's income
from this source. NLM reproduces and supplies copies of journal
articles to the patrons of other libraries. Therefore, the
libraries who make the requests do not have to buy subscriptions
for the use of their own patrons.
III
Foreign Laws Do Not Justify an Exemption From the Copyright
Laws
The court relies to some extent on the copyright laws of the
United Kingdom, New Zealand, Denmark, Finland, Italy, and
other countries. The plaintiff says there are many differences
between our copyright laws and those of other countries, and
plaintiff does not agree that the defendant would be exempt
from liability under the statutes of some of the countries
named. However, we need not delve into the details of the
copyright legislation of these foreign coutries. There is
a shorter answer to the court's reliance on foreign laws.
Unlike the legislative bodies of these countries, the Congress
has not yet changed the Copyright Act of 1909 to permit the
same kind of copying by the NIH and the NLM. If the time has
come when the defendant's libraries should be exempted from
the provisions of the Copyright Act to the extent permitted
by the court's decision, the exemption should be provided
by legislative action rather than by judicial legislation.
IV
A Judgment for Plaintiff Will Not Injure Medicine and Medical
Research
The court has bottomed its decision to a very large extent
on its finding, which is not disputed, that medical science
would be seriously hurt if the photocopying by defendant's
libraries is entirely stopped. But the court goes further
and concludes that a judgment for plaintiff would lead to
this result. It is not altogether clear to me how the court
arrives at the second conclusion, and I think it is based
on unwarranted assumptions.
The plaintiff does not propose to stop such photocopying and
does not desire that result. What plaintiff seeks is a reasonable
royalty for such photocopying and, in this case, a recovery
of reasonable compensation for the infringement of its copyrights.
Plaintiff has established a licensing system to cover various
methods of reproducing its journal articles, including reproduction
by photocopying. One of the licensees is a Government agency,
and on several occasions plaintiff has granted requests from
Government agencies and others for licenses to make multiple
copies (Finding 36). In May 1967, the photocopying of plaintiff's
journal articles was monitored by NLM for a 90-day period
which was judged to be a representative sample. As the trial
judge has shown, NLM found that it would have paid plaintiff
from $ 250 to $ 300 if it had granted plaintiff's request
for royalty payments. The Director of NLM testified that this
was, in his opinion, a surprisingly small sum. He also testified
(Part III, trial judge's opinion) that the payment of a royalty
to plaintiff for photocopying "has nothing to do with the
operation of the library in the fulfillment of * * * [its]
function. It is an economic and budgetary consideration and
not a service-oriented kind of thing." This is the only direct
testimony that I have found on how the payment of royalties
for photocopying will affect the functions of the library,
and it gives no indication or intimation that the payment
of royalties to plaintiff will force NLM to cease the photocopying.
The court has laid heavy emphasis on the public interest in
maintaining a free flow of information to doctors and scientists,
and on the injury that might result if this flow should be
stopped. However, there is another facet to the public interest
question which is presented in this case. The trial judge
put it well in his statement:
The issues raised by this case are but part of a larger problem
which continues to plague our institutions with ever-increasing
complexity -- how best to reconcile, on the one hand, the
rights of authors and publishers under the copyright laws
with, on the other hand, the technological improvements in
copying techniques and the legitimate public need for rapid
dissemination of scientific and technical literature. (Part
III, trial judge's opinion.)
In enacting the 1909 Act, the House Committee said:
The enactment of copyright legislation by Congress under the
terms of the Constitution is not based upon any natural right
that the author has in his writings * * * but upon the ground
that the welfare of the public will be served and progress
of science and useful arts will be promoted by securing to
authors for limited periods the exclusive rights to their
writings. H.R. Rep. No. 2222, 60th Cong., 2d Sess. 7 (1909).
In Mazer v. Stein, 347 U.S. 201, 219 (1954), the Supreme Court
emphasized that the copyright protection given to authors
and publishers is designed to advance public welfare, stating:
"The copyright law, like the patent statutes, makes reward
to the owner a secondary consideration. * * *" However, it
is "intended definitely to grant valuable, enforceable rights
to authors, publishers, ect. * * *"
The economic philosophy behind the clause empowering Congress
to grant patents and copyrights is the conviction that encouragement
of individual effort by personal gain is the best way to advance
public welfare through the talents of authors and inventors
in "Science and useful Arts."
In order to promote the progress of science, not only must
authors be induced to write new works, but also publishers
must be induced to disseminate those works to the public.
This philosophy has guided our country, with limited exceptions,
since its beginning, and I am of the opinion that if there
is to be a fundamental policy change in this system, such
as a blanket exception for library photocopying, it is for
the Congress to determine, not for the courts. The courts
simply cannot draw the distinctions so obviously necessary
in this area.
The court recognizes that the solution which it has undertaken
to provide in this case is preeminently a problem for Congress
which should decide how much photocopying should be allowed,
what payments should be made to the copyright owners, and
related questions. Nowhere else in its opinion is the court
on more solid ground than when it declares that the "choices
involve economic, social, and policy factors which are far
better sifted by a legislature. The possible intermediate
solutions are also of the pragmatic kind legislatures, not
courts, can and should fashion." In spite of this obviously
correct statement, the court has bridged the gap which the
inaction of Congress has left in the Copyright Act of 1909.
I agree with the court that we have no jurisdiction to order
a copyright owner to institute a licensing system if he does
not wish to do so, but I think we are equally powerless to
assume the congressional role by granting what amounts to
a blanket exemption to defendant's libraries. Without too
much difficulty, however, we can determine the amount of just
compensation that is due plaintiff for the infringement of
its copyrights. If that should be done, it may very well lead
to a satisfactory agreement between the parties for a continuation
of the photocopying by defendant upon the payment of a reasonable
royalty to plaintiff.
The following portions of the trial judge's opinion are made
a part of this dissent: *
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I
Plaintiff, though a relatively small company, is a major publisher
of medical journals and books. Plaintiff publishes 37 journals,
dealing with various medical specialties. The four journals
in suit are Medicine, Journal of Immunology, Gastroenterology,
and Pharmacological Reviews. Medicine is published by plaintiff
for profit and for its own benefit. The other three journals
are published in conjunction with specialty medical societies
which, by contract, share the journals' profits with plaintiff.
The articles published in the journals stem from manuscripts
submitted to plaintiff (or one of the medical societies) by
physicians or other scientists engaged in medical research.
The journals are widely disseminated throughout the United
States (and the world) in libraries, schools, physicians'
offices, and the like. Annual subscription prices range from
about $ 12 to $ 44; and, due to the esoteric nature of the
journals' subject matter, the number of annual subscriptions
is relatively small, ranging from about 3,100 (Pharmacological
Reviews) to about 7,000 (Gastroenterology). Most of the revenue
derived from the journals comes from subscription sales, though
a small part comes from advertising. n4 The journals are published
with notice of copyright in plaintiff's name. The notice appears
at the front of the journal and sometimes at the beginning
of each article. After publication of each journal issue (usually
monthly or bimonthly) and after compliance with the requisite
statutory requirements, the Register of Copyrights issues
to plaintiff certificates of copyright registration.
NIH, the Government's principal medical research organization,
is a conglomerate of institutes located on a multiacre campus
at Bethesda, Maryland. Each institute is concerned with a
particular medical specialty, and the institutes conduct their
activities by way of both intramural research and grants-in-aid
to private individuals and organizations. NIH employs over
12,000 persons -- 4,000 are science professionals and 2,000
have doctoral degrees. To assist its intramural programs,
NIH maintains a technical library. The library houses about
150,000 volumes, of which about 30,000 are books and the balance
scientific (principally medical) journals. The library is
open to the public, but is used mostly by NIH in-house research
personnel. The library's budget for 1970 was $ 1.1 million.
The NIH library subscribes to about 3,000 different journal
titles, four of which are the journals in suit. The library
subscribes to two copies of each of the journals in suit.
As a general rule, one copy stays in the library reading room
and the other copy circulates among interested NIH personnel.
Demand by NIH research workers for access to plaintiff's journals
(as well as other journals to which the library subscribes)
is usually not met by in-house subscription copies. Consequently,
as an integral part of its operation, the library runs a photocopy
service for the benefit of its research staff. On request,
a researcher can obtain a photocopy of an article from any
of the journals in the library's collection. Usually, researchers
request photocopies of articles to assist them in their on-going
projects; sometimes photocopies are requested simply for background
reading. In any event, the library does not monitor the reason
for requests or the use to which the photocopies are put.
The photocopies are not returned to the library; and the record
shows that, in most instances, researchers keep them in their
private files for future reference.
Four regularly assigned employees operate the NIH photocopy
equipment. The equipment consists of microfilm cameras and
Xerox copying machines. In 1970, the library photocopy budget
was $ 86,000 and the library filled 85,744 requests for photocopies
of journal articles (including plaintiff's journals), constituting
about 930,000 pages. On the average, a journal article is
10 pages long, so that in 1970, the library made about 93,000
photocopies of articles.
NLM is located on the Bethesda campus of NIH. NLM was formerly
the Armed Forces Medical Library. In 1956, Congress transferred
the library from the Department of Defense to the Public Health
Service (renaming it the National Library of Medicine), and
declared its purpose to be "* * * to aid the dissemination
and exchange of scientific and other information important
to the progress of medicine and to the public health * * *."
42 U.S.C. @ 275 (1970). NLM is a repository of much of the
world's medical literature. NLM is in essence a "librarians'
library." As part of its operation, NLM cooperates with other
libraries and like research-and-education-oriented institutions
(both public and private) in a so-called "interlibrary loan"
program. Upon request, NLM will loan to such institutions,
for a limited time, books and other materials in its collection.
In the case of journals, the "loans" usually take the form
of photocopies of journal articles which are supplied by NLM
free of charge and on a no-return basis. The term "loan" therefore
is a euphemism when journal articles are involved. NLM's loan
policies are fashioned after the General Interlibrary Loan
Code, which is a statement of self-imposed regulations to
be followed by all libraries which cooperate in interlibrary
loaning. The Code provides that each library, upon request
for a loan of materials, shall decide whether to loan the
original or provide a photoduplicate. The Code notes that
photoduplication of copyrighted materials may raise copyright
infringement problems, particularly with regard to "photographing
whole issues of periodicals or books with current copyrights,
or in making multiple copies of a publication." [Emphasis
in original text.] NLM, therefore, will provide only one photocopy
of a particular article, per request, and will not photocopy
on any given request an entire journal issue. NLM, as well
as other libraries, justifies this practice on the basis of
a so-called "gentlemen's agreement," written in 1935 by the
National Association of Book Publishers and the Joint Committee
on Materials for Research (representing the libraries), which
states in part, "A library * * * owning books or periodical
volumes in which copyright still subsists may make and deliver
a single photographic reproduction * * * of a part thereof
to a scholar representing in writing that he desires such
reproduction in lieu of loan of such publication or in place
of manual transcription and solely for the purposes of research
* * *." [Emphasis supplied.] Each photocopy reproduced by
NLM contains a statement in the margin, "This is a single
photostatic copy made by the National Library of Medicine
for purposes of study or research in lieu of lending the original."
In 1968, a representative year, NLM received about 127,000
requests for interlibrary loans. Requests were received, for
the most part, from other libraries or Government agencies.
However, about 12 percent of the requests came from private
or commercial organizations, particularly drug companies.
Some requests were for books, in which event the book itself
was loaned. Most requests were for journals or journal articles;
and about 120,000 of the requests were filled by photocopying
single articles from journals, including plaintiff's journals.
Usually, the library seeking an interlibrary loan from NLM
did so at the request of one of its patrons. If the "loan"
was made by photocopy, the photocopy was given to the patron
who was free to dispose of it as he wished. NLM made no effort
to find out the ultimate use to which the photocopies were
put; and there is no evidence that borrowing libraries kept
the "loan" photocopies in their permanent collections for
use by other patrons.
Defendant concedes that within the pertinent accounting period,
NLM and the NIH library made at least one photocopy of each
of eight articles (designated by plaintiff as the Count I-to-Count
VIII articles) from one or more of the four journals in suit.
Defendant also concedes that plaintiff is the record owner
of copyright registrations on the journals. That would appear
to end the matter in plaintiff's favor, for @ 1 of the copyright
statute (17 U.S.C.) says that the copyright owner "* * * shall
have the exclusive right: (a) to print, reprint, publish,
copy and vend the copyrighted work * * *"; and @ 3 of the
statute says that, "* * * [t]he copyright upon composite works
or periodicals shall give to the proprietor thereof all the
rights in respect thereto which he would have if each part
were individually copyrighted under this title." Simply stated,
this means that each article in plaintiff's journals is protected
from infringement to the same extent as the entire journal
issue. Advertisers Exch., Inc. v. Laufe, 29 F. Supp. 1 (W.D.
Pa. 1939); King Features Syndicate v. Fleischer, 299 F. 533
(2d Cir. 1924). n5
The noninfringement defense
Defendant contends that its acts of copying do not violate
the copyright owner's exclusive right "to copy" the copyrighted
work as provided by 17 U.S.C. @ 1. The argument is that with
respect to books and periodicals, the act of making single
copies (i.e., one copy at a time) is not, in itself, sufficient
to incur liability; that the "copying," to be actionable,
must include "printing" (or "reprinting") and "publishing"
of multiple copies of the copyrighted work. The argument is
bottomed on analysis of the copyright laws as they have evolved
from 1790 to the present. n8 The early laws distinguished
"copying" from "printing," "reprinting," and "publishing,"
and provided that the copyright in books is infringed by "printing,"
"reprinting" and "publishing" while the copyright in other
works (e.g., photographs, paintings, drawings, etc.) is infringed
by "copying." The 1909 Copyright Act obliterated any such
distinction. It provides in @ 5 a list of all classes of copyrightable
subject matter (including books and periodicals), and says
in @ 1 that the owner of copyright shall have the exclusive
right "to print, reprint, publish, copy and vend the copyrighted
work" [emphasis supplied]. Thus, the 1909 Act, unlike the
earlier statutes, does not expressly say which of the proscribed
acts of @ 1 apply to which classes of copyrightable subject
matter of @ 5. Defendant says that to be consistent with the
intent and purpose of earlier statutes, the "copying" proscription
of @ 1 should not apply to books or periodicals; rather, only
the proscribed acts of "printing," "reprinting" and "publishing"
should apply to books and periodicals.
Defendant's argument is not persuasive and, in any event,
is irrelevant. It is clear from a study of all the copyright
statutes from 1790 to date that what Congress has sought to
do in every statute is to proscribe unauthorized duplication
of copyrighted works. The words used in the various statutes
to define infringing acts (i.e., printing, reprinting, copying,
etc.) were simply attempts to define the then-current means
by which duplication could be effected. It is reasonable to
infer that in 1909, when Congress included "copying" in the
list of proscribed acts applicable to books and periodicals
(as well as copyrightable subject matter in general), it did
so in light of the fact that new technologies (e.g., photography)
made it possible to duplicate books and periodicals by means
other than "printing" and "reprinting." The legislative history
of the 1909 Act says little, one way or the other, about the
matter. n9 Nevertheless, @@ 1 and 5 are plain and unambiguous
on their face; and the Supreme Court held as recently as 1968,
in Fortnightly Corp., supra at 394:
* * * @ 1 of the [Copyright] Act enumerates several "rights"
that are made "exclusive" to the holder of the copyright.
If a person, without authorization from the copyright holder,
puts a copyrighted work to a use within the scope of one of
these "exclusive rights," he infringes the copyright. [Emphasis
supplied.]
See also the 1961 Register's Report, wherein it is noted at
21-22:
* * * as several courts have observed, the right embraced
in the repetitive terms of section 1(a) is the twofold right
to make and publish copies.
This right is the historic basis of copyright and pertains
to all categories of copyrighted works. * * * [Emphasis supplied.]
The burden, therefore, is on defendant to show that Congress
intended the statute to mean something other than what it
plainly says. Defendant has not carried that burden.
It is also pertinent that the courts have liberally construed
the 1909 Act to take into account new technologies by which
copyrighted works can be duplicated, and thus infringed. In
Fortnightly Corp., supra at 395-96, the Court, in dealing
with copyright infringement relating to television, said:
In 1909, radio itself was in its infancy, and television had
not been invented. We read the statutory language of 60 years
ago in the light of drastic technological change. [Emphasis
supplied.]
To the same effect is Jerome H. Remick & Co. v. American Automobile
Accessories Co., 5 F. 2d 411 (6th Cir. 1925), cert. denied,
269 U.S. 556, which stated at 411:
* * * the statute may be applied to new situations not anticipated
by Congress, if, fairly construed, such situations come within
its intent and meaning. Thus it has been held both in this
country and England that a photograph was a copy or infringement
of a copyrighted engraving under statutes passed before the
photographic process had been developed. [citations omitted]
While statutes should not be stretched to apply to new situations
not fairly within their scope, they should not be so narrowly
construed as to permit their evasion because of changing habits
due to new inventions and discoveries.
Furthermore, defendant's argument that it may "copy," short
of "printing," "reprinting" and "publishing," is irrelevant
under the facts of this case. NLM and the NIH library did
not merely "copy" the articles in suit; they, in effect, "reprinted"
and "published" them. "Printing" and "reprinting" connote
making a duplicate original, whether by printing press or
a more modern method of duplication. Macmillan Co. v. King,
223 F. 862 (D. Mass. 1914); M. Nimmer, Copyright @ 102 (1971
ed.). "Publishing" means disseminating to others, which defendant's
libraries clearly did when they distributed photocopies to
requesters and users. Macmillan Co., supra; M. Nimmer, Copyright
@ 104 (1971 ed.).
Defendant's contention that its libraries make only "single
copies" of journal articles, rather than multiple copies,
is illusory and unrealistic. Admittedly, the libraries, as
a general rule, make only one copy per request, usually for
different users. But the record shows that the libraries duplicate
particular articles over and over again, sometimes even for
the same user within a short timespan. E.g., the NIH library
photocopied the Count I article three times within a 3-month
period, two of the times for the same requester; and it copied
the Count IV and Count V articles twice within a 2-month period,
albeit for different users. The record also shows that NLM
will supply to requesters photocopies of the same article,
one after the other, on consecutive days, even with knowledge
of such facts. In short, the libraries operate comprehensive
duplication systems which provide every year thousands of
photocopies of articles, many of which are copies of the same
article; and, in essence, the systems are a reprint service
which supplants the need for journal subscriptions. The effects
of this so-called "single copying" practice on plaintiff's
legitimate interests as copyright owner are obvious. The Sophar
and Heilprin report, at 16, puts it in terms of a colorful
analogy: "Babies are still born one at a time, but the world
is rapidly being overpopulated."
The "fair use" defense
Defendant contends that its copying comes under the doctrine
of "fair use" of copyrighted works. "Fair use," a judicially-created
doctrine, is a sort of "rule of reason" applied by the courts
as a defense to copyright infringement when the accused infringing
acts are deemed to be outside the legitimate scope of protection
afforded copyright owners under 17 U.S.C. @ 1. What constitutes
"fair use" cannot be defined with precision. Much has been
written about the doctrine, particularly its rationale and
scope. See, e.g., A. Latman, Fair Use of Copyrighted Works,
Study No. 14, Copyright Law Revision, Studies Prepared for
Senate Comm. on the Judiciary, 86th Cong., 2d Sess. (1960);
Comment, Copyright Fair Use -- Case Law and Legislation, 1969
Duke L.J. 73; S. Cohen, Fair Use and the Law of Copyright,
ASCAP Copyright Law Symposium (No. 6) 43 (1955); W. Jensen,
Fair Use: As Viewed by the "User," 39 Dicta 25 (1962); L.
Yankwich, What Is Fair Use?, 22 U. Chi. L. Rev. 203 (1954);
Note, Fair Use: A Controversial Topic in the Latest Revision
of Our Copyright Law, 34 U. Cin. L. Rev. 73 (1965); M. Nimmer,
Copyright @ 145 (1971 ed.); Sophar & Heilprin Report at 15;
R. Heedham, Tape Recording, Photocopying and Fair Use, ASCAP
Copyright Law Symposium (No. 10) 75 (1959); Crossland, The
Rise and Fall of Fair Use: The Protection of Literary Materials
Against Copyright Infringement by New and Developing Media,
20 S. Car. L. Rev. 153 (1968). Some courts have held that
the doctrine is but an application of the principle de minimis
non curat lex and, as plaintiff puts it, "comes into play
only when a relatively small amount of copying takes place."
Principal factors considered by the courts in deciding whether
a particular use of a copyrighted work is a "fair use" are
(a) the purpose of the use, (b) the nature of the copyrighted
work, (c) the amount and substantiality of the material used
in relation to the copyrighted work as a whole, and (d) the
effect of the use on a copyright owner's potential market
for his work. n10 While these criteria are interrelated and
may vary in relative significance, the last one, i.e., the
competitive character of the use, is often the most important.
E.g., it has been held "fair use" to copy excerpts from literary
works for purposes of criticism or review (Loew's, Inc. v.
CBS, Inc., 131 F. Supp. 165, 105 USPQ 302 (S.D. Cal. 1955),
aff'd sub nom. Benny v. Loew's, Inc., 239 F. 2d 532, 112 USPQ
11 (9th Cir. 1956), aff'd by an equally divided Court, 356
U.S. 43 (1958)); or to copy portions of scholarly works (Greenbie
v. Noble, supra; Holdredge v. Knight Publishing Corp., 214
F. Supp. 921, 136 USPQ 615 (S.D. Cal. 1963)). However, it
is not "fair use" to copy ubstantial portions of a copyrighted
work when the new work is a substitute for, and diminishes
the potential market for, the original. Hill v. Whalen & Martell,
Inc., 220 F. 359 (S.D.N.Y. 1914); Folsom v. Marsh, 9 F. Cas.
342 (D. Mass. 1841). And it has been held that wholesale copying
of a copyrighted work is never "fair use" (Leon v. Pacific
Tel. & Tel. Co., 91 F. 2d 484, 34 USPQ 237 (9th Cir. 1937);
Public Affairs Associates, Inc. v. Rickover, 284 F. 2d 262,
127 USPQ 231 (D.C. Cir. 1960), vacated and remanded, 369 U.S.
111 (1962)), even if done to further educational or artistic
goals and without intent to make profit. Wihtol v. Crow, 309
F. 2d 777, 135 USPQ 385 (8th Cir. 1962).
Whatever may be the bounds of "fair use" as defined and applied
by the courts, defendant is clearly outside those bounds.
Defendant's photocopying is wholesale copying and meets none
of the criteria for "fair use." The photocopies are exact
duplicates of the original articles; are intended to be substitutes
for, and serve the same purpose as, the original articles;
and serve to diminish plaintiff's potential market for the
original articles since the photocopies are made at the request
of, and for the benefit of, the very persons who constitute
plaintiff's market. Defendant says, nevertheless, that plaintiff
has failed to show that it has been harmed by unauthorized
photocopying; and that, in fact, plaintiff's journal subscriptions
have increased steadily over the last decade. Plaintiff need
not prove actual damages to make out its case for infringement.
Macmillan Co., supra. Section 1498 of title 28 U.S.C. provides
for payment of "reasonable and entire compensation * * * including
minimum statutory damages as set forth in section 101(b) of
title 17, United States Code." See Brady v. Daly, 175 U.S.
148 (1899); F. W. Woolworth Co. v. Contemporary Arts, Inc.,
344 U.S. 228 (1952). M. Nimmer, Copyright @ 154 (1971 ed.).
Moreover, damage may be inferred in this case from the fact
that the photocopies are intended to supplant the original
articles. While it may be difficult (if not impossible) to
determine the number of subscription sales lost to photocopying,
the fact remains that each photocopy user is a potential subscriber,
or at least is a potential source of royalty income for licensed
copying. Plaintiff has set up a licensing program to collect
royalties for photocopying articles from its journals; and
among the licensees have been libraries, including a Government
library. n11 Also, there is evidence that one subscriber canceled
a subscription to one of plaintiff's journals because the
subscriber believed the cost of photocopying the journal had
become less than the journal's annual subscription price;
and another subscriber canceled a subscription, at least in
part because library photocopies were available. Loss of subscription
(or photocopying royalty) income is particularly acute in
the medical journal field. The record shows that printing
preparation costs are 50-65 percent of total cost of publication
and that the number of subscriptions is relatively small.
This simply means that any loss of subscription sales (or
royalty income) has the effect of spreading publication costs
over fewer copies, thus driving up steeply the unit cost per
copy and, in turn, subscription prices. Higher subscription
prices, coupled with cheap photocopying, means probable loss
of subscribers, thus perpetuating a vicious cycle which can
only bode ill for medical publishing.
Defendant's amici fear that a decision for plaintiff will
be precedent for plaintiff's seeking injunctions against non-Government
libraries, pursuant to 17 U.S.C. @ 101(a), thereby interfering
with the free flow of technical and scientific information
through library photocopying. On the basis of this record
and representations made by plaintiff's personnel and counsel,
that fear does not appear to be justified. Plaintiff does
not seek to enjoin any photocopying of its journals. Rather,
it merely seeks a reasonable royalty therefor. n12 Its licensing
program would so indicate for, as far as the record shows,
plaintiff will grant licenses to anyone at a reasonable royalty.
No doubt, plaintiff would prefer that all of its journal users
be subscribers. However, plaintiff recognizes that this is
unrealistic. Some articles in its journals are in greater
demand than others, and many journal users will not consider
it economically justifiable to subscribe to a journal simply
to get access to a few articles. Implicit in plaintiff's licensing
program, therefore, is the idea that it is in the best interest
of all concerned that photocopying proceed without injunction,
but with payment of a reasonable fee. That would appear to
be a logical and commonsense solution to the problem, not
unlike the solution provided by the American Society of Composers,
Authors and Publishers (ASCAP) and Broadcast Music, Inc. (BMI)
in the field of music and the performing arts. For a description
of how ASCAP and BMI operate in a context similar to this
one, see Hearings on H.R. 4347 and other bills before Subcomm.
No. 3, House Comm. on the Judiciary, 89th Cong., 1st Sess.
194, 203 (1965); Finkelstein, ASCAP as an Example of the Clearing
House System in Operation, 14 Copyright Soc'y Bull. 2 (1966).
Defendant says that photocopying by NLM and the NIH library
is "reasonable and customary" because it complies with a longstanding
practice of libraries to supply photocopies of parts of scientific
works to persons engaged in scholarly research, and is consistent
with the terms of the "gentlemen's agreement," earlier noted.
The "gentlemen's agreement," drafted in 1935, was the product
of meetings and discussions between representatives of the
book publishing industry and libraries. The representatives
were interested in working out a practical accommodation of
the conflict between (a) the legitimate interests of copyright
owners not to have their works copied without compensation
and (b) the needs of scholars and research workers for copies
of parts of copyrighted works for private use in pursuit of
literary or scientific investigation. The "agreement" was,
in effect, a promise by the book publishers not to interfere
with library photocopying under three conditions: (i) the
library must warn the person for whom the photocopy is made
that he is liable for any copyright infringement by misuse
(presumably by making further photocopies), (ii) the photocopying
must be done without profit to the library, and (iii) the
amount copied must not be so substantial as to constitute
an infringement. The third condition is implicit in the "agreement"
which says:
While the right of quotation without permission is not provided
in law, the courts have recognized the right to a "fair use"
of book quotations, the length of a "fair" quotation being
dependent upon the type of work quoted from and the "fairness"
to the author's interest. Extensive quotation is obviously
inimical to the author's interest. * * * It would not be fair
to the author or publisher to make possible the substitution
of the photostats for the purchase of a copy of the book itself
either for an individual library or for any permanent collection
in a public or research library. Orders for photocopying which,
by reason of their extensiveness or for any other reasons,
violate this principle should not be accepted. [Emphasis supplied.]
The "gentlemen's agreement" does not have, nor has it ever
had, the force of law with respect to what constitutes copyright
infringement or "fair use." So far as this record shows, the
"agreement" has never been involved in any judicial proceedings.
Nevertheless, the "agreement" is entitled to consideration
as a guide to what book publishers and libraries considered
to be "reasonable and customary" photocopying practices in
the year 1935. It has little significance, however, to this
case. The agreement was drafted on behalf of a book publishers'
organization which is now defunct and to which plaintiff never
belonged. In fact, it appears that no periodical publishers
were represented in the organization at the time the agreement
was drafted; and, consequently, the "agreement" cannot speak
for their interests or problems. See the Varmer study at 51,
n. 9. Furthermore, the "agreement" was drafted at a time when
photocopying was relatively expensive and cumbersome; was
used relatively little as a means of duplication and dissemination;
and posed no substantial threat to the potential market for
copyrighted works. Beginning about 1960, photocopying changed
character. The introduction to the marketplace of the office
copying machine made photocopying rapid, cheap and readily
available. The legitimate interests of copyright owners must,
accordingly, be measured against the changed realities of
technology. Professor Nimmer in his treatise Copyright capsules
the point at 653:
Both classroom and library reproduction of copyrighted materials
command a certain sympathy since they involve no commercial
exploitation and more particularly in view of their socially
useful objectives. What this overlooks is the tremendous reduction
in the value of copyrighted works which must result from a
consistent and pervasive application of this practice. One
who creates a work for educational purposes may not suffer
greatly by an occasional unauthorized reproduction. But if
every school room or library may by purchasing a single copy
supply a demand for numerous copies through photocopying,
mimeographing or similar devices, the market for copyrighted
educational materials would be almost completely obliterated.
This could well discourage authors from creating works of
a scientific or educational nature. If the 'progress of science
and useful arts' is promoted by granting copyright protection
to authors, such progress may well be impeded if copyright
protection is largely undercut in the name of fair use. [Emphasis
supplied.]
In any event, the "gentlemen's agreement" by its own terms
condemned as "not * * * fair" the making of photocopies which
could serve in "substitution" for the original work, and further
noted that "[o]rders for photo-copying which, by reason of
their extensiveness or for any other reasons" could serve
as duplicates of the original copyrighted work "should not
be accepted." Thus, the most that can be said for the "gentlemen's
agreement" is that it supported (and probably still supports)
the proposition that it is "reasonable and customary" (and
thus "fair use") for a library to photocopy for a patron a
part of a book, or even part of a periodical article, such
as a chart, graph, table, or the like, so long as the portion
copied is not practically a substitute for the entire original
work. Other instances of library photocopying may also be
"fair use." E.g., a library no doubt can replace damaged pages
of copyrighted works in its collection with photocopies; can
make a small number of photocopies for in-house administrative
purposes, such as cutting up for cataloging or the like; or
can supply attorneys or courts with single photocopies for
use in litigation. In all those instances, and probably many
more which might come to mind on reflection, the rights of
the copyright owner are not materially harmed. The doctrine
of "fair use" and the "gentlemen's agreement," however, cannot
support wholesale copying of the kind here in suit. n13
Defendant also contends that traditionally, scholars have
made handwritten copies of copyrighted works for use in research
or other scholarly pursuits; that it is in the public interest
that they do so because any harm to copyright owners is minimal
compared to the public benefits derived therefrom; and that
the photocopying here in suit is essentially a substitute
for handcopying by the scholars themselves. That argument
is not persuasive. In the first place, defendant concedes
that its libraries photocopy substantially more material than
scholars can or do copy by hand. Implicit in such concession
is a recognition that laborious handcopying and rapid machine
photocopying are totally different in their impact on the
interests of copyright owners. Furthermore, there is no case
law to support defendant's proposition that the making of
a handcopy by scholars or researchers of an entire copyrighted
work is permitted by the copyright laws. Certainly the statute
does not expressly permit it; and no doubt the issue has never
been litigated because, as a practical matter, such copying
is de minimis and causes no real threat to the copyright owner's
legitimate right to control duplication and dissemination
of copyrighted works. The photocopying done by NLM and the
NIH library, on the other hand, poses a real and substantial
threat to copyright owners' legitimate interests. Professor
Nimmer discusses the point succinctly, at 653-54 of his treatise,
and his language can hardly be improved upon:
It may be argued that library reproduction is merely a more
modern and efficient version of the time-honored practice
of scholars in making handwritten copies of copyrighted works,
for their own private use. In evaluating this argument several
factors must be considered. In the first place, the drudgery
of making handwritten copies probably means that such copies
in most instances are not of the complete work, and the quantitative
insignificance of the selected passages are such as generally
not to amount to a substantial similarity. Secondly, there
would appear to be a qualitative difference between each individual
scholar performing the task of reproduction for himself, and
a library or other institution performing the task on a wholesale
basis for all scholars. If the latter is fair use, then must
not the same be said for a non-profit publishing house that
distributes to scholars unauthorized copies of scientific
and educational works on a national or international basis?
Finally, it is by no means clear that the underlying premise
of the above argument is valid.
There is no reported case on the question of whether a single
handwritten copy of all or substantially all of a protected
work made for the copier's own private use is an infringement
or fair use. If such a case were to arise the force of custom
might impel a court to rule for the defendant on the ground
of fair use. Such a result, however, could not be reconciled
with the rationale for fair use suggested above since the
handwritten copy would serve the same function as the protected
work, and would tend to reduce the exploitation value of such
work. Moreover, if such conduct is defensible then is it not
equally a fair use for the copier to use his own photocopying
or other duplicating device to achieve the same result? Once
this is acknowledged to be fair use, the day may not be far
off when no one need purchase books since by merely borrowing
a copy from a library any individual will be able to make
his own copy through photocopying or other reproduction devices
which technological advances may soon make easily and economically
available.
To the same effect is a statement in the Varmer study at 62-63:
It has long been a matter of common practice for individual
scholars to make manual transcriptions of published material,
though copyrighted, for their own private use, and this practice
has not been challenged. Such transcription imposed its own
quantitative limitations; and in the nature of the event,
it would not be feasible for copyright owners to control private
copying and use. But reproduction for private use takes on
different dimensions when made by modern photocopying devices
capable of reproducing quickly any volume of material in any
number of copies, and when copies are so made to be supplied
to other persons. Publisher's copies are bought for the private
use of the buyer, and in some circumstances a person supplying
copies to others will be competing with the publisher and
diminishing his market.
Not only is such competition unfair to the publisher and copyright
owner, but it may be injurious to scholarship and research.
Thus, it has been pointed out that widespread photocopying
of technical journals might so diminish the volume of subscriptions
for the journals as to force the suspension of their publication.
Also, the 1961 Register's Report notes at 25-26:
Researchers need to have available, for reference and study,
the growing mass of published material in their particular
fields. This is true especially, though not solely, of material
published in scientific, technical, and scholarly journals.
Researchers must rely on libraries for much of this material.
When a published copy in a library's collections is not available
for loan, which is very often the case, the researcher's need
can be met by a photocopy.
On the other hand, the supplying of photocopies of any work
to a substantial number of researchers may diminish the copyright
owner's market for the work. Publishers of scientific, technical,
and scholarly works have pointed out that their market is
small; and they have expressed the fear that if many of their
potential subscribers or purchasers were furnished with photocopies,
they might be forced to discontinue publication.
Finally, defendant says that it is unconstitutional to construe
the copyright law so as to proscribe library photocopying
of scientific or technical writings because such photocopying
is consonant with the constitutional purpose of copyright
"to promote the progress of science." That argument misses
the mark. Article I, section 8, clause 8, of the U.S. Constitution
grants to Congress the "Power * * * To Promote the Progress
of Science * * * by securing for limited Times to Authors
* * * the exclusive Right to their * * * Writings * * *."
The word "Science" is used in the sense of general knowledge
rather than the modern sense of physical or biological science.
See Rich, Principles of Patentability, 28 Geo. Wash. L. Rev.
393, 394-97 (1960); H.R. Rep. No. 1923, 82d Cong., 2d Sess.
4 (1952); S. Rep. No. 1979, 82d Cong., 2d Sess. 3 (1952).
Congress has exercised its constitutional power by enacting,
and revising from time to time, copyright statutes which are
the method of, and provide a system for, achieving the constitutional
purpose. The system "promotes progress" by encouraging authors
to write and publicly disclose their writings; by inducing
publishers and entrepreneurs to invest risk capital in the
dissemination of authors' writings; and by requiring other
authors to create new writings, rather than plagiarize the
old, all of which is in the public interest. Mazer v. Stein,
347 U.S. 201, 219 (1954), rehearing denied, 347 U.S. 949.
Congress has broad discretion under the Constitution to prescribe
the conditions under which copyright will be granted, the
only express restriction being that any "exclusive right"
must be for a "limited time." Nothing in the present statute,
its legislative history or the case law suggests that Congress
intended to exempt libraries or others from liability for
wholesale copying of copyrighted works, whatever be the purpose
or motivation for the copying. What defendant really appears
to be arguing is that the copyright law should excuse libraries
from liability for the kind of photocopying here in suit.
That, of course, is a matter for Congress, not the courts,
to consider for it involves questions of public policy aptly
suited to the legislative process. In an analogous context
in Fortnightly Corp., supra, Justice Fortas noted at 408:
The task of caring for CATV is one for the Congress. Our ax,
being a rule of law, must cut straight, sharp, and deep; and
perhaps this is a situation that calls for the compromise
of theory and for the architectural improvisation which only
legislation can accomplish.
See also White-Smith Music Co., supra, where the Court noted
at 18, that "considerations [of what the copyright laws should
provide] properly address themselves to the legislative and
not the judicial branch of the Government." n14
III
Several other points raised by the parties merit comment.
Defendant notes that the National Library of Medicine Act
by which NLM was created (42 U.S.C. @ 275, et seq.) provides
at @ 276(a) (4) that the Secretary of Health, Education, and
Welfare, through NLM, shall "make available, through loans,
photographic or other copying procedures or otherwise, such
materials in the Library as he deems appropriate * * *"; and
that the Medical Library Assistance Act of 1965 (42 U.S.C.
@ 280b-1, et seq.) provides that grants be made to medical
libraries for, among other things, "acquisition of duplicating
devices, facsimile equipment * * * and other equipment to
facilitate the use of the resources of the library." 42 U.S.C.
280b-7. Defendant suggests that by those statutory provisions
Congress intended to exempt NLM and other grantee libraries
from the copyright laws. As defendant puts it, "* * * the
only reasonable interpretation [of the statutes] is that Congress
knew that fair use would exempt such libraries from copyright
infringement in the established use by libraries of such [photocopy]
equipment." There is no merit to this. Nothing in the statutes
or their legislative histories says anything about the copyright
laws, and it cannot be inferred that Congress intended the
statutes to be in derogation of the copyright laws, absent
an express indication to the contrary. n16 See generally E.
Crawford, Statutory Construction @ 227 (1940). No court has
ever held that "fair use" applies to library wholesale photocopying;
nor has there been a uniform and unchallenged policy among
libraries and other institutionalized photocopiers on the
bounds of "fair use." See note 11. Thus, it makes no sense
to impute to Congress an intent for which there is no sound
basis in judicial decision, or otherwise. The fact that the
statutes authorize the libraries to make use, generally, of
photocopying equipment and procedures, is not controlling
or even very significant. Much material in library collections
is either not copyrighted or is material on which the copyright
has expired; and in either event, the material is in the public
domain and can be freely copied.
Furthermore, the record shows that NLM, from the beginning,
has been concerned about complying with the copyright laws
and has never considered itself exempt therefrom. In 1957,
NLM's Board of Regents discussed the library's photocopying
practices and deemed them to create vexing copyright infringement
problems. The Director of NLM was of the opinion that "sooner
or later" the problems would bring "a test of the issue in
the courts." Defendant suggested at trial that payment of
compensation to plaintiff for photocopying its journals would
create a continuing undue and oppressive administrative and
financial burden on NLM and the NIH library. Defendant has
not pressed the point in its brief, perhaps because it is
clear that plaintiff's right to compensation under 28 U.S.C.
@ 1498(b) cannot depend on the burdens of compliance. Nevertheless,
defendant's point merits comment since courts should be mindful
of the practical consequences of their decisions. Based on
this record, defendant's fears are not justified. Both NLM
and the NIH library already have administrative procedures
by which they keep detailed records of photocopying. Both
libraries require that written request slips be submitted
by requesters of photocopies. The slips are a permanent record
of the journals and pages photocopied. It would seem a routine,
albeit tedious, matter to cull from those records the information
necessary to calculate a reasonable royalty on the basis of
the number of articles copied, or perhaps to come up with
an acceptable formula for establihing a blanket annual royalty
payment. Indeed, the evidence suggests that this is so. In
1967, NLM temporarily stopped photocopying articles from plaintiff's
journals, as a result of plaintiff's charge of copyright infringement
and requests for a reasonable royalty. NLM was able, as a
practical matter, to flag all requests for photocopies from
plaintiff's journals from April 27, 1967 to May 29, 1967,
in order to refrain from copying them. On about May 29, 1967,
photocopying was resumed and was monitored for about 90 days.
Satisfied that the 90-day period was a representative sample,
NLM found that it would have paid plaintiff about $ 250-$
300 if it had acceded to plaintiff's request for royalty payment.
The Director of NLM testified that, in his opinion, this was
"a very small sum -- surprisingly small sum." Similarly, the
NIH librarian testified that payment of royalties for photocopying
"has nothing to do with the operation of the library in the
fulfillment of * * * [its] function. It is an economic and
budgetary consideration and not a service-oriented kind of
thing."
Nor does it appear that payment of royalties to other publishers
will create an undue or oppressive administrative burden.
The Sophar and Heilprin report notes, at 58-60, that based
on a study of the photocopying practices of U.S. libraries,
less than 1,000 publishers provide the material photocopied
by libraries, and that about 5 percent of that number provide
about 40 percent of the material copied. This simply means
that nearly half of the materials photocopied emanate from
about 50 publishers. No doubt, the materials photocopied by
NLM and the NIH library come from an even smaller number of
publishers since those libraries are highly specialized. In
any event, by using modern management practices including
computers and the like, it would appear that NLM and the NIH
library can, with minimum disruption, cope with the necessary
recordkeeping. n17
Postscript: The issues raised by this case are but part of
a larger problem which continues to plague our institutions
with ever-increasing complexity -- how best to reconcile,
on the one hand, the rights of authors and publishers under
the copyright laws with, on the other hand, the technological
improvements in copying techniques and the legitimate public
need for rapid dissemination of scientific and technical literature.
The conflict is real; the solution not simple. Legislative
guidelines seem appropriate. n18 The Sophar and Heilprin report,
at pp. viii-ix of the Summary, capsules the problem in a statement
worth quoting:
From the viewpoint of the information scientist, copyright
may appear as an impediment to the most efficient flow of
information. It is apparently a blockage in an information
system. Our early tendency was to oppose and try to limit
the protection and control granted in copyright for the sake
of efficiency. After careful analysis we no longer do.
There is a philosophical reason for not wanting to see copyright
destroyed and there are a number of practical reasons. The
philosophical reason is simply a belief that copyright is
one of a number of ways in which our society expresses its
belief and hope that an individual can continue his identity
in a world of mass efforts by assuring the individual, his
publisher or his association sufficient income from his ideas
to maintain a degree of independence. The erosion of the economic
value of copyright must lead to federal support of all kinds
of writing and, of course, control.
The practical reasons flow from the philosophical reasons.
Publishers, non-profit as well as commercial, will simply
not be able to continue publishing under an eroded system.
The scientific and other professional societies which, through
their memberships, have done the most to develop information-handling
tools and media are the ones most hurt by them. A means must
be developed to assure payment to the copyright owner in return
for unlimited and uncontrolled access to and duplication of
the copyrighted work.
Our only concern and "vested interest" in copyright since
we became interested in the problem "is to find a way to protect
the 'exclusive Right' of an author to his 'Writings,' while
permitting the advantages of modern information dissemination
systems to become as useful as they may without weakening
or threatening the economic urge and the need to create."
We believe the two must become reconciled, not in the interests
of compromise, but simply because both concepts are too valuable
for either one to be permitted to severely harm or destroy
the other.
Nichols, Judge, dissenting:
I join in the Chief Judge's able dissent, and add a few words
of my own. I agree with him that the photocopying of copyrighted
material, as described in the findings, is not within the
judge-made doctrine of fair use, and it should not be. The
majority has posed a question, whose answer it triumphantly
demonstrates, but it is the wrong question. The issue is not
whether we should "stop" defendant's photocopying. Such a
stoppage, at the behest of a publisher who refused to license
on fair terms could well be unconscionable, in my opinion,
but we have no such publisher before us. Plaintiff here is
willing to license. If he did want to halt the photocopying,
he would be in the wrong court here.
As the majority admits, we lack the power to enjoin. United
States v. King, 395 U.S. 1 (1969). Under 28 U.S.C. @ 1498,
as amended, all we can do, if we find infringement, is to
award reasonable and entire compensation. The idea we are
asked to "stop" the photocopying I suppose can be elaborated
as follows: our decision would be stare decisis in other suits
against non-government libraries in which injunctive relief
is expressly authorized. 17 U.S.C. @@ 101(a), 112. However,
the latter section authorizes injunctions on terms. There
is high authority under earlier legislation that courts can
refuse to enjoin copyright infringements if they deem an injunction
would be unconscionable. Dun v. Lumbermen's Credit Ass'n.,
209 U.S. 20 (1908). Under the 1909 Act, the Second Circuit
held in National Comics Publications, Inc. v. Fawcett Publications,
Inc., 198 F. 2d 927 (1952), refusing to direct an injunction
on remand:
* * * We think it best to leave open to the district court
the question whether an injunction shall issue, since that
is always a discretionary matter.
The Ninth Circuit also recognizes that same principle. Shapiro,
Bernstein & Co. v. 4636 S. Vermont Ave., Inc., 367 F. 2d 236
(1966).
The Senate Study on Copyright Law Revision, Committee On The
Judiciary Pursuant to S. Res. 240, Studies 22-25, 86th Cong.
2d Sess., says at p. 127: * * *
The present law leaves it to the discretion of the court whether
an injunction will be granted or denied. It has always been
the rule of the courts that an injunction is an extraordinary
remedy to be used only where further injury to the plaintiff
is likely and the equities of the situation are on the side
of injunctive relief, and the courts have denied an injunction
in cases where it was thought that this remedy would be unduly
harsh on the defendant.
* * *
In Hecht Co. v. Bowles, 321 U.S. 321 (1944), the Supreme Court
construed the wartime Emergency Price Control Act as not mandating
injunctive relief, although the language of the statute was
more favorable to such a construction, than that of the Copyright
Act. Mr. Justice Douglas said for the Court at p. 329:
* * * We are dealing here with the requirements of equity
practice with a background of several hundred years of history.
Only the other day we stated that "An appeal to the equity
jurisdiction conferred on federal district courts is an appeal
to the sound discretion which guides the determinations of
courts of equity." Meredith v. Winter Haven, 320 U.S. 228,
235. The historic injunctive process was designed to deter,
not to punish. The essence of equity jurisdiction has been
the power of the Chancellor to do equity and to mould each
decree to the necessities of the particular case. Flexibility
rather than rigidity has distinguished it. The qualities of
mercy and practicality have made equity the instrument for
nice adjustment and reconciliation between the public interest
and private needs as well as between competing private claims.
* * *
In view of the many persuasive reasons our majority adduces
why photocopying by non-profit libraries should not be "stopped",
I deem it an over-large assumption that an award by us of
reasonable and entire compensation to our plaintiff would
by stare decisis bind other tribunals, at the behest of other
plaintiffs, to enjoin such library photocopying.
The amended @ 1498 prescribes an award of "reasonable and
entire compensation" which shall include the statutory minima
under 17 U.S.C. @ 101(b). Whether any statutory minimum is
there prescribed in the case of a library photocopy of a periodical
article, is a far tangent from our present inquiry, but I
am satisfied, if it is, it need not be so prohibitive or punitive
as to "stop" the photocopying.
Moreover, as to the question of fair use, I have difficulty
regarding a use as fair, when a user benefits as extensively
from the copyrighted material as this one does, yet adamantly
refuses to make any contribution to defray the publisher's
cost, or compensate for the author's effort and expertise,
except the nominal subscription price of two copies of each
periodical. Defendant's libraries, and others, have attempted
to exercise a measure of self-restraint hitherto, but there
is nothing in the majority decision to induce them to continue,
that is not more than counterbalanced by other material that
will encourage unrestricted piracy. However hedged, the decision
will be read, that a copyright holder has no rights a library
is bound to respect. We are making the Dred Scott decision
of copyright law.
I think the court also errs in inputing to Herbert Putnam,
Librarian of Congress, an interpretation of the 1909 statute
consistent with the court's. The brief for a group of amici
put before us a 1908 regulation of that library which, the
brief says, included this provision:
Photographing. Photographing is freely permitted. The permission
extends to the building itself and any of its parts, including
the mural decorations. It extends to articles bearing claim
of copyright, but the Library gives no assurance that the
photograph may be reproduced or republished or placed on sale.
These are matters to be settled with the owner of the copyright.
(Emphasis supplied.)
Assuming this is properly a matter for judicial notice, the
omission to include it in the trial judge's findings (or to
request inclusion) may perhaps be overlooked. Yet, as part
of self-serving statements of historical fact in a brief,
it avoids explanations such as an adverse party at the trial
level might have furnished. The regulation possibly alluded
to articles (i.e., in common speech, short non-fiction writings)
if it alluded to copyrighted printed matter. Why was not,
e.g., copyrighted fiction of equal concern? The explanation
that suggests itself to me as possible is that the articles
mentioned are, or at least include, three-dimensional objects,
or artifacts. The provision is too ambiguous in its coverage
to afford any indication of how Putnam interpreted the copyright
law.
The 1913 regulation, in a new section entitled Photostat,
deals for the first time with reproduction of two-dimensional
material. The court quotes it. It includes no caution as to
copyright. The former provision as to photographing is continued
unchanged. It seems a fair inference that no copyright caution
was considered necessary as to two-dimensional material because
the then method of photograph duplication of such material,
known as Photostating, was too costly, cumbersome and slow,
to appear as a menace to holders of copyrights. Those of us
whose memories go back to law practice in the thirties can
take judicial notice that use of the method to generate copyright
infringements on a major scale would have been unthinkable.
A single copy of an infringing book or magazine article, produced
by Photostating, would have cost two dollars or so per page.
If this recollection is carrying judicial notice too far,
let us drop the Putnam argument altogether.
Finally, I must note the repeated alterations made in the
trial judge's fact findings. Specifically:
New sentence in finding 6, that the requesters needed the
articles in connection with their professional work, and used
their copies solely for such purposes.
Deletions from finding 10 of part (b) explaining how copyright
passes from authors to publishers.
Insertion in finding 17(b) that libraries' self-restraint
policies are not abused or circumvented.
Insertion in finding 22(c), same effect.
Insertion in finding 39(b) that plaintiff's business is growing
faster than the gross national product. This is irrelevant
if true. Why not a comparison with the growth of the national
debt? Or the total gate receipts of the National Football
League?
Deletion from finding 39(d) of inference that plaintiff must
have suffered some loss from photocopying and substitute statement
he has failed to show substantial hurt. Trial Judge Davis
also found, with record support, that at least one subscriber
cancelled a subscription to one of plaintiff's journals because
the cost of photocopying the journal had become less than
the journal's annual subscription price. There was evidence
that in another instance, a subscriber cancelled a subscription
at least in part because library photocopies were available.
The relevance and effect of these changes is doubtful in light
of the fact that the statutory minima under @ 101(b) are apparently
intended to take care of instances where a plaintiff cannot
prove actual damages. Cf., Shapiro, Bernstein & Co. v. 4636
S. Vermont Ave., Inc., supra.
I do not think these alterations were proper in light of the
presumption that the trial judge's findings are correct. Rule
147(b). They also suggest that the court would have had difficulty
reaching the conclusion it did if it had respected the findings
as it should have done. If plaintiff's business is really
growing faster than the gross national product or other indicia,
without the court's protection, the place to take this into
account is in the determination of reasonable and entire compensation.
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n1 These sections had been in the copyright law since 1831
and had been twice re-enacted. Act of February 3, 1831, ch.
16, @@ 6 and 7, 4 Stat. 436; Act of July 8, 1870, ch. 230,
@@ 99 and 100, 16 Stat. 214; Act of March 3, 1891, ch. 565,
@@ 4964 and 4965, 26 Stat. 1109.
n2 The trial judge observed that it was the intent of Congress
in all the copyright acts to proscribe the unauthorized duplication
of copyrighted works. The words used in the various statutes
were simply attempts to define the then-current means by which
duplication could be effected. I believe this is a fair statement,
but it is not necessary to debate the statutory history in
light of the changes in the 1909 Act.
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n3 For cases involving the copying of segments from a copyrighted
catalog by photographic reproduction, see Hedeman Products
Corp. v Tap-Rite Prods. Corp., 228 F. Supp. 630, 633-34 (D.N.J.
1964); R. R. Donnelley & Sons Co. v Haber, 43 F. Supp. 456,
458-59 (E.D.N.Y. 1942).
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n4 The fact that Dr. Putnam, the Librarian of Congress at
the time of the 1909 Act, interpreted the word "copy" not
to include library photoduplication is no indication that
the Congress drafted the statute with this intent. The absence
of any provision allowing library photoduplication in the
statute or the legislative history indicates, as much as anything
else, that Congress did not consider it to be exempt from
the Act. The many efforts to amend the law to authorize photocopying
by libraries provide a strong indication that existing law
was not intended to grant this exemption to libraries. See
n. 14, trial judge's opinion.
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n5 It has been held that the copying or printing of something
which has been lawfully copyrighted is an infringement "without
any requirement that there be a sale or that profits be made
from sale of the copies." Chappell & Co., Inc. v. Costa, 45
F. Supp. 554, 556 (S.D.N.Y. 1942). In Wihtol v. Crow, 309
F. 2d 777 (8th Cir. 1962), the First Methodist Church was
found to be liable for a choral instructor's copying of a
copyrighted song.
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n6 See the trial judge's opinion for quotations from B. Varmer,
Photoduplication of Copyrighted Material by Libraries, Study
No. 15, Copyright Law Revision, Studies Prepared for the Senate
Comm. on the Judiciary, 86th Cong., 2d Sess. 62-63 (1960);
Report of the Register of Copyrights on the General Revision
of the U.S. Copyright Law, House Committee Print, 87th Cong.,
1st Sess. 25-26 (1961). M. Nimmer, Nimmer on Copyright @ 145
at 653-54 (1973 ed.). See also Crossland, The Rise and Fall
of Fair Use: The Protection of Literary Materials Against
Copyright Infringement by New and Developing Media, 20 S.
Car. L. Rev. 153, 154 (1968).
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n7 It should be noted that the Fry survey was made when photocopying
was not as prominent as it is today. Even at that time, the
Fry Report notes that larger publishers (who were photocopied
most heavily) complained about the effects of photocopying.
Fry Report at 86-87. Secondly, the Fry Report operates on
the dubious assumption that in most cases the photocopy serves
as a substitute for loaning the original material and does
no more damage than would loaning of the original material.
In addition to the Fry Report, the majority cites a statement
by Dan Lacy, Managing Director, American Book Publisher's
Council, to the effect that photocopying is undertaken in
lieu of manual note taking, typing, or handwriting a copy,
and in lieu of a library loan rather than in lieu of buying
a copy. We can hardly expect a representative of an organization
of book publishers to be an expert on the problems of journal
publishers. Library photocopying of books does not pose the
same threat to a book publisher as photocopying of journal
articles does to its publisher. Rarely are books photocopied
completely. At present, there appears to be no competition
for the consumer market between libraries and book publishers.
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n8 For example, in 1968, profit from Pharmacological Reviews
was $ 1,154.44 (on sales of about $ 40,000). The profit was
divided, $ 1,039 to the American Society for Pharmacology
and Experimental Therapeutics and $ 115.44 to plaintiff. In
1969, net income from Gastroenterology was $ 21,312 (on sales
of about $ 245,000) and $ 11,532.35 of that amount was offset
by losses the previous year, leaving a balance of $ 9,779.73.
The balance was split between plaintiff and the American Gastroenterological
Association, plaintiff getting $ 4,889.86.
n9 Tr. at 73.
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* Portions of the trial judge's opinion have been deleted
which accounts for the inconsistency in footnote numbering.
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n4 E.g., the November 1956 issue of Medicine has 86 pages,
four of which carry commercial product advertising. The August
1965 issue of Journal of Immunology has 206 pages, nine of
which carry commercial product advertising.
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n5 One argument made by defendant to justify the copying of
single articles from plaintiff's journals is that each article
is but "part" of a journal issue, which in turn is but "part"
of a journal volume; and, accordingly, defendant says, its
libraries have not copied an "entire" copyrighted work. Section
3 of 17 U.S.C. fully meets that argument, for it is undisputed
that plaintiff could publish and seek copyright registration
on each article separately. As stated in H.R. Rep. No. 2222,
60th Cong., 2d Sess. 10 (1909):
Section 3 [of the Copyright Act] does away with the necessity
of taking a copyright on the contributions of different persons
included in a single publication * * *.
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n8 Congress enacted the first copyright statute in 1790 (Act
of May 31, 1790, ch. 15, 1 Stat. 124). Thereafter, the statute
was revised from time to time, notably in 1802, 1831, 1870,
and 1891. In 1909, the present statute was passed (Act of
March 4, 1909, ch. 320, 35 Stat. 1075) and later was codified
as 17 U.S.C. (Act of July 30, 1947, 61 Stat. 652).
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n9 H.R. Rep. No. 2222, 60th Cong., 2d Sess. 4 (1909) states:
Subsection (a) of section 1 adopts without change the phraseology
of section 4952 of the Revised Statutes, and this, with the
insertion of the word "copy," practically adopts the phraseology
of the first copyright act Congress ever passed -- that of
1790. Many amendments of this were suggested, but the committee
felt that it was safer to retain without change the old phraseology
which has been so often construed by the courts.
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n10 H.R. Rep. No. 83, 90th Cong., 1st Sess. (1967), which
relates to revision of the copyright laws, notes that these
factors are the ones used by the courts. At 29-37, there is
a detailed discussion of "fair use" as applicable to photocopying
for educational purposes.
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n11 There is no agreement, even among libraries and Government
agencies, of what constitutes "fair use" in institutionalized
photocopying. The Library of Congress will not photocopy copyrighted
materials without permission of the copyright owners. Many
other libraries follow the General Interlibrary Loan Code
and engage in "single copy" photocopying. The U.S. Office
of Education, through its Education Resources Information
Center (ERIC) makes available current educational and research-related
materials. ERIC will not copy copyrighted materials without
permission of the copyright owner. See Sophar and Heilprin
report at 39-46.
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n12 In his opening statement at trial, plaintiff's counsel
said (emphasis supplied):
The case has nothing to do with the stopping of photocopying.
The Commissioner knows that an injunction is not available
in this court, nor is plaintiff, in any case, seeking to curtail
this use of its articles.
Similarly, William M. Passano, plaintiff's Chairman of the
Board, stated in a hearing before a Senate committee:
We feel that it is unrealistic and not in the public interest
to consider restricting in any way the use of photocopying
devices. They serve a useful purpose in the dissemination
of knowledge. Since we, as publishers, are in that business,
we certainly don't want to see the spread of knowledge curtailed.
To us the only solution to the problem is a simple system
of royalty payments with a minimum of red tape. * * * [Hearings
on Copyright Law Revision before the Patents, Trademarks and
Copyrights Subcomm. of the Senate Comm. on the Judiciary,
90th Cong., 1st Sess. 976 (1967).]
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n13 The potential pernicious effects of modern, institutionalized
photocopying of copyrighted works (particularly journal articles)
in the name of "fair use" is discussed at length in the Sophar
and Heilprin report. The authors, at 24, characterize wholesale
copying by libraries as "a non-violent form of civil disobedience."
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n14 There has been no dearth of activity to revise the 1909
Copyright Act. Some of that activity relates to library photocopying
problems. See, e.g., Hearings on H.R. 4347 and other bills
before Subcomm. No. 3, House Comm. on the Judiciary, 89th
Cong., 1st Sess. 448, 459, 1133 (1965); S. 597, H.R. 2512,
90th Cong., 1st Sess. (1967); S. 543, 91st Cong., 1st Sess.
(1969); S. Rep. No. 91-1219, 91st Cong., 2d Sess. 5 (1970);
S. 644, 92d Cong., 1st Sess. (1971). For a brief history of
legislative activity directed toward revision of the 1909
Copyright Act, see Fortnightly Corp., supra at 396 n. 17;
UCLA Project at 931-38.
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n16 H.R. Rep. No. 941, 84th Cong., 2d Sess. (1956); S. Rep.
No. 2071, 84th Cong., 2d Sess. (1956); H.R. Rep. No. 1026,
89th Cong., 1st Sess. (1965); S. Rep. No. 756, 89th Cong.,
1st Sess. (1965).
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n17 It has been suggested that there be established a clearinghouse
for access, permissions and payments for photocopying of copyrighted
materials. The clearinghouse would relieve institutional copiers
of the burdens of royalty distribution and might also be instrumental
in setting up blanket royalty arrangements, thus relieving
the institutions from most recordkeeping requirements. See,
e.g., the Sophar and Heilprin report at 82. The clearinghouse
concept has also been alluded to in a congressional report:
* * * Despite past efforts, reasonable arrangements involving
a mutual understanding of what generally constitutes acceptable
library practices, and providing workable clearance and licensing
conditions, have not been achieved and are overdue. The committee
urges all concerned to resume their efforts to reach an accommodation
under which the needs of scholarship and the rights of authors
would both be respected. [Emphasis supplied.] [H.R. Rep. No.
83, 90th Cong., 1st Sess. 36 (1967).]
And it is interesting that Sophar and Heilprin found that
librarians favored, two to one, the clearinghouse approach
to the problem, even though many of those in favor "indicated
a desire to settle an increasingly complex matter, rather
than an enthusiastic approval of the idea." Sophar and Heilprin
report, at p. v of the Summary.
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n18 In 1969, several bills were introduced in both the Senate
and House to establish a National Commission on Libraries
and Information Science. Also in 1969, H.R. 8809 was introduced
to provide for a "National Science Research Data Processing
and Information Retrieval System." See 1969 Register of Copyrights
Annual Rep. 6. Earlier, in 1967, the Senate enacted S. 2216,
90th Cong., 1st Sess., by which there would be created a commission
to study and compile data on the reproduction and use of copyrighted
works. The House took no action on the bill.
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