Statement of support for petition for rehearing

The following statement about the Texaco fair use case was filed this

week with the Second Circuit Court on behalf of ARL and 14 other library

and academic organizations.  The statement, prepared by ARL's attorney,

Ritchie Thomas of the firm Squire, Sanders & Dempsey, supports Texaco's

petition to rehear the case about whether the use of certain scientific

and technical journal articles by a Texaco researcher was a fair use. 

The Court has no deadline for deciding if it will rehear the case; it

would be unusual for a rehearing to be granted.  We will keep you

informed of further developments. 

STATEMENT OF SUPPORT FOR APPELLANT TEXACO INC.'S PETITION FOR REHEARING

		AND SUGGESTION FOR REHEARING EN BANC

	This statement amici curiae in support of Texaco Inc.'s

("Texaco") Petition for Rehearing And Suggestion For Rehearing En Banc

is submitted by the following library associations:

		Association of Research Libraries

		American Association of Law Libraries

		Medical Library Association

		Special Libraries Association

		Northern California Association of Law Libraries

		Association of Academic Health 

			Science Library Directors

the following universities and university libraries:

		Duke University

		Georgetown University

		Michigan State University Libraries

		University of California at Santa Barbara 

			University Library

		University of Delaware Library

		University of Missouri-Columbia Library

		University of Texas System

and the following alliances of learned and scholarly societies:

		American Council of Learned Societies

		National Humanities Alliance

	These Library and Academic Amici urge the Court to grant

Texaco's petition to rehear this appeal and reconsider, en banc, this

Court's 2-1 decision of October 28, 1994, in American Geophysical Union

v.  Texaco, Inc., 37 F.3d 881 (2nd Cir.  1994), which affirmed then

District Court Judge Pierre N.  Leval's order in American Geophysical

Union v.  Texaco Inc., 802 F.  Supp. 1 (S.D.N.Y.  1992), granting

judgment to the plaintiff on the issue of whether the use of certain

scientific and technical journal articles and letters by Texaco's

researcher Dr. Chickering was a fair use. 

	The Library and Academic Amici support Texaco's request for a

rehearing because the decision of the majority of the reviewing panel

throws into confusion the status of personal use photocopying of

scientific, technical, and medical (and potentially other) journal

articles and excerpts by or for students, teachers, and researchers,

which is widely practiced and long has been considered fair use.  As

noted by Judge Jacobs' dissent, "making single photocopies for research

and scholarship purposes has been considered both reasonable and

customary for as long as photocopying technology has been in existence."

American Geophysical, 37 F.3d at 902 (Jacobs, J., dissenting).  This use

is consistent with the expectations of the authors of these articles,

who "work and publish in order to gain distinction, appointment,

resources, tenure.....[but].....seek and derive absolutely no direct

cash benefit from publication" and "do not seek or expect royalties"

from photocopying.  Id.  at 907, 908.  Typically, the authors have

themselves used photocopied journal articles and excerpts in the

creative process that led to the insights and advances that are subject

of their articles. 

	The majority's decision holding that the photocopying of journal

articles by Texaco's researchers without a license is infringement

upsets a long-standing equilibrium between the interests of the owners

of copyright in such publications and the needs of researchers and

others users.  It threatens to impose a regime that Judge Jacobs

accurately observes would subject users "on a day to day basis to

burdens that cannot be satisfied without a team of intellectual property

lawyers and researchers." Id.  at 906.  Moreover, the addition "to the

cost, time and effort that scientists [and others] spend to scan, keep

and use journal articles" (id.  at 908) resulting from the liability

imposed by the majority is a non-productive economic rent that would

significantly impede progress in science and the arts in the United

States.  This result is of serious concern to the Library and Academic

Amici, whose members have an interest and responsibility to assure that

information is made available to scholars, teachers, and researchers to

the maximum possible extent. 

	It is a result that is not mandated -- or even authorized -- by

statute, precedent, or reason.  The opinion of Judge Jacobs and the

petition submitted by Texaco point out several flaws in the assumptions

and reasoning that led the majority to its erroneous conclusion.  In

this statement, therefore, the Library and Academic Amici simply express

their support for Texaco's petition and comment briefly on two respects

in which the majority decision misconceives express provisions of the

governing statute and its legislative history --- in the development of

which several of the Library and Academic Amici participated --- which

errors provide further reasons why the majority's decision should be

reconsidered. 

1.  	The Making Of Single Photocopies Of Journal Articles Is Not

    	___________________________________________________________

Inherently Suspect Or Disfavored Under The Copyright Act, When Done For

______________________________________________________________________

Personal Use In Teaching, Scholarship, Or Research

__________________________________________________

	The majority makes a serious error early in the development of

its rationale, in its basic assessment of the application of the

doctrine of fair use to the photocopying of documents.  See id.  at

885-886.  The Majority's error is to consider photocopying a new

development, which threatens the balance struck in the Copyright Act

between the rights of copyright proprietors and the rights of users, to

which the fair use doctrine is of questionable application, and about

which Congress has provided "scant guidance." Id.  at 886.  In each of

these particulars the Majority is mistaken.  The Majority's error is

significant, because it skews the Majority's application of the fair use

factors. 

	There is no evidence to support the Majority's statement that

"the invention and widespread availability of photocopying technology

threatens to disrupt the delicate balances established by the Copyright

Act" (id.  at 885).  That statement is mistaken in its historical and

factual assumptions.  When the Copyright Act was considered in the

1970's and enacted in 1976, the photocopy machine was already

ubiquitous.  Photocopying of articles and excerpts had widely supplanted

hand or type-written notes as a way of making personal use copies of

materials of interest to scholars and researchers; transmissions of

photocopies of journal articles had largely replaced the physical

transfer of journal issues as a means of inter-library loan of those

materials; and photocopies of articles and excerpts were in general use

by teachers in classrooms.  This is apparent from Williams and Wilkins

Co.  v.  United States, 487 F.2d 1345 (Ct.  Cl.  1973), aff'd by equally

divided Court, 420 U.S.  376 (1975), and the legislative history of

sections 107 and 108 of the Act (which to a very large extent is devoted

to issues raised by the photocopying of copyrighted works).[1]

	The Act expressly took photocopying and other forms of

mechanical reproduction into account, not only in section 108, which

addresses reproduction and distribution of copies in and by libraries

and archives, but also in the general fair use provisions of section

107.  Section 107 states that the exclusive rights of a copyright holder

are limited by the right of the public to make fair use of a copyrighted

work, "including such use by reproduction in copies .  .  .  for

purposes such as .  .  .  teaching (including multiple copies for

classroom use), scholarship, or research .  .  ." 17 U.S.C.  sect.  107. 

The legislative history of this provision adds that "the reference to

fair use 'by reproduction in copies or phonorecords or by any other

means' is mainly intended to make clear that THE DOCTRINE HAS AS MUCH

APPLICATION TO PHOTOCOPYING AND TAPING AS TO OLDER FORMS OF USE .  .  . 

" H.R.  Rep.  No.  1476, 94th Cong., 3d Sess.  66 (1976) (emphasis

added).  See S.  Rep.  473, 94th Cong., 1st Sess.  62 (1975). 

	It is also clear from the provisions of section 107 and its

legislative history that the Majority is mistaken in considering that

Congress has "provided scant guidance for resolving fair use issues

involving photocopying, legislating specifically only as to library

copying." American Geophysical, 37 F.3d at 886.  Congress, in section

107, legislated specifically that:

1) photocopying is a fair use when done in appropriate degree and

circumstances; 

2) uses involving photocopying are to be treated the same as more

traditional uses in fair use analysis;[2] and

3) in some circumstances, fair use extends to the making of even

multiple photocopies of the same work. 

	In addition, the legislative history of section 107 specifically

endorses guidelines that approve, among other things, the making by or

for a teacher of single copies of periodical articles for his or her

RESEARCH, as "a reasonable interpretation of the MINIMUM standards of

fair use." H.R.  Rep.  1476 at 68, 72 (emphasis added). 

	Therefore, the majority erred in stating that the advent of

photocopying technology "threatens to disrupt the delicate balances

established by the Copyright Act." The balances between the rights of

authors and the rights of users of copyrighted works struck in the

Copyright Act were devised well after the invention of photocopying

technology; they took account of the availability and widespread use of

photocopying technology; and they contemplated that, in appropriate

circumstances, uses involving photocopying would be fair uses.  This

should have been the starting place for the court's analysis.[3]

2.  	The Majority Erred In Holding That Congress Has Suggested That

	______________________________________________________________

Royalty Fees For Photocopying Should Be Recognized As Part Of The

_________________________________________________________________

"Potential Market For Or Value Of" Journal Articles

___________________________________________________

	The Majority is guilty of a second significant misreading of the

Copyright Act and its legislative history.  This arises in the

Majority's effort to defend the circular reasoning by which it concludes

that the publishers' development of a (seriously flawed) mechanism for

collecting royalties for journal article photocopying has radically

expanded the publishers' monopoly and correspondingly eroded the

public's fair use rights.  The Majority asserts that: 

	[i]n two ways, Congress has impliedly suggested that the law

	should recognize licensing fees for photocopying as part of the

	"potential market for or value of" journal articles. 

American Geophysical, 37 F.3d at 899.  This assertion is not supported

by the statutory and legislative history provisions cited by the

Majority. 

	The Majority claims the first source in which it finds the

implied suggestion is section 108, which, the Majority asserts,

"narrowly circumscribes the conditions under which libraries are

permitted to make copies of copyrighted works." Id.  The Majority states

that: 

	the very fact that Congress restricted the rights of libraries

	to make copies implicitly suggests that Congress views journal

	publishers as possessing the right to restrict photocopying, or

	at least the right to demand a licensing royalty from non-public

	institutions that engage in photocopying. 

Id. at 899.

	This is a misreading of section 108, in two respects.  First,

section 108 does not restrict the rights of libraries to make copies. 

It provides express rights as a "safe harbor" for libraries.  While the

rights accorded under section 108 are specific and finite, the statute

makes clear that they do not limit libraries' rights of fair use under

section 107, which may be more extensive.  See 17 U.S.C.  SECT. 

108(f)(4). 

	Second, the finite character of the rights to reproduce and

distribute copyrighted works expressly granted by section 108 does not

in any way suggest that Congress sought to protect potential royalty

revenues of journal publishers.  Section 108 makes very clear that

Congress' focus was on publishers' subscription revenues.  Section

108(g)(2) provides that libraries may engage in systematic reproduction

of single or even multiple copies of journal articles, provided that a

library does not receive copies of articles in such aggregate quantities

as to "substitute for a subscription to or purchase of such work."

Congress considered that, while a library (or a researcher) would not

purchase a volume or subscription simply to obtain a single journal

article or excerpt, or even several articles or extracts sporadically

over time from the same journal, if the need for articles from a

particular journal was substantial and frequent enough, then a

subscription or purchase would be considered, and at that point

continued recourse to photocopies might cause copyright proprietors

economic harm.  This is a very different concern from that inferred by

the Majority. 

	As its second point, the Majority states that "Congress

apparently prompted the development of CCC by suggesting that an

efficient mechanism be established to license photocopying." American

Geophysical, 37 F.3d at 899.  The doubt about this assertion expressed

by the Majority's use of the word "apparently" is warranted.  The

legislative history cited by the Majority contains no Congressional

directive to establish a royalty collection mechanism.  Two of the

legislative history references cited by the Majority were in reports

regarding early versions of the Copyright Act, which were not adopted by

Congress.  The reference in the House Judiciary Committee report cited

was deleted from the Committee's report regarding the provisions

ultimately enacted.[4] The suggestion made by the Senate Judiciary

Committee in its 1974 and 1975 reports, that "workable clearance and

licensing procedures be developed," was made in the context of

provisions that accorded libraries significantly more limited rights to

make inter-library loans of photocopies of journal articles than were

contained in section 108 as enacted.[5] Thus, the cited comments do not

reflect the balance ultimately struck in the Copyright Act and do not

support the Majority's inference that Congress contemplated and

instigated, as a complement to that balance, the establishment of a

mechanism for collecting copyright royalties on photocopies. 

	The history and provisions of the Copyright Act simply cannot be

read as the Majority's decision seeks to interpret them.  There is no

evidence whatsoever from which it reasonably can be concluded that

Congress considered that the expectation of photocopy licensing fees

should be a part of the fair use calculus, much less that an expectation

of royalties should play the pivotal role attributed to it by the

Majority.[6]

				CONCLUSION

	For the foregoing reasons and those cited by Texaco and other

amici, the Library and Academic Amici respectfully urge the Second

Circuit to rehear this appeal and reconsider, en banc, this court's 2-1

decision of October 28, 1994, affirming the district court's finding

that Dr.  Chickering's copying was not fair use. 

				Respectfully submitted,

				SQUIRE, SANDERS & DEMPSEY

				By:					

				Ritchie T. Thomas

				James V. Dick

				1201 Pennsylvania Ave., N.W.

				P.O. Box 407

				Washington, D.C.  20004

				(202) 626-6600

Dated:  December 14, 1994

ENDNOTES

[1] "The specific wording of section 107 as it now stands is the result

of a process of accretion, resulting from the long controversy over the

related problems of fair use and the reproduction (mostly by

photocopying) of copyrighted material for educational and scholarly

purposes.  .  .  Although the works and uses to which the doctrine of

fair use is applicable are as broad as the copyright law itself, most of

the discussion of section 107 has centered around questions of classroom

reproduction, particularly photocopying." H.R.  Rep.  No.  1476, 94th

Cong., 2d Sess.  66 (1976).  See S.  Rep.  473, 94th Cong., 1st Sess. 

61-63 (1975); H.R.  Rep.  1733, 94th Cong., 2d Sess.  (1976) (Conference

report). 

[2] While both the House and Senate reports state that Congress did not

intend by section 107's express reference to "reproduction in copies" to

give that use a special or preferred status as compared with other kinds

of uses, Congress also intended that a use involving reproductions in

copies was not to be given an inferior status.  As stated in the House

Judiciary report quoted above, in applying the fair use doctrine, a use

by reproduction in copies (such as photocopying) was to be treated the

same as older forms of use. 

[3] The majority's error in assessing the fair use status of

photocopying under the Copyright Act has significant implications for

other elements of the Majority's analysis.  In view of the statute's

express recognition of fair use photocopying, it is inappropriate when

photocopying is involved to emphasize the "transformative" or

"non-transformative" character of the use in analysis of the first fair

use factor.  This is particularly true if the photocopying is associated

with a research or scholarly use, where accurate reproduction of the

original is essential.  The Majority's emphasis on what it claimed was

the non- transformative nature of the use in this case effectively

nullified the statute's declaration that photocopying is to be treated

like older forms of uses in fair use analysis.  The concept of a

"transformative use" may be central to analysis under the first factor

in many situations, but the Supreme Court in Campbell v.  Acuff-Rose

Music, Inc., 114 S.  Ct.  1164 (1994) recognized that "the obvious

exception to this focus on transformative use is the straight

reproduction of multiple copies for classroom distribution." 114 S.  Ct. 

117 n.  11.  The straight reproduction of single copies for research use

is another obvious exception, for similar reasons.  The Majority,

however, failed to consider in its decision this important element of

the Supreme Court's decision in Campbell. 

[4] The Committee stated in its 1976 report that its discussion in the

earlier report of the consideration lying behind the fair criteria

listed in the amended section 107 remained valuable as an analysis of

aspects of the problem.  H.R.  Rep.  1476 at 67.  However, that comment

does not apply to matters in the earlier report that are not a part of

the Committee's analysis of the four factors. 

[5] The suggestion also clearly relates to circumstances where multiple

copies are being made, which the Committee expressly distinguishes from

"isolated single spontaneous" copies, such as those made by Dr. 

Chickering.  See S.  Rep.  473 at 20. 

[6] The Majority falls into a similar error with respect to the Supreme

Court's holding in Sony Corporation of America v.  Universal City

Studios, Inc., 464 U.S.  417, 456 (1984), that the plaintiffs in that

case had not shown that home-use video taping of copyrighted television

programs and movies "would cause any likelihood of non-minimal harm to

the potential market for, or value of, [the movie and TV program

producers'] copyrighted works." The Majority asserted that this finding

implied a conclusion by the Court that the potential market in

videotaping licensing royalties that Justice Blackmun's dissent claimed

to exist was insubstantial.  The Supreme Court could more reasonably and

more likely have concluded that the alleged royalties were not relevant,

because it would be inappropriate to engage in the circular reasoning by

which conduct loses its fair use status if it is assumed that royalties

can be extracted from that conduct in the event it is declared not to be

fair use.  In fact, it appears that copyright owners did not consider

the potential royalty market involved in Sony to be insubstantial,

because they fought an ultimately unsuccessful battle to persuade

Congress to levy a copyright royalty on sales of blank VCR tapes.