Can't we all just get along? For all the common interests between the library and publishing communities—interests vividly on display at the ALA annual conference—relations have been strained in recent years by significant legal and legislative developments. Digitization, open access, licensing, and a thorny e-book transition have yielded contentious court battles, market actions, and controversial legislation that cuts to the heart of the library enterprise. And that tension was on full display earlier this month, after a federal judge in Atlanta handed publishers a defeat in a lawsuit over the practice of e-reserves.

In that case, publishers argued that Georgia State University administrators—including the university librarian—systematically encouraged copyright infringement. The inevitability of "favors fair use" determinations from a flawed checklist, they asserted, along with the failure to "pay, budget for, or establish any procedures for obtaining permissions," was evidence of a plan to use unlicensed e-reserves as an illegal, low-cost "market replacement" for traditional course-packs. Publishers have long chafed over the practice of e-reserves, and the threat of litigation had loomed over a number of universities over the past decade, until 2008, when three publishers, backed by the AAP and the Copyright Clearance Center, filed suit against GSU administrators. In the final analysis, however, the court found only five cases of infringement out of 99.

Observers say the verdict represents a win for the library community—but with other cases pending before the courts on a range of issues vital to libraries, the future remains uncertain.

The library community is fortunate to have a strong, savvy legal and legislative team, including the American Library Association's Washington office, the Association of Research Libraries, and the Association of College and Research Librarians. And they have Jonathan Band.

An experienced intellectual property attorney, Band is a valued consultant to libraries, and the author of many of the library community's court briefs. Band has been a busy man. In recent years, new technology has led to unprecedented court battles, from the Georgia State case to Google and the HathiTrust.

PW caught up with Band to talk about the lawsuits and litigation now facing libraries.

I have to ask, are you as surprised as I am that the Georgia State e-reserves case wasn't settled?

Yes, I am. Once Georgia State changed its e-reserve policy to follow a policy identical to those agreed to by the AAP and other institutions, it seemed like there was nothing more to fight about. For publishers, no good could really come from litigation, because one of two things was going to happen: one, Georgia State would prevail, the court would largely validate its practices, and publishers would lose the ability to take advantage of the FUD—"fear, uncertainty, and doubt"—around the practice. And two, if publishers had won, that would have forced the academic community to really get behind Open Access.

That's the thing here—scholarly communication is a dysfunctional market. Basically, the public pays for the creation of scholarly content, which is then given to publishers, who then sell it back to the creators at a markup. And it's all because of the tenure process. To get tenure, you need to be published by a prestigious journal or press. Before the Internet, license and subscription fees were necessary to offset the high cost of production and distribution. But this system doesn't make sense now that the Internet has dramatically reduced the cost of distribution. A lot of university presidents say they support Open Access already, but if we came to the point where we couldn't have e-reserves, or e-reserves came at a great cost, college presidents would get really serious about it. So it is very hard to understand why publishers didn't settle. They could have declared victory years ago, after Georgia State changed its policy.

You've said that the GSU verdict is a good one for libraries. Can you briefly point out why it is, but also, what does it say that this case was actually tried?

The verdict is good for libraries because the court largely upheld the lawfulness of GSU's e-reserve policy. Out of the thousands of excerpts used by GSU, the publishers cherry-picked 99 for trial, and of those, the court found GSU exceeded fair use only with respect to five. That's an extremely low error rate.

But it's never a good idea to sue your customers. And it's an even worse idea to sue customers that are also the creators of the content. The publishers here don't seem to realize that in the digital age, they are the least important part of the scholarly communication ecosystem.

There's always been some degree of natural tension between libraries and publishing, as well as a great common purpose. But over the last decade, the legal issues seem to have gone from border skirmishes to big battles that strike at the heart of whether libraries can exist—first sale, fair use. Is that a fair assessment?

That might be a slight overstatement, but only a slight one. I definitely agree with your premise. There has been tension for a long time, but in the past, the big dispute was about photocopying. Now that the technology goes way beyond photocopying, that tension has escalated.

But the tension isn't just over digital. Rulings in cases like Wiley v. Kirtsaeng, which is now before the Supreme Court, and Costco v. Omega would eliminate the first-sale doctrine with respect to print copies manufactured abroad. That would mean that libraries conceivably could not lend books that were printed abroad—not only books from foreign publishers, but American-published books that are merely printed overseas. That would be a blow right to the heart of the library enterprise. We raised this concern in Costco v. Omega, and what's interesting is that I don't recall any publisher ever coming to us and saying, "don't worry, we're never going to challenge your ability to lend foreign-printed books." It's a little troubling that no one's ever said that.

So, to be clear, this would mean that all a publisher would need to do to exercise a greater level of control over its print books—whether they could be lent by a library or resold by bookstores—is to have them printed overseas?

Yes, that's right. Now, libraries would rely on other theories, like fair use. But we're already relying pretty heavily on fair use, which leads us to another case, the Authors Guild v. HathiTrust. In that case, the Authors Guild—not publishers—is asserting that libraries are only allowed to do what's permitted under the library exemption in Section 108 of the Copyright Act. Basically Section 107, fair use, doesn't apply to libraries, they argue, which is a very, very limited notion.

You recently filed an amicus brief on behalf of libraries taking down that argument, but is there any basis in law backing up the Authors Guild claim?

There isn't case law, but if you look in the legislative history of the 1976 Copyright Act, this is an argument publishers made back then—that libraries should only get section 108, and not Section 107. Libraries were worried about exactly this situation, so Congress ended up including Section 108(f)(4), a savings clause, which says that nothing in section 108 limits fair use. So, the Authors Guild's position is a position that was rejected by Congress explicitly. And yet, here we are all these years later, resurrecting that argument. I must say, it is one thing to raise this back in 1976, during discussions before the act was passed. But to raise it now is very problematic. Hopefully, the court will reject it out of hand.

In your brief, you argued that if the court was to rule for the Authors Guild on this point, it could potentially devastate libraries, right?

Yes, if the court accepted the Authors Guild's Section 108 argument, as a practical matter, libraries would have to shut their doors. If libraries can't rely on fair use or the first-sale doctrine, libraries couldn't lend materials in their collections. That's sort of an unimaginable result, but that would be the effect of what the Authors Guild is arguing. Section 108 is a very narrow exception. It's helpful, but libraries also rely on fair use for a wide range of activities, as well as the first-sale doctrine, and other exceptions.

In court on May 17, attorneys for the Authors Guild seemed to argue they were not objecting to any other library activities, just the HathiTrust's application of Section 107 to undertake a mass digitization project that exceeds the bounds set by Section 108. Is that viable?

The Authors Guild now appears to be arguing that Section 108 preempts fair use with respect to the sort of activities covered by Section 108. But assuming that Section 108 had this pre-emptive effect, which it doesn't, Section 108 says nothing about mass digitization. It was enacted in 1976, long before the invention of mass digitization technology.

I find the proposed relief requested by the Guild very interesting, too. Basically, they've asked the court to seize and hold the HathiTrust scans in escrow until Congress decides what to do with them. In other words, they want a court-ordered digital prison to replace this nonprofit digital library?

I do think that's a very odd form of relief, and it's hard to imagine the court ordering it. But the alternative is even harder to imagine. In a typical copyright case, copies are destroyed after one is found to be an infringer. But it is inconceivable to me that a federal district court judge would order the destruction of a nonprofit digital library. Even in Authors Guild v. Google, a parallel case, it is inconceivable that the court would ever order the destruction of Google's database. Just think about the appearance of it—a federal judge ordering the destruction of 20 million digital books? But you have to come up with some kind of relief, right? Maybe the Authors Guild proposal is trying to be more pragmatic than destructive. It's also significant, I'd add, that the authors and publishers, back when they first sued Google, did not seek a preliminary injunction to stop the program, so Google just went ahead and kept scanning.

I'm glad you brought up Google. Now that the Google settlement has failed, the Authors Guild was also in court recently for this case, to argue it should go forward as a class action and that the Guild should be granted associational standing. Any thoughts on what might happen there?

Relief is one reason why it may not wind up a class action—I could see Judge Chin saying that the problems with relief are so enormous that he's just not going to get into it. That would seem to be a good reason to just say "no class action, no associational standing for the Authors Guild," and to just let the case proceed with the named authors.

What's at stake here—for example, how would a verdict against Google from three named plaintiffs differ in force from a class action verdict?

If the court ruled that Google's scanning wasn't fair use with respect to the named plaintiffs, then other individual authors could come forward and there would be what's known as collateral estoppel. In other words, if other authors came forward in other U.S. courts, Google would be stopped from employing the arguments it made in this case. However, the burden would be on individual authors to come forward and say "take my book out of the database, and pay me whatever the court ordered for the named plaintiffs." And those authors would still have to prove that they are in fact the rightful copyright owners, which, as we saw in the Georgia State case, is a huge problem. With a third of the excerpts at issue, the publishers failed to establish that they owned the relevant copyrights.

Judge Chin suggested at the last hearing that such ownership issues could possibly be handled at the relief stage, did he not?

You see this in class actions where there is a decision, the parties come up with a pot of money, and then they have mini-trials for the purpose of relief, to determine how to distribute the pot. That could be what he was referring to. But still, the burden would be on authors to come forward during that stage and prove ownership.

Back when the Google settlement was being pushed by the parties, the library community took a relatively ambivalent position. In your brief to the court, you pointed out a lot of potential problems with the settlement, yet you didn't oppose it. Can you explain that position?

Just as authors aren't monolithic and publishers aren't monolithic, libraries aren't monolithic. I think that's an important point. A lot of librarians are very idealistic and have a strong sense of mission. But they want to actually accomplish their mission.

So, with the settlement, no, you don't want a corporation with this level of control, and in a perfect world, you would have a legislative solution with lots of participation, multiple providers, and all stakeholders represented. On the other hand, this was a sort of once-in-a-lifetime opportunity to solve a one-time problem—what to do with all these books still in copyright, but long out-of-print. Forget about the consumer purchase aspect of the settlement, because I don't think there would ever have been many people buying these old, out-of-print books. But the ability of faculty and students to search and access this enormous corpus represented an amazing, historic opportunity. The settlement was certainly not ideal, but just look where we are now.

At a NYPL event during the settlement debate, I remember you asked a practical question: what made anyone potentially aggrieved by the settlement believe that Congress would ever offer them a better solution? Do you think Congress could do better?

No, absolutely not. And not only will they not be able to do better, they will not be able to do this at all. Just look at what happened with the failure of orphan works legislation. Maybe if Microsoft and every other competitor or big rights holder group had an epiphany, maybe, just maybe you would have a bill. But that's almost inconceivable. It's too complicated, and too many people perceive they would be harmed. Even then, it's easy to block legislation. All it takes is one senator to put a hold on a bill, and holds can be applied anonymously. So, no, I just don't see this happening in Congress.

All of the contentious legal and legislative issues bring me to the e-book issue now facing libraries. If publishers can refuse to sell e-books to libraries, and libraries can't make digital copies, and if we accept digital is the future and that this is how students will learn and how consumers will choose to read, where does this leave the library?

This is a huge issue. If books in the future are all distributed subject to licenses, do these licenses override copyright law? Does the private law of contract supersede the public law of copyright? There are many, many implications that could be very problematic for libraries. How do we make sure that libraries maintain the very basic notion of cultural preservation? And access? The digitization and the e-book issues are problematic for libraries, because digital does give so much more control to copyright owners.

But on the flipside, e-books also give much more power to authors and creators vis-à-vis publishers. Once you have a digital marketplace, an author can reach a global audience more easily than ever before. And over time, there will be many authors experimenting with different models. For academics and academic presses, I believe they will see great value in the library continuing to play the role of institutional repository. For trade book authors, they too want their works to be preserved, and most authors are thrilled that people want to read their booksat all, and they will want to work with libraries to increase their exposure. So, even though the market is changing in unpredictable ways and we are in this transitional period, there will always be a very important role for libraries to play.

As these battles heat up in court, and in the legislature, what can librarians do to make sure their voices are heard?

One thing librarians can do is believe in fair use, exercise fair use, and get educated about fair use because fair use is a critical piece of the puzzle.

Next, librarians should be very careful with their licensing practices. Many already are, but we all need to be more attentive and assertive. If you don't like the license terms, just say no. And push back against whoever is offering the license, negotiate. It takes time, and it takes patience, but it is important.

And third, remain engaged in the political process. Be aware of what's going on in Washington, and stay in touch. Just like we saw with SOPA, when there's enormous public engagement, Congress and the White House react. Librarians should sign the "We the People" petition supporting open access to taxpayer-funded research, for example, and ALA has an annual Legislative Day in Washington, D.C. A lot of librarians show up for that, but even more should participate. I know budgets are tight, but I believe this should be a priority. If members of Congress heard from the public on these issues it would make a difference. Imagine if tens of thousands of librarians participated in Legislative Day?