Electronic Journals and the negociation of licenses

Ann Okerson
Université de Yale
Ann.Okerson@yale.edu




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This evening my topic is connected to the ownership of intellectual property. We will talk a little about copyright and we will talk a lot about licensing of electronic information.

Copyright law exists in every nation in the world and in every nation in the world it is a little bit different. For example, the Anglo-Saxon tradition of copyright law is somewhat different to the copyright law of France. But in many ways, the laws of the different nations are similar. They have been harmonized in 1989 by the Berne convention, so the protection that an author receives at home will be similar to the protection that an author receives if his work is distributed in another country.

Provisions of Copyright

Copyright defines a certain type of intellectual property. Copyright law says that the creator of a work, for example, the author, or the artist, owns that work from the moment that he creates it; copyright law also says that the ownership of the work can be transferred by the author to another entity, for example a publisher, which is what creators frequently do to produce works and bring them to the marketplace. Copyright laws also tell us what kinds of copies can be made and distributed, under what circumstances, i.e., when the property owner can and cannot assert his ownership right.

The United States law is very strong in giving many rights to the public, to students, scholars, and citizens, to use and copy information. It is much stronger in this regard than the copyright law of most European nations. For example, one of the provisions of the US copyright law is that work done in and by the federal government cannot be subject to copyright. So any work that is done in a US government laboratory, department or bureau cannot be copyrighted: it belongs to the people. Also, the laws of the country cannot be copyrighted; they are to be available for free to all citizens.

This is very different to the laws of certain European countries. For example, I read my e-mail this week in France. One of my correspondents sent me a news article that reported the story of a Dutch student who took portions of the Dutch law, digitized it and made it available on his Web site. In the Netherlands, there are two official publishers for Dutch law. One of these publishers claimed that the student violated their copyright in making the law electronically available on the Web, and so this publisher took the student to court. The judge who heard the case in the end declared that the student was not guilty of copyright infringement. But he said that if the European database directive had been in force at this time, the student would not have been cleared of the charges.

This leads us briefly to discuss the Database Directive. The work of WIPO (World International Property Organization) and the European Union has created a Directive which says that electronic databases will be protected as intellectual property for a period of 15 years. 15 years is not a very long time, compared to copyright protection, which under the European laws exists for 70 years plus the lifetime of the author. However, any changes to an electronic database such as the addition of words, or articles, continuously creates a new work which then is eligible to become protected, in effect, possibly in perpetuity. For example, if a publisher digitizes the works of Victor Hugo, which are in the public domain, making an electronic edition, that publisher might then claim ownership of the right to that work, which was available in the public domain in print format, for at least another 15 years.

The United States Congress is assessing this Directive and attempting to pass harmonizing legislation in the United States. It is my strong belief and also the belief of the library community, that we are here witnessing trends to overprotect created works, and that these are not beneficial trends for our students and scholars, for researchers -- and for our nation's citizens. Our information is already significantly protected and it seems those protections may only increase in the electronic environment.

Unfortunately, I believe that our universities' scholars and researchers, at least in the United States, are passive conspirators in these kinds of trends. They regularly give over ownership of their work to publishers and if the new owner, the publisher is an organization that places the values of academia highly, then such transfer works well. However, if the publisher's primary goal is to make a profit, we have seen that the result can be very expensive journals for libraries and their students and scholars.

We should not make any mistake about this. These current debates about pricing and ownership, these clashes are very much about control, costs and societal values. The debate over values permeates the dissent, at least in the United States. between those who seek heavily to protect information and those who would like information to be widely and cheaply available.

Moving to a Licensing Regime

As if copyright and the Database Directive were not enough to challenge us, we have now entered a very different regime governing the way in which electronic information is distributed: the regime of the contract or the license, which has now become the prevailing mode of publishers for authorizing the delivery of electronic information.

The license, or the contract. is a different thing from copyright. The contract that determines our uses of electronic information is much more related to the contracts one signs to rent an apartment or take out a car loan, for example, than to a copyright regime. Is a contract or a license good or bad? It is neither good nor bad. Our information contract is as good as our negotiation of the contract that is presented to us.

Let us briefly discuss why it is that electronic databases, journals, and other electronic information from publishers and producers are accompanied by contracts, rather than governed by copyright law. Obviously, print information is governed by copyright law. Why not electronic information?

I believe there are two reasons for this:

  1. There is no consensus yet at the US national level about how copyright applies to electronic information. Our current copyright law was enacted in 1976, just when the photocopier was becoming a powerful copying tool -- but its effects were far from widespread. Many people now argue that the very fast Internet information environment was not even imagined in 1976 and that the 1976 Act simply does not relate to this kind of rapid distribution environment at all.

  2. Today, there are hundreds and thousands of electronic databases and electronic journals, from the same publishers who brought us this information in print. Because these publishers believe that copyright law cannot control the re-distribution of information in electronic formats, and because librarians want to utilize electronic information in their institutions, the producer community has moved to using contracts instead of copyright law, so that the market will advance.

Nonetheless, there is a relationship between the contract and copyright law. The contract can do one of two things:

  1. It can take the rights that we have under copyright law and narrow or restrict them, or it can remove some of those rights. That has been a big worry for librarians in the United States. For example, In the US, we have a provision in the Copyright Act for a practice called ILL (Interlibrary Loan), lending between libraries. It is not uncommon for contracts or licenses for electronic journals to prohibit interlibrary loan completely.

  2. It is also possible for a license or contract to improve the rights that we have under copyright. At my institution, we are aggressive in our negotiating of electronic information contracts with publishers. Thus, nearly all of our commercial electronic journal licenses permit the user (student, faculty, etc.) rights to download, store, print, and use in the classroom the articles in any way they need to for the purpose of their educational work. That is much more than we can do in the United States under the copyright law.

It is useful at this point to stop for a brief definition of a contract or a license. (I use the two words interchangeably.) Licensing means giving rights to use property without transferring ownership. Under the terms of a license, the library, or the university, owns nothing at all, but it does have certain rights to use information in certain ways.

In fact, in the networked environment, there is rarely a tangible artifact that one can own, particularly if the information is mounted on a remote site, for example a publisher's site. There is no object to own.

A license is additionally an agreement negotiated between two parties: a willing owner (a willing publisher) and a willing customer, just as with one's apartment contract. The license is thus very much a marketplace arrangement.

A license is, furthermore, an agreement that describes absolutely every part of one's deal with an information producer: who can use the information, when they can use it, how they can use it, how much they can do with it. The license describes the technology conditions that exist. Is the information presented on a CD-ROM? What kind of CD-ROM? Does it run on one workstation, on a network, in one building, in many buildings? Does the information come from a remote site? How is the connection made to this remote site? How is it enabled? The license describes the price, the term of the contract. and the kinds of promises that both parties make to each other about the deal. This is very different to the way in which we purchase books, encyclopaedias, or journals!

A license is, most of all, a legal agreement. It binds the two parties that sign it. It is signed by responsible senior parties who have the authority to sign for the publisher and customer. It means exactly what it says: if one has agreed to it, that is what must be done. Many of my colleagues in the United States say "well, it doesn't matter if we negotiate something in this contract that is not permitted, because copyright law allows it. The copyright law will override the terms of the contract." Maybe, but I would not bet on that myself.

Thus, librarians these days have not only to understand how copyright works in relation to printed and traditional material, but they are starting also to need to understand how contract law works. Librarians need to read these contractual documents and to engage in discussions with the publisher to make sure the contract works for our institutions. This is a whole new area of expertise that librarians need to develop. At home, it is now very common to have courses and workshops in license negotiations for librarians.

Challenges in the Licensing Environment

(1) Scaling up. At Yale, I negotiate and sign about 3-4 contracts per week. This is not so many, but they take time. The contracts may be one page long or 25 pages long. They are all different and one has to pay close attention to each. I am not sure what we will do when the electronic business is 25% or 50 % or 75% of our acquisitions business. At the moment it is only 8 % for us.

(2) What may users do with the information? Those who negotiate must pay close attention to this matter and secure adequate provisions for the routine uses their readers will make in the course of their learning and research.

(3) What is the definition of a "site?" Is a site one machine? One building? Is it a site license for the whole institution? If the institution has branches or offices in other places or cities or has relationships with other laboratories or hospitals, do these need to be covered by the license? Site definitions can be very difficult and time-consuming to work out with the publisher. Generally the larger the location or the site, the more money the license costs.

(4) The cost of electronic information is consistently higher than the cost of print versions. This does not necessarily make sense but it is absolutely true. Publishers are trying to be sure that their revenue for electronic information is no less, but more or at least the same than for print.

(5) Packaging. A publisher usually does not convert or digitize one thing, not one book, one journal -- he converts groups or collections. Most publishers are offering packages or collections of multiple journals, which may not be what the customer wants and which make it difficult to compare prices.

(6) Liability and trust. Many contracts state that if the terms of the contract are violated, the licensing institution becomes responsible or liable for that misuse. What this usually means is that if one of your students or scholars does something with electronic information that is contrary to the terms of the contract, the publisher could cut off the connection or take your institution to court -- though this is very rare. It is very difficult for me, for example, to be responsible for something that someone in our community of 15,000 people might do. It is very important to write the contract so that the library and the publisher together try to identify the misuses of the information and stop the activity, not that the whole institution be cut off from the information.

Enter the Consortium

I'm going to change direction now and describe to you a new way of negotiating with publishers that has in the last two years become quite common in North America, i.e., negotiating by not by single libraries but by consortia or groups of libraries. At the moment in the US, there are probably 50 or so consortia that negotiate for electronic information with publishers. They are often but not always state consortia.

Consortial negotiations can be quite efficient. They are efficient because instead of every academic library in the state of, for example Ohio, conducting separate discussions with publishers, the 45 academic libraries in Ohio colleges and universities have one officer who negotiates for all academic libraries in the state. Consortial negotiations can put libraries in a much stronger position with the producer, because instead of one library buying one item from a publisher -- and many libraries doing that many times over -- they can bargain as one. There are two good effects: libraries can reduce prices to some extent, maybe by 10 or 20% , and libraries can secure more advantageous terms of use.

I do not mean to make this sound easy. It is difficult. It takes time to bring libraries together because everyone has to compromise, everyone has to give up something. It does take a longer time to negotiate the deal for a consortium of libraries than for a single library. But in the end I believe it is very much worth it.

One final point in this discussion of who owns property and how: the "shrinkwrap license". The shrinkwrap license is inside the package (usually software) and by the time you have purchased the item and brought it home or to the library, and you read the contract, you have already opened the package. The question in the United States court system is: is such a license valid? If I bring something home after I buy it, open it, and only then do I know what it says, is that license binding on me? And as you would expect, in the US, the different courts disagree about the answer to this question.

I mention this in order to say that we must also pay close attention to the contracts in software or CD boxes -- and because there is also now a newly evolving practice for Web licenses. That is, you might visit a site and see a box that says, "click here to show that you will accept the terms that govern the use of this information." As with the software box, you may not know what you are agreeing to, and this is not a very good thing. If you should see something like the "web shrinkwrap," you probably don't want to agree to it without finding out from the producer what the language says before proceeding.

The ownership of information and our ability as scholars, researchers, and librarians to use it is one of the most important issues that faces institutions of higher learning at the end of the 20th century. There are many arenas in which we can participate in discussions about these matters and help to shape and influence the outcomes. Our engagement with issues of intellectual property is very important. The challenge to everybody tonight is to think very hard about what you do in relation to the property that you make available to your readers.


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Dernière mise à jour : 15 janvier 1999
Contact : Ann Okerson