Wisconsin Legislature: Copyright; Libraries; Public Records;

75 Op. Att'y Gen. 133, 137 (1986)

Thus, a non-OCLC member that identifies its local holdings in this way can have the information merged into the WISCAT data base by Brodart. Then, the local library obtains a separate computer tape of all titles it holds from Brodart, usually ordered through DLS. The tape can be used for circulation purposes. The tape would also show other Wisconsin libraries holding the same title so it could also be used for interlibrary loans.

75 Op. Att'y Gen. 133, 137 (1986)

OCLC has undertaken to renegotiate contracts with its members to include provisions controlling the transfer of the OCLC data base to nonmembers. The proposal embraces the following principles among others, as stated by OCLC:

75 Op. Att'y Gen. 133, 137 (1986)

A. Protection and enrichment of the OCLC database for the benefit of the OCLC membership, and the library world in general, is both necessary and desirable. Third Parties who receive copies of Records should normally reciprocate by making their records and holdings available to the OCLC database.

75 Op. Att'y Gen. 133, 137 (1986)

B. Protection of the OCLC database is best achieved by means of specific language in contracts with users and with OCLC-affiliated networks.

75 Op. Att'y Gen. 133, 137 (1986)

C. Contracts with Third Parties will normally provide for appropriate compensation to OCLC, financial or other, for the use of Records.

75 Op. Att'y Gen. 133, 137 (1986)

D. In the absence of contract provisions governing transfers to and use by Third Parties, OCLC may seek to protect the OCLC database by means of its copyrights. OCLC will not invoke copyright against general members or networks with which contracts have been executed which include protective language dealing with the transfer of Records to Third Parties.

75 Op. Att'y Gen. 133, 137 (1986)

Principle D appears to give an OCLC member a choice -- either agree to new contractual provisions controlling transfer to third parties or be exposed to copyright infringement actions. In essence, you ask whether the public records law precludes DPI from agreeing to a contractual provision that could serve to limit access to the computerized records.

75 Op. Att'y Gen. 133, 137-138 (1986)

As a general matter, computer tapes in the possession of a state agency are "records" as defined in section 19.32(2), Stats. Section 19.36(4) expressly provides that material used as input for a computer program and material produced as a product are subject to inspection and copying, but that a computer program is not. However, section 19.32(2) further specifically provides that the term "record" does not include "materials to which access is limited by copyright, patent or bequest...."

75 Op. Att'y Gen. 133, 138 (1986)

Because of the factual and legal complexity of this matter and the national scope of the controversy, I expect a final resolution of OCLC's copyright claim will come from the federal appellate courts. However, I can give you some legal principles to consider and my evaluation of the strength of the copyright claim given the facts as I understand them.

75 Op. Att'y Gen. 133, 138 (1986)

While the Copyright Act of 1976, like the prior statute, was enacted to further the public interest and not the interests of those seeking to profit from their intellectual properties, it is premised on a recognition that creativity is fostered by affording protection against copying by others. "[T]he real purpose of the copyright scheme is to encourage works of the intellect, and... this purpose is to be achieved by reliance on the economic incentives granted to authors and inventors by the copyright scheme."

Universal City Studios v. Sony Corp. of America

, 659 F.2d 963, 965 (9th Cir. 1981). That protection extends beyond the copying of the literary work itself to appropriation by derivative works, such as the motion picture version of a copyrighted novel. 17 U.S.C. 101 and 106. Copyright protection does not extend, however, "to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. 102.

75 Op. Att'y Gen. 133, 138 (1986)

National Business Lists v. Dun & Bradstreet, Inc.

, 552 F. Supp. 89, 91- 92 (N.D. Ill. E.D. 1982) (hereinafter cited as "

D&B

").

75 Op. Att'y Gen. 133, 138-139 (1986)

Facts alone are not copyrightable.

Rand McNally & Co. v. Fleet Management Systems

, 591 F. Supp. 726, 731 (N.D. Ill. E.D. 1983) (hereinafter "

Rand McNally

"). Neither are ideas or their use.

Signo Trading Intern. Ltd. v. Gordon

, 535 F. Supp. 362, 365 (N.D. Cal. 1981) (hereinafter "

Signo

"). However, the compilation of facts may be protected by copyright even though the facts themselves are in the public domain.

Schroeder v. William Morrow & Co.

, 566 F.2d 3, 5 (7th Cir. 1977).

75 Op. Att'y Gen. 133, 139 (1986)

The courts express some dismay that copyright protection is accorded to compilations.

D&B

, 552 F. Supp. at 91-92;

Rand McNally

, 591 F. Supp. at 731. Compilations do not usually involve the sort of original, creative or intellectual works that fall more readily within the concept of copyright protection. As stated by the court in

D&B

, 552 F. Supp. at 92:

75 Op. Att'y Gen. 133, 139 (1986)

That protection does not fit nicely into the conceptual framework of copyright law and has for that reason been criticized.

See

Nimmer on Copyright

3.04 (1981). It has been suggested that the act of aggregating isolated pieces of information can be authorship, with the resulting collection of data being a work of authorship.... The courts have generally rested, however, not on an analysis of copyright concepts but on the economic incentives premise of the copyright law and the injustice of permitting one to appropriate the fruit of another's labor.... That concept of authorship is, moreover, supportable by the language of the Copyright Act of 1976, which defines compilations as "a work formed by the

collection

and assembling... of data that are

selected

, coordinated,

arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. 101 (emphasis supplied). And the protection of copyright extends to protection against derivative works, which include any form "in which a work may be recast, transformed, or adapted." 17 U.S.C. 101 and 106. Finally, 17 U.S.C. 103(b) distinguishes between material contributed by the author of a compilation and preexisting material, granting protection to the former but not to the latter.

75 Op. Att'y Gen. 133, 139 (1986)

Though protected, "compilations" are considered to be at the "outer boundaries of copyright law."

D&B

, 552 F. Supp. at 91, 94.

75 Op. Att'y Gen. 133, 139 (1986)

Thus, the protection accorded compilations is based on the premise that the fruits of the compiler's labors should be protected from appropriation.

D&B

, 552 F. Supp. at 92, 94. In the most recent case out of the Seventh Circuit Court of Appeals, the court rejects the importance of originality and focuses on the need for "industrious collection" and "substantial independent effort" on the part of the compiler.

Schroeder

, 566 F.2d at 5, 6.

75 Op. Att'y Gen. 133, 140 (1986)

Although OCLC's role can be seen as a collection activity, it may fall short of the kind of industrious and independent effort needed to establish protection. This is due to the fact that it is the OCLC-members, and not OCLC, who actually create the collection through their entries into the data base. It is the members who create, update and manipulate the data base.

75 Op. Att'y Gen. 133, 140 (1986)

Rand McNally

, 591 F. Supp. at 731;

D&B

, 552 F. Supp. at 92. It does not include input from other sources.

Rand McNally

, 591 F. Supp. at 733. It may be that OCLC does not contribute any substantive material to the data base. It provides only a means of collection, storage and retrieval. Copyright protection is not affected by the fact that a computer is used. 17 U.S.C. 117 (1977). In my view, this mere "mechanism" for compilation is not protected by the copyright laws.

75 Op. Att'y Gen. 133, 140 (1986)

FAIR USE

75 Op. Att'y Gen. 133, 140 (1986)

If it is determined that OCLC has a compilation that is copyrightable to some extent, use of the compilation in the manner now in controversy may nevertheless be defensible against a claim of copyright infringement based on the defense of "fair use."

75 Op. Att'y Gen. 133, 140 (1986)

The doctrine of "fair use" is codified in 17 U.S.C. 107 (1977), which reads:

75 Op. Att'y Gen. 133, 140 (1986)

Limitations on exclusive rights: Fair use

75 Op. Att'y Gen. 133, 140 (1986)

Notwithstanding the provisions of section 106, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include--

75 Op. Att'y Gen. 133, 140 (1986)

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

75 Op. Att'y Gen. 133, 140 (1986)

(2) the nature of the copyrighted work;

75 Op. Att'y Gen. 133, 140 (1986)

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

75 Op. Att'y Gen. 133, 141 (1986)

(4) the effect of the use upon the potential market for or value of the copyrighted work.

75 Op. Att'y Gen. 133, 141 (1986)

The factors enumerated are not meant to be exclusive.

Harper & Row Publishers v. Nation Enterprises

, 105 S. Ct. 2218, 2231 (1985).

75 Op. Att'y Gen. 133, 141 (1986)

The general intention behind the provision is as follows:

75 Op. Att'y Gen. 133, 141 (1986)

General Intention Behind the Provision. The statement of the fair use doctrine in section 107 [this section] offers some guidance to users in determining when the principles of the doctrine apply. However, the endless variety of situations and combinations of circumstances that can rise in particular cases precludes the formulation of exact rules in the statute. The bill endorses the purpose and general scope of the judicial doctrine of fair use, but there is no disposition to freeze the doctrine in the statute, especially during a period of rapid 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. Section 107 [this section] is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.

75 Op. Att'y Gen. 133, 141 (1986)

1976 U.S. Code Cong. & Ad. News 5680.

75 Op. Att'y Gen. 133, 141 (1986)

1. Purpose and character of the use.

75 Op. Att'y Gen. 133, 141 (1986)

The controversial use here involves the extraction of bibliographic entries from the OCLC data base and through various stages and processes the production of an individualized computer tape that can be used by a local library in Wisconsin for its particular holdings and needs. The service provided by DPI is entirely nonprofit. Indeed, the service is subsidized to some extent by state funds. There is no commercial motive. The motivating purpose is to improve the state's library system. All these factors are strong indicators of "fair use."

75 Op. Att'y Gen. 133, 141 (1986)

2. The nature of the copyrighted work.

75 Op. Att'y Gen. 133, 141 (1986)

Assuming OCLC qualifies as a copyrightable compilation, it has already been noted that compilations exist at the fringe of the copyright laws.

D&B

, 552 F. Supp. at 91. Also important is the fact that the critical input into the data base comes from and is really accomplished completely by the members, and OCLC provides only the mechanism. These factors indicate a lower form of copyright interest.

75 Op. Att'y Gen. 133, 142 (1986)

3. The relative amount of the portion used.

75 Op. Att'y Gen. 133, 142 (1986)

It is my understanding that the OCLC data base holds approximately 12 million titles and you extract about 2.6 million of those for the WISCAT data base for use in Wisconsin. When computer tapes are provided through DLS and Brodart for a local library, the number of titles ranges from 25,000 to 40,000 titles.

75 Op. Att'y Gen. 133, 142 (1986)

Williams & Wilkins Company v. United States

, 487 F.2d 1345,

aff.

, 420 U.S. 376 (1973), it was held that the absolute volume of copying is not decisive.

Williams

, 487 F.2d at 1355. There the National Institute of Health and the National Library of Medicine were copying

930,000

pages a year mainly from medical journals, but that volume did not preclude a decision that their use was a fair use.

75 Op. Att'y Gen. 133, 142 (1986)

In the instant situation a local library in Wisconsin is typically obtaining less than one-half percent of the total OCLC data base.

75 Op. Att'y Gen. 133, 142 (1986)

4. Effect on market for or value of the copyrighted work.

75 Op. Att'y Gen. 133, 142 (1986)

The burden would be on OCLC to show some substantial injury flowing from DLS's use of the data base, and OCLC could not simply rely on the assumption that your service is depriving it of clients.

Williams

, 487 F.2d at 1358-59.

75 Op. Att'y Gen. 133, 142 (1986)

The court in

Williams

was not convinced that the suppression of copying would result in more sales by the publisher. There are other means, or one could simply go without.

Williams

, 487 F.2d at 1359.

75 Op. Att'y Gen. 133, 142 (1986)

The same may be true here. If the local libraries cannot obtain computer tapes of their holdings from DLS, it may be very unlikely that they would be able to go to OCLC for the service. The result would be a return to the less efficient card catalog systems and interlibrary loan systems. The quality of the state's library system would suffer, and ultimately school children and others who rely on libraries would be deprived.

75 Op. Att'y Gen. 133, 142 (1986)

In addition to weighing the foregoing factors, the court in

Williams

also took into account the fact that there was some question as to the legal basis for the infringement claim.

Williams

, 487 F.2d at 1359. That factor is present here as well, as discussed earlier. Another factor vitiating against OCLC is that it has acquiesced to this practice since its inception. If there is a market, DLS has created it.

75 Op. Att'y Gen. 133, 143 (1986)

In the end, one must balance the public interest to be served against the copyright interests to be protected.

Williams

, 487 F.2d at 1359.

75 Op. Att'y Gen. 133, 143 (1986)

Williams

, the court decided that the risk to the plaintiff's business was unproven while there would be an obvious detrimental impact on medical science if copying of journal articles was suppressed. The court held the use to be a "fair use."

75 Op. Att'y Gen. 133, 143 (1986)

In the case before us, it appears equally true that suppression of established services to local libraries will have a detrimental effect on the state's library system without necessarily generating any benefit for OCLC. This, along with the fringe nature of OCLC's underlying copyright claim, lead me to believe that a reviewing court would hold your use to be a fair one.

75 Op. Att'y Gen. 133, 143 (1986)

COPYING COMPUTERIZED RECORDS

75 Op. Att'y Gen. 133, 143 (1986)

At the time when the only general statutory law on public records was section 19.21, the attorney general opined that there was a right to obtain a copy of computer tapes, including those containing computer programs. 59 Op. Att'y Gen. 144, 147 (1970); 63 Op. Att'y Gen. 303, 304 (1974). The question is whether the expanded codification of the public records law enacted by chapter 335, Laws of 1981, requires a change in that interpretation. It certainly does in part since section 19.36(4) now provides that a computer program is not subject to examination and copying. However, the new statutes do not prohibit the copying of computer tapes. Indeed section 19.36(4) affirmatively provides that the data base and "product of the computer program," which could be a computer tape, are subject to copying. If this were the end of section 19.36(4), I would say the law as expressed by the earlier opinions of this office with respect to computer tapes remains unchanged. That is, there is a right to copy a computer tape under the public records law.

75 Op. Att'y Gen. 133, 143-144 (1986)

However, further analysis is necessary because section 19.36(4) says it is subject to exceptions in section 19.35. Section 19.35(1)(a) carries over any common law principles. Section 19.35(1)(c) and (d) specifically authorize the copying of audio tapes and video tapes, and there is no specific authorization for copying of computer tapes. It may be argued this omission constitutes an implicit exception. But I do not believe this to be the legislative intention. In my opinion, there need be no specific authorization in section 19.35(1) to copy a computer tape, because sections 19.36(4) and 19.21, as previously interpreted, authorize copies of computer tapes.

75 Op. Att'y Gen. 133, 144 (1986)

Section 19.35(1)(e) reads as follows: "Except as otherwise provided by law, any requester has a right to receive from an authority having custody of a record which is not in a readily comprehensible form a copy of the information contained in the record assembled and reduced to written form on paper." It appears from the drafting files in the Legislative Reference Bureau that the drafters had computerized information in mind when they drafted this paragraph. The language first appeared in the drafts that became Assembly Substitute Amendment 1 to 1981 Senate Bill 250, and the initial drafting instructions (LRB S 0810) included the following notation for section 19.35(1): "Computer (right to demand transcription)." Again, it may be argued that by specifically authorizing a copy of computerized information in written form,

i.e.

, a printout, the Legislature intended to prohibit copying of the computer tape that holds the information. Again, it is my opinion that such an exception by implication is not necessary or compelling and should not be found to overcome the affirmative provisions of sections 19.35(1)(a), 19.36(4) and 19.21, as previously interpreted.

75 Op. Att'y Gen. 133, 144 (1986)

If the Legislature had intended to preclude the copying of computer tapes it would have said so in section 19.36(4), where it expressly precludes the copying of computer programs. This is especially so since it specifically included "computer tapes" in the definition of a record in section 19.32(2).

75 Op. Att'y Gen. 133, 144 (1986)

It is well to note that statutory exceptions due to silence and implication are based on the general rule of statutory construction

expressio unius est exclusio alterius

which provides that the express mention of one matter excludes other similar matters not mentioned.

Teamsters Union Local 695 v. Waukesha County

, 57 Wis. 2d 62, 67, 203 N.W.2d 707 (1973). But our supreme court has cautioned against its use:

75 Op. Att'y Gen. 133, 144 (1986)

Although based upon logic and the working of the human mind, it is not a "Procrustean standard to which all statutory language must be made to conform."... Factually, there should be some evidence the legislature intended its application lest it prevail as a rule of construction despite the reason for and the spirit of the enactment.

75 Op. Att'y Gen. 133, 145 (1986)

Columbia Hospital Asso. v. Milwaukee

, 35 Wis. 2d 660, 669, 151 N.W.2d 750 (1967).

75 Op. Att'y Gen. 133, 145 (1986)

In my opinion, section 19.35(1)(e) is intended to be supplemental. It makes clear that a requester may have computerized data reduced to written form if the data is otherwise not comprehensible to the requester. However, if a computer tape is comprehensible to the requester because the requester has a machine that can read a computer tape, it is my opinion the requester may obtain a copy of the computer tape. Indeed, in some cases I would expect that the computerized record would be meaningful and manageable only through access to the computer tape, and that a printout would be worthless.

75 Op. Att'y Gen. 133, 145 (1986)

Therefore, it is my opinion that any agreement to refuse to provide copies of computer tapes, other than those containing computer programs, would be inconsistent with the state's public records law.

75 Op. Att'y Gen. 133, 145 (1986)

BCL:RWL
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