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DR. RAM MANOHAR LOHIYA NATIONAL LAW

UNIVERSITY, LUCKNOW

INTELLECTUAL PROPERTY RIGHTS LAW- I

FINAL DRAFT
DIGITIZATION OF LIBRARY

Submitted To: Submitted By:

Mr. Vikas Bhati Abhay Rajput

Asst. Professor Roll no. 05

Department of Law Section A

Semester VI
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Table of Contents
INTRODUCTION...................................................................................................... 3
LIBRARY AS AN EXCEPTION UNDER THE INTERNATIONAL COPYRIGHT REGIME......3
LIBRARY : EXCEPTION UNDER NATIONAL LEGISLATIONS........................................4
1. UNITED STATES OF AMERICA...........................................................................4
2. INDIA............................................................................................................... 5
GOOGLE BOOK LIBRARY PROJECT: A FAIR USE OR AN INFRINGMENT?...................6
a) SUMMARY OF THE GOOGLE BOOK LIBRARY PROJECT:......................................6
b) PRIMA FACIE CASE OF INFRINGMENT:..............................................................7
c) SUMMARY OF COURTS PROCEEDINGS:............................................................7
FAIR USE DOCTRINE DISCUSSION:.........................................................................7
i. THE PURPOSE AND CHARACTER OF USE:........................................................8
ii. NATURE OF COPYRIGHTED WORK....................................................................8
iii. THE AMOUNT AND SUBSTANTIALITY OF THE PORTION....................................8
iv. EFFECT OF USE UPON THE POTENTIAL MARKET..............................................9
CONCLUSION......................................................................................................... 9
BIBLIOGRAPHY..................................................................................................... 10
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INTRODUCTION
The invention of new technology seems to have posed new challenges to the practice of
librarianship. In this regard the librarians have adopted many advanced technologies to
enhance its service quality. One of such advanced technology which has been adopted by
library is Digitization. It is a process of converting of analogue information to the digital
information.1 The usage of digitization in the library changes the basic concept of storage and
dissemination of data as we have seen that the traditional libraries were the places where the
books and other records were preserved and made available to patrons at the premises
themselves.2 But digitization of library has made it possible to access the digitized resources
in the remote locations. It breaks the shackles of space and time. This has naturally affected
the libraries. As the history of copyright law states that the fundamental to any understanding
of copyright is that it protects various categories of works against copying. 3 Therefore, the
question arises whether digitization of library amounts to copying of work or it has been
exempted from the purview of copyright law. The paper would try to answer such questions
in the light of Indian Copyright amendment act, 2012.

LIBRARY AS AN EXCEPTION UNDER THE INTERNATIONAL

COPYRIGHT REGIME
Berne convention for the protection of literary and artistic work, 1886 does not
specifically mention libraries as a permitted exemption. However, it leaves on respective
nations to legislate on the matter of reproduction of copyright works in certain special cases
and it further provides for a general three step test4 which exempts all the usage of copyright
work from the copyright infringement if the usage of work passes all the three test provided
under article 9(2) of the convention.
This convention also influenced the TRIPS and it adopted many provision of Berne
convention. It also adopted the three step test laid down by Berne convention and declared

1 J. Feather and R. P. Sturges, International Encyclopedia of Information ad Library Sciece. 2d ed. London:
Routledge, 2003, pp. 138.

2 T C James, Digital library and technology: A copyright law approach, Annals of library and
information Studies, Vol 52, pp 1.

3 Simon Stokes, Digital Copyright Law and Practice, Butterworths lexis nexis, 2002, pp 23.

4 Article 9(2), Berne convention for the protection literary and artistic work, 1886.
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the test in mandatory terms and required the Member States to confine their statutory
provisions within the framework of the agreement.5
Then there is a special agreement between the contracting parties under article 20 of Berne
convention popularly known as World Intellectual Property Organization Copyright
Treaty(WCT) 1996, preamble, expressly talks about maintaining the fair balance between
the rights of author and the larger public interest specifically education, research and access
to information. Thus, library being an access point and repository of educational and
research material has been exempted from the purview of copyright infringement in many
national legislations. But at the same time the rights of copyright authors have also been
protected or not are not clear.
Furthermore, Infosoc directive6 also talks about the reproduction made by publicly
accessible libraries, educational establishments or museums or by archives. 7 It permits
member states to adopt limitations in respect of specific acts of reproduction made by
publicly accessible libraries, educational establishments or museums, or by archives, which
are not for direct or indirect economic or commercial advantage. However, in a way it also
adopts the same ground for determining the fair use as it has been adopted by Berne
Convention.

LIBRARY : EXCEPTION UNDER NATIONAL LEGISLATIONS

1. UNITED STATES OF AMERICA

Until the early 20th century, copyright laws typically granted authors a fairly narrow set of
exclusive rights and those exclusive rights were, in general, narrowly construed. When rights
were narrow, it was unnecessary to create exceptions to limit those rights. As the 20 th century
wore on, the un-codified fair use doctrine became the main common law limit on copyrights
exclusive rights. Finally, this doctrine was firstly codified in the US Copyright law act,
1976.

5 Ujwala uppaluri, The Libraries exception: what the amended copyright act does (and should do) for
preserving and sharing knowledge in the digital era, NUJS L R 2012.

6 Directive concerns the legal protection of copyright and related rights in the framework of the
internal market, with particular emphasis on the information society.

7 Article 5 (2)c, Infosoc Directives

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However, presently, U.S. copyright law contains an outright exemption allowing libraries
and archives to make copies to preserve some in-copyright works, 8 to replace lost or
damaged copies if other copies are unavailable at a reasonable price,9 and to give to patrons
for research purposes10. But in order to avail this exemption there needs to fulfill certain
conditions mentioned under the 17 U.S.C. 108.11 Even if all of these conditions are met, the
library or archive can still only make no more than three copies. All these clarification
manifests that these exemptions into copyright law were not to provide permission to libraries
and archives to violate the rights of authors and others that create original works, but rather to
try and reach a balance between the needs of libraries and scholars and the rights of the
copyright holders.
However, the position regarding the digital library in US was updated by the Digital
Millennium Copyright Act in 1998. With the advent of new technology of digitization
congress was concerned about the new implication of having a digitized copy accessible on
the internet. To address this concern, the Senate clarified that digital libraries and archives
that exist only in the virtual (rather than physical) sense on . . . the Internet do not fall
under the library exemption. Moreover, digital copies may not be accessed outside the
premises of the library.12

2. INDIA
Before 2012 amendment, it was not clear that mere physical ownership of a copyright work
would be sufficient for the owner (not copyright owner) to reproduce the copyright work.
Therefore, before digitization of a library the permission from the copyright holder was the
main concerned of the librarians as it was a necessary legal requirement. But, present
817 U.S.C. 108(b).

917 U.S.C. 108(c).

1017 U.S.C. 108(d).

11A library copy to be non-infringing it must: (1) be a single copy (2) made by a library or archive or
by employees of such acting within the scope of their employment, (3) not be associated with any
commercial purpose, (4) be copied from a collection that is open to the public or at least all
researchers, and (5) include a notice of copyright.

12 S. REP. NO. 105-109 (1998) (DMCA).

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scenario does not provide for any necessary legal requirement of permission from the
copyright holder before digitization of library. As, the storage of a work by electronic means
by a non-commercial public library for the purposes of preservation has been made
permissible where the library in question already possesses a physical or analogue copy.13
In the process of ordinary course of digitization of library, mainly two rights of a copyright
holder come into play i.e. reproduction and adaptation and these are the exclusive rights of
the copyright holder. It involves storage of work in an electronic medium which is classified
as reproduction in copyright laws and it also involves certain rearrangement such as
formatting facility for searching on and because of certain technical reason which is defined
as adaptation. These both rights are exclusively made available to copyright holder.14 Thus,
digitization of library would not have possible without the consent of copyright owners. This
amendment enables all non-commercial public library to store a work by electronic means for
the purposes of preservation. However, the position in India regarding the digitization of
library by non-commercial library other than preservation purpose is not clear, and the
threshold for determining the preservation purpose for storing the books in medium also
uncertain.

Earlier, the permission from the copyright holder before digitization was the main concerned
of the librarians. Many works especially orphan works could not be able to digitize as their
copyright owners were unknown and untraceable. Thus, this amendment also resolved this
problem and now even an orphan works can be digitized by non-commercial public libraries.

GOOGLE BOOK LIBRARY PROJECT: A FAIR USE OR AN

INFRINGMENT?
a) SUMMARY OF THE GOOGLE BOOK LIBRARY PROJECT: On
December 14, 2004, Google announced the formation of partnerships with select major
libraries to begin digitizing and storing the libraries collections online. Google aims to
provide individuals with the ability to search the full text of these books from anywhere using
the Google search engine. The project is an expansion of an existing Google program,
Google Print, which allows publishers to submit their collections to Google to be scanned and

13 Section 52 (n), The Copyright act 1957.

14 Section 14, The Copyright act, 1957.

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entered into the Google search engine.15 Under this, Google is scanning books from the
various libraries at Harvard, Stanford, Michigan and California universities, the New York
Public Library and the library at Oxford University. From each scanned book Google
provides one digital copy for the libraries archive and keeps another in its database.
However, users access to the texts is different depending on the copyright status of the
works. If books are still under copyright protection, users can only see up to three 'snippets',
as Google calls them (only two or three lines from each page). When books are out of
copyright, and thus in the public domain, users have a view of the entire book.
b) PRIMA FACIE CASE OF INFRINGMENT: Authors and publishers
challenged this highly publicized Google Books library project and filed a class-action
lawsuit against the Google on the ground of Copyright infringement by scanning whole
books and making copies available for commercial purpose. In order to prove copyright
infringement there are mainly two elements are required to prove i.e. (1)ownership of
copyright work and (2)the original copyright work were being copied.
Google's scanning of books directly infringes section 106(1) of the 1976 Copyright Act,
which grants copyright owners the exclusive right to reproduce the copyrighted works. In
addition, displays of the digitized texts on the internet also constitutes a prima facie copyright
infringement case, as such a public display violates section 106(5) of the 1976 Act.
Therefore, unless those copies and public display acts can be justified under the fair use
doctrine, Google will be infringing authors' and publishers' copyrights on their works being
scanned without their permission.

c) SUMMARY OF COURTS PROCEEDINGS: A federal court rejected a

proposed settlement in Authors Guild v. Google Inc16., the copyright infringement litigation
in which authors and publishers challenged Google Books project. At the same time the
district court for the southern district of the New York gave the summary judgment in the
favor of Google. Plaintiffs who are authors and publishers appealed from this judgment in the
United Court of Appeals for the Second circuit. The court of Appeal concluded that
defendants copying of work is a transformative use and does not offer the public a
meaningful substitute for matter protected by the plaintiffs copyrights, and satisfies 107s
test for fair use.
15 Press Release, Google, Google Checks Out Library Books (Dec. 14, 2004)

16 770 F. Supp. 2d 666

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FAIR USE DOCTRINE DISCUSSION:

In determining whether the use made of a work in any particular case is a fair use the factors
to be considered shall include
a) The purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;
b) The nature of the copyrighted work;
c) The amount and substantiality of the portion used in relation to the copyrighted work
as a whole; and
d) The effect of the use upon the potential market for or value of the copyrighted work.

i. THE PURPOSE AND CHARACTER OF USE:

The court inquired into the purpose and character of the use and determined that whether the
usage of Google can be considered as transformative use. The court laid down the test for
calling a work being transformative work is one that serves a new and different function
from the original work and is not a substitute for it and held that Googles making of a
digital copy of Plaintiffs books for the purpose of enabling a search for identification of
books containing a term of interest to the searcher is highly transformative purpose. Thus, it
can be considered as a fair use. While on the issue of commercial purpose court followed the
view of US Supreme Court given in that case of Acuff-Rose Music, Inc v Campbel17 the
more transformative the (secondary) work, the less will be the significance of other factors,
like commercialism, that may weigh against a finding of fair use.

ii. NATURE OF COPYRIGHTED WORK

However, the court did not give much importance to this factor as to the extent the nature of
copyright work necessarily combines with purpose and character of the transformative
usage of secondary work. Furthermore, the secondary use transformatively provides valuable
information about the original, rather than replicating protected expression in a manner that
provides a meaningful substitute for the original. Hence, the nature of work is not weight
against the finding in favor of fair use.

17 972 F 2d 1429.
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iii. THE AMOUNT AND SUBSTANTIALITY OF THE

PORTION
The implication of this factor is that finding of fair use is more likely when small amount or
small passages are copied than when copying is extensive, or encompasses the most
important parts of the original. The Google program has made digital copy of entirety of
books. However, the courts have rejected any categorical rule that copying of entirety of
work cannot be a fair use.18 The court concluded this factor also in favor of Google with
reasoning that it does not reveal that digital copy to the public. The copy is made to enable
the search functions to reveal limited, important information about the books and in regarding
the snippet view it held that it does not reveal the matter that offers a market place a
significantly competing substitute for the copyrighted work.

iv. EFFECT OF USE UPON THE POTENTIAL MARKET

This factor also went in the favor of Google as court held that this digitization not only helps
consumer but in a way also help to copyright authors as many books may be unknown to the
user despite of being in need of them but by Google search the demand of these books might
increase. And also, presently there is no existing or foreseeable potential market for the
licensing of 'snippets' or limited excerpts, as in the Books Library Project. Hence, mere
anticipation of loss could not be considered.

CONCLUSION
With advent of new technology it has been become imperative that library should update
itself also with digital copy of the books. It has been noted that many copyright law issues
come into picture while the process of digitization of library. However, then also digitization
can be done without violating the copyright laws as in a way it helps both users as well as the
copyright owners. The scenario in Indian copyright law regime is clear, it has been made
legal by 2012 amendment but in USA statute does not expressly permit mass digitization then
also few decisions of US courts have made the mass digitization possible by considering it a
fair use. Though, no International convention expressly talk about exempting the digitization

18 Harper & Row, 471 U.S. at 564-565.

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of library from the copyright infringement but almost in all convention it has been left with
the respective nations to legislate on this matter.

BIBLIOGRAPHY
Lalitha Aswath and Anjaneya Reddy, Copyright law and the Academic Libraries: A
perspective.
Prabhad Panday and Roli Mishra, Digitization of Library Materials in Academic
Libraries: Issues and Challenges.
TC James, Digital technology and libraries: A copyright law approach.
Ujwala Uppaluri, The libraries exception : What the amended copyright act does (and
should do) for preserving and sharing knowledge in the digital era.