# Williams & Wilkins Co. v. United States

> United States Court of Claims · November 27, 1973 · 487 F.2d 1345

URL: https://www.frixlaw.com/law-library/cases/8594891

## Case

- **Full name:** WILLIAMS & WILKINS COMPANY v. United States
- **Court:** United States Court of Claims
- **Decided:** November 27, 1973
- **Citations:** 487 F.2d 1345; 21 A.L.R. Fed. 151; 203 Ct. Cl. 74; 180 U.S.P.Q. (BNA) 49; 1973 U.S. Ct. Cl. LEXIS 154
- **Precedential status:** Published
- **Opinion:** Dissent by Nichols
- **Judges:** Bennett, Cowen, Davis, Kashiwa, Kunzig, Nichols, Skelton
- **Cited by:** 48 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8594891

## How later opinions describe it (automated extraction)

- noting that the United States is liable for money damages pursuant to title 17 of the United States Code

## Opinion text

Nichols, Judge,
dissenting:
I join in the Chief Judge’s able dissent, and add a few words of my own. I agree with him that the photocopying of copyrighted material, as described in the findings, is not within the judge-made doctrine of fair use, and it should not be. The majority has posed a question, whose answer it triumphantly demonstrates, but it is the wrong question. The issue is not whether we should “stop” defendant’s photocopying. Such a stoppage, at the behest of a publisher who refused to license on fair terms could well be unconscionable, in my opinion, but we have no such publisher before us. Plaintiff here is willing to license. If he did want to halt the photocopying, he would be in the wrong court here.
As the maj ority admits, we 1 ack the power to en j oin. United States v. King, 395 U.S. 1 (1969). Under 28 U.S.C. § 1498 , as amended, all we can do, if we find infringement, is to award reasonable and entire compensation. The idea we are asked to “stop” the photocopying I suppose can be elaborated as follows: our decision would be stare decisis in other suits against non-government libraries in which injunctive relief is expressly authorized. 11 U.S.C. §§ 101 (a), 112. However, the latter section authorizes injunctions on terms. There is high authority under earlier legislation that courts can refuse to enjoin copyright infringements if they deem an *145 injunction would be unconscionable. Dun v. Lumbermen's Credit Ass'n., 209 U.S. 20 (1908). Under the 1909 Act, the Second Circuit held in National Comics Publications, Inc. v. Fawcett Publications, Inc., 198 F. 2d 927 (1952), refusing to direct an injunction on remand:
* * * We think it best to leave open to the district court the question whether an injunction shall issue, since that is always a discretionary matter.
The Ninth Circuit also recognizes that same principle. Shapiro, Bernstein & Co. v. 4636 S. Vermont Ave., Inc., 867 F. 2d 236 (1966).
The Senate Study on Copyright Law Revision, Committee On The Judiciary Pursuant to S. Res. 240, Studies 22-25, 86th Cong. 2d Sess., says at p. 127:
* * t- * *
The present law leaves it to the discretion of the court whether an injunction will be granted or denied. It has always been the rule of the courts that an injunction is an extraordinary remedy to be used only where further injury to the plaintiff is likely and the equities of the situation are on the side of injunctive relief, and the courts have denied an injunction in cases where it was thought that this remedy would be unduly harsh on the defendant.
# * # * #
In Hecht Co. v. Bowles, 321 U.S. 321 (1944), the Supreme Court construed the wartime Emergency Price Control Act as not mandating injunctive relief, although the language of the statute was more favorable to such a construction, than that of the Copyright Act. Mr. Justice Douglas said for the Court at p. 329:
* * * We are dealing here with the requirements of equity practice with a background of several hundred years of history. Only the other day we stated that “An appeal to the equity jurisdiction conferred on federal district courts is an appeal to the sound discretion which guides the determinations of courts of equity.” Meredith v. Winter Haven, 320 U.S. 228, 235 . The historic injunc-tive process was designed to deter, not to punish. The *146 essence of equity jurisdiction lias been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it. The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims. * * *
In view of the many persuasive reasons our majority adduces why photocopying by non-profit libraries should not be “stopped”, I deem it an over-large assumption that an award by us of reasonable and entire compensation to our plaintiff would by stare decisis bind other tribunals, at the behest of other plaintiffs, to enjoin such library photocopying.
The amended § 1498 prescribes an award of “reasonable and entire compensation” which shall include the statutory minima under 17 U.S.C. § 101 (b). Whether any statutory minimum is there prescribed in the case of a library photocopy of a periodical article, is a far tangent from our present inquiry, but I am satisfied, if it is, it need not be so prohibitive or punitive as to “stop” the photocopying.
Moreover, as to the question of fair use, I have difficulty regarding a use as fair, when a user benefits as extensively from the copyrighted material as this one does, yet adamantly refuses to make any contribution to defray the publisher’s cost, or compensate for the author’s effort and expertise, except the nominal subscription price of two copies of each periodical. Defendant’s libraries, and others, have attempted to exercise a measure of self-restraint hitherto, but there is nothing in the majority decision to induce them to continue, that is not more than counterbalanced by other material that will encourage unrestricted piracy. However hedged, the decision will be read, that a copyright holder has no rights a library is bound to respect. We are making the Dred Scott decision of copyright law.
I think the court also errs in inputing to Herbert Putnam, Librarian of Congress, an interpretation of the 1909 statute *147 consistent with the court’s. The brief for a group of amici put before us a 1908 regulation of that library which, the brief says, included this provision:
Photographing. Photographing is freely permitted. The permission extends to the building, itself and any of its parts, including the mural decorations. It extends to articles bearing claim of copyright, but the Library gives no assurance that the photograph may be reproduced or republished or placed on sale. These are matters to be settled with the owner of the copyright. (Emphasis supplied.)
Assuming this is properly a matter for judicial notice, the omission to include it in the trial judge’s findings (or to request inclusion) may perhaps be overlooked. Yet, as part of self-serving statements of historical fact in a brief, it avoids explanations such as an adverse party at the trial level might have furnished. The regulation possibly alluded to articles (i.e., in common speech, short non-fiction writings) if it alluded to copyrighted printed matter. Why was not, e.g., copyrighted fiction of equal concern? The explanation that suggests itself to me as possible is that the articles mentioned are, or at least include, three-dimensional objects, or artifacts. The provision is too ambiguous in its coverage to afford any indication of how Putnam interpreted the copyright law.
The 1918 regulation, in a new section entitled Photostat, deals for the first time with reproduction of two-dimensional material. The court quotes it. It includes no caution as to copyright. The former provision as to photographing is continued unchanged. It seems a fair inference that no copyright caution was considered necessary as to two-dimensional material because the then method of photograph duplication of such material, known as Photostating, was too costly, cumbersome and slow, to appear as a menace to holders of copyrights. Those of us whose memories go back to law practice in the thirties can take judicial notice that use of the method to generate copyright infringements on a major scale would have been unthinkable. A single copy of an infring *148 ing book or magazine article, produced by Photostating, would have cost two dollars or so per page. If this recollection is carrying judicial notice too far, let us drop the Putnam argument altogether.
Finally, I must note the repeated alterations made in the trial judge’s fact findings. Specifically:
New sentence in finding 6, that the requesters needed the articles in connection with their professional work, and used their copies solely for such purposes.
Deletions from finding 10 of part (b) explaining how copyright passes from authors to publishers.
Insertion in finding 17 (b) that libraries’ self-restraint policies are not abused or circumvented.
Insertion in finding 22(c), same effect.
Insertion in finding 39(b) that plaintiff’s business is growing faster than the gross national product. This is irrelevant if true. Why not a comparison with the growth of the national debt? Or the total gate receipts of the National Football League?
Deletion from finding 39(d) of inference that plaintiff must have suffered some loss from photocopying and substitute statement he has failed to show substantial hurt. Trial Judge Davis also found, with record support, that at least one subscriber cancelled a subscription to one of plaintiff’s journals because the cost of photocopying the journal had become less than the journal’s annual subscription price. There was evidence that in another instance, a subscriber cancelled a subscription at least in part because library ’photocopies were available.
The relevance and effect of these changes is doubtful in light of the fact that the statutory minima under § 101 (b) are apparently intended to take care of instances where a plaintiff cannot prove actual damages. Cf., Shapiro, Bernstein & Co. v. 4636 S. Vermont Ave., Inc., supra.
I do not think these alterations were proper in light of the presumption that the trial judge’s findings are correct. Rule 147(b). They also suggest that the court would have *149 had difficulty reaching the conclusion it did if it had respected the findings as it should have done. If plaintiff’s business is really growing faster than the gross national product or other indicia, without the court’s protection, the place to take this into account is in the determination of reasonable and entire compensation.
FINDINGS OK FACT
The court, having considered the evidence, the decision and findings of former Trial Judge James F. Davis, and the briefs and arguments of counsel, makes findings of fact as follows:
1. This is a copyright suit under 28 U.S.C. § 1498 (b). Plaintiff seeks reasonable and entire compensation for'alleged infringement by the United States of certain copyrights in medical journals.
2. Plaintiff, The Williams & Wilkins Company, is a publisher located in Baltimore, Maryland. Though a relatively small company, plaintiff is one of the major publishers of medical journals in the United States. Plaintiff also publishes medical books. Plaintiff is a family-owned corporation, and its principal officers are William M. Passano and Charles O. Eeville.
3. The Government agency accused of infringement is the Department of Health, Education, and Welfare, in particular the National Institutes of Plealth (NIH) and the National Library of Medicine (NLM). NIIT and NLM are located in Bethesda, Maryland.
4. The petition was filed in this court on February 27, 1968, and was amended on July 23,1970. The petition alleged infringement by reason of the Government’s unauthorized photocopying of seven journal articles, identified below as Counts I to VII. The amended petition alleged infringement by reason of the Government’s iinauthorized photocopying of one journal article, identified below as Count VIII. The articles, and the journals in which they were published, are as follows:
*150
*151 5. (a) Plaintiff publishes 37 medical journals, all of which are copyrighted. Of these, 26 are published in conjunction with professional societies, with the copyright being owned by plaintiff in 13 of such journals and the societies owning the copyright in the remaining 13. The journal Medicine is published by plaintiff for its own benefit, i.e., not in conjunction with a professional society. The journal Pharmacological Reviews is and has been published by plaintiff since 1909 in conjunction with the American Society for Pharmacology and Experimental Therapeutics. The Journal of Immwnology is and has been published by plaintiff for about 50 years in conjunction with the American Association of Immunologists. The journal Gastroenterology is and has been published by plaintiff since 1946 in conjunction with the American Gastroenterological Association. The four journals above named are published with notice of copyright in plaintiff’s name. Plaintiff has contracts with the above-noted professional societies, which contracts deal in part with copyright. Although there are differences in phraseology among the contracts, such differences have led to no problems in dealings between plaintiff and the societies with respect to copyright matters. So far as the record shows, the parties to the contracts consider it the responsibility of plaintiff to enforce the copyright by granting licenses or instituting appropriate lawsuits.
(b) The agreement relating to copyright between plaintiff and the American Society for Pharmacology and Experimental Therapeutics (ASPET), under which agreement Pharmacological Reviews is published, provides as follows:
*****
5. COPYRIGHT. The Society is sole owner of the periodical but for the sake of convenience, copyright shall be taken out in the name of the Publisher. Procurement of copyright of each issue is the duty of the Publisher and the costs incident thereto shall be charged to the profit-and-loss account of the periodical. The Publisher may publish or permit others to publish excerpts from the periodical after publication but such excerpting shall not be so substantial as to interfere with the sale of the periodical.
*152 10. REVERSION OF RIGHTS. In case of bankruptcy, assignment for benefit of creditors, or liquidation for any cause of the Publisher, or upon termination of this Agreement for any cause stipulated herein, all rights conveyed under this Agreement by the Society to the Publisher shall revert to the Society forthwith.
* * * * *
The agreement was in effect at all times here material. There is no evidence that ASPET objected to, acquiesced in, or was any way involved with, the bringing of this suit by plaintiff.
(c) The agreement relating to copyright between the American Association of Immunologists (AAI) and plaintiff, under which agreement the Journal of Immunology is published, provides as follows:
* $ 4e $ *
5. PROCUREMENT OF COPYRIGHT. The Association is the owner of the periodical but for the convenience of both parties copyright shall be procured by and in the name of the Publisher, and the costs incident thereto shall be charged to the profit-and-loss account of the periodical. The Association reserves the right to have the copyright assigned to the Association if at any time in the future this seems desirable. [Emphasis supplied.]
¡f: & % ¡¡< ^
The agreement was in effect at all times here material. There is no evidence that AAI ever exercised its right to have assigned to it by plaintiff the ownership of any copyright registration in the Journdl of Immunology. Nor is there evidence to show that AAI objected to, acquiesced in, or was any way involved with, the bringing of this suit by plaintiff.
(d) The agreement relating to copyright between the American Gastroenterological Association (AGA) and plaintiff, under which agreement Gastroenterology is published, provides as follows:
* # * # $
(2) COPYRIGHT. The Association grants to the Publisher the exclusive right to copyright, in the name of the Publisher, and to renew such copyrights, all material published in the said Journal, and to publish the said work in all languages during the term of the copyright.
*153 The agreement has been in effect since 1942. There is no evidence that AGA objected to, acquiesced in, or was in any way involved with, the bringing of this suit by plaintiff.
6. (a) The Count I-to-Count VIII articles were published in their respective journals on or about the dates indicated in finding 4. The journals were published with a notice of copyright consisting of the word “Copyright,” the symbol “©”, the name “The Williams & Wilkins Company,” and the year of publication affixed to the title page of, and elsewhere oh, each journal. In due course, the Register of Copyrights issued to plaintiff, with respect to each of the journals, the following certificates of registration:
Journal Certificate of Registration Number
Medicine, Vol. 44, No. 6.B 231973
Pharmacological Reviews, Vol. 16, No. 2.B 49574
The Journal of Immunology, Vol. 96, No. 2 — ...B 216408
Gastroenterology, Vol. 32, No. 6.....B 663158
Medicine, Vol. 38, No. 4.B 809926
(b) Only the issue of liability is now before the court; accounting, if any, is reserved for later proceedings. Defendant admits that at least one photocopy of each of the Count I-to-Count VIII articles was made by defendant’s NIH or NLM without authorization of plaintiff within the pertinent accounting period, as follows:
Article Date Name of Photocopied Requester
CountI-..- 9/29/67 Bachman
« “. 10/6/67 Gabor
“ «„. 10/19/67 Bachman
Count II..-.. 9/29/67 McCalium
Count III. 9/27/67 McEnany
Count IV. 9/27/67 McEnany
“ “.— 11/13/67 Reynolds
CountV.-. 9/27/67 McEnany
“ “. 11/13/67 Reynolds
Count VI.. 9/27/67 McEnany
Count VII.— 10/12/67 Bird
Count VIII.-. 1/11/68 Pitcher
« “ .... 12/68 Young
*154 The persons named above as “Kequester” are all physicians or other professional medical personnel who requested from NIH or NLM copies of the articles in connection with medical research work or patient care at NIH or elsewhere. The copies were retained by the requesters who, for the most part, kept them in personal files as permanent documents for later reference and use, or put them hi files available for use by coworkers or colleagues. The requesters needed the articles in connection with their professional work, and the copies were used solely for those purposes. The request by Dr. Pitcher of the Count VIII article was to NLM through an Army hospital library in Japan. All other requests listed above were to the NIH library and were made directly by the requester.
7. The number of subscriptions in the year 1969 and the annual subscription prices for the journals involved in this suit are as follows:
Approximate Journal Number of Price Subscriptions
Medicine___ $12 00
Pharmacological Reviews 16.00
Journal of Immunology - 1 22.00 2 4100
Gastroenterology- 7,000 112.60 2 25.00
8. Plaintiff’s journals, noted in finding % are widely distributed in medical libraries throughout the country, are in the collection at the NIH library and are included on a list of journals of widespread availability compiled by NLM.
9. (a) Plaintiff’s function, as a publisher of medical and scientific journals and books, is to determine what is needed to advance knowledge in the field of medicine; determine who is qualified to write on that subject; and edit, produce and market their manuscripts. Plaintiff accepts manuscripts from physicians and related medical professionals for publication in an appropriate journal. The considerations which influence a contributor of a manuscript as to the journal to *155 which to submit the manuscript include (i) the subject matter and length of the manuscript, (ii) the quality of articles published in the journal, (iii) the standing of the journal’s editorial board, (iv) the nature of the journal’s readership, and (v) the circulation of the journal. Contributors rarely publish their own articles because of the high cost involved and because acceptance by a leading journal marks the article as one of high quality. E.g., Gastroenterology is considered the outstanding journal in its speciality field in the United States and probably in the world. Contributors submit manuscripts to Medicine because that journal publishes lengthy, definitive articles and is well-disseminated.
(b) A board of editors of each of plaintiff’s journals screens the submitted manuscripts, and manuscripts suitable for publication are edited and revised, as necessary and within the discretion of the editors. Often, substantial editing is done by the editorial board; sometimes contributors are required to revise manuscripts prior to acceptance. If a journal is the official organ of a professional society, the society appoints the board of editors. The editors are responsible to the society and are compensated by the society which, in turn, shares with plaintiff the profits from journal sales, in accordance with the particular contractual relationship between plaintiff and the society. Eevenues from plaintiff’s journals are derived largely through subscription sales and also through advertising. The American Gastroenterological Association and the American Association of Immunologists get 50 percent of the profits from Gastroenterology and the Journal of Immunology, respectively. The American Society for Pharmacology and Experimental Therapeutics gets 90 percent of the profits from Pharmacological Reviews. Printing preparation costs are about 50-65 percent of the total cost of publication of plaintiff’s journals.
10. Authors whose manuscripts are accepted and published by plaintiff, including the authors of the articles here in suit, are not paid monetary compensation by plaintiff; moreover, some journals require that authors pay a fee for published pages in excess of a preselected number of pages. Authors are, however, gratified when plaintiff publishes their works because of enhancement of their professional status, in *156 that their works are screened by highly critical editors and are published in journals having wide dissemination and high reputation. Authors, therefore, submit manuscripts to plaintiff for dual purposes: to disseminate medical information for the public welfare; and to seek recognition from the scientific community from which flows increased professional and economic opportunity. Most articles published in plaintiff’s journals, and like journals, are the result of research work done under private or public grant; and sometimes a requirement of the grant is that the research worker will seek to have the results of the work published. Sometimes, the grants include funds to pay for excess-page charges to a journal publisher.
11. Authors whose articles are published by plaintiff usually purchase from plaintiff reprints of their articles (on the average, about 300) for distribution to interested colleagues. In general, the number of reprints purchased by authors, per article, has not changed over the past 10 years. Most authors distribute reprints free of charge to those requesting them. Depending upon the importance of, and professional interest in, a particular article, all reprints are distributed by authors within several months up to several years after publication. If someone requests directly from plaintiff a copy of an article appearing in one of plaintiff’s journals, plaintiff first refers the requester to the author for a reprint j then offers to sell (either directly or through a licensed reprint house) a back copy of the issue in which the article appeared; and, finally, refers the requester to the Institute of Scientific Information, plaintiff’s licensee for making photocopies. (Finding 36.) Authors who want to reprint one of their articles from one of plaintiff’s journals request plaintiff’s permission to do so. Others wanting to reprint articles from one of plaintiff’s journals usually ask permission of the author and also ask permission of plaintiff.
12. (a) NIH constitutes 10 institutes, each of which is concerned with a specialty of health and medical care. The mission of NIH is to advance health and well-being through the support of research in diseases, the support of educational and medical institutions, and improved biomedical communications. Generally, three types of activities are *157 carried on by NIH: education and manpower training; communication of medical information; and research conducted by the. various institutes. Research, as well as education and manpower training, is performed by Government employees of the institutes and also by private persons and organizations supported by NIH grants. Biomedical communication is the function of NLM. (Finding 20.) NIH employs over 12,000 persons, 4,000 of whom are professionals and 2,000 of whom have doctoral degrees. In fiscal 1970, NHi spent over $1.5 billion for medical research, about $100 million of which was for intramural medical research. The balance was spent either for other intramural programs or for grants to outside organizations.
(b) Total national support of medical research, both Federal and non-Federal, has increased enormously in the period 1950-1970. In 1950, only about $160 million were spent. By 1970, the total spent was $2.7 billion. In 1950, the Federal Government contributed less than half the funds available for medical research. In 1970, the Federal Government contributed nearly two-thirds.
13. A library is essential to the conduct of medical research. A principal product of research scientists is their publications and publication of results is a vital part of research. NIH maintains and operates a technical library which is open to the public. The library houses about 125,000 to 150,000 volumes, of which 30,000 are books. The balance is periodicals or journals. The NIH library subscribes to over 3,000 different journal titles, of which 600 are purchased in multiple copies. The functions of the NIH library include acquisition, selection and cataloging of journal and book materials, preparation of reference services, response to queries for specific information, bibliographic services, formulation of computerized searches, a translation unit, housekeeping service, and a library copy service. The library’s budget for 1970 was about $1.1 million, of which about $85,000 was for purchase of journal materials.
14. The NIH library subscribes to all 37 journals which plaintiff publishes. For about one-third of such journals, the library gets more than one copy. The library gets two copies of each of the four journals involved in this suit.
*158 15. As an integral part of its operation, the NIH library operates a comprehensive system of providing photocopies of articles in scientific journals. Photocopying at the NIH library (as well as at NLM) includes making a photographic copy of an article on microfilm, and then using the microfilm for further photocopying. The NIH photocopying service uses two Xerox copying machines and two Becordac microfilm cameras. The microfilm cameras are used in conjunction with a Xerox Copy-Flo printer to provide NIH personnel with permanent copies of journal articles. The microfilm is destroyed after a hard Xerox copy is made. NIH leases its Xerox machines from Xerox Corporation which it pays according to the number of pages photocopied. Microfilm used to photocopy articles at the NIH library is sent to NLM for processing. Such processing could be done by any commercial developer having the necessary equipment. Four regularly assigned employees operate the NIH photocopy equipment. In fiscal 1970, the library’s photocopying budget was $86,000 and the library filled 85,744 requests for photocopies of journal articles, constituting about 930,000 pages. The average request was about 10-12 pages and the average cost per request was about $1.
16. Photocopying services of the NIH library are available only to NIH personnel. Members of the general public, while they may use the library, are not permitted to have materials photocopied. Two lands of service are provided: over-the-counter and by mail. To get a photocopy, the requester must submit a request slip and an authorization slip. Authorization slips permit copying of either 20 pages or less, or 6 pages or less. The requirement for authorization slips is a budgetary limitation to hold down photocopying costs. Costs of library operation, including photocopying, are shared by the various institutes of NIH on a pro-rata basis.
17. (a) The photocopying policies of the NIH library have been essentially the same from 1965 to the present. If the library subscribes to but one copy of a journal, that copy is maintained in the library for the use of readers. If the library subscribes to a second copy of a journal, such copy will circulate among interested persons at NIH. Upon the request of interested personnel, articles in journals are photocopied at no charge to the requester. The library’s policy on photo *159 copying is that, as a general rule, only a single copy of a journal article will be made per request and each request is limited to about 40 to 50 pages though exceptions may be, and in fact have been, made in the case of long articles, upon approval of the Assistant Chief of the library branch. Also, as a general rule, requests for photocopying are limited to only a single article from a journal issue. However, exceptions to this general rule are routinely made, so long as substantially less than an entire journal is photocopied, i.e., less than about half of the journal. Co workers can, and frequently do, request single copies of the same article and such requests are honored. Also, there is nothing in the library’s photocopying policy to prevent a user from returning month after month to get photocopies of one or more articles from one issue of a journal.
(b) NIH library personnel will not knowingly photocopy an entire issue of a journal. However, it is possible for a single user to make a series of separate requests which will result in the photocopying of an entire issue. The photocopy equipment operators are instructed to bring to the attention of their supervisor what they believe to be attempts to copy a substantial part, or all, of a journal issue. Nevertheless, because of the large volume of photocopying done by the library, it is difficult and impractical to police and curb such attempts. Substantially more people receive photocopies of journal articles from the NIH library than would copy by hand substantial portions of articles. Photocopies made by the library are not returned by the users. Sometimes the users make further photocopies from photocopies obtained from the NIH library to distribute to colleagues or otherwise. However, there is no showing that the library’s policies have been abused or circumvented. Where the same person orders more than one copy the second has been for a colleague or to replace an illegible or undelivered copy. Nor is there a showing that the amount of the duplication of the same article has been excessive or unwarranted.
18. As a general rule, books (or monographs) which carry a copyright notice are not photocopied by the NIH library, even to the extent of a short chapter, without permission of the copyright owner. However, under special circumstances *160 (the details of which are not dear from the record) and upon authorization of library supervisory personnel, exceptions are sometimes made to this rule to the extent of copying small portions, e.g., charts or graphs, from books (or monographs).
19. Materials books and journals) not owned by the NIH library, and which are requested by users, are obtained by means of interlibrary loan. When an interlibrary loan is requested, the standard interlibrary loan form is used. Basically, the NIH library applies to interlibrary loan requests the same restrictions on photocopying as are applied to requests filled internally.
20. (a) The mission of NLM is the exchange and dissemination of medical information. NLM began as the library of the Surgeon General of the Army, which was founded in 1836. Later such library became the Armed Forces Medical Library; and in 1956, the library was transferred from the Department of Defense to the Public Health Service and renamed the National Library of Medicine. The statute creating NLM is codified as 42 JJ.S.C. §§ 275-280a (1970 ed.) which, in relevant part, reads as follows:
§275. Congressional declaration of purpose; establishment.
In order to assist the advancement of medical and related sciences, and to aid the dissemination and exchange of scientific and other information important to the progress of medicine and to the public health, there is established in the Public Health Service a National Library of Medicine (hereinafter referred to in this part as the “Library”).
§276. Functions.
(a) The Secretary, through the Library and subject to the provisions of subsection (c) of this section, shall—
(1) acquire and preserve books, periodicals, prints, films, recordings, and other library materials pertinent to medicine;
(2) organize the materials specified in clause (1) of this subsection by appropriate cataloging, indexing, and bibliographical listing;
(3) publish and make available the catalogs, indexes, and bibliographies referred to in clause (2) of this subsection:
*161 (4) make available, (through loans, photographic or other copying procedures or otherwise, such materials in the Library as he deems appropriate;
(5) provide reference and research assistance; and
(6) engage in such other activities in furtherance of the purposes of this part as he deems appropriate and the Library’s resources permit.
* =s * * *
(c) The Secretary is authorized, after obtaining the advice and recommendations of the Board (established under section 277 of this title), to prescribe rules under which the Library will provide copies of its publications or materials, or will make available its facilities for research or its bibliographic, reference or other services, to public and private agencies and organizations, institutions, and individuals. Such rules may provide, for making available such publications, materials, facilities, or services (1) without charge as a public service, or (2) upon a loan, exchange, or charge basis, or (3) in appropriate circumstances, under contract arrangements made with a public or other nonprofit agency, organization, or institution.
§ 277. Board of Regents.
(a)Establishment; composition; * * *
There is established in the Public Health Service a Board of Regents of the National Library of Medicine * * *.
(b)Duties of Board; * * *
It shall be the duty of the Board to advise, consult with, and make recommendations to the Secretary on important matters of policy in regard to the Library, including such matters as the acquisition of materials for the Library, the scope, content and organization of the Library’s services, and the rules under which its materials, publications, facilities, and services shall be made available to various kinds of users, * * *
* ' * * * *
(b) There is no evidence that the Surgeon General or any other agent of defendant has issued regulations implementing 42 U.S.C. § 276 (c).
(c) The basic function of NLM is to acquire books, journals and the like relating to health and medicine to assure that all medical literature is available at one place. In addi *162 tion to acquisition, NLM indexes and catalogs medical literature by means of Index Medians, which is a compilation of citations to about 2,400 leading biomedical journals. Index Medians is sold to the medical profession and enables medical practitioners to keep abreast of the current medical literature. NLM’s catalog announces new publications and acquisitions by the library, thus providing a ready reference for other libraries.
21. (a) NLM has five operating components, one of which is called Library Operations. The Reference Services Division of Library Operations is responsible for administering the interlibrary loan system, which is a system whereby one library may request materials from other libraries. NLM also receives requests for loans of materials from Government institutions, medical schools, hospitals, research foundations, private physicians, and private companies including drug companies. NLM provides the same service to commercial companies as it does to governmental and academic libraries. Requests by commercial companies, particularly drug companies, account for about 12 percent of NLM’s service. Upon a request for materials, NLM determines whether to loan out the original material or to make photocopies of the material. As a general rule, articles from journals, when requested, are photocopied and the photocopies given free of charge to the requester, so that, in the case of journals, the term “loan” is a euphemism. If NLM receives a request for a paid photographic service which otherwise meets the conditions of an interlibrary loan, payment is rejected and a loan or photocopy is furnished free of charge.
(b) To make photocopies, NLM uses mobile 35-mm. microfilm cameras which have an electrical power line overhead and can move up and down an aisle of the library. Full-size photocopies are then made from the microfilm. Most photocopies are made by such microfilm technique. In fiscal 1968, NLM received about 127,000 requests for interlibrary loans, of which about 120,000 were filled by photocopying. Applying the average of 10 pages per request, about 1.2 million pages were thus photocopied.
22. (a) Interlibrary loan requests must be accompanied by a proper form, the format of which is standardized and used *163 by libraries and other institutions throughout the United States. The loan form, as a general rule, must be signed by a librarian. However, NLM will at times honor requests f rom individuals (e.g., physicians) or nonlibrary institutions. Upon receipt of requests for interlibrary loans, NLM stamps the requests by date and time, counts them for statistical purposes, and begins the sorting procedure. Generally, NLM does not know, nor does it make any attempt to find out, the purpose of the requests. NLM will supply copies of the same journal article to an unlimited number of libraries requesting copies of an article, one after the other, on consecutive days, even with knowledge of such facts.
(b) NLM is a regional medical library and serves the mid-Atlantic region. Requests for materials coming from regions other than the mid-Atlantic region are generally referred to the appropriate regional library, and the requester is advised to submit future requests to the appropriate regional library. NLM’s stated policy in recent years is not to fill requests for copies of articles from any of 104 journals which are included on a so-called “widely-available list.” Rather, the requester is furnished a copy of the “widely-available list” and the names of the regional libraries which are presumed to have the journals listed. Exceptions are sometimes made to the policy, particularly if the requester has been unsuccessful in obtaining the journal elsewhere. The four journals involved in this suit are listed on the “widely-available list.” A rejection on the basis of the “widely-available list” is made only if the article requested was published during the preceding 5 years. Requests from Government libraries are not rejected on the basis of the “widely-available list.”
(c) NLM’s policy is not to honor an excessive number of requests from an individual or an institution. As a general rule, not more than 20 requests from an individual, or not more than 30 requests from an institution, within a month, will be honored. In 1968, NLM adopted the policy that no more than one article from a single journal issue, or three from a journal volume, would be copied. Prior to 1968, NLM had no express policy on copying limitations, but endeavored to prevent “excessive copying.” As a general rule, requests for more than 50 pages of material will not be honored, though *164 exceptions are sometimes made, particularly for Government institutions. Bequests for more than one copy of a journal article are rejected, without exception. If NLM receives a request for more than one copy, a single copy will be furnished and the requester advised that it is NLM’s policy to furnish only one copy. There is no showing that the amount of duplication of copies of the same article is excessive or unwarranted. Generally, requests for photocopies from books (or monographs) are rejected. NLM lends books (or monographs) for limited periods of time. In special oases (the details of which are not clear in the record), small portions of a book (or monograph), e.g., charts or tables, will be photocopied.
23. (a) NLM, from time to time, issues statements to other libraries of its interlibrary loan policy. Its policy has remained essentially unchanged over the years. The statement of policy, as of January 1968, reads in pertinent part as follows:
* * * * *
Readers who cannot obtain medical literature in their regions and who cannot come to the National Library of Medicine in person may use the interlibrary loan service of the Library by applying through a local library subject to compliance with the following regulations and instructions and the provisions of the General Interlibrary Loan Code. A large number of titles should not be requested at one time for one applicant or one institution.
FORMS OF LOANS
1. The National Library of Medicine reserves the right to determine whether material will be lent in the original form or as a photoduplicate.
2. Photoduplicates seat instead of original material will be supplied without charge to requesting libraries. Photoduplicates may be retained permanently by the borrowing library, unless return is specifically requested by NLM.
3. Since this is an interlibrary loan service, multiple copies will not be furnished.
4. With sufficient justification NLM may lend complete issues or volumes of serials when such loan does not impair other service, but in no case will complete issues or volumes or substantial portions of issues or volumes be copied as a loan. Copying of complete issues or vol *165 umes may be considered under special photographic services.
5. Original material will not be lent outside the United Sfetfis
METHOD OF BOBBOWING
1. Borrowing libraries will submit typed requests on the Interlibrary Loan Bequest form approved by the American Library Association. Bequests made by letter or on other types of forms cannot be processed and will be returned to sender. Each item or item segment must be requested on a separate form.
2. Order of citation must follow directions on the In-terlibrary Loan Bequest form.
3. Each request must be authenticated, in handwriting, by authorized personnel in the borrowing library. Unsigned requests will be returned.
4. It is expected that under all but the most unusual circumstances librarians will avail themselves of the resources of their region before directing requests to NLM.
*****
SPECIAL PHOTQGBAPHIC SEBYICES
1. Special photographic procedures are required to reproduce some items in the collection, and a charge will be made for this service. Cost estimates are available on request. NLM will consider requests for copying items such as: portraits, photographs, etchings, and other pictorial work; text and line drawings; facsimile reproductions ; long runs of periodicals to complete holdings.
2. Advance payment is required for all such photocopying when the requests emanate from outside the Federal Government. Orders for materials in which there is a question of copyright restriction will not be accepted for special photographic service without an accompanying permission statement from the copyright owner.
(b) NLM operates its interlibrary loan system in accordance with the General Interlibrary Loan Code, as revised in 1956. The Code states in pertinent part:
IX. Photographic Substitution
1. Time may be saved in filling the reader’s request if, in the application for a loan, willingness is indicated to purchase a photographic reproduction as a satisfactory substitute should the original material be unavailable for interlibrary loan. This is especially applicable to *166 periodical and newspaper articles and to typescript theses.
2. The type of photographic duplication (as a substitute) that is acceptable (e.g.} photostat; microfilm-negative or positive; record print; etc.) and the maximum price the borrowing library is willing to pay can appropriately be indicated on the original request. If preferred, the lending library may be asked to quote the estimated cost of such a substitution before filling the order.
3. Photographic duplication in lieu of interlibrary loan may be complicated by interpretations of copyright restrictions, particularly hi regard to photographing whole issues of periodicals or books with current copyrights, or in making multiple copies of a publication.*
4. Any request, therefore, that indicates acceptability of a photographic substitution, under the conditions described above, should be accompanied by a statement with the signature of the applicant attesting to his responsibility for observing copyright provisions in his use of the photographic copy. *
5. Requests indicating acceptability of photographic substitute in lieu of interlibrary loan that comply with the above provisions are to be considered bona -fide orders for copying services. The lending library, if equipped to do so, may fill such orders with no further correspondence or delay.
24. Photocopies at NLM, for interlibrary loan purposes, are prepared using a microfilm camera and a Xerox Copy-Flo machine. Copying for in-house administrative purposes, oversized material, and material in oriental languages is done on Direct Copy Xerox 720 machines. Microfilm is destroyed after use. Each photocopy produced by the microfilm camera includes a statement as follows:
This is a single photostatic copy made by the National Library of Medicine for purposes of study or research in lieu of lending the original.
25. Since 1966 through 1970, there has been a steady decline in the amount of material or number of requests filled *167 for photocopies through the interlibrary loan program of NLM. In 1969, the number of interlibrary loan requests filled was 110,573 and in 1970, 93,746. A principal reason for the decline is that regional libraries have taken on much of the burden of the program. The regional libraries operate in essentially the same maimer as NLM except that some, if not all of them, charge a fee for photocopies furnished to requesters. The budget for the interlibrary loan operation at NLM in fiscal 1969 was $166,152.
26. The Count I, IV, V, and VI articles acknowledge on their faces that the research work reported therein was supported in part by grants awarded to the authors by the Public Health Service of NIH.
27. The Division of Eesearch Grants of the Public Health Service is a service organization to NIH. Applications for grant support from NIH come to the Division of Eesearch Grants, which determines the institute of NIH to which they shall be referred and the review group to which the application shall be assigned. Such group then reviews the application and determines its scientific merit, and also reviews the application’s proposed budget with respect to, e.y., salaries for personnel, equipment, supplies and services, travel funds, funds for the purchase of publications or journals, and funds for the payment of page charges and other costs of publications. The group’s recommendation is transmitted to the appropriate institute. If a grant is subsequently awarded, the appropriate institute provides the funds and monitors the performance of the work under the grant. Grants are awarded on an annual basis and are characterized by the Public Health Service as “conditional gifts.” NIH sometimes indicates at the beginning that it will support renewal applications. Eenewal applications are administered by the Division of Eesearch Grants. The scientific investigator under a grant award can pursue his research in any maimer he feels appropriate, subject to limited budgetary control. Such investigators are not Government employees nor are they in the service of the United States; and the Public Health Service does not exercise supervision over the scientific techniques used in the research.
28. The Division of Eesearch Grants, from time to time, issues policy statements with respect to copyright which set *168 out guidelines delimiting the rights and responsibilities of grantees under NIH grants. The policy statements in effect for the years 1956 to the present are set out below in subpara-graphs (a) to (d).
(a) With respect to grants awarded from November 1956 to 1959, the Public Health Service policy governing copyright was as follows:
When a grant or award is made without condition and a book or related material is privately published, the author is free to copyright the work and to make arrangements with his publisher as if the Government had not contributed support.
(b) With respect to grants awarded from 1959 to January 1, 1963, the Public Health Service policy governing copyright was as follows:
Copyright. — The author is free to arrange for copyright without reference to the Public Plealth Service.
(c) With respect to grants awarded from January 1,1963 to July 1,1965, the Public Health Service policy governing copyright was as follows:
COPYRIGHT The author is free to arrange for copyright without approval by the Public Health ■Service.
(d) With respect to grants awarded on or after July 1, 1965, the Public Health Service policy governing copyright was as follows:
Copyright Except as otherwise provided in the conditions of the award, when publications result from work supported by the Public Health Service, the author is free to arrange for copyright without approval. Any such copyrighted publications shall be subject to a royalty-free, non-exclusive, and irrevocable license to the Government to reproduce them, translate them, publish them, use and dispose of them, and to authorize others to do so.
29. None of the Count I-to-Count VIII articles resulted from a Public Health Service grant which imposed conditions expressly modifying the copyright policies noted in finding 28, subparagraphs (a) to (c).
*169 SO. The policy statement dated July 1, 1965 (finding 28(d)), was the first public statement by the Public Health Service that it reserved the right to duplicate copyrighted works which resulted from Public Health Service grants. Prior to 1965, the Public Health Service had not addressed itself to the question of whether the Government should have a nonexclusive license in works resulting from grant funds, though it had for some years been the policy that such works could be photocopied (up to 15 copies) for in-house administrative purposes.
31. The copyright policy of the Public Health Service, noted in finding 28(d), which by its terms was to become effective in connection with work supported by grants awarded on or after July 1, 1965, appeared in the Federal Register, in modified form, for the first time on April 2,1970, at 35 Fed. Eeg. 5470 (42 C.F.E. § 52.23 (revised as of Jan. 1,1971)).
32. Dr. Victor A'. McKusick, a coauthor of the Count I article, started research, along with several coworkers, in 1954 on the subject matter of the article. Work has continued up to the date of trial. The research was supported in part by funds from a Public Health Service grant; in part by funds from grants from the Health Eeseareh Council, a private trust; and in part by other funds which cannot be traced to any specific grant or agency. The manuscript for the Count I article was submitted to the editor of Medicine on August 19, 1964, and the article was published on December 9, 1965. Changes to reflect ongoing research were made in the manuscript by the authors from time to time, up to about 6 months before publication (i.e., about mid-1965). After about mid-1965, any changes in the manuscript were editorial in nature, e.g., citations to new articles added as footnotes, stylistic changes, and the like. There is no evidence that the article reports any substantive research work done under funds from a Public Health Service grant awarded on or after July 1, 1965.
33. Dr. Gerald Goldstein, a coauthor of the Count IV article, conducted research leading to its publication, which research was funded in part by Public Health Service grants. Such grants covered the years 1958 to 1966. The Count IV *170 article was published in the J oumal of Immunology in August 1965. There is no evidence to show when the manuscript for such article was completed, though the article states on its face that it was “received for publication” on December 18, 1964 There is no evidence to show that the article reported any substantive research work done under funds from a Public Health Service grant awarded on or after July 1,1965.
34. Dr. John J. Cebra, a coauthor of the Count Y article, conducted research leading to its publication, which research was funded in part by Public Health Service grants. The Count Y article was published in the Joumal of Immunology in August 1965. There is no evidence to show when the manuscript for such article was completed, though the article states on its face that it was “received for publication” on December 17,1964. There is no evidence to show that the article reported any substantive research work done under funds from a Public Health Service grant awarded on or after July 1,1965.
35. Dr. Jason L. Starr, a coauthor of the Count YI article, conducted research leading to its publication, which research was funded in part by Public Health Service grants. The Count YI article was published in the Joumal of Immunology in August 1965. There is no evidence to show when the manuscript for such article was completed, though the article on its face states that it was “received for publication” on December 21, 1964. There is no evidence to show that the article reported any substantive research work done under funds from a Public Health Service grant awarded on or after July 1,1965.
36. (a) Plaintiff has established a licensing program to cover various forms of exploitation of its medical journals. The program includes the following:
(i) Upon request, plaintiff grants permission, in the form of licenses, for reproducing a journal article as part of a newly published book or for reproducing articles in other forms, particularly for use by educational institutions.
(id) Plaintiff has received requests from Government agencies and others for licenses to make multiple copies *171 of journal articles, and plaintiff 'has granted such, requests and bas been paid therefor.
(iii) Plaintiff has granted licenses for the distribution and sale of microfilm editions of its journals, including the four journals in suit, to University Microfilm Company, Ann Arbor, Michigan, and Arcadia Microfilms, Spring Valley, New York, in consideration for a royalty paid to plaintiff.
(iv) Plaintiff has granted licenses, for a consideration, to two reprint houses in New York to furnish a requester with a reprint of a journal article or an entire journal.
(v) Plaintiff has granted a royalty-boaring license to the Institute for Scientific Information, Philadelphia, Pennsylvania, to provide requesters with copies of articles from plaintiff’s journals.
(vi) Plaintiff has granted to several libraries (Veterans Administration Hospital Library in San Francisco, California, the Dugway Technical Library and the Wilkin Research Foundation of New York) a license to make, on a continuing basis, single copies of articles from journals in return for the payment of royalties. Such licenses, however, have not produced royalties to date and two of the licenses are no longer in effect. The license to Wilkin Research Foundation was entered into in February 1970 and provides for a royalty of 5 cents per copied page, with accumulated royalties payable yearly. ■ j
(b) It is not clear whether plaintiff’s licensing program for libraries extends to the making of copies for persons not applying at the library building.
37. Plaintiff receives about 45 to 60 requests per week to make copies from its various publications, about five of such requests being for copies of single articles from plaintiff’s journals. Requests for copies of journal articles are handled by plaintiff as set out in finding 11.
- 38. Plaintiff receives about $6,000 to $7,000 per year for permissions granted to individuals to copy journal articles (single copies and otherwise). Such receipts are in addition to royalties received from the Institute for Scientific Information, reprint houses and microfilm licensing.
*172 39. (a) Between 1959 and 1969, annual subscriptions to Medicine increased from about 2,800 to about 5,400, though subscriptions decreased slightly from 1968 to 1969. Annual subscription sales increased from about $20,000 to about $60,000; and total annual income increased from about $23,000 to about $65,000. Between 1964 and 1969, annual subscriptions to Phai°macological Reviews increased from about 2,600 to about 3,100, though subscriptions decreased slightly from 1968 to 1969. Annual subscription sales increased from about $19,000 to about $21,000; and total annual income increased from about $22,000 to about $25,000. Between 1959 and 1969, annual subscriptions to the Journal of Immunology increased from about 2,600 to about 4,700. Annual subscription sales increased from about $36,000 to about $131,-000; and total annual income increased from about $38,000 to about $185,000. Between 1959 and 1969, annual subscriptions to Gastroenterology increased from about 4,100 to about 7,000. Annual subscription sales increased from about $49,000 to about $155,000; and total annual income increased from about $108,000 to about $244,000.
(b) Between 1959 and 1966, plaintiff’s annual taxable income increased from $272,000 to $726,000. In 1967, it fell to $589,000; and in 1968, to $451,000. Plaintiff’s four journals in suit account for a relatively small percentage of plaintiff’s total business; and over the years, such journals have been profitable, except that the Journal of Immunology showed losses in the period prior to 1961; Gastroenterology showed losses in 1967-68; and Pharmacological Reviews showed a loss in 1969. Profits from the journals have varied from less than $1,000 to about $15,000 annually. Plaintiff’s share of the profits from the journals published under contract with medical societies has ranged from less than $1,000 to about $7,000. E.g., in 1968, profit from Pharmacological Reviews was $1,154.44 (on sales of about $40,000). The profit was divided, $1,039 to ASPET and $115.44 to plaintiff. In 1969, net income from Gastroenterology was $21,312.08 (on sales of about $245,000) and $11,532.35 of that amount was offset by losses the previous year, leaving a balance of $9,779.73. The balance was split between plaintiff and AGA, plaintiff getting $4,889.86.
*173 (c) Plaintiff’s business appears to have been growing-faster than the gross national product or of the rate of growth of manpower working in the field of science.
(d) There is no evidence to show whether any particular instance or instances of unauthorized photocopying of plaintiff’s journals resulted in the loss of a particular form of revenue to plaintiff. It is also concluded that plaintiff has failed to show that it has been hurt, in any substantial degree, by the photocopying practices of NLM and NIH.
40. (a) NIH (and so far as the record shows, NLM) has made no studies to determine the estimated costs over and above royalties which would be involved in paying publishers for photocopying part or all of their copyrighted journals. The costs involved in such an estimate would be essentially the salaries of the people who would make the necessary determinations. The Librarian of NIH testified that he is unable to make any estimate of such costs.
(b) In 1967, NLM temporarily ceased photocopying articles from plaintiff’s journals. NLM was able, as a practical matter, to flag plaintiff’s journals from April 27, 1967 to May 29,1967, in order to refrain temporarily from copying from them. The flagging of plaintiff’s journals was an administrative statistical operation performed by a library technician in the loan and stack section of NLM. On about May 29, 1967, NLM resumed photocopying articles from plaintiff’s journals, and for about 90 days thereafter, NLM monitored such photocopying. Satisfied that such 90-day period was a representative sample, NLM found that it would have paid plaintiff about $250 to $300 if it had acceded to plaintiff’s request for 2 cents royalty per page. The Director of NLM testified that, in his opinion, this was “a very small sum — surprisingly small sum.” However, administrative costs involved in the payment of a royalty might be substantially greater than the royalty itself.
41. (a) In 1935, there was issued a joint statement by the National Association of Book Publishers and the Joint Committee on Materials for Research regarding the photocopying by libraries and like institutions of copyrighted materials. The statement, later to become known as the “gentlemen’s agreement,” was the product of meetings and *174 discussions between representatives of the book publishing industry and research-and-education-oriented organizations, such as libraries. The representatives were interested in working out a practical accommodation of the conflict between (i) the legitimate interest of copyright owners not to have their works copied without compensation and (ii) the needs of scholars and research workers for copies of parts of copyrighted works to use in pursuit of scientific or literary investigation. The “gentlemen’s agreement,” along with the introductory statement accompanying it, reads as follows:
The Joint Committee on Materials for Research and the Board of Directors of the National Association of Book Publishers, after conferring on the problem of conscientious observance of copyright that faces research libraries in connection with the growing use of photographic methods of reproduction, have agreed upon the following statement:
A library, archives office, museum, or similar institution owning books or periodical volumes in which copyright still subsists may make and deliver a single photographic reproduction or reduction of a part thereof to a scholar representing in writing that he desires such reproduction in lieu of loan of such publication or in place of-manual transcription and solely for the purposes of research; provided
(1) That the person receiving it is given due notice in writing that he is not exempt from liability to the copyright proprietor for any infringement of copyright by misuse of the reproduction constituting an infringement under the copyright law;
(2) That such reproduction is made and furnished without profit to itself by the institution making it.
The exemption from liability of the library, archives office or museum herein provided for shall extend to every officer, agent or employee of such institution in the making and delivery of such reproduction when acting within the scope of his authority of employment. This exemption for the institution itself carries with it a responsibility to see that library employees caution patrons against the misuse of copyright material reproduced photographically.
Under the law of copyright, authors or their agents are assured of “the exclusive right to print, reprint, pub *175 lish, copy and vend the copyrighted work,” all or any part. This means that legally no individual' or institution can reproduce by photography or photo-mechanical means, mimeograph or other methods of reproduction a page or any part of a book without the written permission of the owner of the copyright. Society, by law, grants this exclusive right for a term of years in the belief that such exclusive control of creative work is necessary to encourage authorship and scholarship.
While the right of quotation without permission is not provided in law, the courts have recognized the right to a ‘‘fair use” of book quotations, the length of a “fair” quotation being dependent upon the type of work quoted from and the “fairness” to the author’s interest. Extensive quotation is obviously inimical to 'the author’s interest.
The statutes make no specific provision for a right of a research worker to make copies by hand or by typescript for his research notes, but a student has always been free to “copy” by hand; and mechanical reproductions from copyright material are presumably intended to take the place of hand transcriptions, and to be governed by the same principles governing hand transcription.
In order to guard against any possible infringement of copyright, however, libraries, archives offices and museums should require each applicant for photo-mechanical reproductions of material to assume full responsibility for such copying, and by his signature to a form printed for the purpose assure the institution that the duplicate being made for him is for his personal use only and is to relieve him of the task of transcription. The form should clearly indicate to the applicant that he is obligated under the law not to use the material thus copied from books for any further reproduction without the express permission of the copyright owner.
It would not be fair to the author or publisher to make possible the substitution of the photostats for the purchase of a copy of the book itself either for an individual library or for any permanent collection in a public or research library. Orders for photo-copying which, by reason of their extensiveness or for any other reasons, violate this principle should not be accepted. In case of doubt as to whether the excerpt requested complies with this condition, the safe thing to do is to defer action until the owner of the copyright has approved the reproduction.
*176 Out-of-print books should likewise be reproduced only with permission, even if this reproduction is solely for the use of the institution making it and not for sale.
{signed) EGBERT C. BINKLEY, Chairman,
Joint Committee on Materials for Research W. W. NORTON, President National Association of Book Publishers
(b) The practice by libraries of making photocopies has existed for at least 50 years. In the 1930’s — and prior thereto — photocopying of books and like materials was done principally by conventional photographic techniques. Starting about 1960, the new technology of electrostatic copying and other rapid, inexpensive copying techniques resulted in a dramatic increase in the instances and amounts of photocopying. During the past 10 years, the propriety of library photocopying has been the subject of many discussions at meetings and conferences of library and information groups. In 1957, the Director of NLM noted that “it is possible, if not indeed probable, that the years would bring, sooner or later, a test of the issue in the courts” posed by NLM’s photocopying activities and the copyright law.
(c) Plaintiff’s principal officers became aware of large-scale library photocopying in about 1962. Immediately thereafter, plaintiff’s president made his views on the subject known to various library groups. In the course of exchanges with librarians, plaintiff’s president learned of the statement called the “gentlemen’s agreement” and expressed his views thereon essentially as follows: The statement is inconsequential to the issues of present-day photocopying because (i) it was written in the 1930’s when copying processes consisted of blueprints, Photostats or microfilm, processes significantly different from those principally used today, (ii) one party to the statement (National Association of Book Publishers) is a long-defunct organization to which plaintiff never belonged, and (iii) the National Association of Book Publishers apparently consisted not of periodical publishers, like plaintiff, but book publishers who were concerned with the publication (and unauthorized photocopying) of books (or monographs).
42. (a) In October 1966, defendant’s General Services Administration issued a handbook, COPYING EQUIPMENT, *177 identified by code number FPMK, 101-6. The purpose of the handbook was to acquaint Government supervisory personnel with the various photocopying machines available on the market and to encourage Government agencies to make use of such machines in an economic and efficient manner. The introduction to the handbook notes as follows:
With the dispersal of office copiers throughout Government agencies, the need for a good hard look at the economy and effectiveness of office copying services has become increasingly apparent. The uncontrolled acquisition and use of office copying equipment has often resulted in uneconomical mismatches of user requirements with machine capabilities and wasteful practices in operating copying facilities.
The introduction goes on to say that large organizational units should make studies of needs for equipment before making substantial investments. It is further noted:
Where such studies have not been made, an inquiry into the existing copying facilities will offer a high potential for savings. As a minimum, a goal of 10% reduction in overall copying and related paperwork costs would be feasible. This handbook has been prepared to ■guide managers and others responsible for office copying m providing economical and effective copying service which meets user requirements.
(b) The “Foreword” to the handbook notes in part:
The impact of document copiers on Federal operations has been substantial just as it has been in commerce and industry. At this writing there are at least 202 models of copiers available from some 37 different manufacturers or distributors. The United States Government alone has installed approximately 55 thousand machines and the yearly cost of office copying is estimated at 80 million dollars. An increasing number of cost-conscious executives are concerned about the predictions that this cost could double within the next 5 years.
(c) Chapter HI of the handbook is entitled “Legal Aspects” and reads as follows:
Copying Laws
Copying laws are almost in the same category as speed limit laws — people forget they are there. Although the former involves much less risk than the latter, the penal *178 ty can be much, greater. Most documents which are prohibited by law from being copied have their source in State or Federal Government. A partial listing is shown in figure 1. In case of doubt, legal advice should be obtained.
Copyright Laws
The most frequently violated law is the Copyright Law: namely, that law which prohibits the copying of copyrighted material without permission.
The Copyright Law is intended to protect the publisher or author from plagiarism. It gives him the right to say who may reproduce his written or published work, and to demand payment for it. However, the current widespread use of copying machines in reproducing literary works goes beyond the question of plagiarism. It is beginning seriously to affect the sale of published works, such as magazines, textbooks, and technical papers. Prior to this time, a user of such works desiring to have possession of a copy was obliged to purchase the publication if he could not borrow it for an indefinite period. Today, it is relatively simple to make copies of almost any printed matter by means of the office copier.
Because the copier has made it easy to reproduce published works, extra precaution is necessary. Where a notice of copyright is shown, either on the work itself, or by a general statement in the publication, the law is clear: it may not be copied unless permission of the publisher or author is obtained. Where doubt exists as to whether or not an item is copyrighted, the legal officer should be consulted.
Figure 1, accompanying Chapter III, is entitled “Material That May Not Be Copied” and notes in part:
1. Congress, by statute, has forbidden the copying of the following subjects under certain circumstances. There are penalties of fine or imprisonment imposed on those guilty of making such copies.
# # sjc %
d. Copyrighted material of any manner or kind without permission of the copyright owner.
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43. (a) The Board of Regents of NLM (finding 20(a)), at several meetings in 1957, considered the problems of copyright with respect to the operations of NLM. The minutes of *179 those meetings are not in evidence. However, such minutes are discussed in a letter dated December 29,1965, from Abraham L. Kaminstein, Register of Copyrights, to The Honorable John L. McClellan, United States Senate, as follows:
*****
The new law amended a 1944 Public Health Service Act, which in 1956 was further amended by the transfer of the Armed Forces. Medical Library to the newly established National Library of Medicine. The Act provides, inter alia, (42 U.S.C. 276) that the Surgeon General shall “make available, through loans, photographic or other copying procedures or otherwise, such materials as he deems appropriate...” [Italics supplied] The 1958 amendment to the Public Health Service Act also provides for the establishment by the Surgeon General of a Board of Regents, which as a part of its duties is the [to ?] prescribe “rules under which the Library will provide copies of its publications or materials.” Since the provisions of section 398 are basically no different from the provisions of the 1956 amendment, it may be of interest to ascertain the administrative interpretation of that earlier copying provision.
A study of the minutes of the Board of Regents discloses that the agenda for the very first meeting of the Board, on March 20,1957, included the distribution of a paper entitled Considerations for the Formulation of Loan Policy (of the National Library of Medicine). That paper contains a clear recognition of the copyright problem:
“To start with, it must be pointed out that there are legal restrictions to the unlimited copying of published works; restrictions which are vague in some respects but which have been interpreted fairly definitely in most. The two most important interpretations for this problem are that whole works may not be copied and that multiple copies may not be made.”
This policy paper was the subject of discussion at the meeting of the Board on April 29, 1957, at which the recommendations were approved. It is significant that the minutes of that meeting disclose the following:
“Dr. Mumford [the Librarian of Congress] raised the question of copyright restrictions. It was stated that while the recommended new policy would not obviate the copyright problems, it would not raise more, and probably raise fewer difficulties in this area than does the current policy.”
*180 Further evidence that the Board was aware that copyright problems existed appeared in the minutes of the Board meeting for September 23, 1957, in the following notation:
“The Director [of the National Library of Medicine] expressed his concern ‘with the continuing vexing problem of copyright restrictions.’ He indicated that the Library is proceeding as circumspectly as possible, but that it is possible, if not indeed probable, that the years would bring, sooner or later, a test of the issue in the courts ... The Director took pains to indicate that despite the difficulties of the situation it seemed clear to him that the Library could do no other than pursue its present course, since a very large part, if not the major part, of the Library’s services is dependent upon it.”
The foregoing would appear to indicate that, from the outset of the establishment of the National Library of Medicine, there has been an awareness of the existence of copyright restrictions with respect to the use of the copyrighted works in its collections. Nowhere does it appear that the policy-making body, the Board of Regents, considered that the above-quoted provision authorizing the Surgeon General to make the material in the Library available by “photographic or other copying procedures” was in any way in derogation of the rights granted under the copyright law to the proprietor of the copyright. On the contrary, the evidence indicates that the Library attempted to formulate a policy that would take due regard of the provisions of the copyright law.
(b) In 1957, the then-Director of NLM, in discussing the problems created by NLM’s policy of providing free photocopying services, stated as follows:
Let us now take a critical look at what has happened under these policies. Free photocopying has developed beyond reasonable bounds. For example, in a recent study conducted over a two month period, it was found that over 50% of all requests received could be filled by photocopying journal articles from 125 common journal titles of the last five years.
On the face of it, this is a need which the printing press, not the camera, is designed to fill. When a request from New York City is received for a photocopy of an article which appeared in last month’s JAMA, it is apparent that the library is being treated as a cheap and convenient reprint service, and not as a library. It *181 is Mt NLM should not run a copying service per se; NLM must operate as a library, and all photocopying done should be an extension of normal library operations.
This statement was made in 1957 with reference to policies then in effect, before adoption of NLM’s present policies.
44. The Library of Congress operates a photoduplication service by which it provides photocopies of documents for a per-page fee. In 1965, electrostatic positive prints (Xerox) were provided at from 16 cents to 85 cents per sheet, depending on the quantity ordered and other factors. A brochure issued by the Library of Congress, effective October 1, 1965, stated in part:
Photocopying is done by the Library under the following conditions:
1. The Library will generally make photoduplicates of materials in its collections available for research use. It performs such service for research, in lieu of loan of the material, or in place of manual transcription. Certain restricted material cannot be copied. The Library reserves the right to decline to make photo-duplicates requested, to limit the number of copies made, or to furnish positive prints in lieu of negatives.
2. Copyright material will ordinarily not be copied without the signed authorization of the copyright owner. Exceptions to this rule may be made in particular cases. All responsibility for the use made of the photoduplicates is assumed by applicant.
There is no evidence to show the circumstances under which the Library of Congress makes “exceptions” to its rule against photocopying copyright materials.
45. The PRINTING Management Manual of defendant’s Department of Health, Education, and Welfare (in effect in 1962 and 1967) stated as follows with respect to copyright:
*****
A. General
Material protected by copyright generally may not be reproduced in any fashion, including photocopying or similar techniques, without the express permission of the copyright proprietor. However, it has been the widespread practice of libraries to have single copies made of copyrighted articles to further scholarly research, without consent of the copyright proprietor. Therefore, Department li *182 braries may make such single copies, but every precaution should be taken to assure that such single copying is done only at the written request of an employee to further scholarly research.
B. Infringement
1. Since the Government may be subject to claim or suit for damages, every precaution must be taken to avoid infringement of a copyright by an employee of the Department.
2. Employees should be advised that infringement of a copyright by an employee of the Department, not m the performance of his official duties may subject the employee to a suit for damages.
* m * * *
46. The current and recent practices of NITI and NLM as described in the foregoing findings constitute a fair use.
CONCLUSION OK LAW
Upon the foregoing findings of fact, which are made a part of the judgment herein, the court concludes as a matter of law that plaintiff is not entitled to recover and its petition is dismissed.
Members.
Nonmembers.
These statements on photographic substitutions are based on the “Gentlemen’s Agreement” written in 1935 by the National Association of Book Publishers (reaffirmed in 1938 by its successor the Book Publishers Bureau) and the Joint Committee on Materials for Research (representing the libraries). For the text of this agreement see the Journal of Documentary Reproduction 8 :29-30, March 1939. [Finding 41.]

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8594891. Public record. Not legal advice.