Appendix — Williams & Wilkins Co. v. United States

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STITT

SUPREME COURT, Us BR "Tpryreme Govt, 8S

ei ie | FILED

iene

In Tak

Supreme Court of the United States

CctTosEer Term, 1973

No. 73-1279

Tue Wruitiams & WILkins Company,

Petitioner,

Tae UnitTep States,

Respondent.

On Writ of Certiorari to the

United States Court of Claims

Petition for Certiorari filed Feb. 20, 1974

Certiorari granted May 28, 1974

TABLE OF CONTENTS

RevevaNt Docker ENTRIES .......................

PETITION

COMMISSIONER'S ORDER ON PROCEDURAL MOTIONS .... .

More DEFINITE STATEMENT ...................-.-.-.

STIPULATION AND AMENDMENT TO PETITION

AMENDED ANSWER .........

REPORT OF COMMISSIONER TO THE COURT

STATEMENT REGARDING CouRT OF CLAIMS OPINION

ea RR EAR og Soha ae tia ernie ees

PAGE

A. 89

Gnited States Court of Claims

Relevant Docket Entries

General Docket

Case No. 73-68

Title of Case

THE WILLIAMS & WILKINS COMPANY V.

THE UNITED STATES

Infringement of copyrights, Dept. H.E.W.

Feb 27 1968 Filing fee of $10 paid by plaintiff Petition Filed.

10 Copies of Petition to Defendant.

Apr 29 1968 Defendant’s motion to dismiss the eighth count

filed. Copies (2) to atty. ALLOWED JUN 4 1968,

see comr’s. order.

May 13 1968 Defendant’s motion for a more definite statement

filed. Copies (2) to atty. ALLOWED JUN 4 19656,

see comr’s. order.

May 23 1968 Plaintiff’s response to defendant’s motion to dis-

miss the eighth count and motion for a more

definite statement filed. Copies (2) to deft.

May 31 1968 Defendant’s reply te plaintiff’s response to de

fendant’s motion to dismiss, etc. filed. Copies (2)

to atty.

Jun 41968 Commissioner’s order on procedural motions

filed. Copy to parties. (plaintiff to amend or sup-

plement paragraph 12 within 30 days).

A. 2

Jul 2 1968 _ Plaintiff’s more definite statement (amendment to

the petition) filed. Copies (10) to deft.

Sep 31968 Defendant’s answer to petition filed. Copies (10)

to atty.

Apr 9 1969 Deposition of Seymour I. Taine (per alledged stip-

ulation between the parties) filed. Notice to

parties.

Jun 25 1969 Court filed order referring case to Commissioner

James F. Davis.

Jun 19 1970 Commissioner’s memorandum of conference filed.

Copy to parties.

Jul 23 1970 Stipulation [re amendment to petition] filed by

defendant. Copy to atty.

Jul 23 1970 Plaintiff’s amendment to petition filed. Copies

(13) to deft.

Aug 20 1970 Defendant’s amended answer filed. Copies (14) to

atty.

Aug 24 1970 Commissioner’s memorandum of pretrial confer-

ence filed. Copy to parties.

Oct 29 1970 Transcript of testimony (6 volumes) taken at

Washington, D.C. on September 9 thru 16, 1970,

together with plaintiff’s exhibits 1 thru 10, 11A,

11-B-1 thru 11-B-6, 11-C-1 thru 11-C-17, 12, 12A,

13 thru 22, 24, 29, 30, 32, 33, 34, 38, 43, 46, 47,

48 and defendant’s exhibits 1 thru 17, 21, 24 thru

26, 28 thru 34, 36, 39, 40, 42 thru 49, 51, 53, 54

thru 71, 74, 78-1 thru 78-11, 79-4 thru 79-9, 804

thru 80-9, 81-2, 81-6 thru 81-16, 83-1 thru 83-10,

87-3 thru 87-5, 87-7, 87-9 thru 87-11, 88 thru

115 filed. Notice to parties.

Jan 12 1971 Commissioner’s order regarding filing of transcript

together with one volume of testimony for de

fendant Dr. Michael T. Mcenany filed. Copy (of

order-only) to parties.

Jan 12 1971 Commissioner’s order closing proof, etc. filed.

Copy to parties.

A. 3

May 26 1971 Stipulation re testimony of Carl J. Green, Jr. filed

by defendant, subject to the approval of the

court. Copies (2) to atty. APPROVED MAY 27,

1971.

Feb 16 1972 Commissioner’s opinion and findings of fact filed.

Copies (5) to pltf. and (15) to deft.

Feb 18 1972 Commissioner’s order re commissioner’s report

filed. Copy to parties.

Mar 16 1972 Defendant’s notice of intention to except filed.

Copies (2) to atty.

Mar 71973 Argued and submitted on the merits. Copies of

referred to House Committee Report to be sup-

plied by Amicus Curiae, Authors League of

America, Inc.

Nov 27 1973 Petition dismissed. Opinion by Judge Davis. Dis-

senting opinion by Chief Judge Cowen in which

Judge Kunzig joins. Dissenting opinion by Judge

Nichols.

Feb 25 1974 Notice of filing in Supreme Court of a petition for

writ of certiorari on February 20, 1974, No. 73-

1279, filed.

Jun 41974 Order of the Sunreme Court, dated May 28, 1974,

granting the petition for writ of certiorari filed.

A. 4

UNITED STATES COURT OF CLAIMS

THE WILLIAMS & WILKINS COMPANY,

Plaintiff,

—against—

THE UNITED STATES OF AMERICA,

Defendant.

PETITION

Plaintiff, The Williams & Wilkins Company, by its attorney,

Alan Latman, for its petition herein, alleges:

AS AND FOR A FIRST COUNT

i. This count, as hereinafter more fully appears, arises under

the Act of July 30, 1947, 61 Stat. 652, Title 17, United States

Code (hereinafter “the Copyright Law”) and is brought pursu-

ant to the provisions of Title 28, United States Code, § 1498(b).

2. Plaintiff is a corporation duly organized and existing

under the laws of the State of Maryland, with its principal place

of business at 428 East Preston Street, Baltimore, Maryland,

and is in the business of publishing books and periodicals,

principally in the medical and scientific fields.

3. Prior to December 9, 1965, Victor A. McKusick, David

Kaplan, S. B. Suddarth, M. E. Sevick and A. Edward Maumanee,

all of whom then were and ever since have been citizens of the

United States, and David Wise and W. Brian Hanley, who then

were and ever since have been nationals of the United Kingdom

created and wrote a work, in the form of a contribution to a

periodical, entitled The Genetic Mucopolysaccharidoses.

4. Said work contains material which is wholly original with

A.5

the individuals named in the paragraph immediately preceding

and is copyrightable subject matter under the Copyright Law.

5. Prior to the publication of said work as set forth in the

paragraph immediately following, said individuals assigned all

right, title and interest in and to said work to plaintiff.

6. On or about December 9, 1965, plaintiff secured statutory

of copyright prescribed by the Copyright Law, on pages 445 to

483 of MEDICINE, Vol. 44, No. 6, November, 1965.

7. Since said date of publication plaintiff has duly complied

in all respects with the provisions of the Copyright Law includ-

ing, but not limited to the provisions of said law with respect to

the deposit of copies and registration.

8. On or about December 13, 1965, the Register of Copy-

rights duly issued to plaintiff Certificate of Registration No.

B231973 pertaining to said periodical.

9. Since said date of publication all copies of said periodical

and said contribution thereto published or offered for sale by or

under authority of plaintiff have been so published or offered

for sale with notice of copyright in strict conformity with the

10. All copies of said periodical and said contribution there-

to made or manufactured by or under the authority of plaintiff

have been printed and bound in strict conformity with the

11. Since said date of publication plaintiff has been and still

is the sole proprietor cf all right, title and interest in and to the

12. After said date of publication defendant, through its

Department of Health, Education and Welfare, including but

not limited to the Library of the National Institutes of Health

and the National Library of Medicine thereof, and otherwise,

infringed said copyright of plaintiff by copying, printing, re-

printing, publishing, vending and distributing said work, all in

violation of plaintiff’s rights under § 1(a) of the Copyright Law.

A.6

13. Plaintiff gave actual written notice to the defendant of

its infringement and, upon information and belief, defendant

has continued to infringe after receipt of said notice.

AS AND FOR A SECOND COUNT

14. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 1 and 2 of this petition.

15. Prior to July, 1963, Ullrich Trendelenburg, who then was

a citizen of Germany, created and wrote a work, in the form of

a contribution to a periodical, entitled Supersensitivity and

Subsensitivity to Sympathomimetic A mines.

16. Plaintiff repeats each and every allegation contained in

paragraphs 4 and 5 of this petition, substituting the word

“individual” for “individuals” in each said paragraph.

17. On or about July 8, 1963, plaintiff secured statutory

of copyright prescribed by the Copyright Law, on pages 225

through 276 of PHARMACOLOGICAL REVIEWS, Vol. 15,

No. 2, June, 1963.

18. Plaintiff repeats and realleges each and every allegation

contained in paragraph 7 of this petition.

19. On or about July 15, 1963, the Register of Copyrights

duly issued to plaintiff Certificate of Registration No. B49574

pertaining to said periodical.

20. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 9, 10, 11, 12 and 13 of this petition.

AS AND FOR A THIRD COUNT

21. Plaintiff repeats and realleges each and every allegation

contained in paragraph 1 and 2 of the petition.

22. Prior to December 17, 1964, R. N. Hiramoto and M.

Hamlin, both of whom then were and ever since have been

citizens of the United States, created and wrote a work in the

form of a contribution to a periodical, entitled Detection of

A.7

Two Antibodies in Single Plasma Cells by the Paired Fluores-

cence Technique.

23. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 4 and 5 of this petition.

24. On or about September 16, 1965 plaintiff secured statu-

tory copyright in said contribution by publishing it, with the

notice of copyright prescribed by the Copyright Law, in THE

JOURNAL OF IMMUNOLOGY, Vol. 95, No. 2, August, 1965.

25. Plaintiff repeats and realleges each and every allegation

contained in paragraph 7 of this petition.

26. On or about September 24, 1965 the Register of Copy-

rights duly issued to plaintiff Certificate of Registration No.

B216408 pertaining to said periodical.

27. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 9, 10, 11, 12 and 13 of this petition.

AS AND FOR A FOURTH COUNT

28. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 1 and 2 of this petition.

29. Prior to December 18, 1964, B. T. Wood, S. H. Thomp-

son and Gerald Goldstein, all of whom then were and ever since

have been citizens of the United States, created and wrote a

work in the form of a contribution to a periodical, entitled

Fluorescent Antibody Staining.

30. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 4, 5, 24, 7, 26,9, 10, 11, 12 and 13 of

this petition.

AS AND FOR A FIFTH COUNT

31. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 1 and 2 of this petition.

32. Prior to December 17, 1964, John J. Cebra and Gerald

Goldstein, both of whom then were and ever since have been

citizens of the United States created and wrote a literary work

A.8

in the form of a contribution to a periodical entitled Chromato-

graphic Purification of Tetramethylrhodamine-Immune Globu-

lin Conjugates And Their Use In The Cellular Locelization of

Rabbit Gamma-Globulin Polypeptide Chains.

33. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 4, 5, 24, 7, 26,9, 10,11, 12 and 13 of

this petition.

AS AND FOR A SIXTH COUNT

34. Plaintiff repeats each and every allegation contained in

paragraphs 1 and 2 of this petition.

35. Prior to December 21, 1964, Velta Lazda and Jason L.

Starr, both of whom then were and ever since have been citizens =

of the United States created and wrote a work, in the form of a

contribution to a periodical entitled The Stability of Messenger

Ribonucleic Acid in Antibody Synthesis.

36. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 4, 5, 24, 7, 26,9, 10, 11, 12 and 13 of

this petition.

AS AND FOR A SEVENTH COUNT

37. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 1 and 2 of this petition.

38. Prior to June, 1957, Ben M. Banks, B. I. Korelitz and L.

Zetzel, who then were and ever since have been citizens of the

United States created and wrote a work, in the form of a

contribution to a periodical, entitled The Course of Non Spe-

cific Ulcerative Colitis: Review of Twenty Years Experience and

Late Results.

39. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 4 and 5 of this petition.

40. On or about July 8, 1957 plaintiff secured statutory

of copyright prescribed by the Copyright Law, on pages 983

through 1012 of GASTROENTEROLOGY, Vol. 32, No. 6,

June, 1957.

A.9

41. Plaintiff repeats and realleges each and every allegation

contained in paragraph 7 of this petition.

42. On or about July 30, 1957, the Register of Copyrights

duly issued to plaintiff Certificate of Registration No. B663158

pertaining to said periodical.

43. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 9, 10, 11, 12 and 13 of this petition.

AS AND FOR AN EIGHTH COUNT

44. Plaintiff repeats and realleges each and every allegation

contained in paragraphs 1 and 2 of this petition.

45. Upon information and belief defendant, through its De-

partment of Health, Education and Welfare including, but not

limited to the Library of the National Institute of Health and

the National Library of Medicine thereof, and otherwise, in-

fringed other copyrights of plaintiff by copying, printing, re-

printing, publishing, vending and distributing works which are

respectively the subjects of said copyrights, all in violation of

plaintiff’s rights under § 1(a) of the Copyright Law, Title 17,

U.S. Code, and plaintiff requests leave of the court to amend

this petition upon discovering the identity of such other works.

WHEREFORE, plaintiff demands that defendant be required

to pay plaintiff such damages as plaintiff has sustained in

consequence of defendant’s infringements of its copyrights or,

in lieu thereof, such damages as to the court shall appear proper

within the provisions of §101(b) of Title 17, United States

Code, but not less than One ($1.00) Dollar for each infringing

copy made, sold or distributed by or found in the possession of

the defendant, its agents or employees.

Alan Latman

200 East 42nd Street

New York, New York

YU 6-6272

Attorney for Plaintiff

. Arthur J. Greenbaum

~ Marvin S. Cowan

Of Counsel

A. 10

IN THE UNITED STATES COURT OF CLAIMS

No. 73-68

(Filed June 4, 1968)

THE WILLIAMS & WILKINS COMPANY v.

THE UNITED STATES

COMMISSIONER’S ORDER ON PROCEDURAL MOTIONS

1. Defendant’s motion to dismiss ory the Eighth Count of

the Petition for failure to set forth specific works alleged to be

copyrighted is considered as a procedural motion, is allowed,

and paragraphs 44 and 45 of the Petition are hereby stricken.

2. Defendant’s motion for a more definite statement is

allowed with respect to paragraph 12 of the Petition, arid

plaintiff is hereby directed to amend or supplement said para-

graph within 30 days.

Donald E. Lane

Commissioner

A. 11

IN THE UNITED STATES COURT OF CLAIMS

THE WILLIAMS & WILKINS COMPANY,

Plaintiff,

THE UNITED STATES,

Defendant.

No. 73-68

MORE DEFINITE STATEMENT

Pursuant to paragraph 2 of the Commissioner’s Order on

Procedural Motions, filed June 4, 1968, paragraph 12 of the

Petition is hereby amended to read as follows:

12. After said date of publication defendant, through its

Department of Health, Education and Welfare, and more partic-

ularly the Library of the National Institutes of Health, thereof,

infringed said copyright of plaintiff by copying, printing, re-

printing, publishing, vending and distributing said work, all in

violation of plaintiff’s rights under § 1(a) of the Copyright Law.

Plaintiff further amends the Petition by substituting the fol-

lowing for paragraph 20 of the Petition:

20. (a) Plaintiff repeats and realleges each and every allega-

tion contained in paragraphs 9, 10, 11 and 13 of this petition.

(b) After said date of publication defendant, through its

Department of Health, Education and Welfare, and more partic-

ularly its Library of the National Institutes of Health and

National Library of Medicine thereof, infringed said copyright

of plaintiff by copying, printing, reprinting, publishing, vending

and distributing said work, all in violation of plaintiff’s rights

under § l(a) of the Copyright Law.

Respectfully submitted,

ALAN LATMAN,

Attorney for Plaintiff

A. °2

IN THE UNITED STATES COURT OF CLAIMS

THE WILLIAMS & WILKINS COMPANY,

Plaintiff,

THE UNITED STATES,

Defendant.

No. 73-68

ANSWER

Now comes the defendant, by its Assistant Attorney General,

and answers the petition filed in the above suit on February 27,

1968, and amended on July 2, 1968, as follows:

With Respect to the First Count:

_1. With respect to paragraph 1 of the petition, defendant

denies that this action arises under Title 17 of the United States

Code, but defendant admits that this action is brought pursuant

to Section 1498(b) cf Title 28, United States Code.

2. With respect to paragraph 2 of the petition, defendant

admits the same.

3. Wit! respect to paragraph 3 of the petition, defendant is

without knowledge or information sufficient to form a belief as

to the allegations therein, and, therefore, denies the same.

4. With respect to paragraph 4 of the petition, defendant

denies each and every allegations therein.

A. 13

5. With respect to paragraph 5 of the petition, defendant is

without knowledge or information sufficient to form a belief as

to the allegations therein, and, therefore, denies the same.

6. With respect to paragraph 6 of the petition, defendant is

without knowledge or information sufficient to form a belief as

to the allegations therein, and, therefore, denies the same.

7. With respect to paragraph 7 of the petition, defendant is

without knowledge or information sufficient to form a belief as

to the allegations therein, and, therefore, denies the same.

8. With respect to paragraph 8 of the petition, defendant

admits the same.

9. With respect to paragraph 9 of the petition, defendant is

without knowledge or information sufficient to form a belief as

to the allegations therein, and, therefore, denies the same.

10. With respect to paragraph 10 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

11. With respect to paragraph 11 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

12. With respect to paragraph 12 of the petition, defendant

denies each and every allegation therein.

13. With respect to paragraph 13 of the petition, defendant

denies each and every allegations therein.

With Respect to the Second Count:

14. With respect to paragraph 14 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 1 and 2 of this answer.

15. With respect te paragraph 15 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

16. With respect to paragraph 16 of the petition, defendant

repeats and realleges each and every denial contained in para-

graphs 4 and 5 of this answer.

A. 14

17. With respect to paragraph 17 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

18. With respect to paragraph 18 of the petition, defendant

repeats and realleges each and every denial contained in para-

graph 7 of this answer.

19. With respect to paragraph 19 of the petition, defendant

admits the same.

20. With respect to paragraph 20(a) of the petition, defend-

ant repeats and realleges each and every denial in paragraphs 9,

10, 11 and 13 of this answer.

With respect to paragraph 20(b) of the petition, defendant

denies each and every allegation therein.

With Respect to the Third Count:

21. With respect to paragraph 21 of the petition, defendant

repeats and reallezes each and every denial and each and every

admission contained in paragraphs 1 and 2 of this answer.

22. With respect to paragraph 22 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

23. With respect to paragraph 23 of the petition, defendant

repeats and realleges each and every denial contained in para-

graphs 4 and 5 of this answer.

24. With respect to paragraph 24 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

25. With respect to paragraph 25 of the petition, defendant

repeats and realleges each and every denial contained in para-

graph 7 of this answer.

26. With respect to paragraph 26 of the petition, defendant

admits the same.

27. With respect to paragraph 27 of the petition, defendant

repeats and realleges each and every denial in paragraphs 9, 10,

11, 12 and 13 of this answer.

BLS

A. 15

With Respect to the Fourth Count:

28. With respect to paragraph 28 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 1 and 2 of this answer.

29. With respect to paragraph 29 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

30. With respect to paragraph 30 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 4, 5, 24, 7, 26,9, 10, 11,12

and 13 of this answer.

With Respect to the Fifth Count:

31. With respect to paragraph 31 of the petition, defendant

repeats and realleges each and every deniai and each and every

admission contained in paragraphs 1 and 2 of this answer.

32. With respect to paragraph 32 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

33. With respect to paragraph 33 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 4, 5, 24, 7, 26,9, 10, 11,12

and 13 of this answer.

With Respect to the Sixth Count:

34. With respect to paragraph 34 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 1 and 2 of this answer.

35. With respect to paragraph 35 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegation therein, and, therefore, denies the same.

36. With respect to paragraph 36 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 4, 5, 24, 7, 26,9, 10,11, 12

and 13 of this answer.

A. 16

With Respect to the Seventh Count:

37. With respect to paragraph 37 of the petition, defendant

repeats and realleges each and every denial and each and every

admission contained in paragraphs 1 and 2 of this answer.

38. With respect to paragraph 38 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

39. With respect to paragraph 39 cf the petition, defendant

repeats and realleges each and every denial contained in para-

graphs 4 and 5 of this answer.

40. With respect to paragraph 40 of the petition, defendant

is without knowledge or information sufficient to form a belief

as to the allegations therein, and, therefore, denies the same.

41. With respect to paragraph 41 of the petition, defendant

repeats and realleges each and every denial contained in para-

graph 7 of this answer.

42. With respect to paragraph 42 of the petition, defendant

admits the same.

43. With respect to paragraph 43 of the petition, defendant

repeats and realleges each and every denial in paragraphs 9, 10,

11, 12 and 13 of this answer.

44, Further answering, defendant avers:

(a) The periodical contribution alleged to be infringed in

Count 1, as acknowledged on face thereof, resulteu from work

supported by funds, materials and facilities contributed by the

defendant through its Department of Health, Education and

Welfare, Publ: Health Service, and National Instituces of

Health, pursuant to Grant No. GM10189 awarded to Victor A.

McKusick and the Johns Hopkins University, Baltimore, Mary-

land, on or about September 12, 1962, and renewed or supple-

mented thereafter on or about September 16, 1963, December

19, 1963, August 25, 1964, July 30, 1965, August 22, 1966,

September 14, 1966 and September 15, 1967, and Grant No.

FR-35 issued to the Johns Hopkins University, Baltimore, Mary-

land, on or about April 28, 1960, and renewed or supplemented

A.17

on or about July 14, 1961, June 25, 1962, September 30, 1962,

September 25, 1962, November 9, 1964, September 1, 1965,

December 1, 1965, September 18, 1967 and November 17,

1967.

(b) Under the terms, conditions, and regulations applicable to

Grants Nos. GM-10189 and FR-35 when the periodical contri-

bution alleged to be infringed in Count 1 was created and

published, the defendant has an express license to reproduce,

translate, publish, use and dispose of the periodical contribution

alleged to be infringed in Count 1.

45. Further answering, defendant avers:

(a) Defendant repeats and realleges the allegations set forth in

paragraph 44(a) hereof.

(b) The periodical contribution alleged to be infringed in

Count 2, resulted from work supported, maintained and paid

for by funds, facilities and materials contributed by the defend-

ant through its Department of Health, Education and Welfare,

Public Health Service and National Institutes of Health, pursu-

ant to Grant No. NB 01713 awarded to Ullrich G. Trendelen-

burg and the Harvard Medical School, Boston, Massachusetts,

on or about February 6, 1962 and renewed and supplemented

on or about January 10, 1963, January 28, 1964, January 27,

1965, and March 28, 1966.

Count 4 as acknowledged on the face thereof, resulted from

work supported, maintained and paid for by funds, facilities

and materials contributed by the defendant through its Depart-

ment of Health, Education and Welfare, Public Health Service

and National Institutes of Health pursuant to Grant No. CA-

03726 (also known as C-3726) awarded to Gerald Goldstein and

the University of Virginia School of Medicine, Charlottesville,

Virginia, on or about September 1, 1960, and renewed or

supplemented on or about July 13, 1961, July 18, 1962, July

17, 1963, March 30, 1964, July 13, 1964, July 26, 1965,

October 13, 1966, November 30, 1966 and February 2, 1968.

(d) The periodical contribution alleged to be infringed in

Count 5, as acknowledged on the face thereof, resulted from

work supported, maintained and paid for by funds, facilities

—7-"

A. 18

and materials contributed by the defendant through its Depart-

ment of Health, Education and Welfare, Public Health Service

and National Institutes of Health pursuant to Grant No. AI

05042 awarded to John J. Cebra and the University of Florida,

Gainesville, Florida, on or about December 31, 1962, and

renewed or supplemented on or about August 26, 1963, Sep-

tember 3, 1964 and September 10, 1965.

(e) The periodical contribution alleged to be infringed in

Count 6, as acknowledged on the face thereof, resulted from

work supported, maintained and paid for by funds, facilities

and materials contributed by the defendant through its Depart-

ment of Health, Education and Welfare, Public Health Service

and National Institutes of Heaith pursuant to the provisions of

Grant No. AI-05988 awarded to Jason L. Starr and Northwest-

ern University, Evanston, Illinois, on or about June 26, 1964.

(f) By virtue of funds, materials and facilities contributed,

awarded, and granted to the authors and creators of the periodi-

cal contributions alleged to be infringed in Counts 1, 2, 4,5 and

6 in support of, in the maintenance of, and in payment for the

works resulting in the aforesaid periodical contributions, the

defendant has a license implied in fact and in law to photocopy

or otherwise reproduce or to cause to be photocopied or other-

wise reproduced for its own use and for the use of its officia's,

employees, or other persons to whom the duty of providing

photocopies or other reproductions has been imposed by sta-

tute upon the defendant.

46. Further answering, defendant avers with respect to

Count 2 of the petition that it is not liable to plaintiff under the

allegations made therein, and, further, that its National Library

of Medicine is authorized under the provisions of the Act of

August 3, 1956, 70 Stat. 960 (42 U.S.C. §276) to make

available to public and private agencies and organizations, insti-

tutions and individuals materials pertinent to medicine through

photographic or other copying procedures.

47. Further answering, defendant avers that all of the period-

ical contributions alleged to be infringed and each of them

contain, report and describe facts, observations, phenomena,

A. 19

methods and procedures of a medic2i or scientific nature, which

are uncopyrightable and in the public domain, and which may

be copied, published, and distributed without liability to plain-

tiff and, further, that those portions of the aforesaid periodical

contributions not facts, observations, phenomena, methods o.

procedures are incidental, insignificant and not substantial so

that liability for copying, publishing or distributing such por-

tions, if any, is de minimis and not compensable in this Court.

48. Further answering, defendant avers

(a) the defendant through its Department of Health,

Education and Welfare and the National Institutes of

Health is empowered and directed under the provisions

of the Act of July 1, 1944, 58 Stat. 691, as arnended

(42 U.S.C. § 241) to conduct research, investigations,

experiments, demonstrations and studies relating to

the causes, diagnoses, treatment, control and preven-

tion of physical and mental diseases and impairments

in man,

(b) the ready accessibility of medical and scientific

materials for purposes of study, comparison, inspec-

tion and application is a necessary and essential condi-

tion in order that the aforesaid statutory mission may

be accomplished,

Education and Welfare and the National Institutes of

Health, has instituted and operated a system of provid-

ing photocopies to qualified scientists and medical

researchers whereby they may obtain copies of perti-

nent medical and scientific materials for use in their

research, investigations, experiments, demonstrations

and studies,

(d) the purpose of a statutory copyright is to promote

the progress of science, and the useful arts,

A. 20

(e) the imposition upon defendant of liability for

infringement of statutory copyright for providing the

aforesaid photocopying services to its scientists and

medical researchers will thwart, hinder, and impede

the performance of the statutory mission ut the Na-

tional Institutes of Health and will no? serve to pro-

mote the progress of science and the useful arts.

49. Further answering, defendant avers that the acts alleged

in the petition are a fair use of works alleged to be copyrighted.

Respectfully submitted,

EDWIN L. WEISL, Jr.

Assistant Attorney General

THOMAS J. BYRNES

Attorney, Department of Justice

A. 21

IN THE UNITED STATES COURT OF CLAIMS

THE WILLIAMS & WILKINS COMPANY,

Plaintiff,

THE UNITED STATES,

Defendant.

No. 73-68

STIPULATION

IT IS HEREBY STIPULATED AND CONSENTED, by and

between the attorneys for the respective parties hereto, that

pursuant to Rule 39(a) of this Court, plaintiff may amend its

petition by adding an eighth count, as set forth in Exhibit A

hereto.

ALAN LATMAN

Attorney for Plaintiff

WILLIAM D. RUCKELSHAUS

Assistant Attorney General

THOMAS J. BYRNES

Attorney, Department of Justice

AMENDMENT TO PETITION

Plaintiff, The Williams & Wilkins Company, by its attorney,

Alan Latman, for an amendment to its petition herein, consist-

ing of the addition of an Eighth Count, alleges:

A. 22

AS AND FOR AN EIGHTH COUNT

44. Plaintiff repeats and realleges each and every allegation

contained in Paragraphs 1 and 2 of this petition.

45. Prior to December 23, 1959, R.G.F. Parker, who then

was a citizen of the United Kingdom, created and wrote a work

in the form of a contribution to a periodical, entitled Occlusion

of the Hepatic Veins in Man.

46. Said work contains material which is wholly original with

said R.G.F. Parker and is copyrightable subject matter under

the copyright law.

47. Prior to the publication of said work, as set forth in the

paragraph immediately following, said R.G.F. Parker assigned

all right, title and interest in and to said work to plaintiff.

48. On or about December 23, 1959, plaintiff secured statu-

tory copyright in said contribution by publishing it with notice

of copyright prescribed by the copyright law on pages 369

through 402 of MEDICINE, Volume 38, No. 4, December,

1959.

49. Plaintiff repeats and realleges each and every allegation

contained in Paragraph 7 of the petition.

50. On or about December 24, 1959 the Register of Copy-

rights duly issued to plaintiff Certificates of Registration No.

B809926 pertaining to said periodical.

51. Plaintiff repeats and realleges each and every allegation

contained in Paragraphs 9, 10 and 11 of the petition.

52. After said date of publication, defendant, through its

Department of Health, Education and Welfare, including the

National Library of Medicine and National Institutes of Health,

A. 23

thereof, infringed said copyright of plaintiff by copying, print-

ing, reprinting, publishing, vending and distributing said work,

all in violation of plaintiff’s rights under § 1(a) of the copyright

law.

“

53. Plaintiff repeats and realleges each and every allegation

contained in Paragraph 13 of the petition.

Alan Latman

200 East 42nd Street

New York, New York

YU 6-6272

Attorney for Plaintiff

Arthur J. Greenbaum

Marvin S. Cowan

Of Counsel

A. 24

IN THE UNITED STATES COURT OF CLAIMS

THE WILLIAMS & WILKINS COMPANY,

Plaintiff,

THE UNITED STATES,

Defendant.

No. 73-68

AMENDED ANSWER

Now comes the defendant, by its Assistant Attorney General,

and answers the amendment to the petition filed herein on July

23, 1970, as follows:

With Respect to the Eighth Count:

50. With respect to paragraph 44 of the amended petition,

defendant repeats and realleges each and every denial and each

and every admission contained in paragraphs 1 and 2 of the

answer.

51. With respect to paragraph 45 of the amended petition,

defendant is without knowledge or information sufficient to

form a belief as to the allegatio 1s therein, and, therefore, denies

the same.

52. With respect to paragraph 46 of the amended petition,

defendant is without knowledge or information sufficient to

A. 25

form a belief as to the allegations therein, and, therefore, denies

the same.

53. With respect to paragraph 47 of the amended petition,

defendant is without knowledge or information sufficient to

form a belief as to the allegations therein, and, therefore, denies

the same.

54. With respect to paragraph 48 of the amended petition,

defendant is without knowledge or information sufficient to

form a belief as to the allegations therein, and, therefore, denies

the same.

55. With respect to paragraph 49 of the amended petition,

defendant repeats and realleges each and every denial contained

in paragraph 7 of the answer.

56. With respect to paragraph 50 of the amended petition,

defendant admits the same.

57. With respect to paragraph 51 of the amended petition,

defendant repeats and realleges each and every denial in para-

graphs 9, 10 and 11 of the answer.

58. With respect te paragraph 52 of the amended petition,

defendant denies each and every allegation therein.

59. Further answering the amended petition, defendant re-

peats and realleges each and every defense set forth in para-

graphs 46, 47, 48 and 49 of defendant’s answer filed September

3, 1968.

Respectfully submitted,

WILLIAM D. RUCKELSHAUS

Assistant Attorney Genera!

THOMAS J. BYRNES

Attorney, Department of Justice

Gu the United States Court of Claims

(Filed FEB 1 6 1972 =~+?)

THE WILLIAMS & WILKINS COMPANY vy.

THE UNITED STATES

Revorr or ComMMIsstonerR TO THE Courtr*

Alan Latman, attorney of record, for plaintiff. Arthur J.

Greenbaum, of counsel.

Thomas J. Byrnes, with whom was Assistant Attorney

General L. Patrick Gray, 1/1, for defendant.

Weil, Gotshal & Manges, for the Association of American

Publishers, Inc., amicus curiae. Worace SS. Manges, Mar-

shall C. Berger and Arthur F. Abelman, of counsel.

Irwin Karp, for The Authors League of America, Inc.,

amicus curiae.

Perry S. Patterson, for the American Library Association,

amicus curiae. William D. North, Ronald L. Engel, James M.

Amend, John A. Waters, and Kirkland, Ellis, Hodson, Chaf-

fetz & Masters, of counsel.

Cox, Langford & Brown, for the Association of Research

Libraries, Medical Library Association and American As-

soc.ation of Law Libraries, amici curiae. Philip B. Brown

and John P. Furman, of counsel.

OPINION

Davis, Commissioner: This is a copyright infringement

suit under 28 U.S.C. § 1498(b). Plaintiff alleges that defend-

*The opinion, findings of fact, and recommended conclusion of law are

submitted under the order of reference and Rule 134(h).

‘Prior to 1960, § 1498 provided only for patent infringement suits ageinst

the United States. In 1960, Congress amended § 1498 to make the United States

lable also for copyright infringement, pursuant to title 17, U.S.C., ‘he copy-

right statute. This is the first copyright case to reach trial in this court.

A.26

154- 78S—T:

A. 27

ant’s Department of Health, Education, and Welfare,

through its agencies, the National Institutes of Health (NIT)

and the National Library of Medicine (NLM), has in-

fringed plaintiff's copyrights in medical journals by making

unauthorized photocopies of articles from such journals. This

suit is one of first impression: raises long-troublesome and

much-diseussed issues of library photocopying of copyrighted

materialss? and requires for resolution the “judgment of

Solomon” if not also the “dexterity of Houdini.” * The foi-

lowing organizations sought (and were granted) leave to

file briefs as amici curiae: The Authors League of America,

Inc., and the Association of American Publishers, Ine. (in

support of plaintiff); and the American Library Associa-

tion, the Association of Research Libraries, the Medical

Library Association, and the American Association of Law

Libraries (in support of defendant). Those briefs, along

with the briefs filed by the parties. have been of great as-

sistance. I hold that defendant has infringed plaintiff's

copyrights and that plaintiff is entitled to recover “reason-

able and entire compensation” as provided by § 1498(b).

For convenience and for orderly discussion of the many

complex problems raised by this case, the opinion is divided

into three parts. Part I is a synopsis of the material facts,

most of which are not in dispute. Detailed facts are set out

2See, eg., B. Varmer, Photoduplication of Cop) righted Material by

Libraries, Study No. 15, Copyright Law Revision, Studies Prepared for Senate

Comm. on the Judiciary, 86th Cong, 2d Sess. (1960) [hereinatieT cited as

the Varmer study]; G. Sophar and L. Heilprin, The Determination of Legal

Facts and Economie Guideposts with Respect to the Disser ination of Scien-

tifie and Educational Information as it is Affected by ‘opyright-—-A Status

Report, Final Report, Prepared by The Committee to Investigate Copyright

Problems Affecting Communication in Science and Edueation, Ine., for the

U.S. Department of Health, Education, and Welfare, Project No. 70795

(1967) [hereinafter cited as Sophar and Heilprin report]; Report of the

the House Comm. on the Judiciary, S7th Cong, 2d Sess. at 25-26 (1961)

{hereinafter cited as the Register’s Report] ; Project—New Technology and

the Law of Copyright: Repoyraphy and Computers, 15 U.C.L.A. L. Rev. 931

(1968) [hereinafter cited as UCLA Project]; V. Clapp, Copyright—A

Litrarian’s View, Prepared for the National Advisory Commission on

Libravies, Association of American Libraries (1968); Schuster and Bloch,

Mechanical Copyright, Copyright Law. and the Teacher, 17 Cley.-Mar. L. Rev.

299 (1968): “Report on Single Copies ’—Joint Libraries Committee on Fair

Use in Photocopying. 9 Copyright Soc’y Bull. 79 (1961-62).

3 To borrow a phrase from Mr. Justice Fortas in Fortnightly Corp, v. United

Artists Television, Inc., 392 U.S. 390, 402 (1968), rehearing denied, 393 US.

902. There, the Supreme Court grappled with another vexing copyright prob-

lem—cable antenna television (CATV).

Qapeeraes

A. 28

in the findings of fact. Part II deals with the copyright law

as it applies to resolution of the case. Part III deals with

some ancillary matters.

Plaintiff, though a relatively small company, is a major

publisher of medical journals and books. Plaintiff publishes

37 journals, dealing with various medical specialties. The

four journals in suit are Medicine, Journal of Immunology,

Gastroenterology, and Pharmacological Reviews. Medicine

is published by plaintiff for profit and for its own benefit.

The other three journals are published in conjunction with

specialty medical societies which, by contract, share the jour-

nals’ profits with plaintiff. The articles published in the

journals stem from manuscripts submitted to plaintiff (or

one of the medical societies) by physicians or other scientists

engaged in medical research. The journals are widely dis-

seminated throughout the United States (and the world) in

libraries, schools, physicians’ offices, and the like. Annual

subscription prices range from about $12 to $44; and, due

to the ese.cric nature of the journals’ subject matter, the num-

ber of annual subscviptions is relatively small, ranging from

about 3,100 (Pharmacological Reviews) to about 7,000

(Gastroenterology). Most of the revenue derived from the

journals comes from subscription sales, though a small part

comes from advertising.* The journals are published with

notice of copyright in plaintiff’s name. The notice appears

at the front of the journal and sometimes at the beginning of

each article. After publication of each journal issue (usually

monthly or bimonthly) and after compliance with the re-

quisite statutory requirements, the Register of Copyrights

issues to plaintiff certificates of copyright registration.

NIH, the Government's principal medical research 1 ga-

nization, is a conglomerate of institutes located on a nulti-

acre campus at Bethesda, Maryland. Each institute is con-

cerned with a particular medical specialty, and the institutes

conduct their activities by way of both intramural research

and grants-in-aid to private individuals and organizations.

NIIT employs over 12,000 persons—4,000 are science profes-

sionals and 2,000 have doctoral degrees. To assist its intra-

" 4Eg. the Noveriver 1956 issue of Medicine has 86 pages, four of which

carry commercis! proauct advertising. The August 1965 issue of Journal of

Immunology has 206 pages, nine of which carry commercial product

advertising.

‘

A. 29

mural programs, NIH maintains a technical library. The

library houses about 150,000 volumes, of which about 30,000

are books and the balance scientific (principally medical)

journals. The library is open to the public, but is used mostly

by NIH in-house research personne}. The library's budget for

1970 was $1.1 million.

The NIH library subscribes to about 3,000 different journal

titles, four of which are the journals in suit. The library sub-

scribes to two copies of each of the journals in suit. As a gen-

eral rule, one copy stays in the library reading room and the

other copy circulates among interested NIH personnel. De-

mand by NIH research workers for access to plaintiff's

journals (as well as other journals to which the library sub-

seribes) is usually not met by in-house subscription copies.

Consequently, as an integral part of its operation, the library

runs a photocopy service for the benefit of its research staff.

On request, a researcher can obtain a photocopy of an article

from any of the journals in the library’s collection. Usually,

researchers request photocopies of articles to assist them in

their on-going projects: sometimes photocopies are requested

simply for background reading. In any event, the library

does not monitor the reason for requests or the use to which

the photocopies are put. The photocopies are not returned to

the library; and the record shows that, in most instances,

researchers keep them in their private files for future

reference.

Four regularly assigned employees operate the NIT photo-

copy equipment. The equipment consists of microfilm cameras

and Xerox copying machines. In 1970, the library photocopy

‘dget was $86,000 and the library filled 85,744 requests for

photocopies of journal articles (including plaintiff's jour-

nals), constituting about 930,000 pages. On the average, a

journal article is 10 pages long, so that in 1970, the library

made about 93,000 photocopies of articles.

NLM is located on the Bethesda campus of NIH. NLM was

formerly the Armed Forces Medical Library. In 1956, Con-

gress transferred the library from the Department of Defense

to the Public Health Service (renaming it the National Li-

brary of Medicine), and declared its purpose to be “* * * to

aid the di mination and exchange of scientific and other in-

format*on important to the _— of medicine and to the

public health * * *.°42 U.S.C. § 275 (1970). NLM is a repos-

itory of much of the world’s we al literature. NLM is in es-

A. 30

sence a “librarians’ library.” As part of its operation, NLM co-

operates with other libraries and like research-and-education-

oriented institutions (both public and private) in a so-called

“interlibrary loan” program. Upon request, NLM will loan

to such institutions, for a limited time, books and other mate-

rials in its collection, In the case of journals, the “loans”

usually take the form of photocopies of journal articles which

are supplied by NLM free of charge and on a no-return basis.

The term “loan” therefore is a euphemism when journal

articles are involved. NILM’s loan policies are fashioned after

the General Interlibrary Loan Code, which is a statement of

self-imposed regulations to be followed by all libraries which

cooperate in interlibrary loaning. The Code provides that

each library, upon request for a loan of materials, shall decide

whether to loan the original or provide a photoduplicate. The

Code notes that photoduplication of copyrighted materials

may raise copyright infringement problems, particularly

with regard to “photographing whole issues of periodicals or

books with current copyrights, or in making multiple copies

of a publication.” [Emphasis in original text.] NIM, there-

fore, will provide only one photocopy of a particular article,

per request, and will not plhiotocopy on any given request an

entire journal issue. NLM, as well as other libraries, justifies

this practice on the basis of a so-called “gentlemen's S$ agree-

ment,” written in 1935 by the National Association of Book

Publishers and the Joint Committee on Materials for Re-

search (representing the libraries), which states in part, “A

library * * * owning books or periodical volumes in which

graphic reproduction * * * 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 tran-

scription and solely for the purposes of research * * *.”

| Emphasis supplied. ] Each photoc opy reproduced by NLM

contains a statement in the margin, “This is a single photo-

static copy made by the National Library of Medicine for

purposes of study or research in lieu of lending the original.”

In 1968, a representative year, NLM received about 127,000

requests for interlibrary loans. Requests were received, for

the most part, from other libraries or Government agencies.

However, about 12 percent of the requests came from private

or commercial organizations, particularly drug companies.

A. 31

Some requests were for books, in which event the book itself

was loaned. Most requests were for journals or journal

articles: and about 120,000 of the requests were filled by

photocopying single articles from journals, including plain-

tiff’s journals. Usually, the library seeking an interlibrary

loan from NLM did so at the request of one of its patrons.

If the “loan” was made by photocopy, the photocopy was

given tothe patron who was free to dispose of it as he wished.

NLM made no effort to find out the ultimate use to which the

photocopies were put; and there is no evidence that borrow-

ing libraries kept the “loan” photocopies in their permanent

collections for use by other patrons.

Defendant concedes that within the pertinent accounting

period, NLM and the NIT library made at least one photo-

copy of each of eight articles (designated by plaintiff as

the Count I-to-Count VIII articles) from one or more of the

four journals in suit. Defendant also concedes that plaintiff

isthe record owner of copyright registrations on the journals.

That would appear to end the matter in plaintiff's favor, for

$1 of the copyright statute (17 U.S.C.) says that the copy-

right owner “* * * shall have the exclusive right: (a) to

print, reprint, publish, copy and vend the copyrighted

_work * * *"; and $3 of the statute says that, “* * * [t]he

the proprietor thereof all the rights in respect thereto which

he would have if each part were individually copyrighted

under this title.” Simply stated, this means that each article

in plaintiff's journals is protected from infringement to the

same extent as the entire journal issue. Advertisers Ewch.,

Tac. vy. Laufe. 29 F. Supp. 1 (W.D. Pa. 1953) ; King Features

Syndicate N. Fleischer. 299 F. 533 (2d Cir. 1924).°

Despite plaintiff's prima facie showing of infringement,

the Government and its amici raise a host of arguments why

the libraries should not be held liable for infringement. The

6 One argument made by defendant to justify the copying of single articles

from plaintiff's journals is that each article is but “part” of a journal issue,

which in turn is but “part” of a journal volume ; and, accordingly, defendant

says, its libraries have net copied an “entire’ copyrighted work, Section 8

of 17 U.S.C. fully meets that argument, for it) is undisputed that plaintiff

conld publish and seek copy right registration on each article separately, As

stated in H.R. Rep, No, 2222, 60th Cong.. 2d Sess, 10 (1909) :

Section 3 (of the Copyright Act} does away with the necessity of taking a

publication * * %,

A. 32

arguments boil down to five defenses: (a) nonownership of

(d) fair use, and (e) license.

The nonownership defense

Defendant says that plaintiff is not the “proprietor” of

§ 9), and therefore does not have standing to bring this suit.

As noted earlier, defendant concedes that plaintiff is the

owner of record title of copyright registrations on the jour-

nals in which the articles appear; and defendant also con-

cedes that plaintiff is entitled to a “presumption that it is

the owner of the individual articles in the journals published

by it.” 17 U.S.C. $$ 3, 209. However, defendant says the pre-

sumption is rebutted by evidence that the authors of the

articles did not make written assignment to plaintiff of their

proprietary interest in the manuscripts from which the arti-

cles stemmed and that the authors were not paid monetary

compensation for their manuscripts. From this, defendant

urges that the authors did not assign to plaintiff ownership

of their manuscripts, and, at most, granted to plaintiff only

a license to publish the articles. Defendant relies on Morse v.

Fields, 127 F. Supp. 63, 65, 104 USPQ 54,55 (S.D. NY.

1954), which held that “* * * a general copyright in an

issue of a periodical (a “blanket” copyright) does not protect

the rights in a particular contributed article unless such rights

had been previously assigned to the publisher.” Defendant

also cites Ainelow Publishing Co. y. Photography-in-Busi-

ness, Luc. 270 F. Supp. 851, 155 USPQ 342 (S.D. N.Y, 1967),

and Brattleboro Publishing Co. ¥. Winmill Publishing Co.,

250 F. Supp. 215, 149 USPQ 41 (D. Vt: 1966), aff'd, 369 F. 2d

565, 151 USPQ 666 (2d Cir, 1966), for the proposition that,

absent an express assignment, the author (rather than the

publisher) of a copyrightable work retains title to the work,

even though it is published as part of a composite on which

there is blanket copyright in the publisher's name.

The record does not support defendant and the cited cases

are not apposite, At the outset, it is pertinent to note this

court’s decision in Vorr-Oliver, Inc.. et al. vy. United States,

193 Ct. Cl. 187, 482 F. 2d 447, 167 USPQ 474 (1970), which

held that the owner of record title of a patent (and by anal-

A. 33

ogy, @ copyright registration) is the proper party to bring

suit for infringement in this court under 28 U.S.C. § 1498,

and that equitable rights of ownership of strangers to the

suit cannot be raised as defenses against the legal title holder.

See also Widenski v. Shapiro, Bernstein & Co., 147 F. 2d

909, 64 USPQ 448 (ist Cir. 1945). As a matter of law,

therefore, it would seem that defendant cannot assert the

ownership defense since by doing so, it seeks to raise equities

of persons not parties to the suit. However, even if that issue

can be raised, defendant cannot prevail on the merits. Au-

thors of two of the articles in suit testified at trial, and neither

asserted an interest (legal or equitable) in their respective

articles. It is reasonable to infer that testimony of the other

authors would be the same, for the evidence supports the con-

clusion that by custom of long standing and absent any

written or oral agreement to the contrary, authors who sub-

mit manuscripts to medical journals do so on the implied

understanding that the publisher will obtain statutory copy-

right on the journal (and the individual articles therein)

in the journal’s name and for the journal’s benefit, and that

the copyright will be enforced by the copyright registrant.

So far as the record shows, no author ever questioned or chal-

lenged that practice. Ge/sel vy. Poynter Prod.. Lue. 295 F.

Supp. 331, 160 USPQ 590 (S.D. N.Y. 1968), hele shat full

ownership of copyrightable subject matter may, by custom, be

assigned by implication from the author to a publisher. Simi-

lariy, Best Medium Publishing Co. v. National Lusider, Ine.

259 F. Supp. 433-34, 152 USPQ 56-57 (N.D. Til. 1966),

aff'd, 385 F. 2d 384, 155 USPQ 550 (7th Cir. 1967), cert.

denied, 390 U.S. 955, noted :

“In the absence of evidence to the contrary, the trans-

fer by an author to a magazine publisher of a manu-

script without restriction is deemed to carry with it all

right, title, and interest, including all rights of copy-

right, therein.”

The fact that authors are not paid by plaintiff for their

aanuseripts is of little significance. The record shows that

medical researchers, on their own volition, submit manu-

scripts to plaintiff’s journals in consideration for the jour-

nal’s screening and editing, and hopefully accepting and

publishing, the manuscripts. Rarely, if ever, do medical

researchers publish the results of their work at their own

expense. Rather they look to medical journals to bear the

A. 34

expenses of editing, publishing and disseminating.* In the

world of academia and its all-too-frequent specter of “pub-

lish or perish,” researchers compete to get their manu-

scripts accepted and published by journals of high reputation

and wide circulation. Acceptance and publication by a lead-

ing journal marks an article as one of importance and good

quality. The record shows that over 95 percent of all pub-

lished medical research appears in medical journal articles.

Thus, publication of research work by medical journals,

though perhaps not of immediate monetary benefit to re-

searchers, nevertheless enhances, and may even be crucial

to, their long-term professional and economic opportunities.

The record also shows that, once having succeeded in getting

a manuscript accepted and published by plaintiff, authors

do not seek publication by others. Rather, chey look to plain-

tiff for reprints, further publication or permission to repub-

lish elsewhere. Plaintiff, in turn, grants permission to others,

often through royalty-bearing license agreements, to copy,

reprint and republish individual journal articles in other

forms, ¢.g., as photocopies, as parts of books or on microfilia.

Of. Kinelow, supra, and Brattleboro, supra, wherein the

authors did not intend the first publisher to be the sole pub-

lisher and, in fact, intended that others republish the work

without regard to the first publisher.

In sum, the only reasonable inference (there being no evi-

dence tothe contrary) is that the authors assigned to plaintiff,

ab initio and by implication, the ownership rights to their

manuscripts, and did not grant to plaintiff a mere license to

publish.

A final point: Implicit in defendant’s position on this

issue is the notion that it is unfair for plaintiff to derive

monetary profit from the work of medical researchers who

do not share that profit directly with plaintiff. What de-

fendunt overlooks is that with respect to most of plaintiif’s

journals (and three of the four in suit), profits derivea from

the journals go in large measure to the medical societies for

which the journals are published. The American Gastroen-

*Some journals require authors to pay “excess page’ charges for musvally

long articles and also to pay, at least in part, for certain kinds of illuctrztions.

To this extent, therefore, authors sometimes bear part of the exper» of

publication. However, there is no evidence that such expenses are substantial

(compared to the total cost of publication) or that such requirement 4d's-

courages authors from submitting manuscripts te plaintiff in favor of pub-

lishing them themselves or elsewhere.

454-788—72.——_2

A. 35

terological Association (AGA) and the American Association

of Immunologists (AAT) get 50 percent of the profits from

Crastroenterology and the Journal of Immunology, respec-

tively; and the American Society of Pharmacology and Ex-

perimental Therapeutics (ASPET) gets 90 percent of the

profits from Pharmacological Reviews. Most of plaintiff's

journals, therefore, operate for the benefit of the medical pro-

fession itself, which, in the long run, is for the benefit of the

public. In any event, plaintiff's profits are not great, and at

best, simply compensate plaintiff for the services it renders

as a publisher in a free-enterprise system where income is

derived by risking capital to print and disseminate. £.q., in

1968, profit from Pharmacological Reviews was $1154.44 (on

sales of about $40,000), of which $1,039 went to ASPET and

$115.44 went to plaintiff. In 1969, Pharmacological Reviews

lost money. Also, 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 plain-

tif and AGA, plaintiff getting $4,889.86.

In short, absent private publishers whose efforts provide

for dissemination of 95 percent of the current medical litera-

ture, most of the findings of medical research would go un-

published and undisseminated: or at least the burdens of

publishing and disseminating would fall upon other organi-

zations, one ot which would no doubt have to be the

Government.’

The real-party-in-interest defense

Defendant says that plaintiff is not the real party in inter-

est with respect to the articles (Counts IL to VI) in the

Journal of Irim Unology and Pharmacotegical Reviews,

Defendant says those journals are owned. respectively, by

AAT and ASPET; and, though not expressly urged, it is

apparently defendant’s posiiion that AAT and ASPET must

be joined as parties-plaintiff or else must bring this suit in

their own names. The record shows that plaintiff publishes

*The UCLA Project, at 956, discusses the problems which would be

created if. through failure of private publishers, the Government takes up the

slack in medical publishing. Among the problems might be “government

influence over the content of writings,” implicit in which is the “* « *

danger of government censorship * * *. Many selentifie journal articles are

presently subjected to scrutiny by panels of scientists who determine ‘publish-

ability’ independently of the editors of journals. Retaining such an evaluative

Process would allow professional scientists in the author's field, rather than

bureaucrats, to decide what is published.”

A. 36

the Journal of Immunology under contract with AAI and

publishes Pharmacological Reviews under contract with

ASPET. The contracts obligate plaintiff to secure statutory

that the contracts provide that the respective societies are the

“sole owner of the periodical,” the clear intent of the parties is

that copyright matters, including acquisition and enforce-

ment, are plaintiff's responsibility. Thus, the ASPET con-

tract provides that it is plaintiff's duty to procure copyright

on Pharmacological Reviews “in the name of the Publisher”

and to oversee and act on requests by others to republish

parts thereof, a right incident to the enforcement of copy-

right. Likewise, the AAI contract requires plaintiff to pro-

cure copyright on the Journal of Immunology “in the name

of the Publisher,” and notes that AAI “reserves the right to

have the copyright assigned to the Association if at any

time in the future this seems desirable.” This is a clear indi-

cation that it was the parties’ intent that plaintiff should own

the copyright ab initio. In short, there is no evidence that

ASPET or AAT intended anything other than that plaintiff,

and plaintiff alone, should own the copyright in the respective

journals and should enforce the copyright by bringing law-

suits, or otherwise.

In any event, Dorr-Oliver, supra, disposes of the issue.

Plaintiff is, and always has been, the record owner of the

suit in this court. See also Hedeman Prod. Corp. v. Tap-Rite

Prod. Corp., 228 F. Supp. 630, 141 USPQ 381 (D. N.J. 1964).

The noninfringement defense

Defendant contends that its act. of copying do not violate

the copyright owner’s exclusive right “to copy” the copy-

righted work as provided by 17 U.S.C. $1. The argument

is that with respect to books and periodicals. the act of making

single copies (i.e., one copy at a time) is not, in itself, suf-

ficient to incur liability; that the “copying,” to be actionable,

must include “printing” (or “reprinting”) and “publishing”

of multiple copies of the copyrighted work. The argument is

bottomed on analysis of the copyright laws as they have

evolved from L700 to the present.s ‘The early laws distin-

*Congress enacted the first copyright statute in 1790 (Act of May 31,

1790, ch. 15, 1 Stat. 124). Thereafter, the statute was revised from time

to time, notably in 1802, 1831, 1870, and 1891. In 1909, the present statute

was passed (Act of March 4, 1909, ch. 320, 35 Stat. 1075) and later was

codified as 17 U.S.C. (Act of July 30, 1947, 61 Stat. 652).

A. 37

guished “copying” from “printing,” “reprinting,” and “pub-

lishing,” and provided that the copyright in books is in-

fringed by “printing,” “reprinting” and “publishing” while

the copyright in other works (¢.g., photographs, paintings,

drawings, etc.) is infringed by “copying.” The 1909 Copy-

right .« obliterated any such distinction. It provides in

$5 a list of all classes of copyrightable subject matter (in-

cluding books and periodicals), and says in § 1 that the owner

of copyright shall have the exclusive right “to print, reprint,

publish, copy and vend the copyrighted work” [emphasis

supplied]. Thus, the 1909 Act, unlike the earlier statutes,

does not expressly say which of the proseribed acts of § 1

apply to which classes of copyrightable subject matter of

§ 5. Defendant says that to be consistent with the intent and

purpose of earlier statutes, the “copying” proscription of § 1

should not apply to books or periodicals; rather, only the

proscribed acts of “printing,” “reprinting® and “publish-

ing” should apply to books and periodicals. -

Defendant's argument is not persuasive and, in any event,

is irrelevant. It is clear from a study of all the copyright

statutes from 1790 to date that what Congress has sought to

do in every statute is to proscribe unauthorized duplication

of copyrighted works. The words used in the various statutes

to define infringing acts (7.e., printing, reprinting, copying,

etc.) were simply attempts to define the then-current means

by which duplication could be effected. It is reasonable to

infer that in 1909, when Congress included “copying” in

the list of proscribed acts applicable to books and periodicals

(as well as copyrightable subject matter in general), it did

so in light of the fact that new technologies (¢.g.. photog-

raphy) made it possible to duplicate books and periodicals

by means other than “printing” and “reprinting.” The legisla-

tive history of the 1909 Act says little, one way or the other,

about the matter.” Nevertheless, $s 1 and 5 are plain and

unambiguous on their face; and the Supreme Court held

us recently as 1968, in Fortnightly Corp., supra note 3, at

3O4:

* HLR. Rep. No. 2222, 60th Cong., 2d Sess. 4 (1909) states:

Subsection (a) of section 1 adopts without change the phraseology of

section 4952 of the Revised Statutes, and this, with the insertion of the

word “copy.” practically adopts the phraseology of the first copyright

act Congress ever passed—that of 1790. Many amendments cf this were

suggested, but the committee felt that it was safer to retain without

change the old phraseology which has been so often construed bv the

courts.

A. 38

* * * $1 of the [|Copyright | Act enumerates several

“rights” that are made “exclusive” to the holder of the

the scope of one of these “exclusive rights.” he infringes

the copyright. | Emphasis supplied. |

See also the Register’s Report, wherein it is noted at 21-22;

* * * as several courts have observed, the right em-

braced in the repetitive terms of section 1(a) is the two-

fold right to make and publish copies,

This right is the historic basis of copyright and per-

tains to // categories of copyrighted works, * * * [Em-

phasis supplied. |

The burden, therefore, is on defendant to show that Congress

intended the statute to mean something other than what it

plainly says. Defendant has not carried that burden.

It is also pertinent that the courts have liberally construed

the 1909 Act to take into account new technologies by which

copyrighted works can be duplicated, and thus infringed. In

Fortnightly Corp., supra note 3, at 395-96, the Court, in

dealing with copyright infringement relating to television,

said:

In 1909, radio itself was in its infancy, and television

had not been invented. We read the statutory language

°7 60 years ago in the light of drastic technological

change. | Emphasis supplied. }

To the same effect is Jerome H. Remick & Co. vy. American

Automobile Accessories Co., 5 F.2d 411 (6th Cir. 1925),

cert. denied, 269 U.S. 556, which stated at 411:

* * * the statute may be applied to new situations not

anticipated by Congress, if. fairly construed, such situa-

tions come within its intent and meaning. Thus it has

been held both in this country and England that a photo-

graph was a copy or infringement of a copyrighted

engraving under statutes passed before the photographic

process had been developed. [citations omitted] While

statutes should not be stretched to apply to new situations

not fairly within their scope, they should not be so nar-

rowly construed as to permit their evasion because of

changing habits due to new inventions and discoveries,

Furthermore, defendant’s argument that it may “copy,”

short of “printing,” “reprinting” and “publishing,” is irrele-

vant under the facts of this ease. NLM and the NITE library

did not merely “copy” the articles in suit; they, in effect,

“reprinted” and “published” them. “Printing” and “reprint-

A. 39

ing” connote making a duplicate original, whether by print-

ing press or a more modern method of duplication. M/acmil-

lan Co. v. King, 223 F. 862 (D. Mass. 1914); M. Nowmer,

Coryricut § 102 (1971 ed.). “Publishing” means disseminat-

ing to others, which defendant’s libraries clearly did when

they distributed photocopies to requesters and users. Macmil-

lan Co., supra; M. Nimuer. Copyrigur § 104 (1971 ed.).

Defendant's contention that its libraries saasxe only “single

copies” of journal articles, rather than multiple ¢ yples, is

illusory and unrealistic. Admittedly, the libraries, as a gen-

eral rule, make only one copy per request, usually for differ-

ent users, But the record shows that the libraries duplicate

particular articles over and over again, sometimes even for

the same user within a short timespan. /.y.. the NIH library

photocopied the Count I article three times within a 3-month

period, two of the times for the same requester: and it copied

the Count IV and Count V articles twice within a 2-month

period, albeit for different users. The record also shows that

NLM will supply to requesters photocopies of the same arti-

cle, one after the other, on consecutive days, even with knowl-

edge of such facts. Lu short, the libraries operate comprehen-

sive duplication systems which provide every year thousands

of photocopies of articles, many of which are copies of the

same article; and, in essence, the systems are a reprint service

which supplants the need for journal subscriptions. The ef-

fects of this so-called “single copying” practice on plaintiff's

legitimate interests as copyright owner are obvious, The

Sophar and Heilprin report, at 16, puts it in terms of a color-

ful analogy: “Babies are still born one at a time, but the

world is rapidly being overpopulated.”

Finally, ind in any event, there is nothing in the copyright

statute or the case law to distinguish, in principle, the making

of a single copy of a copyrighted work from the making of

multiple copies. The first copyright statute (Act of 1790)

provided in § 2 that it was infringement to make “any copy

or copies” [emphasis supplied | of a copyrighted work. Noth-

ing in the later statutes or their legislative histories suggests

that Congress intended to change that concept. And the

courts have held that duplication of a copyrighted work. even

to make a single copy, can constitute infringement. White-

Smith Musie Co. v. Apollo Co., 209 U.S. 1, 16-17 (1908):

Patterson v. Century Productions, Inc.. 93 F, 2d 489, 493,

35 USPQ 471, 475 (2d Cir. 1937), cert. denied, 303 U.S, 655

A. 40

(1938): Greenbie y. Noble, 151 F. Supp. 45, 63, 113 USPQ

115, 128 (S.D. N.Y. 1997),

The “fair use” defense

Defendant contends that its copying comes under the doe-

trine of “fair use” of copyrighted works. “Fair use,” a judi-

‘cially-created doctrine, is a sort of “rule of reason” applied

by the courts as a defense to copyright infringement when

the accused in fringing acts are deemed to be outside the legiti-

mate scope of protection afforded copyright owners under

17 U.S.C. 5 1. What constitutes “fair use” cannot be defined

With precision. Much has been written about the doctrine,

particularly its rationale and scope. Nee, e.g. A. LATMAN,

Fair Use or Coryricuren Works. Srupy No, 14, Copyrigur

Law Revision, Srvpirs Prerarep ror Sex vir ComM. on rug

Jeupictary, S6th Cong., 2d Sess. (1960) : Comment, Copyright

Fair Use—Case Law and Legislation, 1969 Dn KE LJ. 73;

S. Comer, Fam Usy AND THE Law or Coryricur, ASCAP

Corpyrigutr Law Symposium (No, 6) 45 (1955): W. Jensen,

Fair Use: As Viewed by the “User.” 39 Diera 25 (1962) ;

L. Yankwieh, Whot Js Fair Use?, 22 UV, Cu, LL. Rev. 203

(1954) ; Note, Fai, Use: AC ‘ontroversial Topic in the Latest

Revision of Our Copyright Law, 34 U~- Cin. L. Rey. 3

(1965): M. Niwa ER, Copynicur § 145 (1971 ed.) : Soprar &

Heritprin Reporr at lo: R. Weepiam, Tape Recorpine, Pro-

TOCOPYING AND Fain Usr, ASCAP Coryneur Law Syupo-

sttUmM (No. 10) 75 (1959) ; Crossland, The Dive and Full of

Fair Uses The Protection of Literary Vaterials Against

S. Carn. L. Rey. (1968). Some courts have held that the doc-

trine is but an application of the principle de minimis non

curat ler and, as plaintiff puts it, “comes into play only when

a relatively small amount of copying takes place.” Principal

factors considered by the courts in deciding whether a par-

ticular use of a copyrighted work is a “fair use” are (a) the

purpose of the use, (b) the nature of the copyrighted work,

relation to the copyrighted work as a whole, and (d) the

effect of the use on a copyright owner's potential market for

his work.” While these criteria are interrelated and may

<cetmmpetiriiabeic

“AR. Rep. No 92 Oth Cong, Ist Sess (1967). which relates to revision

of the copyright laws, notes that these factors are the ones used by the

courts. At 29-37, there is a detailed diseussion of “fair use” as applicable

to photocopying for educational purposes,

A. 41

vary in relative significance, the last one, 7.e., the competitive

character of the use, is often the most important, #.g.. it has

been held “fair use” to copy excerpts from literary works for

purposes of criticism or review (Loew's. Inc. v. CBS, Inc.,

131 F, Supp. 165, 105 USPQ 302 (S.D. Cal. 1955), aff'd sub

nom. Benny v. Loew's, Inc., 239 F. 2d 532,112 USPQ 11 (9th

Cir. 1956), aff'd by an equally divided Court, 356 U.S. 43

(1958)); or to copy portions of scholarly works (Greenbie

v. Voble, supra; Holdredge vy. Kn ight Publishing ¢ ‘OVP. 214

F. Supp. 921, 136 USPQ 615 (S.D. Cal. 1963)). However,

it is not “fair use” to copy substantial portions of a copy-

righted work when the new work is a substitute for, and

diminishes the potential market for, the original. W//7/ y.

Whalen & Martell, Inc., 220 F. 359 (S.D.N.Y. 1914) ; Folsom

v. Marsh, 9 F. Cas. 343 (D. Mass. 1841). And it has been

held that wholesale copying of a copyrighted work is never

“fair use” (Leon vy. Pacific Tel. & Vel. Co. 91 F. 2d 484, 34

USPQ 237 (9th Cir. 1937): Publie A Hairs Associates, Inc.

v. Rickover, 284 F. 2d 262, 127 USPQ 231 (D.C. Cir. 1960),

vacated and remanded, 369 U.S. 111 (1962)), even if done

to further educational or artistic goals and without intent

to make profit. Wihtol v. Crow, 309 F. 2d 777, 135 USPQ

385 (Sth Cir. 1962).

Whatever may be the bounds of “fair use" as defined and

applied by the courts, defendant is clearly outside those

bounds. Defendant's photocopying is wholesale copying and

meets none of the criteria for “fair use.” The photocopies are

exact duplicates of the original articles: are intended to be

substitutes for, and serve the same purpose as, the original

articles; and serve to diminish plaintiff's potential market

for the original articles since the photocopies are made at

the request of, and for the benefit of. the very persons who

constitute plaintiff's market. Defendant says, nevertheless,

that plaintiff has failed to show that it has been harmed by

unauthorized photocopying; and that. in fact, plaintiff's

journal subscriptions have increased steadily over the last

decade, Plaintiff need not prove actual damages to make out

its case for infringement. Macmillan Co., supra. Section 1498

of title 28 U.S.C. provides for payment of “reasonable and

entire compensation * * * including minimum statutory

damages as set forth in section 101(b) of title 17, United

States Code.” See Brady v. Daly, 175 U.S. 148 (1899): F. W.

A. 42

Woolworth & Co. v. Contemporary Arts, Inc., 344 U.S. 228

(1952). M. Niner, Coryrigut § 154 (1971 ed.). Moreover,

damage may be inferred in this case from the fact that the

photocopies are intended to supplant the original articles.

While it may be difficult (if not impossible) to determine

the number of subscription sales lost to photocopying, the

fact remains that each photocopy user is a potential sub-

seriber, or at least is a potential source of royalty income for

licensed copying. Plaintiff has set up a licensing program to

collect royalties for photocopying articles from its journals;

and among the licensees have been libraries, including a

Government library." Also, there is evidence that one sub-

scriber canceled a subscription to one of plaintiff's journals

because the subscriber believed the cost of photocopying the

journal had become less than the journal’s annual subscrip-

tion price; and another subscriber canceled a subscription,

at least in part because library photocopies were available.

Loss of subscription (or photocopying royalty) income is

particularly acute in the medical journal field. The record

shows that printing preparation costs are 50-65 percent of

total cost of publication and that the number of subscrip-

tions is relatively small. This simply means that any loss of

subscription sales (or royalty income) has the effect of

spreading publication costs over fewer copies, thus driving

up steeply the unit cost per copy and, in turn, subscription

prices. Higher subscription prices, coupled with cheap photo-

copying, tieans probable loss of subscribers, thus perpetuat-

ing a vicious cycle which can only bode ill for medical

publishing.

Defendant's amici fear that a decision for plaintiff will be

precedent for plaintifl’s seeking injunctions against non-

Government libraries, pursuant to 17 U.S.C. § 101 (a), there-

by interfering with the free flow of technical and scientific

information through library photocopying. On the basis of

this record and representations made by plaintiff's personnel

and counsel, that fear does not appexr to be justified. Plain-

"There is no agreement, even among libraries and Government agencies,

of what constitutes “fair use” in institutionalized phot copying. Th» Library

of Congress will not photocopy copyrighted materisls without permission

of the copyright owners. Many other libraries follow the General Interlibrary

Loan Code and engage in “single copy” photocopying. The U.S. Office of Ednea-

tion, through its Education Resources Information Center (ERIC) makes

available current edueational and research-related materials. ERIC will pot

copy copyrighted materials without permission of the copyright owner. See

Sophar and Heilpria report at 30-46

A. 43

tiff does not seek to enjoin any photocopying of its journals.

Rather, it merely seeks a reasonable royalty therefor.'? Its

licensing program would so indicate for, as far as the record

shows, plaintiff will grant licenses to anyone at a reasonable

royalty. No doubt, plaintiff would prefer that all of its jour-

nal users be subscribers. However, plaintiff recognizes that

this is unrealistic. Some articles in its journals are in greater

demand than others, and many journal users will not consider

it econoinically justifiable to subscribe to a journal simply to

get access to a few articles. Implicit in plaintiff’s licensing

program, therefore, is the idea that it is in the best interest

of all concerned that photocopying proceed without injunc-

tion, but with payment of a reasonable fee. That would ap-

pear to be a logical and commonsense solution to the problem,

not unlike the solution provided by the American Society of

Composers, Authors and Publishers (ASCAP) and Broad-

cast Music, Inc. (BM1) in the field of music and the perform-

ing arts. For a description of how ASCAP and BMI operate

in a context similar to this one, see /lear/ngs on ILR. 4347

and other bills before Subcomm. No.3, House Comm. on the

Tid iciary, S4th Cong., Ist Sess. 194, 203 (1965): Finkelstein,

ASCAP as an Evample of the Clearing House System in

Operation, 14 Copyrient Soc’y Burr. 2 (1966).

Defendant says that photocopying by NLM and the NIH

library is “reasonable and customary” because it complies

with a longstanding practice of libraries to supply photo-

copies of parts of scientific works to persons engaged in schol-

arly research, and is consistent with the terms of the “gentle-

men’s agreement.” earlier noted. The “gentlemen’s agree-

ment.” drafted in 1935, was the product of meetings and

discussions between representatives of the book publishing

industry and libraries. The representatives were interested

in working out a practical accommodation of the conflict

In his opening statement at trial, plaintiff's counsel said (emphasis

supplied) :

The ease hes nothing to do with the stopping of photocopying. The

Commissioner knows that an injunction {s not available in this court,

nor is plaintiff, in any case, seeking to curtail this use of its articles.

Similarly, William M. Passano, plaintiff's Chairman of the Board, stated in a

hearing before a Senate committee:

We feel that it is unrealistic and not in the public interest to consider

restricting in any way the use of photocopying devices. They serve a

useful purpose in the dissemination of knowledge. Since we, as publishers,

are in that business, we certainly don’t want to see the spread of knowl-

edge curtailed.

To us the only solution to the problem is a simple system of royalty

payments with a minimum of red tape. * * * [Hearings on Copyright Law

Revison before the Patents, Trademarks and Copyrights Subecomm. of the

Senate Comm. on the Judiciary, 90th Cong., Ist Sess. 976 (1967).]

RS UBDE NCA ER 7

A. 44

between (a) the legitimate interests of copyright owners not

to have their works copied without compensation and (b)

the needs of scholars and research workers for copies of

parts of copyrighted works for private use in pursuit of

literary or scientific investigation. The “agreement” was,

in effect, a promise by the book publishers not to interfere

with library photocopying under three conditions: (i) the

library must warn the person for whom the photocopy is

made that he is liable for any copyright infringement by

misuse (presumably by making further photocopies), (ii)

the photocopying must be done without profit to the library,

and (iii) the amount copied must not be so substantial as

to constitute an infringement. The third condition is implicit

in the “agreement” which says:

While the — 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”

— being dependent upon the type of work quoted

rom and the “fairness” to the author’s interest. Zz-

tensive quotation is obviously inimical to the author's

interest. * * * It would not be fair to the author or pub-

lisher to make possible the substitution of the photo-

stats for the purchase of a copy of the book itself either

for an individual library or for any permanent collee-

tion 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. [Emphasis supplied. ]

The “gentlemen’s agreement” does not have, nor has it

ever had, the force of law with respect to what constitutes

shows, the “agreement” has never been involved in any judi-

cial proceedings. Nevertheless, the “agreement” is entitled

to consideration as a guide to what book publishers and li-

braries considered to be “reasonable and customary” photo-

copying practices in the year 1935. It has little significance,

however, to this case. The agreement was drafted on behalf

of a book publishers’ organization which is now defunct and

to which plaintiff never belonged. In fact, it appears that no

periodical publishers were represented in the organization at

the time the agreement was drafted: and, consequently, the

“agreement” cannot speak for their interests or problems.

See the Varmer study at 51, n. 9 “arthermore, the “agree-

ment” was draiied at a time when photocopying was rela-

A. 45

tively expensive and cumbersome; was used relatively little

as a means of duplication and dissemination; and posed no

substantial threat to the potential market for copyrighted

works. Beginning about 1960, photocopying changed char-

acter. The introduction to the marketplace of the office copy-

ing machine made photocopying rapid, cheap and readily

available. The legitimate interests of copyright owners must,

accordingly, be measured against the changed realities of

technology. Professor Nimmer in his treatise Copyrigut cap-

sules the point at 653:

Both classroom and library reproduction of copy-

righted materials command a certain sympathy since

they involve no commercial exploitation and more par-

ticularly in view of their socially useful objectives.

What this overlooks is the tremendous reduction in the

value of copyrighted works which must result from a

consistent and pervasive application of this practice.

One who creates a work for educational purposes may

not suffer greatly by.an occasional unauthorized repro-

duction. But if every school room or library mayyby pur-

chasing a single copy,supply a demand for numerous

copies through photocopying, mimeographing or similar

devices, the market for copyrighted educational mate-

rials would be almost completely obliterated. This could

well discourage authors from creating works of a scien-

tific or educational nature. If the ‘progress of science

and useful arts’ is promoted by granting copyright pro-

tection to authors, such progress may well be impeded if

fair use. [Emphasis supplied. ]

In any event, the “gentlemen’s agreement” by its own terms

condemned as “not * * * fair” the making of photocopies

which could serve in “substitution” for the original work, and

further noted that “[o]rders for photo-copying which, by

reason of their extensiveness or for any cther reasons” could

serve as dupticates of the original copyrighted work “should

not be accepted.” Thus, the most that can be said for the

“gentlemen's agreement” is that it supported (and probably

still supports) the proposition, that it is “reasonable and

customary” (and thus “fair use”) for a library to photo-

copy fora patron a part of a book, or even part of a periodical

article, such as a chart, graph, table, or the like, so long as

the portion copied is not practically a substitute for the entire

original work. Other instances of library photocopying may

also be “fair use.” #.g., a library no doubt can replace dam-

———TT

A. 46

aged pages of copyrighted works in its collection with photo-

copies; can make a small number of photocopies for in-house

administrative purposes, such as cutting up for cataloging or

the like; or can supply attorneys or courts with single photo-

copies for use in litigation. In all those instances, and prob-

ably many more which might come to mind on reflection, the

rights of the copyright owner are not materially harmed. The

doctrine of “fair use” and the “gentlemen’s agreement,” how-

ever, cannot support wholesale copying of the kind here in

suit.’®

Defendant also contends that traditionally, scholars have

made handwritten copies of copyrighted works for use in

research or other scholarly pursuits; that it is in the public

interest that they do so because any harm to copyright owners

is minimal compared to the public benefits derived there-

from; and that the photocopying here in suit is essentially

a substitute for handcopying by the scholars themselves.

That argument is not persuasive. In the first place, defend-

ant concedes that its libraries photocopy substantially more

material than scholars can or do copy by hand. Implicit in

such concession is a recognition that laborious handcopying

and rapid machine photocopying are totally different in their

impact on the interests of copyright owners. Furthermore,

there is no case law to support defendant's proposition that

the making of a handcopy by scholars or researchers of an

entive copyrighted work is permitted by the copyright laws.

Certainly the statute does not expressly permit it; and no

doult the issue has never been litigated because, as a prac-

tical matter, such copying is de minimis and causes no real

threat to the copyright owner's legitimate right to control

duplication and dissemination of copyrighted works. The

photocopying done by NLM and the NIIFI library, on the

other hand, poses a real and substantial threat to copyright

owners’ legitimete interests, Professor Nimmer discusses

the point succinctly, at 653-54 of his treatise, and his lan-

guage can hardly be improved upon:

It may be argued that library reproduction is merely

a more modern and efficient version of the time-honored

practice of scholars in making handwritten copies of

18 The potential pernicious effects of modern, institutionalized photocopying

of copyrighted works, (particularly journal articles) in the name of “fair

use’ is discussed at length in the Sophar and Heilprin report. The authors,

at 24, characterize wholesale copying by libraries as ‘a non-violent form of

civil disobedience.”

Re!

Pee

A. 47

copyrighted works, for their own private use. In evaluat-

ing this argument several factors must be considered.

In the first place, the drudgery of making handwritten

copies probably means that such copies in most instances

are not of the complete work, and the quantitative in-

significance of the selected passages are such as generally

not to amount toa substantial similarity. Secondly, there

would appear to be a qualitative difference between each ,

individual scholar performing the task of reproduction

for himself, and a library or other institution perform-

ing the task on a wholesale basis for all scholars. If the

latter is fair use, then must not the same be said for a

non-profit publishing house that distributes to scholars

unauthorized copies of scientific and educational works

on a national or international basis? Finally, it is by no

means clear that the underlying premise of the above ar-

gument is valid.

There is no reported case on the question of whether

a single handwritten copy of all or substantially all of

a protected work made for the copier’s own private use

is an infringement or fair use. If such a case were to

arise the force of custom might impel a court to rule for

the defendant on the ground of fair use. Such a result,

however, could not be reconciled with the rationale for

fair use suggested above since the handwritten copy

would serve the same function as the protected work,

and would tend to reduce the exploitation value of such

work. Moreover, if such conduct is defensible then is it

not equally a fair use for the copier to use his own

photocopying or other duplicating device to achieve the

- same result? Once this is acknowledged to be fair use,

the day may not be far off when no one need purchase

books since by merely borrowing a copy from a library

any individual will be able to make his own copy through

photecopying or other reproduction devices which tech-

nological advances may soon make easily and economi-

cally available.

To the same effect is a statement in the Varmer study at

62-63:

It has long been a matter of common practice for

individual scholars to make manual transcriptions of

published material, though copyrighted, for their own

privaie use, and this practice has not been challenged.

Such transcription imposed its own quantitative

limitations; and in the nature of the event, it would not

be feasible for copyright owners to contrel private

copying and use. But reproduction for private use takes

on different dimensions when made by modern photo-

copying devices capable of ene quickly 2_y

volume of material in any number of copies, and w on

A. 48

copies are so made to be ry ar to other persons.

Publisher's copies are bought for the private use of the

buyer, and in some circumstances a person supplying

copies to others will be colupeting with the publisher

and diminishing his market.

Not only is such competition unfair to the publisher

and copyright owner, but it may be injurious to scholar-

ship and research, Thus, it has been pointed out that

widespread hotocopying of technical journals might

so diminish the volume of subscriptions or the journals

as to force the suspension of their publication,

Also, the Register’s Report notes at 25-26:

Researchers need to have available, for reference and

study, the growing mass of published material in their

particular fields. This is true especially, though not

solely, of materia] published in scientific, technical, and

scholarly journals, Researchers must rely on libraries

for much of this material. When a published copy ina

library's collections is not available for loan, which is

very often the case, the researcher's need can be met by

a photocopy,

On the other hand, the supplying of photocopies of

any work to a substantia] number of researchers may

diminish the copyright owner's market for the work.

Publishers of Scientific, technical, and scholarly works

have pointed out that their market js small; and they

have expressed the fear that if many of their potential

subseribers or purchasers were furnished with photo-

copies, they might be forced to discontinue publication.

Finally, defendant Says that it is unconstitutional to con-

strue the copyright law so as to proscribe library photocopy-

ing of scientific or technical writings because such photocopy-

ing is consonant with the constitutional purpose of copyright

“to promote the progress of science.” That argument misses

the mark. Article I, section 8, clause 8, of the U.S, Constitu-

tion grants to Congress the “Power * * # To Promote the

Progress of Science * * # by securing for limited Times to

Authors * * * the exclusive Right to their * * * Writings * * #9

The word “Science” js used in the sense of general knowledge

rather than the modern sense of physical or biologica} science,

See Rich, Principles of Pat utability, 28 Gro. Wasu, L. Rev.

393, 594-97 (1960): ILR. Rep. No, 1923, 824 Cong., 2d Sess, 4

(1952) ; S. Rep. No. 1979, 82d Cong., 2d Sess, 3 (1952). Con-

gress has exercised jts constitutional] power by enacting, and

revising from time to time, copyright statutes which are the

method of, and provide a system for, achieving the constity-

A. 49

tional purpose. The system “promotes progress” by encour-

aging authers to write and publicly disclose their writings;

by inducing publishers and entrepreneurs to invest risk capi-

tal in the dissemination of authors’ writings; and by requiring

other authors to create new writings, rather than plagiarize

the old, all of which is in the public interest. Mazer vy. Stein,

347 U.S. 201, 219 (1954), rehearing denied, 347 U.S. 949.

Congress has broad discretion under the Constitution to pre-

scribe the conditions under which copyright wil! be granted,

the only express restriction being that any “exclusive right”

must be for a “limited time.” Nothing in the present statute,

its legislative history or the case law suggests that Congress

intended to exempt libraries or others from liability for

wholesale copying of copyrighted works, whatever be the pur-

pose or motivation for the copying. What defendant really

appears to be arguing is that the copyright law should excuse

libraries from liability for the kind of photocopying here in

suit. That, of course, is a matter for Congress, not the courts,

to consider for it involves questions of public policy aptly

suited to the legislative process. In an analogous context in

Fortnightly Corp., supra. Justice Fortas noted at 408:

The task of caring for CATV is one for the Congress.

Ovr «x, being a rule of law, must cut straight, sharp, and

deep; and perhaps this is a situation that calls for the

compromise of theery and for the architectural improvi-

sation which only legislation can accomplish.

See also White-Smith Music Co., supra, where the Court

noted at 18, that “considerations [of what the copyright laws

should provide] properly address themselves to the legisla-

tive and not the judicial branch of the Government.” **

The license defense

Defendant says it is licensed to copy the Count T. IV, V,

and VI articles—by express license with respect to the Count

I article and by implied license with respect to the Count IV,

V and VI articles. The articles state on their faces that the

research work therein reported was supported, at least in

%* Tiere bas been no dearth of activity to revise the 1909 Copyright Act.

Some of that activity relates to Ibrary photocopying problems. See, e.g.,

Hearings on H.R. 4347 and other bills before Subcomm. No. 3, House Comm.

on the Judiciary, 84th Cong., Ist Sess. 448. 479, 1123 (1965); S. 597, HR.

2512, 90th Cong., Ist Sess. (1967); S 543, 91st Cong., 1st Sess. (1969);

8. Rep. No. 91-1219, 91st Cong., 2d Sess. 5 (1970): S. 644, 92d Cong., 1st

Sess. (1971). For a brief history of legisiative activity directed toward

revision of the 1909 Copyright Act, ece Fortnightly Corp., supra at 396 n. 17;

UCLA Project at 931-38.

A. 50

part, by grants from defendant’s Public Health Service. py

way of background, the Public Health Service, through its

Division of Research Grants, has for many years made

grants-in-aid of public funds to physicians and scientists

engaged in medical research. The grants are characterized by

the Public Health Service as “conditional gifts” and are

made annually on the basis of research proposals submitted

to the Public Health Service by prospective grantees. Once a

grant is made, the grantee is free to use the funds as he sees

fit. The grantees are not Government employees nor are they

in the service of the United States, and the Public Health

Service does not supervise the research work. Typically,

grantees use the funds to purchase equipment and supplies,

pay salaries of technicians, pay travel expenses, and the like.

From time to time, the Division of Research Grants issues

policy statements setting out the conditions of the grants,

including the rights and responsibilities of grantees with re-

spect to patent and copyright matters. All grants are awarded

subject to the express patent and copyright policy in effect

at the time of the grant, unless the Public Health Service

indicates otherwise.

Prior to July 1, 1965, it was the express policy of the Pub-

lic Health Service not to reserve to the Government any

rights in copyrighted publications stemming from grant-

funded research. The policy statement in effect between 1956

and 1959 said that when a grant was made “without condi-

tion.” any “books or related matter” could be “published pri-

vately” and the author was free to make arrangements with

a publisher “as if the Government had not contributed sup-

port.” |Emphasis supplied.] Subsequent policy statements,

issued in 1959 and 1963, though worded differently, were to

the same effect and continued the earlier policy. Then, on

July 1, 1965, the policy was modified. For all grants awarded

after that date, the Government reserved a royalty-free li-

cense to “reproduce * * * translate * * * publish * * *, use

and dispose of” any copyrighted publications resulting from

“work supported by the Public Health Service.” Grantees

were still free, however. to arrange for publication and copy-

right, in the first instance, without approval of the Public

Health Service.

The Count I article was coauthored by Dr. Victor A. Me-

Kusick who for many years received Public Health Service

454-788—72__4

A. 51

funds to support his research. The article reports the results

of research work supported in part by such funds and in

part by private funds. The manuscript for the article was

submitted to the editor of Medicine on August 19, 1964, but

was not published until December 9, 1965. Between those

dates, the manuscript was edited and augmented from time

to time. Defendant contends that the article reports research

work done under Public Health Service funds awarded after

July 1, 1965; and that consequently, the Government has

an express license to copy the article pursuant to the Public

Health Service's post-July 1, 1965 copyright policy.

The record does not support defendant. The evidence s) ows

that between August 19, 1964 and mid-1965, the authors made

minor changes in the manuscript to reflect continuing re-

search on the project reported in the manuscript. However,

after mid-1965 (i.e., July 1, 1965), no substantive changes

were made in the manuscript. Any changes made were, at

most, editorial in nature. Accordingly, defendant has failed

to show that the Count I article reports research work done

With Government funds granted after July 1, 1965; and the

Government does not have an express license to copy the

article.

There remains to @>cide whether the Government is im-

pliedly licensed to copy the Count IV, V and VI articles.

published in the Journal of Immunology in August 1965. The

manuseripts were received by the publisher in December 1964.

Defendant does not contend that the articles report research

work done under funds awarded by the Public Health Serv-

ice after July 1, 1965, and therefore does not contend that the

Government has an express license to copy. Rather, defend-

ant says that it has an implied license to copy because the

Goverrmeat provided “substantial funds * * * to the au-

thors of the articles to support the very research work re-

ported in these articles,” and that a license to copy should be

implied on “general equitable principles to avoid injustice.”

In another but analogous context, this court has held that

when the Government provides funds to contractors for

research and development, it is entitled to a license to use

any inventions resulting therefrom, even in the absence of

an express patent license clause in the contract. Ordnance

* Though not urged by defendant, its arguments for implied license apply

equally to the Count I article.

A. 52

Eng’r Corp. v. United States, 68 Ct. Cl. 301, 353 (1929) ; Mine

Safety Apovliances Co. v. United States, 176 Ct. Cl. 777, 789,

364 F. 2d 385, 392, 150 USPQ 453, 459 (1966). This court has

also held that it will liberally construe patent license clauses

in Government research and development contracts so as to

grant to the Governinent licenses to use inventions developed

thereunder. AMP Jne. v. United States, 182 Ct. Cl. 86, 389 F.

2d 448, 156 USPQ 647 ( 1968), cert. denied, 391 U.S. 964.

However, an implied license to use patented inventions will

not be found when a contract contains express language to

the contrary. Kastern Rotorcraft Corp. v. United States, 181

Ct. Cl. 299, 384 F. 2d 429, 155 USPQ 729 (1967). Similarly,

if the Government has an established policy limiting its rights

in proprietary property, that policy will not be overridden

retroactively, even on equitable grounds. Tektronix, Ine. v.

United States, 173 Ct. Cl. 281, 351 F. 2d 630, 147 USPQ 216

(1965).

This case, of course, is fundamentally different from patent

license cases because the Public Health Service grants, being

“conditional gifts.” are not contracts in the same sense as

Government supply contracts or research and development

contracts. Nevertheless, the rationale applicable to patent

license cases would a ppear sound here because the grants are

made subject to compliance by grantees with express condi-

tions and policies of the Government, through the Public

Health Service. Viewed in that light, defendant cannot pre-

vail. The Public Health Service had an established and

express policy, prior to July 1, 1965, under which it reserved

neither title to, nor any rights whatsoever in, publications

stemming from Public Health Service grants. Copyright

matters were to be dealt with “as if the Government had not

contributed support.” It is hard to conceive of language which

more plainly disclaims any reservation of rights to the Gov-

ernment. After July 1, 1965, the Public Health Service ex-

pressly changed its policy; and no doubt the Government is

licensed to copy, without royalty, publications stemming from

awards granted thereafter. In sum. defendant has neither an

express nor implied license to copy the Count I, IV, V, and

VI articles.

It is pertinent to note that resolution of this issue in plain-

tiffs favor should be of minor practical consequence to the

Government’s future copying of articles stemming from Pub-

A. 53

lic Health Service-funded research. The Sophar and Heilprin

report found that 85 percent of the material photocopied by

U.S. libraries is less than 5 years old, and 90 percent is less

than 10 years old. Since the Public Health Service’s express

license policy is nearly 7 years old, most of the Government’s

prospective copying (as well as its copying for the past year

or so) of articles stemming from grant-funded research, will

be of articles which resulted from grants awarded subsequent

to July 1, 1965, and will therefore be royalty-free.

Iil

Several other points raised by the parties merit comment.

Defendant notes that the National Library of Medicine Act

by which NLM was created (42 U.S.C. § 275, et seq.) pro-

vides at § 276(4) that the Secretary of Health, Education,

and Welfare, through NLM, shall “make available, through

loans, photographic or other copying procedures or otherwise,

such materials in the Library as he deems appropriate

* * *”: and that the Medical Library Assistance Act of 1965

(42 U.S.C. § 280b-1, e¢ seg.) provides that grants be made to

medical libraries for, among other things, “acquisition of

duplicating devices, facsimile equipment * * * and other

equipment to facilitate the use of the resources of the li-

brary.” 42 U.S.C. 280b-7. Defendant suggests that by those

statutory provisions Congress intended to exempt NLM and

other grantee libraries from the copyright laws. As defendant

puts it, “* * * the orly reasonable interpretation [of the

statutes] is that Congress knew that fair use would exempt

such libraries from copyright infringement in the established

use by libraries of such [photocopy] equipment.” There is no

merit to this. Nothing in the statutes or their legislative his-

tories says anything about the copyright Jaws, and it cannot

be inferred that Congress intended the statutes to be in der-

ogation of the copyright laws, absent an express indication

to the contrary.’® See generally, E. Crawrorp, SrarvtTory

Construction § 227 (1940). No court has ever held that “fair

use” applies to library wholesale photocopying; nor has there

been a uniform and unchallenged policy among libraries and

other institutionalized photocopiers on the bounds of “fair

Cong., 2d Sess. (1956) ; H.R. Rep. No. 1026. 89th Cong., Ist Sess. (1965) ;

S. Rep. No. 756, 89th Cong., Ist Sess. (1965).

A. 54

use.” See note 11. Thus, it makes no sense to impute to Con-

gress an intent for which there is no sound basis in judicial

decision, or otherwise. The fact that the statutes authorize

the libraries to make use, generally, of photocopying equip-

ment and procedures, is not controlling or even very sig-

nificant. Much material in library collections is either not

copyrighted or is material on which the copyright has ex-

pired; and in either event, the material is in the public

domain and can be freely copied.

Furthermore, the record shows that NLM, from the be-

ginning, has been concerned about complying with the copy-

right laws and has never considered itself exempt therefrom.

In 1957, NLM’s Board of Regents discussed the library’s pho-

tocopying practices and deemed them to create vexing copy-

right infringement problems. The Director of NLM was of

the opinion that “sooner or later” the problems would bring

“a test of the issue in the courts. ”

Defendant suggested at trial that payment of compen-

sation to plaintiff for photocopying its journals would create

a continuing undue and oppressive administrative and finan-

cial burden on NLM and the NII library. Defendant has

not pressed the point in its brief. perhaps because it is clear

that plaintiff's right to compensation under 28 U.S.C.

$ 1498(b) cannot depend on the burdens of compliance,

Nevertheless, defendant's point merits comment since courts

should be mindful of the practical consequences of their de-

cisions. Based on this record, defendant’s fears are not justi-

fied. Poth NLM and the NIH library already have adminis-

trative procedures by which they keep detailed records of pho-

tocopying. Both libraries require that written request slips be

submitted by requesters of photocopies. The slips are a per-

manent record of the journals and pages photocopied. It

would seem a routine. albeit tedious, matter to cull from

those records the information necessary to caleulate a reason-

able royalty on the basis of the number of articles copied,

or perhaps to come up with an acceptable formula for es-

tablishing a blanket annual royalty payment. Indeed. the

evidence suggests that this is so. In 1967, NLM temporarily

stopped photocopying articles from plaintifl’s journals, as a

result of plaintiffs charge of copyright infringement and

requests for a reasonable royalty. NLM was able, as a practi-

cal matter, to flag all requests for photocopies from plaintiff’s

A. 55

journals from April 27, 1967 to May 29, 1967, in order to re-

frain from copying them. On about May 29, 1967, photo-

copying was resumed and was monitored for about 90 days.

Satisfied that the 90-day period was a representative sample,

NLM found that it would have paid plaintiff about $250-

$300 if it had acceded to plaintiff's request for royalty pay-

ment. The Director of NLM testified that, in his opinion,

this was “a very small sum—surprisingly small sum.” Simi-

larly, the NIH librarian testified that payment of royalties

for photocopying “has nothing to do with the operation of

the library in the fulfillfment of * * * [its] function. It

is an economic and budgetary consideration and not a serv-

ice-oriented kind of thing.”

Nor does it appear that payment of royalties to other pub-

lishers will create an undue or oppressive administrative

burden. The Sophar and Heilprin report notes, at 58-60, that

based on a study of the photocopying practices of U.S. libra-

ries, less than 1,000 publishers provide the material photo-

copied by libraries, and that about 5 percent of that number

provide about 40 percent of the material copied. This simply

means that nearly half of the materials photocopied emanate

from about 50 publishers. No doubt, the materials photo-

copied by NLM and the NIH library come from an even

smalier number of publishers since those libraries are highly

specialized. In any event, by using modern management

practices including computers and the like, it would appear

that NLM and the NTH library can, with minimum disrup-

tion, cope with the necessary recordkeeping.*”

“Tt has been suggested that there be established a clearinghouse for access,

permissions and payments for photocopying of copyrighted materials. The

clearinghouse would relieve institutional copiers of the burdens of royalty

distribution and might also be instrumental in setting up blanket royalty

arrangements, thus relieving the institutions from most recordkeeping require-

ments. See, e.g., the Sophar and Heilprin report at S82. The clearinghouse

concept has also been ailuded to in a congressional report:

* * * Despite past efforts, reasonable arrangements involving a mutual

understanding of what generally constitutes acceptable library practices,

and providing workable clearance and lice nsing conditions, have not been

achieved and are everdue. The committee urges all concerned to resume

their efforts to reach an accommodation under which the needs of scholar-

ship and the rights of authors would both be respected. [Emphasis sup-

plied.] [H.R. Rep. No. 83, 90th Cong., Ist Sess. 26 (1967).]

And it is interesting that Sophar and Heilprin found that librarians favored,

two to one, the clearinghouse approach to the problem, even though many of

those in favor “indicated a desire to settle au increasingly complex matter,

rather than an enthusiastic approve! of the idea.” Sophar and Hetiprin report,

at p. v of the Summary.

A. 56

Postscript : The issues raised by this case are but part of a

larger problem which continues to plague our institutions

with ever-increasing complexity—how best to reconcile, on

the one hand, the rights of authors and publishers under the

improvements in copying techniques and the legitimate pub-

lie need for rapid dissemination of scientific and technical

literature. The conflict is real; the solution not simple. Legis-

lative guidelines seem appropriate.'® The Sophar and Heil.

prin report, at pp. virr-1x of the Summary, capsules the prob-

Jem in a statement worth quoting:

From the viewpoint of the information scientist, -opy-

right may appear as an impediment to the most efficient

flow of information, It is apparently a blockage in an

information system. Our early tendency was to Oppose

and try to limit the protection and contro] granted in

sis we no longer do,

There is a philosophical reason for not wanting to

see copyright doitnwred and there are a number of prac-

tical reasons. The philosophical reason is simply a belief

that copyright is one of a number of ways in which our

society expresses its belief and hope that an individual

can continue his identity in a world of mass efforts b

assuring the individual, his publisher or his association

suflicient income from his ideas to maintain a degree of

independence. The erosion of the economic value of co »V-

right must lead to federal] support of all kinds of writing

and, of course, contry!.

The practical reasons flow from the philosophical rea-

sons. Publishers, Pon-profit as well as commercial, will]

simply not be able to continue publishing under an eroded

system. The scientific and other professional societies

which, through their memberships. have done the most

to develop information-handling tools and media are

the ones most hurt by them. A means must be developed

to assure payment to the copyright owner in return for

*In 1969, several bills were introduced in both the Senate and House to

establish a National Commission on Libraries and Information Science. Also

in 1969, H.R. ssog was Introduced to provide for a “National Science Research

Data Processing and Information Retrieval System.” See 1969 Register of

Copyrights Annual Rep. 6. Earlier, in 1967, the Senate enacted S. 2216, 90th

Cong., 1st Sess , by which there would be created a commission to Study and

compile data on the reproduction and use of copyrighted works. The House

took no action on the bill.

A. 57

unlimited and uncontrolled access to and duplication of

the copyrighted work.

Our only concern and “vested interest” in copyright

since we became interested in the problem “is to find a

way to protect the ‘exclusive Right’ of ar. author to his

‘Writings,’ while permitting the advantages of modern

information dissemination systems to become as useful

as they may without weakening or threatening the eco-

nomic urge and the need to create.” We believe the two

must become reconciled, not in the interests of compro-

mise, but simply because both concepts are too valuable

for either one to be permitted to severely harm or de-

stroy the other.

Finpincs or Facr

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 pub-

lisher 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.

Reville.

3. The Government agency accused of infringement is the

Department of Health, Education, and Welfare, in particu-

lar the National Institutes of Health (NIH) and the Na-

tional Library of Medicine (NLM). NIH and NLM are lo-

cated in Bethesda, Maryland.

1. Phe 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 unauthorized photocopying

of one journal article, identified below as Count VIII. The

articles, and the journals in which they were published, are

as follows:

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A. 59

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.¢., not in con-

junction with a professional society. The journal Pharma-

cological Reviews is and has been published by plaintiff since

1909 in conjunction with the American Society for Pharma-

cology and Experimental Therapeutics. The Journal of

Immunology 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 copy-

right 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 Jed

to no problems in dealings between plaintiff and the socie-

ties with respect to copyright matters. So far as the record

shows, the parties to the contracts consider it the responsi-

bility of plaintiff to enforce the copyright by granting li-

censes or instituting appropriate Jawsuits.

(b) The agreement relating to copyright between plaintiff

and the American Society for Pharmacology and Experi-

mental Therapeutics (ASPET), under which agreement

Pharmacological Reviews is published, provides as follows:

hd * * ~ *

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. Pro-

curement 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 ex-

cerpts from the periodical after publication but such

excerpting shal] not be s: substantial as to interfere

with the sale of the periodical.

* * ~ * *

10. REVERSION OF RIGHTS. In case of bank-

ruptey, assignment for henetit of creditors. or liquida-

tion for any cause of the Publisher, or upon termination

A. 60

of this Agreement for any cause stipulated herein, all

rights conveyed under this Agreemeni by the Society to

the Publisher shall revert to the Society forthwith.

* * * % a

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.

American Association of Immunologists (AAT) and plain-

tiff, under which agreement the Journal of Immunology is

published, provides as follows:

» * * * * *

5. PROCUREMENT OF COPYRIGHT. 'Vhe Asso-

ciation is the owner of the periodical but for the conven-

ience 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 ‘f at any

time in the future this seems desirable. | Emphasis

supplied. }

* x * * *

The agreement was in effect at al] times here material. There

is no evidence that AAT ever exercised its right to have as-

signed to it by plaintiff the ownership of any copyright regis-

tration in the Journal 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 Asscciation (AGA) and plain-

tiff, under which agreement Gastroenterology is published,

provides as follows:

x * * * *

(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 mate-

rial published in the said Journal, and to publish the said

work in all Janguages during the term of the copyright.

* * * * *

The agreement has been in effect since 1942. There is no 2vi-

dence that AGA objected to, acquiesced in, or was in any way

involved with, the bringing of this suit by plaintiff.

A. 61

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 copy-

the name “The Williams & Wilkins Company,” and the year

of publication affixed to the title page of, and elsewhere on,

each journal. In due course, the Register of Copyrights issued

to plaintiff, with respect to each of the journals, the following

certificates of registration:

Certificate of

Journal Registration

Number

Medleine, Vol. 44, NO. 6.2... 2. 2c cscs ccccer cer scceccccsercccsccesce: concerns B 231973

Pharmacological Reviews, Vol. 15, No. ?....--.----+-----+---2--20-2- eee neeeee B 49574

The Journal of Immunology, Vol. 95, No. 2.....---------- -+--+++---------- B 216408

Gastroenterology, Vol. 32, No. 6......--------------- Lane cavedotaridabniasonre B 663158.

Medicine, Vol. 9B, NO. 42. 22.2. cccccccccccecer nnn scccocecenecsesecrcceecces B 809926

(b) Only the issue of liability is now before the court;

accounting, if any, is reserved for later proceedings. De-

fendant admits that at least one photocopy of each of the

Count I-io-Count VIII articles was made by defendant's

NIH or NLM without authorization cf plaintiff within the

pertinent accounting period, as follows:

Article Date Name of

Photocopied Requester

COURE To deccwcudessacsesedsdcavuvedias sapladgeoas jacpadesne 9/29/67 Backman

BD O. cretanstavbdddsdsdedviesevddebaseptuarddnavets vases 10/5/67 Gabor

Bo Go cdudacecoetetiusussenvaddgewddersasdesiiataegede 10/19/67 Backman

COMME TL . cccvcccacesccecaddactesiapdaapundccsvssversesateeee 9/29/67 McCallum

Cott TEE 5 oc ccccsecsscccsdcccsccadeseesscsseseseesasasesse 9/27/67 MeEnany

CE BY ob ncdicctrndddrddddedasecdsacodadssnéucverdacetenseds 9/27/67 McEnany

«* Pc andevecuahddnosus sathediatebedessnddous B voebindee 11/13¥67 Reynolds

GORE ip ccowsddeumicbideridgddtsacnybaaes sandy vlleddawdsdes 9/27/67 McEnany

DO seunsbdddkucadstatererisestxddendeecaventadakiaeeve 11/13/67 Reynolds

Cote VE a cceseccnveccvasstccustess sevdenivaesedasédeneenne 0/77/67 McEnany

CE WE a c ccciacdatsatdnsneusnedésdssnzrdossducusaccesios 10/12/67 Bird

Count VEEL. 2 ccc cccsscccescosssscesosess sudicaadwen sense 1/11/68 Pitcher

i W pdouddduthediateaviddesindstadetsinieacesdsedsane 12/68 Young

The persons named above as “Requester” are all physicians

ar other professional medical personnel who requested from

NIH or NLM copies of the articles in connection with med-

‘ical research work or patient care at NIH or elsewhere. The

copies were retained by the requesters who, for the most

A. 62

part, kept them in personal files aS permanent documents for

later reference and use, or put them in files available for use

by coworkers or colleagues. 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 ad the

annual subscription prices for the journals involved in this

suit are as follows:

SO CLA Eat taney

Approximate

Tournal Number of Price

Subseriptions

deans picinnaa nents ae sinister iae

ecw ines tetany 5, 400 $12.00

Pharmacological re cctcnteevszssosuas,... ead bia sree 3, 100 15.00

Journal of OND ce ninintninstvicicnnicctc 4,700 1 22.00

344.00

Gastroenterology PORATION Ne Caen Ree abiip ron o: Silige 7, 000 142.50

3 25. 00

i a aa ee a

1 Members.

2 Nonmembers,

8. Plaintiff's journals, noted in finding 7, are widely dis-

tributed in medical libraries throughout the country, are

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 pub-

lication in an appropriate journal, The considerations which

influence a contributor of a manuscript as to the journal to

which to submit the manuscript include (i) the subject mat-

ter and length of the manuscript, (ii) the quality of articles

published in the journal, (ili) 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. £.g., Gastroenterology is considered

the outstanding journal in its speciality field in the United

States and probably in the world. Contributors submit man-

A. 63

uscripts 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 edit-

ing 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 so-

ciety appoints the board of editors. The editors are respon-

sible 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. Revenues from plaintiff’s

journals are derived largely through subseri ption sales and

also through advertising. The American Gast roenterological

Association and the American Association of Immunolog-

ists get 50 percent of the profits from Gastroenterology and

the Journal ef Immunology, respectively. The American So-

ciety 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. (a) Authors whose manuscripts are accepted and pub-

lished 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, compensated when plaintiff publishes

their works by enhancement. of their professional status, in

that their works are screened by highly critical editors and

are published in journals having wide dissemination and

high reputation. A uthors, therefore, submit manuscripts to

plaintiff for dual Purposes : to disseminate medical informa-

tion for the public welfare: and to seek recognition from the

scientific community from which flows increased professional

and economic opportunity. Most articles published in plain-

tiffs 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 jour-

nal publisher,

A. 64

(b) Ordinarily, there is no written agreement entered into

between plaintiff and the authors of submitted manuscripts

with respect to ownership of articles stemming from the man-

uscripts. However, by longstanding custom and absent any

written or oral agreement to the contrary, an author who sub-

mits a manuscript for publication in a medical or other scien-

tific journal assigns to the owner of the journal (i) the au-

thor’s proprietary rights in any article stemming from the

manuscript, (ii) the right to secure statutory copyright in

any such article, and (iii) the right to enforce the copyright

under the Federal copyright laws. There is no evidence that

the authors of the articles in suit, or any like authors, ever

questioned or challenged the ownership rights of plaintiff,

or any like publisher of journal articles, or the right and

authority of plaintiff, or any like publisher, to secure and en-

force the Statutory copyright in such articles.

11. Authors whose articles are published by plaintiff usu-

ally 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 request-

ing them, Depending upon the importance of, and profes-

sional interest in, a particular article, al] 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; 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, as a matter of courtesy, and ask

permission of plaintiff. as the copyright owner,

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 educa-

A. 65

tional and medical institutions, and improved biomedical

communications. Generally, three types of activities are

carried on by NIH: education and manpower training;

communication of medical information; and research con-

ducted by the various institutes, Research, as well as educa-

tion and manpower training, is performed by Gevernment

employees of the institutes and also by private persons and

organizations supported by NIH grants, Biomedical com-

munication is the function of NLM. (Finding 20.) NIH

employs over 12,000 persons, 4,000 of whom are profes-

sionals and 2,000 of whom have doctoral degrees. In fiscal

1970, NIH 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 Fed-

eral 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 con-

tributed nearly two-thirds,

13. A library is essential to the conduct of medical research.

A principal product of research scientists is their publica-

tions and publication of results is a vital part of research.

NIH maintains and operates a teennical 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 dif-

ferent journal titles, of whieh 600 are purchased in multiple

copies. The functions of the NIH library inelude acquisi-

tion, 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 sery-

ice, and a library copy service. The library's budget for 1970

was about $1.1 million,

14. The NIH library subseribes 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.

15. As an integral part of its operation, the NIH library

Operates a comprehensive system of providing photocopies

A. 66

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 Recordac micro-

film 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 ac-

cording 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 jour-

nal articles, constituting about 930,000 pages. The average

request was about 10-12 pages and the average cost per re-

quest was about $1.

16. Photocopying services of the NIH library are avail-

able only to NTH personnei. Members of the general public,

while they may use the library, are not permitted to have

materials photocopied. Two kinds of service are provided:

over-the-counter and by mail. To get a photocopy, the re-

quester 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 li-

brary subscribes to but one copy of a journal, that copy is

maintained in the library for the use of readers. If the li-

brary subscribes to a secor.d 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-

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,

A. 67

and in fact have been, made in the case of long articles. Also,

as a general rule, requests for photocopying are limited to

only asingle article from a journal issue. However, exceptions

to this general rule are routinely made, so long as substan-

tially less than an entire journal is photocopied, é.¢., less than

about half of the journal. Coworkers 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 sin-

gle 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, be-

cause of the large volume of photocopying done by the li-

brary, 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.

18. Asa general rule, books (or monographs) which carry

a copyright notice are not photocopied by the NIT library,

even to the extent of a short chapter, without permission of

the copyright owner. However, under special circumstances

(the details of which are not clear from the record) and

upon authorization of library supervisory personnel, excep-

tions are sometimes made to this rule to the extent of copy-

ing smal] portions, ¢.g.. charts or graphs, from books (or

monographs).

19. Materials (/.e.. books and journals) not owned by the

NIH library, and which are requested by users, are obt ained

by means of interlibrary loan. When an interlibrary loan is

requested, the standard interlibrary loan form is used. Ba-

sically, the NIH library applies to interlibrary loan requests

the same restrictions on photocopying as are applied to re-

quests filled internally.

A. 68

20. (u) The mission of NLM is the exchange and dissemi-

nation of medical information. NLM began as the library

of the Surgeon General of the Army, which was founded in

1836. Later such Tibrary 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 U.S.C. $§ 275-280a (1970 ed.)

which, in relevant part, reads as follows:

§ 275. Congressional declaration of purpose; estab-

lishment.

In order to assist the advancement of medical and re-

lated 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 Li-

brary 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, index-

ing, and bibliographical listing ;

(3) publish and make available the catalogs, in-

dexes, and bibliographies referred to in clause (2)

of this subsection:

(4) make available, through loans, photographie

or other copying procedures or otherwise. such ma-

terials 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 Libre ry’s resources permit.

* * *~ * *

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 re-

search or its bibliographic, reference or other services,

to public and private agencies and organizations, institu-

tions, and individuals. Such rules may provide for

A. 69

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 appro-

priate circumstances, under contract arrangements made

with a public or other nonprofit ageney, 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 Medi-

cme © © *

(hb) Duties of Board; * * *

It shall be the duty of the Board to advise, consult

with, and make recommendations to the Secretary on im-

portant matters of policy in regard to the Library, in-

cluding 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 mate-

rials, 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 implement-

ing 42 U.S.C, § 276(e).

nals and the like relating to health and medicine to assure

that all medical literature is available at one place. In addi-

tion to acquisition, NLM indexes and catalogs medical litera-

ture by means of /ndexr Medicus, which is a compilation of

citations to about 2.400 leading biomedical journals. Jndex

Medicus is sold to the medical profession and enables med-

ical practitioners to keep abreast of the current medical

literature. NLM’s catalog announces new publications and

acquisitions by the library, thus providing a ready refer-

ence for other libraries.

21. (a) NILM has five operating components. one of which

is called Library Operations. The Reference Services Divi-

sion of Library Operations is responsible for administering

the interlibrary loan system, which is a svstem whereby one

library may request materials from other libraries. NLM

also receives requests for loans of materials from Govern-

ment institutions, medical schools, hospitals, research founda-

tions, private physicians, and private companies including

drug companies. NLM provides the same service to com-

A. 70

mercial 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, NILM determines

whether to loan out the original material or to make photo-

copies of the material. As a general rule, articles from jour-

nals, 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 Joan or photocopy is furnished free of charge.

(b) To make photocopies, NLM uses mobile 35-mm. micro-

film 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 photo-

copies are made by such microfilm technique. In fiscal 1968,

NLM received about 127.000 requests for interlibrary loans,

of which about 129,000 were filled by photocopying. Apply-

ing 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

by libraries and other institutions throughout the United

Staces. The loan form, as a general rule. must be signed by

a librorian. Tlowever, NLM will at times honor requests from

individuals (e.g., physicians) or nonlibrary institutions.

Upon receipt of requests for interlibrary loans, NILM stamps

the requests by date and time, counts them for statistical pur-

poses, 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 generaily referred to

the appropriate regional library, and the requester is advised

to subinit future requests to the appropriate regional library.

NLM’s stated policy in recent years is not to fill requests for

cop.es of articles from any of 104 iournals which are ineluded

on a so-called “widely-available list.” Rather, the requester

A. 71

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 rejec-

tion 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.”

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

exceptions are sometimes made, particularly for Government

institutions. Requests 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 fur-

nished and the requester advised that it is NLM’s policy to

furnish only one copy. Generally, requests for photocopies

from books (or monographs) are rejected. NLM lends books

(or monographs) for limited periods of time. In special cases

(the details of which are not clear in the record), small por-

tions 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 state-

ment 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 sub-

ject to compliance with the following regulations and in-

structions and the provisions of the General Interlibrary

A. 72

Loan Code. A large number of titles should not be re-

quested 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 sent instead of original material

will be supplied without charge to requesting libraries,

Pheteduplicates may be retained permanently by the

borrowing library, unless return is specifically reouested

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 yol-

umes may be considered under special photographic

services,

5. Original material will not be lent outside the United

States,

METHOD OF 1K IRROWING

1. Borrowing libraries will submit typed requests on

the Interlibrary Loan Request form approved by the

Americen Library Association, Requests 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 ona separate form,

2. Order of citation must follow directions on the In-

terlibrary Loan Request form.

%. Each request must be authenticated. in handwriting,

by authorized personnel in the borrowing library. Un-

signed requests will be returned.

4. It is expected that under all but the most unusual

cireumstances librarians will avail themselves of the re-

sources of ther region before directing requests to NLM.

* mw a * *

SPECIAL PHOTOGRAPHIC SERVICES

1. Special photographie 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 vie-

torial work; text and line drawings; facsimile reproc uc-

tions; long runs of periodicals to complete holdings,

A. 73

2. Advance payment is required for all such photo-

copying when the requests emanate from outside the

Federal Government. Orders for materials in which

there is a question of copyright restriction will not be

accepiod for special photographie service without an

accompanying permission statement from the copyright

owner.

(b) NLM operates its interlibrary loan system in ac-

cordance with the General Interlibrary Loan Code, as re-

vised in 1956. The Code states in pertinent part:

IX. Photographic Substitution

1. Time may be saved in filling the readey’s request

if, in the application for a Joan, willingness iv indicated

to purchase a photographie reproduction as a satisfac-

tory substitute should the original material be unavaila-

ble for interlibrary loan. This is especially applicable to

periodical and newspaper articles and to typescript

theses,

2. The type of photographic duplication (as a sub-

stitute) that is teceptable (¢.9., photostat: microfilm—

negative or positive: record print: ete.) and the maxi-

mum price the borrowing library is willing to pay ean

appropriately be indicated on the original request, If

preferred, the lending library may be asked to uote the

estimated cost of such « substitution before fi ling the

order.

3. Photographie duplication in lien of interlibrary

loan may he complicated by interpretations of copy-

right restrictions, particularly in regard to photograph.

ing whole issues of periodicals or books with ewry. nf

copyrights, or in making multiple copies of a

publication.*

4. Any request, therefore, that indicates acceptability

of a photographie substitution, under the conditions de-

scribed above, should he accompanied by a statement

with the signature of the applicant attesting to his re-

sponsibility for observing copyright provisions in his use

of the photographie copy.*

5. Requests indicating neceptability of photographic

substitute in lieu of interlibrary loan’ that comply with

the above provisions are to he considered Lona fide or-

ders for copying services, The lending library, if

equipped to do so, may fill such orders with no further

correspondence or delay,

neces

*These Statements on photographie substitutions are based on the “Gentle.

men's Agreement” written in 1925 by the National Association of Rook Pub-

lishers (reaffirmed in I938 by Its successor the Book Public hers Bureau) and

the Join Committee on Materials for Research (representing the libraries),

For the rext of this agreement see the Journal of Locumentary Reproduc tion,

2529-20, March 1939. [Finding 41 }

A. 74

24. Photocopies at NLM, for interlibrary loa. ULrposes, are

prepared using a microfilm camera and a Xerox Copy-Fle

machine. Copying for in-house administrative purposes, over-

sized 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 Me+icine for purposes of study or research

in lieu of lending the original.

25. Since 1966 through 1970, there has been a steady de-

cline in the amount of material or number of requests filled

for photocopies through the interlibrary loan program of

NLM. In 1969, the number of interlibrary loan requests filled

was 110,575 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 manner 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 sup-

ported in part by grants awarded to the authors by the Public

Health Service of NIH.

27. The Division of Research Grants of the Public Health

Service is a service organization to NIH. Applications for

grant support from NIFH come to the Division of Research

Grants, which determines the institute of NIT to which they

shall be referred and the review group to which the applica-

tion shall be assigned. Such group then reviews the applica-

tion and determines its scientific merit, and also reviews the

application's proposed budget with respect to, Od Salaries

for personnel, equipment, supplies and services, travel funds

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