# Appendix — Williams & Wilkins Co. v. United States

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1975
- **Citation:** 420 U.S. 376

## Text

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
copyright in said contribution by publishing it, with the notice
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
Copyright Law.

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
Copyright Law.

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
copyright in said work.

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.

ee

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
copyright in said contribution by publishing it, with the notice
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
copyright in said contribution by publishing it, with the notice
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,
v.

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,
v.
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.

Ay

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.

X

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.

(c) The periodical contribution alleged to be infringed in
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,

(c) the defendant through its Department of Health,
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,
v.
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:

to
~

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
Register of Copyrights on the General Revision of the U.S. Copyright Law to
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

bi

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.

I

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
copyright still subsists may make and deliver a single photo-
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
copyright upon composite works or periodicals shall give to
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
copyright on the contributions of different persons included in a single
publication * * %,

A. 32

arguments boil down to five defenses: (a) nonownership of
copyright, (b) real party in interest, (c) noninfringement,
(d) fair use, and (e) license.

Il

The nonownership defense

Defendant says that plaintiff is not the “proprietor” of
copyright in the Count I-to-Count VIII articles (17 U.S.C.
§ 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
copyright on the journals in plaintiffs name. While it is true
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
copyright registrations and is the proper party to bring
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
copyright. If a person, without authorization from the
copyright holder, puts a copyrighted work to a use within
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

am

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
Copyright Tifring ment hy New and Deve loping Media, a4)
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,
(c) the amount and substantiality of the material used in
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
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

© H.R. Rep. No. 941, 84th Cong., 2d Sess. (1956); S. Rep. No. 2071, 84th
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
copyright laws with, on the other hand, the technological
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
copyright for the sake of efficiency. After careful analy-
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.

(c) The agreement relating to copyright between the
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-
right consisting of the word “Copyright,” the symbol “©”,
the name “The Williams & Wilkins Company,” and the year
of publication affixed to the title page of, and elsewhere 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:

a

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.

* * *~ * *

(c) The Secretary is authorized, after obtaining the
advice and recommendations of the Board (established
under section 277 of this title), to prescribe rules under
Which the Library will provide copies of its publications
or materials, or will make available its facilities for 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).

(c) The basie function of NUM is to aequire books, jour-
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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_1623%3A01. Public record. Not legal advice.