could possibly take down material that a patron stored on a library com- puter (an act that was probably not consistent with library policy, whether or not the document was infringing). Alternatively, a library could take down a link or directory that the library itself posted, again not a likely source for an outside complaint. Nevertheless, if there is a “counter- notice” to the library to “put back” the material because the patron says that it is not infringing copyright, the library must “put back” the mate- rial within ten business days, unless the matter is referred to court.
For further information, see section 512(g)178 of the Copyright Act, or read a helpful legal memo by Arnold Lutzker, written for the Associa- tion of Research Libraries.179
Q80 Doesn’t it invade the privacy of our patrons if the library is checking to see what copies they are making?
The Copyright Act explicitly states that the library is not required to monitor its service or access material in violation of law (such as the Electronic Communications Privacy Act) in order to be eligible for liabil- ity limitations.180
Q81 What happens if my library designates an agent and then decides not to take down a link or follow through on the rest of the procedures?
That is your library’s choice. You may prefer to handle the claim in another way. The OSP provision merely provides you certain protections if you wish to seek them. As always, seek legal counsel in handling any legal claim.
The judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by citizens of another state, or by citizens or subjects of any foreign state.182
Recent U.S. Supreme Court decisions have interpreted the Eleventh Amendment to immunize states from certain federal laws. In Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank183 and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board,184the Supreme Court ruled that states cannot be sued in federal court for patent or trademark infringement, since Con- gress overstepped its bounds when passing legislation making states subject to suit. The immunity would only apply to a state law library, state university library, etc., since municipalities, counties, and other political subdivisions, such as a public school district, do not partake in a state’s Eleventh Amendment immunity,185 and thus remain liable for copyright infringement.
The Fifth Circuit expanded the concept to include claims of copyright infringement.186 A district court has also held that the Eleventh Amend- ment immunity applies to misappropriation claims.187This does not mean that states’ libraries and archives should infringe copyright with reckless abandon, since Senator Patrick Leahy and others in Congress have vowed to close this gap.188Several bills have since been introduced to restore the liability of states.189These did not pass, but it is expected that similar ver- sions will be reintroduced in the 107th Congress. Even without this legis- lation, states may still find themselves liable, since immunity can always be waived by agreements such as a license agreement.
Remedies
Q82 If my library loses a copyright lawsuit, what are the legal consequences?
Assuming a library is successfully sued, several remedies are available to the copyright owner. First, the copyright owner may seek an injunc- tion.190 The injunction can be temporary or permanent and, if granted, could order the library to remove infringing material from its website or to cease the further display or distribution of off-air tapes or the circulation of infringing copies of material. The copyright owner may also seek to have
the infringing copies impounded pending the outcome of the litigation and destroyed as a final remedy.191These remedies are considered “equitable.”
Another set of remedies involves money or “damages.” There are two types of damages that the copyright owner can recover: statutory or actual. The copyright owner may receive one but not both sorts.
Actual Damages
The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the library that are attributable to the infringement and are not taken into account in computing the actual damages.192 If a library has loaded a software program onto eleven computers when it only purchased a single copy for a single installation and the program cost $99.99, damages would be
$999.90 (ten programs loaded without permission at $99.99 each). If a library made five copies of a book in excess of fair use, the loss (damage) to the copyright owner would represent the price of five copies, i.e., the lost sales from the five copies photocopied.
Statutory Damages
Statutory damages are the bane of copyright defendants. The copyright owner may elect an award of damages set by the copyright statute. The statute requires that each infringement be calculated at no less than $750 and up to $30,000, as the court considers just.193 Statutory damages can add up rapidly, since the dollar amount, determined by the court, applies to each work infringed. Statutory damages in the UMG Recordings, Inc.
v.MP3.com, Inc.case approached $118 million:
Weighing not only the foregoing factors but all the other relevant factors put before the Court, the Court concludes, and hereby determines, that the appropriate measure of damages is $25,000 per CD. If defendant is right that there are no more than 4,700 CDs for which plaintiffs qualify for statutory damages, the total award will be approximately
$118,000,000; but, of course, it could be considerably more or less depending on the number of qualifying CDs determined at the final phase of the trial scheduled for November of this year.194
Statutory damages may reach $150,000 per work where there is evidence of “willfulness”195 or be reduced to $200 if the court finds that “such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright.”196
Libraries and Actual Damages
Most important to libraries is a provision in section 504 that eliminates statutory damages if:
(1) the infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use; and (2) the infringer was an employee or agent of a nonprofit educational
institution, library, or archives acting within the scope of his or her employment; or
(3) [was] such institution, library, or archives itself which infringed by reproducing the work in copies or phonorecords.197
However, for a library to avail itself of the provision, there must a rea- sonable belief that the act that triggered the claim of infringement was a fair use. If so, then the costly statutory damages are waived and the library would be liable only for the actual damages, which may be far less. For example, actual damages could be the value of a second or third copy of a reproduced book or the royalty due the “performance” of a video loaded on the library website and made available for patron viewing.
Given the increased awareness of copyright violations in all library set- tings, coupled with the availability of cases providing judicial insight into the application of copyright law in new environments, like the Napster case, the standard for arguing what is a reasonable belief of fair use is getting higher.
Attorney’s Fees
The prevailing party (this may be the plaintiff or the defendant) may also be awarded attorney’s fees and cost at the court’s discretion.198
Criminal Penalties
There are also provisions for criminal penalties. Generally, a criminal copyright infringement requires that the infringement be executed with intent (“willfully”) and for “commercial advantage” or “financial gain.”
A defendant could face up to 5 years in prison if the offense consists of the copying or distribution, including by electronic means, during any 180- day period, of 10 or more copies of one or more copyrighted works, which have a total retail value of more than $2,500. The defendant could face up to 10 years if the offense is a second or subsequent offense. In any other case, the defendant may be imprisoned up to one year.
Criminal infringement need not include the selling of the illegal copy, but exchanging or trading it for another copyrighted work, such as by uploading or downloading software on an electronic bulletin board or website.199
If the copying was not done for commercial advantage or financial gain, criminal penalties may still be imposed at a lesser degree. A defen- dant can face up to one year in prison if the total retail value of the copies is up to $1,000. If the defendant made at least 10 copies and the retail value is more than $1,000, he can face up to 3 years in prison. If it is a second or subsequent offense, he could face up to 6 years.200
Criminal Penalties for Copyright Infringement Commercial advantage or financial gain:
Up to one year in prison
If copying has retail value of more than $2,500 and 10 copies or more are made during a 180-day period, up to 5 years in prison
If second or subsequent offense, up to 10 years in prison Not done for commercial advantage or financial gain:
Up to one year in prison if retail value is up to $1,000 If copying has retail value of more than $1,000 and 10
copies or more are made during a 180-day period, up to 3 years in prison
If second or subsequent offense, up to 6 years in prison
18 U.S.C. §2319 (2001)