Williams & Wilkins Co. v. United States – Oral Argument – December 17, 1974

Media for Williams & Wilkins Co. v. United States

Audio Transcription for Opinion Announcement – February 19, 1975 in Williams & Wilkins Co. v. United States

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Warren E. Burger:

We’ll hear arguments first this morning in Number 73-1279, the Williams & Wilkins Company against the United States.

Mr. Latman you may proceed whenever you’re ready.

Alan Latman:

Mr. Chief Justice and may it please the Court.

This is an action for copyright infringement against the United States Government.

It is here on a writ of certiorari to the United States Court of Claims.

It’s brought under the provisions of Title 28 United States Code Section 1498(b) which is an eminent domain type of statute passed by Congress 15 years ago to cover cases of this type.

And the exclusive remedy of that statute is an action in the Court of Claims for reasonable compensation, therefore there’s no injunction possible in this case nor is any sought.

The issue is whether the Government system of reproducing petitioner’s copyrighted journal articles in their entirety through library photocopying is compensable under this jurisdictional statute as copyright infringement or excusable under the defense of fair use.

Petitioner believes that this issue vitally affects the future of journal such as its medical and scientific journals involved in this case ranging to journals of political affairs, poetry, literary journals which have a small circulation, privately published and respected.

Petitioner also believes that this issue should be resolved in favor of compensation because its property, namely its copyrights, has been taken and it should be reasonably compensated.

I say taken because the Government system of furnishing reproductions here come within the policy and the language of the copyright statute which provides exclusive rights to print, reprint, publish and copy.

And the defense of fair use is completely inapplicable as I’ll indicate in a moment.

That’s a doctrine and a defense that applies to an incidental use by one writer of someone else’s work in terms of a portion of the work but never so as to constitute an effective substitute for the original work.

In this case —

William H. Rehnquist:

Has the doctrine of fair use ever been upheld or specifically adopted by any opinion in this Court?

Alan Latman:

I don’t believe it has, Mr. Justice Rehnquist, the doctrine was raised in the so-called Jack Benny case which did reach this Court and it was a case which held that a taking of someone else’s work either even as a parity constituted infringement, that was a Ninth Circuit case.

The affirmance by this Court was four to four of necessity and without opinion.

The issue also was raised in a case involving Admiral Richover where Mr. Justice Reed, who was then retired was sitting in the District of Columbia Circuit and he had some remarks to say about fair use which we do quote in our brief which we think are pertinent, basically that taking a whole work has never been held to be fair use but when it came to this Court, the judgment was vacated for an insufficient record on other issues.

So I think the answer to the question has to be no.

Potter Stewart:

Is the Ninth Circuit case the Gas Light case?

Alan Latman:

Yes it is Mr. Justice Stewart.

Potter Stewart:

The parity or the 0335

Alan Latman:

That’s correct, it was — Mr. Benny put on what he called auto light as a parity of gas light.

He had the same star, Ingrid Bergman and the District Court and the Ninth Circuit held that even though parity changed the serious melodrama of gas light to a comity, nevertheless, the defense of fair use did not apply.

Nevertheless it was infringement.

Potter Stewart:

And that was affirmed by an equally divided Court?

Alan Latman:

Yes Your Honor.

The learning of those cases is that the essence of fair use is that it should not — the use should not be an effective substitute.

In this case, when we’re dealing with a photocopy of a 40 or 50 page article, we think it’s unquestionable that that does substitute for the original.

The trial judge held for the petitioner on the issue of liability, reserving the amount of reasonable compensation for later determination.

Alan Latman:

The Court of Claims in a four to three decision disagreed and dismissed the petition.

The Government agencies involved are two libraries of the Department of Health Education and Welfare.

One is the National Library of Medicine, which is a library’s library.

It sits at the apex of a nationwide network of 10 regional and 400 local medical libraries.

Warren E. Burger:

Who are the principal constituents of those libraries, the users?

Alan Latman:

They vary, Your Honor.

They include not only other Government libraries and medical schools and institutions but also private companies including drug companies for example, and the service that the National Library of Medicine renders to this variety of constituents is the same.

And that service is, that they take a few subscriptions as does the sister library, the National Institutes of Health or NIH.

NIH is a — as Your Honors know here, in Bethesda it’s a super library and it’s a super institution, it furnishes its thousands of employees with their needs for journals, subscribing to only one or two copies.

Now concededly, these copies don’t do the job by themselves so as an integral part of the operations of both libraries, there is a system of the following.

When a patron or the staff wants a journal, he or she gets a complete photocopy of the article.

It’s complete, it’s no return, it’s free.

I say free, I mean there’s no charge.

Of course it costs the taxpayer money indeed the Government pays the xerox corporation for each page they copy and of course they do not pay the people who produce and disseminate the material being copied.

Potter Stewart:

The practice used to be before the era of Xerox?

Alan Latman:

The practice of individuals, libraries?

Potter Stewart:

I just want to know.

Alan Latman:

Was namely to take notes by hand and then in the turn of the century and in the going up to the thirties, there was the system of Photostats and rather elaborate system of dark room facilities which meant that until you got to the era of Xerox, Mr. Justice Stewart, you had a situation where it was impracticable and uneconomical and slow to reproduce an entire article.

And that’s why we think that all those methods, hand, typewriter, mimeograph, whatever the system was, it was a system geared to taking notes as we all do, making an excerpt or taking a Photostat of one page or a chart whereas the era of Xerox, which the party seem to admit really came in the early 60’s, to think that the opinion below and the Government’s brief here and the Government’s brief below concedes the fact that in the early 60’s, late 50’s, there was virtually no photocopying as we know it today.

Potter Stewart:

Did the libraries, the National Library, the national Institute of Health before the early 60’s subscribed to more copies of your publications than they now do?

Alan Latman:

No, I don’t believe the record is conclusive one way or another.

I don’t think I could say they subscribed to more, however, we have a few sequels really, one is this, that in certain areas, for example one of the journals ensued is called Journal of Immunology.

I suppose we all recognize that in the era of transplants, in the era of cancer research and the like, that the interest in immunology has so mushroomed that for subscriptions to stay about the same, which in many cases they have, or for reprints which is an alternative form that the publisher has, now as the publisher doesn’t only sell subscription.

Publisher is interested in disseminating this material, that’s what it’s in the business of doing.

So that in addition to subscriptions, it sells reprints, it licenses microfilm which is another convenient alternative form of utilization and indeed, it has an authorized photocopying agency.

So that these alternative forms which are needed to keep these very small base journals alive, for example take Medicine or Journal of Immunology, there are four journals ensued and even though everyone agrees these are the respected journals in their fields in the world, the journals that have subscriptions from three to seven thousand.

The subscription price for six or 12 issues are $12.00 or $44.00.

The National Library of Medicine in achieving this, has a system of an overhead microfilm camera which swings up and down the aisles of the stocks of the library to take photographs of the journals.

Now there is one, does not even have to bring the journal out.

And I mentioned that only to indicate that this is an integral day-by-day operation.

Alan Latman:

Similarly, National Institute of Health have four employees who do nothing else all day but grind out these reprints and in the year in question, in the record, it shows that that operation at NIH with those four full time employees, entails an expenditure of slightly more than the library spent for acquisition of journals.

The product —

Harry A. Blackmun:

Mr. Latman, does the record show how many reprints were supplied to each author of his article?

Alan Latman:

It does, Mr. Justice Blackmun, it shows that on the average, about 300 reprints are furnished.

Harry A. Blackmun:

That is free of charge?

Alan Latman:

No, there is a certain amount that’s free of charge, 25 or so and the rest are purchased.

Now they’re purchased and of course the amount of reprints that were purchased in the past used to be an indication of the popularity of the articles, something that the editors are interested in but it isn’t anymore and we think the reason that it isn’t anymore is that once the reprints which are furnished by the author to people who request it are used up that the people just photocopy.

Warren E. Burger:

What barriers are there, if any to having a person who desires one of these copies to write to the publisher, your clients got to copy directly.

Alan Latman:

We don’t think there’s any barriers, we think that — but in order to facilitate the situation, because in the past it is hard to stock actual back copies.

Our client has authorized to reprint houses to furnish reprints and secondly as I indicated, a photocopying agency to furnish people with that.

So that while there may be a barrier, we think that the key is authorized photocopying because I would like to emphasize to the Court that in this situation, the petitioner is not interested in stopping or slowing down or halting this photocopying at all.

What the proprietor is interested in doing is securing some reasonable royalty.

Therefore Mr. Chief Justice, we think that working through our licensed representative is one way.

If one would consider that that’s too slow and that that’s a barrier, then the alternative which we would prefer and which we’ve offered is a blanket license covering all the journal articles which could be paid for by the library when they buy the subscription.

And so far, that’s all proposals that we made have been turned down because as our efforts show, when we try to setup such a system before the lawsuit, we were told that there would be no system of royalties until a Court ordered the Government to do so.

Byron R. White:

Mr. Latman, do you have the same experience with the private library?

Alan Latman:

Well we’ve had almost a worst experience, Mr. Justice White and that we almost run into a boycott and I think I’ve appended to our brief in our experience.

The National Library of Medicine is after all a well-respected agency.

We respect it greatly ourselves.

When it’s suggested that any proposal to license during dependency of this suit was somehow inelegant and improper, the national library of Medicine threatened to, not only not take our license but to cease subscribing to the journals, that’s of record.

And when I say a record, I mean it’s in a letter which the Government called to the attention of the Court and which we thought would be helpful if we appended in full.

The private libraries indicated that they would follow soon.

Of course the licenses that we are talking about would extend to private libraries.

The Government in effect has a compulsory license in this case, as the Court knows.

We can’t stop the Government, we don’t want to.

But the offer of licensing has been extended but we were told that we better not extend licenses or talk about licenses until there was a definitive word on this case and that’s why we’re here.

Warren E. Burger:

Somewhere in this massive brief, perhaps in one of the amicus briefs, there was a reference to the library of Congress.

Alan Latman:

Yes.

Warren E. Burger:

Could you clarify what it is s, if you know, what is their practice with respect to these furnishing photocopies.

Alan Latman:

Mr. Chief Justice, their practice is in direct and dramatic contrast to the libraries in question.

Alan Latman:

They have a policy which was introduced into evidence.

The library of Congress photo duplication, the key to which is copyright material will ordinarily not be copied without the signed authorization of the copyright owner.

Exceptions to this rule may be made in particular cases or responsibility for uses on the applier.

In other words we find that dramatically different and we suspect that it’s different for the same reasons that the libraries purport to have limitations, that is that respect for the law, respect for the rights of property and copyright, particularly in these journals.

Thurgood Marshall:

Right to the public or does it also apply to members of Congress?

Alan Latman:

Does — what apply, Mr. Justice Marshall?

Thurgood Marshall:

That we you just read.

Alan Latman:

I believe it does, I don’t know of any exceptions to their policy, on the other hand I’m not familiar with the practice with regard to member of Congress.

Of course the purpose of the statute that we’re sewing on is to immunize individuals within the Government and to make the Government liable for Government use which might possibly cover the —

Thurgood Marshall:

Well the two libraries you’re talking about, that’s limited to Government use.

Alan Latman:

Not the National Library of Medicine.

Thurgood Marshall:

If for example if somebody in the National Institute of Health wants a copy of an article, do you think he should be paying for that?

Alan Latman:

Yes we think that they should pay for it just as they pay for the subscriptions they buy, just as they pay for the microfilm additions, all of which are alternative ways to use the journals, alternative ways to use it within the meaning of the copyright law which provides for exclusive rights to print, reprint and copy.

We think it’s a copy and we think that it fulfills the policy of the copyright law which is to grant economic incentives to publishers.

Thurgood Marshall:

So that is — they have several thousand people out there.

They’d have to buy several thousands of it.

Alan Latman:

No, what they could do is to take a license and pay literally a few more dollars a year in order to get —

Thurgood Marshall:

Thousand dollars each time they did it.

Alan Latman:

No, no the proposal that we —

Thurgood Marshall:

How much money are we talking about?

Alan Latman:

Excuse me?

Thurgood Marshall:

How much money are we talking about?

Alan Latman:

Well, the proposal that we talked about, which we had to withdraw under the threat of boycott that I indicated, averaged about $3.65 a year for the library, for the life of that particular journal.

That would mean that they could furnish each and every one of their users with a copy.

Thurgood Marshall:

And how much would that be per year?

Alan Latman:

Well it would vary.

The amounts we’re talking about are small but important.

For example, in the case of Medicine, the subscription price is $12.00 a year.

The libraries probably account for most of the subscribers or half of the subscribers so it would amount to perhaps $10,000.00 a year to the publisher which in terms of Medicine, whose gross revenues maybe $50,000.00

Thurgood Marshall:

That’s all the license would bring in is $10,000.00 a year?

Alan Latman:

That’s all it would bring in if it were accepted.

Thurgood Marshall:

That’s all we’re talking about?

Alan Latman:

No, we’re talking about more, Mr. Justice Marshall because —

Thurgood Marshall:

It’s very hard to find out how much more.

Alan Latman:

Well it’s hard to put a specific dollars and cents tag on it.

The reason I say — first of all I would like to say that $10,000.00 to the life of a journal is extremely important.

But passing that, the petitioner publishes, for example 37 journals and what we are talking about other people as I indicated before, I do not have an estimate for you Mr. Justice Marshall, on how much would be involved if that particular license proposal of ours was achieved.

We weren’t indicated that we’re completely open to any variation of a licensing proposal.

They do pay Xerox Corporation as I said per page but we think per page is perhaps a little too complicated.

William H. Rehnquist:

Of course the Court of Claims said that — Judge Davis said that the Court didn’t have the power to compel you to license to a private individual and while you might be willing to some other person in a similar situation might not.

Alan Latman:

To begin with Mr. Justice Rehnquist, a person in a similar situation, of course suing the Government has no alternative and the Government is very important subscriber and a very important factor here.

but secondly we think that if the Court of Claims did what we think is its proper job, namely to decide reasonable compensation in this case, and this might even give a hint as to what the answer might be to Mr. Justice Marshall’s question that this would serve as a pilot example to people as to what reasonable compensation would be.

I’ve seen no indication on the part of any of the publishers including the hundreds and hundreds who have joined as amicus in this action, of any interest to stop this photocopy so that I think that if they went in to Court, and let’s say went into a private into Court against the private individual, that the standard set by the court of claims in this case would show what reasonableness would be and that’s what we would urge.

Byron R. White:

And the matter would be open for congressional regulation too I think.

Alan Latman:

Well it’s been open for congressional regulation, Mr. Justice White for many years.

I think the Court became aware of that in the 60’s.

I’m going to say that I spent a very pleasant year of my life at the copyright office in 1958 across the street.

At the early days of the revision, I used to take good lunch hours here listening to the arguments in this Court and I’m still waiting and I think the Court is still waiting for action.

But I think more important than that is that the court of claims has really legislated.

The court of claims ignored the fair use doctrine completely and in a sense, if you read their three core propositions, what they said was we think it might hurt this fellow more than that fellow.

We think they were wrong and we show that and we believe in our brief.

But we think that it’s important that this is a judge made doctrine and that the fair use question, as we’ve indicated in some detail in our brief, even if the most recent movement, I was going to say gesture which is unfair and disrespectful but I mean the most recent movement in Congress towards revision were to become law that the fair use question before this Court would still be with us.

And the reason it would be is that the Government argues that the fair use doctrine excuses whereas they admit that this case is different from any case in which the fair use doctrine has been applied in the past.

We agree with that the fair use doctrine deals with incidental use as I indicated earlier where the key question in every case is does it substitute.

If a fellow writing a biography of Howard Hughes, decides to borrow from an earlier work on the same subject and his work wouldn’t substitute for your getting and reading the original, he is and was in the Rosemund case held to be using it fairly and I agree.

But where a high school teacher instead of buying copies, makes his own arrangement and reproduces 48 copies for his students, something which is indistinguishable from the situation here.

He’s held infringing.

The reason I say indistinguishable is that the libraries speak about one at a time that they only furnish it one at a time.

I submit to your honors that one at a time is the prototype.

One at a time is the way that a bookstore sells book, one at a time is the way we sell to subscribers and to use the colorful language of the trial judge, babies are still born one at a time but the world is becoming overpopulated.

Alan Latman:

We don’t think that one at a time changes it.

We think it’s the accumulation.

Similarly, we don’t think that the fact that the Government is non-profit changes things at all.

We think that there are certain rights in the statute which are limited to profit such as the performance rights that have been before the Court.

There is also rights such as the ones we’re talking about where it’s not.

Now legislative history of this statute is important because all Government use is non-profit and most of it is laudable.

Any activity in this case is laudable, I say that quite sincerely.

But when Congress want to pass the statute, maybe worrying about either the Congressmen that was asked about or someone else, they had a twofold purpose, one was to exempt the individual from liability and the second was to make the Government liable because until 1960 you could not sue the Government for copyright infringement.

And in the course of that, the house report shows that the photocopying acceleration that was coming in to play in ’59 and ’60 was one of the reasons they passed this statute.

The potential effect on this is severe.

We’ve noted that some of the things we were simply talking about at the trial are now realities.

Consortia, networks of libraries that are getting together at this stage because they’re finding that costs go up and we’re caught in that vicious cycle our selves.

Costs go up, the audience we have is relatively static and photocopying gets cheaper.

We can’t raise subscription prices that will just make the cycle more vicious.

If we raise it, more people will decide they’d rather photocopy.

The consortia intend to share Soviet Union which has a practice of buying one or two copies of a journal and furnishing, I would presume millions or thousands of scientists and others with it are with us and as I said, it is not the intention of the petitioner to stop this, it’s an intention and a request that it’s copyright be recognized.

We think that that would be consistent with the economic incentive of Maser against Stein issued by this Court.

We think it would comport with the constitutional and statutory purpose of copyright and we think it would preserve the viability of scientific journals.

Harry A. Blackmun:

Mr. Latman, could I go back to my former question about reprints.

Does a record show what your clients charge for a reprint?

Does it depend on the length and so forth?

Alan Latman:

I believe it does, Your Honor.

Harry A. Blackmun:

Is it nominal?

Alan Latman:

I am not sure but I know where the record shows exactly what is charged.

Harry A. Blackmun:

I ask this because I know the tendency and I personally think it’s been abused greatly of the medical profession at least and I think scientists in general to request almost automatically with penny postcards, used to be penny postcards for thousands of reprints literally and offering to pay no charge expecting the author to supply these and I suppose this or does it similarly come in in a flow to the publisher?

Alan Latman:

Well it does but we think that what’s happened, Mr. Justice Blackmun is instead of doing it that way, I have found similarly that people will indiscriminately gather reprints but in the form of photocopies but even though we don’t want to stop this, we think that it’s convenient.

In a certain sense, it’s a mixed blessing and I think that what really is happened is the very practice that you described, Mr. Justice Blackmun is now in effect but through photocopy.

Warren E. Burger:

Now it’s not uncommon for judges, members of this Court and others to call on the Library of Congress for a book, sometimes perhaps it’s a book at which they have only one or very few copies.

At least I assume that because frequently we get a request, will you please return the book or sometimes instead of returning the book if we’re not finished with it, we, speaking personally, I have like in chapter 13 or chapter 14 copied on the Xerox machine.

As far as I know, the library of Congress has never sent photocopies of anything.

Warren E. Burger:

They send the original.

Is the borrower running up against this statute and these claims by making a copy for his own use?

Alan Latman:

That is —

Warren E. Burger:

Of a copyrighted material?

Alan Latman:

That is hard a question which we think is quite different from this case and therefore I could just give my opinion on that.

Of course to begin with, there’s an interesting phenomenon when Your Honor mentions a chapter.

The libraries will not — these libraries that we’re suing will not copy a chapter from a book.

When they call it a book or when the librarians classify it as a book or a monograph, even the libraries we’re suing won’t copy it.

They somehow see a distinction.

I think there is a lot of significance to that fact because the world didn’t come to an end when they didn’t do that.

But let’s get back to the example.

It would be harder, my opinion is that it would — first my opinion is nobody would sue and I think that that’s quite significant here because it’s impractical for anyone to sue for a number of reasons.

William H. Rehnquist:

Is it your opinion that nobody would sue the Chief Justice or that nobody would sue anyone?

Alan Latman:

No.

Nobody would sue the Chief Justice or an individual, no one would sue an individual.

It’s an impractical medium of —

Warren E. Burger:

But supposed his damage claim, suppose I have 10 copies to send to my colleagues so that we would all the sharing in this, recovery might be diminimous.

Alan Latman:

Exactly.

Warren E. Burger:

So that no one would have any incentive to sue.

Alan Latman:

Exactly.

It would be precisely that and therefore it is to be contrasted with the libraries here which generate, coordinate and stole the machinery decide incidentally whether to photocopy or send you the original.

They make the decision.

They perform the operation, they have the microfilm camera, they print it themselves and they give it to you and the result is some 2 million pages a year of journal articles being copied by these two libraries alone so that we can’t call it diminimous in that.

Thurgood Marshall:

I assume it’s faster than getting a reprint.

Alan Latman:

It is that the procedure is fast.

Thurgood Marshall:

Faster than getting a reprint.

Alan Latman:

It would be faster than getting a reprint and that’s why we encourage —

Thurgood Marshall:

It might be an emergency.

Alan Latman:

It might be and that’s why we encourage the authorized licensing fee that justice, they would have the microfilm which is another alternative that they have the opportunity to do it quickly.

In fact we think we have a wiser way for them to do it.

Alan Latman:

They ought to make it off the microfilm.

They shouldn’t make different microfilms and copies as they do.

We think that’s wasteful.

They should have the microfilm sitting there with a license to make a copy.

Thurgood Marshall:

Either one now run the library, do you?

Alan Latman:

No.

Thurgood Marshall:

You don’t want to do that, do you?

Alan Latman:

No I do not Mr. Justice Marshall.

But I am suggesting that when we’re talking about economics which is all we’re talking about here, there’s a concession by the NIH librarian that all we’re talking about is budgetary considerations.

I’m just trying to suggest how in that context it would be fair, it would be proper, it would be manageable and we think it would be very important in saving the journals and enforcing the copyright law.

I’d like to save whatever time I do have for rebuttal.

Warren E. Burger:

Very well.

Alan Latman:

Thank you.

Warren E. Burger:

Mr. Solicitor General.

Robert H. Bork:

Mr. Chief Justice may it please the Court.

Throughout most of this century, libraries have permitted their patrons to make single copies of articles from journals or have made such articles upon the requests of customers.

And not until now, in this case has any publisher or other copyright holder ever challenged that well-known practice, that well known means of providing access to collections in libraries.

Harry A. Blackmun:

General Bork, that doesn’t mean that they haven’t complained about it, does it surely?

Robert H. Bork:

There have been remarkably little complaint Mr. Justice Blackmun.

But I think there has been some but I think the complaint is generally directed at practices other than that followed by the National Library of Medicine and NIH here.

Harry A. Blackmun:

Of course I can testify that I have many complaints personally.

Robert H. Bork:

Well I think there has been.

Warren E. Burger:

What is the level of complaints rising in direct proportion to the number of photocopying machines?

Robert H. Bork:

I think so Mr. Chief Justice but I think the number of complaints have to do with practices other than that followed by the National Library of Medicine and National Institute of Health.

One of the petitioner’s modes of arguing this case is to lump together all photocopying practices with a quite specific and limited practices followed by NLM and NIH.

So I don’t think the kind of practice we’re examining here today in this case is the kind of practice that does any injury to the publishers in this industries.

Warren E. Burger:

Let me suggest what is probably simplistic and hypothetical proposition with a very obvious answer.

I’m sure the Library of Congress has got copies of many, many plays and suppose someone wants to put on play, they write in and get one copy and then make a hundred copies.

There is a copyright problem there for the use of that play, is there not?

Robert H. Bork:

I have no doubt Mr. Chief Justice that that is clear infringement.

Robert H. Bork:

That is a practice totally unlike the practice followed by the national Library of Medicine.

Warren E. Burger:

Well is it different because the medium of abuse is different?

Robert H. Bork:

Well it’s different for a complete variety of reasons, one is, the non-commercial use here.

Another, I must say is that these photocopied articles are in no sense substitutes for a subscription to the petitioner’s journals.

They are just — they are not substitutes.

If you are a worker in a research field, you will subscribe and do subscribe and indeed get subscriptions through the professional associations you belong to of the main journals in your field.

And keeping abreast of your field on these developments cannot be done by sending off of the occasional photocopy to the library of medicine.

So that what the Library of Medicine provides is not a substitute for subscriptions in your field.

What it does provide are other things, it provides that when an article of direct interest to your work appears in a journal but you never anticipated it will appear in a peripheral journal or perhaps a journal from another specialty which have a cross feed into your field.

Or perhaps an out of date issue of your own that you no longer have.

That is the kind of copying the National Library of medicine does.

William H. Rehnquist:

Well if I am just interested in the first act of the Macado, I suppose I can say the first act of the Macado isn’t a substitute for the whole lot so I’ll just copy the first act and it’s not a substitute.

Would that be fair use?

Robert H. Bork:

It might well not be fair use, Mr. Justice Rehnquist, my primary answer to it is that is not the fact, that is not this case.

This case involves copying that I think has no effect upon the petitioner’s subscription list.

Something is happening to the subscription list of medical journals and will continue to happen as data flow through computers and other means increases.

But that’s not because the photocopying practices of the National Library of Medicine.

I was merely pointing out that the ability to get a photocopy is no substitute for a subscription to the journals in your field.

On the other hand, you cannot subscribe — the National Library of Medicine has 18,000 journals it subscribes to.

One doesn’t know for sure where in that range of journals an article that might be relevant to one’s research will appear to tell a man that he must subscribe to any substantial fraction, any small fraction of that number of journals is to tell him that he cannot have the article. And that is —

Warren E. Burger:

Well, is it quite that broad?

Robert H. Bork:

No it’s not quite that broad.

Warren E. Burger:

Perhaps it means he can have a copy of that article for $0.75 instead of getting it for nothing.

Robert H. Bork:

Oh, on the — if we —

Warren E. Burger:

So that the publisher gets some sort of a royalty.

I don’t know what the amounts would be, that’s the issue.

That’s what we are here for a case isn’t it?

Robert H. Bork:

That’s correct Mr. Chief Justice and to that I have two answers, one is that there is no infringement of the Copyright Act here either because the Copyright Act doesn’t cover this practice or because it is covered by a fair use and I think that’s fairly clear.

My other answer is that we are here dealing with a status quo in medical research which is enormously complex.

This is not a problem that is homogeneous.

Robert H. Bork:

And the petitioner offers us a tiny slice of the total problem and asks for a sweeping rule that is going to upset the status quo in medical research.

Warren E. Burger:

Well 20 years ago, what would you guess would be the number of copies that were furnished out of the medical library, if the medical library was in existence?

Robert H. Bork:

No.

Warren E. Burger:

Which was I guess, wasn’t it?

Robert H. Bork:

NIH may have been, Mr. Chief Justice.

I don’t know.

NIH only furnishes copies to its own researchers.

It is not the outside use, it’s the National Library of Medicine.

And for a while the increase in photocopying did increase until about 1968 then it took a dip and I think it is now back up somewhere near the 1968 level.

But it has been a strong factor for some time but I think it’s important for me to say that this has been a practice which has been understood, not to violate the Copyright Act of 1909 for decades.

Our brief refers to and I will not take this through evidence of that, the gentleman’s agreement of 1935 which is answered by a statement that we’re not bound by it.

Nobody suggested the petitioner is bound by that agreement.

One does suggest that it indicates an understanding of practices at that time.

The Sound and Recording Act of 1971 which we discussed in our brief at pages 18 and 19, I will not take time now to point out but that is an evidence that Congress said two things, that people may make recordings for their personal use from copyrighted recordings without violating the Act and that the reason they left people free to do that was that they didn’t want to give copyright protection broader than other holders of Copyrights Act which would seem to be a statement by Congress that they understood the 1909 statute, not to extend to non-commercial copying for private use but we need not, I think spend our time rehearsing the long practice or taking gleanings from legislative understanding.

Because I think there are two cases in this Court that are quite parallel and I refer to Fortnightly against — Corporation against United Artists Television and Teleprompter against CBS. Those were cases of community antenna television systems which went out and picked up signals from stations licensed to telecast motion picture films, relayed them to their own subscribers whom they charged to receive these films and they paid no royalty and no license, no royalty to or license form the owner of the copyright.

Now that was infringement alleged under sections 1(c) and 1(d) which give the exclusive right to perform in public for profit and perform publicly.

Now this Court held that it must really decide whether the CATV function fell upon the performers, the broadcaster side of the line or on the viewer’s side of the line and it said essentially the CATV system no more than enhances the viewer’s capacity to receive the broadcaster signal, and it used an analogy which I think is quite appropriate here.

Indeed I think these two cases I am relying upon are much broader than anything I asked this Court to hold here.

This Court said in Fortnightly, if an individual erected an antenna on a hill, strung a cable to his house and installed the necessary amplifying equipments, he would not be performing the programs, he received on his television set.

The only difference in the case of CATV is an antenna system is owned and operated not by its users but by an entrepreneur.

The analogy to this case is striking.

Potter Stewart:

Except, Mr. Solicitor General, the whole — the only thing to be decided in those two cases was the meaning of the word perform under the 1907 Act.

I can understand that casual readers of the opinion, perhaps particularly the view of the dissenting opinions might have thought that those cases had to deal with something else but all they were directed to, was the meaning of the statutory word performed.

And now here we have the statutory word copy and certainly there isn’t any ambiguity about that.

Robert H. Bork:

I think there is, Mr. Justice Stewart, that’s precisely my point.

I think we have the same kind of ambiguity in this case as you had in Fortnightly and in Teleprompter.

The reason for that is this, we know, as a matter of law, the copy does not mean that the making of any copy violates the Copyright Act.

If it did, there would be no doctrine of fair use.

You must decide.

If it did, there would not have been a long practice agreed to of individual persons making copies for a variety of things.

Robert H. Bork:

So we know that one must construe the word copy, it is not a word that applies itself in a dictionary sense.

We know that about the Act.

Therefore it seems to me, we have to draw a distinction much like that involved in Fortnightly which asked, is this like viewing or is it like sending, performing?

Here I think we have to ask, is this like what the reader does properly under fair use or is it like publishing?

And I think the situations are quite analogous in that sense.

I grant that they construe different words.

Byron R. White:

The United States has taken a position then that this simply isn’t copying and that we don’t even need to reach the fair use issue.

Robert H. Bork:

That is correct.

We take the use that it is not —

Byron R. White:

You didn’t put that in your — is that in your brief?

Robert H. Bork:

In our brief, we say in a footnote citing some other briefs and some of these cases I’m not discussing that it is argued persuasively that.

The primary lines of our brief is upon fair use.

Conceptually, Mr. Justice White, I don’t know that it makes a great deal of difference because I learned from Mr. Latman’s article on the subject that the law is not entirely clear whether fair use means there is no infringement or whether fair use means that it excused infringement.

And to say that the Act doesn’t cover it and in any event it is fair use, maybe redundancy or may not.

Byron R. White:

But does that direct you some of the history of the act and you never had — you have arrived at this conclusion without ever having had a fair use doctrine.

Robert H. Bork:

That’s true, that is true, that is true.

But I think that’s inescapable that the word copy must be construed unless we are prepared to say that there is no doctrine of fair use for anybody who copies something out of an article or something out of a book.

We know that is not the law.

Warren E. Burger:

Well there’s quite a difference between copying a couple of paragraphs and quoting it and —

Robert H. Bork:

There’s quite a difference [voice overlap]

Warren E. Burger:

The whole thing is compared.

Robert H. Bork:

There is quite a difference.

I think there is no difference in practical result in this case because a couple of paragraphs is no substitute for the whole.

Warren E. Burger:

Well sometimes a copyright owner will, for example syndicated columnist or writer of an article will have some sort of a footnote saying that up to 700 words may be used out of this article by permission of the copyright owner.

Robert H. Bork:

That is correct.

Warren E. Burger:

So that suggests that for many purposes, there’s regarded quite a difference under copyright law.

Robert H. Bork:

Or it may be regarded as quite a difference.

I think the reason the owner may do that is he regards 700 words as not a substitute for the whole.

And one of my points here, which I cannot stress too strongly is that a reprint of a single article is not a substitute for what petitioner sells which is a journal.

The National Library of Medicine will not Xerox that journal, will not Xerox half of that journal.

Harry A. Blackmun:

Don’t you occasionally have journals so that may have one very important lead article that might comprise say two thirds of the journal?

Robert H. Bork:

I simply — that may occur —

Harry A. Blackmun:

It’s true in law review —

Robert H. Bork:

Yes it is.

Harry A. Blackmun:

And would you say a way it was a fair use to copy the lead article?

Robert H. Bork:

As I understand the National Library of Medicine’s policy, they will not copy as much as half of the journal.

So I would guess that that policy will not cover copying all of such an article but I cannot answer the question definitely.

Warren E. Burger:

But it is true that if the seeker of this material could not get it free from the National Library of Medicine, he would have to pay something, $0.25, a dollar for a reprint, isn’t it?

Robert H. Bork:

That is true.

Maybe I should address that question directly because I think the more important thing here is what is going to happen to medical research information flow?

And indeed, information flow in general, this case, it should be stressed the petitioner is seeking a flat, sweeping rule which if applied to this case will cover hundreds of other cases we know not of now.

The Court of Claims decision which we are trying to uphold is quite narrow, quite limited, will have no such sweeping effect and that is one reason I think the Court of Claims should be affirmed and Congress left to this task.

And I must say, it is not true that Congress has not been addressing this.

There are now in the floor of the house two bills passed by the Senate.

One of which would establish commission to study this very problem, the other of which addresses this problem in substantive terms.

I happen to prefer the commission approach because this problem is far more complex than we have given it credit for here.

There are any number of differences in scholarship and in subsidization of journals and in competing interest here that are not reflected in this record and cannot be reflected in a record of litigation like this.

So that the —

Harry A. Blackmun:

Why won’t the medical library copy an entire journal?

Robert H. Bork:

Well I think the, Mr. Justice White that the reason that they respect petitioner’s copyright interest of not —

Harry A. Blackmun:

About what.

Robert H. Bork:

Well, he has a copyright interest on each article.

We don’t — by the way there is a left open in this case a question of who does all these copyrights?

Harry A. Blackmun:

Well I know but the copyright attaches to each article I take it.

Robert H. Bork:

That’s correct.

Harry A. Blackmun:

And but the library is not reluctant to copy an entire article?

Robert H. Bork:

No but what the petition sells is a journal.

And we don’t think—

Harry A. Blackmun:

I’m not talking about a copyright, not a—

Robert H. Bork:

That’s true.

Harry A. Blackmun:

Not whether the subscription.

Robert H. Bork:

Well for the reasons I’m arguing today, Mr. Justice White, the National Library of Medicine believes that it is not infringing a copyright when it does that.

Harry A. Blackmun:

It might as well copy the entire magazine.

Robert H. Bork:

No Mr. Justice White, if it copied the entire magazine it would be providing a substitute for what petitioner sells.

We are not now providing any such substitute and —

Harry A. Blackmun:

Or doesn’t the petitioner also sell reprints?

Robert H. Bork:

He does sell reprints and let me say this Mr. Justice Blackmun, we’re talking here not just about the petitioner, we’re talking about five or 600 publishers of medical journals in very different circumstances.

We are talking about thousands of libraries.

The petitioner seeks a rule that will apply to all of those publishers who will be able, if they wish to get injunctions against private libraries although not against the Government libraries.

If petitioner gets to this rule, it says we can then begin negotiation.

I can’t imagine the negotiation that would be involved between thousands of libraries and five or 600 publishers all with very different interests, very different views of the matter and very different appetites for gain.

Warren E. Burger:

Now there is a statute on record piracy, I have forgotten the particular statute that provides an automatic licensing if there is a hit record, you or I or anyone else may, who are in the business of making records, copy it without the consent of the copyright owner but we have to keep a record, written record of how many copies we make and pay, I think the statute provides $0.05 for each copy.

Would that not be a feasible mechanism here?

Robert H. Bork:

I think it may be feasible Mr. Chief Justice and but let me tell you why I think it ought not to be imposed by a rule of Court rather than by a rule of legislature.

I’ve just suggested a reason why I think.

Warren E. Burger:

Yes we haven’t come to that point yet whether the Court has got any power.

You’re going to discuss that —

Robert H. Bork:

Well I think this is — I think it’s tied intimately with this question.

I have just suggested why I think that this proposed solution of give us this hard and fast rule and we’ll go out there and negotiate is no solution because I think the negotiations will break down too many libraries, too many other interest involved so that what we have is an invitation to chaos, not an invitation order in the industry.

But let us assume, along the lines of your question Mr. Chief Justice that such an agreement were possible or that such an agreement were imposed by rule of Court.

The only thing that’s going to happen immediately is, there would be a much greater burden of compliance upon libraries, not just the burden of the royalties which will be quite substantial because the numbers we’re talking about as small, happen to be royalties for four journals in one library.

Now if you would add the 18,000 journals in thousands of libraries, we’re talking about a large increase in the cost of medical research dissemination over the current practice.

In addition to that, there would be a very heavy burden of compliance by the libraries, as they have to check out and add administrative apparatus to count photocopying instances.

Now what that’s going to mean is, that the holdings of libraries around this country, medical libraries are on this country, are going to be cut back sharply.

Not the National Library of Medicine.

The National Library of Medicine I’m sure can get an appropriation to pay whatever it costs and indeed the National Library of Medicine is now paying the higher price for petitioner’s journals and has agreed to do so.

The National Library of Medicine is going to cut back on these journals.

But the National Library of Medicine is trying to encourage holdings and has been encouraging holdings.

In fact they spent 12 and a quarter million dollars for grants for acquisitions to libraries around this country, much of which has been on subscriptions for petitioner’s other journals.

So it’s increasing the subscriptions out in regional and local libraries.

Robert H. Bork:

This rule the petitioner seeks is going to increase the royalties greatly.

It’s going to increase the burdens of compliance and cost in libraries.

The number of smaller journals held by libraries are going to be cut back drastically, even if they don’t raise their own subscription price or try to license themselves because library budgets are going to be enough.

Now maybe that’s what should happen.

Maybe peripheral journals should go out of business.

Maybe a Darwinian approach to this thing is the correct approach.

I merely suggest to you that that’s a choice that really ought to be made.

That’s a change in the status quo and with drastic results from medical research dissemination and that’s a choice that should be made, I suggest by the Congress rather than by a Court.

And I think —

Potter Stewart:

Well I think that your brother’s point on the other side is that choice has been made by Congress.

Robert H. Bork:

Well, Mr. Justice Stewart, if it has been made by Congress, it’s a choice that has not been enforced for 50 or 60 years while copying practices have been going on and growing.

It’s a choice that is not reflected in Congress’ understanding of what it was doing in the 1971 Sound Recording Act.

I don’t think it is a choice that has been made by Congress.

Potter Stewart:

Well that’s what this case is about.

Robert H. Bork:

That is true, that is true.

But I do think that one of the things this case is about on a fair use question is — fair use is after all basically a constitutional doctrine.

It says, it asks whether a rigid, conceptualized application of the Copyright Act would in fact retard progress of science and the useful arts.

And when I address to myself to this question, I’m talking about what would happen to medical research and what is not happening to petitioner despite his claims.

I am talking about fair use.

William H. Rehnquist:

Are you suggesting that Congress would be constitutionally obligated to incorporate a doctrine of fair use under the copyright law?

Robert H. Bork:

I don’t — that is debatable.

I have seen it debated both ways Mr. Justice Rehnquist.

I don’t know that we — that I need to — well I —

William H. Rehnquist:

I thought you said a moment ago that that fair use was a constitutionally —

Robert H. Bork:

The Courts have derived their power to evolve a doctrine of fair use from the constitutional value, the constitutional principle — whether or not the Courts could second guess Congress’ decision about what would promote rather than retard, I don’t know.

Certainly that’s not involved in this case.

But when I talk about the harm to medical research and the lack of harm to the petitioner and after all there is nothing in this record that shows petitioner’s loss of subscription except form hearsay in Vermont.

We’re talking (Inaudible)on this side of injury of the petitioner.

When I talk those two elements, I am talking the doctrine of fair use.

The Court of Claims after all said it was moved in this case by the fact that holding for a petitioner would heavily damage medical research and secondly, the petitioner had shown no damage to itself.

Robert H. Bork:

Now it says these journals may go out of business.

There’s nothing in the record about that.

In fact there’s common sense, indicates that they won’t, for the reasons we’ve talked about, for the reasons that photocopying doesn’t substitute for subscriptions.

Warren E. Burger:

Is that a demonstrable proposition or simply an arguable one?

Robert H. Bork:

Mr. Chief Justice I think its about as demonstrable, if I may make the comparison as market definition in antitrust cases.

One looks at these two things and it is apparent in this industry, photocopies of single articles serve a different function, a different market than journal subscriptions.

They complement, rather than substitute for each other and therefore, I think are indifferent markets.

I suppose, had this trial — had petitioner taken this trial into the question of how much of him was injured, we might have a record on these points.

But we have here only petitioner’s rather dire speculations about his future.

And that’s the only record on injury.

Warren E. Burger:

If I understand the petitioner’s position, they don’t want to curtail the dissemination of information, medical or scientific that they simply want piece of the pies that were —

Robert H. Bork:

Mr. Chief Justice they are bound to curtail it.

If they get this rule, we will then have a chaotic situation and negotiation with thousands of parties in interests.

If that negotiation comes out the way they want it to, we are going to have a dramatic impact on the peripheral journals, not upon petitioner’s journals, petitioner’s journals are not peripheral, libraries will continue to stock them, there’s no doubt about it.

But, peripheral journals are going to find that library budgets have shrunk and then aren’t going to be sold.

Warren E. Burger:

I take it what you’re saying is that this can only be resolved — this could not only be resolved by Congress doing something like what they have done with the mandatory copying of records.

Robert H. Bork:

Or Congress doing something of that sort or perhaps making a solution to differentiate among the different interests involved here.

I should have mentioned that the Library of Congress to its copyright office is now holding conferences including their national conference to comment on effort to arrive at norms in this quite complex situation.

Nor which may perhaps be translated into legislation.

I should also say one other thing which I think shows how little petitioners are really talking about here.

There are 18,000 journals, there are over 400,000 volumes of journals, individual issues, volumes of journals in the NLM Holdings.

Now in 1970, there were 93,000 articles photocopied.

That is less than 1/4 of one request per volume of journals held.

When you look at these things spread across the number of journals, sure there are men with microfilming constantly in one library but when you look at the universe of what they are copying from, and see the impact is negligible upon an individual journal.

William H. Rehnquist:

Well in one breath, you say the thing is going to result in chaos and then in the next breath you say how negligible it is.

Robert H. Bork:

Yes, that’s right Mr. Justice Rehnquist and I confess that I think that both of those breaths are internally consistent, yes.

Is negligible — I’m pointing out that it’s negligible as an impact upon an individual journal by showing how thinly it is spread across this vast storehouse of medical information in journals.

It is crucial to individual researchers here and there who need a particular article in a far out, in an obscure peripheral magazine or in some other magazine or in a back number they have lost or in a specialty they don’t belong to.

For that research, it is crucial.

At one end upon medical research is quite important, the effect of the other end upon subscriptions to journals is infinite testimony.

Robert H. Bork:

If it exists, there is no showing in this record that it exists.

I think I would quote form a Teleprompter decision about the fact that the detailed regulation of what’s involved here cannot be solved really by litigation and a flat rule.

It requires something much more sensitive.

And I suggest, for the reasons I’ve given that both the law and the policy of the law, press to the conclusion that the Court of Claims opinion ought to be affirmed.

Warren E. Burger:

Mr. Latman you have just one minute left.

Alan Latman:

Well if I may, I think that the Solicitor general’s market potential test is a good test.

I think it means that an antitrust competitor doesn’t have to be out of business or bankrupt before he can come in and show that there’s a certain potential, that’s what the petitioner is trying to do here.

That’s what was recognized by the gentleman’s agreement referred to.

It said that it would not be fair to the author or publisher to make possible the substitution of the Photostats for the original.

Photostats is what they were dealing in.

That’s at page — appendix 97 of the petitioner’s appendix.

Computer uses, which the Solicitor general referred to of course will follow a sequel perhaps, in other words we can’t recover for any use if this Court takes the approach the Court of Claims did.

The reason that we’re suing in this case is because if the massive system is excused in this case, it’s impossible to almost picture what is left of the proprietor’s rights.

And the important thing I think to remember is that we’re not just talking about subscriptions, as some of the questions, Mr. Justice Blackmun’s question emphasizes.

We’re talking about all the traditional and new media.

The Government and its amici have conceded that we’re talking about a new separate medium of distribution and we think that that medium should be encouraged, we don’t want to stop it, we want reasonable compensation for it.

Thank you.

Warren E. Burger:

Thank you Mr. Latman, thank you Mr. Solicitor General.

The case is submitted.