Christian businesses make copyright claims without legal merit...

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Readers may think this is too boring to read, but if you have any interest in the matter of copyright, particularly as it pertains to works in the public domain, this letter is essential reading. (Yes, I know that's self-serving but I do want you to read this so we can get the message out.)

Some weeks ago, I sent this letter off to the good folks of the Encyclopedia Puritannica Project. I had written them earlier to protest the threat they displayed prominently on their legal page to sue anyone who shared the Puritan works in the public domain they had digitized--changed from paper to digital copies. Specifically, this claim from their legal page is without legal basis:

The republication of EPP digital texts for commercial or non-commercial purposes is not allowed without permission. These texts are copyrighted and the EPP reserves the right to employ stealthy, text-tracing in order to detect and legally prosecute the theft of its work.

In my letter to EPP, I pointed out that their work digitizing the Puritans did not authorize them to make a profit off works that were in the public domain, and therefore owned by no one.

They responded defending their actions by saying they'd spent a lot of money on digitizing the Puritan works, and that the copyright they claimed was ironclad based upon that money and the work it represented changing mediums from analog (paper) to digital (electronic).

With much help from several attorney-friends as well as another attorney who specializes in intellectual property law, I wrote the following letter.

There are plate tectonic implications for Christian companies who have built their business model on threatening to take to court anyone who reproduces their work in cases where the heart of their work is a public domain work that was written centuries ago. Threats of legal action and the underlying claims of copyright are not sustained by the law.

Unless Christian businesses making money off selling digitized copies of works in the public domain can demonstrate they have added significant original or creative content--not hyperlinks, standardization of Scripture references, formatting, or indexing, for instance--their claim of copyright is baseless, legally. Further, threatening that they will take users to court if they share the public domain text with others is contrary to the explicit command of Scripture--that we are not to go to court against one another.

For too long, Christians have been nave concerning these claims and have allowed themselves to be intimidated by the threat of legal action. Who wants another Christian accusing one of being a thief?

But works of dead fathers in the faith are in the public domain and no matter how much money and time Christian businessmen have spent scanning, OCRing, and proofing those texts as they take them from analog to digital media, the courts are clear that they may not copyright that work.

For businessmen to claim otherwise is to mislead the public.

Now, a couple clarifications:

First, I have never owned, read, or had copied to my hard drive any copy of EPP's works. Thus my taking up this issue is not personal, but a matter of principle.

Second, I am not opposed to EPP and other businesses asking for contributions for their work and investment, as long as when they make their request they clearly state that any contributions they might receive are a gift to help them recoup their investment--not a duty or a legal obligation.

Third, it's been over two weeks now since I sent this letter to EPP and I've not yet received a response other than their acknowledgment that they received it.

Fourth, David and I have some personal history in pioneering the digitization of theological and biblical works and making them freely available on the internet. So, we've put our work where our mouths are.

And finally, the same principles here in this letter applied to the EPP apply to a whole host of Christian businesses that have built their business model on selling digital copies of theological works that are in the public domain. Lacking any original or creative additions, their claim of copyright has no legal basis.

* * *

February 4, 2006

Mr. Steve Mouring
Encyclopedia Puritannica Project
P.O. Box 573
Bealeton, VA 22712-0573

Dear Steve,

In my earlier E-mail I indicated that I would wait to deal with my legal findings in a second E-mail. What then is the law concerning works in the public domain that exist in hard copy (analog) form and have been changed to electronic (digital) form?

Three cases are foundational to this discussion: Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 111 S.Ct. 1282 (1991), Matthew Bender & Co. v. West Publishing Co., 158 F.3d 674 (2d Cir. 1998), and Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (2d Cir. 1999) F3d 693.htm.

In Feist , Rural Telephone had produced a telephone book for a small area of northwest Kansas. Feist, a publisher of phone books for larger areas, sought to license Rural's listings. Rural refused to grant the license. Feist then copied and published about 4,000 of Rural's listings and Rural sued Feist for copyright infringement.

The Court, recognizing the principle that facts such as phone numbers are not copyrightable, analyzed the degree to which copyright could protect the compilation of facts. Until Feist , there had been two bases for claims of copyright: the sweat-of-the-brow basis and the originality or creativity basis. In Feist , the U.S. Supreme Court found against Rural and in the process explicitly rejected the sweat-of-the-brow principle further discussed below, ruling that the U.S. Constitution required originality or creativity for the granting of copyright. Since Feist , copyright law has been in a state of change as courts have worked through the process of applying Feist .

Because its territory includes New York City, the application of Feist has fallen more heavily on the shoulders of the 2nd Circuit Court and this court has issued more post- Feist opinions than any other circuit court. Among those cases decided by the 2nd Circuit, the Matthew Bender cases are most on point to this discussion.

The Matthew Bender cases are hallmark cases in copyright law. The dispute surrounded West Publishing House's publishing the National Reporter System which included case reports of both state and federal court decisions--all of which were, by law, in the public domain. West claimed copyright on these reports and Matthew Bender/HyperLaw, another legal publisher, went to court seeking a declaratory judgment against West that would establish Bender/HyperLaw's right to reissue West's case reports on CD-ROM without fear of copyright infringement. Though related, one case addressed the insertion of pagination (the pagination case) and the other the manipulation of the text (the text case).

As reviewed by the court, there were a number of bases upon which West founded its copyright claims, including the following:

1. West's pagination of its reports;

2. West's "arrangement of information specifying the parties, court, and date of decision;"

3. West's "selection and arrangement of the attorney information;"

4. West's "arrangement of information relating to subsequent procedural developments such as amendments and denials of rehearing; and"

5. West's "selection of parallel and alternative citations."

The 2nd Circuit Court did not find any of these bases sufficient for copyright.

Summarizing the issues, the 2nd Circuit Court stated:

All of West's alterations to judicial opinions involve the addition and arrangement of facts, or the rearrangement of data already included in the opinions, and therefore any creativity in these elements of West's case reports lies in West's selection and arrangement of this information. In light of accepted legal conventions and other external constraining factors, West's choices on selection and arrangement can reasonably be viewed as obvious, typical, and lacking even minimal creativity. Therefore, we cannot conclude that the district court clearly erred in finding that those elements that Hyperlaw seeks to copy from West's case reports are not copyrightable, and affirm.

Matthew Bender (text case), 158 F.3d at 677.

Feist, in removing sweat-of-the-brow as a justification for copyright; and Matthew Bender (text case), 158 F.3d at 677, in explicitly rejecting a number of claims of creative additions to a public domain text, are the two cases most on point to this discussion.

Now we turn to the application of these cases to the matter before us.

First, the claim of the Encyclopedia Puritannica Project (EPP) that the labor of changing a public domain work from hard copy (analog) to electronic text (digital) grants a legitimate basis for the claim of copyright is contrary to L. Batlin & Son, Inc. cited in Bender. The work of changing mediums is not considered original work. "[T]o support a copyright there must be at least some substantial variation, not merely a trivial variation such as might occur in the translation to a different medium." Matthew Bender (text case), 158 F.3d at 680 (quoting L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490-91 (2d Cir. 1976) (en banc)).

Second, the EPP states: "the EPP DOES have a copyright on its implementation of the Puritan and reformed works on its CD" and it "asserts its copyrights on the basis of BOTH of these criteria: 1) Form / change in form 2) Percent change in content" (emphases in the original).

Dealing first with the second of EPP's criteria, in the post-Feist world "percent change in content" no longer applies. No matter how much sweat equity is in a work, nor how high the percentage of the work that sweat equity represents, copyright is no longer granted on this basis. The only basis now is creativity or originality.

Moving next to the first of EPP's two criteria listed above, it is not clear that in the post- Feist world the first criteria applies, either. It depends upon what sort of "change in form" EPP makes to the public domain text.

If the "change in form" is a creative contribution similar to the translation of the public domain text from one language to another, a claim of copyright might well be sustained due to the originality and creativity of EPP's change to the text. If, however, the "change in form" is neither creative nor original, no matter how substantial that change or what percent of the document is affected or how many man-hours are invested, a claim of copyright will not be sustained.

With a rise in the level of creativity, the possibility of copyright also rises. Trying to make a copyright claim in EPP's behalf, we might list EPP's justifications for their own claims of copyright as follows, in rising order of lesser to greater degrees of creativity:

1. Scan public domain text,

2. Run optical character recognition (OCR) software over scanned image,

3. Correct typographical errors in the original printer's work,

4. Correct typographical errors in the OCR software's work,

5. Apply standardized form to Scripture references,

6. Apply standardized form to dates,

7. Apply standardized form to other scholarly citations,

8 Exchange Roman for Arabic numerals,

9. Create hyperlinks for Scripture references,

10. Supply Scripture references to texts cited directly, not obliquely,

11. Apply font formatting,

12. Apply page layout formatting, and

13. Add tables.

It's hard to see how 1-10 could ever be copyrighted since each one of these actions must be done according to industry standards and has no room for originality or creativity. And numbers 11 and 12 are easily dismissed since we're discussing a publication, not a trademark or work of art.

This leaves number 13 as the only change claimed by EPP that seems potentially to involve some minimal amount of creativity on EPP's part. But even the addition of tables may merely affect page layout, rather than any new contribution to the text of the original public domain document. Page headings could be one cell, text body another, and page numbers a third. In such cases, claims of copyright based upon creativity are unsupported. Then again, the tables may function as an appendix to the work, or an integral part of the index. If they are an appendix and they have a modicum of creativity, similar to an original foreword, the proper thing to do would be to claim copyright for the appendix, and not try to extend the copyright claim to apply to the original public domain text also. After removing EPP's tables from the public domain work, any duplication would be impervious to charges of copyright violations.

The addition to the public domain text of standardizing spelling, references to Scripture citations, and hyperlinks to those Scripture references, and some limited annotation, also grants no basis for the claim to copyright since such changes are neither creative nor original. Granted, they are work-intensive and add value to the public domain text, but such work does not involve the sort of judgment call that translating from one language to another demands. Any person doing this work would do it in the same way, thereby proving it is not creative. Honorable and valuable work, yes; but not copyrightable work.

The 2nd Circuit Court concurred with the district court that, "'West does not have a protectible interest in any of the portions of the opinions that HyperLaw copies or intends to copy' because West's alterations lack even minimal creativity." Matthew Bender (text case), 158 F.3d at 678 (citing Matthew Bender & Co., 1997 WL 266972, at *4 (S.D.N Y May 19, 1997)). Later in the opinion, the 2nd Circuit elaborated on number (i) above:

The creative spark is missing where ...industry conventions or other external factors so dictate selection that any person composing a compilation of the type at issue would necessarily select the same categories of information, see, e.g., Victor Lalli Enters., 936 F.2d at 672 (charts of winning numbers in illegal gambling operations); see also Mid America Title Co., 59 F.3d at 722 (title examiner's report; "[s]electing which facts to include in this compilation of data was not a matter of discretion based on Mid America's personal judgment or taste, but instead it was a matter of convention and strict industry standards"), or (ii) the author made obvious, garden-variety, or routine selections, see Feist, 499 U.S. at 362, 111 S.Ct. at 1296 (concluding that the selection and arrangement of a white pages in which the publisher had chosen to include name, town and telephone number, and to arrange these listings in alphabetical order were entirely "typical" and "garden-variety")....

Matthew Bender (text case), 158 F.3d at 682.

From the above, it is clear that standardizing spelling, adding and hyperlinking Scripture references, and similar additions to public domain texts cannot confer any right of copyright to the one doing the work. Such work follows "industry conventions," others would have to do the work in the same way, the selection of the references is "not a matter of discretion... based on personal judgment and taste," but "a matter of convention and strict industry standards." The worker only made "garden-variety," "typical," and "routine selections."

In connection with the claim that the addition of Scripture references is a legitimate basis for copyright, here is the 2nd Circuit Court's reason for denying a very similar claim concerning legal citations:

One way of saying that West's "choices" are obvious and typical is that a competitor would have difficulty creating a useful case report without using many of the same citations. Affording these decisions copyright protection could give West an effective monopoly over the commercial publication of case reports (at least those containing supplemental citations).

Matthew Bender (text case), 158 F.3d at 682.

What about font and page layout changes--are these changes copyrightable?

No. The purchaser is buying a book, not a work of art, and whatever font and design decisions are made, it would be the work of a moment to select the text and change those decisions yet again.

What about the change from Roman to Arabic numbers, the correction of printing errors, and the standardization of references--are these changes copyrightable?

No. Such changes are addressed in Matthew Bender and are "typical," "garden variety," and "lack a modicum of creativity."

Is there finally, then, some "percent change test" that may form the basis of a copyright claim?

No. Regardless of how much work is done in updating a public domain text for republication in a digital format, the only basis for a new copyright is creative and original work added to the text. For instance, a foreword may be added and that foreword may be copyrighted. But even then, the public domain text that foreword accompanies may not be copyrighted. The foreword is an original work but its being bound with a public domain work does not cause its copyright to rub off on the older text. On the other hand, if the "percent change" is a function of the old public domain work being translated or paraphrased, original or creative work has been done and the work would likely be copyrightable.

Again, the threshold for copyright is not the percent or amount of work, but the nature of that work--and specifically, whether that work is original or creative.

It may be argued that some of the changes made to a work in the public domain are, in fact, both creative and original, and therefore that a new copyright is legally justified. It is worth pointing out, though, that in such cases it would still be proper to remove those changes from the underlying text and publish that underlying text without fear of copyright infringement since the E-text of the original is as much in the public domain as the work's original hard copy.

To turn to a specific matter raised in your prior E-mail, you cite a case involving Still Waters Revival Books as follows:

You may be aware of the trouble that Still Waters Revival Books (SWRB) got into with their Puritan series of image PDF CDs. They took someone else's TIFF images (of 17th century books no less!), put them into PDFs, added some bookmarks, and then slapped them on CDs for sale. The courts rightly found SWRB guilty of copyright violations because they did NOT change the form sufficiently (i.e. basically they stole the images ... of 17th century, public domain, Puritan books!)

But no court ever "found SWRB guilty of copyright violations" because the case never went to trial.
Some findings above are based upon the U.S. Supreme Court's ruling in Feist Publications Inc. v. Rural Telephone Service, a tidal shift in copyright law declaring that "originality is a constitutional requirement" and that prior "industrious collection" or "sweat of the brow" standards would no longer apply. This now is settled law and, short of reversal, must form the backbone of all copyright claims and decisions.

On the other hand, although the Matthew Bender case is the closest case on point, it is neither binding on other Circuit Courts nor on the U.S. Supreme Court, and this must be kept in mind. Still, the 2nd Circuit Court has issued more opinions working out post- Feist standards of originality and creativity and thus its opinions are to be given substantial weight in such matters until such time as its standards are denied or changed within other Circuit Courts' jurisdictions, or until it is reversed by the U.S. Supreme Court.

Thus applications of Feist are definitive, while applications of Matthew Bender are presently definitive within the 2nd Circuit Court's jurisdiction, and persuasive in other jurisdictions.
At this point in the discussion, one might ask, "If it is not possible to copyright works in the public domain on the basis of their having been changed from one medium (hard copy) to another (E-text), or on the basis of their spelling, dates, citations, and numbering system being standardized, or Scripture references being added to quotations of Scripture in the original text, on what basis might a publisher claim copyright for such materials?"

The most obvious answer is that the publisher is not informed concerning the details of copyright law. In this case, upon being informed that his claim of copyright is not supported by the law, such a publisher would discontinue making this claim and would, instead, find another method of assuring his business' profitability.

Some might claim to hold copyright while knowing their claim is without merit. It is not uncommon for legal claims to be made that extend past legal rights and for those making such baseless claims to warn that they intend to sue those who violate them. The effectiveness of this technique depends upon intimidation under threat of lawsuit. Faced with the wealth and power (and often in-house legal departments), it is understandable that smaller businesses and individuals would choose to err on the side of caution rather than run the risk of being taken to court.

In both cases above, it must be kept in mind that, in legal no less than other matters, a man saying it's so doesn't make it so. As Daniel Cohen and Roy Rosenzweig state in their book, Digital History: A Guide to Gathering, Preserving, and Presenting the Past on the Web , published in 2005 by University of Pennsylvania's Penn Press:

Even the most carefully placed or most threateningly worded copyright notice does not protect you if the work does not meet the requirement enunciated in the Feist case that copyrightable works reflect a minimal degree of creativity and originality. You can spend thousands of hours scanning and digitizing public domain documents--say, the entire New York Times from 1865 or all of Charles Dickens's novels--but, according to most lawyers, you can't copyright the results.

(Similar to Digital History, another helpful work is Prof. Deborah Tussey's, "The Creative as Enemy of the True: The Meaning of Originality in the Matthew Bender Cases, The Richmond Journal of Law and Technology 10, (Spring 1999)

In the above summary of the law, please keep in mind I am neither an attorney nor have I received any formal legal training. And yet, I have requested legal advice and have been assured this summary is accurate.

Yet this letter does not address one other matter held in abeyance: given the above, what are the demands of love that exist between EPP's investors and those who drink at the wells of Puritan divinity in this late day and desire to use the Puritan's work in digital form? I will wait to address this matter in my third, and final, letter.

Meanwhile, I would appreciate hearing from you concerning any legal matter you believe I have overlooked or erred in.

Steve, we both share a common love for the writings of the Puritans and desire to see their works in as many hands as possible. The dilemma we face is finding the best and most honorable method for doing so. May the Lord bless your work for Him.

Cordially in Christ,

Tim Bayly