RE: OCLC's New License for Bibliographic Records

[richards1000@comcast.net]

Thanks to Kevin Smith and Mark Legott for their valuable 
comments.  Rebecca Kemp has helped me to develop the following 
further thoughts.  As I understand it (and please correct me if 
I'm mistaken), Kevin is arguing that the proposed policy is going 
to be incorporated into one or more separate contracts for 
accessing OCLC WorldCat (either click-through contracts appearing 
each time an OCLC member accesses the OCLC cataloging service, 
ILL service, or FirstSearch, or bilateral written annual 
contracts for those services), and that the policy therefore 
needs to be interpreted in the context of those separate 
contracts.  (I note that we don't have access to those separate 
contracts, so we can't presently interpret the proposed policy in 
proper context.)

I believe Kevin is further contending that OCLC intends to 
require OCLC members to accept use and transfer restrictions 
respecting any and all WorldCat bib records (individual records 
or batches of records, whether or not OCLC has copyright in 
individual records, excepting each member's original cataloging), 
as a condition of access to the WorldCat database, and if an OCLC 
member agrees to those restrictions and then uses any individual 
WorldCat bib record or batch of records in a manner inconsistent 
with the policy, then OCLC will bring a breach of contract action 
against the member, but won't sue for copyright infringement.

I hope Kevin is right, but for the following reasons, I'm not 
persuaded that OCLC will refrain from suing for copyright 
infringement, and so I agree with those who argue that OCLC 
members should address the copyright issue respecting WorldCat 
bib records.

A search of the LC copyright registration database appears to 
show that OCLC has registered a compilation copyright in the 
WorldCat database, many times over.  See 
http://cocatalog.loc.gov/ and search by title: OCLC online 
bibliographic database.

In addition, a review of the OCLC proposed policy reveals three 
matters that seem relevant: first, much of the wording resembles 
that found in a typical nonexclusive copyright license; second, 
the grant language seems to refer to the reproduction, derivative 
works, display, and distribution rights that attach under Section 
106 of the Copyright Act; and third, the breach language, if it 
were in a contract, seems consistent with the breach provisions 
of a copyright license, because it permits the licensor to 
immediately cancel for any breach whatsoever of the usage 
restriction terms, no matter how minor, and the licensor reserves 
the exclusive right to determine whether a breach has occurred. 
(If the contract in which these terms will eventually be 
incorporated is a pure access contract for a database in which 
the vendor asserts no copyright rights, then I can see how even a 
minor breach of the access terms would be deemed material, but I 
find it difficult to see how a minor breach of a restriction on 
using database records post-access could reasonably be deemed 
material.)

Finally, I think OCLC's chances of obtaining injunctive relief 
would be weakened, perhaps substantially, if it refrains from 
suing for copyright infringement.  Note that injunctions are 
nearly automatically awarded when copyright infringement is 
determined.  Consider a member's post-access usage restriction 
breach.  Injunctive relief is the only remedy OCLC wants: an 
order for the member and its transferees to halt the downstream 
conduct.  Only an injunction can preserve the value of WorldCat. 
Damages would avail OCLC nothing.

But there are no property rights at issue in our hypothetical: no 
access term has been violated, we posit that OCLC will not assert 
property rights to the intellectual content, and OCLC has no 
property rights in downstream physical copies of WorldCat bib 
records, because, by the nature of computing, those copies are 
physically distinct from the records originally downloaded from 
WorldCat.  That suggests that traditional contract remedies are 
available: damages, and equitable relief only if damages prove 
inadequate.  OCLC would then have two options: persuade the court 
to enforce section E(1) of the proposed policy on the ground that 
the licensee expressly agreed to equitable relief as the first 
remedy; or show that damages are inadequate.

I think that either option presents substantial obstacles for the 
licensor, with attendant costs and delay even if the licensor 
prevails.  Compare these options by themselves, to the 
near-certainty of an injunction's being awarded on a ruling of 
copyright infringement.  Therefore I think that OCLC's refraining 
from suing for copyright infringement under those circumstances 
seems quite risky.  These factors taken all together suggest to 
me that OCLC believes that it has at least a compilation 
copyright in the WorldCat database as a whole, and that it 
intends to use the proposed policy as a license to enforce that 
copyright with respect to OCLC members.  Still, I hope I'm 
mistaken.

Irrespective of OCLC's eventual theory of recovery, I think 
Mark's comments eloquently highlight OCLC members' options when 
confronted with the proposed policy as incorporated into an 
offered license.  Would a rational OCLC member voluntarily 
relinquish the right to use and transfer individual WorldCat bib 
records respecting which OCLC has no copyright rights, 
particularly, as Mark notes, in the current environment of 
energetic development of new digital libraries in which 
downstream use of bibliographic metadata is essential?  (Look at 
the role of bibliographic metadata in HathiTrust, for example, in 
addition to the resources Mark mentions.)

As noted above, OCLC members are likely to confront the proposed 
policy in either of two contracting contexts: in new 
click-through contracts for OCLC cataloging, ILL, and FirstSearch 
services (a method I believe OCLC has never used before 
respecting OCLC members with annual contracts), or in new 
bilateral written annual contracts for those services.

Respecting click-through contracts, one can imagine OCLC members' 
opposing this contracting method on several grounds, including 
inefficiency, library employees' lack of authority to bind the 
OCLC member, inconsistency with OCLC's past practice and with 
generally recognized library contracting practice, and as 
precluding members' counsel from properly reviewing the terms. 
Respecting annual contracts, one can imagine that each OCLC 
member might seek to bargain for an amendment providing for a 
more favorable definition of actionable breach, an ample cure 
period and express cure procedure preceding the attachment of the 
licensor's cancellation right, and language preserving the 
member's right to unrestricted use and transfer of individual bib 
records in which OCLC has no copyright (public domain records and 
records respecting which the copyright-owning libraries have not 
transferred their rights to OCLC).

Perhaps one might posit as a key goal of such negotiations the 
library's securing the right to unrestricted downstream use of 
reasonable quantities of bib records respecting which OCLC has no 
copyright rights, that is, quantities sufficient for the library 
to pursue its digital initiatives, but not so great as to 
reasonably pose a competitive threat to OCLC's WorldCat 
businesses.

***

Further reflection on the likely consequences of the rather 
prodigious remedy provided for in section E(1) of the proposed 
policy--note that that's the remedy for even a de minimis 
breach--leads one to imagine OCLC members' seeking an amendment 
to that section providing for a remedy somewhat less severe than 
compelling the shut-down of the library's online catalog, ILL 
service for monographs, and staff and patron access to WorldCat 
through FirstSearch.

*The comments expressed above are not offered as legal advice, 
and do not in fact constitute legal advice.*

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Robert C. Richards, Jr., J.D.*, M.S.L.I.S., M.A.
Philadelphia, PA
richards1000@comcast.net
* Member New York bar, retired status.
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