Law Professors Defend NIH Policy

I want to thank my colleagues in the legal academy who responded to the AAP's unfounded legal attack on the NIH Public Access Policy by deflecting the TRIPS Hammer with a straightforward explanation of why TRIPS does not apply to the NIH policy. NIH is fully respecting copyright - an author's right.

The letter to Chairman Conyers and shared with the other Members of the House Judiciary Committee has made some on the Hill start to think that certain copyright owners are misusing the TRIPS Hammer.

Here's the letter:

September 8, 2008

The Honorable John Conyers, Jr.
Chairman
Committee on the Judiciary
U.S. House of Representatives
2138 Rayburn House Office Building
Washington, D.C., 20515

Re: NIH Public Access Policy

Dear Chairman Conyers:

The undersigned professors at law schools throughout the United States teach copyright law or engage in scholarly research about copyright law. We write to respond to serious misstatements relating to copyright law contained in a recent submission to the National Institutes of Health with respect to the relationship between the NIH Final Policy on Public Access and certain aspects of U.S. and international copyright law. The letter (hereafter "the Proskauer Letter") was written by Jon A. Baumgarten of Proskauer Rose LLP, dated May 30, 2008, to Allan Adler, Vice President for Legal & Government Affairs, American Association of Publishers in response to Mr. Adler's request and with the understanding that the letter would be part of a public submission to NIH by the AAP.

As you know, the NIH Policy requires grantees to ensure that all investigators funded by NIH submit an electronic version of their final peer-reviewed manuscripts to the National Library of Medicine's PubMed Central (PMC), which then makes the manuscript publicly available within twelve months of the official date of publication. The NIH adopted this policy as required by a provision included in the Labor, Health and Human Services, Education, and Related Agencies FY 2008 Appropriations Bill.

The Proskauer Letter alleges that the NIH Policy may constitute an involuntary transfer of copyright in violation of Section 201(e) of the Copyright Act. Contrary to the Proskauer Letter's assertions, the Policy does not create an involuntary transfer, a compulsory license, or a taking of the publishers' or investigators' copyright. Rather, under the Policy, NIH
conditions its grant of funding on the grantee's agreement to ensure that investigators provide PMC with a copy of articles reporting NIH-funded research along with a non-exclusive copyright license to make the article publicly available within one year after the article's publication in a journal.

In other words, if the investigator chooses not to receive NIH funding, the investigator has no obligation to provide the article to PMC or a copyright license to NIH. But if the investigator elects to receive NIH funding, he or she accepts the terms of the grant agreement, which include the requirement to deposit the article with PMC so that the article can be made publicly accessible within one year after publication. Because the investigator has this basic choice, the policy does not constitute an involuntary transfer.

Furthermore, because the author makes this choice long before the publisher enters into the picture, the policy does not take any intellectual property away from the publisher. When the investigator transfers copyright to the publisher, as most publishers require as a condition of publication, the copyright is already subject to the non-exclusive license granted by the investigator to NIH. Thus, the policy does not change the scope of the publisher's copyright after the publisher has acquired it.

Additionally, it is important to note that the Policy requires deposit of the author's final manuscript after peer review, not the final published version of the article. This aspect of the Policy renders moot any debate about whether the publisher obtains a copyright interest in the article through the process of copy editing or layout. The publisher performs its copy editing after the investigator submits the manuscript to PMC. While the publisher plays a role in coordinating peer review, this process does not result in any copyrightable expression attributable to the publisher. Any edits or additional text written in response to peer reviewers' comments is written by the investigator, not the publisher.

Building on the erroneous premise that the Policy is an involuntary transfer of copyright or a compulsory license, the Proskauer Letter then suggests that the NIH Policy might violate U.S. obligations under the Article 9 of the Berne Convention or Article 13 of the TRIPS agreement. This argument lacks any basis in law. As discussed above, the NIH Policy governs the terms of contracts, not exceptions to copyright law. As such, the Policy in no way implicates Article 13 of TRIPS or Article 9 of the Berne Convention, which address permissible copyright exceptions. These treaty provisions are completely silent on the issue of the terms a licensee can require of a copyright owner in exchange for valuable consideration.

The federal government provides funding to state and local government agencies and private entities for a wide range of activities, including homeland security, law enforcement, agriculture, transportation, education, and research. Congress frequently imposes conditions on recipients of this federal funding. While one might question the wisdom of a particular condition, Congress without doubt has the authority to impose
them. Similarly, Congress has the authority to require NIH grantees to deposit their manuscripts with PMC and to grant a license to make these publicly accessible over the Internet within a year of publication. Such a requirement conflicts neither with the Copyright Act nor with international treaty obligations.

Respectfully,

Keith Aoki, Professor of Law
University of California Davis School of Laaw
Davis, CA 95616

Ann Bartow, Professor of Law
University of South Carolina School of Law
Columbia, SC 29208

Dan L. Burk, Chancellor's Professor of Law
University of California, Irvine
Irvine, CA 92697-8000

Adam Candeub, Acting Director, IP & Communications Law Program
Michigan State University, College of Law
East Lansing, MI 48824-1300

Michael W. Carroll, Visiting Professor of Law
Washington College of Law, American University
Washington, DC 20016

Anupam Chander, Visiting Professor of Law
University of Chicago Law School
Chicago, IL 60637

Andrew Chin, Associate Professor of Law
University of North Carolina School of Law
Chapel Hill, NC 27599

Margaret Chon, Donald and Lynda Horowitz Professor for the Pursuit of Justice
Seattle University School of Law
Seattle, WA 98122-1090

Robert Denicola, Margaret Larson Professor of Intellectual Property
University of Nebraska-Lincoln College of Law
Lincoln, NE 68583-0902

William Fisher, Wilmer Hale Professor of Intellectual Property Law
Harvard Law School
Cambridge, Massachusetts 02138

Brett M. Frischmann, Visiting Professor of Law
Cornell Law School
Ithaca, NY 14853-4901

Lolly Gasaway, Associate Dean For Academic Affairs & Professor
School of Law, University of North Carolina - Chapel Hill
Chapel Hill, NC 27599

Deborah R. Gerhardt, Director of Intellectual Property Initiative
University of North Carolina School of Law
Chapel Hill, NC 27599

Llewellyn Joseph Gibbons, Associate Professor of Law
University of Toledo College of Law
Toledo, Ohio 43606-3390

James Grimmelman, Associate Professor of Law
New York Law School
New York, NY 10013

Dan Hunter, Visiting Professor of Law
New York Law School
New York, NY 10013

Peter Jaszi, Professor of Law
Washington College of Law, American University
Washington, DC 20016

E. Judson Jennings, Professor of Law
Seton Hall University Law Center
Newark, New Jersey 07102-5210

Dennis Karjala, Jack E. Brown Professor of Law
Arizona State University Sandra Day O'Connor College of Law
Tempe, Arizona 85287-7906

Jay P. Kesan, Professor of Law & Mildred Van Voorhis Jones Faculty Scholar
University of Illinois at Urbana-Champaign
Champaign, IL 61820

Raymond Ku, Professor of Law
Case Western Reserve University School of Law
Cleveland, Ohio 44106

David S. Levine, Assistant Professor of Law
Charlotte School of Law
Charlotte, NC 28208

Doug Lichtman, Professor of Law
University of California, Los Angeles
Los Angeles, California 90095-1476

Jessica Litman, Professor of Law
University of Michigan Law School
Ann Arbor, Michigan 48109-1215

Lydia Pallas Loren, Professor of Law
Lewis & Clark Law School
Portland, Oregon 97219

Michael J. Madison, Professor of Law
University of Pittsburgh School of Law
Pittsburgh, PA 15260

Mark P. McKenna, Associate Professor of Law
Notre Dame Law School
Notre Dame, IN 46556

Michael J. Meurer, Professor of Law and Michaels Faculty Scholar
Boston University School of Law
Boston, MA 02215

Joseph Scott Miller, Visiting Associate Professor of Law
University of Georgia School of Law
Athens, GA 30602

Neil Netanel, Professor of Law
UCLA School of Law
Los Angeles, CA 90095

Tyler Ochoa, Professor of Law
Santa Clara University School of Law
Santa Clara, California 95053

Ruth Okediji, Professor of Law
University of Minnesota School of Law
Minneapolis, MN 55455

Frank Pasquale, Loftus Professor of Law
Seton Hall University School of Law
Newark, New Jersey 07102-5210

Malla Pollack, Professor of Law
Barkley School of Law
Paducah, Kentucky 42001

David G. Post, I. Herman Stern Professor of Law
Beasley School of Law, Temple University
Philadelphia, PA 19122

R. Anthony Reese, Arnold, White & Durkee Centennial Professor
School of Law, The University of Texas at Austin
Austin, TX 78705

Michael Risch, Associate Professor of Law
West Virginia University College of Law
Morgantown, WV 26506-6130

Matthew Sag, Assistant Professor of Law
DePaul University College of Law
Chicago, IL 60604

Pamela Samuelson, Richard M. Sherman Distinguished Professor
University of California, Berkeley
Berkeley, CA 94720-4600

Joshua D. Sarnoff, Practitioner in Residence
Washington College of Law, American University
Washington, DC 20016

Wendy Seltzer, Visiting Practitioner-in-Residence
Washington College of Law, American University
Washington, DC 20016

Katherine J. Strandburg, Professor of Law
DePaul University College of Law
Chicago, IL 60604

Madhavi Sunder, Professor of Law
UC Davis Law School
Davis, CA 95616-5201

Hannibal Travis, Visiting Assistant Professor of Law
Villanova University School of Law
Villanova, PA 19085

Rebecca Tushnet, Professor of Law
Georgetown University Law Center
Washington, DC 20001

Deborah Tussey, Professor of Law
Oklahoma City University School of Law
Oklahoma City, OK 73106

The AAP tries to kill the NIH policy with the TRIPS Hammer

Having failed to stop the NIH Public Access Policy from becoming mandated by Congress, the American Association of Publishers reached for the handy TRIPS hammer. Their argument - the NIH Policy makes the United States look weak on IP. The legal argument they rely on is here.

The TRIPS Hammer

Lobbyists for the trade organizations of large copyright-owning intermdiaries, such as the MPAA, RIAA and AAP, have become fond of pulling out the TRIPS hammer whenever they meet resistance to their proposals for more rights.

The TRIPS hammer is the argument that Congress must do what the lobbyist wants or the United States will be non-compliant with its international obligations under the TRIPS Agreement. The hammer then comes down with the argument that the United States has to set an example for the rest of the world about how to "respect" intellectual property because otherwise, certain trading partners will undermine the effectiveness of the TRIPS agreement.

And, of course, this is all said with a straight face even after the United States has been judged to be in violation of TRIPS and has failed to remedy the violation.

The Attack on the NIH Policy

I am behind on posting, and there's much news.

Last month, Chairman Conyers (D-MI) introduced the "Fair Copyright in Research Works Act" (H.R. 6845) into the House. Paul Courant, Peter Suber, and others, rightly pointed out that "fair" is foul in this case.

The aim of the bill is to use the Copyright Act to override longstanding federal procurement law, including the NIH Public Access Policy and to assert Judiciary Committee jurisdiction over federal procurement agreements that involve support for the creation of copyrighted works, such as journal articles reporting the results of scientific research.

The sad news is that the American Association of Publishers were successful in persuading the Chairman to introduce this bill even though it is terrible public policy.

The better news is that it does not look like this bill is going anywhere during this Congress. Neither Mr. Berman (D-CA)(Chair of the relevant House Subcommittee) nor Mr. Coble (R-NC) (Ranking Member on the Subcommittee) signed on as co-sponsors.

This initiative to snuff out the NIH policy has actually had a galvanizing effect on the community of supporters, and it's time to press the other agencies, such as the Department of Energy and the National Science Foundation, on the question of public access to federally-funded research.