Authors Guild, Inc. v. Hathitrust

Filing 222

DEFERRED APPENDIX, volume 3 of 5, on behalf of Appellant Australian Society Of Authors Limited, Australian Society Of Authors Limited, Authors Guild, Inc., Authors League Fund, Inc., Authors' Licensing and Collecting Society, Pat Cummings, Pat Cummins, Erik Grundstrom, Angelo Loukakis, Norsk Faglitteraer Forfatter0OG Oversetterforening, Roxana Robinson, Helge Ronning, Andre Roy, Jack R. Salamanca, James Shapiro, James Shapiro, Daniele Simpson, Danielle Simpson, T.J. Stiles, Sveriges Forfattarforbund, Union Des Ecrivaines Et Des Ecrivains Quebecois, Fay Weldon and Writers' Union of Canada, FILED. Service date 06/28/2013 by CM/ECF.[978658] [12-4547]

12-4547-cv
United States Court of Appeals
for the

Second Circuit
AUTHORS GUILD, INC., AUSTRALIAN SOCIETY OF AUTHORS
LIMITED, UNION DES ECRIVAINES ET DES ECRIVAINS QUEBECOIS,
ANGELO LOUKAKIS, ROXANA ROBINSON, ANDRE ROY, JAMES
SHAPIRO, DANIELE SIMPSON, T.J. STILES, FAY WELDON,
AUTHORS LEAGUE FUND, INC., AUTHORS’ LICENSING AND
COLLECTING SOCIETY, SVERIGES FORFATTARFORBUND, NORSK
FAGLITTERAER FORFATTERO OG OVERSETTERFORENING,
WRITERS’ UNION OF CANADA, PAT CUMMINGS, ERIK GRUNDSTROM,
HELGE RONNING, JACK R. SALAMANCA,
Plaintiffs-Appellants,
(For Continuation of Caption See Inside Cover)
_______________________________
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK

JOINT DEFERRED APPENDIX
Volume 3 of 5 (Pages A-561 to A-837)
EDWARD H. ROSENTHAL
JEREMY S. GOLDMAN
ANNA KADYSHEVICH
FRANKFURT KURNIT KLEIN & SELZ, P.C.
488 Madison Avenue, 10th Floor
New York, New York 10022
[phone]
Attorneys for Plaintiffs-Appellants
(For Continuation of Appearances See Inside Cover)

v.
HATHITRUST, CORNELL UNIVERSITY, MARY SUE COLEMAN, President,
University of Michigan, MARK G. YUDOF, President, University of California,
KEVIN REILLY, President, University of Wisconsin System,
MICHAEL MCROBBIE, President, Indiana University,
Defendants-Appellees,
NATIONAL FEDERATION OF THE BLIND, GEORGINA KLEEGE,
BLAIR SEIDLITZ, COURTNEY WHEELER,
Intervenor Defendants-Appellees.

W. ANDREW PEQUIGNOT
ALLISON M. SCOTT ROACH
JOSEPH M. BECK
KILPATRICK TOWNSEND & STOCKTON LLP
1100 Peachtree Street, NE, Suite 2800
Atlanta, Georgia 30309
[phone]
– and –
JOSEPH E. PETERSEN
ROBERT N. POTTER
KILPATRICK TOWNSEND & STOCKTON LLP
The Grace Building
1114 Avenue of the Americas, 21st Floor
New York, New York 10036
[phone]
Attorneys for Defendants-Appellees

ROBERT J. BERNSTEIN
LAW OFFICE OF ROBERT J. BERNSTEIN
380 Lexington Avenue, 17th Floor
New York, New York 10168
[phone]
– and –
DANIEL FRANK GOLDSTEIN
JESSICA P. WEBER
BROWN GOLDSTEIN LEVY LLP
120 East Baltimore Street, Suite 1700
Baltimore, Maryland 21202
[phone]
Attorneys for Intervenor DefendantsAppellees

i
TABLE OF CONTENTS
(Public Version)
Page
District Court Docket Entries ....................................

A-1

First Amended Complaint, dated October 5, 2011 ....

A-66

Defendants’ Joint Answer and Defenses, dated
December 2, 2011 ..................................................

A-98

Memorandum in Support of the Motion of the
National Federation of the Blind and Others to
Intervene as Defendants, dated December 6, 2011

A-123

Notice of Motion to Intervene, dated
December 9, 2011 ..................................................

A-127

Exhibit A to Motion –
Declaration of Dr. Marc Maurer, dated
December 6, 2011 ..................................................

A-130

Defendants-Intervenors’ Joint Answer and
Defenses, filed April 12, 2012 ...............................

A-136

Declaration of Laura Ginsberg Abelson, for
Defendants-Intervenors, in Support of Motion for
Summary Judgment, dated June 29, 2012 .............

A-158

Exhibit A to Ginsberg Abelson Declaration –
Excerpts from Transcript of Rule 30(b)(6)
Deposition of Fredric L. Haber, taken on
June 4, 2012
(Reproduced in the Confidential Appendix at pp.
CA-1-CA-32)

ii
Page
Exhibit B to Ginsberg Abelson Declaration –
Excerpts from Transcript of Rule 30(b)(6)
Deposition of Daniel Clancy, taken on
June 1, 2012
(Reproduced in the Confidential Appendix at pp.
CA-33-CA-40)
Exhibit C to Ginsberg Abelson Declaration –
Excerpts from Objections and Responses of the
Individually Named Plaintiffs to DefendantsIntervenors’ First Set of Interrogatories and First
Request for the Production of Documents, dated
May 8, 2012 ...........................................................

A-160

Exhibit D to Ginsberg Abelson Declaration –
Declaration of Georgina Kleege, dated
December 5, 2011 ..................................................

A-165

Exhibit E to Ginsberg Abelson Declaration –
Declaration of Blair Seidlitz, dated
December 6, 2011 ..................................................

A-167

Exhibit F to Ginsberg Abelson Declaration –
Declaration of Courtney Wheeler, dated
December 6, 2011 ..................................................

A-169

Declaration of Dr. Marc Maurer, for DefendantsIntervenors, in Support of Motion for Summary
Judgment, dated June 27, 2012 ..............................

A-171

Declaration of George Kerscher, for DefendantsIntervenors, in Support of Motion for Summary
Judgment, dated June 28, 2012 ..............................

A-180

Declaration of James Fruchterman, for DefendantsIntervenors, in Support of Motion for Summary
Judgment, dated June 28, 2012
(Redacted. Complete version reproduced in the
Confidential Appendix at pp. CA-50-CA-56) .......

A-194

iii
Page
Declaration of Paul Aiken, for Plaintiffs, in Support
of Motion for Summary Judgment, dated
June 28, 2012 .........................................................

A-201

Declaration of T.J. Stiles, for Plaintiffs, in Support
of Motion for Summary Judgment, dated
June 26, 2012 .........................................................

A-213

Exhibit A to Stiles Declaration –
Copyright Registration No. TX0005703845 .........

A-220

Exhibit B to Stiles Declaration –
Agreement, dated February 23, 2010 ....................

A-223

Exhibit C to Stiles Declaration –
Printout from Amazon.com ...................................

A-225

Exhibit D to Stiles Declaration –
Royalty Statement, dated January 28, 2012 ...........

A-227

Declaration of Trond Andreassen, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 22, 2012 .........................................................

A-232

Declaration of Owen Atkinson, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 27, 2012 .........................................................

A-237

Declaration of Pat Cummings, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 28, 2012 .........................................................

A-242

Exhibit A to Cummings Declaration –
Work List by Pat Cummings ..................................

A-247

Exhibit B to Cummings Declaration –
Copyright Registrations .........................................

A-251

Exhibit C to Cummings Declaration –
Letter from Rubin Pfeffer to Pat Cummings,
dated June 30, 2008 ...............................................

A-266

iv
Page
Declaration of Kelly Duffin, for Plaintiffs, in
Support of Motion for Summary Judgment,
dated June 28, 2012 ...............................................

A-269

Exhibit A to Duffin Declaration –
Schedule of Works .................................................

A-274

Exhibit B to Duffin Declaration –
Certificate of Appointment of Estate Trustee and
Will ........................................................................

A-277

Exhibit C to Duffin Declaration –
License issued by the Copyright Board to
University of Athabasca .........................................

A-286

Declaration of Francis Farley-Chevrier, for
Plaintiffs, in Support of Motion for Summary
Judgment, dated June 26, 2012 ..............................

A-289

Exhibit A to Farley-Chevrier Declaration –
License issued by the Copyright Board to
University of Athabasca .........................................

A-294

Declaration of Erik Grundström, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 26, 2012 .........................................................

A-297

Declaration of Louise Hedberg, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 26, 2012 .........................................................

A-302

Exhibit A to Hedberg Declaration –
Presentation titled, “Sweden’s Digital Library –
ECL a flexible model of Rights Clearance and
Marketing Available” .............................................

A-307

Declaration of Jan Terje Helmli, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 27, 2012 .........................................................

A-324

v
Page
Exhibit A to Helmli Declaration –
Agreement between The National Library of
Norway and Kopinor, dated June 27, 2012............

A-328

Declaration of Isabel Howe, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 27, 2012 .........................................................

A-334

Exhibit A to Howe Declaration –
Schedule of Works .................................................

A-340

Exhibit B to Howe Declaration –
Documents Evidencing Transfer of Copyrights ....

A-343

Exhibit C to Howe Declaration –
Copyright Registration Certificates .......................

A-365

Exhibit D to Howe Declaration –
Chain of E-mails ....................................................

A-385

Exhibit E to Howe Declaration –
Printout from Hathi Trust Digital Library .............

A-388

Declaration of Roxana Robinson, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 26, 2012 .........................................................

A-390

Exhibit A to Robinson Declaration –
Schedule of Works .................................................

A-395

Exhibit B to Robinson Declaration –
Copyright Registrations .........................................

A-398

Declaration of Helge Rønning, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 27, 2012 .........................................................

A-413

Declaration of André Roy, for Plaintiffs, in Support
of Motion for Summary Judgment, dated
June 27, 2012 .........................................................

A-418

vi
Page
Declaration of James Shapiro, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 25, 2012 .........................................................

A-423

Exhibit A to Shapiro Declaration –
Copyright Registration...........................................

A-427

Declaration of Daniéle Simpson, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 25, 2012 .........................................................

A-430

Declaration of Fay Weldon, for Plaintiffs, in
Support of Motion for Summary Judgment,
dated June 25, 2012 ...............................................

A-434

Exhibit A to Weldon Declaration –
Schedule of Works and Copyright Registrations ...

A-439

Declaration of John White, for Plaintiffs, in Support
of Motion for Summary Judgment, dated
June 21, 2012 .........................................................

A-485

Exhibit A to White Declaration –
Schedule of Works .................................................

A-492

Exhibit B to White Declaration –
Copyright Registration...........................................

A-495

Exhibit C to White Declaration –
Agreement, dated November 29, 2011 ..................

A-516

Exhibit D to White Declaration –
Agreement, dated September 1, 2011 ....................

A-525

Declaration of Stanley Katz, for Defendants, in
Support of Motion for Summary Judgment, dated
June 26, 2012 .........................................................

A-534

Exhibit A to Katz Declaration –
Curriculum Vitae of Stanley Katz ..........................

A-540

vii
Page
Declaration of Margaret Leary, for Defendants, in
Support of Motion for Summary Judgment, dated
June 26, 2012 .........................................................

A-555

Declaration of Neil R. Smalheiser, for Defendants,
in Support of Motion for Summary Judgment,
dated June 26, 2012 ...............................................

A-561

Exhibit A to Smalheiser Declaration –
Curriculum Vitae of Neil R. Smalheiser, M.D.,
Ph.D. ......................................................................

A-570

Declaration of Faith C. Hensrud, for Defendants, in
Support of Motion for Summary Judgment, dated
June 28, 2012 .........................................................

A-598

Exhibit A to Hensrud Declaration –
June 2012 Flood in Duluth and the Northland
Rain Reports ..........................................................

A-607

Exhibit B to Hensrud Declaration –
Northland’s NewsCenter Article titled, ”Gov.
Walker Declares State Emergency in Northwest
Wisconsin,” dated June 26, 2012 ...........................

A-610

Exhibit C to Hensrud Declaration –
Superior News Article titled, “UWS Flood
Damage Estimated at $15 Million” .......................

A-613

Exhibit D to Hensrud Declaration –
Northland’s NewsCenter Article titled, “$15
Million in Flood Damages at UWS,” dated
June 25, 2012 .........................................................

A-618

Exhibit E to Hensrud Declaration –
Superior Telegram Article titled, “UWS Recovers
Slowly from Flooding,” dated June 27, 2012 ........

A-620

Expert Report of Professor Daniel Gervais, dated
June 28, 2012 .........................................................

A-622

viii
Page
Exhibit A to Gervais Report –
Curriculum Vitae of Daniel Gervais ......................

A-641

Exhibit B to Gervais Report –
List of Considered Material ...................................

A-659

Exhibit C to Gervais Report –
List of Prior Testimony at Trial or Deposition .......

A-660

Declaration of John Wilkin, for Defendants, in
Support of Motion for Summary Judgment, dated
June 28, 2012 .........................................................

A-661

Exhibit A to Wilkin Declaration –
Cooperative Agreement between Google, Inc.
and Regents of the University of Michigan/
University Library .................................................

A-690

Exhibit B to Wilkin Declaration –
Printout from HathiTrust Digital Library –
“Partnership Community” .....................................

A-739

Exhibit C to Wilkin Declaration –
Center for Research Libraries Global Resources
Network Certification Report of HathiTrust
Digital Repository ..................................................

A-743

Declaration of Joseph Petersen, for Defendants, in
Support of Motion for Summary Judgment, dated
June 29, 2012 .........................................................

A-750

Exhibit A to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff The Authors Guild, Inc. to Defendants’
Second Set of Interrogatories and Requests for
the Production of Documents, dated
April 20, 2012 ........................................................

A-755

ix
Page
Exhibit B to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff The Authors League Fund, Inc. to
Defendants’ Second Set of Interrogatories and
Requests for the Production of Documents, dated
April 20, 2012 ........................................................

A-765

Exhibit C to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff The Australian Society of Authors to
Defendants’ Second Set of Interrogatories and
Requests for the Production of Documents, dated
April 20, 2012 ........................................................

A-775

Exhibit D to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff The Authors’ Licensing and Collecting
Society to Defendants’ Second Set of
Interrogatories and Requests for the Production
of Documents, dated April 20, 2012 ......................

A-784

Exhibit E to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff The Writers’ Union of Canada to
Defendants’ Second Set of Interrogatories and
Requests for the Production of Documents, dated
April 20, 2012 ........................................................

A-793

Exhibit F to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Trond Andreassen to Defendants’
Second Set of Interrogatories and Requests for
the Production of Documents, dated
April 10, 2012 ........................................................

A-802

x
Page
Exhibit G to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Pat Cummings to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-811

Exhibit H to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Erik Grundström to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-820

Exhibit I to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Angelo Loukakis to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-829

Exhibit J to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Helge Rønning to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-838

Exhibit K to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Roxana Robinson to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated March 28, 2012 .

A-847

Exhibit L to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff André Roy to Defendants’ Second Set of
Interrogatories and Requests for the Production
of Documents, dated April 10, 2012 ......................

A-856

xi
Page
Exhibit M to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff J. R. Salamanca to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-865

Exhibit N to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff James Shapiro to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-874

Exhibit O to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Daniele Simpson to Defendants’ Second
Set of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-883

Exhibit P to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff T.J. Stiles to Defendants’ Second Set of
Interrogatories and Requests for the Production
of Documents, dated April 10, 2012 ......................

A-892

Exhibit Q to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff Fay Weldon to Defendants’ Second Set
of Interrogatories and Requests for the
Production of Documents, dated April 10, 2012 ...

A-901

Exhibit R to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff UNEQ to Defendants’ Second Set of
Interrogatories and Requests for the Production
of Documents, dated April 20, 2012 ......................

A-910

xii
Page
Exhibit S to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff SFF to Defendants’ Second Set of
Interrogatories and Requests for the Production
of Documents, dated April 20, 2012 ......................

A-918

Exhibit T to Petersen Declaration –
Excerpts from Objections and Responses of
Plaintiff NFFO to Defendants’ Second Set of
Interrogatories and Requests for the Production
of Documents, dated April 20, 2012 ......................

A-926

Exhibit U to Petersen Declaration –
Excerpts from Transcript of May 22, 2012
Deposition of Pat Cummings .................................

A-934

Exhibit V to Petersen Declaration –
Transcript of May 29 2012 Deposition of Helge
Rønning..................................................................

A-949

Exhibit W to Petersen Declaration –
Article by Peter Leonard and Timothy R.
Tangherlini titled, “Trawling in the Sea of the
Great Unread: Sub-Corpus Topic Modeling and
Humanities Research” ...........................................

A-962

Defendants’ Statement of Material Facts in Support
of Motion for Summary Judgment, dated
June 29, 2012 ......................................................... A-1000
Declaration of Edward H. Rosenthal, for Plaintiffs,
in Support of Motion for Summary Judgment,
dated June 29, 2012
(Reproduced herein at pp. A-1235–A-1250)

xiii
Page
Exhibit 1 to Rosenthal Declaration 1 –
Transcript from the Deposition of T.J. Stiles,
dated May 31, 2012 ............................................... A-1014
Exhibit 2 to Rosenthal Declaration –
Transcript from the Deposition of Helge
Rønning, dated May 29, 2012................................ A-1017
Exhibit 3 to Rosenthal Declaration –
Transcript from the Deposition of Pat Cummings,
dated May 22, 2012 ............................................... A-1020
Exhibit 4 to Rosenthal Declaration –
Transcript from the Deposition of John White,
dated June 8, 2012 ................................................. A-1023
Exhibit 71 to Rosenthal Declaration –
Responses to Plaintiffs’ First Set of
Interrogatories to Defendant HathiTrust, dated
February 8, 2012 .................................................... A-1026
Exhibit 72 to Rosenthal Declaration –
Supplemental Responses to Plaintiffs’ First Set of
Interrogatories to Defendant HathiTrust, dated
April 9, 2012 .......................................................... A-1069
Exhibit 73 to Rosenthal Declaration –
Responses to Plaintiffs’ First Set of
Interrogatories to Defendant Mark G. Yudof
(University of California), dated
February 8, 2012 .................................................... A-1077

1

The Transcript from the Deposition of T.J. Stiles,
dated May 31, 2012 is attached as Exhibit 3 to the
Rosenthal Declaration and the Transcript from the
Deposition of Pat Cummings, dated May 22, 2012 is
attached as Exhibit 1 to the Rosenthal Declaration.

xiv
Page
Exhibit 75 to Rosenthal Declaration –
Responses to Plaintiffs’ First Set of
Interrogatories to Defendant Mary Sue Coleman
(University of Michigan), dated February 8, 2012

A-1096

Exhibit 78 to Rosenthal Declaration –
Responses to Plaintiffs’ First Set of
Interrogatories to Defendant Kevin Reilly
(University of Wisconsin), dated
February 8, 2012 .................................................... A-1148
Exhibit 86 to Rosenthal Declaration –
Google search for “secure cheap advertising” at
http://books.google.com ........................................ A-1165
Exhibit 94 to Rosenthal Declaration –
News Article from the UM Website entitled, “UM Library Statement on the Orphan Works
Project,” dated September 16, 2011....................... A-1168
Exhibit 96 to Rosenthal Declaration –
Press Release entitled, “Google Checks Out
Library Books,” dated December 14, 2004 ........... A-1170
Exhibit 105 to Rosenthal Declaration –
Printout of a Screenshot from the HathiTrust
Website, dated June 28, 2012................................. A-1173
Memorandum of Law by Plaintiffs in Support of
Motion for Summary Judgment, dated June 29,
2012 [Excerpts] ...................................................... A-1175
Plaintiffs’ Statement of Undisputed Material Facts,
dated June 29, 2012
(Redacted. Complete version reproduced in the
Confidential Appendix at pp. CA-57-CA-82) ....... A-1176.1
Declaration of George Kerscher, in Support of
Motion for Summary Judgment, dated
June 28, 2012 ......................................................... A-1177

xv
Page
Exhibit A to Kerscher Declaration –
Curriculum Vitae of George Kerscher ................... A-1191
Declaration of Benjamin Edelman, for Plaintiffs, in
Support of Motion for Summary Judgment, dated
June 27, 2012
(Redacted. Complete version reproduced in the
Confidential Appendix at pp. CA-127-CA-145) ... A-1205
Exhibit A to Edelman Declaration –
Curriculum Vitae of Benjamin Edelman ............... A-1224
Declaration of Edward H. Rosenthal, for Plaintiffs,
in Support of Motion for Summary Judgment,
dated June 29, 2012 ............................................... A-1235
Exhibit 5 to Rosenthal Declaration –
Transcript from the Deposition of Heather
Christenson, dated April 11, 2012 [Excerpts] ........ A-1251
Exhibit 6 to Rosenthal Declaration –
Transcript from the Deposition of Paul Courant,
dated April 24, 2012 [Excerpts] ............................. A-1256
Exhibit 8 to Rosenthal Declaration –
Transcript from the Deposition of Peter Hirtle,
dated April 18, 2012 [Excerpts] ............................. A-1268
Exhibit 9 to Rosenthal Declaration –
Transcript from the Deposition of John Wilkin,
dated April 25, 2012 [Excerpts] ............................. A-1272
Plaintiffs’ Counter-Statement, in Response to
Defendants’ Statement of Material Facts in
Support of Defendants’ Motion for Summary
Judgment, dated July 20, 2012 .............................. A-1288
Plaintiffs’ Opposition to Defendants’ and
Defendants-Intervenors’ Motions for Summary
Judgment, dated July 20, 2012 [Excerpts] ............. A-1307

xvi
Page
Declaration of P. Bernt Hugenholtz, in Opposition
to Plaintiffs’ Motion for Summary Judgment,
dated July 19, 2012 ................................................ A-1310
Exhibit A to Hugenholtz Declaration –
Curriculum Vitae of P. Bernt Hugenholtz .............. A-1320
Declaration of Cory Snavely, in Opposition to
Plaintiffs’ Motion for Summary Judgment, dated
July 20, 2012
(Redacted. Complete version reproduced in the
Confidential Appendix at pp. CA-366-CA-375) ... A-1326
Exhibit A to Snavely Declaration –
Excerpts from the Deposition Transcript of
Benjamin G. Edelman ............................................ A-1336
Declaration of Joseph Petersen, in Support of
Defendants’ Opposition to Plaintiffs’ Motion for
Summary Judgment, dated July 20, 2012
(Redacted. Complete version reproduced in the
Confidential Appendix at pp. CA-376-CA-378) ... A-1345
Supplemental Declaration of John Wilkin, in
Support of Defendants’ Motion for Summary
Judgment, dated July 26, 2012 .............................. A-1348
Reply Declaration of Joseph Petersen, in Further
Support of Defendants’ Motion for Summary
Judgment, dated July 26, 2012 .............................. A-1352
Exhibit B to Petersen Declaration –
Printout from HathiTrust Digital Library –
“Functional Objectives”......................................... A-1354
Declaration of Frederic K. Schroeder, dated
July 23, 2012 .......................................................... A-1357
Transcript of August 6, 2012 Proceedings
[Excerpts] ............................................................... A-1361

xvii
Page
Notice of Appeal, dated November 8, 2012............... A-1366

A-561
Case 1:11-cv-06351-HB Document 104

Filed 06/29/12 Page 1 of 37

KILPATRICK TOWNSEND & STOCKTON LLP
Joseph Petersen (JP 9071)
Robert Potter (RP 5757)
1114 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Joseph M. Beck (admitted pro hac vice)
W. Andrew Pequignot (admitted pro hac vice)
Allison Scott Roach (admitted pro hac vice)
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309-4530
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Defendants
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

DECLARATION OF NEIL R. SMALHEISER IN SUPPORT OF
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
I, Neil R. Smalheiser, pursuant to 28 U.S.C. § 1746, hereby declare as follows:
1.

Since August, 1996, I have been a faculty member in the Department of

Psychiatry, University of Illinois at Chicago, in which I teach courses and conduct research on
neuroscience and information science. Currently I am Associate Professor with Tenure. I submit
this declaration in support of the defendant libraries’ (the “Libraries”) motion for summary
judgment. Unless otherwise noted, I make this declaration based upon my own personal
knowledge.
2.

I received a Bachelor of Arts degree in Mathematics from the University of Iowa

in 1974 and received my MD-PhD in Medicine and Neuroscience from the Albert Einstein
College of Medicine in 1982.

A-562
Case 1:11-cv-06351-HB Document 104

3.

Filed 06/29/12 Page 2 of 37

I have worked in the field of text mining since 1991. “Text mining” is the use of

technology to identify and extract new pieces of information from the enormous amount of
knowledge available in large bodies of text. While text generally is written for people to read,
text mining does not involve reading the text; instead, it uses text in digital form as data to be
analyzed and processed through algorithms, which are sets of instructions or rules applied—
usually by a computer—to compute a result.
4.

Text mining can be applied to many different types of uses, such as retrieving and

classifying documents; identifying new, interesting or particularly controversial findings; or
identifying new emerging trends. In different contexts, the techniques of text-mining can be put
to a variety of uses, including identifying influential experts (thought leaders) in a particular
subject, predicting civil unrest in third world countries, or tracking the emergence of infectious
disease outbreaks or terrorist cells.
5.

A simple example of these many uses of text mining is as follows: Assume a

historian discovers an unpublished manuscript of a play written in absurdist style—he suspects
that it may have been written by Edward Albee or Harold Pinter. A text mining approach to this
question might be tackled by collecting all of the known works of Edward Albee digitally and
tabulating all of the words and phrases and punctuation marks used therein. Besides counting
their individual frequencies, they can also be classified in different aggregate ways—e.g.,
counting the frequencies of proper names, active verbs, mentions of geographical locations, or
calculating the average difficulty of the text in terms of the grade level required to understand it.
This creates an overall profile of Edward Albee, and the same can be done for the known works
of Harold Pinter. The profile of the unpublished manuscript is compared to the profiles of
Edward Albee and Harold Pinter—if it is very similar to Albee and not to Pinter, this would

A-563
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provide evidence that Albee is the likely author. If not very similar to either, this would suggest
that some other author entirely may be responsible for writing it.
6.

In fact, I understand that a professor at Vassar College, Donald Wayne Foster,

used a form of text mining to identify Joe Klein as the writer of “Primary Colors,” a thinly veiled
exposé of President Clinton’s 1992 run to the presidency which was originally published
anonymously.
7.

As I will discuss in more detail below, my personal experience in text mining has

mostly been in the biomedical field. However, text mining processes and methods could be
employed to conduct research over digital textual material of virtually any subject matter to
discover new relationships, trends, correlations, and other information that may not be
recognized through manually reading the texts, or that may only become apparent upon analysis
of such a vast dataset that it would be virtually impossible to realize through reading.
8.

I have published more than 90 peer-reviewed publications, of which more than 20

concern text mining. I have received five research grants for text mining from the National
Institutes of Health (NIH) and private foundations. I have been a member of the program
committee of many international conferences on medical informatics, am a member of eight
journal editorial boards, and have been in leadership roles in prominent professional societies
including the American Medical Informatics Association, Association for Computing
Machinery, American Society of Information Science and Technology, and Society for
Neuroscience. I have served on numerous grant review panels for NIH and the National Science
Foundation (NSF). Attached as Exhibit A is a true and correct copy of my most recent
curriculum vitae.

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I have been asked by Kilpatrick Townsend & Stockton LLP to describe certain of

the types of research that can be performed using a digital repository of works such as the
repository of works offered by the Libraries through the HathiTrust Digital Library (“HDL”).
10.

In working on this assignment, to date, I have read and/or referred to the

HathiTrust website at hathitrust.org.
The Emerging Field of Text Mining
11.

The studies of one of my mentors, Dr. Don Swanson, during the period 1986 to

1993 were an early impetus for the development of automated text mining research processes
and their application in the biomedical field. Dr. Swanson developed the technique of combining
separate statements, found in separate works, together to form new statements that represent new
scientific hypotheses.
12.

For example, suppose the statement “A affects B” appears in one work, and the

statement “B affects C” appears in another work. These two works may have been published in
different years by different authors, in different medical sub-fields, and no one person may have
even read both of them. However, juxtaposing and viewing both statements together, one may
well infer the possibility that “A affects C,” and that statement might be novel and potentially
represent an important scientific discovery.
13.

Dr. Swanson used this type of procedure to propose several significant medical

hypotheses that were subsequently tested and confirmed clinically. For example, he proposed
that fish oil supplementation would ameliorate Raynaud’s syndrome1 and that magnesium

1
Swanson DR. Fish oil, Raynaud's syndrome, and undiscovered public knowledge. Perspect Biol Med. 1986
Autumn;30(1):7-18. Raynaud syndrome is a disorder, believed to be the result of decreases in the blood supply to
parts of the body, that causes pain to and discoloration of the fingers, toes, and other areas. In some cases, the effects
can be more significant, including necrosis and gangrene.

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supplementation would ameliorate migraine headaches.2
14.

Dr. Swanson’s early studies employing this technique were carried out by hand,

reading numerous articles and identifying patterns. While a researcher might be able to identify a
few “A – B – C” correlations of this type manually by reading articles or other texts, Dr.
Swanson and I quickly realized that through computers it is possible to search through thousands
of articles to identify a large number of potentially new scientific hypotheses. Such automated
search processes carry the hope of discovering correlations that individuals could not discover
without computers.
15.

Dr. Swanson and I created one such computer program together, called

Arrowsmith,3 which was designed to consider data in the bibliographic records for biomedical
articles in medical databases (e.g. the PubMed database4), and which given a topic A, would
identify topics C that were likely to be related to it, on the basis that both topic A and topic C
have some relationship to common topic B. Arrowsmith used article bibliographic records to
identify these “A – B – C” correlations where no articles explicitly mentioned A and C together.
16.

Arrowsmith operated by first running searches for a topic A (e.g., Huntington’s

Disease) and retrieving the bibliographic records for all articles that discuss that topic. Next, it
created a list of all of the terms included in the titles of those articles, and these terms were
treated as the B items that had a relationship to topic A and might serve as a link to identifying

2
Swanson DR. Migraine and magnesium: eleven neglected connections. Perspect Biol Med. 1988
Summer;31(4):526-57.
3

Swanson DR, Smalheiser NR. An interactive system for finding complementary literatures: a stimulus to scientific
discovery. Artificial Intelligence 1997; 91: 183-203.
4

The PubMed database consists of bibliographic data concerning ~20 million biomedical articles (including author
names, title, abstract, affiliation, Medical Subject Headings, etc.). (No full-text articles are contained within the
PubMed database.) Public users can query the PubMed database freely at http://pubmed.gov, or can apply for a
relatively unrestricted license to download the entire database and manipulate the data locally on their own
computers.

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new topics C that had not previously been identified as related to topic A. The program ran
searches for these B items and retrieved the bibliographic records for all the articles that
discussed each one, creating a number of B article sets. Arrowsmith then created lists of all of
the terms in the titles of each B article set, and the terms in these lists became the C items. To
exclude from the results any A – C connections that may have been mentioned within the articles
themselves, the program deleted from the lists of C items any terms that also appeared in the
titles of the articles retrieved with the searches for topic A. Then the program ranked the
remaining C items by potential relevance, according to the number of different B article sets in
which they appeared (the more different B items that resulted in identifying a particular C item,
the higher the possibility that the C item shared a relevant connection with the initial topic A). As
a result, Arrowsmith provided a ranked list of items that may have been related to a topic but that
were not identified in the existing medical literature as being related to that topic.
17.

Using such a procedure, I identified a particular class of molecule called

“microRNAs” as particularly likely to be involved in Huntington’s Disease, and this prediction
was confirmed by subsequent research in this field.
18.

In the years since we first designed and implemented the “Arrowsmith”

technology we have improved upon it and made modifications to it that have enabled new
discoveries.
19.

For example, during the time period 2008, I was engaged in writing a review

article on microRNA regulation5 and became interested in assessing whether “phosphorylation,”
a common modification of proteins that regulates their function, might be involved in regulating
the formation of microRNAs. At the time of my analysis, many proteins had been reported to
5

Smalheiser NR. Regulation of mammalian microRNA processing and function by cellular signaling and subcellular
localization. Biochim Biophys Acta. 2008 Nov; 1779(11): 678-681.

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interact with microRNAs, and in separate studies many proteins were known to be
phosphorylated, but no one had investigated directly whether phosphorylation was responsible
for regulating microRNAs.
20.

I hypothesized that microRNAs (topic A) were meaningfully linked to

phosphorylation (topic C), and using a modified version of the Arrowsmith program, I sought to
make a list of proteins (the B items) that were candidates to mediate this connection. I used the
Arrowsmith system to carry out two searches of the PubMed database (one on microRNAs and
one on phosphorylation), to collect all of the titles in each set of articles, and to identify all of the
words and phrases that were shared in common in both sets. The Arrowsmith system then
filtered the list of words and phrases to identify the names of proteins, and then ranked the
proteins according to their likely relevance (using an algorithm that we developed). The result
was a shortlist of proteins that represented good candidates for further study of their possible
action in regulating microRNAs by virtue of their phosphorylation.
21.

The analyses described above could not reasonably be carried out manually. Not

only is it necessary to use computers in order to conduct the searches of thousands of articles
identified in each set (A and C), but we needed to carry out statistical modeling based on many
searches in order to create a quantitative model that could predict which B items are most likely
to be relevant.
22.

Automated text mining continues to evolve at a remarkable pace. As more full-

text becomes accessible and technology advances, increasingly these techniques focus on the full
text of books and other texts, both in the general domain of digitized books (as illustrated by the
example of assessing authorship of a manuscript in Paragraph 5, above) and in the biomedical
domain.

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The HathiTrust Digital Library and HathiTrust Research Center
23.

As described in the examples above, because of the scale on which it is conducted

and the complexity of the algorithms applied, a great deal of valuable text mining research
cannot be carried out manually, but requires large databases of digital textual material that can be
processed by computers.
24.

I understand that the HDL is a shared database of over ten million digitized

volumes, many of which had not previously existed in digital form, from the library collections
of major research universities.
25.

I believe that the HDL, as a large database of widely varied digital textual

material, presents an opportunity for valuable educational and scholarly text-mining research to
be conducted in a broad range of subjects and disciplines. Indeed, the same text mining
techniques described above could be used to identify previously unknown trends, correlations,
and relationships from information contained in the different books in the HDL.
26.

I understand that the HathiTrust, through the HathiTrust Research Center, is

exploring ways of enabling research similar to the text mining research conducted by myself and
others as described above.
27.

In my opinion, the HDL corpus is amenable to many of the same types of text

mining analyses set out above. For example, scientists have developed algorithms and
visualization tools designed to analyze digital text and detect “bursts,” which are sudden
increases in data, and in the context of text mining, refer to sudden increases in appearance or
usage of a word or topic. These tools have been used by researchers in the science community to
identify major research topics and to trace research topic trends.6 Similar algorithms and tools
6
Mane KK, Börner K. Mapping topics and topic bursts in PNAS. Proc Natl Acad Sci U S A. 2004 Apr 6;101 Suppl
1:5287-90.

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could be applied to the corpus of the HDL, or perhaps to a topic- or time-period-based subset of
that corpus that is particularly relevant to a researcher's goals, and used to identify "bursts" or
other trends in usage of specified words over time (or between different categories of published
works). This type of information could provide new insight valuable to the scholarly work done
in variety of subject areas, including history, political science, linguistics, literature,
anthropology, sociology, philosophy, and economics.
28.

For instance, I understand based on my review of information available through

the HathiTrust website that Ronnie Lipschutz, a professor in the Politics Department at the
University of California, Santa Cruz, is currently utilizing software text analysis techniques to
document the usage of terms and concepts related to human rights in Jane Austen's novels. A
resource like the HDL could allow other researchers to conduct similar research with respect to
20th century literature or other types of works not believed to be in the public domain.
29.

In summary, I believe that the range of text mining analyses that can be

performed on the in-copyright material in the HDL corpus are substantial, and can be beneficial
for the public good.
30.

I have not provided testimony as an expert in any cases in the last four years.

31.

My consulting rate to review material, participate in conference calls, and to

prepare this declaration is $200/hour.
I declare under penalty of perjury under the laws of the United States that the foregoing is
true and correct.

Date: June 26,2012
Neil R Smalheiser, MD, PhD

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EXHIBIT A

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CURRICULUM VITAE
NAME: Neil R. Smalheiser, MD, PhD
POSITION: Associate Professor (with tenure), Department of Psychiatry, as of 8/15/08;
Adjunct Associate Professor, Department of Anatomy & Cell Biology; Member,
Psychiatric Institute, University of Illinois at Chicago (9/96 - present).
ADDRESS:
Department of Psychiatry, UIC Psychiatric Institute M/C 912
1601 W. Taylor Street, room 525
Chicago, IL 60612
Phone: [phone]; fax [phone]; [e-mail].

EDUCATION
University of Iowa, Iowa City, IA,
(major: mathematics)
Albert Einstein College of Medicine, New York, NY
(PhD in Neuroscience)

B. A. with Honors

1974

MD-PhD

1982

PREVIOUS EMPLOYMENT
University of Chicago, Chicago, IL, Department of Pediatrics: Intern, Postdoctoral
Fellow, Instructor, and Assistant Professor 1982-1996.
University of Illinois at Chicago, Chicago, IL. Department of Psychiatry, Research
Assistant Professor and Assistant Professor 1996-2008.

LICENSURE
Licensed physician, State of Illinois 1983 – present.
MEMBERSHIPS IN PROFESSIONAL ORGANIZATIONS
American Association for the Advancement of Science; American Medical Informatics
Association; American Society for Information Science and Technology; Associate,
Behavioral and Brain Sciences; Association for Computing Machinery; International
Brain Research Organization; International Society for Neurochemistry; The RNA
Society; Society for Neuroscience.

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ACADEMIC HONORS AND FELLOWSHIPS
Ford Future Scientists of America Regional Award, 1968.
National Merit Finalist, 1971.
B. P. O. Elks Scholarship, 1971.
Honors Scholarships, University of Iowa, 1971-1973.
Phi Beta Kappa, 1972.
Graduation with Honors and with High Distinction, 1974.
NIH Medical Scientist Training Program Fellowship, 1974-1981.
NIH NRSA individual postdoctoral training award, 1984-1985.
Schweppe Foundation career development award, 1987-1990.
Andrew W. Mellon Foundation Fellow, 1988-1989.

1. TEACHING ACTIVITIES

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Instructor, Anatomy/Cell Biology 523, Biology of microRNAs and other Small
RNAs, graduate seminar series, 2006, 2009, 2011. (created this course and taught
solo).
Instructor, Honors College core course 134, The Process of Scientific Discovery,
2010 (created this course and taught solo).
Laboratory supervisor in Medical Neuroanatomy course for 1st year medical students
1997-2005.
Lecturer in Neuroscience seminar series for psychiatry residents (have lectured on
developmental neurobiology) 1999-present.
Lecturer in Introduction to Biological Psychiatry course for PGY-1 psychiatry
residents 2006-2010.
Lecturer in Biological Sciences 582, graduate course on Experimental Methods in
Modern Neuroscience. (have lectured on antibody methods, RNA interference,
microRNAs and informatics) 2000-2004; 2008; 2010, 2011.
Lecturer in Anatomy/Cell Biology 520, graduate course on Synaptic Structure and
Function (2000, 2001).
Lecturer in Biological Sciences 286, Biology of Brain (lectured on neurobiology of
schizophrenia) (2001, 2002).
Lecturer in GCLS 502, Molecular Biology, core course for UIC graduate students,
lectured on microRNAs (2007-present).
Lecturer in CS 582 - Information Retrieval, graduate course for UIC computer
science students, January 2012.
Lecturer in Graduate course at UIUC, Graduate School of Library and Information
Science, “Literature Based Discovery”, October 2008.
Organizer and lecturer in 3 day workshop at UIC, “Informatics Tools for Discovery
and Collaboration,” 9/03, 9/04.

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Supervisor of undergraduate students in Biological Sciences 299 and 399 and
volunteer research rotations. Logan Grewal, 1998. Mauli Verma, 1999. Rima Patel,
2002 (now a graduate student at UIC School of Public Health). Cristina Floreani,
2003 (now a MD-PhD student at UIC in Anatomy/Cell Biology). Atena Lodhi, 2004.
Sponsor of high school students, Illinois Math and Science Academy, Student Inquiry
and Research Program: Kinga Wilewska, 2004-2005. Kyle Schirmann, 2006-2007.
Matthew Liu, 2007-2008.
Mentor of Honors College undergraduate students, 2009-present.
Sponsor of postdoctoral fellows:
Marc Weeber, PhD, 2001-2002, now working in industry (Knewco, Inc.).
Supervisor of graduate research assistants:
Wei Zhou, 2002-2008. Wei obtained the best results (out of 30 entries
nationwide) in the 2006 Genomics TREC competition. Now working at Ingenuity
Systems, Inc.
Wei Zhang, 2002-2006. Now working at Microsoft.
Giovanni Lugli, PhD, 2001-present, Research Specialist in Health Sciences in my
laboratory. With my support and encouragement, he is now enrolled in the
Neuroscience Training Program as a PhD candidate at UIC, while continuing to
work full-time in my laboratory. His thesis project concerns localization and
processing of microRNA precursors within mature forebrain neurons;
successfully defended his thesis on 5/19/11.
Member of PhD thesis examination committee:
Wei Zhou, 2008.
James Gocel, 2009.
Sachin Moonat, 2009.
Professional mentoring:
 Vetle Torvik, PhD, 2001-2008, was Research Assistant Professor in my
laboratory. He is developing his own line of research concerned with analyses of
collaboration behavior of MEDLINE authors, and was recipient of a Summer
Faculty fellowship at the National Center for Supercomputing Applications,
working under Noshir Contractor. Vetle is now Visiting Assistant Professor at
UIUC. Using the Author-ity author name disambiguation dataset developed at
UIC, he successfully wrote a NSF grant proposal to merge Author-ity with a
disambiguated US Patent database (with Lee Fleming, Harvard Business School,
dual PI), beginning in 2010.
 Carole L. Palmer, PhD. Dr. Palmer is Associate Professor at UIUC. I invited her
to undertake the study of information-seeking behavior in the Arrowsmith field
testers, which has developed into a NSF-funded 3 year grant that she directed.
 Ramin Homayouni, PhD. Dr. Homayouni is Associate Professor at University of
Memphis, where he now chairs the Bioinformatics Program. I assisted his
informatics efforts during the period when he was a subcontract PI on my
Arrowsmith grant.

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Hong Yu, PhD. Dr. Yu is Assistant Professor at University of WisconsinMilwaukee. I have been assisting her in writing R01 grants (am listed as a
subcontract PI on an upcoming grant of hers submitted in March 2007) and in
finding biologists to collaborate with in the development of biology-oriented
information retrieval systems.
 Larissa Nonn, PhD. Dr. Nonn is Assistant Professor at UIC who studies the
involvement of microRNAs in prostate cancer. I contributed a letter of support
for her successful NCI Transition Career Development Award (K22).
Department of Anatomy & Cell Biology, member of PhD thesis advisory committee
for Paul Kim.
Faculty Medical advisor for William Ruzicka, Anita Seibold.
Participant in Medical and MD-PhD admissions interviews.
Member, MD/PhD Program training faculty, Neuroscience PhD program and
Biomedical Neuroscience training program, and the Graduate College.
Fellow, UIC Honors College, 2009-present.

CURRICULUM DESIGN ACTIVITIES
Advisory Committee Member for The Scientific Communications Initiative, 2006-2009.
This is a NSF-funded curriculum grant in bioinformatics centered at the Graduate School
of Library and Information Science at University of Illinois Urbana-Champaign. PIs are
Carole Palmer and P. Bryan Heidorn. The Scientific Communications Initiative is
developing a biological informatics masters degree program for Scientific
Communication Specialists (SCS). Unlike most existing educational programs in
bioinformatics, the SCS program takes a broad view of biology and informatics to train
professionals to bridge arenas of information technology development in the biological
sciences. Other advisory committee members are chosen nationally from a variety of
institutions including the American Museum of Natural History, the Smithsonian
Institution, the Missouri Botanical Garden, the Peabody Museum at Yale, and the
Biomedical Informatics Research Network.
INVITED PRESENTATIONS
Invited Presentations at International Conferences since 1996:
 Lecturer, Green College Thematic Lecture Series on Creativity, University of British
Columbia, Vancouver, Canada, January 2002. This is a University-wide event
inviting distinguished visitors from around the world, and the lectures are collected
and published in book form by University of Toronto Press.
 Organizer, workshop on Informatics, Intl. Congress for Schizophrenia Research,
Colorado Springs, March 2003.
 Organizer, workshop on “Informatics for Neurochemists,” Intl. Soc. Neurochemistry
meeting, Hong Kong, August 2003. (Meeting cancelled because of SARS epidemic.)

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Organizer, technology panel on MicroRNAs and RNA Interference in the Nervous
System, Asian-Pacific Society for Neurochemistry Biennial Meeting, Hong Kong,
February 2004.
Speaker, panel on “Mining the Literature to Promote Biomedical Discoveries” at
Medinfo [International Medical Informatics Association triennial meeting], San
Francisco, September 2004.
Plenary speaker and session chair, 8th International Conference on Discovery
Science, Singapore, October 2005.
Discussant, First Monday FM10 Openness Conference, Chicago, May 2006.
Speaker, Workshop on Scholarly Databases & Data Integration, Bloomington, IN,
August 2006.
Discussant, Pacific Symposium on Biocomputing, Maui, HI, January 2007.
Speaker, T-FaNT 07 (Tokyo Forum on Advanced NLP and Text Mining), Tokyo,
Japan, March 2007.
Co-organizer, workshop on Fragile X protein/microRNA pathways in neurons,
International Society for Neurochemistry biennial meeting, Cancun, August 2007
(meeting canceled due to Hurricane Dean).
Chair and speaker, symposium on Non-coding RNAs and Synaptic Plasticity,
International Society for Neurochemistry biennial meeting, Athens, Greece, August
2011.
Speaker, International Congress of Human Genetics, Oct. 11 - 15, 2011, Montreal,
session on "Functional genomics of long non-coding RNA in mammalian systems.”

Invited Presentations at National Conferences since 1996:
 Speaker, Society for Neuroscience Satellite Meeting on the Human Brain Project,
November 2002.
 Organizer, panel session on Literature-Based Discovery, Am. Soc. For Information
Science and Technology, Washington, DC, October 2003.
 Speaker, Short Course on Bioinformatics, Society for Neuroscience meeting, New
Orleans, LA, November 2003.
 Speaker, symposium on RNA interference at the Am. Soc. Neurochemistry annual
meeting, NYC, August 2004.
 Speaker, Cambridge Healthtech Institute conference on RNA Interference, San
Francisco, June 2005.
 Speaker, panel on “"Enabling Biomedical Research with Literature Access and
Mining: Progress and Challenges," American Medical Informatics Association annual
meeting, Washington, DC, October 2005.
 Speaker, panel on “Literature-based Discovery,” American Medical Informatics
Association annual Spring Congress, Phoenix, AZ, May 2006.
 Panelist, NIH Knowledge Environments for Biomedical Research (KEBR)
Conference, Bethesda, Maryland, December 2006.

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Speaker, meeting on Unique Identifiers for Authors/Contributors sponsored by
CrossRef, Washington, DC, February 2007.
Speaker, Cambridge Healthtech Institute conference on microRNA in Human Disease
& Development, Boston, MA, March 2007.
Speaker, PubMed Plus conference, sponsored by the Society for Neuroscience, St.
Louis, MO, June 2007.
Participant, NSF Biomedical Informatics workshop, Portland, OR, December 2007.
Speaker, Symposium on Computational Approaches to Creativity in Science,
Stanford, CA, March 2008.
Participant, IARPA M2 Conference on Technical Discovery, Extraction and
Organization, Northbrook, IL, October 2008.
Speaker, Cambridge Healthtech Institute conference on microRNA in Human Disease
& Development, Boston, MA, March 2009.
Speaker, panel: Beyond (simple) Reading: Strategies, Discoveries, and
Collaborations, Am. Soc. For Information Science and Technology, Vancouver, BC,
November 2009.
Participant, “Integrating, Representing, and Reasoning over Human Knowledge: A
Computational Grand Challenge for the 21st Century,” August 7-14, 2010, at the
Snowbird Ski and Summer Resort Conference Center, hosted by the Institute for
Computing in Science (ICiS).

Invited Presentations within UIC since 1996:
 Dept. of Anatomy & Cell Biology, 1996.
 College of Medicine, MD-PhD Training Program, March 2005.
 Honors 201 Seminar, “Networks in Life Sciences,” March 2006.
 Autism Study Group, February 2009.
 Panel on Open Access journals, Daley Library, October 2009.
 Frontiers of GI Research Conference, February 2012.
Invited Presentations at other Universities since 1996:
 Northwestern Univ. Medical School, 1996.
 Univ. Florida at Gainesville Dept. of Pharmacology, 1996.
 Chicago Institute for Neurosurgery and Neuroresearch, 1996.
 Second Intl. Oxidative Stress and Brain Damage Symposium, 1997.
 UIUC, Graduate Library and Information Sciences School, 2001.
 UIUC, Beckman Institute, 2002.
 Stanford Univ., Division of Child and Adolescent Psychiatry, November 2002.
 Tennessee Bioinformatics Consortium, March 2004.
 Michigan State Univ., Dept. of Pharmacology and Toxicology, September 2004.
 RIKEN Biological Resource Center, Tsukuba, Japan, October 2005.

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University of Wisconsin-Milwaukee, Medical Informatics program, February 2007.
Chicago Biomedical Consortium, RNA Symposium, June 2007.
Chicagoland RNA Club, Feburary 2008.
Merck Serono (Research Knowledge Management), Geneva, Switzerland and
Darmstadt, Germany, June 2008.
Harvard Business School, Science-Based Business Initiative Seminar, February 2009.

2. RESEARCH ACTIVITIES
RESEARCH GRANTS
(active grants are indicated in bold)

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NIH NRSA individual postdoctoral training award, National Eye Institute, 19841985. Smalheiser, N. R., PI.
Block Fund grant (University of Chicago), 1986. Smalheiser, N. R., PI.
Brain Research Foundation grants, 1984-1987, 1993. Smalheiser, N. R., PI.
Dysautonomia Foundation grants, 1986-1988. Smalheiser, N. R., PI.
March of Dimes Basil O’Connor Starter Scholar award, 1987-1989. Smalheiser, N.
R., PI.
March of Dimes, “Laminin as a molecular and genetic probe of neurites,” 1990-1992.
Smalheiser, N. R., PI.
NIH FIRST award, “Molecular and cellular basis of cranin’s action on neural cells,”
1988-1992. Smalheiser, N. R., PI.
Scottish Rite Schizophrenia Research Program, “Heat shock protein 60 serum
antibodies in schizophrenia,” 1993-1994. Smalheiser, N. R., PI.
NIH Program Project, “Biological basis of mental retardation,” National Institute for
Child Health and Human Development, 1992-1995. Schwartz, N. B., PI (I was
Project P.I. of Project #2).
Office of Naval Research, “ARROWSMITH Analysis of Biomedical Innovation and
Discovery,” 1999-2000 ($50,000 direct costs). We were specifically invited to write
this application by the ONR. Smalheiser, N. R., PI.
NIH R03, “Circulating Reelin and Psychosis Vulnerability,” National Institute of
Mental Health; 9/00-8/02. ($50,000 direct costs per year for 2 years). Smalheiser, N.
R., PI.
National Alliance for Autism Research, “Circulating Reelin and Autism Spectrum
Disorder,” 7/01-6/03 ($45,000 direct costs per year for 2 years). Smalheiser, N. R.,
PI.
NIH R01, “Arrowsmith Data Mining Techniques in Neuro-Informatics,” 6/01-5/07.
Human Brain Project grant, co-funded by NLM and NIMH. Funded on the first
submission. (This is a large grant representing a multi-instititutional consortium of six

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sites, of which UIC is the home site. The overall budget is $500,000 direct costs per
year for five years.) Smalheiser, N. R., PI.
NIH R21, “RNAi-Mediated Gene Suppression in the Adult Mammalian CNS,”
National Institute of Drug Abuse; 9/30/02-9/30/05 ($100,000 direct costs per year for
2 years, currently on no-cost extension). This is a CEBRA grant funded by NIDA for
“cutting-edge” innovative high-risk, high-payoff investigations. Funded on the first
submission. Smalheiser, N. R., PI.
NIH R21, “Author Name Disambiguation in Medline,” National Library of Medicine;
1/15/05 – 6/30/08. $125,000 direct costs per year. Funded on the first submission.
This is an effort to disambiguate authors (many different people may have the same
last name, first initial). We will assign all articles in Medline in clusters according to
the individuals who wrote them. Smalheiser, N. R., PI.
NIH R01, “Function of FMRP in the mouse olfactory system,” National Institute of
Deafness and Other Communications Disorders; 07/01/03 – 06/30/08 Larson J., PI
(N. Smalheiser, co-I, 10% effort). $175,000 direct costs per year for five years. This
is a grant to study the role of the fragile X mental retardation protein in olfactory
perception and memory.
High Q Foundation, “Literature-Based Discovery Techniques to Identify Novel
Huntington Disease Modifiers, Treatments or Targets”, 8/15/07 – 2/14/08,
Smalheiser, N. R., PI., $24,000 direct costs.
NIH R21, “Validating microRNA Analysis in Human Postmortem Brain” (Y.
Dwivedi, N. Smalheiser, dual PIs). National Institute of Mental Health, 7/1/07 –
6/30/09, $125,000 direct costs per year for 2 years requested. Funded on the first
submission.
Stanley Medical Research Institute proposal, “Prefrontal Cortex microRNAs in the
Stanley Neuropathology Consortium,” Smalheiser, N. R., PI, $75,000 per year for 2
years. 8/1/08-7/31/11.
NIH R01, LM010817-01, “Text Mining Pipeline to Accelerate Systematic
Reviews in Evidence-Based Medicine,” Smalheiser, N. R. and Cohen, A.M., dual
PIs. This is a multi-institutional consortium encompassing 4 sites, of which UIC
is home site. About $442,000 direct costs per year for 4 years. 9/30/2010 –
9/29/14. Funded on the first submission.
Alzheimer’s Association, IIRG-11-202853, “Plasma microRNAs as biomarkers
for Alzheimer disease,” Smalheiser, N. R., PI. 11/1/11 – 10/30/14. total $200,000
direct costs.
Dept. of the Army – USAMRAA, “Cellular Basis for Learning Impairment in
Fragile X Syndrome,” Larson, J. R., PI. 04/01/2012 - 03/31/2015. $750,000 direct
costs per year for 3 years. My role is co-Investigator.
University of Illinois at Chicago CCTS-0512-03, “ Plasma Small RNAs as
Biomarkers for Pediatric Bipolar Disorder”, Dwivedi, Y., PI. 5/1/12 – 4/30/14.
$30,000 direct costs per year for two years. My role is co-PI.

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Pending Proposal:
NIH/NIA P01, Innovation in an Aging Society, Bruce Weinberg, PI.
Title: Innovation in an Aging Society
Agency: National Institute on Aging
Total Direct Cost Year 1: $998,013; Total Cost Year 1: 1,419,245; Total Direct Cost for
5 Years: 5,318,371; Total Cost for 5 Years: $7,686,358. Dates: 12/1/12 – 11/30/17
My role is co-Investigator.
About half-a-dozen proposals planned in the coming year:
NIH, Brain Research Foundation, Simons Foundation – grants on depression, autism,
small RNAs, plasma microRNA biomarkers.
INVENTIONS AND COMMERCIALIZATION
Developer of two monoclonal antibodies against cranin (dystroglycan) that were licensed
commercially by Chemicon.
Co-developer, with Don R. Swanson (Univ. of Chicago), of ARROWSMITH, a
computer-assisted strategy for information retrieval.
Co-developer, with Vetle Torvik, of Author-ity, which utilizes a new monotone Boolean
method of data mining. The Author-ity database is a resource that disambiguates author
names for papers in MEDLINE. Licensed to NIH (NCBI) in 2009. Licensed to
LnxResearch in 2009. Other licenses pending.
Co-developer, with Vetle Torvik, of ADAM, a database of abbreviations in Medline that
includes both acronyms and non-acronyms.
Developer of WETLAB, an open source electronic notebook programmed in JAVA.
Co-developer, with Vetle Torvik, of Anne O’Tate, which facilitates summarization, drilldown and browsing of PubMed search results.
Co-developer, with Vetle Torvik, of a novel quantitative model to measure the type and
amount of implicit information linking two sets of articles. Licensed to Merck Serono in
2008.
Press Coverage:
Profiled in The Scientist 12: 12-13, 1998.
Profiled in Science magazine 310: 1401, 2005.
Mentioned in an editorial in Nature magazine 440: 1090, 2006.
Genetic Engineering & Biotechnology News (http://www.genengnews.com/) rated the
Arrowsmith Project website “Excellent” in their Best of the Web: Reference” list,
December 2007.
Profiled/interviewed in Biomedical Computation Review 4: 16-27, 2008.

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Mentioned in a news feature in Nature magazine 463: 416-418, 2010.
In addition, I have been interviewed as an expert source to comment on my own or
others’ work for various online news stories (e.g. Nature, Medicine Online, The
Discovery Channel, The Scientist, Biomedical Computation Review, MyScienceWork,
etc.)

PEER REVIEWED PUBLICATIONS (name is in bold if senior author)
A note on journals:
The publications span numerous specialties both within biomedical research and information sciences, and
recording impact factor is misleading because different fields vary significantly in the impact factor of their
leading journals. However, Journal of Biological Chemistry is the most important journal in the field of
biochemistry; PNAS is one of the top 5 general-interest scientific journals; Artificial Intelligence is the
leading journal in its field; Archives of General Psychiatry is the #2 journal in psychiatry; Trends in
Neurosciences has the highest impact factor in neuroscience; Journal of the American Society for
Information Science and Technology is the most prestigious journal in information science; JAMIA has the
highest impact factor in medical informatics; The New England Journal of Medicine is the leading generalinterest journal in medicine; PLOS Biology is the leading general-interest open access journal in biology;
and Trends in Genetics is one of the top journals in genetics. Annual Review of Information Science and
Technology is the most prestigious review journal in its field. Finally, note that the lab generally presents
2-4 abstracts at meetings each year; however, they are not listed in this curriculum vitae because they are
not mature publications.
A note on author order:
We follow the convention of many biomedical laboratories, in which the person who acquires the primary
data in a study and prepares the figures and tables is listed as first author. Often, but not always, this
person is also the one who wrote the first draft of the paper. Other authors are listed in order of their
relative contributions, except the PI who is generally listed last. This does not imply that the PI has a
relatively minor role or is listed as a courtesy.
A note on open access:
Since the launching of PubMed Central, BioMed Central and Public Library of Science, my policy has
been to publish articles in open access journals whenever possible.

1. Smalheiser, N. R. and Crain, S. M. (1978) Formation of functional retinotectal
connections in co-cultures of fetal mouse explants. Brain Res. 148: 484-492.
2. Smalheiser, N. R., Crain, S. M., and Bornstein, M. B. (1981) Development of
ganglion cells and their axons in organized cultures of fetal mouse retinal explants. Brain
Res. 204: 159-178.
3. Smalheiser, N. R., Peterson, E. R., and Crain, S. M. (1981) Neurites from mouse
retina and dorsal root ganglion explants show specific behavior within co-cultured tectum
or spinal cord. Brain Res. 208: 499-505.
4. Smalheiser, N. R., Peterson, E. R., and Crain, S. M. (1981) Specific neurite pathways
and arborizations formed by fetal mouse dorsal root ganglion cells within organized
spinal cord explants in culture: a peroxidase labeling study. Dev. Brain Res. 2: 383-396.

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5. Smalheiser, N. R. (1982) Positional specificity tests in co-cultures of retinal and tectal
explants. Brain Res. 213: 493-499.
6. Smalheiser, N. R., Crain, S. M., and Reid, L. M. (1984) Laminin as a substrate for
retinal axons in vitro. Dev. Brain Res. 12: 136-140.
7. Smalheiser, N. R. and Crain, S. M. (1984) Radiosensitivity and differentiation of
retinal ganglion cells within fetal mouse explants in vitro. Dev. Brain Res. 13: 159-163.
8. Smalheiser, N. R. and Crain, S. M. (1984) The possible role of “sibling neurite bias”
in the coordination of neurite elongation, branching, and survival. J. Neurobiol. 15: 517529.
9. Smalheiser, N. R. and Schwartz, N. B. (1987) Cranin: a laminin binding protein of
cell membranes. Proc. Natl. Acad. Sci. USA 84: 6457-6461.
10. Smalheiser, N. R. and Schwartz, N. B. (1987) Kinetic analysis of ‘rapid onset’
neurite formation in NG108-15 cells reveals a dual role for substratum-bound laminin.
Dev. Brain Res. 34: 111-121.
11. Schwartz, N. B. and Smalheiser, N. R. (1989) Biosynthesis of glycosaminoglycans
and proteoglycans. In: Neurobiology of Glycoconjugates, ed. R.U. and R.K. Margolis,
Plenum Press, NY, pp. 151-186.
12. Smalheiser, N. R. (1989) Morphologic plasticity of rapid-onset neurites in NG10815 cells stimulated by substratum-bound laminin. Dev. Brain Res. 45: 39-47.
13. Smalheiser, N. R. (1989) Analysis of slow-onset neurite formation in NG108-15
cells: implications for a unified model of neurite elongation. Dev. Brain Res. 45: 49-57.
14. Smalheiser, N. R. (1989) Altered cell shapes in mouse 3T3 fibroblasts treated with
5’-deoxy, 5’-methyl thioadenosine: relation to morphogenesis of neural cells. Dev. Brain
Res. 45: 59-67.
15. Smalheiser, N. R. (1990) Neuronal growth cones: an extended view. Neuroscience
38: 1-11.
16. Smalheiser, N. R. (1990) Cell attachment and neurite stability in NG108-15 cells:
effects of 5’-deoxy, 5’-methyl thioadenosine (MTA) compared with laminin, kinase
inhibitor H-7, and Mn2+ ions. Dev. Brain Res. 51: 153-160.
17. Smalheiser, N. R. (1990) Cell attachment and neurite stability in NG108-15 cells:
What is the role of microtubules? Dev. Brain Res. 58: 271-282.

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18. Smalheiser, N. R. (1991) Role of laminin in stimulating rapid-onset neurites in
NG108-15 cells: relative contribution of attachment and motility responses. Dev. Brain
Res. 62: 81-89.
19. Pomeranz, H. D., Sherman, D. L., Smalheiser, N. R. and Gershon, M. D. (1991)
Expression of the immunoreactivity of a neurally related cell surface laminin binding
protein by neural crest-derived cells migrating to and within the gut: relationship to the
formation of enteric ganglia. J. Comp. Neurol. 313: 625-642.
20. Smalheiser, N. R. and Collins, B. J. (1992) Characterization of a novel set of
membrane antigens associated with axonal growth. I: Biochemical and functional
studies. Dev. Brain Res. 69: 215-223.
21. Smalheiser, N. R. and Collins, B. J. (1992) Characterization of a novel set of
membrane antigens associated with axonal growth. II: Expression in the chick central
nervous system. Dev. Brain Res. 69: 225-231.
22. Smalheiser, N. R., Collins, B. J., and Sharma, S. C. (1992) Characterization of a
novel set of membrane antigens associated with axonal growth. III: Expression in the
regenerating goldfish optic nerve and tectum. Dev. Brain Res. 69: 277-282.
23. Smalheiser, N. R. and Rossulek, M. (1992) Morphometric and time lapse analyses of
rapid-onset neurites stimulated by cycloheximide in NG108-15 cells. Int. J. Dev.
Neurosci. 10: 467-472.
24. Landis, C. A., Collins, B. J., Cribbs, L. L., Sukhatme, V., Bergmann, B.,
Rechtschaffen, A., and Smalheiser, N. R. (1993) Expression of EGR-1 in the brain of
sleep-deprived rats. Molec. Brain Res. 17: 300-306.
25. Smalheiser, N. R. (1993) Monensin-sensitive cellular events modulate neurite
extension on laminin: an example of higher order regulation of cell motility. Cell Motil.
Cytoskel. 24: 256-263.
26. Smalheiser, N. R. (1993) Acute neurite retraction elicited by diverse agents is
prevented by genistein, a tyrosine kinase inhibitor. J. Neurochem. 61: 340-343.
27. Smalheiser, N. R. (1993) Cranin interacts specifically with the sulfatide-binding
domain of laminin. J. Neurosci. Res. 36: 528-538.
28. Smalheiser, N. R. and Swanson, D. R. (1994) Assessing a gap in the biomedical
literature: magnesium deficiency and neurologic disease. Neurosci. Res. Commun. 15:
1-9.
29. Smalheiser, N. R. and Ali, J. Y. (1994) Acute neurite retraction triggered by
lysophosphatidic acid: timing of the inhibitory effects of genistein. Brain Res. 660: 309318.

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30. Smalheiser, N. R. (1994) Three good things about “bad” science. Perspect. Biol.
Med. 38: 58-60.
31. Smalheiser, N. R., Dissanayake, S. and Kapil, A. (1995) Regulation of neurite
outgrowth and retraction by phospholipase A2-derived arachidonic acid and its
metabolites. Brain Res. 721: 39-48, 1996.
32. Smalheiser, N. R. and Kim, E. (1995) Purification of cranin, a laminin binding
protein. Identity to dystroglycan and reassessment of its carbohydrate moieties. J. Biol.
Chem. 270: 15425-15433.
33. Smalheiser, N. R. (1996) Proteins in unexpected locations. Molec. Biol. Cell 7:
1003-1014.
34. Belkin, A. M. and Smalheiser, N. R. (1996) Localization of cranin (dystroglycan) at
sites of cell-matrix and cell-cell contact: recruitment to focal adhesions is dependent upon
extracellular ligands. Cell Adhes. Commun. 4: 281-296.
35. Smalheiser, N. R. (1996) The importance of parametric approaches in the analysis of
cell behavior. Perspect. Biol. Med. 40: 60-65.
36. Smalheiser, N. R. and Swanson, D. R. (1996) Indomethacin and Alzheimer’s
disease. Neurology 46: 583.
37. Smalheiser, N. R. and Swanson, D. R. (1996) Linking estrogen to Alzheimer’s
disease: an informatics approach. Neurology 47: 809-810.
38. Swanson, D. R. and Smalheiser, N. R. (1997) An interactive system for finding
complementary literatures: a stimulus to scientific discovery. Artif. Intell. 91: 183-203.
39. Peng, H. B., Ali, A. A., Daggett, D. F., Rauvala, H., Hassell, J. R., and Smalheiser,
N. R. (1998) The relationship between perlecan and dystroglycan and its implication in
the formation of the neuromuscular junction. Cell Adhes. Commun. 5: 475-489.
40. Smalheiser, N. R. and Swanson, D. R. (1998) Calcium-independent phospholipase
A2 and schizophrenia. Arch. Gen. Psychiat. 55: 752-753.
41. Smalheiser, N. R. and Swanson, D. R. (1998) Using ARROWSMITH: a computerassisted approach to formulating and assessing scientific hypotheses. Computer Meth.
Prog. Biomed. 57: 149-153.
42. Smalheiser, N. R., Haslam, S. M., Sutton-Smith, M., Morris, H. R., and Dell, A.
(1998) Structural analysis of sequences O-linked to mannose reveals a novel Lewis X
structure in cranin (dystroglycan) purified from sheep brain. J. Biol. Chem. 273: 2369823703.

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43. Impagnatiello, F., Guidotti, A., Pesold, C., Dwivedi, Y., Caruncho, H., Pisu, M.G.,
Uzunov, D.P., Smalheiser, N.R., Davis, J.M., Pandey, G.N., Pappas, G.D., Tueting, P.,
Sharma, R.P. and Costa, E. (1998) A decrease in reelin expression as a putative
vulnerability factor in schizophrenia. Proc. Natl. Acad. Sci. USA 95: 15718-15723.
44. Smalheiser, N. R. (1998) Conserved amphipathic helices near the N-terminus and Cterminus of the alpha subunit of cranin (dystroglycan). Cell Adhes. Commun. 6: 401404.
45. Swanson, D. R. and Smalheiser, N. R. (1999) Implicit text linkages between Medline
records: using Arrowsmith as an aid to scientific discovery. Library Trends 48: 48-59.
46. Smalheiser, N. R., Costa, E., Guidotti, A., Impagnatiello, F., Auta, J., Lacor, P.,
Kriho, V. and Pappas, G. (2000) Expression of reelin in adult mammalian blood, liver,
pituitary pars intermedia and adrenal chromaffin cells. Proc. Natl. Acad. Sci. USA 97:
1281-1286.
47. Smalheiser, N. R. (2000) Walter Pitts. Perspect. Biol. Med. 43: 217-226.
48. Smalheiser, N. R. and Collins, B. J. (2000) Coordinate enrichment of cranin
(dystroglycan) subunits in synaptic membranes of sheep brain. Brain Res. 887: 469-471.
49. Manev, H., Uz, T., Smalheiser, N. R. and Manev, R. (2001) Antidepressants alter cell
proliferation in the adult brain in vivo and in neural cultures in vitro. Eur. J. Pharmacol.
411: 67-70.
50. Smalheiser, N. R., Manev, H. and Costa, E. (2001) RNAi and Memory: Was
McConnell on the right track after all? Trends in Neurosci. 24: 216-218.
51. Smalheiser, N. R. (2001) Predicting emerging technologies with the aid of text-based
data mining: the micro approach. Technovation 21: 689-693.
52. Swanson, D. R., Smalheiser, N. R. and Bookstein, A. (2001) Information discovery
from complementary literatures: categorizing viruses as potential weapons. J. Am. Soc.
Information Sci. Technol.52: 797-812.
53. Kim, H.M., Qu, T., Kriho, V., Lacor, P., Smalheiser, N., Pappas, G. D., Guidotti, A.,
Costa, E. and Sugaya, K. (2002) Reelin function in neural stem cell biology. Proc. Natl.
Acad. Sci. USA 99: 4020-4025.
54. Das, A., Smalheiser, N. R., Markaryan, A. and Kaplan, A. (2002) Evidence for
binding of the ectodomain of amyloid precursor protein 695 and activated high molecular
weight kininogen. Biochimica et Biophysica Acta (General Subjects) 1571: 225-238.

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55. Smalheiser, N. R. (2002) Informatics and hypothesis-driven research. EMBO
Reports 3: 702.
56. Smalheiser, N. R. (2003) Linking investigators: A centralised linking facility for data
sharing and coordination of samples in banks. EMBO Reports 4: 108–110.
57. Dong, E., Caruncho, H., Liu, W.-S., Smalheiser, N. R., Grayson, D. R., Costa, E. and
Guidotti, A. (2003) A reelin-integrin receptor interaction regulates Arc mRNA translation
in synaptoneurosomes. Proc. Natl. Acad. Sci. USA 100: 5479-5484.
58. Smalheiser, N. R. (2003) EST analyses predict the existence of a population of
chimeric microRNA precursor – mRNA transcripts expressed in normal mouse and
human tissue. Genome Biol. 4: 403. http://genomebiology.com/2003/4/7/403
59. Lugli, G., Krueger, J. M., Davis, J.M. Persico, A. M., Keller, F. and Smalheiser, N.
R. (2003) Methodological factors influencing measurement and processing of plasma
reelin in humans. BMC Biochemistry 4: 9. http://www.biomedcentral.com/1471-2091/4/9
60. Gardner D, Toga AW, Ascoli GA, Beatty JT, Brinkley JF, Dale AM, Fox PT,
Gardner EP, George JS, Goddard N, Harris KM, Herskovits EH, Hines ML, Jacobs GA,
Jacobs RE, Jones EG, Kennedy DN, Kimberg DY, Mazziotta JC, Miller PL, Mori S,
Mountain DC, Reiss AL, Rosen GD, Rottenberg DA, Shepherd GM, Smalheiser NR,
Smith KP, Strachan T, Van Essen DC, Williams RW, Wong ST. (2003) Towards
effective and rewarding data sharing. Neuroinformatics. 1: 289-295.
61. Smalheiser, N. R. (2003) Bath toys: a source of gastrointestinal infection. New Engl
J Med. 350: 521.
62. Smalheiser, N. R. and Torvik, V. I. (2004) A population-based statistical approach
identifies parameters characteristic of human microRNA-mRNA interactions. BMC
Bioinformatics 5:139.
63. Torvik, V. I., Weeber, M., Swanson, D. R. and Smalheiser, N. R. (2005) A
probabilistic similiarity metric for Medline records: a model for author name
disambiguation. J. Am. Soc. Information Sci. Technol. 56: 140-158.
64. Smalheiser, N. R. and Torvik, V. I. (2005) Mammalian microRNAs derived from
genomic repeats. Trends in Genetics 21: 322-326.
65. Lugli, G., Larson, J., Martone, M.E., Jones Y. and Smalheiser, N. R. (2005) Dicer
and eIF2c are enriched at postsynaptic densities in adult mouse brain and are modified by
neuronal activity in a calpain-dependent manner. J. Neurochem. 94: 896-905.
66. Smalheiser, N. R., Perkins, G. A. and Jones, S. (2005) Guidelines for negotiating
scientific collaborations. Endorsed by the Am. Medical Informatics Assn. Working
Group on Ethical, Legal and Social Issues. PLOS Biology 3: e217.

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67. Zhang, W., Yu, C., Smalheiser, N. R. and Torvik, V. I. (2005) Segmentation of
Publication Records of Authors from the Web. (poster paper) In the Proceedings of the
22nd IEEE International Conference on Data Engineering (ICDE'06). Atlanta, GA, April
2006. (this conference was peer-reviewed and had overall 31% acceptance rate)
68. Smalheiser, N. R. and Torvik, V. I. (2006) Alu elements within human mRNAs are
probable microRNA targets. Trends in Genetics 22(10), 532-536.
69. Zhou, W., Smalheiser, N. R. and Yu, C. (2006) A tutorial on information retrieval:
basic terms and concepts. J. Biomed. Discovery Collaboration 1: 2.
70. Smalheiser, N. R., Torvik, V. I., Bischoff-Grethe, A., Burhans, L. B., Michael
Gabriel, M., Homayouni, R., Kashef, A., Martone, M. E., Perkins, G. A., Price, D. L.,
Talk, A. C. and West, R. (2006) Collaborative development of the Arrowsmith two node
search interface designed for laboratory investigators. J. Biomed. Discovery
Collaboration 1: 8.
71. Swanson, D. R., Smalheiser, N. R. and Torvik, V. I. (2006) Ranking indirect
connections in literature-based discovery: The role of Medical Subject Headings
(MeSH). J. Am. Soc. Information Sci. Technol. 57: 1427-1439.
72. Zhou, W., Torvik, V. I. and Smalheiser, N. R. (2006) ADAM: Another database of
abbreviations in MEDLINE. Bioinformatics 22: 2813-2818.
73. Zhou, W., Yu, C., Smalheiser, N., Torvik, V. and Hong, J. (2007) Knowledgeintensive Conceptual Retrieval and Passage Extraction of Biomedical Literature. Proc.
30th Ann. Intl. ACM SIGIR Conf. on Research & Development on Information
Retrieval(SIGIR'07), pp. 655-662, 2007, Amsterdam, Netherlands (this conference was
peer-reviewed and had overall 18% acceptance rate).
74. Torvik, V. I. and Smalheiser, N. R. (2007) A quantitative model for linking two
disparate literatures in MEDLINE. Bioinformatics 23(13): 1658-1665.
75. Smalheiser, N. R. and Torvik, V. I. (2008) Author name disambiguation. Annual
Review of Information Science and Technology 43: 287-313.
76. Smalheiser, N. R. (2007) Exosomal transfer of proteins and RNAs at synapses in the
nervous system. Biology Direct 2:35.
77. Smalheiser, N. R., Zhou, W. and Torvik, V. I. (2008) Anne O’Tate: A tool to support
user-driven summarization, drill-down and browsing of PubMed search results. J.
Biomed. Discovery Collab. 3:2.
78. Smalheiser, N. R (2008) Regulation of microRNA processing and function by
cellular signaling and subcellular localization. Biochim. Biophys. Acta Gene Regulatory
Mechanisms 1779:678-681.

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79. Lugli, G., Torvik, V.I., Larson, J.R. and Smalheiser, N. R. (2008) Expression of
microRNAs and their precursors in synaptic fractions of adult mouse forebrain. J.
Neurochem 106: 650-661.
80. Smalheiser, N. R. (2008) Synaptic enrichment of microRNAs is related to structural
features of their precursors. Biology Direct 3: 44.
81. Smalheiser, N.R., Lugli, G., Torvik, V.I., Mise, N., Ikeda, R. and Abe, K. (2008)
Natural antisense transcripts are co-expressed with sense mRNAs in synaptoneurosomes
of adult mouse forebrain. Neurosci. Res. 62: 236-239.
82. Smalheiser, N. R., Torvik, V.I. and Zhou, W. (2009) Arrowsmith two-node search
interface: a tutorial on finding meaningful links between two disparate sets of articles in
MEDLINE. Comput. Meth. Programs Biomed. 94: 190-197.
83. Torvik, V. I. and Smalheiser, N. R. (2009) Author name disambiguation in
MEDLINE. ACM Transactions on Knowledge Discovery from Data 3(3):11.
84. Smalheiser, N. R. and Lugli, G. (2009) microRNA regulation of synaptic plasticity.
NeuroMolecular Medicine 11: 133-140.
85. Smalheiser, N. R. (2009) Do Neural Cells Communicate with Endothelial Cells via
Secretory Exosomes and Microvesicles? Cardiovascular Psychiatry and Neurology,
2009: 383086.
86. Smalheiser, N. R., Lugli, G., Lenon, A. L. Davis, J. M., Torvik, V. I. and Larson, J.
R. (2010) Olfactory discrimination training up-regulates and reorganizes expression of
microRNAs in adult mouse hippocampus. ASN Neuro 2(1):art:e00028.
87. Cohen, A.M., Adams, C.E., Davis, J.M., Yu, C., Yu, P.S., Meng, W., Duggan, L.,
McDonagh, M., and Smalheiser, N.R. (2010). Evidence-based medicine, the changing
landscape of the medical knowledge base, and the need for automated text mining tools.
ACM 1st Intl. Conference on Health Informatics 1:376-380.
88. Smalheiser, N. R., Lugli, G., Rizavi, H., Torvik, V. I., Turecki, G. and Dwivedi,
Y.(2012) MicroRNA Expression is Down-Regulated and Reorganized in Prefrontal
Cortex of Depressed Suicide. PLoS ONE 7: e33201.
89. Smalheiser, N. R., Lugli, G., Thimmapuram, J., Cook, E. H. and Larson, J. (2011)
Endogenous siRNAs and noncoding RNA-derived small RNAs are expressed in adult
mouse hippocampus and are up-regulated in olfactory discrimination training. RNA
17: 166-181.
90. Smalheiser, N.R., Lugli G., Zhang, H., Rizavi, H. S., Torvik, V.I., Pandey, G.N.,
Davis, J. M. and Dwivedi, Y. (2010) microRNA expression in rat brain exposed to
repeated inescapable shock: differential alterations in learned helplessness vs. nonlearned helplessness. Int. J. Neuropsychopharmacol. 14: 1315-1325.

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91. Smalheiser, N.R., Zhou, W. and Torvik, V.I. (2011) Distribution of “characteristic”
terms in MEDLINE literatures. Information, 2(2), 266-276.
92. Smalheiser, N.R. (2011). Sometimes non-IRB approved research deserves a second
look. J. Clinical Research and Bioethics 2:104.
93. Piriyapongsa, J., Jordan, I.K., Conley, A. B., Tom Ronan and Smalheiser, N.R.
(2010) Transcription factor binding sites are highly enriched within microRNA precursor
sequences. Biology Direct 6: 61.
94. Smalheiser, N. R. (2011) Literature-based discovery: beyond the ABCs. J. Am.
Information Sci. Technol. 63: 218-224.
95. Smalheiser, N. R., Lugli, G., Thimmapuram, J., Cook, E. H. and Larson, J. (2011)
Mitochondrial small RNAs that are up-regulated during olfactory discrimination training
in mice. Mitochondrion 11: 994-995. doi:10.1016/j.mito.2011.08.014
96. Smalheiser, N. R. (2012). The search for endogenous siRNAs in the mammalian
brain. Exp. Neurol 235: 455-463.
97. Lugli, G., Larson, J., Demars, M.P. and Smalheiser, N. R. (2012) Primary
microRNA precursor transcripts are localized at postsynaptic densities in adult mouse
forebrain. J. Neurochem., submitted.
98. Shu, L., Lin, C., Meng, W., Han, Y., Yu, C. T., Smalheiser, N. R. (2012) A
framework for entity resolution with efficient blocking. 13th Intl. Conference on
Information Reuse and Integration (IRI), in press.
Manuscripts in preparation:
Smalheiser, N. R. and Manev, H. (2011) A case of opportunistic discovery: analysis and
an aesthetic principle.
Smalheiser, N. R., Larson, J. and Dwivedi, Y. (2011). Global shifts in microRNA
expression in mammalian brain: methodology, mechanisms and biology.
Smalheiser, N. R. (2011). From genome browser to text browser: a public platform to
support multi-scale text annotation, corpus sharing, information retrieval and knowledge
discovery.

INVITED BOOK CHAPTERS
Smalheiser, N. R. (2005) The Arrowsmith project: 2005 status report. Discovery
Science 2005. Lecture Notes in Artificial Intelligence vol. 3735, eds. A. Hoffmann, H.
Motoda, and T. Scheffer, pp. 26-43, Springer-Verlag Press, Berlin. (Invited lecture at the

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8th International Conference on Discovery Science / 16th International Conference on
Algorithmic Learning Theory (Singapore, October 2005), published as a book chapter.)
Smalheiser, N.R. and Torvik, V. I. (2006) Complications in mammalian microRNA
target prediction. In "MicroRNA: Protocols", ed. S.-Y. Ying, in the series "Methods in
Molecular Biology', published by Humana Press, pp. 115-127.
Smalheiser, N. R. and Torvik, V. I. (2008) Models of microRNA-target coordination. In
“microRNAs: From Basic Science to Disease Biology”, ed. K. Appasani, Cambridge
University Press, pp. 221-226.
Smalheiser, N. R. and Torvik, V. I. (2008). The place of literature based discovery in
contemporary scientific practice. In “Literature-Based Discovery”, ed. P. Bruza and M.
Weeber, Springer Press, pp. 13-22.
Lugli, G. and Smalheiser, N. R. (2011). Preparing Synaptoneurosomes
from Adult Mouse Forebrain. In MicroRNA: Protocols, part of the series Methods in
Molecular Biology published by Humana Press. Submitted.

BOOKS AND JOURNAL SPECIAL ISSUES EDITED OR CO-EDITED
Tiffany C. Veinot, Ümit V. Çatalyürek, Gang Luo, Henrique Andrade, Neil R.
Smalheiser (Eds.): ACM International Health Informatics Symposium, IHI 2010,
Arlington, VA, USA, November 11 - 12, 2010, Proceedings. ACM 2010, ISBN 978-14503-0030-8.
Andrade, H. and Smalheiser, Neil R. (eds.): Journal of Medical Systems special issue,
2011.

SCIENTIFIC CORRESPONDENCE, EDITORIALS AND BOOK REVIEWS
Smalheiser, N. and Philipson, L.(1984) Alternative medicine. New Engl J Med 310: 791.
Smalheiser, N. (1984) More on the Medical College Admission Test. New Engl J Med
311(12): 803.
Smalheiser, N. (1988) Means to immortalize neural cells. Trends in Neurosci. 11: 307.
Smalheiser, N. R. (1990) Young scientists and the future. Science 249: 1486-1487.
Smalheiser, N. R. (1992) Teaching the Human Genome Project as a case study. J.
College Science Teaching. 22: 7.
Smalheiser, N. R. (1994) review of Evolution without Selection: Form and Function by
Autoevolution. Perspect. Biol. Med. 37: 312-313.
Smalheiser, N. R., De Groote, S. L. and Case, M. M. (2009) Open-access publishing: a
new path. J. Biomed. Discovery Collaboration 4: 6.

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JOURNAL COVERS
Cell Adhesion & Communication 5: (6), 1998.
Cerebral Cortex 9: (8), 1999.

PUBLIC WEB-DEPOSITED DATABASES
Smalheiser, N.R. and Torvik, V.I. (2004) A statistical approach predicts human
microRNA targets. Genome Biol. 5: P4. http://genomebiology.com/2004/5/2/P4.
Zhou, W., Torvik, V. I. and Smalheiser, N. R. (2007) A database of terms in MEDLINE
abstracts that co-occur frequently and share the same semantic category. Deposited on
the Arrowsmith website.

PROJECT-RELATED PUBLICATIONS (supervised but was not a co-author)
Zhou, W. and Yu, C. (2005) Experiment report of TREC 2005 Genomics track ad hoc
retrieval task. The Fourteenth Text REtrieval Conference (TREC 2005) Proceedings,
Baltimore, MD. Technical report, http://ir.ohsu.edu/genomics/.
Swanson, D. R. (2006) Atrial fibrillation in athletes: Implicit literature-based connections
suggest that overtraining and subsequent inflammation may be a contributory
mechanism. Med. Hypotheses 66: 1085-1092.
Swanson, D. R. (2008) Running, esophageal acid reflux, and atrial fibrillation: a chain of
events linked by evidence from separate medical literatures. Med. Hypotheses 71: 178185.
Swanson, D. R. (2011) Literature-based resurrection of neglected medical discoveries. J.
Biomed. Discovery Collab., in press.

TECHICAL REPORTS (not peer-reviewed)
Zhou, W., Yu, C., Torvik, V. I. and Smalheiser, N. R. (2006) A concept-based
framework for passage retrieval in Genomics. Fifteenth Text REtrieval Conference
(TREC 2006) Proceedings, Baltimore, WA.
Torvik, V. I., Smalheiser, N. R. and Weeber, M. (2007) A simple Perl tokenizer and
stemmer for biomedical text. Posted on the Arrowsmith website to accompany the
Biomedical Stemmer and Tokenizer tool.

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FORMAL RESEARCH COLLABORATORS SINCE 1996 (shared active grants, were
co-authors on published papers, or submitted research grant applications together)
Hong Kong University of Science and Technology, Department of Biology, Hong Kong
Benjamin Peng
Imperial College London, Department of Biological Sciences, London, UK
Anne Dell
Maryland Psychiatric Research Center, Baltimore, MD
Robert McMahon, William T. Carpenter
McGill University, Montreal, Canada
Gustavo Turecki
Ohio State University
Bruce Weinberg (plus multi-institutional collaborators on his program project)
Oregon Health and Science University, Portland, OR
Aaron Cohen, Marian McDonagh
Stanford University, Division of Child and Adolescent Psychiatry
Allan Reiss
State University of New York – Binghamton
Weiyi Meng
Univ. California-San Diego, National Center for Microscopy and Imaging Research
Maryann Martone, Guy Perkins, Diana Price
University "Campus Bio-Medico", Laboratory of Molecular Psychiatry, Rome, Italy
Antonio Persico, Flavio Keller
University of Chicago
Don Swanson, Abraham Bookstein, Yves Lussier, Andrey Rzhetsky
UIC, Department of Anatomy and Cell Biology
Orly Lazarov
UIC, Department of Biological Sciences
Arnold Kaplan, Thom Park
UIC, Department of Communication
Steve Jones

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UIC, Department of Computer Science
Clement Yu, Bing Liu, Philip S. Yu
UIC, Department of Medicine
Larissa Nonn
UIC, Department of Pharmacy Administration
Bruce Lambert
UIC, Department of Psychiatry
Erminio Costa, John Davis, Yogesh Dwivedi, Robert Gibbons, Dennis Grayson,
Alessandro Guidotti, John Larson, Hari Manev, Rudmila Manev, George Pappas,
Kiminobu Sugaya, John Sweeney, Vetle Torvik, Tolga Uz.
UIC, Department of Psychology
Michael Ragozzino
Univ. IL-Urbana Champaign, Beckman Institute
Michael Gabriel
Univ. IL-Urbana Champaign, Graduate School of Library and Information Sciences
Chip Bruce, Carole Palmer, P. Bryan Heidorn
University of Indiana at Bloomington, School of Library & Information Science
Katy Borner, Ying Ding
University of Nottingham, UK
Clive Adams
University of Tennessee at Memphis, Center for Genomics and Neurobiology
Elissa Chesler (now at Oak Ridge Natl. Labs), Ramin Homayouni (now at U of
Memphis), Rob W. Williams
University of Wisconsin at Milwaukee, Department of Health Sciences
Hong Yu

3. SERVICE ACTIVITIES
ADMINISTRATIVE ACTIVITIES
Reviewing for NIH Study Sections: (including neuroscience, drug abuse, bio-computing
and informatics programs)
 BISTI National Centers for Excellence in Bio-Computing Special Emphasis Panels,
4/01, 9/01, 3/02.
 Neuroinformatics Special Emphasis Panel (Human Brain Project), 9/01, 12/04.

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National Library of Medicine Special Emphasis Panels 3/03, 4/04.
Molecular, Cellular, and Developmental Neuroscience Integrated Review Group
7/04.
NIDA CEBRA Award review 9/04; R21/33 review 5/09.
Challenge grants 2009.
NCRR Centers (COBRE and RCMI), 2009; P41, 2011.
National Library of Medicine Technology Review Panel (ARRA contracts), 8/04.
National Center for Complementary and Alternative Medicine (NCCAM), 2/12.
NSF Smart Health & Well Being Type 1 EXP Panel in the Information & Intelligent
Systems Division (IIS), 6/12.

Reviewing for other funding agencies:
 National Science Foundation (programs on Developmental & Cellular Neuroscience
and Genes & Genome Systems).
 US Army Medical Research and Materiel Command.
 Department of Health, U. K.
 US-Israel Binational Science Foundation.
 Israel Science Foundation; Basic Science Foundation (Israel Academy of Sciences
and Humanities).
 University of Liège, Belgium.
 Alzheimer’s Association.
 Autism Speaks.
 Research Grants Council (RGC) of Hong Kong.
 Kentucky Commercialization Fund.
 Netherlands Genomics Initiative (Horizon programme).
 Research Fund "Medizinische Forschungsförderung Innsbruck" of Innsbruck Medical
University.
 Parkinson's Disease Society (UK).
 Prinses Beatrix Fonds, The Netherlands.
 India Alliance (Wellcome).
 Medical Research Council (MRC), UK.
 Netherlands Organisation for Scientific Research (NWO).
Leadership positions in National Organizations:
American Medical Informatics Association:
Ethical, Legal & Social Issues Working Group Chair-Elect/Chair/Past Chair 2003-2007.
Knowledge Discovery and Data Mining Working Group Chair-Elect, will proceed as
Elect/Chair/Past Chair 2008-2011.
Scientific Program Committee, 2012.

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Society for Neuroscience:
Neuroinformatics Committee, member, 2009-2010.
Association for Computing Machinery (ACM):
Special Interest Group on Health Informatics (SIGHIT), Vice Chair, 2011-2013.
Member, ACM Health Informatics Task Force, 2011- present.
American Society for Information Science and Technology (ASIST):
Committee on Communications and Publications, Co-Chair, 2011-present.
Member of Program Committee for International Conferences:
 The 17th European Conference on Machine Learning and the 10th European
Conference on Principles and Practice of Knowledge Discovery in Databases,
September 18-22, 2006, Berlin, Germany.
 BioCreAtIvE - Critical Assessment for Information Extraction in Biology
Conference, April 23-25, 2007, October 7-9, 2009; Madrid, Spain. 2011, TBA.
 Pacific Symposium for Biocomputing, Hawaii, HI, January 4-8, 2008.
 IDAMAP: Intelligent Data Analysis in bioMedicine And Pharmacology, Verona,
Italy, 2009; Washington, DC, 2010; Pisa, Italy, 2012.
 Intelligent Systems for Molecular Biology Conference, Boston, July 9-12, 2010.
 ACM 1st International Conference on Health Informatics, Washington, DC,
November 11-12, 2010. Program Committee co-Chair for Medicine.
 EFMI (European Federation for Medical Informatics) Special Topic Conference,
Lasko, Slovenia, April 14-15, 2011.
 7th Conference of the Austrian Computer Society (OCG) Workgroup: HumanComputer Interaction & Usability Engineering (HCI&UE), Graz, Austria. November
25-26, 2011.
 1st International Conference on Health Information Science, Beijing, China, April 810, 2012.
 Medical Informatics Europe (MIE) Conference, Pisa, Italy, August 26-29, 2012.
 HI-BI-BI, International Symposium on Network Enabled Health Informatics, BioMedicine and Bioinformatics, Istanbul, Turkey, 27-28 August, 2012.
 Program co-Chair, The First International Workshop on the role of Semantic Web in
Literature-Based Discovery, IEEE International Conference on Bioinformatics and
Biomedicine (BIBM), Philadelphia, October 4-7, 2012.
Membership on Editorial Boards and Advisory Boards:
 Founding Editor-in-Chief, Journal of Biomedical Discovery and Collaboration.
Published by BioMed Central, 2005-2008; hosted by University of Illinois, 2009present. This peer reviewed, open access journal has the unique goal of bringing
together three different groups of researchers in a common forum for the first time:
namely, laboratory investigators, informatics researchers who make tools to enhance

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discovery and collaboration, and social scientists who study scientific practice. The
Editorial Board includes internationally known leaders in each of these 3 disciplinary
areas, including deans, department chairmen, named professors, program/center
directors, and a Nobel laureate.
Biology Direct. Open access, BioMed Central. Editorial board member, 2005present.
PLOS ONE. Open access, Public Library of Science. Editorial board member, 2011present.
Frontiers in Neuroinformatics, Frontiers Research Foundation. Open access. Editorial
board member, 2007- present.
Biomedical Informatics Insights, Libertas Academica. Open access. 2007-present.
Health Information Science and Systems (HISS). Biomed Central, open access. 2011present.
Network Modeling and Analysis in Health Informatics and Bioinformatics. Springer,
2012-present.
Health Systems, Palgrave Macmillan, 2011-present.
Transactions of the IL State Academy of Science. Editorial Board member and Chair,
Science, Mathematics and Technology Education Division, 1994-1996.
Member, Technical Advisory Board for “VIVO, Enabling National Networking of
Scientists,” 2009-present. This is a NIH-funded multi-institutional consortium (Mike
Conlon, Univ. of Florida, PI) that will use Semantic Web-enabled technologies to
facilitate querying and collaboration across disciplines and institutions.

Ad Hoc Reviewer:
 Neuroscience and Psychiatry Journals:
Behavioral and Brain Sciences; Brain Research; Cardiovascular Psychiatry and
Neurology; Cellular and Molecular Neurobiology; The Cerebellum; Journal of Cerebral
Blood Flow and Metabolism; Journal of Neurochemistry; Journal of Neuroscience;
Journal of Neuroscience and Behavioral Health; Journal of Neuroscience Research;
Molecular Psychiatry; Nature Reviews Neuroscience; Neuropharmacology; Neuroreport;
Neuroscience; Neuroscience Research; Restorative Neurology & Neuroscience; Trends
in Neurosciences.
 Other Biomedical Journals:
Acta Histochemica; Biochemical Journal; Biochemical Pharmacology; Biochimica et
Biophysica Acta (BBA) – Gene Regulatory Mechanisms; BMC Developmental Biology;
BMC Genomics; BMC Systems Biology, Briefings in Functional Genomics and
Proteomics; Cell Research; Cellular & Molecular Biology Letters; Experimental Cell
Research; International Journal of Biochemistry & Cell Biology; IUBMB Life; Journal
of Biological Chemistry; Journal of Cell Biology; Journal of Clinical Investigation;
Journal of Heredity; Life Sciences; Mechanisms of Aging and Development; Mobile
Genetic Elements; Molecular Biology and Evolution; Nature Communications; Nature
Structural and Molecular Biology; Nucleic Acids Research; Oncogene; PLOS
Computational Biology; PLOS One; Proceedings of the National Academy of Sciences

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USA; Proceedings of the Society of Experimental Biology and Medicine; RNA; Trends
in Genetics; Wiley Interdisciplinary Reviews: RNA.
 Informatics Journals:
Annual Review of Information Science and Technology; Bioinformatics; BMC
Bioinformatics; BMC Medical Informatics and Decision Making; Frontiers in
Neuroinformatics; IEEE/ACM Transactions on Computational Biology and
Bioinformatics; Information Processing & Management; Journal of the American Society
of Information Science & Technology; Journal of Biomedical Informatics; Journal of
Medical Internet Research; Neuroinformatics.
 Multi-Disciplinary and Humanities Journals:
Isis; Issues in Integrative Studies; Perspectives in Biology and Medicine; Synthese.
 Conferences and Books:
American Medical Informatics Association; Medinfo (International Medical Informatics
Association); MIE (European Federation for Medical Informatics, EFMI); American
Society for Information Science and Technology (ASIST). Blackwell Press (for a book
on scientific discovery and one on exosome biology); EFMI Special Topic Conference.
Service for NIH Office of Neuroinformatics
Leader of Human Brain Project Working Group on Data Mining, 2005-present.
University of Illinois at Chicago Service Involvement:
 UIC Faculty Senate Academic Freedom and Tenure Committee, 2013.
 Ad hoc reviewer, Campus Research Board.
 Reader, Phi Beta Kappa nominations.
 Coordinator, multi-college UIC-UIUC Visiting Speaker Program, sponsored by the
UIC Humanities Laboratory 2001-2002.
 Member, Dept. of Communication faculty search committee, 2002.
 Director, Corner for Collaborative Informatics, 2002 – present.
 Member, Chancellor’s Committee on LBGT Issues, 2004-2005.
 Member, UIC Health Informatics Task Force, 2002- 2006. This is an inter-college
committee that reported to Dean Tate.
 Member, Clinical and Translational Science Award (CTSA) Informatics Working
Group, 2006-present. UIC received a CTSA planning grant in September 2006, and
this multi-college working group was charged with planning and implementing
informatics activities to support a CTSA grant application in January 2008 (which
received funding).
 Affiliated member, Project Biocultures.
 Department of Psychiatry Review Committee for research involving human subjects,
2008, 2009.
Service for Industry
 Consultant to System Biosciences (SBI), 1616 North Shoreline Blvd., Mountain
View, CA.

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Consultant to Acidophil, LLC, 2330 West Joppa Road, Suite 330, Lutherville, MD
21093.

COMMUNITY ACTIVITIES
Rider, Twin Cities-Chicago AIDS Ride, 1998.
Member, Lincoln Elementary School PTO Technology Committee (Oak Park, IL) 20002001.
Finisher, Chicago Marathon, 2004, 2006.
Invited speaker, Seminar for Scholars, Niles West High School, Niles, IL, March 2009.

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KILPATRICK TOWNSEND & STOCKTON LLP
Joseph Petersen (JP 9071)
Robert Potter (RP 5757)
1114 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Joseph M. Beck (admitted pro hac vice)
W. Andrew Pequignot (admitted pro hac vice)
Allison Scott Roach (admitted pro hac vice)
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309-4530
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Defendants
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
THE AUTHORS GUILD, INC., ET AL.,
Plaintiffs,

Case No. 11 Civ. 6351 (HB)

v.
HATHITRUST, ET AL.,
Defendants.

DECLARATION OF FAITH C. HENSRUD IN SUPPORT OF
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
I, Faith C. Hensrud, pursuant to 28 U.S.C. § 1746, hereby declare as follows:
1.

I am the Provost and Vice Chancellor for Academic Affairs at the University of

Wisconsin Superior, in Superior, Wisconsin. I submit this declaration in support of the
defendant libraries’ motion for summary judgment. Unless otherwise noted, I make this
declaration based upon my own personal knowledge.

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2.

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The University of Wisconsin Superior (“UW Superior”) is part of the University

of Wisconsin System. The University of Wisconsin System is comprised of 26 separate
campuses, with one or more libraries located on each campus.
3.

As Provost and Vice Chancellor for Academic Affairs, my responsibilities include

oversight of the academic mission of UW Superior, as well as serving as the Chief Operating
Officer of UW Superior. In my role as Provost, various faculty report to me, including the
Director of UW Superior’s campus library, known as the Jim Dan Hill Library (the “JDH
Library”).
4.

The JDH Library’s general collection contains approximately 200,000 volumes. I

have been advised by the JDH Library’s Director that this includes approximately 149,000 books
and 1,038 periodical titles (all of the periodicals include multiple volumes). As of June 19, 2012,
this entire collection, plus an undetermined number of other works, were housed in the basement
of the JDH Library on the UW-Superior Campus.
5.

As Provost of UW Superior, I am acutely aware of the fragility of the books in

our collection. Books naturally deteriorate over time or are vulnerable to sudden loss as a result
of fire, theft, vandalism and flood.
6.

In yet another reminder of the threats faced by libraries, the JDH Library very

recently suffered a significant loss – one that we are still attempting to quantify – as a result of
flooding.
7.

Just last week, on June 19 and 20, Superior, Wisconsin experienced

extraordinarily heavy rains. According to published reports, the Duluth-Superior area received
over nine inches of rain in less than 24 hours. Attached as Exhibit A is a true and correct copy

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of a National Weather Service webpage reporting 8.15 inches of rain in Superior alone over this
time period.
8.

The heavy rains led to severe flooding throughout Superior and surrounding areas.

The Governor of Wisconsin declared a state of emergency in the region. Attached as Exhibit B
is a true and correct copy of a representative news article reporting this announcement.
9.

UW Superior experienced flooding in sixteen separate buildings on its campus,

and the total damage to UW Superior’s campus is estimated to exceed $15 million.
10.

This flooding took out electrical power and was so severe that building

transformers and even emergency backup generators were rendered inoperable. We were unable
to operate sump pumps in any of these buildings.
11.

Many of UW Superior’s buildings suffered some degree of water damage, but the

JDH Library was hit particularly hard. More than eight feet of water flooded the lower level of
the library, in which the library’s general collection is stored.
12.

Each and every work in the JDH Library’s entire general collection –

approximately 200,000 volumes of books and periodicals – was affected by the flood waters or
moisture from the flood. The floodwaters reached as high as the sixth shelf of each seven-shelf
bookcase. Attached as Exhibits C through E are true and correct copies of representative news
articles reporting on the flooding
13.
JDH Library:

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14.

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To deal with the flooding, UW-Superior retained a disaster recovery firm, BMS

Cat, that specializes in water damage restoration due to floods, hurricanes and other disasters,
with a particular focus on document recovery (see http://www.bmscat.com). They acted quickly

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to stabilize the JDH Library collections on the first and second floors through the use of portable
generators, dehumidification units, and air conditioners. They then began to pump the
floodwater from the library and work to save as many books as possible. Removing the library’s
floodwater took over four days with pumps operating constantly and at full speed.
15.

We are in the process of removing all books and other materials from the

basement level of the library. With the assistance of the disaster recovery team, we have the
ability to freeze and then freeze-dry a portion of the books that were not too damaged to be
restored. Below is an image of just some of the works that have been boxed for shipping to the
freeze-drying facility in Fort Worth, Texas, and which have already been frozen and are
currently maintained in cold-storage facility in Superior, Wisconsin:

16.

Many works have been damaged so severely that they cannot be saved through

the freeze-drying process. The number of such works increases each day as we remove more of
the flooded collection from the JDH Library.

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17.

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It is currently unclear as to whether the damaged books can be preserved, and

what condition they will be in even if they can be saved. Estimates as to the percentage of books
that are damaged change every day as more books are removed from the Library. As of June 28,
a very rough estimate is that at least 25-30% of the books in the collection, and approximately
70% of the periodicals, are unrecoverable, and this number is only likely to increase as we
continue to assess the damage.
18.

I have been advised by the Director of the JDH Library that the flooded collection

included books on Native American and Wisconsin history and, although we do not yet know for
certain, some of these may have been unique to UW Superior and not owned by other University
of Wisconsin libraries. It is also possible that some percentage of the JDH Library’s out-of-print
works may also have been lost, but we have not yet been able to confirm this.
19.

The inventory of total damage will not be complete for some time, until we can

understand for certain what is recoverable and what has been permanently destroyed. For those
works that cannot be preserved (and, as necessary, adequately restored), the JDH Library may
have lost its print copy forever.
20.

As I sign this declaration, the JDH Library building remains temporarily closed,

and the fate of the flooded books remains uncertain. We have shipped 10 boxes of books to the
freeze-drying facility in Texas as a “test pallet,” which is expected to return to the UW Superior
campus in approximately three weeks. At that time we will examine the books to determine the
effectiveness of the restoration process, and determine whether or not to send the remainder of
the frozen books to Texas for the same process.

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21.

Filed 06/29/12 Page 9 of 24

This incident underscores the value of the steps libraries take to preserve books

including, most notably, the extraordinarily valuable steps taken by the HathiTrust project to
protect against the type of loss we suffered last week.
I declare under penalty of perjury under the laws of the United States that the foregoing is
true and correct.

Date: June 28, 2012

ladf. JJ~
Faith C. Hensrud

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Filed 06/29/12 Page 10 of 24

EXHIBIT A

A-608
June 2012 Flood in Duluth and the Northland Rain Reports
Page 1 of 2
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 11 of 24

National Weather Service Weather Forecast Office

Duluth, MN

HislDric Duluth and
Northland Flood",
1~2() JUM 2012
Home

Navigation
Flood Products
Photos

Rain Reports

This map is a graphical representation of the precipitation reports that we received from off duty weather service
employees, cooperative observers, and trained spotters. Both the map and the table of values below are preliminary
values as of 3:30 pm Friday afternoon, and will be updated as needed.

June 19-20,2012 Flooding Rains

Rain (in.)

D <'
U 12
D "- j

U :o

_E
_t-I
4

D 4-~

.'
6

,

_ t -~

•

c-10

...
•

The following graphic was created by Daryl Herzmann at Iowa State University/Iowa Environmental Mesonet.

http://www.crh.noaa.gov/dlh/?n=june2012_duluth_flood_reports

6/28/2012

A-609
June 2012 Flood in Duluth and the Northland Rain Reports
Page 2 of 2
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 12 of 24

Rain (in)
10.10
9.93
9.49
9.00
8.87
8.52
8.15
7.95
7.84
7.58
7.41
7.31
7.24
6.11
6.00
5.95
5.75
5.30
5.15
5.05
5.03
4.82
4.78
4.70
4.68
4.68

Location
4 NE Duluth
Two Harbors
5 NE Duluth
2 SW Duluth
Alborn
2 WSW Duluth
Superior
5 NW Two Harbors
1 SE Floodwood
Kettle River
4 E Island Lake
Hermantown
Duluth International Airport
3 E Wright
9 WSW Port Wing
14 SSW Brimson
Winter
6 S Grand Rapids
Castle Danger
Proctor
5 S Pequot Lakes
5 NW Two Harbors
Grand Rapids
7 SE Grand Rapids
Brainerd
3 E Floodwood

National Weather Service
Duluth, MN Weather Forecast Office
5027 Miller Trunk Highway
Duluth, MN 55811-1442
218-729-6697 - Duluth; 218-283-4615 - Intl Falls
Page Author: DLH Webmaster
Web Master's E-mail: [e-mail]
Page last modified: June 26th 2012 12:20 PM

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6/28/2012

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Case 1:11-cv-06351-HB Document 107

Filed 06/29/12 Page 13 of 24

EXHIBIT B

A-611
Northland's NewsCenter: News, Weather, Sports | Gov. Walker Declares State Emergenc... Page 1 of 2
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 14 of 24

Northland's NewsCenter: News, Weather,
Sports | NBC, CBS, MyNetworkTV, and The CW for Duluth
MN / Superior WI
Print this article

Gov. Walker Declares State
Emergency in Northwest
Wisconsin
Originally printed at http://www.northlandsnewscenter.com/news/nw-wisconsin/Walker-DuffyKick-Off-Visit-to-Superior-160378945.html

By KBJR News 1
June 26, 2012

Superior, WI (Northlands NewsCenter)
-- Wisconsin Governor Scott Governor Walker has declared an emergency for most
areas in Northwest Wisconsin. This includes the City of Superior, Douglas, Bayfield,
and Ashland Counties.
Walker and U-S Congressman Sean Duffy were led by representatives from northwest
Wisconsin through saw of the hardest hit homes, soaked and wrecked in last week's
flood.
The governor saw only a fraction of the devastation but says it was enough to move
him to declare a state of emergency.
Some basements in Superior saw feet of flood water after creeks, rivers, and streams
overflowed their banks following Wednesday's torrential rains.
Tuesday, City and County officials outlined the extent of damages, and ultimately,
what they believe they need from the federal government. They said they hoped to get
federal assistance for the extensive damage suffered in the area, and they were hoping
for help from the leaders.
"Seeing it is devastating. Most of the things in their basement are totally destroyed and
a good chunk of their living room and add-on among others were destroyed. That's a
huge disaster no matter what the declaration," said Wisconsin Governor Scott Walker
Tuesday in Superior, after seeing the damage.

http://www.northlandsnewscenter.com/internal?st=print&id=160378945&path=/news/nw-... 6/28/2012

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Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 15 of 24
"It's catastrophic for all the families in the community that are experiencing water
damage. You have memorabilia lost, plus this massive finical loss," said Wisconsin
Congressman Sean Duffy.
Despite the extent of damage Governor Walker says federal funding is not a sure thing.
"There is a distinction at the federal level in terms of a presidential declaration, we
don't appear to have that level in Wisconsin that they do in Minnesota with Duluth's,"
said Walker.
Wisconsin residents can improve the odds however, by documenting every inch of
damage.
"There is an analysis that's done in regard to the dollar amount and the number of
homes and they can commute whether the state or the feds can come in and help," said
Duffy shortly after touring a flood damaged home.
"Pass that information on because the more the cities, the counties, and the state get
that information, the more options we'll have available to us," said Walker to a group
at the Salvation Army in Superior.
With some 540 basements sustaining significant damage every dollar will help.
"I encourage everyone that has experienced damage in this storm to make sure that
officials know about that damage can be commuted in regard to FEMA," said
Congressman Duffy.
Lawmakers are working with city and county officials in an attempt to get every
possible type of disaster assistance. Both the Superior and Douglas County's website's
have forms to document flooding damage.
People are also strongly encourages to take pictures to go with the documentation.
Zach Vavricka
Bio - Facebook - Twitter - E-Mail

http://www.northlandsnewscenter.com/internal?st=print&id=160378945&path=/news/nw-... 6/28/2012

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EXHIBIT C

A-614
UWS Flood Damage Estimated at $15 Million | News | Superior News
Page 1 of 8
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 17 of 24

wdio.com

Superior WI
WDlO.com

UWS Flood Damage Estimated at $15 Million | News
Title (Max 100 Charaters)
UWS Flood Damage Estimated at $15 Million

L

Submitted by Jon Ellis (/profile/46665/jon-ellis) , WDIO Assistant News Director
Friday, June 22nd, 2012, 9:21pm

Topics: News (/news/news) , Schools (/news/schools) , Weather (/news/weather)
Topics: News (/news/news) , Schools (/news/schools) , Weather (/news/weather)

Top Superior Stories
Health

People

News

(/news/new
(/news/health/51025-walker-wis-wont-act-health- (/news/people/51023-new-vice-president-student -uws-flood-damage-estimated-15-million
care-ruling)

-affairs-northland-college)

Walker: Wis. Won't Act on Health Care New Vice President of Student Affairs
Ruling (/news/health/51025-walker-wis-wont- at ... (/news/people/51023-new-vice-presidentact-health-care-ruling)

UWS Flood Damage Estimated
Million (/news/news/50956-uws-flood-d
estimated-15-million)

student-affairs-northland-college)

Upcoming Events near Superior
(/h/events?ct=d&evid=249560879)

Ladies of the Canyon: Songs
of Joni Mitchell, Carole King,

http://superior.wdio.com/news/news/50956-uws-flood-damage-estimated-15-million

6/28/2012

A-615
UWS Flood Damage Estimated at $15 Million | News | Superior News
Page 2 of 8
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 18 of 24

Floodwaters rose eight feet in the basement of UW-Superior's Jim Dan Hill Library, destroying
thousands of books. (Photo supplied by UWS)

Officials say the UWS campus was the hardest hit flooding area in Douglas County.
The University estimates damage at $15 million campus-wide, $3 to 5 million at the University Library alone. T
other buildings there was severe infrastructure damage, especially to the heating system.
"It was like watching a river coming in and you knew that there was nothing you could do," said Chancellor Re
Most of the buildings are now open but the basements are closed off. The university says they plan to repair

http://superior.wdio.com/news/news/50956-uws-flood-damage-estimated-15-million

6/28/2012

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UWS Flood Damage Estimated at $15 Million | News | Superior News
Page 3 of 8
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 19 of 24

Photos supplied by Sen. Bob Jauch

http://superior.wdio.com/news/news/50956-uws-flood-damage-estimated-15-million

6/28/2012

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UWS Flood Damage Estimated at $15 Million | News | Superior News
Page 4 of 8
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 20 of 24

Mama Cass... (/h/events?
ct=d&evid=249511206)
Jun 29, 7:30PM
Lake Superior Big Top Chautauqua
(/h/events?ct=d&vid=244579343)

http://superior.wdio.com/news/news/50956-uws-flood-damage-estimated-15-million

6/28/2012

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Filed 06/29/12 Page 21 of 24

EXHIBIT D

A-619
Northland's NewsCenter: News, Weather, Sports | $15 Million in Flood Damages at UWS... Page 1 of 1
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 22 of 24

Northland's NewsCenter: News, Weather,
Sports | NBC, CBS, MyNetworkTV, and The CW for Duluth
MN / Superior WI
Print this article

$15 Million in Flood Damages at
UWS
Originally printed at http://www.northlandsnewscenter.com/news/local/15-million-in-Flood-Damagesat-UWS-160266365.html

By KBJR News 1
June 25, 2012

Superior, WI (Northland's NewsCenter) --- Officials at the University of WisconsinSuperior say the damage estimates from last weeks storms may top $15,000,000.
campus wide.
University employees and contractors continue to clean and repair campus buildings
damaged by flooding. The Jim Dan Hill Library, Old Main and the heating plant
sustained the worst damage, according to Chancellor Renee Wachter.
Some administrative and faculty offices have been moved to temporary locations.
Anyone needing to reach campus administrators or faculty is encouraged to check the
University website and use e-mial when possible.
Al Miller, the UWS media relations spokesperson, said most university buildings
suffered some sort of water damage, mostly from water accumulating on lower levels.
BMS Cat, a catastrophe recovery company out of Illinios, has been working since
Thursday to recover as many damaged books and documents as possible in the Library.
Wachter says campus officials are still assessing what must be done and prioritizing
tasks, but hope to have repairs completed before fall semester begins.
In an e-mial sent to students today, Wachter said the residence halls are operational
with summer camps underway and students living in the halls, and The Yellowjacket
Union and Marcovich Wellness Center are both open for business.
Summer classes are running as scheduled

http://www.northlandsnewscenter.com/internal?st=print&id=160266365&path=/news/local

6/28/2012

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EXHIBIT E

A-621
UWS recovers slowly from flooding | Superior Telegram | Superior, Wisconsin
Page 1 of 1
Case 1:11-cv-06351-HB Document 107 Filed 06/29/12 Page 24 of 24

SIIIU! I'ior

TELEGRAM
Published June 27, 2012, 07:00 AM

UWS recovers slowly from flooding
On the University of Wisconsin-Superior campus, books damaged by flooding at the Jim Dan Hill Library will get a cool make
By: Superior Telegram, Superior Telegram

On the University of Wisconsin-Superior campus, books damaged by flooding at the Jim Dan Hill Library w
They will be freeze-dried in freezer trucks and come back as good as new, according to UWS spokeswoma
Early estimates indicate that about 75 percent of the collection — 150,000 books and an unknown number
drying process. The company contracted for the procedure is on retainer with the Library of Congress, Willi
The collection of books cannot be moved to a different section of the library. Due to the structure of the buil
but the basement, Williams said.
Barstow Hall is up and running, although it is currently using a generator to deliver electricity. A new transfo
back to that over the weekend, Williams said.
Old Main has been reopened but there is no access to the flood-damaged basement. Passers-by can expe
out of Old Main and the library over the next few days, Williams said.
The UWS power plant remains shut down. The full extent of damage to the building is not known. The heat
campus buildings. Flood water is still being cleaned out from the power plant, Williams said. But the bigges
possible damage to the pipes that run from the plant to other campus buildings.
The current shut-down is not affecting the campus because hot water is being provided by backup boilers,
Tags: news, uws, education

http://www.superiortelegram.com/event/article/id/67588/

6/28/2012

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Case 1:11-cv-06351-HB Document 109

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
----------------------------------------------------------------X
THE AUTHORS GUILD, INC., et al.,
:
:
Plaintiffs,
:
:
- against :
:
HATHITRUST, et al.,
:
:
Defendants.
:
:
----------------------------------------------------------------X

Filed 06/29/12 Page 1 of 39

Index No. 11 Civ. 6351 (HB)

EXPERT REPORT OF PROFESSOR DANIEL GERVAIS
I, Daniel Gervais, declare the following:
A.

INTRODUCTION AND BACKGROUND

1.

I have been retained by Plaintiffs as an expert on issues of intellectual property,

and, in particular, the collective licensing of copyrights and related rights. I am familiar with the
facts set forth below.
2.

I am the FedEx Research Professor of Law at Vanderbilt University Law School

and Director of the Vanderbilt Intellectual Property Program. My educational background is set
forth as part of my curriculum vitae, which is attached here to as Exhibit A. The materials that I
reviewed in preparing this report, in addition to those cited herein, are listed on Exhibit B. Cases
in which I have been retained and testified as an expert in the last four years are listed in Exhibit
C. I am being compensated for my time at the rate of $400 per hour.
3.

I am an expert in the field of intellectual property law. I have taught intellectual

property law at various institutions in the U.S., Europe, and Canada. I have edited or contributed
to 33 books related to intellectual property and have written on intellectual property law for
journals around the world, including the Journal of the Copyright Society of the USA (my article

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Filed 06/29/12 Page 2 of 39

won the Charles B Seton Award in 2002-03), Columbia Journal of Law & the Arts, Fordham
Law Review, Cardozo Arts & Entertainment Law Journal, European Intellectual Property
Review, American Journal of International Law, Chicago-Kent Law Review, Vanderbilt Journal
of Technology and Entertainment Law and the Journal of Intellectual Property Law. I have been
cited in a decision by the Supreme Court of the United States (Golan v. Holder, 2011), and in
decisions by many other courts. A recent article was republished in Intellectual Property Law
Review (2011) as one of the best intellectual property articles of 2010.
4.

One of my special interests is in “collective management” of copyright, meaning

how aggregations of individual copyrights are legally protected, licensed, and marketed. In
January 2011, I gave the keynote talk at an event on collective management of copyright
organized by the Kernochan Center for Law, Media and the Arts at Columbia Law School. An
updated version of my presentation was published under the title “The Landscape of Collective
Management.”1 In addition, I authored the first chapter of “Collective Management of
Copyright: Theory and Practice in the Digital Age,” a 2010 book of which I served as the editor.
5.

Prior to my teaching career, I served as Head of the Copyright Projects Section at

the World Intellectual Property Organization (“WIPO”). In that capacity, I was asked to help
establish new, or improve the functioning of existing, Collective Management Organizations
(“CMOs”) in various countries around the world.
6.

I also served as Deputy Secretary General of the International Confederation of

Societies of Authors and Composers, the largest association of copyright collectives in the world;
and as Vice-President of Copyright Clearance Center, Inc. (“CCC”), based in Danvers, MA,

1

24:4 COLUM-VLA J. L & ARTS 423-449 (2011), available at
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1946997.

2

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Filed 06/29/12 Page 3 of 39

during which time I was also Deputy Chair of the International Federation of Reprographic
Rights Organizations (“IFRRO”), a worldwide association of CMOs, specializing in reprography
(photocopying and digital reproduction of printed content). I have spoken at over 130 academic,
professional and other conferences and events, discussing various issues related to intellectual
property, including copyright law of the United States, international copyright law and the
TRIPS Agreement.
7.

I also serve as Editor-in-Chief of the Journal of World Intellectual Property,

published by Wiley-Blackwell, a division or affiliate of John Wiley & Sons (New York).
B.

MY OPINION

8.

It is my understanding that the Defendants, themselves or in conjunction with

Google, Inc. (“Google”), have engaged in a project to scan books in their library collections and
that the resulting shared digital repository contains approximately 10 million digital volumes, ƒ
•‹‰‹ˆ‹…ƒ– —„‡” of which are protected by copyright. My further understanding is that
neither Defendants nor Google have obtained the permission of authors or other copyright
holders whose works have been scanned. As part of this project, which I will refer to below as
the Google Library Project, Google has provided the Defendants with digital copies of Plaintiffs’
works as well as works by others. In terms of how Defendants are using the digitized works, my
understanding is that they have been or potentially may be made available to users of various
university libraries and others in a number of different ways. In addition, my understanding is
that if Defendants determine that a work is in the public domain in the United States, it may be
made available to anyone in the United States. Moreover, pursuant to Defendants’ currently
suspended “Orphan Works Program,” online access to works determined by Defendants to be
“orphans” will made available to students, faculty and visitors of the university library holding

3

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Filed 06/29/12 Page 4 of 39

print copies of the book.
9.

I have been asked my opinion whether (a) collective management systems

provide a market-based mechanism by which libraries could compensate authors and
rightsholders in exchange for a license to mass digitize and make various uses of copyrighted
books in their collections, and (b) unrestricted and widespread conduct of the type described
above will harm the development of such systems. As I discuss in greater detail below, in my
opinion, the answer to each of these questions is the affirmative. In light of the fact that some of
the Plaintiffs are foreign-based, I have been asked to consider the above questions from an
international perspective.
10.

I believe that if Defendants’ digitization and use of copyrighted works is found

not to be fair use or otherwise exempt from the rights of copyright owners set forth in the
Copyright Act, the market will intervene and one or more CMOs will license the scanning, use
and display of copyrighted works such as those copied as part of the Google Library Project. In
fact, as discussed further below, the CCC and similar CMOs presently license the same general
type of copyrighted content as the material copied through the Google Library Project.
11.

Moreover, the type of copying involved in this case (mass digitization of library

books) is already licensed in a number of other countries, in some cases involving agreements
between Google and rightsholders. This point underscores the fact that there are alternatives to
Defendants’ (and Google’s) unilateral decision to digitize copyrighted works.
12.

Collective management is already used for many categories of content creators

and for many types of copyright uses, including online uses. The value of copyright to authors
and other rightsholders is often monetized not in individual transactions (authorizing a specific
use of one or more specific works) but in licensing their rights in aggregated form, as part of a

4

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“repertory” of works or rights. This allows markets for those repertoires of works and rights to
form and to operate, allowing access to and uses of copyrighted material while compensating
creators for their work. Collective licensing markets have often developed in response to new
technologies and uses and would likely develop for digital uses of books unless widespread
copying of entire books is permitted as a fair use, thus discouraging the development of such
collective licenses.
13.

I support the creation of digital repositories. I believe that making books and

other copyrighted works available online is desirable both for authors and users.
Technologically, it is likely that in the future most types of copyrighted content will be exploited
online in one form or another. In fact, I believe that it is likely to become a major form of access
to content. It may also facilitate access by people with disabilities.
14.

The critical question here is whether the rights of authors and other copyright

holders to license and/or be compensated for what is likely to become a major form of use of
their works should be taken away by Defendants or by others, who claim a right to copy and use
copyrighted works without permission from and without compensation to rightsholders.
15.

A collective licensing system to license online uses of digitized books would

compensate those who created and published the content and whose ability to earn a living often
depends on being able to monetize online uses. The actual scope of the uses could be taken into
account in determining appropriate rates and licensing terms could evolve to follow
technological evolution and market changes. Collective management solutions can be applied to
manage this type of licensing transaction, as the existence of successful similar collective
systems demonstrates.

5

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Case 1:11-cv-06351-HB Document 109

16.

Filed 06/29/12 Page 6 of 39

Conversely, allowing libraries to scan and make a variety of uses of print books

still in copyright without compensation will significantly reduce the compensation available to
authors and other copyright holders.
17.

It is my opinion that a collective management system, probably one requiring that

rightsholders opt their works in to participate in collective management, would likely develop
here if some or all of the Defendants’ uses are found not to be fair. Further, it is my opinion that,
if conduct such as the Defendants’ is permitted and becomes widespread, this can be expected to
harm or impede the development of such a collective management model.
C.

BASES FOR THE OPINION
(1)

18.

The Emergence and Basic Operations of Copyright Management
Organizations

Collective management reportedly emerged around 1777 in France, when authors

of theatrical plays formed an association to license their plays. In the United States, collective
management developed as technology and markets made possible the widespread and dispersed
infringement of copyrights. Indeed, broadcasters were considered “pirates” until their use of
music was licensed by performing rights organizations (“PROs”). ASCAP, BMI and SESAC are
the three PROs identified as such in 17 U.S.C. §101. The first PRO, the American Society of
Composers and Publishers (“ASCAP”), was formed in 1914.
19.

Collective management provides a number of advantages in licensing uses of

copyrights. CMOs are a single-source for the licensing of specific uses, thereby eliminating the
need for individually-negotiated licenses from each copyright owner. By reducing the
transaction costs associated with enforcing, on the one hand, and licensing, on the other, they
help convert widespread infringement into markets. This benefits both authors and users.
(2)

Collective Management in the Copyright Act
6

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Case 1:11-cv-06351-HB Document 109

20.

Filed 06/29/12 Page 7 of 39

The Copyright Act regulates CMOs in the United States in a variety of ways. For

example, PROs are named in section 101. Section 115 establishes a compulsory license for
making and distributing phonorecords. When Congress determines that certain uses are
desirable but should be subject to a payment to authors, Congress may establish a compulsory
license. By interpreting statutes, courts also play an important role in defining uses which should
be subject to license.
21.

The case of Herbert v. Shanley Co., 242 U.S. 591 (1917), provides a good

example of a situation in which infringement preceded the establishment of a working collective
licensing system. In that case, the Supreme Court interpreted a provision of the Copyright Act of
1909, which prohibited any unauthorized public performance of music that was done “for
profit.” Writing for the Court, Justice Holmes broad defined what constitutes “for profit”:
The defendants’ performances are . . . part of a total for which the public pays,
and the fact that the price of the whole is attributed to a particular item which
those present are expected to order, is not important. It is true that the music is
not the sole object, but neither is the food, which probably could be got cheaper
elsewhere. The object is a repast in surroundings that to people having limited
powers of conversation or disliking the rival noise give a luxurious pleasure not to
be had from eating a silent meal. If music did not pay it would be given up. If it
pays it pays out of the public’s pocket. Whether it pays or not the purpose of
employing it is profit and that is enough.
22.

The Court thus helped foster a market for public performance licenses that

ASCAP and now the other PROs provide.
23.

In the Digital Performance Right in Sound Recordings Act of 1995 (the “1995

Act”), Congress enacted a limited digital public performance right for sound recordings,
contained in 17 U.S.C.§114. Congress then provided a compulsory license for non-interactive
transmissions that do not enable a member of the public to receive, on request, a transmission of
a particular sound recording or a program specially created for the recipient. 17 U.S.C.
7

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Filed 06/29/12 Page 8 of 39

§114(d)(2), (f)(2) (2009); see also Bonneville Int’l Corp. v. Peters, 347 F.3d 485, (3d Cir. 2003)
(affirming Copyright Office’s decision to require a compulsory license for simultaneous transmission of a
radio station’s broadcast through the Internet). The 1995 Act also tasked the U.S. Copyright Office

to designate a CMO to administer the license, which it did, naming SoundExchange, Inc.2
24.

The 1995 Act did not follow the same model that applies to ASCAP and BMI.

Instead, Congress opted for a more specialized and modern form of regulation of collective
management. Under this new regulatory model, the Act gave the Library of Congress (of which
the Copyright Office forms a part) the authority to set rates and licensing conditions. The 1995
Act also set a distribution key according to which SoundExchange distributes 50% of the
revenues to the sound recording copyright owners, 45% to the featured artists, and 5% to an
independent administrator to distribute to non-featured artists and vocalists. Licensing rates are
set by Copyright Royalty Judges appointed by the Librarian of Congress for six-year terms. 17
U.S.C. §§ 801-805.

(3)
25.

The Copyright Clearance Center

A different, voluntary model emerged when the CCC was formed in 1978 as a

New York not-for-profit corporation in the wake of the effective date of the 1976 Copyright Act
on January 1, 1978. Publishers and authors register their works with the CCC and set the fee for
use of their works in CCC’s several per-use license services. CCC also offers annual repertory
licenses in both the business and academic markets. For the year ended June 30, 2011, CCC
reported payments to right holders in excess of $171 million. See
http://annualreport.copyright.com/management-summary-financial-data.

2

See 17 U.S.C. § 114(g)(2); Notice of Designation As Collective Under Statutory
License filed with the Licensing Division of the Copyright Office in accordance with Copyright
Office regulation 270.5(c), 37 C.F.R. § 270.5(c).
8

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26.

Filed 06/29/12 Page 9 of 39

CCC is a specific type of CMO, usually referred to as a Reprographic Rights

Organization (“RRO”). The International Federation of RROs, which is a membership
organization consisting of 81 members from around the world (including CCC), has been in
existence since 1980.
27.

RROs exchange repertoires, which means that an RRO in country A will allow an

RRO in country B to license works belonging to authors and publishers in country A to users in
country B, and vice versa. These agreements are usually referred to as Reciprocal
Representation Agreements. See www.ifrro.org.
28.

According to its website, CCC licenses business users, under one or more of its

repertory or per-use licenses, the right to photocopy an article from a newspaper, magazine,
book, journal, research report or other published document; e-mail an online article or PDF; post
digital content on their corporate web sites, intranets and extranets; print out web-based and
other digital content onto paper and overhead slides; republish content in a newsletter, book or
journal; and scan printed content into digital form when an electronic version is not readily
available. See www.copyright.com. For academic institutions, again under one or more of its
repertory or per-use services, CCC licenses the right to photocopy material from books,
newspapers, journals and other publications for use in coursepacks and classroom handouts; use
and share information in library reserves, interlibrary loan and document delivery services; post
and share content electronically in e-reserves, course management systems, e-coursepacks and
other e-learning environments; distribute content via e-mail or post it to their intranets, Internet
and extranet sites; and republish an article, book excerpt or other content in their own books,
journals, newsletters and other materials. Id.
(4)

Other Collective Management Organizations

9

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29.

Filed 06/29/12 Page 10 of 39

Today, CMOs in the United States license: (a) musical works (primarily the three

PROs and Harry Fox Agency which licenses the reproduction of musical works); (b) sound
recordings and the artists’ performances they contain (e.g., SoundExchange); and (c)
photocopying and digital reprography (e.g., CCC), to name the most well-known organizations.
In addition, a form of collective management is used to collect and distribute residuals to certain
actors, directors and screenwriters by the audiovisual guilds. In fact, Google acquired a CMO
called Rightsflow, Inc., in December 2011. Rightsflow pays “royalties […] to songwriters and
publishers all around the world.”3
30.

CMOs typically operate as follows: Once established (sometimes an

authorization is required to operate as a CMO, as was the case for SoundExchange), a CMO
needs the authority to license a repertory of works, performances or recordings and/or to collect a
license fee. The authority may be granted by law, as when a compulsory or statutory license is in
place, or by contracts with individual right holders or other CMOs. With that authority, a CMO
can license and/or collect fees on the basis of rates (also known as “tariffs”). Those rates may be
set by a governmental authority such as by the legislative branch as in provided for in Section
115 of the Copyright Act or by the Judiciary Branch, such as the federal judges operating as rate
courts under the ASCAP and BMI consent decrees.4 At other times, the rates are set by
rightholders, as is the case with CCC.

4

See, e.g., United States v. Am. Soc'y of Composers, Authors and Publishers, No. 411395, 2001 WL 1589999 (S.D.N.Y. June 11, 2001); Michael A. Einhorn, Intellectual Property
and Antitrust: Music Performing Rights in Broadcasting, 24 COLUM.-VLA J.L. & ARTS 349,
361 (2001).

10

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31.

Filed 06/29/12 Page 11 of 39

Having thus obtained the authority to license and/or collect fees, the CMO

generally will proceed to sign agreements with users that provide for the collection of license
fees and usage data. For example, radio stations (broadcasters) provide logs (often in digital
form) of the recordings they used to the PROs in an agreed format. While a radio station may
use computer logs to report the recordings used, for other types of users (hotels, bars,
restaurants), it is difficult to require 100% reporting. Sometimes statistical surveys are used
instead. For example, a number of (representative) users may be surveyed for a specific period of
time, and the data thus gathered will then be extrapolated to the class of users concerned using
statistical regressions and other similar models.
32.

The CMO will process such data and apply them to distribute the funds to

copyright holders.5 Identification data (metadata) is generally used to match usage data reported
by users or generated by the CMO to specific works, recordings or performances and the right
holders therein.
33.

I believe that if the Defendants’ uses are not determined to be fair uses, the market

will provide a collective licensing system for the types of uses that the Defendants have been
making so that they would not have to negotiate a transactional license for each book or other
work they wish to use. Congress may also help foster the development of this licensing system
through new legislation. Such an approach would compensate those who created and published
the content and whose ability to earn a living increasingly depends on monetizing online uses.

5

Payment to foreign copyright holders often is done through local CMOs in each
territory on the basis of a contract usually referred to as a Reciprocal Representation Agreement.
Worldwide databases of identification data have been created by CISAC and IFRRO. This
allows their members to identify foreign works, performances and recordings licensed to them
under those reciprocal representation agreements.

11

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(5)

34.

Filed 06/29/12 Page 12 of 39

Collective Management and the Digitization of, and Mass Access to,
Books Throughout the World

Often after a new form of use has emerged, collective management systems are

established to license uses that have been found to be desirable but are unauthorized. The
purpose of collective management is not to put roadblocks in the utilization of works but rather
to reconcile the needs of users and authors, to ensure that copyright rights are duly reflected in
new forms of use that do not constitute fair uses or are otherwise exempt. Using collective
management, users can obtain licenses with limited transaction costs (such as the annual licenses
granted by the PROs and by CCC) or at least a single interlocutor. CMOs can also aggregate
usage data to protect the privacy of individuals and the confidentiality of institutional and
business users.
35.

A number of other countries have adopted a licensing approach to the mass

digitization of books, each with a mechanism for some direct or indirect compensation to
copyright holders. In fact, while many of the major trading partners of the United States—
nations bound by essentially the same international copyright rules—have found the mass
digitization of books that are no longer commercially available to be desirable, I am not aware of
any country that has concluded that mass digitization of copyrighted works should be completely
exempted from all copyright obligations including the need to compensate authors and other
copyright holders for these mass uses of their works.
36.

On the European level, a number of developments are relevant. On June 8, 2012,

the Council of the European Union adopted a “final compromise text” of the “Proposal for a
Directive of the European Parliament and of the Council on certain permitted uses of orphan
works.” http://register.consilium.europa.eu/pdf/en/12/st10/st10953.en12.pdf. A “directive,” once
adopted by the Council and Parliament, may be defined as a set of legislative instructions sent by
12

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the European Union authorities to the 27 member States of the European Union to implement the
directive in their national law. Failure to implement the Directive by a member State may be
referred to the Court of Justice of the European Union.
37.

As the title of the proposed Directive indicates, its purpose is to allow certain uses

of “orphan works,” defined in draft recital 3 and article 2(1) of the June 8, 2012, proposal as
subject matter “protected by copyright or related rights and for which no rightsholder is
identified or, even if identified, is not located after a diligent search.” Id.
38.

A number of policy statements contained in the proposed text strike me as quite

persuasive and relevant to the issues in this case. Some of the main ones for the purposes of this
report are:
(a)

Recitals 1 and 10, which recognizes that libraries, and other and

institutions in Europe are engaged in large-scale digitization of their collections or archives; that
technologies for mass scale digitization of print materials and for search and indexing enhance
the research value of the libraries' collections; and that the “creation of large online libraries
facilitate electronic search and discovery tools which open up new sources of discovery for
researchers and academics that would otherwise have to content themselves with more traditional
and analog search methods.” Id.;
(b)

Recital 3b, which provides that “[c]opyright is the economic foundation

for the creative industry, since it stimulates innovation, creation, investment and production.
Mass digitization and dissemination of works is therefore a means of protecting Europe’s
cultural heritage. Copyright is an important tool for ensuring that the creative sector is rewarded
for its work” Id.; and
(c)

Article 6, which provides that the organizations mentioned above may

13

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make a work available and make a copy if it “only in order to achieve aims related to their public
interest mission, notably preservation, restoration and the provision of cultural and educational
access to works and phonograms contained in their collection”; and further that “Member States
shall provide that a fair compensation is due to rightholders that put an end to the orphan status
of their works and other protected subject matter.” Id.
(d)

Article 1(2c), which provides that the Directive “does not interfere with

any arrangements concerning the management of rights at national level.” Id. This is meant, I
believe, to allow Nordic countries that already have a collective management system in place for
mass digitization of books to continue to apply such systems. Those systems are discussed in
greater detail below.
39.

Finally, the proposed Directive provides that libraries and other institutions may

partner with commercial partners to digitize and make available the content via contractual
arrangements but provides that “the agreements should not impose any restrictions on the
beneficiaries of this Directive as to their use of orphan works and should not grant the
commercial partner any rights to use or control the use of the orphan works.” (recital 18). Id.
40.

The proposed directive is built on a notion of documented “diligent search” to

determine whether a copyrighted work is “orphaned.” This notion is explained in arts. 3 and 4 of
the June 8 text. Id. A similar notion (qualifying search) was contained in the proposed
legislation in the United States entitled the “Orphan Works Act of 2008.” In her testimony
before Congress concerning this Bill and the issue of orphan works more generally, then United
States Register of Copyrights Marybeth Peters said that her office “recommended a framework
whereby a legitimate orphan works owner who resurfaces may bring an action for ‘reasonable

14

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compensation’ against a qualifying user.”6
41.

At the national level, a number of European nations have already taken or plan to

take similar measures. For example, France adopted a Law on “unavailable twentieth century
books” according to which books published in France before 2001 and not commercially
available can be digitized by the French National Library. A collective management system is
part of the law. Jointly managed by authors and publishers, it is an “opt-out” system in the sense
that copyright holders are presumed to be part of the system unless they choose not to, in which
case they must notify the CMO entrusted with the management of the system.
42.

Google and French organizations representing authors and publishers recently

struck a deal to allow Google to scan books and use the digital copies under license from major
French publishers, including Hachette Livre and La Martinière.7
43.

Several Nordic countries have been using a form of collective management often

referred to as “extended collective licensing” (“ECL”). Under ECL systems, a voluntary system
is typically established by a CMO to license a particular use of a category of protected content
(for example, radio broadcasting of musical works, or photocopying and digital reproduction of
parts of books and articles by and within corporate entities). After a “substantial number” of
right holders for said category of content have voluntarily opted into the system, the law changes
the system from an opt in to an opt out for all remaining right holders (this constitutes the

6

Statement of Marybeth Peters, The Register of Copyrights, before the Subcommittee on
Courts, the Internet, and Intellectual Property, Committee on the Judiciary, United States House
of Representatives, 110th Congress, 2nd Session, March 13, 2008, available at
http://www.copyright.gov/docs/regstat031308.html.
7

See http://www.nytimes.com/2012/06/12/technology/french-publisher-group-strikesdeal-with-google-over-e-books.html?_r=1.

15

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“extended” element of the ECL regime). The determination of whether the “substantiality”
threshold has been reached is generally made by a designated governmental authority.
44.

A number of Nordic countries, including Sweden (home of Plaintiff the Swedish

Writers’ Union) and Norway (home of Plaintiff the Norwegian Non-Fiction Writers’ and
Translators’ Association), have adopted or have announced plans to adopt an ECL model for the
mass digitization of books and some other types of content. Those plans recognize the value of
mass digitization and the creation of digital repositories, but with a mechanism to compensate
authors and other rightsholders for the use of their works.
45.

Sweden’s government has put forward an ECL-based proposal to allow for mass

digitization to create the Swedish Digital Library. A Memorandum of Understanding has been
signed by the Swedish Writers’ Union, the Swedish Publishers’ Association, the National
Library of Sweden and the Visual Arts Copyright Society in Sweden. 8
46.

In Norway, the National Library is in the process of digitizing the complete

national literary heritage, not limited to works that are no longer protected by copyright.9 Rights
were cleared through an agreement between KOPINOR (the RRO for Norway) and the National
Library.10 The protected material can be viewed but not downloaded or printed.11 In exchange
for granting these rights as part of the ECL system, the library pays NOK 0.56 per page

8

See http://www.slideshare.net/EuropeanaConnectWP4/swedens-digital-library-ecl-aflexible-modelof-rights-clearance
9

http://www.nb.no/bokhylla (informal translation provided by Jan Terje, Counsel for

NFF.
10

The agreement is available at
http://www.nb.no/pressebilder/Contract_NationalLibraryandKopinor.pdf.
11

Id. § 4.

16

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(approximately $0.09) per year.12 This model is supported by legislation on ECL, namely
sections 16a, 17, 17a, 17b, 36 and 38a of the Norwegian Copyright Act.13
47.

Denmark was the first Nordic country to use ECL to allow certain digital uses of

text, starting in 1998. In 2002, it adopted a provision allowing public libraries to clear rights in
relation to digital reproduction of copyright protected works for interlibrary loans and the
reproduction of short excerpts.14 A subset of Danish libraries, namely research libraries,
concluded an agreement in 2004 with the Danish RRO, CopyDan, to license those uses.15
48.

Orphan works legislation was also enacted in Canada, home of Plaintiffs The

Writers Union of Canada and the Quebec Union of Writers (UNEQ). Section 77 of the Canadian
Copyright Act (RSC 1985, c C-42, s 77 (Can.)) permits the Copyright Board of Canada to issue
licenses to users whose reasonable efforts to locate a copyright holder have been unsuccessful.
The Board sets a price for each permitted use, which compensation is generally directed to a
designated CMO.
49.

A number of other countries have similar systems. In India, the Copyright Board

may issue a license to “publish [an orphan work as defined in the statute] or a translation thereof
in the language mentioned in the application subject to the payment of such royalty and subject
to such other terms and conditions as the Copyright Board may determine.”16

12

Id. § 7. Conversion rate provided on June 21, 2012 by www.oanda.com.

13

http://www.kopinor.no/en/copyright/copyright-act.

14

Danish Copyright Act, § 16(b).

15

Tarja Koskinen-Olsson, The Nordic Countries, in COLLECTIVE MANAGEMENT OF
COPYRIGHT AND RELATED RIGHTS 2d ed (D Gervais ed.) §§ 2.5 and 5.2 (2010).
16

Copyright Act 1957 (India) s 31A.

17

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Case 1:11-cv-06351-HB Document 109

50.

Filed 06/29/12 Page 18 of 39

In Japan, the Commissioner of the Agency for Cultural Affairs may issue a

license to use a work when the identity of the copyright holder “is unknown or for other [similar]
reasons.”17
51.

In Korea, the “Minister of Culture, Sports and Tourism as prescribed by

Presidential Decree” may determine the remuneration payable to use a work “where any person,
despite his considerable efforts in accordance with the criteria prescribed by Presidential Decree,
cannot identify the owner of author’s property rights.”18
52.

The United Kingdom has a provision limited to orphan performances, but a

number of proposals to have licensed for orphan works are under consideration.19 For instance, a
May 2011 report by Professor Ian Hargreaves requested by Prime Minister David Cameron
entitled “Digital Opportunity: A Review of Intellectual Property and Growth” (“Hargreaves
Report”) recommends that “the Government should legislate to enable licensing of orphan
works. This should establish extended collective licensing for mass licensing of orphan works,
and a clearance procedure for use of individual works.”20
53.

In all of the examples set forth above, there is a mechanism for payments to be

made for use of digitized materials, with compensation to individual rights holders.

17

Copyright Act of Japan (Act No. 48 of May 6, 1970, as last amended by Act No. 121
of 2006), §67. Translation at http://www.wipo.int/wipolex/en/.
18

Copyright Act of 1957 (Korea) (Law No. 432, as last amended by Law No. 9625 of
April 22, 2009). Translation at http://www.wipo.int/wipolex/en/.
19

Copyright, Designs and Patents Act 1988 (UK) s 190 (UK Act 1988). See also Orphan Works
and Orphan Rights: A Report by the British Screen Advisory Council (BSAC) Working Group
(July 2011), available at http://www.bsac.uk.com/policy-papers.html;
20

http://www.ipo.gov.uk/ipreview-finalreport.pdf.

18

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Case 1:11-cv-06351-HB Document 109

Filed 06/29/12 Page 20 of 39

EXHIBIT A
Daniel Gervais – Curriculum Vitae

A-642
Case 1:11-cv-06351-HB Document 109

Filed 06/29/12 Page 21 of 39

CURRICULUM VITAE

Daniel J. Gervais

PART I – EMPLOYMENT & HONORS
a) CURRENT POSITION

FedEx Research Professor of Law
Co-Director, Vanderbilt Intellectual Property Program
Vanderbilt University Law School

b) EDUCATION
ƒ

Doctorate, University of Nantes (France), 1998
ƒ magna cum laude (“très honorable”)
Diploma of Advanced International Studies, Geneva (Switzerland), 1989
ƒ summa cum laude (“très bien”)
LL.M., University of Montreal, 1987
Computer science studies University of Montreal, 1984-1985
LL.B. (McGill University/University of Montreal), 1984
D.E.C. (Science, Jean-de-Brébeuf College, Montréal), 1981

ƒ
ƒ
ƒ
ƒ
ƒ

c) PREVIOUS EMPLOYMENT & OTHER ACADEMIC EXPERIENCE
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ

Acting Dean, Common Law Section, University of Ottawa (Feb-Jul 2006 and Sep-2007-July 2008)
University Research Chair, Common Law Section, University of Ottawa (2006-2008)
Vice-Dean, Research, Common Law Section, University of Ottawa (2003-2006)
Full Professor, Common Law Section, University of Ottawa (2005-2008)
Associate Professor, Common Law Section, University of Ottawa (2001-2005)
Vice-President, International, Copyright Clearance Centre, Inc., Massachusetts, USA, 19972000
Consultant, Organization for Economic Cooperation and Development (OECD), Paris, 1997
Assistant Secretary General, International Confederation of Societies of Authors and
Composers (CISAC), Paris, 1995-1996
Head of Section, World Intellectual Property Organization (WIPO), Geneva, 1992-1995

A-643
Case 1:11-cv-06351-HB Document 109

ƒ
ƒ

Filed 06/29/12 Page 22 of 39

Consultant & Legal Officer, General Agreement on Tariffs and Trade (GATT/WTO),
Geneva, 1990-1991
Lawyer, Clark, Woods, (Montreal), 1985-1990

Visiting professorships:
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ
ƒ

Gide Loyrette Nouel Visiting Chair, Institut d'études politiques de Paris (Sciences Po Law School),
Feb.-Apr. 2012
Visiting Lecturer, Washington College of Law, American University, June 2011
Visiting Professor, Université de Liège (Belgium), March 2010 and 2011
Visiting Professor, Université de Strasbourg (Centre for International Intellectual Property Studies
(CEIPI), France), Nov.-Dec. 2009 and March 2012
Visiting Professor, Université de Montpellier, France (Feb. 2007 and Apr. 2008)
Visiting Professor, Univesity of Haifa (2005)
2004 Trilateral Distinguished Scholar-in-Residence, Michigan State University, Detroit College of
Law (April-May 2004)
Visiting Scholar, Stanford Law School, Feb-Apr. 2004
Visiting Professor, DEA (graduate) program, Faculty of Law, University of Nantes, France
(May 2003)
Visiting Professor, Faculty of Law, Graduate program in intellectual property (DESS), Centre
universitaire d’enseignement et de recherché en propriété intellectuelle (CUERPI), Université
Pierre Mendès-France (Grenoble II), France
Visiting Professor, Faculty of Law, University of Puerto Rico (June-July 2002--instruction in
Spanish and English)
Lecturer, Institute for Information Law, Faculty of Law, University of Amsterdam,
Postdoctoral Summer Program in International Copyright Law (every year since 2000; last in
July 2011)

ƒ
d) HONORS
ƒ
ƒ
ƒ
ƒ

FedEx Research Professorship, Vanderbilt University Law School (2011-2012)
Ontario Research Excellence Award (ex PREA), 20051
Charles B. Seton Award, 2003 (see under “Articles in English” below)
Quebec Bar 1985. Finished first ex aequo out of 600+ candidates—received all available awards,
including:
o Quebec Bar Award
o Quebec Young Bar Award
o Paris Bar Prize
ƒ Two Excellence Awards, Faculty of Law, University of Montreal, 1984
e) OTHER RELEVANT INFORMATION

1. Editor-in-Chief, Journal of World Intellectual Property, peer-reviewed, published by
Wiley-Blackwell (2006-)
2. Member, Editorial Board, WIPO-WTO Colloquiums for Intellectual Property Teachers
1

Of the 64 awards in that round, only one to a Law Professor.

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3. Member, Executive Committee, International Association for the Advancement of
Teaching and Research in Intellectual Property (ATRIP) (2011-)
4. Member, Advisory Board, Digital Library Project Advisory Board (Berkeley) (2011-)
5. Panelist, UDRP, WIPO Arbitration and Mediation Center
6. International editor, Journal of Intellectual Property Law & Practice (Oxford Univ.
Press) (2005-2008)
7. Member of the Law Society of Upper Canada (Ontario Bar) and of the Bar of Quebec
8. Languages: English, French, Spanish. German (functional). One year of Mandarin.
ACADEMIC EVENTS
-

-

Speaker, Chicago IP Colloquium, Loyola Law School, Chicago, April 17, 2012
Participant, Workshop “Intellectual Property at the Edge,” Columbia Law School, April 13, 2012
Panelist, Fordham International Intellectual Property Law & Policy Conference, New York, April 12,
2012
Speaker, Faculty of Law, University of Nantes, Nantes (France), March 23, 2012
Speaker, European and International IP Center (CEIPI), Strasbourg (France), March 19, 2012
Speaker, IP Colloquium, Washington University, St. Louis, Feb. 27, 2012
Speaker, Canada-Israel Israeli Canadian Workshop on Copyright Law Reforms & Developments, The
Hebrew University Of Jerusalem, Feb. 20 -21, 2012
Moderator, Vanderbilt Intellectual Property Association/Hyatt Fund event, Lockdown on Password
Sharing, Feb. 1, 2012
Moderator, 2011-2012 Symposium of the Vanderbilt Journal of Entertainment and Technology Law
(JETLaw), Copyright & Creativity: Perspectives on Fixation, Authorship, & Expression, Jan. 27,
2012
Moderator & organizer, Melbourne-Vanderbilt Global Debate, Vanderbilt Law School, Nashville,
November 15, 2011
Speaker, IP Colloquium, Indiana University Maurer School of Law, Bloomington, IN, November 3,
2011
Speaker, Copyright in a borderless online environment Symposium, Thoresta Herrgård, Bro, Sweden,
October 27-28, 2011
Speaker, International Law Weekend, Intellectual Property Law in National Politics and International
Relations, New York, NY, Oct. 21-22, 2011
Panelist, American Intellectual Property Law Association (AIPLA), Annual Meeting, Washington
DC, October 20, 2011
Speaker, Golan v. Holder Roundtable, Harvard Law School, September 23, 2011
Moderator, Max-Planck Institute Workshop on Economic Partnership Agreements of the EU: A Step
Ahead an International IP Law?”, Frauenchiemsee, Germany, June 26-28, 2011
Keynote speaker, 39e Colloque annuel International de l’AFEC, Stretching borders: How far can
Canada Go?, Montpellier, France, June 15-17, 2011
Moderator, Vanderbilt University Law School Program, Beijing, China, May 21, 2011
Moderator and panelist, 19th Annual Conference on Intellectual Property Law & Policy, Fordham
University Law School, New York, April 28-29, 2011
Chair, Invitation-only Intellectual Property Workshop, Canadian International Council, Ottawa,
March 31-April 1, 2011
Moderator, Patent Unrest, Vanderbilt Law School. February 24, 2011
Keynote speaker, Annual Symposium of the Kernochan Center for Law, Media & the Arts, Columbia
Law School, New York, January 28, 2011

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Filed 06/29/12 Page 24 of 39

Speaker, Intellectual Property Institute of Australia (IPRIA), University of Melbourne, Australia,
December 13, 2010
Speaker, Trade, Intellectual Property and the Knowledge Assets of Indigenous Peoples: The
Developmental Frontier, Victoria University, Wellington, New Zealand, December 8-10, 2010
Speaker, Computer Programs and TRIPS, TRIPS@10 Conference, Columbia University, November
16-18, 2010
Speaker, International Law Weekend, American Branch of the International Law Association,
Fordham Law School, New York, October 22-23, 2010
Speaker, Bits Without Borders conference, Michigan State University, East Lansing, MI, September
25-26, 2010
Speaker, World Trade Forum, Bern, Switzerland, September 3-4, 2010
Speaker, Copyright @ 300, UC Berkeley School of Law, Berkeley, CA, April 9-10, 2010
Speaker, The Statute of Anne 300 Birthday, Cardozo Law School, New York, March 24-25, 2010
Panelist, Access to Knowledge (A2K) conference, Yale Law School, February 12-13, 2010
Speaker, IUS COMMUNE, Reinventing the Lisbon Agreement, Maastricht University, The
Netherlands, November 26, 2009
Speaker, The Lisbon Agreement, CEIPI (Université de Strasbourg, France), November 17, 2009
Keynote speaker, Signifiers in Cyberspace: Domain Names and Online Trademarks Conference, Case
Western Reserve University, Cleveland, Ohio, November 12, 2009
Speaker, Beyond TRIPS: The Current Push for Greater International Enforcement of Intellectual
Property, American University (Washington College of Law), November 5, 2009
Speaker, Intellectual Property Developments in China: Global Challenge, Local Voices conference,
Drake University, Des Moines, Iowa, October 15-16, 2009
Speaker, University of Hong Kong, June 12-13, 2009
Speaker, Conference on 100th Anniversary of the 1909 Copyright Act, Santa Clara University, April
27, 2009
Panelist, Fordham International Intellectual Property law & Policy Conference, Cambridge, England,
April 15-16, 2009
Participant, University of Cambridge-University of Queensland Copyright History Roundtable,
Cambridge, England, April 15, 2009
Commentator, Vanderbilt Roundtable on User-Generated Content, Social Networking & Virtual
Worlds, Nashville, November 14, 2008
Distinguished Finnegan Lecturer, Washington College of Law, Washington, D.C., October 18, 2008
Panelist, International Law Weekend, New York, October 16, 2008
Speaker, IP Speaker Series, Cardozo Law School, September 22, 2008
Lecturer, Intellectual Property Research Institute of Australia (IPRIA), Melbourne, June 3, 2008
Speaker, International Conference on Patent Law, University of New Zealand, Wellington, May 2930, 2008
Speaker, Law School of National Taiwan University, March 21, 2008
Commentator, EDGE Project Conference on Intellectual Property and Development, Hong Kong,
March 17-18, 2008
Speaker, Cardozo Law School Conference on Harmonizing Exceptions and Limitations to Copyright
Law, New York, March 30-31, 2008
Panelist, Fordham Conference on International Intellectual Property Law & Policy, New York, March
27-28, 2008
Rapporteur, International Literary and Artistic Association Biennial Congress (ALAI), Punta del
Este, Uruguay, Oct. 31 – Nov. 3 2007
Speaker, Vanderbilt University, Nashville, Tennessee, Oct. 16-17, 2007. “Collective Management of
Copyright in North America”, (conference organized in cooperation with WIPO)
Speaker, University of South Carolina, Columbia, SC, October 12, 2007 “The Future of Copyright
Law”

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Panelist, Fordham University Conference on International Intellectual Property Law & Policy, New York,
April 12-13, 2007
Speaker, Dean’s lectures on intellectual property, George Washington University School of Law,
Washington D.C., March 13, 2007
Speaker, UCLA Conference on the WIPO Development Agenda, Los Angeles, March 9-11, 2007
Speaker, International Conference on Impact of TRIPS: Indo-US Experience. NALSAR University of Law,
Hyderabad (India), Dec. 15-16, 2006
Speaker, International intellectual property conference, University of Chicago-Kent, October 12-13, 2006
Speaker, Study days of the International Literary and Artistic Association, Barcelona, June 18-21, 2006
Moderator, Fourteenth Annual Conference on International Intellectual Property Law & Policy, New York,
April 20-21 2006
Speaker, University of Michigan, Ann Arbor. Intellectual Property & Development, April 14 2006
Speaker, Michigan State University College of Law (MSU), East Lansing, The International
Intellectual Property Regime Complex, April 7-8 2006
Roundtable participant, Vanderbilt University Law School, Nashville, Tennessee. Private International Law
and Intellectual Property Law: Theory and Practice, March 24-25, 2006
Panelist, Federalist Society, Annual Lawyers Convention. Washington, D.C., November 2005
Panel Chair, Annual meeting of the International Association for the Advancement of Teaching and
Research in Intellectual Property (ATRIP), Montréal, July 11-13, 2005
Lecturer, Institute of European Studies, Macau (IEEM), Advanced IP course (25 June-1 July 2005)
Lecturer, Advanced IP conference, Macau, June 27-30, 2005
Speaker, Conference on the Relationship between international and domestic law McGill University,
June 15-16, 2005
Speaker, Conference on the Collective Management of Copyright, Oslo, May 19-21, 2005
Keynote speaker, Conference of the Department of Justice on intellectual property and Internet Law,
Ottawa, April 21, 2005
Keynote speaker, LSUC Annual Communications Law Conference, Toronto, April 8-9, 2005
Speaker, Law & the Information Society Conference, Fordham University, New York, April 6-7,
2005
Panelist, Fordham International Intellectual Property Law & Policy Conference, New York, March
31-Apirl 1, 2005
Speaker, Shanghai 2004: Intellectual Property Rights and WTO Compliance. University of East
China, Shanghai, China, Nov. 24, 2004
Speaker, “The Internet: A Global Conversation” Conference, University of Ottawa, Oct. 1-2, 2004
Lecturer, Office for Harmonization in the Internal Market (Trade Marks and Designs). Alicante
(Spain), July 2004
Organizer and Speaker, Rethinking Copyright Conference, University of Ottawa, May 20-21, 2004
Panelist, American Intellectual Property Lawyers Association (AIPLA), Dallas TX, May 13-14, 2004
Speaker , 2004 Computers Freedom & Privacy Conference, Berkeley, California Apr. 20-23, 2004
Speaker, Intellectual Property, Sustainable Development & Endangered Species Conference. Detroit
College of Law, Michigan State University, March 26-27, 2004
Speaker, Securing Privacy in the Internet Age Symposium, Stanford Law School, March 13-14, 2004
Keynote speaker, “US Copyright Office Comes to California” Conference, Hastings College of Law,
San Francisco, CA, March 3, 2004
Speaker, Global Arbitration Forum, Geneva, Switzerland, Dec. 4-5, 2003
Panel Chair and Speaker, “Copyright and the Music Industry: Digital Dilemmas”, Institute for
Information Law, Amsterdam, July 4-5, 2003. Topic: “Collective Rights Management & the Future of
Copyright”
Conference Fellow, “International Public Goods and Transfer of Technology under a Globalized
Intellectual Property Regime” Conference, Duke Law School, Raleigh, NC, USA, Apr. 4-6, 2003

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Speaker, Roundtable on questions arising out of the intersections of technology and questions of
social justice, University of Ottawa, March 28, 2003. Topic: “Democracy, Technology and Social
Justice” (available at commonlaw.uottawa.ca)
Speaker, Conference of Copyright Law Association of Japan (CLAJ), Tokyo, Dec. 7, 2002. Topic :
“Transactional Copyright: Licensing Tailored Uses”
Speaker, Facultés universitaires de Saint-Louis, Belgique, May 25-26 2002. Topic : «De l’œuvre à
l’auteur »
Speaker. Institutions administratives du droit d’auteur, colloquium organized by the Université de
Montréal, Montreal, Oct. 2001. Topic : « La gestion collective au Canada : fragmentation des droits
ou gestion fragmentaire »
Speaker, Annual Meeting of the International Literary and Artistic Association (ALAI International),
Columbia University, New York, 2001. Topic: “ Rights Management Systems”
Lecturer, Swedish School of Economics and the Finnish IPR Institute, Helsinki, Finland, 2000. Topic:
“Copyright and Electronic Commerce”, lecture presented to graduate students
Speaker, Fordham University Conference on International Intellectual Property, New York, April
2001. Topic “Electronic Commerce and Copyright”
Speaker, Fordham University Conference on International Intellectual Property, New York, April
2000. Topic: “The TRIPS Agreement After Seattle”
Speaker, Ohio State University, Columbus, Ohio, 2000. Topic: “Digital Licensing of Copyright”
Speaker, Fordham University Conference on International Intellectual Property, New York, April
1999. Topic: “Digital Distance Education: Exemption or Licensing?”
Speaker, Fordham University Conference on International Intellectual Property, New York, April
1999. Topic: “An Overview of TRIPS: Historical and Current Issues”

g) PUBLIC LECTURES & NON-ACADEMIC EVENTS

-

Speaker, The Copyright Office Comes to Music City, Nashville, TN, April 26, 2012
Panelist, ABA IP Section, Annual Meeting, Crystal City VA, March 29, 2012
Speaker, Practising Law Institute, New York, March 28, 2012
Speaker, Gide Loyrette Nouel, Paris (France), March 14, 2012 (“Non Traditional
Trademarks”)
Speaker, Leadership Music, Nashville, TN, March 9, 2012
Moderator, Canadian International Council conference on Innovation (“Right and Rents”),
Ottawa, October 5-7, 2011
Chair and Speaker, Canadian International Council Workshop on Innovation, Ottawa, March
31 and April 1st, 2011
Speaker and session leader, High-level (Ministerial) Forum on Intellectual Property for the
Least-Developed Countries, WIPO, Geneva, July 24-25, 2009
Moderator, Copyright Counseling, Management, and Litigation Law Seminar, Seattle, WA,
April 26-27, 2009
Speaker, Annual Meeting. Commission on Intellectual Property, International Chamber of
Commerce, Cambridge, England, April 17, 2009
Keynote speaker, Asian Copyright Seminar, Tokyo, Japan, February 25-27, 2009
Speaker, International Copyright Institute, Washington DC, Nov. 28, 2006
Speaker, International Trademark Association, Trademarks Administrators Conference, Crystal
City, Virginia, September 19-20, 2006

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Speaker, General Assembly of the National Association of Publishers (ANEL), Montréal,
September 14, 2006
Speaker, Federalist Society Annual Lawyers Convention, Washington D.C. November 2005.
Keynote speaker. InSIGHT, Old Mill Inn, Toronto, September 2005. Topic: “Copyright Reform in
Canada”
Speaker. Canadian Institute, , Montréal, 5-6 June, 2005
Speaker, Canadian Bar Association, Montreal, Nov. 9, 2004. Topic: “Recent developments in
Canadian copyright law”
Speaker, Peer-to-Peer Luncheon speech, The 45th Circuit, Ottawa Centre for Research and
Innovation (OCRI), Oct. 5, 2004. Topic: “Peer-to-Peer File-Sharing”
Speaker, Luncheon conference, ALAI Canada, Toronto, Sept. 13, 2004. Topic: “The
Supreme Court decision in SOCAN v. Can. Ass’n of Internet Providers”
Lecturer, International Copyright Institute, Washington, D.C., May 5, 2004. Topic:
“Collective management of copyright”
Speaker, Biannual Canadian Bar Association/Law Society of Upper Canada Communications
Law Conference, Ottawa, April 23-24, 2004. Topic: “The Supreme Court decision in CCH v.
Law Society of Upper Canada”
Speaker, Association pour l’avancement des sciences et des techniques de la documentation
(ASTED), Annual Meeting, Gatineau, Quebec, Nov. 7, 2003. Topic : “Copyright Exceptions
and Librarians”
Keynote speaker, International Conference on National Copyright Administrative
Institutions, Ottawa, Oct. 8-10, 2003. Topic: “Status Report on Internet Tariffs”
Panelist, Intellectual Property Institute of Canada (IPIC), Annual Meeting, Halifax, Sept. 19,
2003. Topic: “Technical Protection Measures and Copyright”
Speaker, North American Workshop on Intellectual Property and Traditional Knowledge,
Ottawa, Sept. 7-9, 2003. Topic: Traditional Knowledge and Intellectual Property: The
Issues”
Speaker, Association des juristes d'expression française de l'Ontario (AJEFO), Ottawa, June
21, 2003. Topic: Law & Technology
Speaker, Editors Association of Canada, Ottawa, June 15, 2003. Topic : “A Walk Through
the Copyright Labyrinth”
Keynote speaker, Computer Assisted Language Instruction Consortium (CALICO), Ottawa,
May 22, 2003. Topic : “Copyright, Copyleft, Copywrong?”
Speaker, Expert Roundtable on Transactions in Intellectual Property, Amsterdam, May 1718, 2003. Topic: “Fragmentation of Copyright and Rights Management”
Speaker, “The 45th Circuit” (OCRI), Ottawa, Apr. 1, 2003. Topic : “Emerging Issues in
Digital Rights Management”
Speaker, Information Highways Conference, Toronto, March 24, 2003. Topic : Digital Rights
Management : Balancing Creators Rights and User Interests”
Speaker, Literary and Artistic Association (ALAI Canada), Montreal, Oct. 22, 2002. Topic :
« La gestion collective es-elle en crise? »
Instructor, World Trade Organization (WTO), Nairobi, Sept. 2002. Topic: The TRIPS
Agreement after Doha”
Instructor, World Trade Organization (WTO), Casablanca, Sept. 2002. Topic: “The TRIPS
Agreement After Doha”

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Speaker, Literary and Artistic Association (ALAI Canada), Montreal, May 7, 2002. Topic:
« La décision de la Cour suprême dans l’affaire Galeries d’art du Petit Champlain Inc. c.
Théberge »
Instructor. International Copyright Institute (Washington, D.C.), Nov. 2000 and Nov. 2001.
Topic: “Collective Management of Copyright in the Digital Age”
Speaker. Annual Meeting of the International Trademark Association (INTA), Denver, CO,
USA, May 2000. Topic: “The TRIPS Agreement: Implementation and Dispute Settlement
Issues”
Speaker, New York Bar (NYCLA), 2000. Topic : “Current Rights Clearance Issues”
Speaker, Society of Scholarly and Professional Publishers (SSP), Boston, Mass., 1999. Topic:
“Copyright Licensing Issues”
Speaker, Canadian Writers Union Conference, Toronto, 2000. Topic: “Copyright Management
in the Digital Age”
Speaker, Heritage Canada Roundtable on Copyright Management, Ottawa, 1999. Topic:
“Copyright Management: US Practices”
Speaker, International Publishers Association (IPA) Congress, Tokyo, Japan, 1998. Topic:
“Copyright, Publishing in the Face of Technological Change”
Speaker, Marché international du multimédia (MILIA), Cannes, France, 1995. Topic : “Droit
d’auteur et multimédia”
Speaker, Chilean Book Fair, Santiago, Chile, 1999. Topic: “El papel de las sociedades de
derechos reprográficos y de la IFRRO”
Speaker, Sydney Bar, NSW, Australia, 1996. Topic: “Intellectual Property and Technology”
Speaker, Congress of the International Publishers Association, Barcelona, Spain, 1996. Topic:
“Online Copyright Licensing”
Speaker, Pan African Film Festival (FESPACO), Ouagadougou, Burkina Faso, 1994. Topic:
“Protection of Intellectual Property in Film”
Speaker, Chambre française du commerce et de l’exportation (CFCE), Paris, 1990. Topic :
“TRIPS: Le point à dix semaines de Bruxelles”
Publications 2

h)

i)

Summary
Books authored ........................................................................................................................ 8
Books edited ............................................................................................................................ 3
Book chapters .................................................................................................................... 23+7
Articles ............................................................................................................................. 53+1
Conference proceedings (refereed) .......................................................................................... 1
Book reviews ........................................................................................................................... 2

2

Where possible, titles are hyperlinked. See also http://bit.ly/tsGP0y.

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Other publications .................................................................................................................. 29
Technical Reports, Law Reform, and Commissioned Research Work .................................... 6

ii)

Detailed description

Books (authored)
1.

INTELLECTUAL PROPERTY: THE LAW IN CANADA, 2d ed. (Carswell, 2011) --with Prof.
Elizabeth Judge, 1223 p.

2.

L’ACCORD SUR LES ADPIC: PROPRIÉTÉ INTELLECTUELLE À L’OMC (Larcier, 2010), 733 p.

3.

THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS, 3rd ed. (Sweet & Maxwell,
December 2008), 785 p.
x

Cited by the Supreme Court of the United States (majority opinion) in Golan v.
Holder (2011)

4.

LE DROIT DE LA PROPRIETE INTELLECTUELLE, (Yvon Blais, 2006). 702 pages--with
Professors Elizabeth Judge and Mistrale Goudreau

5.

INTELLECTUAL PROPERTY: THE LAW IN CANADA (Carswell, 2005), with Prof. Elizabeth
Judge

6.

THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS, 2ND ed. (Sweet & Maxwell,
June 2003). 590 p.

7.

THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS. (Sweet & Maxwell, 1998).
444 p.

8.

LA NOTION D’ŒUVRE DANS LA CONVENTION DE BERNE ET EN DROIT COMPARÉ. (Librairie
Droz, 1998). 276 p.

Books (edited)
1.

COLLECTIVE MANAGEMENT OF COPYRIGHT AND RELATED RIGHTS, 2nd ed. (Kluwer Law
International, 2010) 495 p.

2.

INTELLECTUAL PROPERTY, TRADE AND DEVELOPMENT (Oxford Univ. Press, 2007). 564 p.

3.

COLLECTIVE MANAGEMENT OF COPYRIGHT AND RELATED RIGHTS (Kluwer Law
International, 2006), 464 p.

Book chapters3
1. R The TRIPS Agreement, in MAX PLANCK ENCYCLOPEDIA OF PUBLIC INTERNATIONAL LAW
(forthcoming)
2. R Traditional Innovation and the Ongoing Debate on the Protection of Geographical Indications,
INTELLECTUAL PROPERTY AND INDIGENOUS INNOVATION (PETER DRAHOS AND SUSY FRANKEL,
EDS) (forthcoming)

3

R= double-blind refereed publication.

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3. The International Legal Framework of Border Measures in the Fight against Counterfeiting and
Piracy, ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS THROUGH BORDER MEASURES (2D
ED., OLIVIER VRINS AND MARIUS SCHNEIDER EDS.). Oxford Univ. Press (forthcoming)
4. Adjusting Patentability Criteria to Optimize Innovation: A Look at China and India, GLOBAL
PERSPECTIVES ON PATENT LAW (MARGO BAGLEY AND RUTH OKEDIJI, EDS). Oxford Univ. Press
(forthcoming)
5. The TRIPS Agreement and Climate Change, in RESEARCH HANDBOOK ON INTELLECTUAL
PROPERTY AND CLIMATE CHANGE (JOSHUA SARNOFF, ED.) (forthcoming)
6. Copyright, Culture and the Cloud, in BITS WITHOUT BORDERS (SEAN PAGER & ADAM
CANDEUB, eds.) (forthcoming)
7. Country Clubs, Empiricism, Blogs and Innovation: The Future of International Intellectual
Property Norm-Making in the Wake of ACTA, TRADE GOVERNANCE IN THE DIGITAL AGE (MIRA
BURRI AND THOMAS COTTIER, EDS). Cambridge University Press, 2011 (forthcoming)
8. TRIPS Articles 10; 63-71, in CONCISE INTERNATIONAL AND EUROPEAN IP LAW, 2D ED.
(THOMAS COTTIER AND PIERRE VÉRON, EDS). Kluwer Law International, 2011, pp. 38-42 and
168-186
9. User-Generated Content and Music File-Sharing: A Look at Some of the More Interesting
Aspects of Bill C-32, in FROM "RADICAL EXTREMISM" TO "BALANCED COPYRIGHT": CANADIAN
COPYRIGHT AND THE DIGITAL AGENDA (MICHAEL GEIST, ED., Irwin Law, 2010 )
10. Of Silos and Constellations: Comparing Notions of Originality in Copyright Law, in
INTELLECTUAL PROPERTY PROTECTION OF FACT-BASED WORKS (ROBERT F. BRAUNEIS, ED,
Edward Elgar, 2010) 74-106—coauthored with Professor Elizabeth Judge;
x

Also published as an article (see below)

11. Policy Calibration and Innovation Displacement, in DEVELOPING COUNTRIES IN THE WTO
LEGAL SYSTEM (JOEL TRACHTMAN, AND CHANTAL THOMAS, EDS.) (Oxford Univ. Pr., 2009)
363-394;
12. TRIPS 3.0, in THE DEVELOPMENT AGENDA: GLOBAL INTELLECTUAL PROPERTY AND
DEVELOPING COUNTRIES (NEIL W. NETANEL, ED) 51-75. (Oxford Univ. Pr., 2009)
13. R A Uniquely Canadian Institution: The Copyright Board of Canada, in A NEW INTELLECTUAL
PROPERTY PARADIGM: THE CANADIAN EXPERIENCE (YSOLDE GENDREAU ED). (Edward Elgar,
2009)
14. TRIPS Article 10; Articles 63-71, in CONCISE INTERNATIONAL AND EUROPEAN IP LAW (THOMAS
COTTIER AND PIERRE VÉRON, EDS). (Kluwer Law International, 2008), 39-42 et 153-170
15. Intellectual Property and Human Rights: Learning to Live Together, in INTELLECTUAL
PROPERTY AND HUMAN RIGHTS (PAUL TORREMANS, ED). (Wolters Kluwer, 2008) 3-24
16. R A Canadian Copyright Narrative, in COPYRIGHT LAW: A HANDBOOK OF CONTEMPORARY
RESEARCH. (PAUL TORREMANS, ED.) (Edward Elgar, 2007) 49-82;
17. The Changing Landscape of International Intellectual Property, in, INTELLECTUAL PROPERTY
AND FREE TRADE AGREEMENTS. (CHRISTOPHER HEATH AND ANSEL KAMPERMAN SANDERS,
EDS) (Oxford: Hart Publishing, 2007), 49-86;
18. TRIPS and Development, in INTELLECTUAL PROPERTY, TRADE AND DEVELOPMENT (D.
GERVAIS, ED, 3-60
x

See under Books (edited) above

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19. A TRIPS Implementation Toolbox, in idem, 527-545
20. Traditional Knowledge and Intellectual Property; A TRIPS Compatible Approach, in, IPR
PROTECTION AND TRIPS COMPLIANCE. (VEENA, ED.) (Amicus/ICFAI University Press, 2007),
146-178;
x

Republication of article listed under No. 25 below

21. Em busca de uma Norma Internacional para os Direito de Autor: O ‘Teste dos Três Passos
Reversos’, in PROPIEDADE INTELECTUAL (EDSON BEAS RODRIGUES JR ET FABRÍCIO POLIDO,
EDS), (Rio de Janeiro, Elsevier, 2007), 201-232 (republication of article listed under No 23 in list
below)
22. The TRIPS Agreement and the Changing Landscape of International intellectual Property, in
INTELLECTUAL PROPERTY AND TRIPS COMPLIANCE IN CHINA. (PAUL TORREMANS ET AL., EDS).
(Edward Elgar, 2007), 65-84
23. The TRIPS Agreement and the Doha Round: History and Impact on Development, in
INTELLECTUAL PROPERTY AND INFORMATION WEALTH. (PETER YU, ED), (Praeger, 2006), vol. 3,
23-72.
24. The Changing Role of Copyright Collectives, in COLLECTIVE MANAGEMENT OF COPYRIGHT AND
RELATED RIGHTS. (DANIEL GERVAIS, ED.) (Kluwer Law International, 2006), 3-36
25. R The Role of International Treaties in the Interpretation of Canadian Intellectual Property
Statutes, in THE GLOBALIZED RULE OF LAW: RELATIONSHIPS BETWEEN INTERNATIONAL AND
DOMESTIC LAW. (O. FITZGERALD, ED), (Toronto: Irwin Law, 2006), 549-572
26. R Le rôle des traits internationaux dans l’interprétation des lois canadiennes sur la propriété
intellectuelle, in RÈGLE DE DROIT ET MONDIALISATION : RAPPORTS ENTRE LE DROIT
INTERNATIONAL ET LE DROIT INTERNE (O. FITZGERALD, ED) (Yvon Blais, 2006), 679-712;
x

French version of previous item in list

27. R The TRIPS Enforcement Provisions, in, CONCISE COMMENTARY OF EUROPEAN INTELLECTUAL
PROPERTY LAW (THOMAS DREIER, CHARLES GIELEN, RICHARD HACON, EDS.) (Kluwer Law
International, 2006)
28. The TRIPS Agreement, in BORDER MEASURES IN THE EUROPEAN UNION. (OLIVIER VRINS AND
MARIUS SCHNEIDER, EDS.), (Oxford University Press, 2006), 37-62;
29. R Use of Copyright Content on the Internet: Considerations on Excludability and Collective
Licensing, in IN THE PUBLIC INTEREST: THE FUTURE OF COPYRIGHT LAW IN CANADA (MICHAEL
GEIST, ED). (Toronto: Irwin Law, Oct. 2005);
30. Copyright and eCommerce: License or Lock-up?, in INTELLECTUAL PROPERTY IN THE GLOBAL
MARKETPLACE : 2001 UPDATE. (NEIL WILKOF ET AL. EDS.), (New York: John Wiley & Sons,
2002). 18 p.

Articles
1. Cloud Control: Copyright, Global Memes and Privacy, J. TELECOM. & HIGH TECH L. (2011)
(coauthored with Dan Hyndman)
2. Golan v. Holder, A Look at the Constraints Imposed by the Berne Convention, 64 VANDERBILT
LAW REVIEW EN BANC 147-163(2011)
x

Cited by the SCOTUS in Golan v Holder (2011)

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3. The Landscape of Collective Management, 24:4 COLUM-VLA J. L & ARTS 423-449 (2011)
4. Pamela Samuelson et al., The Copyright Principles Project, 25:3 BERK. TECH. L.J. 1175-1246
(2010)
5. Making Copyright Whole: A Principled Approach to Copyright Exceptions and Limitations, 5:1/2
UNIV. OTTAWA L. & TECH. J. 1-41 (2008)*
x

Published in March 2011

6. The Google Book Settlement and the TRIPS Agreement, 2011 STAN. TECH. L.R. 1-11;
7. Fair Use, Fair Dealing, Fair Principles: Efforts to Conceptualize Exceptions and Limitations to
Copyright, 57:3 J. COPYRIGHT. SOC.Y OF THE USA 499-520 (2010);
x

Reprinted in INTELLECTUAL PROPERTY LAW REVIEW (2011) as one of best
intellectual property articles of 2010

8. Reinventing Lisbon: The Case for a Protocol to the Lisbon Agreement , 11:1 CHICAGO J. INT’L
L.67-126 (2010);
9. The Regulation of Inchoate Technologies, 47 HOUSTON L. REV. 665 (2010);
10. The 1909 Copyright Act in Historical Context, 26:2 SANTA CLARA HIGH TECH L.J.185-214
(2010);
11. Towards a Flexible International Framework for the Protection of Geographical Indications, 1:2
WIPO JOURNAL 147-158 (2010) (coauthored with Prof. Christophe Geiger, Norbert Olszak and
Vincent Ruzek)
12. The Misunderstood Potential of the Lisbon Agreement, 1:1 WIPO JOURNAL 87-102 (inaugural
issue - on invitation) (2010)
13. Of Silos and Constellations: Comparing Notions of Originality in Copyright Law, 27:2
CARDOZO ARTS & ENTERTAINMENT L. J. 375-408 (2009)--with Professor Elizabeth Judge;
14. Traditional Knowledge: Are We Closer to the Answers?,15:2 ILSA J. OF INT'L. AND COMP. LAW
551-567 (2009);
15. The Tangled Web of User-Generated Content, 11:4 VAND. J. OF TECHNOLOGY AND
ENTERTAINMENT LAW 841-870 (2009);
16. World Trade Organization panel report on China’s enforcement of intellectual property rights,
103:3 AM. J. INT’L L.549-554 (2009) (International Decision--on invitation);
17. Of Clusters and Assumptions: Innovation as Part of a Full TRIPS Implementation, 77:5
FORDHAM L. R. 2353-2377 (2009)
18. R A Canadian Copyright Narrative, 21 INT. PROP. J. (Can.) 269 (2009)
x

Republication of book chapter with same title

19. The Protection of Databases, 82:3 CHI-KENT L. REV. 1101-1169 (2007);
20. R The Purpose of Copyright Law in Canada, 2:2 UNIV. OTTAWA. J. L. & TECH. 315-356 (2006);
21. R The Changing Landscape of International Intellectual Property, 2 J. OF INTELL. PROP. LAW &
PRACTICE 1-8 (2006);
22. Intellectual Property and Development: The State of Play, 74 FORDHAM LAW REVIEW 505-535
(2005);

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23. Towards A New Core International Copyright Norm: The Reverse Three-Step Test, 9 MARQ.
INTELL. PROP. L. REV. 1-37 (2005);
24. Copyright in Canada: An Update After CCH, REVUE INT. DROIT D’AUTEUR RIDA 2-61(2005);
x

Also published in French (see below)

25. Traditional Knowledge & Intellectual Property: A TRIPS-Compatible Approach, [2005] MICH.
ST. L. REV. 137-166;
26. R International Intellectual Property and Development: A Roadmap to Balance?, 2:4 J. OF
GENERIC MEDICINES 327-334 (2005);
27. The Price of Social Norms: Towards a Liability Regime for File-Sharing, 12 J. INTELL. PROP. L.
39-74 (2004);
28. R The Compatibility of ‘Skill & Labour’ with the Berne Convention and the TRIPS Agreement,
[2004] 2 EUR. INT. PROP REV. 75-80;
29. Canadian Copyright Law Post CCH, 18:2 INTELL. PROP. J. (Can.) 131-168 (2004);
30. Spiritual but Not Intellectual? The Protection of Sacred Intangible Traditional Knowledge, 11
CARDOZO J. OF INT'L & COMP. LAW 467-495(2003);
31. R TRIPS, Doha & Traditional Knowledge: A Proposal, 6 J. WORLD INT. PROP. 403-419 (2003);
32. R Fragmented Copyright, Fragmented Management: Proposals to Defrag Copyright
Management, 2 CAN .J. OF L. & TECH 15-34 (2003) (with Prof. Alana Maurushat)
33. R Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law,
49:4 J. COPYRIGHT. SOC.Y OF THE USA 949-981(2002);*
x

Winner, Charles Best Seton Award, Best Article of 2002-3, Copyright Society of the
USA

x

Article cited by the Chief Justice of Canada in CCH Canadian Inc. v. Law Society of
Upper Canada, [2004] 1 S.C.R. 339 (Can.), at para. 18.

34. The Internationalization of Intellectual Property: New Challenges from the Very Old and the
Very New, 12:4: FORDHAM INTELL. PROP., MEDIA & ENTERTAINMENT L. J. 929-990 (2002);
35. R Collective Management of Copyright and Neighboring Rights in Canada: An International
Perspective, 1 CAN. J. OF LAW & TECH. 21-50 (2002);
36. Transmission of Music on the Internet: A Comparative Study of the Laws of Canada, France,
Japan, the U.K. and the United States, 34:3 VANDERBILT J. OF TRANSNAT’L L. 1363-1416
(2001);
x

Article cited in the majority opinion of the Supreme Court of Canada in Society of
Composers, Authors and Music Publishers of Canada v. Canadian Association of
Internet Providers, 2004 SCC 45 (Can.), at para. 75.

37. R The TRIPS Agreement After Seattle: Implementation and Dispute Settlement Issues 3 J. OF
WORLD INT. PROP. 509-523(2000);
38. R Electronic Rights Management Systems, 3 J. OF WORLD INT. PROP. 77-95 (2000);
39. R The TRIPS Agreement: Interpretation and Implementation, 3 EUR. INT. PROP. REV., 156-162
(1999);
40. R Intellectual Property in the MAI: Lessons to Be Learned, 2 J. WORLD INT. PROP. 257-274
(1999) (with Vera Nicholas)

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41. R Electronic Rights Management and Digital Identifier Systems, J. ELEC. PUBLISHING, online
only, March 1999. Available at http://www.press.umich.edu/jep/04-03. (18 pages)
42. R The Protection Under International Copyright Law of Works Created with or by Computers, 5
IIC INTERN’L REV. INDL PROP. AND COPYRIGHT L. 629-660 (1991).

Articles in other languages
1. L’Arrangement de Lisbonne, un véhicule pour l’internationalisation du droit des indications
géographiques ? 35 PROPRIÉTÉS INTELLECTUELLES 691 (2010) (coauthored with Prof.
Christophe Geiger, Norbert Olszak and Vincent Ruzek
o

French version of article mentioned at no 11 in list above

2. Trente ans de droit d’auteur à la Cour suprême du Canada, 21 :2 CAHIERS DE PROPRIÉTÉ
INTELLECTUELLE 419-448 (2009)
3. Propiedad intelectual y derechos humanos: aprendiendo a vivir juntos, 3:5 REVISTA
IBEROAMERICANA DE DERECHO DE AUTOR (2009)
o

Edited translation of book chapter with same title

4. Roberston c. Thomson Corp. : Un commentaire sur le droit des pigistes à la lumière de
l’intervention de la Cour suprême du Canada, 3 :2 REVUE DE DROIT & TECHNOLOGIE DE
L’UNIVERSITÉ D’OTTAWA/UNIVERSITY OF OTTAWA LAW & TECHNOLOGY JOURNAL, 601-614
(2006);
o

French version of article mentioned at no 25 in list above

5. R Le droit d’auteur au Canada après CCH, 203 REVUE INT. DROIT D’AUTEUR RIDA 261(2005);
6. R Essai sur la fragmentation du droit d'auteur : Deuxième partie 16 CAHIERS DE PROPRIÉTÉ
INTELLECTUELLE 501-536 (2004);
7. R Être au parfum: La protection des marques olfactives en droit canadien, 15 CAHIERS DE
PROPRIÉTÉ INTELLECTUELLE 865-904(2003);
8. R Essai sur la fragmentation du droit d'auteur : Première partie, 15 CAHIERS DE PROPRIÉTÉ
INTELLECTUELLE 501-536 (2003);
9. R L'affaire Théberge, 15 CAHIERS DE PROPRIÉTÉ INTELLECTUELLE 217-240 (2002);
10. R Los sistemas básicos de derecho de autor y copyright: La noción de obra y la gestión de los
derechos de autor, 26 REVISTA DE DERECHO PRIVADO, 15-27(2001);
11. R La Responsabilité des États à l'égard des actes des organes judiciaires, 6 R.Q.D.I. 71-82
(1989-1990);
12. R Le Droit de refuser un traitement psychiatrique au Québec; 26 CAHIERS DE DROIT 807 (1985)

Conference Proceedings (Refereed)
- R Le droit d'auteur au Canada: fragmentation ou gestion fragmentaire, in INSTITUTIONS
ADMINISTRATIVES DU DROIT D'AUTEUR (Y. Gendreau, ed., Cowansville : Éditions Yvon Blais,
2002), 459-477

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Other Publications—All languages

1. The International Legal Framework for the Civil Enforcement of Copyright & Criminal
Enforcement of Copyright in the United States, IP ENFORCEMENT AND LITIGATION 2012, PLI,
2012, 361-399
2. How Canada can Be an Innovation Leader, THE GLOBE AND MAIL, November 30, 2011
3. The Rise of 360 Deals in the Music Industry, 3:4 LANDSLIDE 1-6 (2011)
4. The Google Book Settlement and International Intellectual Property Law, 15:9 ASIL INSIGHT
(Apr, 11, 2011)
5. Foreword, in IMPLEMENTING THE WIPO DEVELOPMENT AGENDA (Jeremy DeBeer, Ed.). Ottawa:
Wilfrid Laurier University Press. 2009. ix-xii
6. Collective Management of Copyright and Related Rights in North America, in ASIAN COPYRIGHT
SEMINAR, (Tokyo, Feb. 25, 2009) 17-72
7. La Parodie et le moyen de défense fondé sur l’« intérêt du public », in DROIT D’AUTEUR ET
LIBERTÉ D’EXPRESSION/COPYRIGHT AND FREEDOM OF EXPRESSION, 2006 BARCELONE, (ALAI,
2008)
8. Litigation, not politics, drives change in IP, 25:28, THE LAWYERS WEEKLY (November 25, 2005)
2 pages
9.

TRIPS: A Question of Balance. IPR INFO (Helsinki: Immateriaalioikeuinstituutti), 2/2005, 26-27

10. The Realignment of Copyright in Canada. Twelfth National Conference on Communications
Law, Toronto, April 7, 2005 (51 pages)

11. The Changing Face of Copyright, 7:4 COPYRIGHT & NEW MEDIA LAW NEWSLETTER, 3
pages (2003)
12. Arbitration Concerning Intellectual property Rights: A Key to the Success of the Doha Round, 7:2 J.
OF WORLD INT. PROP. 245-248 (2004)
13. The Evolving Role(s) of Copyright Collectives, in DIGITAL RIGHT MANAGEMENT - THE END OF
COLLECTING SOCIETIES?” (Christoph Beat Graber, ed.) (Lucerne, 2005)
14. A Viable Rights Clearance Scheme, 6:2 COPYRIGHT & NEW MEDIA LAW NEWSLETTER 3 (2002)
15. “Copyright and the Use Paradigm,” in COPYMART: THE PRODUCT AND ITS PROSPECTS:
PROCEEDINGS OF THE BERLIN SYMPOSIUM. (Z. Kitagawa, ed.), (Kyoto: IIAS, 2003), 109-116
16. “Traditional Knowledge: A Challenge to the International Intellectual Property System,” in, 7
INTERNATIONAL INTELLECTUAL PROPERTY LAW AND POLICY. (New York: Juris, 2002). ch 76-1
17. “The TRIPS Agreement: Life After Seattle?,” in 6 INTERNATIONAL INTELLECTUAL PROPERTY LAW
AND POLICY. (New York: Juris, 2001). ch. 40-1
18. E-Commerce and Intellectual Property: Lock-it Up or License?, in 6 INTERNATIONAL
INTELLECTUAL PROPERTY LAW AND POLICY. (New York: Juris, 2001). ch. 87-1
19. Electronic Rights Management Systems, in Y2C: COPYRIGHT LAW 2000 (Jon A. Baumgarten and
Marybeth Peters, eds),. (New Jersey: Glasser Legal Works: 2000) (15 pages)

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20. An Overview of TRIPS: Historical and Current Issues, in 5 INTERNATIONAL INTELLECTUAL
PROPERTY LAW AND POLICY. (New York: Juris, 2000), ch. 40
21. Digital Distance Education: Exemption or Licensing?, in, 4 INTERNATIONAL INTELLECTUAL
PROPERTY LAW AND POLICY. (New York: Juris, 1999), ch. 87
22. Copyright Aspects of Electronic Publishing, in PROCEEDINGS OF EP'94, (Beijing: The Science Press,
1994) 4-12
23. ECMS: From Rights Trading to Electronic Publishing, in THE PUBLISHER IN THE CHANGING
MARKETS. PROCEEDINGS OF IPA FOURTH INTERNATIONAL COPYRIGHT SYMPOSIUM. (Tokyo:
Ohmsha, 1998). 194-212 (18 pages)
24. The TRIPS Agreement: Enforcement and Dispute-Settlement Provisions, in THE PUBLISHER IN THE
CHANGING MARKETS. PROCEEDINGS OF IPA FOURTH INTERNATIONAL COPYRIGHT SYMPOSIUM
(Tokyo : Ohmsha, 1998). 230-236 (7 pages)
25. « L'état des lieux: la gestion collective dans le monde, en Europe et en France ». (Paris: SACEM,
1996). (11 pages)
26. « Gestion des droits », in ACTES DU COLLOQUE LES AUTOROUTES DE L’INFORMATION : ENJEUX
ET DÉFIS », HUITIÈMES ENTRETIENS DU CENTRE JACQUES CARTIER RHÔNE-ALPES. (Lyons:
Université de Lyon-2, 1996)
27. « Les ‘œuvres multimédia’ : le point de vue de l'OMPI », in LE MULTIMÉDIA : MARCHÉ, DROIT ET
PRATIQUES JURIDIQUES. ACTES DU JURISCOPE 94. (Paris : P.U.F., 1995). (8 pages)
28. « Identificación de las obras utilizadas en sistemas digitales », in NUM NOVO MUNDO DO DIREITO
DE AUTOR. (Lisbon: COSMOS/Arco-Iris, 1994). (17 pages)
29. “El principio del trato nacional en los acuerdos internacionales de propiedad intelectual”, same book—(15
pages)

Book Reviews
-

T. Scassa and M. Deturbide. Electronic Commerce Law In Canada (Toronto: CCH, 2004).
Reviewed at 42 CAN. BUS. L. J. 292-310 (2005)

-

Le Droit du Commerce Électronique. (V. Gautrais, ed.). (Montréal, Thémis, 2002. 709 pp.),
reviewed at 33 REVUE GÉNÉRALE DE DROIT 489-505 (2003)

Technical Reports, Law Reform, and Commissioned Research Work
1. Fair Dealing, the Three Step test and Exceptions in the Canadian Copyright Act, Report
commissioned by Industry Canada, November 2007
2. Application of an Extended Licensing Regime in Canada: Principles and Issues Related to
Implementation. Department of Canadian Heritage, July 2003*
3. Collective Management of Copyright and Neighboring Rights in Canada: An International
Perspective. Department of Canadian Heritage, August 2001*
4.

Intellectual Property Practices in the Field of Biotechnology. Report published by the Trade
Directorate, Organization for Economic Co-operation and Development (OECD), Paris 1999.
Document No. TD/TC/WP(98)15/FINAL.(23 pages)

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5. THE LAW AND PRACTICE OF DIGITAL ENCRYPTION. (Amsterdam: University of Amsterdam, 1998).
(64 pages)
6. ECMS: The Policy Issues, in IMPRIMATUR CONSENSUS FORUM. 21/22 NOVEMBER 1996. (London:
Imprimatur, 1996).

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EXHIBIT B
Daniel Gervais – Materials Considered
In addition to the materials cited in my declaration, I have considered the following
documents:
1. The Government Response to the Hargreaves Review of Intellectual Property and
Growth;
2. Amazon.com’s Kindle Direct Publishing Terms and Conditions, Last Updated
February 9, 2012;
3. Amazon.com’s Search Inside! Publisher Sign-up, from
http://amazon.com/gp/html-forms-controller/SITB_Pub_Signup_Form;
4. The Amended Settlement Agreement entered into by the parties to the lawsuit The
Authors Guild, Inc., et al. v. Google Inc., et al., No. 05 Civ. 8136 (DC)
(S.D.N.Y.);
5. Documents produced by Plaintiffs Norsk Faglitterær Forfatter- og
Oversetterforening (The Norwegian Non-Fiction Writers and Translators
Association) as AG0004039-4074;
6. Documents produced by Plaintiffs of Sveriges Författarförbund (The Swedish
Writers’ Union) as AG0004393-4431; and
7. Documents produced by Plaintiffs The Writers’ Union of Canada as AG00044324433.

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EXHIBIT C
Daniel Gervais – Prior Testimony at Trial or Deposition
Proceeding
Authors Guild v. Google Inc.

Court

United States
District Court,
Southern District
of New York
Elsevier B.V. v. UnitedHealth United States
District Court,
Group, Inc.
Southern District
of New York

Reference

Context

Year On behalf
of
No. 05 Civ. Deposition 2012 Plaintiff
8136 (DC)

784 F.
Supp. 2d
286

Filed
Report

2011

Plaintiff

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KILPATRICK TOWNSEND & STOCKTON LLP
Joseph Petersen (JP 9071)
Robert Potter (RP 5757)
1114 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Joseph M. Beck (admitted pro hac vice)
W. Andrew Pequignot (admitted pro hac vice)
Allison Scott Roach (admitted pro hac vice)
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309-4530
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Defendants
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
THE AUTHORS GUILD, INC., ET AL.,
Plaintiffs,

Case No. 11 Civ. 6351 (HB)

v.
HATHITRUST, ET AL.,
Defendants.

DECLARATION OF JOHN WILKIN IN SUPPORT OF
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
I, John Wilkin, pursuant to 28 U.S.C. § 1746, hereby declare as follows:
1.

I am an Associate University Librarian at the University of Michigan

(“Michigan”) and also serve as the Executive Director of HathiTrust, which, as is explained in
more detail below, is the name of a service provided by Michigan. I submit this declaration in
support of the defendant libraries’ (the “Libraries”) motion for summary judgment. Unless

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otherwise noted, I make this declaration based upon my own personal knowledge or, where
specifically noted, based upon Michigan’s business records.
2.

As Associate University Librarian for Library Information Technology, I am

responsible for, among other things, the online catalog and related technologies for the
University Library which is physically spread over numerous buildings and individual libraries
(collectively, the “University Library”).1
3.

My duties include ensuring the University Library has the necessary technological

infrastructure and networked systems to support the library’s core mission and services. I have
served in this role since June 1, 2002.
4.

On June 1, 2012, I assumed responsibility for many of Michigan’s publishing

activities, including the University of Michigan Press and digital publishing operations.
5.

Prior to my current role and responsibilities, I served as the Head of the Digital

Library Production Service at Michigan, a position that I held since 1996. In that role I was
responsible for campus- and internet-wide Michigan-hosted digital collection services.
6.

I have continuously (with the exception noted below) served in various roles in

Michigan’s library since graduating with a Masters in Library Science from the University of
Tennessee in 1986 (with the exception of 1992 through 1994 during which time I served as
Systems Librarian for Information Services at the University of Virginia).
7.

I have served as the Executive Director of HathiTrust since 2008. In that role, I

am responsible for the service’s operations, development, budget and the measures taken to
ensure the security of the works within the HathiTrust digital library.

1

As used in this declaration, and unless otherwise noted, the term “University Library” does not include certain
other libraries at Michigan including Bentley Historical Library, Clements Library, Kresge Business Administration
Library, Law Library, Thompson Library (Flint) and Mardigian Library (Dearborn), among others.

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A.

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The University Library
8.

Consistently ranked as one of the top ten academic research libraries in North

America, the University Library, which, as a part of a non-profit organization dedicated to
learning, is open to students, faculty and the general public, makes available an extraordinary
array of resources and services.
9.

The University Library holds more than 8 million bound volumes housed in a

number of physical locations across the Michigan campus. All of the various libraries at
Michigan, including the law and business school libraries, hold more than 11 million volumes.
10.

Last year, in fiscal year 2011, the University Library hosted nearly 4 million

patron visits.
B.

The Core Function of Academic Libraries Such as the University Library
11.

In order to place HathiTrust in context, it helps to have some background

regarding the basic functions of the University Library, indeed all academic libraries:
•

We buy works for academic and scholarly pursuits;

•

We curate, maintain, and preserve those works;

•

We help scholars and students identify works pertinent to their pursuits; and

•

We make those works available and accessible consistent with applicable law.

12.

We have been performing these functions for nearly 175 years.
(i)

13.

Acquisition of Works

Academic libraries such as the University Library acquire works to satisfy

anticipated future demand by University Library patrons. When a work is requested by many
patrons, and we find ourselves maintaining a waiting list for that work, we will often try to
purchase additional copies.

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14.

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Last year, in fiscal year 2011, Michigan’s libraries spent more than 24 million

dollars on library materials and the vast majority of these sums were spent acquiring new works.
Although state appropriations for the university consistently decrease, the University Library’s
spending for acquisitions continually increases.
15.

We spend millions of dollars each year on obtaining access to electronic

resources: we spend approximately 12 million dollars2 per year in order to acquire the right to
display the full text of works (most of which are in-copyright) to library patrons.
16.

While I discuss this point in greater detail below, it bears emphasis that our

digitization efforts, including those associated with the HathiTrust Digital Library (“HDL”), do
not diminish our acquisitions of in-copyright material (digital or otherwise). Each year, we
spend millions of dollars to license the right to display the text of copyrighted works and to
acquire new books. Moreover, no portion of in- copyright materials is displayed to patrons
through the HDL (except to students, faculty and staff with certified print disabilities—please
see Section J, ¶¶ 100-106, below for a description of this service). In other words, the HDL is
not a substitute, in any respect, for our acquisitions of in-copyright material (whether print or
digital).
17.

There are a number of reasons why academic libraries spend such enormous sums

on acquisitions every year. Academic libraries acquire works not just for current students and
faculty, but also for future generations.
18.

Librarians cannot reliably predict which works may be of scholarly interest in ten,

fifty, or one hundred years. This is one reason why the University Library acquires an
extraordinarily broad range of materials on every conceivable subject.

2
This figure includes expenditures by all campus libraries because many such licenses are jointly negotiated or
funded for the campus as a whole.

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19.

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Indeed, it is not unusual to hear scholars express pleasant surprise (and relief) to

discover that we have a particular work in our collection. Such statements are a testament to our
efforts to acquire and preserve a breathtaking number of works. We do so because of the mere
possibility that a particular work on a seemingly obscure topic may be valuable to a future
student or scholar.
20.

The imperative that academic and research libraries acquire a broad range of

material for future scholarship is magnified by the fact that the library can have no assurance that
a work will remain available after it is first published. Indeed, most works go out of print after
the initial print run and once that print run is sold out, it can be difficult if not impossible to
obtain copies of the work.
21.

As a result, academic libraries typically acquire works very shortly after they are

published—even before a definite scholarly need has surfaced—and they need to purchase a
sufficient number of copies of each work to accommodate anticipated user demands; otherwise,
the library may not be able to buy the work later. This is particularly true for books published
outside of the United States, for example in developing countries, and most journal issues are out
of print soon after the initial issue is distributed.
(ii)
22.

Preservation

Books, in their physical form, are inherently subject to damage, deterioration and

loss. This is particularly true for books published between 1850 and 1990—approximately threequarters of our entire collection—because books published during this time period were
generally published on paper with high acid content.
23.

Paper with high acid content degrades far more quickly than paper with low acid

content. This is because the fibers that comprise paper degrade when acid meets the moisture in

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the air. In what is referred to as an “acid hydrolysis reaction,” the paper fibers are repeatedly
split into smaller fragments so long as the source of acid remains in the paper. This process, in
fact, produces more acid and the degradation accelerates in a downward spiral.
24.

As a result, books that are more than 160 years old—that typically were published

on rag cotton paper, which is relatively more durable—are usually in far better condition than
books that are less than 50 years old.
25.

As of 2004, Michigan estimated that about half of its collection—approximately

3.5 million books—was printed on paper with high acid content, i.e. on paper that is particularly
vulnerable to deterioration and, ultimately, loss.
26.

Prior to the digitization project at issue in this proceeding, the process of

searching the University Library’s immense collections to identify deteriorating books took so
long that, by the time we identified the most imperiled books from the millions potentially at risk,
it was often too late and the books had disintegrated or were unusable.
27.

Our earliest, independent efforts to preserve deteriorating books through

digitization were also severely limited by the length of time it took us to digitize them. Indeed,
books were deteriorating so rapidly that, even if we could have instantly identified all of the
books in our vast collections that were on the brink of deterioration (as noted above, this is an
impossible task), we still could not have digitized the collection in time to preserve the content of
the works.
28.

Indeed, the University Library was the industry leader in the average number

works digitized per year. However, we were only capable of independently digitizing
approximately 5,000 books per year, which was but a small fraction of the imperiled works
within our collection.

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29.

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In other words, prior to asking Google to digitize our collections, we were losing

the race to save significant portions of the library’s works.
30.

Gradual disintegration is not the only threat to books in the academic libraries.

Loss from theft, vandalism, fire, and floods presents an ever-looming threat.
31.

Hurricane Katrina devastated Tulane University’s Howard-Tilton Memorial

Library. I understand from published reports that its basement floor (approximately the size of a
football field) flooded with over eight feet of water, destroying 90% of the 500,000 volumes in
one of the library’s collections.
32.

Library destruction has not been limited to acts of nature. The most famous

example of a loss of a library is probably the destruction of the Library of Alexandria, but
millions of volumes have been destroyed in libraries during the World Wars, and the collection
of the National Library in Sarajevo lost over 1 million volumes due to shelling in the 1990’s.
(iii)
33.

Helping Scholars Identify Works of Potential Interest

Importantly, libraries aid scholars in the identification of relevant works. The

immense collections housed by academic libraries such as the University Library would be
significantly diminished without reliable and efficient search methods and related technology.
34.

Until relatively recently, most searches of a library’s collection relied on a

physical card catalog. Each card contained limited information concerning a particular work,
including its title, author, publication date and publisher and limited information concerning the
work’s subject matter.
35.

In order to automate cataloging, libraries began to share the work of creating

bibliographic description in the 1960’s. As part of these efforts, libraries created the Research
Libraries Group and the Online Computer Library Center (OCLC), a non-profit organization that

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developed and maintained Worldcat, the largest online public access catalog (OPAC) in the
world. This paved the way for the creation of online catalogs in the 1970’s.
36.

While converting the physical card catalog to a digital one empowered users to

perform broader searches, those searches were still limited to the work’s basic bibliographic
data, such as author, title, subject, etc., as illustrated in the following screen shot from
Michigan’s online catalog:
Mlrl n Catalo9
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cri!ical care I ed ,led by Andrea Gabrie l i. A, Jo, eph

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....__

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37.

Even with the advent of the online catalog such as depicted above, the actual

content of the works remained closed to searches. Accordingly, a work that contained
information of great importance to a researcher would not be discoverable by that researcher
unless the work’s title, subject headings, or other limited bibliographic data happened to contain
certain key words or other evidently pertinent information.

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(iv)

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Making Works Available Pursuant to Our Understanding of

Applicable Law
38.

One of the most basic functions of the University Library—indeed all academic

and research libraries—is lending books and other materials to patrons. Further, the University
Library makes works available in a variety of other ways:
•
•

We reproduce and distribute works that are in the public domain; and

•

C.

We make copies of works in order to provide equal access to those works to
students, faculty, and staff who have certified print disabilities;

We reproduce and distribute works pursuant to Section 108 of the Copyright Act
in the event that a work is lost, damaged, deteriorating, or stolen and a
replacement copy cannot be obtained by the University Library at a fair price.

The University Library’s Early Digitization Efforts
39.

Starting in the mid 1980’s, the University Library, like many leading academic

and research libraries, began investing in the equipment necessary to convert works from print to
digital format.
40.

We took this significant step because we recognized that, in the decades to follow,

basic library functions would increasingly require computing technology.
41.

For example, as summarized above, one of the most critical missions served by

libraries such as the University Library is the preservation of works for future generations. It
was for this reason that in the late 1980’s we began converting at-risk materials to digital format.
We knew that by digitizing such works we were ensuring that they would be available for future
scholarly pursuits even in the event that the work in physical form was lost and we could not find
a replacement copy at a fair price.
42.

As noted above (¶¶ 22-29), while we sought to preserve at risk works through

digitization, we found that given the enormous size of our collections we could not digitize and,

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thereby, preserve deteriorating works quickly enough. In fact, during this time period I
understand that we lost irreplaceable volumes which, as a result, have vanished from the
academic and cultural landscape.
43.

The University Library’s early efforts at digitization also allowed for an

increased, though still very limited, number of works to be made more readily accessible to those
with certified print disabilities, and allowed for some improved search functionality across the
digitized works. A truly comprehensive solution, however, required large-scale digitization that
the University Library could not possibly accomplish on its own.
D.

Google’s Involvement in Michigan’s Digitization Efforts
44.

Prior to Google’s involvement in our digitization efforts, at our then rate of

scanning, it would have taken us more than 1,000 years to digitize the University Library’s then
over 7 million volumes.
45.

In 2002, we began speaking with Google about its interest in digitizing

Michigan’s entire library collections in less than a decade.
46.

In late 2004, we entered into an agreement with Google under which Google

would convert hardcopy books from Michigan Library collections to a digital format and provide
digital copies of those books to Michigan. Attached as Exhibit A is a true and correct copy of
Michigan’s current agreement with Google concerning this project.
47.

In return for giving Google access to books in the University Library collection,

Google was required to give the University Library a digital copy of the works digitized by
Google. We bargained for this right because it was important to us that we had the right to
control our own uses and satisfy one or our primary missions of providing specialized services to
the blind or other persons with disabilities. We knew that by maintaining control over our own

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digitized copies of our collection we could ensure that students and faculty with print disabilities
had access to works within the HDL on par with their non-disabled peers.
48.

Our aim in working with Google was to digitize as much of the University

Library as possible.3 If we digitized only select portions of our collections we would not have
accomplished our goals.
49.

For example, if we limited the project solely to works known to be in the public

domain, we would have continued to lose books presumed to be in-copyright to inevitable
disintegration and decay and, potentially, to theft, vandalism and natural disaster or calamity.
50.

Further, digitization held the promise of providing students and scholars with

print disabilities immediate access to our print collections on par with the access afforded other
library patrons. That promise would have been largely unrealized if we had limited digitization
to the public domain.
51.

Finally, from the very outset of the project our goal was to offer scholars a better,

more comprehensive way to search for and discover pertinent works within the collection. If we
only allowed such searches over the portion of works known to be in the public domain, roughly
75% of the library’s collections would have been excluded. A search tool that excluded 75% of
our collections would be of significantly less value to students and scholars seeking to identify
the works most relevant to them.
52.

While Michigan was the first academic library to work with Google in connection

with what would become the “Google Book Project,” it is my understanding that Google
ultimately partnered with a number of other universities and research libraries. For example, I
am aware that in addition to the defendants named in this lawsuit, Google worked with such

3

In certain instances, rights holders availed themselves of an opt-out program offered by Google in connection with
its digitization of works. In those situations, our digital collection does not include such works.

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universities as Harvard University, Stanford University, Oxford University, Columbia
University, Princeton University, the University of Virginia, and the University of Texas at
Austin, among others. The benefits to society—in preserving books, making them accessible to
people with print disabilities, and enabling people to find them—increased significantly with
each institution that digitized books from its collections.
E.

The Formation of HathiTrust
53.

In 2008, Michigan formed HathiTrust, named for the Hindi word for elephant,

“hathi.” The “hathi” prefix is intended to evoke the qualities of memory, wisdom, and strength
symbolized by elephants.
54.

The concept underlying the formation of HathiTrust was (and is) simple. It makes

no economic or functional sense for each research library to maintain its own digitized collection
of works. Rather, we believe that by working together and pooling resources we can better serve
our common goals of collecting, organizing, securing, preserving and, consistent with applicable
law, sharing the record of human knowledge.
55.

Accordingly, pursuant to the HathiTrust mission, participating members

combined their digitized collections in order to provide more secure, long-term storage for the
works, more comprehensive research and discovery tools, improved access to works in the
public domain and improved access to works for students and faculty with print disabilities.
Michigan runs the HDL as a service not only for the benefit of Michigan but also for the benefit
of all participating institutions and, indeed, all users of the HathiTrust website located at
www.hathitrust.org.

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There are currently more than sixty institutions participating in HathiTrust,

including Michigan, and membership is open to institutions worldwide. Attached hereto as
Exhibit B is a true and correct copy of participating members as of today.
F.

The Composition of the HathiTrust Digital Library (“HDL”)
57.

The combined corpus of the HDL now totals more than 10 million works and is

growing every day.
58.

While the HDL corpus contains a very large number of works, we have a

significant amount of information regarding the general composition of the corpus.
59.

For example, an analysis of the Library of Congress call numbers of works

provides an overview of the subject matter of the works found in the HDL:

HathiTrust Call Numbers

Legend follows on next page.

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• A - Gene ral Wo rks [2]
.AG - Dict iona ri es ... [s)
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AN - Newspa pers [S]
AY - Yea rbooks. Almanacs. [ll]
BC - Logic [14]
BH - Aesthetics [17]
BM - Juda ism [20)
BR - Christian ity (23 J
BV - Pract ical Theo IOi\' [26]
CB - History of Civili2ation (29 )
CE - Technical Chrono logy. Ca lendar [32]
CR - Hera ldry [35]
D - History Genera l (3S)
DC - History of f ran( e-Andorra -Monaco [41 )
DF - History of Greece [44]
DJ - H istor'( of the Netherlands [47 J
DP - History of Spain - Portugal [50)
DS - History of Asia (53]
DX - History of Gypsies [56]
G - Geography; AnthropologV; Recreat ion [59J
GC - Oceanography [62]
GN - Anthropology [65)
GV - Recreation ; Leisure (68J
HB - Economic t heo ry; Demo;:raphy [71 ]
HE - Transportation and communications [74 J
HJ - Pu blic Finance [77J
HO - f amily; Marriage; W om an : Sexuality [SOJ
J - Gene ral leg islative & execut ive papers [83 J
Jf - Politi cal instil. & public adm in - Gen'l [S6)
JL - Political instrt. & pub. admin-Can ada; etc. [89]
J5 - Local government. Mun icip;,1govt (92 )
JZ - Internat ional rela t ions [95J
KDK - Law (United Kingdom and Ire land (98)
KG - La w (Lat in Am erica- Mex. &
Ame r. ..,)( lOl)
KL - Law (History of law-The ancie nt orient)(104)
LA - History of Education (107)
LD - Education (Individua ll nst it utions-USI (110)
LG - Education (Indiv . Instit .-As ia; Africa; etc.(l13]
LT - Textbooks (116)
MT - Musica l instruction and study [119 J
NB - Sculptu re [ 122]
NE - Print med ia [ 125)
P - Language and Lite ratu re (12S)
PC - Romanic laniuages [131 J
PG - Slav ic langs; Ba lt iC langs; Alban ian lang{134]
PK - Indo-Iranian philolog y and literatu re [137)
PN - Literatu re (General) [140]
PS - Am e rican literature [143 ]
0 - Science (Ge neral) [146)
OC - Physics [149)
OH - Natura l history - Biology [152J
QM - Human anat omy [155)
R - Med icine (General) (15SJ
RC - Internal med icine [161)
RF - Otorhinolaryngolog..,' (1 64)
RK - Dentistry (167 J
RS - Pharmacy and materia med ica [ 170]
RX - Homeopathy (173]
SB - Plant (ulture [176J
SH - Aqua(ultu re. Fishe ri es. An gli ng. [ 179)
TA - Engineer ing [Gen'I). Civil Engineering [182J
TE - Highway engineering. Roa ds & pavements (185 ]
TH - Bui ld ing construct io n [188]
TL - Motor vehicles Aeronautics Ast ro nautics [lSl )
TR - Photogra phy [194J
TX - Home econom ics [1971
UB - M ilitary administration [200)
UE - Ca val !)'. Armo r [203J
UH - Other se rvices [206]
VB - Nava l administ ration [209)
VE - M ari nes [212]
VK - Navigat io n. Merchant marine (215)
ZA - Inf ormat ion Resources [213J

c.

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AC - Collect ions. Series , [3]
AI - Indexes [6J
AP - Period ica ls [9]
AZ - Hist o ry of scholarship[ 12 J
BD - Specu lative ph il osophV [15J
BJ - Eth ics [18]
BP - Islam . Ba haism . Theosophy [21)
BS - The Bible [24J
BX - Christian Denom inations (27)
CC - Archaeo logv [30]
0 - Numismatics [33 ]
CS - Genealogy [36)
DA - History-G. Britain- Ireland-Brit ish Isles (391
DO - History of Germ any [421
DG - Histo ry of Ita ly - M atta [45]
DK - Histor'( of Russiaj Soviet Union ... [48)
DQ - History of Switzerland [51)
DT - History of Africa (54]
E - History of America [57)
GA - Mat hemati(al geograp hv; Cartography[60J
GE - Environ m ent al Sciences [63]
GR - Fo lklore (56)
H - Social sciences (Gene ral) (69]
HC - Econom i( hist ory and conditions [72J
HF - Commerce [75]
HM - Sociology (General) [78 J
HV - Social patho log V; Soc'l & pub. w elfare .. (81)
JA - Polit ical science (General) [84J
JJ - Polit ical inst it & pub lic ad m in-N America[87j
IN - Politi(al instit. & public admin -Eu rope [90]
JV - Colonies & colon izat ion. Emigration .. . (93)
K - Law (96)
KE - La w (Canada ) [99]
KH - La w (So uth Ame ri ca ) [102J
KZ - La w of Nations. International law [105J
LB - Theory and pract ice of education [108J
LE - Education (Indiv . lnst it .-Am er. e)(cept USH111]
LH - College and schoo l magazines and papers [114]
M - Printed Music [ 117J
N - Visual arts ( 120)
NC - Dra w ing. Des ign. Il lustration [1231
NK - Decorative arts [ 126J
PA - Greek and Latin language & lit. [ 129J
PE - Engl ish language [1321
PH - Uralic languages; Basque language (135]
PL - Languages of Easte rn Asia j Africa; etc. [138]
PO - French lit.-It alian, Span ish, Portuguese [ 141)
PT - Ge rman Dutch Sca nd. etc lit since lS30[ 144J
OA - Mat hematics [ 147)
QD - Chem istrv (150)
OK - Botany [153]
QP - Physiology [156J
RA - Public aspects of medicine [159)
RD - Suriery [162 J
RG - Gyneco l03Y and obstet ri cs [ HiS)
RL - Dermatolog'( [168]
RT - Nursi ng [171]
RZ - Other systems of medicine [174J

• SO - f orestry [177)
SK - Hunting sports [ 180)
• TC - H..,·drau li( enginee ri ng - Ocean Eng' g [183]
TF - Railroad engi neerin g and ope rat ion (186)
TJ - M e(hani(al engineer ing & machinery [189J
TN - M i nini eniineering. Metallurgy [192]
TS - Manufact ures (195)
U - Military Science (Genera l) [198]
UC - Maintenance and transportation [201J
UF - Artillery [204]
V - Naval science [Genera l) [207)
VC - Nava l m aintenance [210)
VF - Naval o rdnance [213]
VM - Naval arch itecture Sh ipbu ilding etc. [216)

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AE - Encycl opedias [4J
AM - Museums. Collectors [7)
AS - Acade mies ...(10]
B - Philosophy; Psycholog'{ ; Rel igion [13J
BF - Psychology (16)
BL - Religions. Mytho logy .. ,[19 ]
BO - Buddh ism [22 J
BT - Doct r ina l Theology (25 J
C - Au)(iliary Science of History [28]
CD - Diplomat ics. Arch ives. Sea ls [31J
CN - Inscriptions. Epigraph'( [ 34)
CT - Biography (37)
DB - History of Austria -Liechtenstein ,.. (40)
DE - History of the Greco-Roma n World (43)
DH - Hist o ry of Low Countries-Benelux C'5 [46J
DL - History of Northern Europe j Scandavia [49]
DR - History of th e Balka n Penimu la [52J
DU - History of Oceania (South Seas) (55]
F - Loca l History-Unit ed States & Brit ish ...[58)
GB - Physica l geographv [61J
GF - Hu man ecology: Anthropogeography [ 64)
GT - Manners and customs (General ) [67]
HA - Stat ist ics [70]
HD - Industries; Land use; La bor [73)
HG - Finance [7 6]
HN - Soc ial history & cond it ions ... [79]
H)( - Socia lism. Commun ism. Ana rchism [82)
JC - Political theory-State Theories of state[85 J
JK - Po lit ica l instit. & public admin -us [88]
JO - Political inst it. & pub lic admin -Asia; Africa etc. [91]
JX - Internatio nal law (obsolete) [94]
KB - Religious law [97)
KF - Law (Un it ed States ) [100J
KJ - Law (Europe) [103J
L - Educat ion [ 106)
LC - Special aspects of ed ucat ion [1091
LF - Ed ucation [Indiv . Inst it . - Europe } [ 112)
U - Student frater nities; Un ited States [115)
ML - Lite rature 0 11 mus ic [118)
NA - Architecture [121]
NO - Pai nt ing [ 124)
NX - Arts in general [127J
PB - Modern languages; Celtic languages [130]
PF - West Germani( lan;:uaies [133)
PJ - Ori ental p hilology and literature ( 136]
PM - Hyperborea n; Ind ian j & artific iall ang 's[139]
PR - English literature [142 J
PZ - Fiction and juveni le belles lettres (145]
OB - Astronomy [148]
QE - Geology [1 51)
OL - Zoology [ 154J
OR - M icro biology [157]
RB - Patholog'{ [160]
RE - Ophthalmoloi'( [163)
RJ - Pediatrics [166J
RM - Therapeutics. Pha rmacolog\' [169]
RV - Botanic; Tho msonian; ecl ectic med [l 72J
S - Agriculture (Gene ral) (175J
SF - An imal cult ure [178]
T - Technolog'{ (Gene ral) [181]
TO - Environmental tech. S;,nitary eng'g [184)
TG - Bridge e ngineer ing [187 ]
TK - Electrica l engineering. Electroni(s .. [190]
TP - Chemi(a l te( hno logy [ 193)
IT - Handicraft s. Arts and crafts [ 196)
UA - Arm ies : Org'nj distrib; milita ry ... [ 199)
UO - Infantry [202)
UG - M i litary engi neering (205]
VA - Navies : Ori 'n; dist ri bution ; etc , [208)
VO - Nava l seaman (211)
VG - M inor services of navies [214 ]
Z - Books (Gen 'I). Writing Paleogra phy etc.[217)

A-675
Case 1:11-cv-06351-HB Document 110

60.

Filed 06/29/12 Page 15 of 29

Further, the HDL contains works in a multitude of languages as illustrated in the

following diagram:
HathiTrust Languages

. Engll!ih [3]

. Germ,m[4]
_ French [5]
_ Spanish [6]

. Chlnese [7]
. Ru!i5ian [8]
_ Japanese [9]

. Italian [10]
_ Arabic [11]
_ Latin lUI

. Und etermined [131
. Pallsn [14[
. Portu8U~e [15]
. Unknown [:t6]
_ Outdl [In

_ Hebrew [18]

. Hindi [19]

_ Indonesian [201
. I(ore..n [21]

. swedlsh [22]
_ Thai [23[

. Urdu [141
. Turkish [25]
. Danl!iih [26]
_ Czech [27]

. croatian [lB!
_ Persian [29]
_ Tamil [30]
. Bi!!nsal1 [31]
. Hung;ri<ln [32]
. Music [33[
_ No!'We8ian [341
_ Sanskrit [35]

. Greek [36[
_ Vietnamese [37]
_ Ukrai nian [381
. Bulgarfarl [39]

_ Serbian [401
. Anc:ient-Greei< [41]
_ Armenian [42]

_ Romiinian [43]
• Marath i [44]

. Panjabi [45]

61.

Works within the HDL were also published across a broad range of dates,

commencing prior to the 15th century and running to the present as illustrated in the following
diagram:4

4

Interactive versions of each of the pie diagrams included in this declaration may be accessed through the
HathiTrust website located at www.hathitrust.org.

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HathiTrust Dates

. 2000-1009 [3]
. l9!JO.-1999 [4-]
. l9BO-'19B9 [5]

. 1970-1979 [6]
• 1960-1969 [7]
• 1950-1959 [8]

. 1940-1949 [9]
. 1930-1939 [10]
• 1920-1929 [11]

_ 1910-1919 [12]
_ 1900-1909 [13]

_ 1890-1899 [14-]
_ 1880-1889 [15]
• 1870-1879 [16]

_ 1860-1869 [17]

_ 1850-1859 [18]

. 1840-1849 [19]
. 1IBO-183'9 [10]

• 18ZO-1829 [21]

• 1810-1819 [22]
• 1000-1809 [23]
. 1700-1799 [14-]
• 16110-1699 [25]
• 15OO-15Qg [2Ei]

Jl're.-1500 [27]

62.

Approximately 30% of the corpus consists of material that is clearly within the

public domain. It bears emphasis that although we treat the balance of the works as if they are
in-copyright, this does not in fact mean that 70% of the corpus is in-copyright.
63.

It is notoriously difficult to determine whether a particular work remains in-

copyright. For example, it is my understanding that works published between 1923 and 1963
entered the public domain unless they were renewed. Other copyright determinations may rely
on the death date of authors about whom very little is known or documented.
64.

While the vast majority of works from this period were not renewed, determining

the renewal status of works from this period is an extraordinarily difficult task. The Copyright
Office’s records prior to January 1, 1978 are not completely or reliably digitized at the present
time. Therefore, the process of confirming whether a work was renewed involves the laborious

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task of checking the physical records at the Copyright Office in Washington, D.C. Of course,
even if a search confirmed that the work had been renewed, there is no guarantee that a
subsequent search would identify the current rights holder.
65.

Accordingly, we err on the side of classifying works as in-copyright even though

we are confident that many of those works are, in fact, in the public domain.
66.

While precise calculation is difficult given the size of the HDL corpus, it is my

understanding that the vast majority of works in the corpus are now out of print (and, in fact, for
older works within the collection, have been out of print for decades).
67.

Based upon an analysis of the call numbers within the archive, less than 9% of the

HDL corpus consists of prose fiction, poetry and drama. The remainder, approximately 90% of
the corpus, is likely to consist of factual works such as books and journals in many disciplines of
the arts, humanities, social sciences and sciences.
G.

The Limited Uses of the Works within the HDL
68.

We permit extremely limited use of the works in the HDL presumed to be in-

copyright. Specifically, patrons can only make the following uses of such works:
•

Full-Text Search: Through the Internet, the University’s students, faculty, and
staff, as well as the general public, may search for a particular term across all
works within the HDL. For those works that are not in the public domain or for
which the copyright holder has not expressly authorized use, the search results
indicate only the frequency and page numbers for which a particular term is
found within a particular book or periodical. (Unlike Google’s service, the results
do not show portions of text in “snippet” format.) At no time does the user have
digital access to any of the actual written content within such works (unless
he/she is afforded access as a certified print disabled user). In other words, none
of the work’s text is ever displayed on the computer screen or available for print,
not even one word.

•

Preservation: As noted above, before Google assisted with our digital
conversion, we were losing works every year as a result of the natural
disintegration of books (particularly the large segment of the collection written
on paper with high acid content). There was also the ever-present risk of other
more sudden forms of loss such as those occasioned by fire, flood, or theft. The

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HDL now constitutes an extremely valuable protection against the prospect of
such loss and permits us to make copies pursuant to Section 108 of the Copyright
Act in the event that a work is lost damaged, deteriorating, lost, or stolen and a
replacement copy cannot be obtained by the University Library at a fair price.
•

Access for people with certified print disabilities: For decades, the University
Library has converted works in its collection to alternative formats for the blind
and other persons who have disabilities that prevent them from accessing printed
materials. Because digitization has significantly improved the quality of access
for print-disabled readers, the HDL was designed specifically to enable libraries
to make their collections accessible to such readers in digital format.

69.

It is important to emphasize that given the very limited uses made of in-copyright

works in the HDL, our digitization of such materials does not diminish our purchases of incopyright works.
70.

Indeed, in my opinion, if the HDL has any impact whatsoever on the University

Library’s acquisition of in-copyright material, it has a positive effect on our purchasing.
71.

Experience and basic common sense tells me that scholars, students, and other

patrons are more likely to discover and use works that they can locate through digital search.
Such increased demand for works invariably translates into increased purchases. This is
because, as noted above (see ¶ 13), if a work is frequently requested by patrons, and we find
ourselves maintaining a waiting list for such works, we try to acquire more copies of that
particular work to meet patron demand.
72.

For instance, the University Library includes in its print collection a work called

Television Program Master Index. This work contains an index of critical and historical
information regarding over 1,000 television shows contained in hundreds of books.
73.

We digitized Television Program Master Index and, since it is presumed to be in-

copyright, we only permit HDL users to search the text of the work (i.e., the text is not available
except to users who have print disabilities). The HDL search functionality does quickly allow a

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user to determine whether a particular show is covered in the work and, if it is, users typically
follow up by borrowing a print copy of the work from the library.
74.

After we made the Television Program Master Index searchable through the

HDL, the usage of the University Library’s copy of the work increased dramatically and we
decided to acquire two additional copies of the work to satisfy the increasing demand.
H.

The Benefits of the HDL’s Full-text Search Functionality
75.

Full-text searching easily constitutes the most significant advance in library

search technology since the 1960’s.
76.

Rather than combing through electronic cataloging records and attempting to

discern which works in our collection may be of interest, scholars can access the HDL website
and search the actual text of over 10 million books and journals. They can then immediately
access those works that are in the public domain or for which HathiTrust has the rights to display
the work in full text mode.
77.

The Libraries, through the HDL, have made it possible for university students,

faculty, and staff, as well as the general public, to search the combined digital collections
contributed by the HathiTrust members. The search results display bibliographic information—
including title, author, publisher, and publication date—for books containing the search term, as
well as the frequency and page numbers for which the term is found, giving some clues as to
how useful the book might be.
78.

For example, as of June 8, 2012, a search for “anaphylactic shock” identifies

38,239 works. If the user selects the work titled Allergy and Tissue Metabolism by W.G. Smith
– in which the term “anaphylactic shock” appears – the following bibliographic information is
displayed:

19
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HAT HI Digital Library

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79.

Only the bibliographic information is displayed for this work. As reflected in the

above screen shot, the “viewability” of this work is search only; none of the text of the work is
available for display or download. (Only certified users who have print disabilities are able to
access the text through a secure network.)
80.

If the user searches for the same term in this book, a screen showing the page

numbers for each use of the term is displayed as follows:

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81.

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Based upon the search results, the user may decide to purchase the book or check

out a physical copy from one of the member libraries. The text of books is not made digitally
available unless it is determined that they are in the public domain or unless the rights holder has
given us permission to provide access to the work.5
82.

Without the ability to search the entire full text, the content within these

resources—as distinct from basic bibliographic information describing that text—is invisible, or
nearly so, to the majority of researchers.
83.

Moreover, full-text searching is incredibly helpful even with respect to resources

that could be identified as potentially relevant through a catalog search. For example, many
5

The exception to this is that Michigan students, faculty and staff certified through the Office of Services for
Students with Disabilities as having print disabilities are granted access to digitized files of presumed in-copyright
works.

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libraries, including the University Library, store a substantial portion of their collections in
offsite facilities, these materials are not immediately available to the scholar, and their retrieval
may require significant library staff time. If full-text searching is available, a researcher can use
it to determine whether a potentially relevant off-site work may be pertinent to her research.
84.

Indeed, the HDL empowers scholars to perform types of research on a scale that

simply could not be performed before the HathiTrust libraries digitized their collections. For
example, and as explained in more detail in the Declaration of Dr. Neil R. Smalheiser, a digital
research method commonly called “text mining” is already proving itself a vital tool for
scholarly research and could potentially have application to works within the HDL corpus.
85.

In short, having a digitized library of the magnitude represented by the HDL has

the potential to yield breakthrough scientific discoveries – potentially lifesaving discoveries –
that simply would not be possible if the service ceased to exist.
I.

HathiTrust’s Efforts to Preserve the Libraries’ Collections and the Cultural Record
86.

One of the primary goals of HathiTrust is the preservation of the published record

of human knowledge through the creation of reliable and accessible electronic representations of
the works within the corpus.
87.

The use of redundant storage in geographically remote locations ensures long-

term preservation of digital data by protecting against the total loss that would otherwise occur
from the failure or destruction of the primary storage.
88.

The HDL corpus is stored at Michigan with a “live” mirror site located at Indiana

University’s Indianapolis campus.
89.

The existence of the mirror site allows for balancing the load of user web traffic

to avoid overburdening a single site, and each site acts as a back-up of the HDL collection in the

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event that one site were to cease operation (for example, due to failure caused by a disaster, or
even as a result of routine maintenance).
90.

To allow for recovery of the HDL collection in the event of a disaster, automatic

tape backups are created. Two encrypted backup tapes are created and are stored separately from
each other, as well as from the two “live” storage instances, and the tape backups are not
connected to the Internet. In the event of a disaster causing large-scale data loss to the primary
HDL corpus at Michigan and the mirror site at Indiana University’s Indianapolis campus, the
backup tapes could be used to restore the lost data.
91.

The HDL has been certified as a trustworthy digital repository by the Center for

Research Libraries (“CRL”) through their rigorous Trustworthy Repositories Audit and
Certification (“TRAC”) assessment program, which included an in-depth preservation audit of
the HDL. Attached as Exhibit C is a true and correct copy of this certification report.
92.

This audit began in November 2009 and was completed in December 2010. Only

a small number of digital repositories have been granted this certification.
93.

In addition to protecting the digital data in the HDL from loss through disaster or

mechanical failure, Michigan employs many levels of security to control access to the content in
the HDL. The security employed by Michigan with respect to the digital library meets, and in
many ways exceeds, the specifications developed by the parties in the Google Books proposed
settlement.
94.

First, Michigan maintains, and requires the University of Indiana to maintain,

rigorous physical security controls. HDL servers, storage, and networking equipment at
Michigan and Indiana University are mounted in locked racks, and only six individuals at
Michigan and three at Indiana University have keys. The data centers housing HDL servers,

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storage, and networking equipment at each site location are monitored by video surveillance, and
entry requires use of both a keycard and a biometric sensor.
95.

Second, network access to the HDL corpus is highly restricted, even for the staff

of the data centers housing HDL equipment at Michigan and Indiana University. For example,
two levels of network firewalls are in place at each site, and Indiana University data center staff
do not have network access to the HDL corpus, only access to the physical equipment. For the
backup tapes, network access is limited to the administrators of the backup system, and these
individuals are not provided the encryption key that would be required to access the encrypted
files on the backup tapes.
96.

Web access to the HDL corpus is also highly restricted. Access by users of the

HDL service is governed by primarily by the HDL rights database, which classifies each work by
presumed copyright status, and also by a user’s authentication to the system (e.g., as an
individual certified to have a print disability by Michigan’s Office of Services for Students with
Disabilities).
97.

Michigan staff who have been granted web access to in-copyright works in the

HDL in order to perform a job function for HathiTrust (e.g., because they are involved incopyright status determinations or image quality research) must use a specific, approved IP
address and successfully authenticate to the system using their username and password. In
addition, this web access is encrypted using Secure Socket Layer, a cryptographic protocol
providing communication security over the Internet.
98.

Even where we do permit a work to be read online, such as a work in the public

domain, we make efforts to ensure that inappropriate levels of access do not take place. For
example, a mass download prevention system called “choke” is used to measure the rate of

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activity (such as the rate a user is reading pages) by each individual user. If a user’s rate of
activity exceeds certain thresholds, the system assumes that the user is mechanized (e.g., a web
robot) and blocks that user’s access for a set period of time.
99.

A proxy detection system is also used. The proxy detection system consults real-

time blacklist services to identify users that appear to be employing known proxy or
anonymization servers to falsify a physical presence in the United States (in an attempt to
subvert HDL use limitations that restrict access to some materials to users in the United States).
If the proxy detection system identifies such a user, that user’s access is blocked. Web access to
the HDL is also logged by IP address and, when available, by username, the HTTP request
string, and whether or not the volume requested is identified as presumed in-copyright in the
HDL rights database. Such logs are regularly reviewed.
J.

Access for Individuals with Print Disabilities
100.

One of the primary goals of HathiTrust has always been to enable people who

have print disabilities to access the wealth of information within library collections. We
constructed the archive with the objective of making the world’s first accessible research library.
Access for people who have print disabilities is a part of our agreements with HathiTrust
members and it is one of the core services around which the archive is built, along with
preservation and search.
101.

For centuries, libraries have been inaccessible to people who have a broad range

of disabilities because library collections have not been available in accessible formats. As a
result, individuals with print disabilities simply do not have equal access to library collections
and are denied the full promise offered by libraries. This is particularly true in the academy,
where access to the written record is at the heart of most scholarly pursuits.

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For instance, given the number of works a student must review to write a typical

term paper, she may have to wait weeks or even months to get access to converted works—in
Braille or audio recording format—that she has not yet even been able to determine whether or
not she will use. Even digitizing the works on a case-by-case basis can take weeks, which makes
pursuing an education that much more difficult for a student who has a print disability.
103.

Accessibility has been a hallmark of our digitization efforts from the earliest days

and, when we discussed digitizing the library in connection with Google, it was one of our
primary objectives to make our library collections immediately accessible to people who have
print disabilities.
104.

In fact, in 2005, when the National Federation of the Blind first contacted us

about Google Books, we invited them to campus to demonstrate the accessible library we had
already developed.
105.

Our accessible library works like this:

•

A person who has a print disability seeks certification from a qualified expert.

•

The expert informs the library when a particular patron has a print disability for
which digital access is a reasonable accommodation.

•

We explain the digital library to the patron, we describe appropriate uses of the
service (including warnings about copyright infringement), and we enable the
patron to get secure access to the accessible library.

•

If we have a digital copy of a work, the authorized patron with a print disability
will have immediate access to that work in a format that can be made accessible
through a variety of adaptive technologies. For example, the disabled user can
enable software that translates the text into spoken words.

106.

For our patrons who have print disabilities, this service makes it possible for these

individuals to achieve their full academic and scholarly potential.

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The Orphan Works Project
107.

As noted above, we believe it is clear that scholars, students, and other patrons are

more likely to discover and use works that they can access in a digital format.
108.

Therefore, we strive to find ways to provide lawful access to digital works we

have digitized and we spend millions of dollars each year to license access to digital content for
our campus. Unfortunately, with orphan works, because a rights holder cannot be identified,
there is no way to license digital access.
109.

With this in mind, we developed a project that we called the “Orphan Works

Project” (or “OWP” for short). The goal of the OWP was to identify orphan works and then to
enable limited uses of those works to students, scholars, and walk-in patrons.
110.

The OWP, as initially contemplated, had two steps: (i) first, we identify potential

orphan works through a diligent, reasonable process that eliminates works that are claimed by a
putative rights holder or that are otherwise found not to be orphans; and (ii) based on the results
of the first step, we planned to enable limited uses of orphan works by Michigan students,
scholars, and walk-in patrons.
111.

As contemplated, the OWP would have allowed users access to orphan works for

the purpose of online review, with the number of users permitted to view a given work limited at
any one time to the number of copies held by the library. Readers would have been reminded,
through watermarking and other explicit notices, that the books are subject to copyright.
112.

After completing its initial process to identify potential orphan works, Michigan

posted a list of potential orphan works on the Michigan library website on or about July 15, 2011
and provided a link to the list on the HathiTrust website. The public posting was a conscious

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part of the identification process. With more eyes on possible orphan works, it was our intent to
increase the accuracy of the identification process.
113.

The public scrutiny component of the OWP worked as intended in instances when

works identified as potential orphan works were claimed by the putative rights holder or the
rights holder was identified by a third party. Had the project moved forward, these works would
not have been treated as orphan works.
114.

In evaluating the methods used to determine potential orphan works, we

concluded that there were flaws in our pilot process and that we needed to remedy those flaws
before moving ahead with the OWP. We therefore suspended the process and never proceeded
to the second step of the project (i.e., we never proceeded to enable limited uses of putative
orphan works).
115.

Michigan, which is the only member of HathiTrust that has actively engaged in

the work of the OWP, is continuing to study ways to improve the candidate identification
process. In fact, we reached out to plaintiff The Authors Guild and other associations (including
the Association of American Publishers) to invite their input on ways to improve the candidate
identification process. After initially expressing interest in speaking with us and participating in
this process, the Authors Guild thereafter abruptly filed this lawsuit.
116.

Not a single patron has been given access to a work through the OWP and at

present, we do not know whether or how the OWP will continue.
117.

In the event that Michigan decided to move forward with the OWP and provide

access of works to users through the project, it would seek to comply with the requirements of
section 108(e) of the Copyright Act.

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While I am not a lawyer, it is Illy understanding that section 108(e) of the

Copyright Act authorizes distribution of cop)'rightcd works provided ccrtain requirements are
satisfied. including requirements that: (i) the library first determine, on the basis of a reasonable
investigation, thai a copy of the copyrighted wurk cannot be obtained at a rair price; (ii) the copy
becomes the property of the user; (iii). the library or archives has had no notice that the copy
would be used ror any purpose other than pri vate study, scholarsh ip, or research; and (iv) the
library or archives displays prumim:lllly. at the place where orders are accepted. and includes on
its order

tonn. a warning of copyright in accordance with requirements thai the Register of

Copyrights shall prescribe by regulation.
I declare under penalty of perjury under the laws orthe United Stllles that the foregoing is
true and correcl.

Date: June 28, 20 12

29