Author: K. Matthew Dames
In September 2011, the Authors Guild, various international authors’ rights organizations and one dozen individual authors sued HathiTrust, Cornell, and the presidents of the universities of Michigan, California, Wisconsin and Indiana, claiming that HathiTrust’s online storage, searchability and public availability of a digital corpus developed as part of the Google Books scanning project constituted copyright infringement. More than three-quarters of the books that Google scanned as part of the Books project remain subject to copyright protection.
In June 2011, Michigan announced it would share with the public “orphan works” — works to presumed to be subject to copyright protection, but for whom a copyright owner cannot be found.
On October 10, 2012, Judge Harold Baer issued a 23-page decision that held, among other things, that HathiTrust’s activities are consistent with the fair use provisions of the Copyright Act of 1976.
The remainder of this post summarizes the key holdings from the decision.
Court Refuses to Rule on Legality of Michigan’s Orphan Works Project
The plaintiffs sought a ruling and an injunction from the court that the distribution and display of copyrighted works through the HathiTrust Orphan Works Project would constitute copyright infringement (“Absent an injunction, Defendants will proceed with the OWP and infringe the copyrights of Plaintiffs, the Associational Plaintiffs’ members and other unsuspecting authors and rights holders.”). Judge Baer declined to provide the plaintiffs such a ruling on the grounds that the legal issues are not ready for a court to decide them. “Were I to enjoin the OWP, I would do so in the absence of crucial information about what that program will look like should it come to pass and whom it will impact. ” Judge Baer wrote. “In addition, Plaintiffs suffer no hardship from litigation of this claim after Defendants release the details of their new OWP and a revised list of Orphan Work Candidates.”
“The ‘mere possibility’ that one of Plaintiffs’ works might be included on a future list of orphan works or made available is not enough,” concluded Judge Baer.
Court Rules Section 108 Limitations Do Not Preclude Fair Use Analysis
The plaintiffs argued that if the defendant universities claimed that HathiTrust’s activities constituted fair use, the universities could not also claim that, alternatively, the storage and availability of HathiTrust’s corpus alternative was allowed under Section 108, the limitation that allows libraries and archives reproduce protected works in certain contexts related to teaching, research and preservation.
Noting that the plaintiffs provided no case law for this argument and devoted but one paragraph to it, Judge Baer rejected this proposition. “The briefs submitted by Defendant Intervenors and the Library Amici, to whom I granted leave to file a memorandum as amici curiae, further convince me that fair use is available as a defense for the Defendants, and nothing Plaintiffs submitted convinces me that fair use is unavailable as a defense, or that the manner of reproduction is prohibited simply because it does not fall within Section 108,” wrote Judge Baer.
Court Rules HathiTrust’s Use of Publishers Works Constitutes a Fair Use
In order to prove copyright infringement, a plaintiff must prove that he (or it) (1) owns the copyright; and (2) the defendant has copied original elements of the work. If the plaintiff proves this, then the defendant bears the evidentiary burden of proving defenses or an applicable limitation. Fair use is one such defense to a plaintiff’s case of copyright infringement.
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
A court will weigh each of the four factors, which constitute the core of the fair use, to determine whether the defense applies. A defendant does NOT need to prevail on all four factors in order for the court to find a fair use defense.
The court analyzed each of the four factors, ruling as follows:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes …
The [Mass Digitization Project, or MDP] was undertaken with several goals in mind. The MDP allows scholars to identify relevant works far more efficiently. … In addition, the program helps Defendants preserve their collections in the face of normal deterioration during circulation, natural disasters, or other catastrophes that decimate library collections, as well as loss due to theft or misplacement. … The program provides print-disabled individuals with “access to the wealth of information within library collections.” … Where the purpose of the use is for scholarship and research—uses explicitly mentioned in the preamble to Section 107—the Second Circuit has concluded that the first factor “tilt[s] in the defendants’ favor.” …
Transformative uses are likely to satisfy the first factor. … A transformative use may be one that actually changes the original work. However, a transformative use can also be one that serves an entirely different purpose. … The use to which the works in the [HathiTrust Digitial Library, or HDL] are put is transformative because the copies serve an entirely different purpose than the original works: the purpose is superior search capabilities rather than actual access to copyrighted material. The search capabilities of the HDL have already given rise to new methods of academic inquiry such as text mining.
Plaintiffs’ argument that the use is not transformative merely because defendants have not added anything “new” misses the point. … Plaintiffs also argue that Defendants are not shielded from charges of copyright infringement by virtue of their status as educational non-profits. The cases they cite in support of this claim are cases where the use being made by the non-profit was not transformative, as it is here. … Likewise, Plaintiffs’ argument that Defendants had a primarily “commercial” purpose when they allowed Google to digitize their libraries is without merit. Although Plaintiffs quote A&M Records, Inc. v. Napster, Inc. … for the point that Defendants cannot make “unauthorized copies of copyrighted works . . . to save the expense of purchasing authorized copies,” this argument too is off the mark as to what Defendants use the copies for. While additional copies might have sufficed were Defendants’ goal solely preservation, the purchase of additional paper copies, or even electronic copies, would not have allowed Defendants to create a searchable inventory of their works or provide access to print-disabled individuals on an equal footing with sighted individuals. Defendants satisfy the first factor not merely because they are non-profit institutions, but because the use to which the copies have been put is transformative.
(2) the nature of the copyrighted work …
… Copying factual works is more likely fair use than copying creative works. … However, where a use is transformative, the nature of the copyrighted works is not likely to “separate the fair use sheep from the infringing goats.” … Here, Plaintiffs identify 116 works that they allege were unlawfully digitized by Defendants as part of the MDP. … Approximately 76 percent of the identified works are fiction. … In the HDL as a whole, approximately 9 percent consists of prose fiction, poetry, and drama. … Because the use is transformative, intended to facilitate key-word searches or access for print-disabled individuals, the second factor is not dispositive.
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole …
“[T]he extent of permissible copying varies with the purpose and character of the use.” [quoting a Supreme Court case]. The question is whether “no more was taken than necessary.” … Sometimes it is necessary to copy entire works. “Intermediate” copies may not be infringing when that copying is necessary for fair use. Here, entire copies were necessary to fulfill Defendants’ purposes of facilitation of searches and access for print-disabled individuals. … Plaintiffs argue that Defendants did not need to retain copies to facilitate searches; however, the maintenance of an electronic copy was necessary to provide access for print-disabled individuals.
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fourth factor examines “whether the secondary use usurps the market of the original work.” Courts consider “only those [markets] that the creators of original works would in general develop or license others to develop.” … Where a use is noncommercial, as it is here, the plaintiff must show “by a preponderance of the evidence that some meaningful likelihood of future harm exists”, …, a test Plaintiffs fail at least on this fact pattern.
Plaintiffs allege market harm on several distinct bases. First, they argue that “[e]ach digital copy of a book that Defendants created . . . rather than [purchased] through lawful channels, represents a lost sale.” … This argument ignores the fact that purchase of an additional copy would not have allowed either full-text searches or access for the print-disabled individuals, two transformative uses that are central to the MDP.
Plaintiffs’ second argument is that Defendants have “expose[d] Plaintiffs’ property to immense security risks that have the potential to cannibalize the book market through . . . widespread internet piracy.” … However, the expert economist that Plaintiffs rely on in support of this argument admitted that he was unfamiliar with the security procedures in place at the Universities. Edelman Dep. at 248:11–12 (“I don’t know about all of the security systems that [the Libraries] have.”). Defendants respond with a declaration from the individual in charge of security for the works in the HDL, who describes the security measures in place, …, and notes that the Libraries have been certified as a trustworthy depository by the Center for Research Libraries. … Plaintiffs’ unsupported argument fails to demonstrate a meaningful likelihood of future harm.
Finally, Plaintiffs argue that “Defendants activities will harm Plaintiffs by undermining existing and emerging licensing opportunities” such as a “collective management system [which would] permit certain of the activities of the Defendants in this case while providing compensation to copyright owners.” … Plaintiffs admit that they cannot identify “any specific, quantifiable past harm, or any documents relating to such past harm.” … Plaintiffs’ argument about a potential market is conjecture. … “Were a court automatically to conclude in every case that potential licensing revenues were impermissibly impaired simply because the secondary user did not pay a fee for the right to engage in the use, the fourth factor would always favor the copyright owner.” … Because I conclude that at least two of the uses are transformative —that is, the provision of search capabilities and access for print-disabled individuals — any harm arises, if at all, to a “transformative market.” … A use that “falls within a transformative market” does not cause the copyright holder to “suffer market harm due to the loss of license fees.”
Balancing the four factors
The totality of the fair-use factors suggest that copyright law’s “goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it.” … The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants’ fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement. In addition to the briefs submitted by the parties, the two memoranda filed by amici further confirm that the underlying rationale of copyright law is enhanced by the HDL.
Court Rules Americans With Disabilities Act Allows Libraries to Make Copies to Serve Persons With Disabilities
Section 121 of the Copyright Act allows an “authorized entity” to reproduce or distribute copies of certain protected works in specialized formats so those with vision or other impairments can use them. The Act defines an “authorized entity” as a nonprofit organization or governmental agency “that has a primary mission to provide specialized services relating to training, education, or adaptive reading or information access needs of blind or other persons with disabilities.”
There has been a longstanding question whether college and university libraries qualify as an “authorized entity” pursuant to the definition in Section 121. The Court resolved this question, answering affirmatively. “The ADA requires that libraries of educational institutions have a primary mission to reproduce and distribute their collections to print-disabled individuals, making each library a potential “authorized entity” under [Section 121],” wrote Judge Baer. “The provision of access to previously published non-dramatic literary works within the HDL fits squarely within [Section 121], although Defendants may certainly rely on fair use, as explained above, to justify copies made outside of these categories or in the event that they are not authorized entities.”