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Universities' Mass Book Digitization Project is Copyright Fair Use: SDNY
Practical Law Legal Update 0-521-8273 (Approx. 5 pages)
Universities' Mass Book Digitization Project is Copyright Fair Use: SDNY
by PLC Intellectual Property & Technology
| Published on 15 Oct 2012 • USA (National/Federal) |
In Authors Guild, Inc. v. HathiTrust, the US District Court for the Southern District of New York held that the defendant universities' mass digitization of the plaintiff authors' copyrighted works for the HathiTrust Digital Library is a transformative fair use under Section 107 of the Copyright Act.
Key Litigated Issues
The key issue before the US District Court for the Southern District of New York in Authors Guild, Inc. v. HathiTrust was whether HathiTrust and its member universities' mass digitization of copyrighted works is protected by the copyright fair use doctrine.
Background
The defendants in this case include five universities and their officials, and HathiTrust, a University of Michigan service in which the universities participate. The plaintiffs are individual authors and associational organizations, including The Authors Guild. The defendants have agreements with Google, Inc., allowing Google to create digital copies of the works in their university libraries as part of Google's Mass Digitization Project. Google then provides them with a digital copy of each scanned work. The universities contribute these digital copies to the HathiTrust, which is creating a shared digital repository named the HathiTrust Digital Library (HDL).
The HDL allows three different uses of works having known authors:
- Full-text searches, allowing users to search for a particular term across all of the works in the HDL.
- Digital preservation of the works.
- Full access only for people with certified print disabilities, for example, persons who are visually impaired.
For works that the copyright owner has not authorized use or that are not in the public domain, the HDL's search results only show:
- The page numbers that contain a particular search term.
- The frequency of the term's appearance on each page.
Google retains a copy of the digital book and makes snippets available through its online Google Books service. Google's use of the copyrighted works is the subject of a separate lawsuit that has been stayed pending Google's appeal of the SDNY's class certification decision (see Legal Update, SDNY Certifies Class and Denies Motion to Dismiss in Google Books Lawsuit).
Four of the universities also participated in a separate project to make full copies of orphan works available to students, faculty and library patrons. However, the project was suspended after criticism that too many works were being erroneously included.
The plaintiffs filed suit claiming that the universities' mass digitization of copyrighted materials without authorization infringed their copyrights. The plaintiffs also sought a declaration that the universities' orphan works project will infringe their copyrights.
Outcome
In its October 10, 2012 opinion, the SDNY granted the universities' motion for summary judgment of non-infringement, finding that their mass digitization of the works was transformative and protected by fair use (see Fair Use Analysis). The court held University of Michigan's provision of full copies of the digitized works to print-disabled students also was protected under the Chafee Amendment to the Copyright Act (see Copyright and the Americans with Disabilities Act).
In addition to its non-infringement ruling, the court made two key procedural rulings:
- The Authors Guild and other associational plaintiffs had Article III constitutional and prudential standing to assert the rights of its members but did not have statutory standing to do so. The court concluded that the Copyright Act's standing clause (17 U.S.C. § 501(b)) explicitly limits enforcement of copyright claims to the legal or beneficial owner of an exclusive right.
- The plaintiffs’ claim concerning the HathiTrust's orphan works project was not ripe for adjudication because the project had been suspended.
Fair Use Analysis
The court discussed all four fair use factors, finding on the balance, copyright's goal of promoting the progress of science would be better served by allowing the use.
Purpose and Character of Use
The court found this factor weighed in favor of fair use because the purpose and character of the universities' use was:
- For non-commercial scholarship and research.
- Transformative because the copies served an entirely different purpose than the original works by:
- providing superior search capabilities rather than access to copyrighted material; and
- facilitating access to print-disabled persons.
The court rejected plaintiffs' argument that the universities' use is not transformative because it does not add anything new to the original work. The court cited Ninth Circuit's decision in Perfect 10 v. Amazon.com, Inc. holding that even an exact copy may be transformative if it serves a different function than the original.
The court further concluded that use of the HDL for preservation of the works was not transformative but that its non-commercial nature supported fair use.
Nature of the Copyrighted Works
The court found that the nature of the copyrighted works (largely fiction) was not dispositive in light of the universities' transformative use.
Amount of the Work Copied
The court determined that entire copies of the works were necessary to both:
- Facilitate searches.
- Provide full-text access for print-disabled persons.
Impact on the Market for or Value of the Works
The court also found that the fourth factor weighed in favor of fair use. The court noted that where a use is non-commercial, the plaintiff must show by a preponderance of the evidence that some meaningful likelihood of future harm exists.
The court rejected the plaintiffs' various market harm arguments, specifically that:
- Each digital copy that the universities created, rather than purchased, represented a lost sale. The court noted that the purchase of a digital copy would not have allowed either the full-text searches or access for print-disable individuals, the two central transformative uses of the HDL.
- The project exposed plaintiffs' property to immense security risks through widespread internet piracy. The court found that the plaintiffs failed to provide support for this argument.
- It would undermine existing and emerging licensing activities such as a collective management system. The court noted that the relevant question is whether it would impact traditional, reasonable or likely to be developed markets. Here, the court agreed with the universities that it would be prohibitively expensive to develop a market to license the use of works for search purposes, access for print-disabled individuals or preservation purposes.
Copyright and the Americans with Disabilities Act
The court's decision is also a victory for the print-disabled. Although the court held that digitizing and providing full access squarely fell within the copyright fair use doctrine, the opinion separately discusses the Chafee Amendment to the Copyright Act allowing "authorized entities" to reproduce or distribute copies of a previously published, non-dramatic literary work in specialized formats exclusively for use by the blind or other persons with disabilities (17 U.S.C. § 121).
The Americans with Disabilities Act 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 the Chafee Amendment. The court concluded that the University of Michigan (the only university to make its works available to print-disabled persons to date) has a primary mission to provide access for print-disabled individuals and is therefore an authorized entity. The court held that provision of access to previously published non-dramatic literary works within the HDL fits squarely within the Chafee Amendment.
Practical Implications
Universities have scored several recent copyright fair use victories. Along with this decision, the US District Court for the Northern District of Georgia found Georgia State University's inclusion of short copyrighted excerpts in its electronic course reading system to be largely within the bounds of fair use (see Legal Update, District Court Rules on University's Use of Copyrighted Material in E-Reserve System).
These decisions suggest that universities have fairly robust fair use protections for non-commercial, academic uses. While fair use in the Georgia State University case revolved around the amount of copyrighted work made available by the university to users of its e-reserve system, this decision is notable for allowing the universities to copy entire works on a mass scale to provide the transformative uses of enhanced search capability and access of the complete works by the print disabled.
In this decision, Judge Baer also carefully distinguished Google’s role in the Mass Digitization Project, noting that Google's use of the copyrighted works in its Google Books service was not before the court. The suit against Google brought by the Authors Guild and individual authors concerning Google Books continues in front of Judge Chin in the SDNY, although it has been stayed pending Google's appeal of Judge Chin's class certification order to the Second Circuit. Google and the Association for American Publishers recently announced the settlement of the publishers' claims against Google.
For general information on copyright fair use, see Practice Note, Copyright Infringement Claims, Defenses and Remedies: Fair Use.