Authors Guild, Inc. v. HathiTrust, No. 12‐4547
(2d Cir. June 10, 2014)
Several research universities allowed Google to scan their
collections; then they created a repository for the digital copies, the HathiTrust
Digital Library (HDL), which currently has 80 member institutions and over ten
million works. HathiTrust allows the
public to search for particular terms.
Unless otherwise authorized, the search results show only page numbers
and the number of times the term appears, with no snippets, like so:
HathiTrust also allows member libraries to provide patrons
with certified print disabilities access to the full text of copyrighted works.
Print disabilities include blindness and
disabilities that prevent a person from physically holding a book or turning
pages. Print‐disabled users can obtain access using adaptive
technologies such as software that converts the text into spoken words, or that
magnifies the text. Michigan was the
only member that permitted such access; others intended to provide it in the
future, which, presumably, starts now.
Finally, by preserving the copyrighted books in digital
form, the HDL plans to permit members to create a replacement copy of the work,
if the member already owned an original copy, the member’s original copy is
lost, destroyed, or stolen, and a replacement copy is unobtainable at a “fair”
price elsewhere.
Michigan also developed an Orphan Works Project that would
attempt to identify out of print works, try to identify their copyright owners,
and, if none could be found, publish a list of orphan works candidates. If no owner still came forward, orphan works
would be made accessible in digital format to library patrons, with
simultaneous viewers limited to the number of hard copies owned by the library. Michigan became concerned that its screening
process wasn’t adequately distinguishing between orphans and non-orphans, and
the project was indefinitely suspended.
The district court found that the three HDL uses were fair,
and that the provision for print-disabled patrons was permitted by the Chafee
Amendment, which allows “authorized entities” to reproduce or distribute copies
of a previously published, nondramatic literary work in specialized formats
exclusively for use by the blind or other persons with disabilities. The
district court concluded libraries of educational institutions have “a primary
mission” to provide specialized services to print-disabled individuals, as
required for eligibility to take advantage of the Amendment. The Authors Guild, for reasons that
apparently seemed sufficient, appealed.
Initially, the court of appeals found that three authors’
associations (the Authors Guild, Australian Society of Authors Limited, and
Writers’ Union of Canada) lacked standing to bring claims on behalf of their
members. Four foreign associations,
however, asserted that foreign law conferred on them exclusive rights to
enforce their foreign members’ copyrights, and the libraries didn’t contest
that claim. (Though I’ve got to wonder
about that “exclusive.”) Thus, they had
standing.
Fair use: Plaintiffs argued that §107 couldn’t apply because
§108 governs reproduction by libraries.
But §108 says, “Nothing in this section in any way affects the right of
fair use as provided by section 107,” so that’s that.
The court went through a number of fair uses: book reviews
with quotes “to illustrate a point and substantiate criticisms”; biographers
quoting from unpublished works ditto; art “employ[ing]” photos “in a new work
that uses a fundamentally different artistic approach, aesthetic, and character
from the original”; low-resolution versions of images in search engines to
direct users to the source website; newspaper use of a modeling photo to “inform
and entertain” the readers for a news story; time-shifting of broadcast TV; and
reverse engineering of software.
However, “[a] fair use must not excessively damage the
market for the original by providing the public with a substitute for that
original work.” Thus, quoting
extensively from the heart of a forthcoming memoir “in a manner that usurps the
right of first publication and serves as a substitute for purchasing the memoir”
is not fair use.
Transformativeness is an important focus of the first
factor. “A use is transformative if it
does something more than repackage or republish the original copyrighted work.”
However, “a use does not become transformative by making an ‘invaluable
contribution to the progress of science and cultivation of the arts.’ Added
value or utility is not the test: a transformative work is one that serves a
new and different function from the original work and is not a substitute for
it.” Plus, the impact of the use on the
traditional market for the copyrighted work is the “single most important
element of fair use.” “To defeat a claim of fair use, the copyright holder must
point to market harm that results because the secondary use serves as a substitute
for the original work.”
Full-text search: the process of full-text search requires
digital copies, but doesn’t show them to users.
The creation of a full-text searchable database is “a quintessentially
transformative use.” The result of a
word search “is different in purpose, character, expression, meaning, and
message from the page (and the book) from which it is drawn.” There was “little or no resemblance between
the original text and the results” of a search.
Comment: Exactly because of that last point, I don’t see how
the search results could be deemed infringing at all even if there were no such
thing as a fair use doctrine. Where’s
the substantial similarity? Note also
that the court’s focus is now on the third-party use enabled by the database, although in this particular instance the
label “transformative” applies better to the
database itself, since at least with the latter the reproduction right has
been implicated. One way of parsing the
court’s analysis would be to call the database copies intermediate copies, as in
the reverse engineering cases; but the distinction is that the HDL does not
perform the full-text searches, whereas reverse engineers themselves ultimately
create a new work. However, perhaps
because the HDL’s copying is part of a system designed so that the only output can
be noninfringing, and because the HDL’s copying itself is useless unless and
until that output is created, the HDL gets to take advantage of its users’
entirely noninfringing uses.
Anyhow: there was no evidence that the plaintiffs write “with
the purpose of enabling text searches of their books.” Thus, full-text search doesn’t supersede the
objects or purposes of the original. It
wasn’t mere repackaging or republishing into a new mode of presentation. “[B]y enabling full‐text
search, the HDL adds to the original something new with a different purpose and
a different character.” Indeed, it adds “a
great deal more to the copyrighted works at issue than did the transformative
uses we approved in several other cases,” such as Cariou (same medium) or Bill
Graham Archives (photos simply shrunk in size). (Interesting collapse of artforms at work
here in the creation of a different kind of distinction—the court lumps
together photo and collage, print and photo—but that’s a tangent.) Perfect
10 (thumbnails) and iParadigms
(plagiarism detection) reinforced the court’s conclusion.
Dog that didn’t bark: no mention of commercialism. The libraries can do this with one hand tied
behind their backs!
Nature of the work: it doesn’t matter, because of
transformativeness.
Amount of the work: the issue is whether the copying was
excessive—whether no more was taken than necessary. Here, the entire work was necessary for the
purpose. Plaintiffs’ argument that the
copying was excessive because the HDL maintains copies at four different
locations was not well founded. They were “reasonably necessary” to facilitate
legitimate uses. The two mirror sites
allow for balancing user loads, and act as back-up in case of disaster. The two encrypted backup tapes were also
important to protect against large-scale data loss. (The HDL also creates digital copies of
images of each page; these aren’t retained for full-text search purposes and
the court dealt with them under the head of print-disability access.) There was no reason to think that these
copies were excessive or unreasonable in relation to the purpose.
Factor four: We’re looking for whether a use “usurps the
market of the original work.” Plaintiffs
could identify no harm to any “existing or potential traditional market.” The only type of harm factor four considers
is substitutionary harm. “[A]ny economic
‘harm’ caused by transformative uses does not count because such uses, by
definition, do not serve as substitutes for the original work.” Book reviews with quotations can deter
purchases, but that doesn’t matter because they’re transformative.
Comment: it’s not hard to see how book reviews might differ
from other uses that might qualify as the creation of derivative works, but a
rule of this sort is necessary to avoid circularity/the collapse of fair use
into a regime of universal licensing. If
the collapse of fair use is something you see as a harm, then willingness to
license, even innovative new or nontraditional forms of licensing, can’t be
weighed against the defendant whose use is otherwise nonsubstitutionary. Also, it might be worth considering that offering
a license to someone to make a new thing is not the same as having the ability
to make that new thing oneself—that could be one possible boundary of “traditional
markets.”
Plaintiffs offered a “lost sale” theory: a market for
licensing digital search might develop in the future, but the HDL impairs its
emergence. “This theory of market harm
does not work under Factor Four, because the full‐text search function does not
serve as a substitute for the books that are being searched.” It’s irrelevant that the libraries might be
willing to purchase licenses, if their use were otherwise deemed unfair. “Lost licensing revenue counts under Factor
Four only when the use serves as a substitute for the original and the full‐text‐search
use does not.”
The court also rejected plaintiffs’ other, less globally
significant theory of market harm: the risk of a security breach that might put
their works out in the open. But the
record showed extensive security measures to safeguard against that risk. This was too speculative to count as harm,
though the court cautioned that it wasn’t foreclosing “a future claim based on
circumstances not now predictable, and based on a different record.”
Access for print-disabled patrons: Expanded access wasn’t
transformative, since the authors write books to be read (or listened to), and
the HDL simply enabled a larger audience to read the works, consistent with the
author’s original purpose.
Weirdness alert: The HDL’s reformatting “appears, at first
glance, to be creating derivative works over which the author ordinarily
maintains control.” Sure, this adaptation
into a different medium is the only way the print-disabled audience can obtain
access, but that’s also true for non-English speakers and books written in
English.
Comment: Noooooo!
Formatting isn’t a derivative work because it doesn’t add new
creativity. Translation, as into ASL, would create a derivative work. But unless I completely misapprehend the
techniques used for print-disabled audiences, changing text into Braille,
making its size larger, changing its color, etc. no more create a derivative
work than the change of a print book into an ebook creates a derivative work,
even though the ebook is now made of ones and zeroes. Nor, I think, would using a substitution
cipher on a book create a derivative work.
Unlike the British, we don’t have a quasi-copyright right protecting
typographical arrangements. Can we all
agree to pretend that the court invoked the reproduction right instead? Thanks.
Anyhow, transformative use isn’t absolutely necessary for
fair use. Providing access to the
print-disabled is itself a valid purpose under factor one. The Supreme Court said so in Sony: “Making a copy of a copyrighted
work for the convenience of a blind person is expressly identified by the House
Committee Report as an example of fair use, with no suggestion that anything
more than a purpose to entertain or to inform need motivate the copying.” The 1976 Act legislative history on which the
Court relied expressly stated that making copies accessible “for the use of
blind persons” posed a “special instance illustrating the application of the
fair use doctrine . . . .” That history
noted that publishers don’t usually make accessible formats commercially
available, and said that an individual who made a single copy, for free, for a
blind person would be a fair use. Since
then, the ADA reaffirmed Congress’s commitment to “ameliorating the hardships
faced by the blind and the print disabled,” as did the Chafee Amendment.
Factor two weighed against fair use, but didn’t matter. Nor was retaining entire digital image files
excessive. While text files allowed text
searching and text-to-speech, “the image files will provide an additional and
often more useful method by which many disabled patrons, especially students
and scholars, can obtain access to these works. These image files contain
information, such as pictures, charts, diagrams, and the layout of the text on
the printed page that cannot be converted to text or speech. None of this is
captured by the HDL’s text‐only copies.” The court noted that many legally blind
patrons could view these images with sufficient magnification or increased
color contrast, and other patrons who couldn’t turn pages or hold books could
use assistive devices to view all the content in image files. For them, access to the image files was
necessary to perceive the books fully, making the retention of copies
reasonable.
Factor four: it was undisputed that the present‐day
market for books accessible to the print-disabled “is so insignificant that ‘it is common practice in
the publishing industry for authors to forgo royalties that are generated through
the sale of books manufactured in specialized formats for the blind,’” according
to the appellants themselves. Comment:
again, the mere desire to control something doesn’t confer a right to do
so. The number of accessible books
currently available is a few hundred thousand, a minute percentage of the world’s
books, versus the HDL’s over ten million.
Congress knew that publishers didn’t make their books available in 1976;
this is still true.
Preservation copies: the HDL’s digital preservation copies
ensure that books will still exist when their copyright terms lapse. As for the HDL’s propsed use to make
replacement copies for a member library if (1) the member already owned an
original copy, (2) the member’s original copy is lost, destroyed, or stolen,
and (3) a replacement copy is unobtainable at a fair price, this wasn’t
obviously ripe for resolution. The
record didn’t show that the plaintiffs owned copyrights in any works that would
be effectively irreplaceable at a fair price and thus would be potentially
subject to being copied in case of loss or destruction of an original. Since
the plaintiffs couldn’t assert the rights of others, there was no live
controversy. The district court’s
finding of fair use on this point was vacated and remanded for resolution of
the standing issue.
Likewise, the orphan works-related claims weren’t
ripe. There was no indication about
whether the program will be revived or what it would look like. The plaintiffs argued that the orphan works program’s
legality wouldn’t depend on the specific procedures the libraries ultimately
used to identify orphans, because any program resulting in the publication of
complete copyrighted works would infringe.
The court wasn’t persuaded. Even
assuming for the sake of argument that the plaintiffs were right about
infringement, it didn’t follow that any of their
copyrights would be infringed. Thus, there was no “certainly impending” harm,
nor any hardship if decision were withheld. If Michigan or HathiTrust
reinstitutes the program in a manner that would infringe the copyrights of any
proper plaintiffs, they could return to court. The mere possibility of future
injury isn’t hardship.
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