Fair use? Experts comment on universities’ digital books project ruling

November 5, 2012

ebookA coalition of universities may create a digitalized library of copyrighted works because the project preserves the works while adding enhanced search options and giving access to the visually impaired, a New York federal judge has ruled.

We asked practicing attorney experts what they think is significant about the judge’s analysis and whether the decision was expected. We also asked about the impact of this decision on future cases. Click past the jump to read a few of the responses we received. Do you agree or disagree?

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“While the factual underpinnings are different, Judge Baer’s ruling may well give new life to arguments unsuccessfully advanced by defendants in recent years in a line of cases under the Digital Millennium Copyright Act involving movie studios and the DVD Copy Control Association. As recently as 2009, the District Court for the Northern District of California concluded in RealNetworks v. DVD Copy Control Association that the anti-circumvention and anti-trafficking provisions of the DMCA were violated by RealNetworks’ copying software that bypassed copy protection technologies embedded in DVDs. This decision was consistent with earlier DMCA cases such as MGM Studios v. 321 Studios, in which the same federal court rejected 321 Studios’ argument that software that allows users to make copies of DVD content is legitimate under the DMCA as a fair use for back-up, preservation and archiving purposes.”

Mary Ann L. Wymore  is a member of intellectual property, communications and media, and litigation practice groups at Greensfelder, Hemker & Gale, P.C. Ms. Wymore represents media organizations, advertising firms and other businesses in the areas of communications, media, defamation and privacy, advertising, constitutional and technology law, unfair competition, and intellectual property. Ms. Wymore also is a former journalist and current adjunct professor of media law and electronic media law.

“The second transformative use identified by the court and which underpins much of the discussion of fair use and the court’s ultimate ruling is intriguing. This second use, which is undoubtedly of lesser import to the overall goals of the HathiTrust’s programs, is identified as the ability to facilitate access to the original works by print-disabled individuals. What I find unusual about this is that purpose served by the supposedly transformative copies is the precisely the same purpose served by the original work:  conveying to the reader the ideas and information contained in the original work, albeit via a different medium (text-to-speech or text-to-tactile readers). It appears then the court is suggesting that at least under certain circumstances merely altering the medium by which a work is conveyed to a reader or consumer is sufficiently transformative to constitute fair use.”

Jeffrey Loop is counsel at Carter Ledyard & Milburn.  After a decade in the fashion industry where he managed the wholesale operations of collections by designers such as Calvin Klein, Donna Karan and Wolfgang Joop, Mr. Loop graduated summa cum laude from Seton Hall Law School. Since that time, he has gained extensive experience in defending clients against claims of violations of the rights of publicity and privacy in state and federal courts. He is also well versed in copyright law, having represented clients as both plaintiff and defendant. Mr. Loop has represented clients in connection with a variety of media, publishing and art-related matters. He has for many years represented and advised image licensing clients in connection with relations with current and former contributing photographers and other content providers.

The decision provides a strong favorable opinion for libraries and library users that make or wish to make accessible digital copies to patrons with print disabilities.  The creation of a digital index to a massive multi-million volume collection of books was ruled to be Fair Use. This is enormously useful to scholars, students and the general information-seeking public. The decision also clarifies that libraries may make digital preservation copies pursuant both to the library exception written into the copyright law (17 U.S.C. Sect. 108) as well as Fair Use.”

Mary Minow is Follett Chair of Dominican University’s Graduate School of Library and Information Science.  She is also a Stanford-trained lawyer and leading scholar on library copyright and intellectual property issues.  Ms. Minow manages the Stanford Copyright and Fair Use website and founded the Library Law blog. She serves on the board of the Electronic Privacy Information Center, as well as the board of the Freedom to Read Foundation. She is co-author with Tomas Lipinski of The Library’s Legal Answer Book.

“No one can quarrel with Judge Baer’s finding that digitization for purposes of providing access of works to blind persons is a fair use.  But Judge Baer’s holding that digitization for purposes of scanning  (onto Google  and otherwise) is “transformative” is deeply troubling.  Judge Baer focuses on the transformative use.  However, the traditional doctrine of transformation does not focus on use. Rather, the issue is whether the substance of the work was transformed such that it is a completely different work conveying a different message. For example, Andy Warhol’s use of the Campbell’s soup can in his famous painting was transformative because it was used to create a complete different work with a completely different artistic vision.  In contrast, digitization is no different than transforming a copy of a record from a CD to an MP3.  Whether copying the CD onto a different device is fair use is a complex and contested issue (most people in the music industry believe that it is improper to make such a copy—and download licenses generally limit the number of devices on which a music download can be used).  But it certainly would be  wrong to say that the transfer from a CD to an MP3 was transformative.  The song remains the same. This is the major mistake in Judge Baer’s analysis, leading him to mistakenly find that digitization for scanning is fair use.  This turns on its head 100 years of jurisprudence on what it means to make a copy.  A person violates copyright law even if he takes out pen and paper and makes a handwritten copy of a printed book.  The fact that a person writes out a copy by hand rather than makes a copy on a  machine is irrelevant—-it is still an infringing copy.

“In addition, I believe Judge Baer’s ruling on Associational standing under the copyright law is incorrect. Such standing should be allowed as a matter of judicial discretion and efficiency, since the statute does not explicitly prohibit Associational standing. The ruling on standing may be the most significant long-term ruling in the case, and I assume the Authors’ Guild will find it necessary to appeal this ruling.

“In short, I believe the Author’s Guild has substantial grounds for appeal.”

Maurice Ross is a partner at Barton LLP.  For nearly three decades, Mr. Ross has represented corporate and individual clients in numerous high profile, sophisticated intellectual property and commercial litigations. 

“For those of us who have been following this case since the beginning, we are moving toward a very interesting crossroads.  Even though the Google case began years before the Hathitrust case, the Hathitrust case has reached the fair use question first.  Thus, on the one hand, you have Judge Baer with a definitive finding of a fair use defense for the libraries, rooted in his finding that providing new avenues for scholarship, and access for the visually impaired, are transformative uses for purposes of the fair use test.  On the other hand, you have some very strong statements by Judge Chin over the years suggesting that he may not endorse what Google has done here and that he was concerned about fairness to the authors.  One can see that in Judge Chin’s opinions rejecting the opt-out structure of the settlement, denying Google’s request to split the class because Google had treated the copyright holders collectively when it scanned all of the works, and denying Google’s request to stay the litigation while the class certification question was appealed.  A key distinction between the cases that may affect the fair use question is that the Google case has a decidedly commercial venture – Google Books – at issue, while the Hathitrust case appears to be focused only on the services provided by libraries.”

Hillel Parness, an intellectual property litigation partner with Robins, Kaplan, Miller & Ciresi L.L.P. in New York


1.  Was the decision expected?   I don’t believe that anyone can predict fair use cases with any certainty since they are decided on the application of a four-factor balancing test.  The fact, however, that the Defendants focused on uses that many see as beneficial and necessary certainly helped the court find that their use was transformative.  Often when the use is found to be transformative, courts find in favor of fair use.  It is important to remember that the court was not looking at Google’s use, just the educational institutions’s use.

2.  I don’t know if this decision will be appealed.  I suspect it may.  As I stated above, since fair use cases are decided on a case-by-case basis and are highly fact specific, I don’t think this one case will set a trend in other cases, but it (along with the recent Georgia State cases) is another example of the courts taking favorable stance on fair use when an educational institution and purpose is argued.

Glen Pudelka, an associate at Edwards Widman Palmer LLC in Boston, as a source. Glenn’s practice is focused on copyright issues

“In my view, the court reached the proper decision in the Author’s Guild v. HathiTrust.  In this case, the Author’s Guild, on behalf of its members, filed suit against the HathiTrust partnership asserting that its library digitization project known as the HathiTrust Digital Library (HDL) violated the copyright laws.  Currently, the HDL contains almost 10 million digital works.  The digitized works are used for three purposes:  1) preservation of the works; 2) creation of a search index for full text searching; and 3) providing access to print-disabled persons.  It is important to note that the digitized works are not made available to members of the public except in the case of print-disabled users. Applying fair use principles, the court held that the uses made of the digitized works were transformative uses and would not interfere with the market for the copyrighted works.  The Author’s Guild argued that allowing the digitization project would harm the copyright owners by undermining future licensing opportunities.  The court held that a copyright owner could not preempt a transformative market by simply offering to license it.

“This case reflects the tension that exists between the interests of copyright owners and the public at large.  Overprotection of copyright may be as harmful to the public interest as under protection of copyright is to copyright owners.  The problem is finding the correct balance.   There is a strong public interest in a large-scale searchable database.  A searchable database enables researchers, scholars, scientists, engineers, and others to find works relevant to their interests.  In my view, a large-scale searchable database would likely provide more benefit than harm to copyright owners by enabling potential purchasers to identify the copyrighted works in which they have interest.  The lawsuit appears to be a miscalculation and based on the short-sighted goal of increasing licensing revenues at the expense of long-term sales.”

Dave Bennett, managing partner at Coats & Bennett, has practiced as a patent attorney since 1985. Mr. Bennett’s practice includes litigation involving patents, trademarks, copyrights, and trade secrets. He provides representation at both trial and appellate court levels.. He has ample experience preparing and prosecuting applications for patents and trademarks and handling appeals to the Board of Patent Appeals. He offers opinions concerning the validity and infringement of issued patents, as well as advice on how to “design around” valid patents. He also counsels clients in the selection of distinctive and enforceable trademarks.

What do you think?

Authors Guild Inc. et al. v. HathiTrust et al., No. 11 CV 6351, 2012 WL 4808939 (S.D.N.Y., Foley Square Oct. 10, 2012).