A matter of days after the Google Books
case between Google and Association of American Publishers settled, comes the decision
of the District Court of New York in HathiTrust.
In this case the Authors Guild claimed that digital copies made by Google and
the HathiTrust were infringing. Litigation against Google is proceeding
separately, however in respect of the actions of the HathiTrust the District
Court of New York has held that:
- The rights granted to libraries under s.108 of the US Copyright Act (the right to make a limited number of copies of certain works for specified purposes) do not preclude a library from relying on fair use as a defence;
- Converting hard copy texts into digital texts is transformative use as the copies serve "an entirely different purpose than the original works"; that purpose being superior search capabilities rather than actual access to the material. The search capabilities of digital texts have given rise to new methods of academic inquiry such as text mining;
- The use of digital copies to facilitate
access for print-disabled persons is
transformative; and
- HathiTrust's activities are fair use.
Facts
The HathiTrust entered into agreements
with Google which allowed Google to create digital copies of works in the various
universities' libraries in exchange for which Google provided digital copies to
HathiTrust.
The HathiTrust partnership is in the
process of creating "a shared digital repository that already contains
almost 10 million digital volumes, approximately 73% of which are protected by
copyright." After digitization, Google retains a copy of the digital book
that is available through Google Books, an online system through which Google
users can search the content and view "snippets" of the books. Google
also provides a digital copy of each scanned work to the relevant universities,
which includes scanned image files of the pages and a text file from the printed
work. According to the Authors Guild,
this process creates two unlawful copies of the original.
After Google provides the universities
with digital copies of their works, the universities then "contribute"
these digital copies to the HathiTrust Digital Library. Authors Guild therefore
claimed that in total, twelve
unauthorized digital copies were created during this digitization process.
Google's use of the digital works is the subject
of a separate lawsuit.
Summary Judgment
First it is interesting to note that this
is a summary judgment: in order for the case to be dismissed, the HathiTrust had
to show that there was "no genuine issue of material fact" as to
whether their use was fair. Judge Baer found the Authors Guild's arguments to
be without merit and granted the HathiTrust's motion for summary judgment on
the basis that the HathiTrust's actions are protected under fair use.
Fair Use
Before examining each of the fair use factors, which are
set out at s.107 of the US Copyright Act, Judge Baer considered the Authors
Guild's argument that fair use should not apply at all as it is excluded by s.108
which accords libraries the right to make a limited number of copies of certain
works for specified purposes. However s.108 explicitly states that "[n]othing
in this section . . . in any way affects the right of fair use as provided by
section 107." Judge Baer said that: "In spite of the clear language
that Section 108 provides rights to libraries in addition to fair-use rights that
might be available, Plaintiffs argue that I should find that the Section 107
fair-use defense is precluded by Section 108 in this case", before going
on to conclude, seemingly without much difficulty, that fair use was available as
a defence.
Purpose and character of the use
The first fair use factor considers the "purpose
and character of the use, including whether such use is of a commercial nature
or is for non-profit educational purposes." Judge Baer found that the
digital scanning project in this case was undertaken with several goals in mind: (1) it allows
scholars to identify relevant works more efficiently - this tilts the first
factor in HathiTrust's favour; (2) it
helps the HathiTrust preserve its book collections from wear and tear, loss and
theft (as well as from natural disasters); and (3) it provides print-disabled
individuals with "access to the wealth of information within library
collections" - this is, according to Judge Baer a transformative use.
Nature of the copyrighted works
US case law says that "[S]ome works
are closer to the core of intended copyright protection than others." (Campbell), which has been interpreted to
mean that copying factual works is more likely to be fair use than copying
creative works (Blanch v. Koons).
In this case the Authors Guild identified
116 allegedly infringing works of which 76 percent of the were fiction. However
in the digitised library as a whole, approximately 9 percent of the works consist
of prose fiction, poetry and drama. These numbers appear however to have been
disregarded by the judge who held that: "Because the use is
transformative, intended to facilitate key-word searches or access for
print-disabled individuals, the second factor is not dispositive."
Amount of the work copied
The third fair use factor considers
whether the amount of copying was reasonable in relation to the purpose. The question is whether "no more was
taken than necessary" (Campbell).
With that in mind sometimes it is necessary to copy entire works: in this instance
entire copies were necessary to fulfill the HathiTrust's purpose of facilitating
searches and giving access to print-disabled individuals.
Impact on the market for or value of the
works
The fourth factor examines "whether
the secondary use usurps the market of the original work." Where a use is
non-commercial, as it is in this case, the claimant has to show "by a
preponderance of the evidence that some meaningful likelihood of future harm
exists" (Sony). Judge Baer held
that the Authors Guild failed this test.
The Authors Guild argued that each
digital copy of a book represents a lost sale as it might otherwise have been
bought through legal channels. Judge Baer comments that 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 digitisation project.
The Authors Guild's second argument was
that the HathiTrust "expose[d] Plaintiffs' property to immense security
risks that have the potential to cannibalize the book market through . . . widespread
internet piracy." Their expert was however not able to substantiate this
and therefore the judge held that the "unsupported argument fails to
demonstrate a meaningful likelihood of future harm."
Finally, the Authors Guild argued 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." Unfortunately the Authors Guild admitted
that it could not identify "any specific, quantifiable past harm, or any
documents relating to such past harm" leading the judge to hold that their
argument about a potential market was "conjecture".
The HathiTrust offered substantial
evidence 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.
Decision
In weighing up the fair use factors, with
the aim of copyright law of "promoting the Progress of Science" in
mind, Judge Baer considered that the enhanced search capabilities, the
protection of the HathiTrust's fragile books, and the unprecedented ability of
print-disabled individuals to have an equal opportunity to compete with their
sighted peers protect the copies made by the HathiTrust as fair use. Judge Baer
summed up by saying:
"Although I recognize that the facts
here may on some levels be without precedent, I am convinced that they fall
safely within the protection of fair use such that there is no genuine issue of
material fact. I cannot imagine a definition of fair use that would not
encompass the transformative uses made by Defendants' [Mass Digitisation
Project] and would require that I terminate this invaluable contribution to the
progress of science and cultivation of the arts that at the same time
effectuates the ideals espoused by the [Americans with Disabilities Act]."
Given that the digitisation project is not for
profit, so authors are not losing sales of books, this seems to be an entirely
rational and pragmatic decision which takes into account how we use our
ever-evolving technology as well as the needs of partially-sighted readers.
Perhaps it is a wake-up call to publishers that they need to adapt to use
technology in such a way that there is no need for them to bring claims like
this one.
***14 November 2012: by way of update the Authors Guild has notified the court that it will appeal Judge Baer's decision in this case.
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