On Tuesday, June 10, the U.S. Court of Appeals for the Second Circuit released its decision in Authors Guild v. HathiTrust. This decision comes after the Authors Guild had appealed the decision of the Southern District of New York dismissing claims of copyright infringement and granting summary judgment in favor of HathiTrust. In the 34-page opinion, Circuit Judge Barrington D. Parker affirmed in part and vacated in part. The issue in the case was “whether the HathiTrust Digital Library’s (HDL) use of copyrighted material is protected against a claim of copyright infringement under the doctrine of fair use.” Although the decision is to an extent disappointing to creators, there are at least two important lessons from this decision that may have an impact in future cases. First, the court clarified that “a transformative work is one that serves a new and different function from the original work and is not a substitute for it.” Second, the court emphasized the importance that security measures have in ensuring that copyrighted works are available to library patrons under very specific circumstances.
In 2004, the HDL enabled its members – colleges, libraries and nonprofit institutions, to allow Google to digitize the books in their collections. According to the opinion, the HDL currently has 80 member institutions and digital copies of more than 10 million works. The court looked at whether three HDL uses of copyrighted works constituted fair use: (1) enabling full text search by the general public; (2) enabling access to print disabled patrons; and, (3) enabling the digital preservation of copies already owned by the libraries. The Second Circuit held that enabling both full text search and access to print disabled patrons constituted fair use pursuant to Section 107, although for different reasons than the lower court. Regarding digital preservation, the court vacated the lower court’s ruling for fair use and remanded for further proceedings.
The Transformativeness Test
The Second Circuit focused on the test that the lower court adopted to determine “transformativeness” in its analysis of the first fair use factor –the purpose and character of the use. The court also explained how this test would interact with the other factors in its analysis. From the decision:
A use is transformative if it does something more than repackage or republish the original copyrighted work. The inquiry is whether the work adds something new, with a further purpose or different character altering the first with new expression, meaning or message. . . . The more transformative the new work, the less will be the significance of other factors that may weigh against a finding of fair use. Contrary to what the district court implied, 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.
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