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.
Full Text Search
Regarding full-text search, the court relied on the fact that “the HDL does not allow users to view any portion of the books they are searching” to decide that the first factor, the purpose and character of the use, weighed in favor of fair 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.” The court held that the second factor, the nature of the copyrighted work, was not relevant because the use was transformative. On the third factor, whether the copying used more of the copyrighted work than necessary, the court held that although the libraries copied entire works in their collections, doing so was necessary to enable the full text search function. On this factor, the court also concluded that maintaining digital copies in four different locations is “reasonably necessary to facilitate the services HDL provides to the public and to mitigate the risk of disaster or data loss.” On the fourth factor, the effect of the use on the potential market for or value of the copyrighted work, the court held that “any economic harm caused by transformative uses does not count because such uses, by definition do not serve as substitutes for the original work.” The court concluded that there was no loss of potential licensing revenue because full text search did not substitute the original function of the copyrighted works. The court also disregarded plaintiffs’ concerns with data breaches to the universities. For the court, the extensive security measures that the libraries had implemented made future harm ‘conjectural’. Overall, the court concluded that digitization for enabling full-text search is a fair use pursuant to Section 107.
Access for Print-Disabled Patrons
Regarding digitization for purposes of providing print-disabled patrons with works in accessible formats, the court also ruled in favor of fair use. On factor one, in contrast to the Southern District of New York, the court ruled that this use is not transformative because “by making copyrighted works available in formats accessible to the disabled, the HDL enables a larger audience to read those works, but the underlying purpose of the HDL’s use is the same as the author’s original purpose”. However, the court ruled that providing access to print disabled patrons is still a valid purpose under factor one based on Sony Corp. of Am. v. Universal City Studios, Inc., the legislative history of the 1976 Act where Congress stated tat “making copies accessible for the use of blind persons posed a special instance illustrating the application of the fair use doctrine” (internal quotations excluded). The court ruled that factor two weighed against fair use because HDL provided access to copyrighted works of all kinds. For factor three, the court concluded that retaining copies as digital image files and as text-only files stored in four separate locations was necessary for some print disabled patrons to “perceive the books fully”. The court then concluded that making accessible formats for the print disabled did not have a negative market effect on the original works because “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.” Overall, the court concluded that digitization to provide access for print disabled patrons constituted fair use.
The court then looked at the issue digitization for purposes of preservation. “The HDL will permit member libraries to create a replacement copy of a book, to be read and consumed by patrons, 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.” The court held that it was not appropriate for it to determine whether this function infringes the plaintiffs’ copyright because the record did not reflect whether the plaintiffs owned “copyrights in works that would be effectively irreplaceable at a fair price by the Libraries and, thus, would be potentially subject to being copied by the Libraries in case of loss or destruction of an original.” The court then vacated the district court’s judgment and remanded for the district court to determine “whether plaintiffs have standing to challenge the preservation use of the HDL.”
The Orphan Works Project
The court finally affirmed the district court’s decision regarding plaintiffs’ infringement claims pertaining to the Orphan Works Project (OWP) of the HDL. The court agreed that these claims were not ripe for adjudication because the OWP had been abandoned and “the record contained no information about whether the program will be revived and, if so, what it would look like or whom it would affect.” The court held that plaintiffs had not shown “certainly impending harm” and that it could not perceive any hardship in withholding a decision.
The Authors Guild released a statement in response to the decision. The next decision regarding mass digitization will also be by the Second Circuit on Authors Guild v. Google Books. The Copyright Alliance filed an amicus brief on that case.