Hachette Book Group, et al., v. Internet Archive

Post publish date: August 14, 2023

On June 1, 2020, four book publishers — Hachette Book Group, Inc., HarperCollins Publishers LLC, John Wiley & Sons, Inc., and Penguin Random House LLC (collectively, the “Publishers”) — sued Internet Archive for copyright infringement related to the scanning of tens of thousands of Publishers’ literary works and distributing digital copies to the public for free. Internet Archive purported to rely on a contrived theory called controlled digital lending (“CDL”) to scan and distribute digital copies of books to the public without a license. According to Internet Archive, its CDL program makes available no more digital copies of a book than the number of print copies of the book in its possession (what it described as a one-to-one “owned to loaned ratio”). However, in response to the COVID-19 pandemic and the accompanying closure of libraries, Internet Archive launched the National Emergency Library through which it lifted restrictions on its “owned to loaned ratio” and allowed up to 10,000 digital copies of any one book to be disseminated concurrently.

In March 2023, the District Court for the Southern District of New York granted summary judgment for the Publishers and, in doing so, denounced Internet Archive’s CDL theory as clear copyright infringement because it amounted to the unauthorized reproduction and distribution of copyrighted works in digital form.

The court also soundly rejected Internet Archive’s fair use defense. On the first factor, which considers the character and purpose of the use, the court emphasized that Internet Archive’s digital scanning and distribution was not “transformative” because it did not alter the purpose and character of the books “with new expression, meaning or message.” In the court’s view, simply digitally reproducing and distributing the books plainly violated the Publishers’ exclusive rights. Also on the first factor, the court noted that Internet Archive’s status as a non-profit and its free dissemination of the books did not render its actions “noncommercial” because such actions were designed to “attract new members, solicit donations, and bolster its standing in the library community.”

The court then concluded that three remaining fair use factors — the nature of the copyrighted works, the amount and substantiality of the portions used, and the effect upon the potential market for the copyrighted books — all favored the Publishers. Regarding the nature of the works, the court stated that creative works such as the fiction books involved in the case are at “the core of copyright’s protective purposes,” and even the accompanying nonfiction books have creative value in the “subjective descriptions and portraits … whose power lies in the author’s individualized expression.” Furthermore, Internet Archive copied and disseminated the entirety of the books at issue. Finally, noting the relation between the first, third, and fourth factors, the court explained that the Publishers were deprived of benefiting from a “thriving ebook licensing market for libraries” as a result of Internet Archive’s rote, unlicensed copying and lending of the entirety of the Publishers’ books.

Procedural History

Status: District court granted Publishers’ motion for summary judgment and denied summary judgment for Internet Archive. The parties submitted a joint proposal for the appropriate procedure to determine judgment in the case, although the Internet Archive has said that it will appeal the decision.

District Court for the Southern District of New York (2023)

Amicus Briefs

In support of plaintiffs (Hachette Book Group et al.)

In support of defendants (Internet Archive et al.)

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Andy Warhol Foundation v. Goldsmith

Post publish date: May 18, 2023

In April 2017, the Andy Warhol Foundation (AWF) sued photographer Lynn Goldsmith for a declaration of non-infringement over a series of 15 silkscreen prints and pencil illustrations that the late appropriation artist, Andy Warhol, based, without authorization, on a photographic portrait of Prince taken by Goldsmith in 1981. Goldsmith had originally licensed her photograph to Vanity Fair as an artist reference. Vanity Fair then commissioned Warhol to create a piece based on the photograph. However, without Goldsmith’s knowledge, Warhol also created the 15 silkscreen prints known as the “Prince Series,” using the same photograph. Goldsmith learned about the series in 2016, shortly after Prince’s death.

In July 2019, the district court ruled in favor of AWF on its fair use defense, relying largely on their conclusion that Warhol’s use of Goldsmith’s photograph was transformative because The Prince Series portrayed the musician as an “iconic, larger-than-life figure,” whereas Goldsmith’s photograph portrayed Prince as a “vulnerable human being.” Goldsmith appealed in August 2019.

In August 2021, the Second Circuit Court of Appeals reversed the district court and ruled in favor of Goldsmith on all four fair use factors. On the first factor, the court stated that the lower court had misapplied the “transformative use” test and stressed that aesthetic changes to a protected work cannot by themselves constitute a transformative purpose weighing in favor of fair use. Rather, the secondary work must “reasonably be perceived as embodying an entirely distinct artistic purpose.” The court also weighed the other factors in Goldsmith’s favor; on the second factor, noting the photograph’s unpublished status and high creativity; on the third factor, noting that Warhol copied much of the copyrightable expressions in the photograph; and on the fourth factor, noting that the Warhol works could harm the existing derivative markets for Goldsmith’s photographs. 

In December 2021, AWF challenged the Second Circuit’s application of the transformative use test in its petition for Supreme Court review. The question presented by AWF was: “Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the Second Circuit has held)?”

On May 18, 2023, the Supreme Court, in a 7-2 opinion written by Justice Sonia Sotomayor, found that the purpose and character of the AWF’s use of Lynn Goldsmith’s photograph in the licensed “Orange Prince” silkscreen to Condé Nast did not favor a fair use defense under the first fair use factor. The landmark decision reaffirms a critical tenet of the fair use doctrine—that whether a use is transformative not only doesn’t control a fair use determination, but that it also doesn’t control a factor one analysis. The decision also reiterated that fair use is an objective inquiry, and that different meaning and message in assessing transformative use “cannot turn merely on the stated of perceived intent of the artist of the meaning or impression that a critic—for that matter, a judge—draws from the work.” Additionally, the Court explained that the degree of transformation required to meet the threshold of transformativeness under the fair use factor cannot so broad that it encroaches upon the derivative right under Section 106 of the Copyright Act.

Procedural History

Status: Decided by the Supreme Court

Supreme Court (2023)

Amicus Briefs

In support of the petitioner (Andy Warhol Foundation)

In support of neither party

In support of Respondent (Lynn Goldsmith)

Cert Petition (2021)

Second Circuit Court of Appeals

District Court for the Southern District of New York

Copyright Alliance Blogs

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Valancourt Books v. Perlmutter

Post publish date: July 23, 2021

Valancourt Books is a small, independent press that publishes rare and out-of-print fiction through a print-on-demand service. In June 2018, the Copyright Office, pursuant to Section 407’s deposit requirements, sent Valancourt a demand letter for mandatory deposit of 341 of the titles it publishes. After Valancourt objected to the demands, the Copyright Office updated the demand letter to reduce the number of requested deposits to 240 titles.

Subsequently, Valancourt filed a complaint against the Copyright Office in August of 2018, seeking to enjoin the federal government from demanding deposit copies and alleging the mandatory deposit provisions are an unconstitutional taking of property without just compensation in violation of the Fifth Amendment and an unconstitutional burden on free speech in violation of the First Amendment. The complaint also argued that because, following enactment of the 1976 Copyright Act, all original works are protected by copyright from the moment they are created, the deposit requirement no longer operates as an element of a quid pro quo. In March 2019, the Copyright Office offered a settlement to Valancourt in that the agency would accept electronic copies instead of print copies and that the offer extended to all future copies submitted by Valancourt. Valancourt rejected the offer.

On July 23, 2021, the District Court for the District of Columbia granted summary judgment in favor of the Copyright Office. The court considered both of Valancourt’s constitutional claims and determined that both claims failed. First, the Court found that Section 407’s deposit requirement was not an unconstitutional taking, but rather a voluntary exchange in return for the benefit of federal copyright protection. The court explained that the Supreme Court held in Ruckelshaus v. Monsanto Co. that statutes which confer benefits on a citizen may condition the receipt of that benefit on the submission of private property and do not constitute an unconstitutional taking of property in violation of the Fifth Amendment. Second, the court found that the deposit requirement is not a violation of the First Amendment because it does not unduly burden speech and is not a content-based restriction on speech because all publications in the United States must comply. The court went on to say that any burden posed by the deposit requirement is not disproportionate to the benefits enjoyed by Valancourt and the general public, namely creating a public repository to promote the arts and sciences.

On September 2021, Valancourt appealed the decision to the D.C. Circuit, arguing that (1) the statutory text of the Copyright Act makes clear that mandatory deposit is not a condition of copyright and the district court erred in holding that it is a voluntary exchange rather than an unconstitutional taking, and (2) that mandatory deposit is a content-based restriction on free speech by imposing burdens “because the government approve[d] of [Valancourt’s] speech and want[ed] to benefit from it.”

On August 29, 2023, the D.C. Circuit Court of Appeals reversed the district court’s grant of summary judgment to the Copyright Office and ruled in favor of Valancourt. Only ruling on the Copyright Office’s demand for physical copies of Valancourt’s copyrighted works in the context of the Fifth Amendment, the court held that section 407, as applied by the Copyright Office, constituted an unconstitutional taking of Valancourt’s property. Reviewing the role and evolution of the mandatory deposit requirement in U.S. copyright law, the court found that the current mandatory deposit requirement was not tethered to any benefit to compensate for the submission of such deposits, since copyright protections are automatic upon the work being fixed and original. Additionally, the court applied prior case law to find that the alternative of charging fines did not immunize the Office’s actions from amounting to a government taking. Addressing the Office’s claims that Valancourt could voluntarily disavow its copyrights, the court declined to resolve the issue but stated that existing authority and Office guidelines did not make clear that such a theory could be applied for parties to avoid the mandatory deposit requirement. The court declined to opine on Valancourt’s First Amendment claims because it concluded that Valancourt would prevail anyway on the Fifth Amendment claim, nor did the court opine on the constitutionality of demands for electronic copies as those demands were not at dispute in the case.

On December 14, 2023, the Court of Appeals rejected the Copyright Office’s petition for an en banc rehearing of the case. On April 12, U.S. Solicitor General Elizabeth Prelogar sent a letter to Congress, stating that the Department of Justice (DOJ) decided not to seek U.S. Supreme Court review.

Procedural History

Status: Reversed and remanded by the D.C. Circuit Court of Appeals. (August 2023)

D.C. Circuit Court of Appeals

District Court for the District of Columbia

Green (EFF) v. DOJ

Post publish date: June 15, 2021

The Electronic Frontier Foundation (EFF), on behalf of various putative plaintiffs, challenged the constitutionality of the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA), contained in 17 U.S.C. 1201(a), 1203, and 1204, as well as the Library of Congress’ triennial rulemaking procedure. In particular, EFF argued that the Library of Congress’ failure to grant exemptions for the use of motion picture clips for various allegedly non-infringing uses violated the First Amendment and the Administrative Procedure Act.

On June 27, 2019, the District Court of DC granted in part and denied in part defendants’ motion to dismiss a challenge brought by security researchers, represented by EFF, to Section 1201’s anticircumvention and antitrafficking provisions.

The court dismissed the claims that Section 1201 is a facially overbroad First Amendment violation and that it is an unconstitutional prior restraint.

It did hold that plaintiffs adequately pled an as-applied First Amendment challenge: the court determined that the anticircumvention and antitrafficking provisions trigger intermediate scrutiny because they are content-neutral, but they burden substantially more speech than is necessary to further the government’s interest. The court noted that it must take the facts alleged by plaintiffs in the complaint as true and construe them in the light most favorable to the plaintiffs; at this juncture, any facts supporting the government’s assertion that “the anti-trafficking restriction in [section] 1201(a)(2) would be less effective if individuals and companies such as [p]laintiffs were allowed to disseminate decryption technologies, even if they intended the dissemination to serve a limited purpose,” and that they “would undermine the effectiveness of access controls, thus interfering with the online market for copyrighted works by deterring copyright owners from making works available online at all” were not in the record.

Finally, the court held that the triennial rulemaking process is not subject to the Administrative Procedure Act. The court concluded that while the Copyright Act subjects the Register of Copyrights to the APA, the APA only applies to a “final agency action”, and the triennial rulemaking process is consummated by the Librarian of Congress (based on the recommendation of the Register). The Librarian, the court here held, is not subject to the APA.

On July 15, 2021, the U.S. District Court for the District of Columbia denied the plaintiffs’ request for preliminary injunction.

Court: DC District Court

Status: This case is pending before the U.S. District Court for the District of Columbia. The defendants’ motion to dismiss was granted in part and denied in part. The plaintiffs’ request for preliminary injunction was denied.

Party Filings

Oracle America v. Google

Post publish date: April 5, 2021

Oracle America sued Google for patent and copyright infringement based on Google’s use of Oracle’s Java API in its Android software in the Northern District of California. The case first focused on whether the Java APIs in question were protected under copyright, which in May 2014, the Federal Circuit held that they were. The case was heard again in the Northern District of California, but this time on Google’s claims that its use was fair use. In May 2016, a jury found in favor of Google, holding that its use of Oracle’s Java API was fair use. Oracle filed a motion to challenge the verdict, which the district court denied in June 2016.

Oracle appealed to the Federal Circuit on the adverse fair use ruling and Google cross-appealed to preserve the claim that the Java APIs were not copyrightable. In March 2018, the Federal Circuit reversed the district court’s decision and remanded for a trial on damages. The Court weighed the first and fourth factor heavily in favor of Oracle, the second factor in favor of Google, and weighed the third factor as neutral. After balancing all factors, the Court found that Google’s use was not a fair use as a matter of law. The Court also denied Google’s cross appeal regarding the copyrightability of the Java APIs at issue, holding that the Court’s previous opinion in 2014 resolved that question.

Google filed a cert petition with the Supreme Court in January 2019, asking the Court to review both Federal Circuit decisions. The Supreme Court called for the views of the Solicitor General April 29, 2019. The Solicitor General recommended the Court deny the petition, saying the Federal Circuit correctly held both that neither Section 102(b) nor the merger doctrine forecloses copyright protection and no reasonable jury could find fair use on this record and that further review was not warranted.

On November 15, 2019, the Supreme Court granted Google’s cert petition. The questions presented were:

1. Whether copyright protection extends to a software interface.

2. Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

On April 5, 2021, the Supreme Court issued its decision, holding that Google’s unauthorized use of Oracle’s declaring code qualifies as fair use. In its 6–2 decision (delivered by Justice Breyer, with Justices Thomas & Alito dissenting), the Supreme Court ruled that “for argument’s sake,” Oracle’s underlying code is copyrightable but that all four fair use factors weigh in favor of Google. The opinion states that “Google’s copying of the Java SE API, which included only those lines of code that were needed to allow programmers to put their accrued talents to work in a new and transformative program, was a fair use of that material as a matter of law.” While the Court found that Google’s copying qualified as fair use, it rejected Google’s argument that fair use defenses must be resolved by a jury, explaining that fair use is ultimately a legal question and “the right of trial by jury does not include the right to have a jury resolve a fair use defense.” Justice Thomas’ dissenting opinion is critical of the majority’s fair use analysis, arguing that it mistakenly attempts to distinguish between different types of computer code and that it conflates transformative use with derivative use. 

Procedural History

Status: Decided by the Supreme Court

Supreme Court (2021)

Opinion (April 5, 2021)

Oracle Brief (February 12, 2020)

Google Opening Brief (January 6, 2020)

Amicus Briefs

In support of Respondent
In support of Neither Party
In support of Petitioner

Cert Petition (2019)

Solicitor General Brief (Sept. 27, 2019)

Google Reply Brief (April 10, 2019)

Oracle Response in Opposition (Mar. 27, 2019)

Google Petition for Writ of Certiorari (Feb. 25, 2019)

Amicus Briefs

In support of Petitioner

Federal Circuit (2018)

Google’s petition for rehearing en banc (May 29, 2018)

Federal Circuit Decision (March 27, 2018)

Amicus Briefs

In Support of Oracle

In Support of Google

Federal Circuit (2014)

Federal Circuit Decision (May 9, 2014)


NDCA Order Denying Rule 50 Motions (June 8, 2016)

NDCA Jury Verdict (May 26, 2016)

Back to Copyright Cases

Dr. Seuss Enterprises v. ComicMix

Post publish date: November 1, 2020

Dr. Seuss Enterprises sued ComicMix for copyright and trademark infringement after ComicMix sought to publish a “mashup” of the famous Seuss work “Oh the Places You’ll Go” with characters and elements from the Star Trek franchise. ComicMix ran a Kickstarter campaign to help fund the printing and commercial distribution of their work.

In response to the complaint, ComixMix asserted that its copying of Dr. Seuss’s work was protected by fair use. In a March 2019 order on cross-motions for summary judgment, the Southern District Court of California agreed. Dr. Seuss Enterprises has appealed to the Ninth Circuit.

Ninth Circuit

Amicus briefs in support of Dr. Seuss Enterprises (August 12, 2019)

Dr. Seuss Enterprises opening brief (August 5, 2019)

Southern District Court of California

Order on cross-motions for summary judgment (March 12, 2019)

Order granting in part and denying in part motion to dismiss (June 9, 2017)

Complaint (Nov. 10, 2016)

Lang Van v. VNG

Post publish date:

Lang Van, a leading producer and distributor of Vietnamese music and entertainment, filed a copyright infringement suit against VNG, a company based in Vietnam that operates a music streaming website. Lang Van alleges that VNG’s Zing music website and app, which VNG makes available in the U.S., offers thousands of Lang Van’s copyrighted works without authorization and that Lang Van receives no compensation for VNG’s use.

Despite providing its app and website to millions of users in the U.S., the District Court for the Central District of California found that VNG “didn’t purposefully direct its activities toward California” and granted defendant’s motion to dismiss for lack of personal jurisdiction. Lang Van appealed to the Ninth Circuit, arguing that the district court erred by determining that Lang Van had not established a prima facie case under the first, second, and third prongs of the specific jurisdiction test and that the court did not properly apply the Ninth Circuit’s test for purposeful direction because it did not consider all of the relevant evidence submitted by Lang Van.

On July 21, the Ninth Circuit Court of Appeals held that VNG was subject to personal jurisdiction in the United States. Reversing the district court’s dismissal and remanding for further proceedings consistent with the Ninth Circuit’s decision, the court held that VNG met all three prongs of the personal jurisdiction test under Rule 4(k)(2) of the Federal Rules of Civil Procedure, since (1) a copyright infringement claim was a claim under federal law (2) VNG did not concede that any other state had jurisdiction and (3) there was substantial evidence of VNG’s intentional direction in and contacts with the United States. The court stated that VNG “purposefully targeted American companies and their intellectual property” and “purposefully availed itself of the privilege of conducting business in the United States.” It pointed to, among other evidence, that VNG did not choose to opt out of providing their services or geoblock its services in the United States. The court also held that the United States was the proper venue for the case since the dispute involved infringing activities in the United States, which made it more appropriate to a lawsuit in the United States.

Procedural History

Central District of California (Nov. 21, 2019)

Ninth Circuit Court of Appeals (July 21, 2022)

Status: Decided by the Ninth Circuit Court of Appeals.

Court: Ninth Circuit

Amicus briefs

UMG Recordings v. Kurbanov

Post publish date: June 1, 2020

Record labels filed a copyright infringement suit against the operator of two popular “stream ripping” sites based out of Russia. The labels allege the sites “quickly and seamlessly capture the audio tracks contained in videos streamed from YouTube” that users access, “convert those audio tracks to an MP3”, “copy and store the audio files”, “and then distribute copies of those files from their servers to users in the United States”–all without authorization from the copyright owners (and in violation of YouTube’s own terms of service). Labels allege this conduct amounts to direct and indirect infringement.

A district court granted defendant’s motion to dismiss based on lack of personal jurisdiction, holding that the sites “are semi-interactive, the interactions with the users are non-commercial, and there were no other acts by the Defendant that would demonstrate purposeful targeting” of the forum specifically or the United States generally.

The record labels appealed that decision to the Fourth Circuit, arguing that the district court erred because the sites had a large U.S. customer base that it purposefully targeted and profited from, and it had multiple and sustained contacts with both the forum and the U.S.

In June 2020, the Fourth Circuit reversed and remanded the district court’s dismissal for lack of personal jurisdiction. The opinion finds that “Kurbanov’s contacts sufficiently show he purposefully availed himself of the privilege of conducting business in Virginia” and that “Appellants’ copyright infringement claims arise out of Kurbanov’s activities directed at Virginia.”

Procedural History

Status: Reversed and remanded. (June 2020)

Fourth Circuit

Opinion (June 26, 2020)

Answering Brief of Defendant-Appellee Kurbanov (Apr. 12, 2019)

MPAA Amicus Brief in support of Plaintiff-Appellants (Mar. 19, 2019)

Association of American Publishers Amicus Brief in support of Plaintiff-Appellants (Mar. 19, 2019)

Copyright Alliance and IACC Amicus Brief in support of Plaintiff-Appellants (Mar. 19, 2019)

Opening Brief of Plaintiff-Appellants, UMG Recordings, et al (Mar. 12, 2019)

Eastern District Court of Virginia

ED VA order on motion to dismiss (Jan. 22, 2019)

UMG Recordings, et al, v. Kurbanov complaint (Aug. 3, 2018)

Georgia v. Public.Resource.Org, Inc.

Post publish date: April 1, 2020

The State of Georgia contracts with a private publisher to edit and publish its official state code (OCGA), which includes not only all the laws enacted by the state legislature, but also judicial decision summaries, editor’s notes, research references, notes on law review articles, summaries of the opinions of the Attorney General of Georgia, indexes, and title, chapter, article, part, and subpart captions. These are selected and coordinated by the publisher, subject to oversight by Georgia. Georgia holds a copyright in the OCGA and grants the publisher the exclusive right to publish and sell print and digital copies of the OCGA. The publisher is also required to make the unannotated statutory provisions freely available, provide a number of free copies of the OCGA to a number of state and local institutions, such as libraries, and cap the total costs of the OCGA.

Public Resource, a non-profit organization, purchased a copy of the OCGA, digitized it, and uploaded it to its own website, making it freely available. Georgia filed a suit alleging direct and indirect copyright infringement. On cross-motions for summary judgment, the Northern District Court of Georgia disagreed with defendant’s argument that the OCGA was not copyrightable as an “edict of law” and held that the copying was not permitted under the fair use doctrine.

On appeal, the Eleventh Circuit reversed, holding that the OCGA is not copyrightable. It concluded that the official annotations represent a direct exercise of sovereign power, and are therefore attributable to the constructive authorship of the People, making them intrinsically public domain material. Georgia appealed to the Supreme Court, which has agreed to review the case. The question presented is “Whether the government edicts doctrine extends to—and thus renders copyrightable—works that lack the force of law, such as the annotations in the Official Code of Georgia Annotated.”

In April 2020, the Supreme Court held that the state of Georgia is not entitled to copyright protection for its official annotated code. In a 5-4 decision delivered by Chief Justice Roberts (joined by Sotomayor, Kagan, Gorsuch, & Kavanaugh), the Court upheld the Eleventh Circuit’s finding that because Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection. Justice Thomas (joined by Alito and Breyer) and Justice Ginsburg (joined by Breyer) filed dissenting opinions.

Supreme Court

Opinion (April 27, 2020)


Brief of Petitioners (August 23, 2019)

Amicus briefs in support of Petitioners

Cert Stage

Reply of Petitioners (May 24, 2019)

Brief of Respondent (May 10, 2019)

Amicus briefs supporting Respondent

Petition for Cert (March 1, 2019)

Amicus briefs supporting Petitioner

Proceedings Below

Code Revision Commission and the State of Georgia v. Public.Resource.Org, Eleventh Circuit decision (October 19, 2018)

Code Revision Commission and the State of Georgia v. Public.Resource.Org, Order on Defendant’s Motion for Summary Judgment and Plaintiff’s Motion for Partial Summary Judgment, Northern District of Georgia (March 23, 2017)