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“Fly the W” for Fair Use

Baseball season officially ended this week with the conclusion of the World Series, and Cubs fans are still basking in the fading glow of what almost was. This season, the the “W” flew more often than not for the Chicago Cubs — the “W” referring to the flag flown at Wrigley Field whenever the Cubs scored a win. Well, this season, fair use “flew the W” in a few significant cases that I would like to take a moment to highlight.

Katz. v. Chevaldina
In this rather bizarre case, Florida real estate mogul and NBA team ownwer Raanan Katz filed a copyright infringement action against a former shopping center tenant who used a photo of Katz in a blog post she wrote criticizing Katz for his business practices. The photo (the copyright of which was transferred to Katz by the original photographer) is an up-close photo of Katz with his  eyebrows raised and his tongue sticking out. Chevaldina was granted summary judgment at trial on the issue of fair use. Katz appealed, and the court affirmed. The court agreed that Chevaldina’s use of the photo on her blog constituted fair use.

In analyzing the first factor of fair use, the court found that the inclusion of the photo on the blog was a transformative use because the photo, which had been characterized as unflattering, ugly, and compromising. She used the photo for the noncommercial purpose of satire and criticism, as allowed under the fair use statute, and to warn others about Katz’s documented business practices. Further, the photo, which had been previously published, was primarily factual in nature (factor two) and was more a fortuitous shot than a work of creativity.  As to factor three, the amount of the work used, the court concluded that this factor was neutral with respect to fair use analysis. Finally, the court found no harm to any potential market (factor four) for the photo as the only purported reason for estopping use of the photo was censorship.

Lenz v. Universal Music
Popularly known as the “Dancing Baby” case, Lenz v. Universal Studios concluded this summer with another win for fair use. In this case, Lenz had posted a very short video on YouTube documenting her toddler’s adorable dance moves. During the less than 30 second grainy video clip, the sounds of Prince’s “Let’s Go Crazy” can be heard in the background. Universal Music issued a take down notice pursuant to the DMCA, and Lenz filed suit against Universal contending that it should have considered fair use before availing itself of the DMCA procedure. On appeal from a trial court judgment dismissing the parties’ cross-motions for summary judgment, the Ninth Circuit Court of Appeals ruled not only that fair use is a legal right and not an affirmative defense, but also that copyright holders must consider fair use before issuing DMCA take down notices. Now, Universal must prove at trial that it did in fact consider fair use before issuing its take down notice

Author’s Guild v. Google
In perhaps fair use’s biggest win of the season, the Second Circuit Court of Appeals ruled in this decade long lawsuit that Google’s book scanning project is fair use. Judge Leval, author of not only the court’s opinion but also of a seminal scholarly work on “transformative” fair use, concluded that Google’s scanning of books held in the collections of its library partners and displaying of snippets of those books online for the purpose of allowing searchers to identify relevant works was a transformative use. Leval summarized the court’s opinion as such:

Google’s unauthorized digitizing of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses. The purpose of the copyright is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals.

I will refrain from recounting the court’s full analysis of the four factors of fair use here. Several authors have already done a superb job of summarizing Leval’s fantastic opinion, which overwhelmingly stresses the purpose of copyright as benefiting the public and the importance of transformative uses of copyrighted works to realizing those benefits. I direct you to the following for thorough and accessible recaps of the opinion:

Techdirt – “Appeals Court Gives Google a Clear and Total Fair Use Win on Book Scanning
EFF – “Big Win for Fair Use in Google Books Lawsuit
ARL – “Issue Brief: Second Circuit Court of Appeals Affirms Fair Use in Google Books Case


Put Your (Hathi) Trust in Fair Use

Once again, a court has confirmed that libraries may rely upon fair use when digitizing copyrighted works and making them available for new purposes and audiences.  The Second Circuit Court of Appeals issued its opinion yesterday in the Authors Guild’s appeal of the summary judgment rendered in favor of  HathiTrust Digital Library and several of its university library partners.  At issue in the underlying case was the legality of HathiTrust’s digitization of thousands of copyright protected books. Digitization had been done for three purposes: to create a searchable database allowing researchers to identify relevant works through keyword searches; to provide access for those with print disabilities; and to digitally preserve unavailable but still copyrighted titles that were lost, destroyed or deteriorated.

Following the district court’s grant of summary judgment in favor of HathiTrust, the Authors Guild appealed. (Click here for my summary of the 2012 judgment in the AG v. HT lawsuit.) The Second Circuit affirmed the district court’s grant of summary judgment in favor of HathiTrust as to full text searching and print disabled access but vacated and remanded as to the issue of preservation. Brian Carver at UC Berkley’s iSchool nicely summed up the decision: “Today’s decision is an important reaffirmation of the fair use doctrine’s role in enabling transformative uses of copyrighted works that enable the creation of new information-location tools and in the ability of libraries to serve the needs of their print disabled patrons.” Going forward, it will be interesting to see what impact this decision has on other pending fair use cases, including the appeal of the copyright infringement lawsuit against Georgia State for its electronic course reserves practices.

In its opinion, after providing a nice summary of previous cases that illustrated the application and importance of fair use, the court sets forth its view of the four factors of fair use and their application:

Factor One – The purpose and the character of the use. The focus here is on transformative uses; however, the appeals court disagreed with the district court’s characterization of what is a transformative use. The test is not whether there has been added value or utility; rather, the test is whether the new use or purpose allows the work to serve a new and different function while not also merely being a substitute for the original work.

Factor Two -The nature of the work. The appeals court continues the precedent of prior adjudications and looks at whether the work is more creative, which is more valued in copyright law, than factual.

Factor Three -The amount of the work used. The inquiry here is whether the quantity and value of the materials used is reasonable in relation to the new uses. That is, does the transformational character of the use justify the quantity used?

Factor Four – The effect on the market for the original work. The appeals court asserts that this is the single most important element of fair use and that the burden is upon the copyright holder to demonstrate that the secondary use serves as a substitute for the original work.

With its fair use framework established, the appeals court turns to evaluation of the purposes of HathiTrust’s digitization efforts:

Full Text Searching

Factor One – “The creation of a full-text searchable database is a quintessentially transformative use” the appeals court declares. Because authors do not write works with the purpose of enabling text searching, the digitization of those works to enable this function adds to the original “something new with a different purpose and a different character.”

Factor Two – Like the district court, the appeals court dismisses this factor as not dispositive of the case because of the overwhelming transformative nature of the creation of a full text search database.

Factor Three – Digitization of entire works was not unreasonable as it was necessary in order to enable the full text search of the HathiTrust corpus. The existence of multiple copies on different secure servers also did not negate a finding of fair use as, again, their existence was necessary to enable the functionality of the database.

Factor Four – The appears court claims that “the only market harms that count are the ones that are caused because the secondary use serves as a substitute for the original, not when the secondary use is transformative.” The appeals court dismisses the Authors Guild’s argument that the creation of the HathiTrust Digital Library could impede their ability to sell licenses to digital copies of the works. “Lost licensing revenue counts…only when the use serves as a substitute for the original,” and it has already been established here that the full text search function did not stand as a substitute for the original works.

Print Disabled Access

Factor One – The appeals court disagreed with the district court’s characterization of providing access to print disabled persons as transformative: “providing expanded access to the print disabled is not ‘transformative.’…By making copyrighted works available in formats accessible to the disabled [HathiTrust] enables a larger audience to read those works, but the underlying purpose of the use is the same as the author’s original purpose.” However, a finding of a transformative use is not required for a use to be deemed a fair use. And here, providing access to persons with print disabilities is a valid purpose under Factor One as evidenced by the legislative mandate of accommodation.

Factor Two – In short order, the appeals court states that Authors Guild wins on this factor, but a a win on this factor does not preclude an overall finding of fair use.

Factor Three – The digitization and conversion of the full copyrighted works was necessary to allow print disabled persons to perceive the works and thus was in line with and supportive of the purpose.

Factor Four – Looking at the current market for commercially available accessible works the appeals court determines that it is “insignificant” because publishers typically forgo royalties that are generated through the sale of books manufactured in specialized formats for persons with print disabilities. Further, it has been a recognized problem that more titles are not made available to persons with print disabilities. HathiTrust’s work addresses this problem while not causing any harm to the market.


The appeals court does not believe that Authors Guild has standing to challenge this purpose of HathiTrust’s digitization because no evidence was presented that the members they represent owned copyright in works that had been shown to be irreplaceable at a fair price and thus subject to digitization by HathiTrust for preservation purposes. Therefore, the appeals court vacated the district court’s judgment as to this claim.


Additional recommended reading on the case:

James Grimmelman – “Google Books Round 86: Libraries Win Yet Again
Krista Cox (ARL) – “Second Circuit Affirms Fair Use in Authors Guild v. HathiTrust

Third Time is a Real Charm! Another win for fair use.

On Thursday, a judgment was rendered in the long-running copyright infringement action filed by Authors Guild against Google for its Google Books search service wherein in-copyright books, many of which were lent to Google by participating academic libraries, were digitally scanned and snippets of scanned pages displayed to searchers.  Judge Chin, who has presided over much of this eight year roller legal roller coaster, rendered summary judgment in favor of Google, declaring its book scanning and text display fair use.  This judgment is the third in so many months that is overwhelmingly in favor of fair use and the work of libraries, both on their own and in partnership with other entities. In all three cases, similar themes emerged, as demonstrated below, as the trial courts in each case conducted their fair use analyses: educational and research uses are important to promote, providing access to materials to underserved populations is critical, and preservation of at-risk materials is an important social benefit.

Four Factors of Fair Use
In order to invoke fair use, the use or reproduction of a copyrighted work must be for the purpose of criticism, comment, news reporting, scholarship, research or education. Further, there are four factors of fair use, and the balance of these must weigh in favor of such use.  Consideration of all of the fair use factors is required; however, all four factors do not have to weigh equally in favor of the proposed use.

The four factors of fair use are: (1) why is the work being used, (2) what is the nature of the work being used, (2) how much of the work is being used, and (3) what effect does the use of the work have on the market for that work.

Fair Use in Google
Judge Chin found three of the four factors of fair use in favor of Google and thus rendered judgment on its behalf. His determinations on each factor were as follows:

Factor One – In many fair use cases of the last 20 years, a determination of transformative use has been dispositive of the first fair use factor. And here, Judge Chin determined that Google’s use of the digital book scans is highly transformative. The use of snippets of text to facilitate researcher, reader and scholar identification of relevant works as well as the the facilitation of text and data mining for research were deemed by Chin to be new purposes lending toward a finding of transformative use. He also determined that these uses had high educational and research value worthy of protection.

Factor Two – Although the works scanned by Google were of all types (fiction, non-fiction, out of print), Judge Chin found in favor of Google on this factor, determining that the majority of the corpus of works scanned were non-fiction or informational works.

Factor Three – Judge Chin concluded that his analysis of this factor weighed “slightly” against fair use due to the fact that entire books were scanned. However, he also acknowledges that scanning of the entire works was necessary to accomplish the transformative uses of those whole work scans.

Factor Four – Because the search of books on Google was likely to lead to the commercial purchase of the book, Judge Chin found no market harm. The scans would not be used to replace purchase of the original.

Fair Use in HathiTrust
In addition to suing Google, Authors Guild has also filed a copyright infringement lawsuit against HathiTrust and several of its partner university libraries. Author’s Guild alleged that HathiTrust’s digitization of books for the purposes of making preservation copies, to allow for full text searching, to provide access to persons with print disabilities, and to allow access to orphan works violated their members’ rights under copyright law. The trial court granted summary judgment in favor of HathiTrust and the universities last fall. The trial court declined to rule on the orphan works question on the ground the issue was not ripe for adjudication because the program was still in development and not yet active. Notably, the judge wrote “I cannot imagine a definition of fair use that would not encompass the transformative uses made by defendants.”

Factor One – The trial court found that the overarching purpose for HathiTrust’s activities is to promote scholarly and research activities, which are squarely within fair use. Scanning works to preserve them, though not transformative, is fair use on account of the overriding public interest in preservation of knowledge. Scanning of works for the purpose of enabling full text searching as a means of identifying works relevant to one’s research is a highly transformative use and thus qualifying as fair use. Digitization for the purpose of providing access to persons with print disabilities is also a highly transformative use qualifying as fair use.

Factor Two – Given the overwhelming transformative nature of the HathiTrust’s uses of the copyrighted works, the court determined that whether or not the works were informational or creative in nature was not dispositive of the fair use question.

Factor Three – The trial court held that even though entire books were scanned, this amount is necessary to the transformative uses made by HathiTrust.

Factor Four – Stating an intention to license the works at a later time for digital access cannot trump the transformative uses already being employed. A copyright holder will not be permitted to preempt a transformative market, particularly where, as here, there is no demonstration of market harm as a result of these noncommercial uses.

Fair Use in Georgia State
In 2008 publishers Sage, Oxford and Cambridge, filed suit against officials at Georgia State University for alleged copyright infringement arising as a result of the posting of book chapters reproduced from handbooks and other books published by them in GSU’s course management system and electronic course reserve system. The case when to trial and in May 2012 the trial court rendered judgment in favor of GSU.

Factor One – Judge Evans found that GSU’s educational purpose was clearly fair use. Significant time was spent distinguishing provision of course reserves by libraries to students enrolled in a course from the for-profit activity deemed infringing in the Kinkos coursepack case. The trial court did find, however, that mere reproduction of scholarly works for course reserves was not a transformative use.

Factor Two – The trial court found that the content of the works copied were largely informational as opposed to creative or artistic and use of informational or factual works was generally considered to be fair use. The court dismissed the “sweat of the brow” argument that the work entailed in producing scholarly works was entitled to greater protection. The court found that permitting reproduction of excerpts of scholarly works had zero effect upon an author’s incentive to create scholarly works. There was no negative impact upon the incentives of prestige, advancement of knowledge or acquiring a positive result in tenure and promotion decisions.

Factor Three – Most important in the discussion of factor three, Judge Evans rejected the Classroom Guidelines both as to amount and repetitive use. The low ceilings imposed in the outdated Classroom Guidelines and advocated by the publishers were rejected by the trial court as inconsistent with fair use as was the suggestion that fair use did not permit repetitive use of works in course reserves. The trial court held that the amount of a work reproduced has to be “decidedly small” and narrowly tailored to the express pedagogical purpose. The trial court also articulated some of its own guidelines, which it did not strictly adhere to when reviewing each of the alleged incidents of infringement committed by GSU. The trial court stated that it is generally to be considered fair use if 10% of a work less than 10 chapters or a single chapter of a work greater than 10 chapters was reproduced.

Factor Four – The publishers failed to demonstrate to the trial court’s satisfaction any harm to their bottom line. The trial court stated that the publishers argument that e-reserves would put them out of business was glib and that any revenues received from academic licensing were at best miniscule. And the recent press release from CCC that it paid out a record $188.7 million in royalties to publishers in 2013 is evidence that they are not hurting.

All three of these cases will be decided on appeal. Oral argument in the HathiTrust case occurred October 30, 2013, and oral arguments are scheduled Tuesday (November 19th) in the Georgia State case. Authors Guild announced its intention to appeal the Google case shortly after the judgment was rendered. Hopefully the appellate courts hearing these cases will further support and strengthen the well-reasoned judgments of their lower court brethren, for as Judge Chin so aptly states, uses such as the ones at issue in the Google case:

Advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders. It has become an invaluable research tool that permits students, teachers, librarians, and others to more efficiently identify and locate books. It has given scholars the ability, for the first time, to conduct full-text searches of tens of millions of books. It preserves books, in particular out-of-print and old books that have been forgotten in the bowels of libraries, and it gives them new life. It facilitates access to books for print-disabled and remote or underserved populations. It generates new audiences and creates new sources of income for authors and publishers. Indeed, all society benefits.

Three Strikes: Are Publishers Finally Out in Frivolous Litigation Against Libraries?

Publishers and distributors of copyrighted content have struck out in their attack on libraries and fair use.  First, in May, the copyright infringement lawsuit filed by several publishers against Georgia State University for its e-reserves practices was decided in favor of fair use (and the University). Then, in late September, the re-filed action against UCLA by AIME was dismissed, again, for lack of subject matter jurisdiction and failure to state a claim (a written order is forthcoming, which should state whether this time dismissal was with prejudice). Now, last week, the trial court in the suit filed against HathiTrust and several universities by the Authors Guild found in favor of the former in a copyright infringement action challenging their mass digitization project.

At issue in the Authors Guild’s lawsuit against HathiTrust and the universities was the creation, with the assistance of Google, of a shared digital repository of nearly 10 million works, the majority of which are still protected by copyright. The digital scans were used for three specific uses: (1) keyword searching of full text scans without display of the full text  for purposes of identifying relevant works, (2) preservation of works in the event of deterioration or natural disaster, and (3) provision of access to works for persons with print-disabilities. The trial court refused to weigh the merits of the orphan works project, which was also challenged by the Author’s Guild, because that project was not yet fully functional and usable and thus not ripe for adjudication. Assessing and weighing the four factors of § 107 of the Copyright Act, the trial court found that the three uses qualified as fair uses of the copyrighted works:

Purpose and Character of the Use
The trial court found that the stated goals of the three uses of the digital scans — scholarship and research, preservation, and access by persons with disabilities — tilted significantly in favor of those uses. Further, the uses were transformative because the digital scans served an entirely different purpose than the original copyrighted works.

Nature of the Copyrighted Works
The trial court acknowledged that the majority of the works scanned were fiction or otherwise creative in nature (a distinction from the facts of the Georgia State University lawsuit) and that use of creative works was less likely to be fair use than use of factual works. However, the transformative uses of the digital scans weighed this factor in favor of HathiTrust.

Amount of the Works Copied
Although fair use typically favors using small and limited portions of copyrighted works, the use of the entire work is fair where necessary to carry out the stated purposes in this case — facilitation of keyword searching and access for individuals with a print-disability.

Impact on the Market for or the Value of the Works
Author’s Guild’s argument that economic harm would result from the defendants’ uses was based largely on speculation. No present collective licensing scheme existed for the large body of works that had been scanned nor was it likely that an economically viable scheme would exist in the near-future. Further, there was no evidence that the digital scans could easily be accessed by anyone, and thus result in avoiding purchase of a copy of the work, through circumvention of the security in place. Rather, the full-text works were only accessible by those print-disabled individuals with authorization and only snippets of the scans were available to those doing full-text searches.

While the fair use ruling is a critical one, another important holding in the trial court’s judgment is the determination that a university is an “authorized entity” under the Chafee Amendment (§ 121 of the Copyright Act). The Association of American Publishers has argued that universities and academic libraries are not “authorized entities” and thus cannot under § 121 provide full text copies of copyrighted works to persons with disabilities for their use. This ruling not only resolves this issue but also lends further credence to the Code of Best Practices in Fair Use for Academic and Research Libraries, which states that academic libraries may provide materials to persons with print-disabilities under fair use.

With these three important rulings in favor of libraries and fair use, one hopes that publishers will take a step back and reevaluate their complaints and reassess the importance of partnering with libraries instead of working against them.

At Long Last…a Decision in Georgia

Four years since the filing, one year since the trial, and 350 pages of opinion later…we have an opinion in the closely watched copyright infringement action against Georgia State University.  The case pitted prolific academic publishers Sage, Cambridge and Oxford against the GSU provost, Library Dean and others, with the publishers claiming that the policy and practice of GSU’s Library allowed faculty to post, in violation of the publishers’ copyrights, scans of book chapters in the University’s e-reserve and course management systems.  In response, GSU contended that its actions fell within the Fair Use provision of the Copyright Act, which the publishers contended that the postings, in the absence of permission or payment of license fees, far exceeded the bounds of fair use, which they argued were defined by outdated guidelines.  In the end, the judge found largely in favor of GSU, and in doing so, she crafted a fair use framework (although for the time-being is only legally binding upon persons living in the Northern District of Georgia) that libraries and publishers alike will be analyzing and implementing in the months to come.

The Fair Use Framework of the GSU Case

Under §107 of the Copyright Act, a use of a copyrighted work without permission of the copyright holder is permissible when such use is for the purposes of teaching, research, commentary, news reporting, parody, or criticism, and the balance of four enumerated factors weighs in favor of a finding of fair use.  Those four factors as set forth in the statute are: (1) the purpose and nature of the use, (2) the nature of the copyrighted work being used, (3) the quantity of the copyright work being used, and (4) the effect of the use upon the potential market. The application of these four factors to the posting of copyrighted works to electronic reserves systems has long been the subject of scholarly debate; however, this case is the first time that a court has undertaken to apply the fair use factors to such use. The judge’s application of the fair use factors in the context of e-reserves can be summarized as follows:

Purpose and Nature of Use – Because a college or university’s library is a non-profit and educational user, the court found that this factor weighed heavily in favor of a finding of fair use.

Nature of the Copyrighted Work: Because the works at issue in the case were all scholarly, non-fiction works (and many of them reference-type handbooks), the court found that this factor also weighed in favor of a finding fair use.

Quantity of the Copyrighted Work Being Used: Most of the excerpts posted in GSU’s course reserves were 10% or less of the book. The court held that this factor weighs in favor of fair use where no more than 10% of a work with less than 10 chapters or no more than one single chapter in works of more than 10 chapters is used.  In amounts greater than this, this factor weighs in favor of the copyright holders. The court also reiterated that where the portion used represents the “heart of the work,” the balance tips in favor of the copyright holder.

Effect Upon the Potential Market for the Work – Where there is a reasonably priced and readily available license for a digital excerpt of the copyrighted work, this factor tips in favor of the copyright holder. This factor also weighs in favor of the copyright holder where the amount used is so great that it substitutes purchase of the entire work.

Answers, Yes, but Also More Questions

Through her careful reasoning and explanation, the judge in the GSU case answered many questions that have been pondered by copyright scholars and academic library practitioners. In particular, she held:

– The posting of copyrighted works in an electronic reserve or course management system is not analogous to the production of print course packs by a copy shop or other commercial entity.  Thus, many points in the Kinkos case are not applicable to e-reserves.

– The posting of copyrighted materials in an e-reserve system is not a transformative use.  In recent years, a finding of transformativeness has been key to deciding fair use cases.

– The 1976 Classroom Photocopying Guidelines are too restrictive and thus inconsistent with fair use. Further, the judge expressly rejected the “subsequent semester” rule that is an outgrowth of the Classroom Guidelines. Thus, use of the same excerpts for a course from one semester to the next does not mitigate against a finding of fair use.

– No or minimal use can mean no infringement. Where items posted to course reserves are never accessed by students, there is no infringement.

– When calculating the number of pages in a work (for purposes of determining what constitutes 10%), the entire work is counted, including the table of contents, foreword, and index pages.

However, the decision also left scholars and librarians with more questions to ponder:

– What about journal articles, images, videos, etc?  The decision in GSU only dealt with monographs; however, many faculty utilize these other categories of works in their courses and request their institution’s library to post these materials in the course reserve system.

– What constitutes a “readily available and reasonably priced” license? And, if the copyright holder does not have a license or permission system available for the work or its excerpts, does this mean its fair use to use it anyway? In the wake of this decision, more publishers will likely either contract with Copyright Clearance Center or invest in devising their own license and permission systems. Does this mean libraries will end up paying more for less?

It will be interesting to see what answers folks on all sides off these issues will propose in the weeks to come and what the next moves of the publishers and their litigation funders will be in response to the judgment.

V is for (small) Victory (and for Video)

The idiom “no good deed goes unpunished” has never felt truer. Lately, it seems that libraries and universities have made more hash marks on their legal scorecard in the lose column than they have in the win column. In this past year, the Second Circuit undermined the first sale doctrine rights of libraries, a federal court held a trial in Georgia that could determine the bounds of fair use with respect to electronic course reserves, and several authors groups have now filed a lawsuit against Hathi Trust and others engaged in the preservation of orphan works. However, a small victory came in a California federal court this week in the case against UCLA for its video streaming practices.

Last December, the Association of Information Media Equipment (AIME) filed suit against several UCLA officials and employees, including members of library and media lab staff, for copyright infringement after UCLA digitized and streamed DVDs produced by Ambrose Video. AIME asserted it had standing to file this action as an association representing its members, which includes Ambrose Video. In granting the UCLA officials’ motion to dismiss, the court disagreed. Because AIME is not the holder of any of the copyrights at issue in the case, it lacked standing to bring the action. “Having the rights over a copyright is essential to establishing a copyright infringement claim” the court stated in its order; thus, participation of an individual member who was also owner of one of the copyrighted films at issue in the suit, was required. Additionally, the court determined that the UCLA Regents and other officials were immune, under the 11th Amendment, from suit in their official capacities (although not necessarily in their individual capacities, the court pointed out). These two grounds for dismissal could similarly prove fatal for the recently filed action against Hathi Trust and several state universities. It will be interesting to see if the inclusion of a couple individually named authors (and presumably copyright holders), who are also members of the named author associations, will save that action on the question of standing.

The remainder of the ruling on the motion to dismiss concerned more substantive issues; although by no means was there any legally determinative interpretation of fair use or other elements of copyright law. Hence, why the victory here is a small one. For me, the most curious point of this section of the ruling was the court’s characterization of the license to publicly perform the copyrighted work. The court held, although without much discussion or justification in the existing body of law, that the copying of the DVD onto the UCLA server for streaming was that kind of “incidental copying” permitted by fair use. That is, in order to make use of its license to publicly perform the film, UCLA had to place the content onto its network. Although I have not seen the full text of the license entered into between UCLA and Ambrose, I have, in my time as a collection development director, read, negotiated, and executed many a public performance and streaming license. In nearly all the ones I have encountered, the streaming of a film is treated as a separate license from the one to publicly perform a film. In fact, some public performance licenses (whether it be a separate document included with the DVD purchase or a click through on the online shopping cart when purchasing a DVD) expressly exclude streaming for remote access or distance learning. Further, if the viewing of the streamed copy is done by a student in the privacy of his own home or dorm room and not by a class in a group setting, is this really a “public” performance?  As such, I would caution libraries and universities from relying too heavily upon this court’s interpretation of public performance and instead turn to the language of the institution’s own agreement.

For UCLA, the ruling is certainly a victory. AIME has until the 17th of October to refile the case, and I predict that unless they have an individual copyright holder to join in the matter as well as substantial evidence to make a case against the named defendants in their individual capacities such a refiling will not occur. For the rest of us who have been sitting patiently waiting for a ruling in this matter, the case is neither a victory nor a loss, for there still remains unanswered questions regarding the fair use of streamed media in distance education.

The “Guilded” Age

In American history, the “Gilded Age” refers to that period of time from the late 19th to the early 20th century when industrial tycoons enjoyed the spoils of unfettered capitalism. The wealthy enjoyed, thanks to the earnest toil of the laboring poor, access to a way of life that was exclusive to those who could afford to pay for its privileges. During this “Information Age,” there are some groups who would have us believe that access to knowledge is also a privilege reserved for those who can afford to pay. The Authors Guild, an American association representing the interests of published authors, has filed several lawsuits in the last 10 years, including the nearly defunct action against Google Books, in an attempt to control access to in-copyright scholarly works. The most recent lawsuit was filed yesterday (9/12/2011) in a New York federal court to prevent HathiTrust and five of its university members from continuing to scan in-copyright works, which are then digitally delivered to HathiTrust, and from proceeding with their plans to make those in-copyright works deemed to be orphan works (works whose copyright owner cannot be located) digitally available to their respective faculty and students.

Since 2004, the five named universities (Michigan, California, Cornell, Indiana, and Wisconsin), either in partnership with Google or through independent initiative, have selected millions of volumes from their collections and digitally scanned these volumes for distribution to HathiTrust. Many of these volumes are in the public domain, that is, their term of copyright protection has expired. However, a large portion of the HathiTrust’s digital repository is still protected by copyright. In May 2011, the University of Michigan, who is the host institution of HathiTrust, announced its plan to identify which of those in-copyright works were orphan works. Under the terms of the orphan works project, following a 90 day public notice period, those works so identified would then be made available to Michigan’s faculty and students. During the summer of 2011, several more universities signed on to participate in the orphan works identification and notification process and make digital copies of orphan works within their collections available to their communities through the HathiTrust.

Contending that these activities exceed the boundaries of the reproduction and distribution rights granted libraries under § 108 of the Copyright Act, the Authors Guild, similar associations from Canada and Australia, and several authors filed suit against HathiTrust and the universities for copyright infringement. The Authors Guild seeks to enjoin all future digitization and distribution activities and to seize all currently digitized works located in HathiTrust’s servers. In laying out its case for this relief, the Authors Guild et al. rely exclusively upon § 108 and summarily reject as “without legal support” any reliance upon fair use. This may be turn out to be a vulnerable flaw in their argument as § 108(f)(4) expressly states that none of its provisions in any way limit a library’s rights under fair use and defendants in this action rely heavily upon fair use in justification for the orphan works project. Jonathan Band, in a packet prepared by the Association of Research Libraries, conducts a thorough and convincing fair use analysis.

A more likely vulnerability is whether the Authors Guild and its co-plaintiffs have alleged sufficient facts to establish that they are the right persons to bring this action (in legal terms – whether they have standing to sue).  Although the individually named authors allege ownership in specific works that have been digitized, there is no assertion of what harm they will suffer (economic or otherwise) should these 60+ works become publicly accessible. Further, the Authors Guild and the other associations do not state any facts establishing ownership or other legal claim to the body of orphan works that may, at some indeterminate time, become available to the HathiTrust members. They have not identified any specific members of any of the named associations as the copyright holder(s) of one or more of the orphan works slated to be made available. An attempt to express the immediacy of harm is made with regard to the first set of orphan works  candidates identified in the project, which will become available on Oct. 13th of this year; however, the mere fact of the nearness of this date on the calendar is insufficient to demonstrate the threat or level of harm necessary for injunctive relief.  The next filing in the case may be a motion to dismiss. This is what happened in the UCLA case, another case of an association bringing suit on behalf of its members (although in that action the association, AIME, actually named a specific member who was allegedly harmed). And in response, as happened in the UCLA matter, an opportunity will be granted to plaintiffs to amend their complaint to correct the deficiencies.  This may very well be what Authors Guild hope happens — I think they are trying to buy themselves some time to do some further digging of their own to try and locate even one member who is the copyright holder of an identified orphan. Also, it is possible that the court would grant a preliminary injunction to prevent the current orphan candidates from becoming accessible on Oct. 13th while this action is pending.

With the Google Books Settlement set for a sure-to-be anticlimactic if not concluding status hearing this week and the decision a few weeks ago in another Authors Guild case (In re Literary Works) essentially sealing the Settlement’s fate, it is not so surprising that the Authors Guild has undertaken a new legal crusade. It also leads me to wonder if instead of the Information Age, we should call this the “Guilded” Age.

Excellent summaries of the filing also can be found on the blogs of James Grimmelman and Kevin Smith.

Who Owns Copyright in Course Materials?

With classes back in session at most American universities and colleges, students may be looking for note taking or studying shortcuts to ease them through the semester. The sharing of course notes, lecture recordings, and exam copies has become more than a friendly gesture by former students; it has become a growing commercial enterprise by brick and mortar and online entities. A couple years ago the web site Course Hero began to attract scrutiny from teachers and administrators when it offered to students a monthly subscription to access its vast repository of uploaded course materials (or earn credits for access in exchange for uploading their own materials). Secondary to the concerns of academic integrity was the concern that the intellectual property rights of professors had been violated. Many educators are concerned that their original and creative work product, such as stylized lecture slides, detailed course handouts, and well-prepared syllabi, are being made available without their knowledge or permission. Course Hero, by its own admission, does not police content uploaded to its site. Rather it relies, much like You Tube, upon the vigilance of copyright holders to file with the company a take-down request pursuant to the Digital Millennium Copyright Act.  To help counter the problem, universities have adopted policies prohibiting students from sharing course materials or have devised informational sites for faculty to assist them in locating infringing downloads and requesting take-down.

To date, no litigation has arose as a result of Course Hero or sites like it. However, a copyright infringement action is pending in a Florida district court concerning the sharing of course information and may answer the question of whether sharing of course materials actually qualifies as fair use. The lawsuit was filed after the lecture outlines and film study questions prepared by a University of Florida professor were copied and packeted for resale by a local copy shop. The professor had transferred his copyrights in the materials to a publisher, who filed the infringement action. This past June, the district court ruled on the cross motions for summary judgment. Recognizing that the text materials were protected by copyright, the district court denied the plaintiff’s motion for summary judgment on the infringement claims on the ground that questions of fact for a jury existed as to whether the copying constituted fair use. The court wrote:

Works that are original, fictional, and unpublished enjoy more protection than works that are derivative, factual, and published. [The] works as a whole are derivative, factual, and published. Furthermore, his film study questions and practice questions are factual compilations. Copyright protection extends only to the selection and arrangement, not to the underlying facts themselves, and “[t]his inevitably means that the copyright in a factual compilation is thin.” Feist. 499 U.S. at 349…Other factors in determining fair use include the purpose and character of the use, the amount and substantiality of the portion used, and the effect of the use on the market or value of the copyrighted work. 17 U.S.C. § 107. The parties have presented various arguments for and against a finding of fair use. Genuine issues of material fact remain for a jury to determine regarding fair use.

The outcome of this case, much like the outcome in the Georgia State e-reserves lawsuit, has the potential to greatly impact our understanding and application of fair use. It will also impact the validity of sites like Course Hero and any other entity profiting from the sharing of course materials. (Note – the work for hire doctrine is not at issue in this case, even though a university as employer could claim copyright ownership in course materials because the university in the case had already disclaimed any interest in these materials.)

The Devil Went Down to Georgia

Three years in the making, the trial against Georgia State University (GSU) for their e-reserves practices begins tomorrow. The course for trial was set at the end of September when the federal judge presiding over the case ruled on the motions for summary judgment filed by the publishers and GSU officials, allowing the case to go forward solely on the claim of contributory infringement. (For a detailed explanation of those motions please read “Georgia (State University) on My Mind.”) However, in December 2010, the court granted the publishers’ motion for reconsideration and permitted them to proceed on the claim of direct infringement, now understood and correctly labeled as a claim of “indirect infringement.”

In the weeks and days leading up to trial, both sides filed the usual and customary motions concerning evidence and other pre-trial matters. But the most noteworthy, and somewhat nerve-wracking, pre-trial filing came from the publishers in the form of a proposed order to be signed by the judge in the event they win their case. The publishers do not seek monetary damages as the remedy for the alleged infringement; rather, they seek to enjoin GSU (and inevitably all academic libraries, college students, and faculty) from continuing to access copyrighted materials through secure digital means without permission and payment of royalties. The proposed injunction filed by the publishers would prohibit all persons affiliated with GSU, including faculty and students, from reproducing, transmitting, downloading, etc. copyrighted materials without permission or in excess of the Guidelines for Educational Fair Use that accompanied the 1976 adoption of the Copyright Act. Nowhere in the proposed injunction is there any mention of fair use as codified at §107 of the Copyright Act.

The publishers’ insistence of limiting GSU, including its students and faculty,  to outdated and overly-strict guidelines is abhorrent. While I do appreciate the guidance and wisdom of the authors of the 1976 Guidelines and their exposition on the concepts of “brevity” and “spontaneity,” I do not believe that guidelines drafted at a time when only print existed and current digital modes of delivering educational materials were not even imagined should be levied against an institution as the absolute maximums allowed. To do so would completely obliterate the balancing test prescribed by the terms of § 107. As an academic librarian, I appreciate the ease and efficiency offered by adherence to numeric guidelines. However, librarians should strongly advocate against imposition of such strict maximums and lobby loudly for fair use.

Further, I do agree that certain versions of the “fair use checklist” often utilized by academics tend to liberally lean toward a finding of fair use; however, the checklist problem should not be solved through such a drastic measure as removal of fair use as a concept and consideration and adoption of very minimum page and word limits.

What the Kinko’s case did to the use of printed coursepacks, the outcome of the GSU case may very well do to e-reserve practices employed at most institutions of higher education. However, the outcome may not be the simple discontinuation of a certain practice or a slight modification of process; rather, fair use landscape may very well be blighted.

March Madness

March Madness applies not only to the basketball court – but to the court of law as well, as we have seen this month. It has been nearly a month since I last wrote a post – and much has happened since then with respect to copyright law. I apologize for my tardiness in giving these significant events due attention. But my own month of March has been marked by “madness” – including three conference/workshop presentations and, more significantly, preparations for a move across country for a new job as scholarly communications librarian at the University of Florida.

So let’s review what has happened during this very busy March:

Righthaven Lawsuits:  Fair Use – 1, Trolls – 0

Righthaven LLC, organized in 2010 upon acceptance of assignment of copyright ownership in the content of the Las Vegas Review-Journal and other media outlets, has filed over 250 lawsuits against bloggers, web sites, journalists and others for copyright infringement. Prospective defendants are identified through a tactic referred to as “trolling,” whereby Righthaven allegedly searches the Internet for use of content and then seeks assignment of copyright and sues for infringement. Many of the lawsuits stem from the copying of a single image or the quoting of a sentence or two of copyrighted content.  However, in one lawsuit, Righthaven claimed a non-profit immigrant rights organization committed infringement when it republished the full text of a Review-Journal article on immigration. That lawsuit came to a conclusion this month after a trial judge ruled that the use by the NPO was in fact a fair use. Upon reviewing the four factors of fair use, the judge determined that there was no effect upon the market (Factor Four). Righthaven did not assert any effect upon the Review-Journal’s ability to report the news; rather, the copyright was relied upon solely as a basis for the lawsuit. Further, there was essentially no overlap between the NPO’s audience and that of the newspaper.  Finally, the use of the article was for informational purposes and fit squarely within the NPO’s educational mission (Factor One). For a complete history of the Righthaven lawsuits, visit http://www.righthavenlawsuits.com/.

Full Court Press: Second Motion to Dismiss Filed in AIME v. UCLA

Following the filing of UCLA’s motion to dismiss in the copyright infringement action against it in January, plaintiff AIME amended its complaint. The amended complaint alleges additional facts in an attempt to support the initial and added claims against a now expanded list of defendants. A second motion to dismiss was filed by the UCLA defendants this month. In this motion, much like the first, UCLA renews its claim to immunity under the Eleventh Amendment. UCLA challenges AIME’s contention in the amended complaint that immunity was waived by the University’s assent to the license agreement. And, as previously discussed here, the contract vs. copyright claims remain to be at issue in the amended complaint and follow-up motion to dismiss. This case continues to be one to watch.

Review by the Ref: Certiorari Granted in Golan v. Holder

In 1994, in an attempt to bring federal law into compliance with the Berne Convention, Congress enacted legislation, under authority of the “Copyright Clause,” extending copyright protection to thousands of foreign works that were still considered copyrighted in their countries of origin) but had long been considered part of the U.S. public domain.  Many creative works, such as symphonies and films, that had been treated for decades as being in the public domain and as such had been performed, adapted, distributed and restored, were now protected by copyright. In an action brought by representatives of composers and film distributors, it was alleged that this retroactive extension of copyright protection to works previously treated as out-of-copyright was not only not within Congress’s power under the Copyright Clause but was also a violation of the petitioners’ First Amendment rights. The claims were rejected by the 10th Circuit, but this month, despite the government’s plea to refrain, the Supreme Court granted cert to hear the case. The outcome of this case has significant copyright implications because, as the petition for review argued, “if Congress is free to restore material from the public domain at will, then the public’s federal right to copy and to use public domain material this Court has recognized may evaporate at any time.”

Slam Dunk: Rejection of the Google Books Settlement Agreement

In the several days since, and surely in the days and weeks to come, librarians, attorneys, authors, and scholars will be debating the probable effects of the court’s sweeping rejection of the settlement agreement initially drafted in the Google Books litigation three years ago. Following months of wrangling and amending, the latest iteration of the agreement was rejected in totality last week by the federal court presiding over the case. In his opinion, Judge Denny Chin rejected the settlement agreement primarily on the ground that the major issues, namely the status of orphan works and the rights of foreign authors and publishers, were ones that were better resolved by Congress than a federal court. In particular, the orphan works problem is so amorphous that it cannot be adequately served by a settlement agreement between a possibly inadequate class of plaintiffs and a private entity. Moving forward, of concern to universities that had been participants in the Google Books mass digitization project is potential liability. While I do not foresee a rash of lawsuits or outrage for this noble effort to make works searchable and accessible by the public, it will be very interesting to see what develops in the weeks ahead.

Jump Ball: Trial Date Set in Georgia State University E-Reserves Case

In late September 2010, the judge in the copyright infringement action filed against GSU considered a motion for summary judgment filed by the University and the publishers who filed the action. In her ruling on that motion, she permitted the case to go forward on the issue of contributory infringement. Last week, the judge denied the University motion to dismiss the remaining claim, thereby setting the matter for trial, which is to commence May 16th. The hope is that this case will finally resolve some contentious issues regarding the bounds of fair use, particularly in this context of educational use of copyrighted materials online in electronic reserve or course management systems.

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