Authors Guild, Inc. v. Hathitrust

755 F.3d 87

AUTHORS GUILD, INC., Australian Society of Authors Limited, Union Des Ecrivaines Et Des Ecrivains Quebecois, Angelo Loukakis, Roxana Robinson, Andre Roy, James Shapiro, Daniele Simpson, T.J. Stiles, Fay Weldon, Authors League Fund, Inc., Authors' Licensing and Collecting Society, Sveriges Forfattarforbund, Norsk Faglitteraer Forfatter–Og Oversetterforening, Writers' Union of Canada, Pat Cummings, Erik Grundstrom, Helge Ronning, Jack R. Salamanca, Plaintiffs–Appellants,

v. HATHITRUST, Cornell University, Mary Sue Coleman, President, University of Michigan, Janet Napolitano, President, University of California, Raymond W. Cross, President, University of Wisconsin System, Michael McRobbie, President, Indiana University, Defendants–Appellees, ¹National Federation Of The Blind, Georgina Kleege, Blair Seidlitz, Courtney Wheeler, Intervenor Defendants–Appellees.²

No. 12–4547–cv.

United States Court of Appeals, Second Circuit.

Argued: Oct. 30, 2013.

Decided: June 10, 2014.

Edward H. Rosenthal (Jeremy S. Goldman, Anna Kadyshevich, on the brief), Frankfurt Kurnit Klein & Selz, P.C., New York, NY, for Plaintiffs–Appellants.

Joseph Petersen (Robert Potter, Joseph Beck, Andrew Pequignot, Allison Scott Roach, on the brief), Kilpatrick Townsend & Stockton LLP, New York, NY, for Defendants–Appellees.

Daniel F. Goldstein (Jessica P. Weber, on the brief), Brown Goldstein & Levy, LLP, Baltimore, MD; Robert J. Bernstein, New York, NY, on the brief; Peter Jaszi, Chevy Chase, MD, on the brief, for Intervenor Defendants–Appellees.

Jennifer M. Urban, Pamela Samuelson, David Hansen, Samuelson Law, Technology & Public Policy Clinic, University of California, Berkeley, School of Law, Berkeley, CA, for Amici Curiae 133 Academic Authors.

Blake E. Reid, Brian Wolfman, Institute for Public Representation, Georgetown University Law Center, Washington, DC, for Amicus Curiae American Association of People with Disabilities.

Jonathan Band, Jonathan Band PLLC, Washington, DC, for Amicus Curiae American Library Association.

David Leichtman, Hillel I. Parness, Shane D. St. Hill, Robins, Kaplan, Miller & Ciresi L.L.P., New York, NY, for Amicus Curiae American Society of Journalists and Authors, Inc.Brian G. Joseph, Karyn K. Ablin, Wiley Rein LLP; Ada Meloy, General Counsel, American Council on Education, Washington, DC, for Amici Curiae American Council on Education, Association of American Universities, et al.

Elizabeth A. McNamara, Alison B. Schary, Colin J. Peng–Sue, Davis Wright Tremaine LLP, New York, NY, for Amicus Curiae the Associated Press.

Mary E. Rasenberger, Nancy E. Wolff, Eleanor M. Lackman, Nicholas J. Tardif, Cowan DeBaets, Abrahams & Sheppard LLP, New York, NY, for Amicus Curiae Association of American Publishers.

Jo Anne Simon, Mary J. Goodwin, Amy F. Robertson, Jo Anne Simon, P.C., Brooklyn, NY, for Amici Curiae Association on Higher Education and Disability, Marilyn J. Bartlett, et al.

Brandon Butler, Washington, DC, for Amici Curiae Beneficent Technology, Inc., and Learning Ally, Inc.

Susan M. Kornfield, Bodman PLC, Ann Arbor, MI, for Amici Curiae Board of Trustees of the University of Illinois, Board of Trustees of Michigan State University, et al.

Jason Schultz, Berkeley, CA; Matthew Sag, Chicago, IL, for Amici Curiae Digital Humanities and Law Scholars.

Michael Waterstone, Los Angeles, CA; Robert Dinerstein, Washington, DC; Christopher H. Knauf, Knauf Associates, Santa Monica, CA; Michael Stein, Cambridge, MA, for Amici Curiae Disability Law Professors.

Roderick M. Thompson, Stephanie P. Skaff, Deepak Gupta, Rochelle L. Woods, Farella Braun & Martel LLP, San Francisco, CA; Corynne McSherry, Daniel Nazer, Electronic Frontier Foundation, San Francisco, CA; John Bergmayer, Public Knowledge, Washington, DC; David Sohn, Center for Democracy & Technology, Washington, DC, for Amicus Curiae Electronic Frontier Foundation.

Stephen M. Schaetzel, Meunier Carlin & Curfman, LLC, Atlanta, GA, for Amicus Curiae Emory Vaccine Center.

Frederick A. Brodie, Pillsbury Winthrop Shaw Pittman LLP, New York, NY, for Amicus Curiae the Leland Stanford Junior University.

Eric J. Grannis, The Law Offices of Eric J. Grannis, New York, NY, for Amici Curiae Medical Historians.

Steven B. Fabrizio, Kenneth L. Doroshow, Steven R. Englund, Jenner & Block LLP, Washington, DC, for Amicus Curiae Motion Picture Association of America, Inc.

Before: WALKER, CABRANES, and PARKER, Circuit Judges.

BARRINGTON D. PARKER, Circuit Judge:

Beginning in 2004, several research universities including the University of Michigan, the University of California at Berkeley, Cornell University, and the University of Indiana agreed to allow Google to electronically scan the books in their collections. In October 2008, thirteen universities announced plans to create a repository for the digital copies and founded an organization called HathiTrust to set up and operate the HathiTrust Digital Library (or “HDL”). Colleges, universities, and other nonprofit institutions became members of HathiTrust and made the books in their collections available for inclusion in the HDL. HathiTrust currently has 80 member institutions and the HDL contains digital copies of more than ten million works, published over many centuries, written in a multitude of languages, covering almost every subject imaginable. This appeal requires us to decide whether the HDL's use of copyrighted material is protected against a claim of copyright infringement under the doctrine of fair use. See17 U.S.C. § 107.

BACKGROUND

A. The HathiTrust Digital Library

HathiTrust permits three uses of the copyrighted works in the HDL repository. First, HathiTrust allows the general public to search for particular terms across all digital copies in the repository. Unless the copyright holder authorizes broader use, the search results show only the page numbers on which the search term is found within the work and the number of times the term appears on each page. The HDL does not display to the user any text from the underlying copyrighted work (either in “snippet” form or otherwise). Consequently, the user is not able to view either the page on which the term appears or any other portion of the book.

Below is an example of the results a user might see after running an HDL full-text search:

IMAGE

J.A. 681 ¶ 80 (Wilkin Decl.).

Second, the HDL allows member libraries to provide patrons with certified print disabilities access to the full text of copyrighted works. A “print disability” is any disability that prevents a person from effectively reading printed material. Blindness is one example, but print disabilities also include those that prevent a person from physically holding a book or turning pages. To use this service, a patron must obtain certification of his disability from a qualified expert. Through the HDL, a print-disabled user can obtain access to the contents of works in the digital library using adaptive technologies such as software that converts the text into spoken words, or that magnifies the text. Currently, the University of Michigan's library is the only HDL member that permits such access, although other member libraries intend to provide it in the future.

Third, by preserving the copyrighted books in digital form, the HDL permits members to create a replacement copy of the work, if the member already owned an original copy, the member's original copy is lost, destroyed, or stolen, and a replacement copy is unobtainable at a “fair” price elsewhere.

The HDL stores digital copies of the works in four different locations. One copy is stored on its primary server in Michigan, one on its secondary server in Indiana, and two on separate backup tapes at the University of Michigan.³ Each copy contains the full text of the work, in a machine readable format, as well as the images of each page in the work as they appear in the print version.

B. The Orphan Works Project

Separate and apart from the HDL, in May 2011, the University of Michigan developed a project known as the Orphan Works Project (or “OWP”). An “orphan work” is an out-of-print work that is still in copyright, but whose copyright holder cannot be readily identified or located. See U.S. Copyright Office, Notice of Inquiry, Orphan Works and Mass Digitization, 77 Fed.Reg. 64555 (Oct. 22, 2012).

The University of Michigan conceived of the OWP in two stages: First, the project would attempt to identify out-of-print works, try to find their copyright holders, and, if no copyright holder could be found, publish a list of orphan works candidates to enable the copyright holders to come forward or be otherwise located. If no copyright holder came forward, the work was to be designated as an orphan work. Second, those works identified as orphan works would be made accessible in digital format to the OWP's library patrons (with simultaneous viewers limited to the number of hard copies owned by the library).

The University evidently became concerned that its screening process was not adequately distinguishing between orphan works (which were to be included in the OWP) and in-print works (which were not). As a result, before the OWP was brought online, but after the complaint was filed in this case, the University indefinitely suspended the project. No copyrighted work has been distributed or displayed through the project and it remains suspended as of this writing.

C. Proceedings in the District Court

This case began when twenty authors and authors' associations (collectively, the “Authors”) sued HathiTrust, one of its member universities, and the presidents of four other member universities (collectively, the “Libraries”) for copyright infringement seeking declaratory and injunctive relief. The National Federation of the Blind and three print-disabled students (the “Intervenors”) were permitted to intervene to defend their ability to continue using the HDL.

The Libraries initially moved for partial judgment on the pleadings on the ground that the authors'...