Authors Guild, Inc. v. Hathitrust

902 F.Supp.2d 445

The AUTHORS GUILD, INC., et al., Plaintiffs,

v.HATHITRUST, et al., Defendants.

No. 11 CV 6351(HB).

United States District Court, S.D. New York.

Oct. 10, 2012.

Jeremy Seth Goldman, Edward Henry Rosenthal, Frankfurt Kurnit Klein & Selz, P.C., New York, NY, for Plaintiffs.

W. Andrew Pequignot, Ronald Lee Raider, Joseph M. Beck, Allison Scott Roach, Alex Seth Fonoroff, S., Kilpatrick Stockton, LLP, Atlanta, GA, Robert Nathan Potter, Joseph E. Petersen, Kilpatrick Townsend & Stockton LLP, New York, NY, for Defendants.

OPINION & ORDER

HAROLD BAER, JR., District Judge.

Before the Court are two motions for judgment on the pleadings and three motions for summary judgment. Defendants include HathiTrust; ¹ Mary Sue Coleman, President of the University of Michigan (“UM”); Mark G. Yudof, President of the University of California; Kevin Reilly, President of the University of Wisconsin System; Michael McRobbie, President of Indiana University; and Cornell University (collectively, the “Universities”). Plaintiffs, consisting of individuals and associational organizations, assert claims for copyright infringement for the alleged unauthorized reproduction and distribution of books owned by the Universities. The individual plaintiffs are Trond Andreassen, Pat Cummings, Erik Grundström, Angelo Loukakis, Helge Ronning, Roxana Robinson, André Roy, Jack R. Salamanca, James Shapiro, Danièle Simpson, T.J. Stiles, and Fay Welson, and the associational organizations are The Authors Guild, Inc. (“Authors Guild”), The Australian Society of Authors Limited, Authors' Licensing and Collecting Society (“ALCS”), Union des Écrivaines et des Écrivains Quebecois (“UNEQ”), Sveriges Författarförbund (“SFF”), Norsk Faglitterr Forfatter-og Oversetterforening (“NFF”), and The Writers' Union of Canada (“TWUC”) (collectively, “Associational Plaintiffs”). The Authors League Fund (“Authors' Fund”) does not seek associational standing, but asserts a claim based on its direct ownership of copyrights. I granted the motion to intervene as defendants by the National Federation of the Blind, Georgina Kleege, Blair Seidlitz, and Courtney Wheeler (collectively, “Defendant Intervenors”) on consent in January 2012.

Defendants' motion for judgment on the pleadings, filed in December 2011, seeks the dismissal of the Associational Plaintiffs on standing grounds to the extent they asserted the rights of their members and sought dismissal of claims involving the Orphan Works Project (“OWP”) as not ripe for adjudication. For the reasons set forth below, Defendants' motion for judgment on the pleadings is GRANTED in part and DENIED in part. Plaintiffs' motion for judgment on the pleadings insofar as it seeks a ruling that fair use and other defenses are unavailable to the Defendants as a matter of law is DENIED. In June 2012, Defendants, Defendant Intervenors and Plaintiffs each filed motions for summary judgment. Defendants' and Defendant Intervenors' motions for summary judgment are GRANTED, and Plaintiffs' motion for summary judgment is DENIED.

Also before the Court are two unopposed motions for leave to file briefs as amici, brought by the American Library Association, Association of College and Research Libraries, and Association of Research Libraries (the “Library Amici”), and the Digital Humanities and Law Scholars (the “Digital Humanities Amicus”). Both motions are GRANTED.²

BACKGROUND³

Defendants have entered into agreements with Google, Inc. (“Google”), that allow Google to create digital copies of works in the Universities' libraries in exchange for which Google provides digital copies to Defendants (the “Mass Digitization Project” or “MDP”). Compl. ¶ 1–2; Pls.' 56.1 ¶ 62; Defs.' 56.1 ¶¶ 30–31.⁴ The HathiTrust partnership is in the process of creating “a shared digital repository that already contains almost 10 million digital volumes, approximately 73% of which are protected by copyright.” Compl. ¶ 2; see also Pls.' 56.1 ¶ 77; Defs.' 56.1 ¶ 42. After digitization, Google retains a copy of the digital book that is available through Google Books, an online system through which Google users can search the content and view “snippets” of the books. Compl. ¶ 51; Pls.' 56.1 ¶ 12. Google also provides a digital copy of each scanned work to the Universities, which includes scanned image files of the pages and a text file from the printed work. Compl. ¶ 52; Pls.' 56.1 ¶ 87; Defs.' 56.1 ¶ 30. According to Plaintiffs, this process effectively creates two reproductions of the original. Compl. ¶ 52. After Google provides the Universities with digital copies of their works, the Universities then “contribute” these digital copies to the HathiTrust Digital Library (“HDL”). Id. ¶ 63. The Complaint alleges that in total, twelve unauthorized digital copies are created during this digitization process. Id. ¶ 72. Google's use of the digital works is the subject of a separate lawsuit.

For works with known authors, Defendants use the works within the HDL in three ways: (1) full-text searches; (2) preservation; and (3) access for people with certified print disabilities. Defs.' 56.1 ¶ 48. The full-text search capabilities allow users to search for a particular term across all the works within the HDL. Id. ¶ 49. For works that are not in the public domain or for which the copyright owner has not authorized use, the full-text search indicates only the page numbers on which a particular term is found and the number of times the term appears on each page. Id. ¶ 50.

In an eloquent oral argument by Mr. Goldstein ⁵ as well as in Mr. Kerscher's ⁶ declaration, Defendant Intervenors spelled out where blind scholars stood before digitalization: “Prior to the development of accessible digital books, the blind could access print materials only if the materials were converted to braille or if they were read by a human reader, either live or recorded.” Kerscher Decl. ¶ 19; see also Aug. 6, 2012 Tr. 41:23–55:25. Absent a program like the MDP, print-disabled students accessed course materials through a university's disability student services office, but most universities are able to provide only reading that was actually required. Kerscher Decl. ¶¶ 32, 36. Print-disabled individuals read digital books independently through screen access software that allows text to be conveyed audibly or tactilely to print-disabled readers, which permits them to access text more quickly, reread passages, annotate, and navigate, just as a sighted reader does with text. Id. ¶¶ 20–21, 23. Since the digital texts in the HDL became available, print-disabled students have had full access to the materials through a secure system intended solely for students with certified disabilities. Wilkin Decl. ¶ 105. Many of these works have tables of contents, which allow print-disabled students to navigate to relevant sections with a screen reader just as a sighted person would use the table of contents to flip to a relevant portion. Kerscher Decl. ¶ 34. In other words, academic participation by print-disabled students has been revolutionized by the HDL.

Four of the HathiTrust Universities (all except Indiana University) have also agreed to participate in the OWP, an initiative to “identify and make available to University students, faculty and library patrons full copies of so-called ‘orphan works'—works that are protected by copyright but whose rights holders theoretically cannot be located by procedures established by the HathiTrust.” Compl. ¶ 3. The original process to determine which works would be included as orphan works (“Orphan Works”) involved a decision as to whether a work was commercially available for sale, and if not, an attempt to contact the copyright holder. Id. ¶ 74; Pls.’ 56.1 ¶ 114; Defs.' 56.1 ¶ 79. If that attempt failed, then HathiTrust would list the bibliographical information for the work on the HathiTrust Orphan Candidates webpage for ninety days, after which time the work would have become available for “Full view” on HathiTrust to UM students, professors, and other authenticated users and visitors to libraries at UM's campuses. Compl. ¶ 74; Pls.' 56.1 ¶ 114. UM intended to allow “access to orphan works for the purpose of online review, with the number of users permitted to view a given work limited at any one time to the number of copies held by the UM library.” Defs.' 56.1 ¶ 81. Other schools subsequently announced participation in this project. Compl. ¶ 75. After the filing of the original complaint in this action, UM announced that the OWP would be temporarily suspended because the procedures used to identify Orphan Works had apparently allowed many works to make their way onto the Orphan Works Lists in error. Id. ¶ 78; Defs.' 56.1 ¶¶ 83–84. UM has not yet provided a new process for identifying Orphan Works, or even a timeline for when that might happen, “although it continues to study ways to improve the orphan identification process.” Defs.' 56.1 ¶ 84.

By their Complaint, Plaintiffs seek (1) a declaration that the systematic digitization of copyrighted materials without authorization violates Sections 106 and 108 of the Copyright Act, (2) an injunction to prevent the reproduction, distribution, or display of Plaintiffs' or other copyrighted works except as provided by § 108, (3) an injunction to prohibit Defendants' provision of works to Google for digitization without authorization, (4) a declaration that the OWP will infringe the copyrights of Plaintiffs and others, (5) an injunction that prohibits Defendants from proceeding with the OWP, and (6) the impoundment of all unauthorized digital copies within Defendants' possession.

MOTIONS FOR JUDGMENT ON THE PLEADINGS

I. DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS

Defendants seek dismissal of the Associational Plaintiffs on standing grounds to the extent they assert the rights of their members. Defendants argue that the Associational Plaintiffs are precluded from representation of their members on both...