Cambridge University Press et al v. Patton et al
ORDER that Defendants are hereby ORDERED AND DIRECTED to maintain copyright policies for Georgia State University which are not inconsistent with the Court's 423 Order of May 11, 2012 and this Order. Defendants are also ORDERED AND DIRECTED to disseminate to faculty and relevant staff at Georgia State the essential points of this Court's rulings. The Court will retain jurisdiction for the sole purpose of enforcing these Orders. The Court exercises its discretion to award to Defendants their reasonable attorneys' fees. Other costs will also be taxed in favor of Defendants and against Plaintiffs to the extent permitted by statute. Defendants are DIRECTED to file a detailed request for an award of attorneys' fees and other costs no later than August 24, 2012. Plaintiffs may file any objections no later than September 10, 2012. The parties are encouraged to confer to determine if objections can be mutually resolved, either in whole or in part. A hearing to resolve objections is hereby set for September 14, 2012 at 11:00 a.m. The Clerk is DIRECTED to resubmit the file on September 11, 2012. Signed by Judge Orinda D. Evans on 8/10/2012. (anc)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
CAMBRIDGE UNIVERSITY PRESS;
OXFORD UNIVERSITY PRESS, INC.;
SAGE PUBLICATIONS, INC.,
CIVIL ACTION NO.
MARK P. BECKER, in his official
capacity as President of Georgia
State University; RISA PALM, in
her official capacity as Senior
Vice President for Academic
Affairs and Provost of Georgia
State University; J.L. ALBERT,
in his official capacity as
Georgia State University
Associate Provost for
Information Systems and
Technology; NANCY SEAMANS, in
her official capacity as Dean of
Libraries at Georgia State
UniversitYi ROBERT F. HATCHER,
in his official capacity as Vice
Chair of the Board of Regents of
the University System of
Georgia; KENNETH R. BERNARD,
JR., LARRY R. ELLIS, W.
MANSFIELD JENNINGS, JR'r JAMES
R. JOLLY, DONALD M. LEEBERN,
JR., WILLIAM NESMITH, JR.,
DOREEN STILES POITEVINT, WILLIS
J. POTTS, JR., C. DEAN ALFORD,
KESSEL STELLING r JR., BENJAMIN
J. TARBUTTON, III, RICHARD L.
TUCKER, LARRY WALKER, RUTLEDGE
A. GRIFFIN[ JR., C. THOMAS
HOPKINS, JR., NEIL L. PRUITT,
JR., and PHILIP A. WILHEIT, SR.,
in their official capacities as
members of the Board of Regents
of the University System of
This copyright infringement case is currently before the Court
for a determination of injunctive and declaratory relief following
this Court's May 11, 2012 Order which found, after a review of each
of Plaintiffs' infringement claims, that Plaintiffs were entitled to
prevail on five claims
As discussed in Part II of the
immunity which otherwise would bar such relief.
consider the need for injunctive relief.
In discussing what relief
is appropriate, the facts pertaining to the five successful claims
will frame the discussion.
principle is explained in the context of the infringements found in
the May 11 Order.
The requirement that excerpts be "decidedly small" to tip
factor three in Defendants' favor applies to the aggregate
of all excerpts from a book which are assigned during the
term of the course.
unpaid use of excerpts from The Sage Handbook of Qualitative Research
(Third Edition) and The Sage Handbook of Qualitative Research (Second
These excerpts were available through ERES to Georgia
State students enrolled in three classes
in qualitative research
The students enrolled in each of these courses were required to
purchase three required texts, two of which were published by Sage
[PIs. Ex. 516 at 1; PIs. Ex. 517 at 2; PIs. Ex. 518 at 1].
from other books
various class sessions as listed on the syllabi.
claims presented in this case aggregated the excerpts from each book
for the entire class term.
Thus, the first successful infringement
claim aggregated four one-chapter excerpts from The Sage Handbook of
(Third Edition) which were assigned for reading
at various times during the Maymester 2009 session of EPRS 8500.
infringement claim was based on a four chapter excerpt, totaling 8.38
percent of the pages in the book.
in EPRS 8510 during summer session 2009,
there were two
assigned excerpts during the term of the course which added up to two
chapters and 3.01 percent of the pages in the book.
found by the Court was based on the aggregate amount.
Quali ta t i ve
in EPRS 8500 during fall semester 2009, there were a total
of seven chapters assigned over the course term.
This was 12.29
percent of the total work.
The infringement claim was based on the
The fourth infringement is for unpaid use of an excerpt from The
Power Elite, an Oxford publication.
Adia Harvey who taught SOeI 8030
This assignment was by Professor
(Social Theory I)
in the fall of
This is a course for sociology graduate students.
The goal of
the course is "to present students with graduate-level knowledge of
classical social theory, and to be able to use theory as a tool that
facilitates the developments of insightful sociological research."
[ P 1 s.
Ex . 53 0] .
The students were required to purchase two texts, one of which
is published by Oxford.
In addition, the students were required to
read certain excerpts from other books which had been posted on ERES.
For one class session the assigned excerpt was chapters twelve and
thirteen, which together total 12.5 percent of the pages in The Power
The fifth infringement is for unpaid use of an excerpt from
Utilization-Focused Evaluation: The New Century Text (Third Edition),
a Sage book.
This assignment was by Professor Mary Ohmer who taught
(Evaluation & Technology)
in the fall of 2009.
This is a
course for graduate students in Georgia State's School of Social
The syllabus states: "The course develops students' skills in
the formative and summative evaluation of community service delivery
[PIs. Ex. 522].
The syllabus assigned two required texts.
Edition) which were posted to ERES.
The syllabus also
These excerpts aggregated to two
chapters, which was 3.01 percent of the book.
The infringement claim
was based on the aggregate amount.
for purposes of the Court's May 11 Order
includes all protected material used from a book during a course.
The holdings of this case do not address fair use of books
intended solely for instruction of students enrolled in a
Plaintiffs request that any injunction define the term "work" to mean
a book "other than a textbook."
This appears to be an effort to
exempt from the holdings of the May 11,
2012 Order the sorts of
undergraduates in lower level college courses. 1
Sample copies of
these books presumably would be supplied to college professors or
instructors with a view toward getting them to require purchase of
the book by the students in the class.
But these would be books
which are not calculated to educate the professor or instructori they
are simply a vehicle for class instruction.
The books involved in
lThe Court agrees with the thrust of Plaintiffs' request. This
does not automatically mean that there could never be fair use
protection for any use of these booksi it simply limits the Court's
holdings in this case.
this case do not fall into that category because they have a broader
set of users, even though they obviously have been used as material
for class instruction.
On reflection, the Court believes that the term "textbook" is
During the trial and indeed in the May 11, 2012 Order,
This is a convenient shorthand; however, the terms are
The books assigned for purchase by students on the course
syllabi are invariably referred to as "required texts."
But none of
the books are in the record, and it is unstated whether they differ
Also, the term "textbook" can be understood to imply an
academic book which is scholarly and authoritative, but which is not
necessarily designed for classroom instruction.
In the context of
this case, what is important is the intended readership because of
its relationship to the value of the book's copyright when unpaid use
of excerpts occurs.
The Court finds that none of the books from which excerpts were
assigned are books intended exclusively for use by students enrolled
in a class.
This is demonstrated by the books involved in the five
successful infringement claims.
All of these books are of academic
(obviously, because they were used in academic classes in
Some, possibly all, of the books can be classified as
the use of
enrolled in a class.
This is most obvious as to The Power Elite, a general readership
book which because of its subject matter may be of interest in a
The other three books which are the source of
excerpts found to constitute infringements in this case are not as
There was no evidence at trial from the authors
of these books nor any trial testimony by professors which is helpful
on this issue.
Wi th respect to The Sage Handbook of Quali ta ti ve
Research (Second Edition and Third Edition), Sage's representative,
credible witness, with expertise in her field.
state what she meant by the term "textbook."
the book is authoritative and informative.
book to be
However, she did not
She probably meant that
The Court does not infer
that she meant it is intended solely for the use of students enrolled
in classes, which for purposes of this Order the Court elects as the
intended readership for each book.
of Quali ta ti ve
(Second Edition), the preface states in part:
There were, and continue to be, three social science
and humanities audiences for the Handbook: graduate
students who want to learn how to do qualitative research,
interested faculty hoping to become better informed about
the field, and faculty who are experts in one or more of
the areas discussed in the Handbook but who want to be
informed about the latest developments in the field.
never imagined this audience would be so large. Nor did we
imagine that the Handbook would become a text to be used in
undergraduate and graduate research methods courses, but it
did. In 1998, we created three paperback volumes based on
the first edition of the Handbook for classroom use: The
Qualitative Inquiry, and Collecting and Interpreting
[Pls. Ex. 265 at ix].
The Sage Handbook of Quali ta ti ve Research (Third Edi tion) states
the following in its preface:
There continue to be mUltiple social science and
humanities audiences for this Handbook: graduate students
who want to learn how to do qualitative research,
interested faculty hoping to become better informed about
the field, individuals working in policy settings who
understand the value of qualitative research methodologies
and want to learn about the latest developments in the
field, and faculty who are experts in one or more areas
covered by the Handbook but who also want to be informed
about the most recent developments in the field. We never
imagined these audiences would be so large.
Nor did we
imagine that the Handbook would become a text used in
undergraduate and graduate research methods courses, but it
In 2003, we created from the Handbook's second
edition three new paperback volumes for classroom use: The
Qualitative Inquiry, and Collecting and Interpreting
[Pls. Ex. 267 at ix-x].
These statements demonstrate that the Sage
Handbooks of Qualitative Research are not intended solely for use by
students in a course.
Utilization-Focused Evaluation (Third Edition) is a book which
"tells readers how to conduct program evaluations and why to conduct
them in the manner prescribed."
316 at xv].
advocates the evaluation of government and institutional programs by
users of the programs.
It also offers suggestions for designing and
implementing user-based evaluations.
Based on the content of the
book, and comments in the preface by the author,
profession" which would include,
the Court infers
but by no means is limited to,
students enrolled in social work classes.
It is also a resource for
professional evaluators, particularly beginners.
preface states in part:
For example, the
The evaluation profession has developed dramatically since
the last edition of this book ten years ago. .
field of professional practice, we have reached a level
where we know what we're doing and have a track record of
important contributions to show. . . . Minnesota provides
a thriving evaluation community in which to work and an
active local chapter of the American Evaluation Association
where friends and colleagues share experiences .
[Pls. Ex. 316 at xiv-xv].
Based on these considerations, the Court
finds that Utilization-Focused Evaluation
is not a
book intended only for students enrolled in a course.
The factor four analysis and outcomes,
as articulated in the
May 11 Order, apply to works that are directed not only to college
and university students but also to the broader academic community
and sometimes beyond [see May 11 Order, Doc. 423 at 21-22 and n.15] .
Therefore, the fair use analysis and holdings of the May 11 Order,
and the relief in this Order, are limited to Plaintiffs' works with
an intended readership broader than students enrolled in courses.
Fair use protection is conditioned on strict reliance with
measures calculated to protect copyrighted excerpts from
Protection under the fair use doctrine is conditioned on strict
observance of the following requirements.
Access to excerpts shall
be limited by a passcode or password to only the students enrolled in
the course, and then only for the term of the course.
be prohibited by stated policy from distributing copies to others.
They must be reminded of the limitations of the copyright laws each
time they access excerpts on ERES.
Each chapter or the excerpt must
fill a demonstrated, legitimate purpose in the course curriculum and
must be narrowly tailored to accomplish that purpose.
intensive elements, the infringement claims evaluated in this case do
not include all possible fact combinations or potential outcomes.
One such instance is a case where digital permissions are unavailable
and the unpaid excerpt significantly exceeds the "decidedly small"
amount which would tip factor three in a defendant's favor.
that factor one weighs heavily in defendant's favor for the reasons
discussed in the May 11 Order, and factor two weighs in defendant's
favor (because the material is informational), how much material may
be used without losing fair use protection?
In an instance where
Professor Orr used 18.52 percent of the pages in Liszt: Sonata in B
Minor and electronic permissions were not available,
fair use was
The Court elects not to select an exact upper range number,
but notes that the 18.52 percent amount likely is close to loss of
fair use protection.
Next, the Court turns to the issue of injunctive relief.
factors influence the Court to reject the highly regimented type of
injunctive relief Plaintiffs propose in their May 31,
The first is that the fair use analysis is quite fact
proposed injunctive relief seeks to enjoin
Defendants and all Georgia State agents, employees, and students from
violating the Court's May 11 Order.
Plaintiffs seek to have the
Court require Defendants to implement a program that keeps extensive
records and provides Plaintiffs with access to monitor Defendants'
Plaintiffs' proposed injunction requires, inter alia,
intensive and specific to each individual case.
formulation which would cover all
There is no single
convinced that Defendants did try to comply with the copyright laws;
this is demonstrated by the fact that there were only five successful
officers with oversight responsibility, not line responsibility for
individual fair use choices.
Fourth, Defendants and Georgia State's
officers and employees work at taxpayer expense to carry out their
There is insufficient reason to impose a burdensome and
expensive regimen of record-keeping and report-making based on the
injunctive relief as follows:
Defendants are hereby ORDERED AND
DIRECTED to maintain copyright policies for Georgia State University
which are not inconsistent with the Court's Order of May 11, 2012 and
Defendants are also ORDERED AND DIRECTED to disseminate
to faculty and relevant staff at Georgia State the essential points
of this Court's rulings.
The Court will retain jurisdiction for the
sole purpose of enforcing these Orders.
that Defendants keep extensive records for three years as to each
excerpt posted on ERES along with all information pertaining to the
investigation done as to its fair use status; that Defendants comply
with a reporting procedure to Plaintiffs for three years as to
Georgia State's provost's attempts to monitor and enforce compliance;
and that Defendants provide Plaintiffs with monthly access to ERES,
uLearn, and similar programs where excerpts may be accessed [Doc.
III. Costs and Attorneys' Fees
Both sides have sought an award of their attorneys' fees in this
Section 505 of the Copyright Act provides:
In any civil action under this title, the court in its
discretion may allow the recovery of full costs by or
against any party other than the United States or an
officer thereof. Except as otherwise provided by this
title, the court may also award a reasonable attorney's fee
to the prevailing party as part of the costs.
In order to make an award of attorneys' fees, the
Court must first determine which side is the prevailing party.
461 U.S. 424
the Supreme Court held
that the following definition of prevailing party applies in a civil
rights case: "[P] laintiffs may be considered 'prevailing parties' for
attorney's fees purposes if they succeed on any significant issue in
litigation which achieves some of the benefit the party sought in
Id. at 433
(citation and internal quotation marks
The United States Court
plaintiffs were the prevailing party.
See, e.g., Cable/Home Commc'n
Corp. v. Network Prods., Inc., 902 F.2d 829, 853
(11th Cir. 1990).
Both sides succeeded as to certain of their objectives.
does believe that Georgia State's changes in its copyright policy
were triggered primarily by the filing of the instant lawsuit.
Defendants prevailed on all but five of the 99 copyright claims which
were at issue when the trial of the case began.
In that respect,
Defendants were highly successful.
On balance, the Court finds that
Defendants are the prevailing party in this case.
The Copyright Act leaves the awarding of costs and attorneys'
fees to the Court's discretion.
517, 523 (1994).
Fogerty v. Fantasy, Inc., 510 U.S.
The Supreme Court has held that for purposes of the
Copyright Act, "[p] revailing plaintiffs and prevailing defendants are
determinations,' but instead equitable discretion should be exercised
'in light of the considerations we have identified.
(quoting Hensley v.
Fogerty, the Court noted several nonexclusive factors 3 that may guide
a court's discretion in making an attorneys' fees award, concluding
purposes of the Copyright Act./I Id. at 535 n.19.
The United States Court of Appeals for the Eleventh Circuit has
held that in copyright cases, "the only precondition to the award of
attorney's fees is that the party be a prevailing one."
Towel King of Fla.,
822 F.2d 1031,
In Towel King, the Court of Appeals noted that a prevailing
party is not required to show that the losing party acted in bad
3These factors include : "frivolousness , motivation, obj ecti ve
unreasonableness (both in the factual and in the legal components of
the case) and the need in particular circumstances to advance
considerations of compensation and deterrence." Fogerty, 510 U.S. at
535 n.19 (citing Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d
faith or attempted to maintain a
"initiated a predatory lawsuit for commercial gain
support the award of fees" to the defendant) .
arising in three semesters in 2009 but did not require Plaintiffs to
pursue all claims.
When the trial began, Plaintiffs chose to pursue
99 claims out of 126.
during the trial.
They then dropped 25 claims
As to the remaining 75 claims, no prima facie case
was proven in 26 instances.
available in 18 cases.
(and added one)
Digital permissions were unavailable in
Although the Court does not doubt Plaintiffs'
in bringing this
and there was
authority governing fair use in a nonprofit educational setting,
Plaintiffs' failure to narrow their individual infringement claims
significantly increased the cost of defending the suit.
For these reasons, the Court exercises its discretion to award
to Defendants their reasonable attorneys'
Other costs will
also be taxed in favor of Defendants and against Plaintiffs to the
extent permitted by statute.
Defendants are DIRECTED to file a detailed request for an award
fees and other costs no later than August 24,
Plaintiffs may file any objections no later than September 10, 2012.
The parties are encouraged to confer to determine if objections can
be mutually resolved/
either in whole
or in part.
A hearing to
resolve objections is hereby set for September 14/ 2012 at 11:00 a.m.
The Clerk is DIRECTED to resubmit
file on September 11/
SO ORDERED / this
10 day of August / 2012.
ORINDA D. EVANS
UNITED STATES DISTRICT JUDGE